CrossFit, an entirely too vigorous regime of exercise as far as we are concerned, is an international fitness business with many adherents across the world and in Australia. As the evidence in this matter noted,

“[The Opponent] licences the CrossFit mark to affiliates throughout the world, and there are now approximately 12,836 gyms providing specialised services under the CrossFit mark throughout the world, and 601 of those gyms are based in Australia. There are approximately 116,381 certified CrossFit trainers throughout the world, and 5,869 of those trainers are based in Australia.”

When health club and fitness training services provider Bossfit Pty Ltd (the Applicant) filed a trade mark registration application for the name “BossFit” under Class 41 services, the application was opposed by Crossfit Inc (the Opponent) using the typical “scattergun” grounds for opposition, including ss 42, 44, 58, 60, and 62A ofthe Trade Marks Act 1990. The Opponent provided evidence of a number of its registered “Crossfit” trade marks, all of which are covered under health and fitness-related goods and services.

The interesting aspect of this case is to do with one of the grounds – s44. When assessing the issue of whether the Applicant and the Opponent’s trade marks are substantially identical, the hearing officer noted that the Applicant’s trade mark begins with the word “Boss” while the Opponent’s prefix is the word “Cross.”

The Applicant had a good explanation for the use of the word “BOSS”, as set out in a declaration which intermingled evidence with opinion and legal submissions (we note the rules of evidence do not apply in this forum):

‘BossFit’ as a brand was conceived and launched as an invented word in September 2012 by or on behalf of the Applicant to promote health and fitness, initially to the local Brisbane community.

The BossFit brand was inspired by a love of extreme sports, functional fitness, popular Facebook page Boss Hunting … and popular phrase ‘Like a Boss’, a catchphrase often used in memes that feature a person completing an action with authority and finesse.

The two core design concepts of the BossFit brand are ‘bossness’ and physical fitness. …:

The dominant or essential element within the overall impression of the CROSSFIT Marks is the word prefix ‘CROSS’. The dominant or essential element within the overall impression of the BossFit Mark is the word prefix ‘Boss’. …

The words ‘Boss’ and ‘Cross’ have completely different natural meanings and convey completely different concepts and the two words ‘Boss’ and ‘CROSS’ are not substantially identical or deceptively similar either visually or orally.

The BossFit Mark and the CROSSFIT Marks contain the same word suffix, namely, the word ‘FIT’. There are hundreds of trade marks registered in class 41 and associated classes with the word suffix ‘FIT’. …

The Applicant believes that the ‘FIT’ word suffix element could not itself be distinctive of the CROSSFIT Marks.

The Applicant believes that the whole words ‘BossFit’ and ‘CROSSFIT’ naturally convey completely different concepts and meanings, that they are phonetically different and that they are not substantially identical or deceptively similar either visually or orally.

The hearing officer accepted this. The comparison then moved onto determining whether there is deceptive similarity.

While discussing the issue of deceptive similarity, the Opponent submitted in a comparison of the two trade marks, the natural and normal pronunciation should be considered, including “the possibility that a word may be slurred” (not just a peculiarity for Australian accents – the concept has a pedigree dating back to the 1925 case of London Lubricants (1920) Ltd’s Appn 42 RPC 264 ). The Opponent submitted that the only difference between the two trade marks are the letters “CR” at the beginning, which have been replaced by the letter “B”—the substantial part of both trade marks is “OSSFIT.”

The Opponent further argued that phonetically, there is a high degree of similarity between the two trade marks and that deception or confusion is highly likely, given the possibility of imperfect recollection, that a person may be caused to wonder whether BossFit’s services has any relation to the Crossfit trade mark.

The Applicant’s counter argument, delivered through a written submission, is that the dominant or essential elements in the trade marks are the word prefixes, CROSS and BOSS, which have completely different natural meanings and convey different concepts and therefore would not lead to deception or confusion.

The Applicant also advanced the argument that the similar element in both trade marks, FIT, could not by itself be distinctive of the trade marks due as evidenced by the hundreds of trade marks registered in class 41 that bear the same word suffix. The hearing officer agreed with the Applicant’s argument. “The respective trade marks are concatenations of two words, the second of which is ‘FIT’. This element lacks distinctiveness in respect of the relevant services. “ The Applicant’s trade mark has been ordered to proceed to registration. This must be correct: te Opponent is not entitled to assert exclusivity over the suffix “FIT” through the back door.

Relying upon suffixes to advance an opposition is always tricky. In Merial v Virbac [2012] ATMO 83 (25 September 2012), in a comparison between “Fiproline” and “Frontline”., while both marks began with the letter “f”, and ended with the suffix “-line”, they were found not to be deceptively similar. On the other hand, in Pfizer Products Inc v Karam(2006) FCA 166, in a comparison between “VIAGRA” and “HERBAGRA”, the court at [38] and [54] agreed with Pfizer’s submissions:

In my opinion, a substantial number of members of the public would identify herbal medicines used to aid health, vitality and sexuality marketed under the name ‘HERBAGRA’ to be a herbal version of VIAGRA, whether or not from the same source, or connected with VIAGRA because of the pervasive reputation of VIAGRA.:

The argument for Pfizer is that the use of the suffix ‘-AGRA’ will cause the requisite confusion as to whether:

(a) the HERBAGRA product is out of the same stable as VIAGRA;

(b) the active ingredient in the HERBAGRA product is that in VIAGRA or is from the same family of ingredients;

(c) the HERBAGRA product is equivalent to VIAGRA in terms of its effects or achieves similar or related effects.

It seems the suffix must be especially notorious to be the proper foundation for such an argument.