Mad Dogg Athletics asserted that they were the world’s largest equipment-based education company offering sport equipment, apparel, services, accessories etc. It utilised the Trade Mark ‘SPINNING’ for its patented stationary exercise bikes and had licensed various other Trade Marks including ‘SPINNER’, ‘SPIN’, ‘SPIN FITNESS’ and ‘SPIN POWER’.3 Colette McShane utilised the Trade Mark ‘SPIN HIIT’ in relation to their high intensity interval training program.4 For the Opponent to succeed in preventing registration of the Applicant’s Trade Mark, it was necessary to persuade the Registrar that the Trade Mark ‘SPIN HIIT’ was substantially identical or deceptively similar to a Trade Mark which had an earlier priority date,5 as per section 44 of the Act.6
An assessment of substantial identity was adopted from Justice Windeyer’s analysis in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd.7 This assessment involves comparing the Trade Marks alongside each other observing similarities and differences and considering how each of the features contribute to their total resemblance or dissimilarity.8 The Delegate considered, after performing such analysis, that the only common element was the word ‘SPIN’ but ultimately, the Opponent utilised different variations of the word according to its grammatical construction (i.e. as a noun or verb). Similarly, the Delegate considered that there was a sufficient distinguishable impression regarding both Trade Marks and was not sufficiently satisfied that section 44 of the Act9 was applicable.
The issue of deceptive similarly was subsequently considered, relating to section 10 of the Act.10 The Delegate particularly referred to longstanding principles summarised in Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd.11 Essentially, this assessment reviews nine steps in the assessment of deceptive similarity. A condensed description of these includes judging the effect of the mark on consumers’ minds, judging the effect of the Trade Mark on a person with ordinary intelligence and memory, assessing the real tangible danger of confusion, how it would cause confusion, and if there were any essential features of the mark which would cause confusion if these essential features were used by another mark. The Delegate was not satisfied that there was deceptive similarity when considering these steps, highlighting that consumers are unlikely to be confused between either Trade Mark, and that the term ‘SPIN’ has been used for some years to commonly describe exercise classes involving stationary exercise bikes.
This opposition decision highlights the effect of sections 10 and 44 of the Act12 and the threshold to successfully oppose registration of of a Trade Mark which shares few features, and would be unlikely to cause confusion amongst consumers.
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1 Mad Dogg Athletics Inc v Colette McShane Pty Ltd [2023] ATMO 7 (‘Mad Dogg’).
2 Trade Marks Act 1995 (Cth) s 52 (‘Trade Marks Act’).
3 Mad Dogg (n 1) 12.
4 Ibid 13.
5 Ibid 18.
6 Trade Marks Act (n 2) s 44.
7 Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407.
8 Ibid 415.
9 Trade Marks Act (n 2) s 44.
10 Ibid s 10.
11 Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd [2012] 97 IPR 183.
12 Trade Marks Act (n 2) s 10 & s 44.
