Trade Mark Oppositions - Survival of the fittest
In April 2014, Fitness Initiative Limited applied to register the mark mefit in class 35. The application related to a range of business set up and support services for fitness instructors, in particular providing a searchable database for members of the public to find a personal trainer or instructor in their chosen activity.
The application was opposed by McFit GmbH on the basis of section 5(2)(b) of the Trade Marks Act 1994 based on its earlier CTM registration for McFit. This mark was registered in class 35 for advertising, business management and business administration. In addition, it was registered in class 41 for providing sporting facilities and sports studies, sport camps, rental of sports equipment, organisation of sports competitions and entertainment.
In a decision dated 30 December 2015 the Hearing Officer dismissed the opposition, finding that there was no likelihood of confusion, either direct or indirect.
The Hearing Officer applied the principle of Gerard Meric v Office for Harmonisation in the Internal Market to find that business management, as a broad term, includes mentoring services and was therefore an identical service. Applying Meric again, it was also found that providing a searchable database to the public to assist them in finding a personal trainer is an identical service to advertising. In addition to the identical services, the Hearing Officer found that many of the other services were highly similar.
When comparing the marks the Hearing Officer considered El Corte Ingles, SA v OHIM noting that the beginnings of words tend to have more visual and aural impact than the ends. Therefore the differences in the beginning of the marks, namely the second letter in each of the respective marks and the capitalisation of the third letter of the earlier mark, put distance between the marks.
The Hearing Officer also commented that neither of the marks have a literal meaning and so instead he chose to consider their allusive nature. Mefit suggests someone who is fit or wanting to become fit; in comparison McFit suggests the use of a common prefix of a Scottish or Irish name. Accordingly the Hearing Officer found that there was no conceptual similarity between the marks.
Use of the registered Mark
The McFit mark had been registered for over five years prior to publication of the application and so, the Applicant requested that McFit provide proof of use of the earlier mark for all the relied upon services. Interestingly, the Hearing Officer chose not to consider any evidence of use of the McFit mark. Instead stating that he would proceed on the basis that there had been use and, following his assessment, if he considered there was a likelihood of confusion between the marks he would then consider evidence of McFit's use. As identified by the Hearing Officer, this is an efficient approach to reviewing the opposition. The final decision was that there is no likelihood of confusion and so any time spent considering use of the McFit mark would have been wasted.
On review of the Hearing Officer's assessment, it is clear his decision to dismiss the opposition lies predominantly in the lack of similarity found between the marks. Although the Hearing Officer found that some of the services were identical, he did not consider this enough to offset the overall lack of similarity in the marks.
This case highlights the importance of considering the similarities in both the respective marks and services when bringing an opposition. Although there is the possibility that a lesser degree of similarity between marks may be offset by a greater degree of similarity between the goods and services, this case serves as a reminder that strength in one aspect of the opposition will not necessarily be enough to offset the weaknesses in other aspects.