ICON is a world-renowned fitness equipment provider, and it owns a popular brand “iFit”, which is mainly used in smart training systems and smart wearable devices that support its fitness products.
“ifitfun”, the disputed trademark in this case, is registered by the third person, Mr. Cao, in Class 28 for "brainpower toys; balls for games; rehabilitation apparatus; beauty ware; pressure ware; body-training apparatus; machines for physical exercise; run-up ware; climber’s harness and plastic racetracks”. ICON company cited its trademarks “iFIT” and “IFIT”, which are registered prior and can be used in Class 28 for the products of “body-training apparatus” and “machines for physical exercises” etc., to apply for invalidation of the disputed trademark. After review, the Trademark Office held that the disputed trademark shall be declared invalid in use on the products that are in the similar groups as those of the cited trademarks, such as "body-building machines; rehabilitation apparatus; pressure ware”, however,the disputed trademark can be maintained in use on the rest of products, such as "smart toys; balls for games; sports equipment; run up ware; climber’s harness and plastic racetrack".
In disagreement with the above decision, ICON entrusted our law firm to file an administrative litigation vs the Trademark Office.
After hearing, the Beijing IP Court held that although the products approved for use by the disputed trademark and by the cited trademark are in different groups, they share certain overlap and strong relevance in terms of functional features, sales channels and consumer groups, etc., which constitutes the same or similar products. In addition, the third person’s act of registering the disputed trademark is not of subjectively goodwill, considering the publicity of the plaintiff and its products, and the distinctiveness of the cited trademark, which is easy for the relevant public to get confused or misidentify the source of the disputed trademark. Therefore, the disputed trademark constitutes similar trademark on the same or similar goods vs the cited trademark, violating Article 30 and Article 31 of the Trademark Law. It shall be declared invalid for use on all products. The decision made by the Trademark office shall be revoked and replaced by a new decision.
In trademark right determination review, the "International Classification of Goods and Services for Trademark Registration" and "Similar Goods and Services Classification Table" are usually used as references for judging similar goods or services. However, due to the continuous updating of goods and services, the judgment of similar goods or services will also be adjusted accordingly. In administrative cases involving trademark invalidation, case analysis should be carried out based on specific circumstances. This case combines the characteristics of the product itself, the subjective intention of the registrant of the disputed trademark, the actual use situation and the possibility of confusion and other consideration to provide a comprehensive view for judgment, which has provided a great reference for the handling of future similar cases.