Famous trademark fights dilution, but being FIT in class 41 fights back
By Antonella Balbo.
On 7 February 2023, Chamber 3 of the National Court of Appeals in Federal Civil and Commercial Matters confirmed the administrative decision of the Argentine Trademark Office (Ar TMO) by means of which it determined that the trademarks “CROSSFIT” and “ROSFIT” are not confusingly similar, in the case “Crossfit Inc. v. Gaspe Marcos”[1].
Background:
The defendant -Marcos Gaspé- applied for the registration of the trademark ROSFIT (& design) for classes 38 and 41, against which the company CROSSFIT INC. filed an opposition based on their trademark CROSSFIT -registered in class 41 and others, and in use to identify a particular type of physical workout-.
The opponent understood that the trademarks were confusingly similar. Even when applied for class 38, ROSFIT identified related services, which constitute an exception to the principle of specialty among international classes. The opponent invoked indirect confusion, a direct link between the services identified by the opposing signs, the reputation of the mark, unfair competition and the potential dilution of their sign.
The applicant did not respond to CROSSFIT INC.’s opposition.
Notwithstanding that CROSSFIT has been granted as a trademark in more than 115 jurisdictions and nowadays has approximately 402 registrations around the world, the Ar TMO understood that the marks under discussion could coexist. The administrative decision explained that despite the fact that there could be a certain link between the services identified with the marks for class 38, when compared, ROSFIT included a logo that awarded sufficient distinctiveness to the sign.
In addition, the term FIT is a weak element found in many of the registrations in class 41 and as such, cannot be monopolized.
Hence, CROSSFIT INC.’s oppositions were dismissed.
Determined to protect their registration, the opponent filed an appeal with the Chamber of the National Court of Appeals. The applicant -and now the defendant- did not file any response to CROSSFIT INC.’s claim.
Court ruling:
Although phonetically the marks may sound similar, in the ideological/conceptual ground, it is clear that they convey different meanings. CROSSFIT contains two isolated terms which as a whole evoke a particular workout training technique that involves movements from different disciplines, while ROSFIT only conveys being fit. As CROSSFIT is the necessary designation of this sports practice, ROSFIT would not be associated by the public consumer with the mark CROSSFIT but with the discipline itself. And the registration of CROSSFIT does not grant rights nor an exclusive monopoly over this discipline.
According to the ruling, the plaintiff failed to demonstrate that CROSSFIT enjoys the status of a well-known mark. The judges understand that in any case, what would be famous would be the type of workout or the system in which it is implemented, but not the trademark that reproduces its definition. In particular, the ruling states that CROSSFIT INC. does not have a monopoly over this type of highly demanding exercise, nor would a company called Karate Inc. or Calisthenics Inc., or Fencing Inc. have such a monopoly.
When analyzing the graphic aspects of both signs, while CROSSFIT is a wordmark, ROSFIT has a design:
This logo is considered the stronger component of ROSFIT and the clear element that differentiates ROSFIT from CROSSFIT.
Considering all of the above, the Chamber evaluated the likelihood of confusion between the two signs, and unfortunately for CROSSFIT INC., two out of three Judges found the trademarks sufficiently different. Due to a majority vote, the Chamber ruled in line with the administrative decision and dismissed the oppositions filed on the grounds of CROSSFIT.
The dissenting vote however understood that the Ar TMO’s administrative decision should have been overruled because the oppositions filed by CROSSFIT INC. were well founded. This vote considered the element FIT present in both marks and stated that when a trademark has within its components an element that is considered weak – “FIT” would be weak given that it is found among many of the marks in the class-, this trademark must tolerate that others include this same term, only when sufficiently differentiating elements are added. Which is not the case herein.
Additionally, the marks bear the same amount of syllabus, six of their letters are the same and are disposed in the exact same order.
As for the exception to the specialty principle invoked for class 38, this vote stands on the fact that both trademarks identify the exact same services.
Due to the fact of this likelihood of confusion in at least one of the levels of comparison, CROSSFIT INC.’s oppositions should have been declared well-founded.
Conclusion:
The discrepancy between the votes of the judges shows that there might be two sides of the same coin. Certainly, the plaintiff did not agree with the considerations of the majority and filed an extraordinary appeal with the Supreme Court of Justice.
We trademark readers shall wait and see if the merits of the case are considered within the Supreme Court’s competence or if CROSSFIT INC.’s appeal is dismissed.
For further information please contact: abalbo@ojambf.com
[1]CCCF, Chamber III, 07/02/2023. CROSSFIT INC. v. GASPÉ, MARCOS s/ Appeal of Administrative Resolution, File No. 12214/2022
