This case deals with some commonly encountered issues: inherently weak and potentially invalid trade marks, broad registered rights versus narrow actual use, and the advantage of relying on a registration less than five years old. The case serves as a reminder of the conflict between the legal position and the actual commercial position on the subject of confusion between two brands.

The marks

The Applicant in this case, Fitness Leisure Limited, trading as Be Inspired Gyms applied to register a device mark incorporating the words ‘Be Inspired Gyms’ and a “B.I.G.” logo for gym wear in class 25, gym apparatus and fitness machines in class 28 and various gym services in class 41:

The application was opposed by The English Sports Council on the ground of similarity and a likelihood of confusion with various registrations for BE INSPIRED marks, including a plain word mark (this being the mark on which the opposition was decided). This registration covered, among other goods and services, clothing in class 25 and various sports-related services in class 41, including the provisions of sports facilities, organisation and management of sporting events, tournaments and competitions and rental of sports apparatus. Reputation and earlier use were also claimed but the case was not decided on these grounds.

Opponent’s prior use

Importantly for the Opponent (as its use was very limited in nature) the earlier marks, having been registered for less than five years, were not subject to proof of use. Whilst the BE INSPIRED mark received a lot of exposure in connection with the London Olympic Games 2012, the use of the mark was limited in nature to use in connection with sports information services.

Furthermore, the Opponent did not always use BE INSPIRED in a trade mark sense, but rather as part of promotional message: “Are you ready to Be Inspired?”

Use vs registration

The Applicant focused in its submissions on the differences between the parties’ actual business activities, noting that the Opponent did not operate a gym or provide gym clothing. Not surprisingly, this was held to be irrelevant. The appropriate comparison was between the Applicant’s specification and the Opponent’s specification because the Opponent’s marks were not subject to Proof of Use and the Opponent, quite legitimately, may not yet have put the mark into use for all of the goods and services in the registration.

Distinctive character

The BE INSPIRED mark was held to have a low level of distinctive character but possessed a small degree of enhanced distinctiveness for the provision of information relating to sports, fitness and sporting activities.

The Applicant could have challenged the validity of the Opponent’s mark in terms of distinctiveness in separate proceedings, but it failed to do so.

Instead, the Applicant put up a weak (and somewhat misguided) defence. Relying on the ORIGINS case, the Applicant suggested that BE INSPIRED did not play an independent distinctive role in its BE INSPIRED GYMS device mark. This argument was dismissed. It was held that BE INSPIRED would be seen as the name of the Applicant’s gym. The Applicant also pointed to other BE INSPIRED marks on the EUTM register to support an argument that BE INSPIRED is generic. This case serves as a reminder that state of the register evidence is irrelevant.

On the question of validity of the earlier mark and the suggestion that it was in fact a generic term, the Registrar confirmed that it was not open to him to make a finding of genericism and stressed that the registration was prima facie evidence of the validity of the mark.

Outcome

The Opponent won this case on a finding of a likelihood of confusion. This arose from the Registrar’s conclusion that the words BE INSPIRED were the dominant and distinctive element of the Applicant’s mark, and that ‘rental of sporting apparatus’ in class 41 is complementary and therefore similar to ‘gym apparatus and fitness machines’ in class 28. There was more obvious similarity/identity between the other goods and services in the Applicant’s specification and those in the Opponent’s specification.

This case may have been decided differently had the Applicant been in a position to put the Opponent to proof of use of its marks and/or if the Applicant had applied to invalidate the earlier registrations.

Whilst we can sympathise with the Applicant’s position that there is no likelihood of a commercial conflict between the parties, the commercial position does not come into play for five years following registration of the earlier mark under UK and EU trade mark law. Furthermore, an inherently weak mark may still be a powerful opposition tool.