Board of Appeal finds that BODYFIT is not descriptive

The Board of Appeal has issued its decision in a case involving the trademark BODYFIT (written as BodyFit).

An application was filed for the word mark BODYFIT for the following goods in Class 5 of the Nice Classification:

"pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; sanitary napkins; panty liners (sanitary); menstruation tampons; sanitary shorts; diapers; babies' diaper-pants; disposable diapers or nappies of paper or cellulose for babies; diapers or nappies of paper or cellulose for babies; babies' napkins; incontinence diapers; incontinence diapers or nappies of paper or cellulose; incontinence pads; incontinence liners; incontinence shorts; breast nursing pads; incontinence trunks; sanitary masks; bandages for dressings; adhesive plasters; absorbent cotton; gauze for dressings; oiled paper for medical purposes; pharmaceutical wafer; lactose (milk sugar); lacteal flour (for babies); eye patches for medicated purposes; ear bandages; wet tissues".

The Patent Office concluded that the trademark BODYFIT lacked distinctive character for the goods covered. The mark could be translated into Icelandic as 'hraustur líkami' (healthy body) or 'passar líkamanum' ('fits to the body'). Consequently, the mark would describe important qualities of the goods and did not have the distinctive character necessary to fulfil the conditions set forth in Article 13 of the Trademarks Act (45/1997).

The Patent Office further reasoned that 'hraustur líkami' would describe, for example, "dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals and lacteal flour (for babies)", while 'passar líkamanum' would describe, for example, "sanitary napkins; panty liners (sanitary); menstruation tampons; incontinence diapers and incontinence diapers or nappies".

The Patent Office then added that the trademark BODYFIT would generally and directly indicate that all the goods covered would support good health and that the trademark would promote such thoughts in the mind of the relevant consumers.

The Board of Appeal overturned the decision. It argued in a general introduction that marks that are descriptive or marks that are based on common signs or phrases used in trade or day-to-day life do not fulfil the conditions set forth in Article 13 of the Trademarks Act. The bases for the condition that marks should possess distinctive characteristics are, on the one hand, that descriptive marks are not able to distinguish the goods of the trademark owner from those goods and, on the other, that no one should have exclusive rights to words that everyone in the relevant field of business needs to use. When evaluating whether a mark fulfils the condition of distinctiveness, each case should be considered based on its own facts and all circumstances should be evaluated. Word marks in a foreign language may also lack distinctiveness in Iceland if it can be assumed that the majority of the general public has knowledge of that language, as is the case with English.

Further, the board reasoned:

"Paragraph 1, Article 13 of the Trademarks Act states that marks that, exclusively or with only minor adjustments or additions, indicate, among other things, the type of goods or services, condition, quantity, usage, price, origin or time when the product was made or the service was provided, shall not be deemed to possess sufficient distinctive characteristics. The word mark BODYFIT is composed of the English words 'body', which for example means 'líkami' in Icelandic, and 'fit', which for example means 'hraustur, vel á sig kominn/í góðu formi eða passandi'.Since the two words that form the mark are not used in a traditional order according to English grammar, the mark has no clear meaning, but rather suggests physical training and a healthy diet. In the meaning of 'passa líkamanum', the mark mostly suggests clothes, particularly sports clothing, but not the goods in the list of goods in the application. Even if it could be agreed that the mark could possibly give the impression to consumers that the product fits to the body or that it contributes to health and fitness, it is not evident that the combination 'BodyFit' includes a general description of the goods in the application. It is the opinion of the Board of Appeal that the mark is at best allusive, but not descriptive of the goods covered. It is not evident that others in this field of business need to use the word 'BodyFit' to describe goods in Class 5."

The Board of Appeal thus considered that the mark fulfilled the condition of distinctiveness and could be accepted for registration.

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík