When reputation fails to bring it home for Crossfit

This case serves as a useful reminder of the Intel factors required for a successful trade mark claim based on the reputation of an earlier mark. While reputation sometimes broadens the scope of protection for brand owners, a certain level of similarity between the marks is still required.

Background

Personal Trainer Ltd applied for the UK trade mark application “BOSSFIT HEALTH CLUBS ESTD 2020” in connection with health and fitness services in class 41.

Crossfit opposed the application, relying on its CROSSFIT prior rights in class 41, on the grounds of:

• s5(2)(b) (likelihood of confusion): identity or similarity to both the earlier mark and the goods/services, in addition to a “likelihood” of confusion on the part of the average consumer as to the origin of the goods/services;
• s5(3) (reputation): identity or similarity to the earlier mark, which has a reputation in the United Kingdom, and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. A reputation claim under s5(3) extends to cases where the goods/services are different – provided that a “link” is established, and the subsequent damage (e.g. unfair advantage, dilution, tarnishment) made out. This is also known as an extended protection claim; and
• s5(4) (passing off): the elements necessary to reach a finding of passing off are the “classic trinity” as described in the Jif Lemon case, namely: 1) goodwill, 2) misrepresentation (leading to deception or a likelihood of deception), and 3) damage resulting from the misrepresentation.

In the present case, the Hearing Officer rejected the opposition on all three grounds (O-853-22, 3 October 2022) (the UKIPO Decision). Crossfit appealed the UKIPO Decision to the Appointed Person in relation to s5(3) only.

On s5(3), the UKIPO Decision stated that, notwithstanding that the evidence was “far from overwhelming”, reputation was nonetheless established in respect of training and fitness related services in class 41. The Hearing Officer further considered that, whilst the mark CROSSFIT has a low degree of inherent distinctiveness, Crossfit’s evidence of use shows that the mark has an enhanced distinctiveness through use.

On the second hurdle of a link between the two marks, the Hearing Officer considered the factors in Intel (C-252/07), and decided that the respective marks in this case will not create a link, despite the identity of services, given the low level of visual and aural similarity and the entirely different conceptuality.

The appeal

Crossfit appealed the UKIPO Decision on the basis that the Hearing Officer had not applied the Intel factors properly or at all.  

In Intel, the Court of Justice set out five factors which a court should use to determine whether or not the average consumer would make a link between the two marks:

i) the degree of similarity between the conflicting marks;

ii) the nature of the goods or services, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;

iii) the strength of the earlier mark’s reputation;

iv) the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and

v) the existence of the likelihood of confusion on the part of the public.

The Appointed Person considered that, whilst the Hearing Officer did not expressly mention all the Intel factors when assessing whether there was a link between the two marks, it was clear he had them in mind and, even if he did not, his factual findings make it clear that individual consideration of these factors would not have changed his overall assessment. The Appointed Person further stated that the level of enhanced distinctiveness of the mark CROSSFIT would not have been sufficient to make a link more likely.

On this basis, Crossfit’s appeal was rejected.

Key takeaways

• This case is a reminder that – while reputation can sometimes broaden the scope of protection and enforcement for brand owners, a certain level of similarity between the marks is still required in order for a link or association to be established, for a claim based on reputation under s5(3) or s10(3) to succeed.
• Where goods/services are identical but a claim of likelihood of confusion nevertheless fails under s5(2)(b) (i.e. the marks are not sufficiently similar), in many cases it will be an uphill battle to succeed under s5(3), as it would likely be difficult to find a “link” between the marks.
• Appeals to the Appointed Person are notoriously hard to succeed. The appeal is a review and not a reassessment of the original decision, so unless there is a distinct and material error (rather than the arguably subjective questions such as “are the marks similar?”), the Appointed Person is very unlikely to overturn the original decision.