On the perception of the terms “ifitness” and “fit” in the mind of the Spanish average consumer.
It its ruling of 17 December 2014, the Court of Appeal in Alicante (in Spanish), acting as the Community Trademark Court, confirmed the First Instance decision of the Community Trademark Court nº 1 of Alicante issued on 11 July 2014 (in Spanish) that rejected the trademark infringement and cancellation action filed by the company ICON IP, Inc. against the Spanish company IFITNESS INSTALACIONES DEPORTIVAS S.L., represented by our law firm.
The trademarks confronted in the proceedings in question were, on one hand, Community trademarks nº 1094325 “I FIT” and nº 3617115 “IFIT” owned by the plaintiff and, on the other hand, the Spanish trademark nº 2983635 “IFITNESS” registered by the defendant company, all of them protecting services in class 41 and, in particular, sport and entertainment activities.
In spite of the undisputed identity and high similarity of the compared services, as well as the coincidence of the initial parts of the signs at hand, both Courts understood that the relevant public will not think that the services protected by both marks have the same commercial origin or that there is any kind of economic link between the owner companies.
The above scenario is a good example of a case where the existence of certain factors that might lead us, at first glance, to the finding of the likelihood of confusion is not sufficient, being also necessary the assessment of other aspects that are not always given enough relevance.
In the first place, the Court shared our thesis that the sport and fitness activities are not of immediate consumption, but imply a periodic disbursement that can be more or less elevated and affect physical development. Therefore, the Court concluded that the relevant consumer´s level of attention in the process of selection of the services in question will be higher than normal.
In the second place, as regards the comparison of the signs, the Court indicated that taking into account that the earlier marks of the plaintiff were short signs; the fact that the later mark duplicates their extension is something not to be ignored. Also, the Court understood that the graphic differences between the confronted signs, namely, the different colors and stylization as well as the different ending of the later mark that includes the double “ss” which is rare in the Spanish language will not go unnoticed for the relevant public.
Moreover, the conclusion of the Court regarding the perception of the relevant public of the word “fitness” is also worth noting. According to the Court, the widespread use of this word is a well-known fact and, although not recognized by the Royal Academy of the Spanish Language, the average consumer associates it with the continuous physical activities aimed at achieving a general state of wellbeing and physical health.
The same cannot be said, however, of the word “FIT” which is included in the earlier trademark of the plaintiff, since it does not have any particular meaning for the Spanish consumer who cannot be expected to have sufficient linguistic knowledge.
Having said this, the Court dismissed the lawsuit, reaching the correct conclusion that the mark “IFITNESS”, composed of only one word, can be perceived, in any case, as “i” plus “fitness” but never as a term composed of “ifit” plus “ness”, since neither “ifit” nor “ness” have a meaning or autonomy in the contested sign in the mind of the consumer.
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