Summer BOD competition: social media queens engage in trade mark litigation

Social media queens Sophie Guidolin and Rachael Finch both run fitness businesses through Instagram, promoting the #healthy lifestyle. The contested use of the word ‘BOD’ by Rachael Finch led Sophie Guidolin to apply for an interlocutory injunction for trade mark infringement, as well as passing off and/or breach of the Australian Consumer Law. In deciding whether to grant the interlocutory injunction Perram J has to answer the tough questions, like ‘Is a booty band a garment?’. The #fitspo queens Sophie Guidolin and Rachael Finch have certainly given us a #litspo[1] case.

The Queens

Rachael Finch shot to Instagram fame after appearing in every television show worth watching – she was crowned Miss Universe in Australia 2009, competed on Dancing with the Stars Australia, appeared in MasterChef Australia, and worked as a television presenter and model on the side.

Sophie Guidolin became famous as a fitness guru, and in the true fashion of bodybuilders-turned-celebrities (think ‘The Rock’), Sophie Guidolin is ‘The BOD’. Her company holds a trade mark registration for the words ‘The Bod’ for physical health education services, and a look at her website shows that this mark is used mostly in relation to her exercise video series (…a tempting purchase following the Christmas break).

The alleged infringement arose from the recent launch of Finch’s new clothing range Body of Dance, abbreviated to ‘B.O.D’. The collection boasts leggings, shorts, tanks, and sweats which can take you elegantly from your yoga class to your chai latte brunch date – and nearly every item is emblazoned with B.O.D. The items have been sold since October 2017, and Finch has organised a distribution deal with Myer to launch this line in stores in February 2018.

Being #instafamous comes with a cost though, because The BOD soon discovered Finch’s new range though her Instagram posts. Changing her usual motto from ‘Stop Wishing Start Doing’ to ‘Stop Wishing Start Suing’, The BOD brought an application for an interlocutory injunction to prevent Finch from using B.O.D. in her clothing range.

The use of the ‘BOD’ trade mark in clothing

The BOD claimed that her company has a clothing range on which the mark is used, providing evidence that it sells leggings, bikini and booty bands. Since she was opposing the use of ‘BOD’ in Finch’s clothing range, this was a key argument. On closer inspection of the evidence it turned out that the company had sold a grand total of 127 leggings since April 2016, and a few hundred bikinis. The company had however sold 8,474 booty bands.

For those who don’t spend their weekends scrolling through #fitstagram, Perram J provided a helpful description of booty bands at [8]:

When one looks at what the booty bands are, they are elastic straps which are worn with a view to tightening one’s buttocks. Other than in very limited circumstances, not presently germane, I do not accept that the booty bands are in fact garments.’

Perram J therefore focussed on the sale of leggings and bikinis in assessing the scope of The BOD’s clothing business, concluding that the clothing branch was both small (sales totalled no more than 478 items) and did not seem to be getting any larger. 

The Law

An interlocutory injunction is an urgent injunction granted pending trial and can be an important weapon in protecting registered trade marks and preventing irremediable brand damage. The grant or refusal of an interlocutory injunction often results in the prompt resolution of the dispute between the parties, with cases often settled after an application for interlocutory relief is decided.

To obtain an interlocutory injunction, the applicant must show there is a ‘serious question to be tried’ or ‘prima facie case’ by putting on evidence of ownership of the relevant IP rights and of the alleged infringement. The applicant must also show that the balance of convenience favours the granting of an interlocutory injunction, and that damages will be an inadequate remedy. Factors the court will take into consideration in considering the balance of convenience are the impact on the business of parties if the injunction is granted (or refused), the life-cycle of the products and the potential for damage to the brand.

In this case, Perram J accepted that there was a serious question to be tried, although he did note that the case was not strong. The case for interlocutory relief then rested on the question as to whether the balance of convenience favoured the granting of an interlocutory injunction.

The Result

Perram J looked at four factors in considering balance of convenience:

  1. The BOD has an arguable case, but it is weak.
  2. The BOD (and her company) delayed bringing proceedings. Considering how closely The BOD presumably monitored Finch’s Instagram, she would have known about the clothing products when they were first promoted in October, rather than in December as claimed.
  3. The BOD’s company had only a small clothing business, which did not appear to be getting any larger. Finch has a comparatively large and well organised product range.
  4. Since most of the clothing was already branded, an injunction would render the products worthless.

Weighing up these four considerations, Perram J decided to refuse the injunction, and dismissed the application. The proceedings remain on foot, and unless the dispute is resolved in the meantime, the question of trade mark infringement remains open and will be decided at trial.

So there you go, Finch’s B.O.D. range is still available for purchase, at least for now. Time to go order a pair of leggings and a sweat shirt for a difficult weekend of lying on the couch, scrolling through #fitstagram, and eating the rest of the leftover holiday chocolate. A summer BOD isn’t all it’s cracked up to be.

[1] #litigation inspiration