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Protecting your Intellectual Property – Trade Mark Fight in the Digital Fitness Arena

A trade mark fight between Fitbit and Fitbug

Facts

Fitbug and Fitbit are two companies trading in digital fitness. Fitbug, a UK based company, started to trade in 2004 while Fitbit, a California based company, was founded in 2007. Since then, they have both been developing a series of wearable digital fitness products.

However, according to Fitbug, Fitbit’s products, website, and its trademark are too similar and create confusion in the mind of the consumers. Therefore, on 29 March 2013, Fitbug Holdings (plaintiff) filed a lawsuit in California against Fitbit (defendant) that alleged trademark infringement, unfair competition and business practices. The plaintiff claimed that it caused irreparable harm and damage to its company ant therefore asked the U.S. District Court in Northern California to order the defendant to permanently stop the use of its mark Fitbit, and prohibit the defendant from engaging in conduct that would continue to cause confusion between the two brands and services. At the time, the plaintiff produced evidence that it alleged led you to believe that the defendant was in fact, copying the plaintiff i.e similarities in the marks, similarities in some photos, images used in their websites and packages used for their products.

Decision

It looks like all those pieces of evidence have been submitted in vain as last week the District Court for the Northern District of California, San Francisco Division has granted summary judgment in Fitbit’s favour on the defence of laches.

Defence of laches

The defence of laches is a UK concept adopted in the US. It is an equitable defence that basically says that there has been an unreasonable delay by the plaintiff to bring its claim in a way that prejudices the defendant. It is left at the judge’s discretion and has a similar effect to a limitation defence so that if the judge is satisfied that there has been an unreasonable delay in enforcing an equitable right, it may strike out the claim. This defence has been developed based on the following maxim of equity: Equity aids the vigilant, not the sleeping ones. Therefore we can presume that the case Fitbug v Fitbit, the delay Fitbug Holdings took to bring its claim in 2013 was unreasonable due to the circumstances i.e Fitbit has been trading since 2007. It seems that Fitbug should have protected its rights and taken the appropriate legal steps far earlier. Waiting 6 – 7 years was too much for this court!

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