Ottawa Athletic club vs. The Athletic club

Ottawa vs. Athletic Club
If you ever wanted another lame excuse not to go to the gym, here’s one: I wanted to go, but I went to the wrong gym!

While this may seem far fetched, it’s not entirely unreasonable given the existence of 2 gyms in Ottawa with very similar names.

Most of you in Ottawa will have heard of The Athletic Club, which has a location at the Train Yards, as well as in Orleans.

athletic club

However, there is also another gym in Ottawa called the Ottawa Athletic Club, which is completely unrelated to the Athletic Club.

tracksml

As a former trademark lawyer, when The Athletic Club opened up in Ottawa in 2010, I remember wondering to myself how this club could open up in Ottawa with this name when there was already another existing gym with a very similar name?

The Ottawa Athletic Club has been operating a gym on Lancaster Road in the east end of Ottawa for almost 40 years. Their website is located at www.ottawaathleticclub.com and they currently use this logo:

OAC Logo

By contrast, the Athletic Club operates various gyms throughout Ontario. They opened their first fitness facility in London in 1997, and since then, have opened other gyms in cities like Brantford, Guelph, Thunder Bay, and Waterloo. In 2010, they opened in Ottawa in Orleans, followed by another gym at the Train Yards in 2011. Their website is located at www.theathleticclub.ca and they currently use this logo, which they obtained a trademark registration for in 2005:

athletic club logo

The purpose of trademarks is to point to the source of the product or service. So when you’re buying a shoe or T-shirt with the Swoosh logo, you know you’re buying a Nike product. If another company started selling a T-shirt with a logo that looked identical to the Swoosh logo, you might think that it’s a Nike T-shirt, when it’s not.

So trademark law is all about confusion. In determining whether two marks are confusing with one another, you look at various factors, including the similarities between the marks and the similarities in the areas in which the marks are being used. In this case, given the similarities between the two marks (Athletic Club and Ottawa Athletic Club) and the fact that they are both being used for fitness facilities, you can see how people could be confused into thinking that the two gyms are the same, or are affiliated with one another.

Not surprisingly,  the parties have found themselves in Court.

The Ottawa Athletic Club recently brought an application to the Federal Court of Canada to expunge The Athletic Club’s trademark, and to prevent them from using this mark.

Last month in July, in a lengthy decision, the Federal Court of Canada agreed with the Ottawa Athletic Club, and held that The Athletic Club’s trademark was invalid, on the basis that it was clearly descriptive of the associated services. The Court also prohibited The Athletic Club from using this mark on the basis that the term athletic club “had become a generic term designating facilities similar to those operated by the parties in this matter”, and accordingly, that no one is entitled to adopt that mark as a trademark.

The decision forced The Athletic Club to delay the opening of its gym in Kanata, which was scheduled to open on July 21. Following the decision, an injunction was issued preventing The Athletic Club from using this name. In response, they planned to open up the Kanata gym under the name Ariston Fitness. However, the injunction was subsequently lifted, allowing The Athletic Club to ultimately open up the gym under their name.

I guess this is a good thing, since Ariston Fitness is such a horrible name.

The Athletic Club is currently appealing the Federal Court’s decision, and it will be interesting to see what pans out.

Thanks for reading!

 

 

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