Fitbit settles trade mark suit against South Australian billionaire’s co.
Intellectual Property July 3, 2018 10:20 pm By Cat Fredenburgh | Melbourne

Fitbit has resolved a trade mark case brought against the convenience store owned by billionaire Yasser Shahin over his company’s “Footbit” and “Headbit” trade marks.

A notice that the case had been discontinued was filed on Monday.

Fitbit, the San Francisco-based maker of activity tracking devices, sued Shahin Enterprises, the operating entity behind On The Run convenience stores in South Australia, in December calling for the cancellation of the company’s “Footbit” and “Headbit” trade marks covering activity trackers and apparel.

Fitbit claimed Shahin’s “Footbit” and “Headbit” trade marks, which took effect in September 2016,  violate the “Fitbit” trade mark, created in 2007. At the time Shahin’s marks were approved, Fitbit had prior registration rights for “substantially identical or deceptively similar trade marks for similar goods and services”, it said in its statement of claims.

The “oo” in “Footbit” was the only change to the “Fitbit” registered mark, Fitbit claimed.

According to Fitbit, Shahin’s trade mark application for the marks was made in bad faith. The use of the Shahin trade marks also violates the Australian Consumer Law and the Competition and Consumer Act, it said. Use of the marks would lead to the impression that Fitbit had licensed or sponsored them to Shahin, according to Fitbit.

“As of the priority date, Fitbit had acquired a reputation in the FITBIT trade mark and the suffix BIT in respect of the Fitbit goods and services and because of that reputation, the use of the Shahin marks would be likely to deceive or cause confusion”, the company said.

Shahin Enterprises is the operating entity of Peregrine Corp., which owns over 100 convenience stores in South Australia.

In February, Shahin filed an interlocutory application seeking to have the case moved to the company’s home base in South Australia.

Fitbit was represented by Allens.  Shahin was represented by Lipman Karas.

The case is Fitbit, Inc. v Shahin Enterprises Pty Ltd.

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Cat Fredenburgh

Cat Fredenburgh has been covering legal news for 12 years. She was previously Editor-in-Chief at US legal news publication Law360. She is the Co-Founder of Lawyerly.