SINGAPORE: FOX V FOX

December 1st, 2014

 

In opposition proceedings involving Singapore-based Fox Street Wear Pte Ltd and United States-based Fox Racing, Inc, the Intellectual Property Office of Singapore (IPOS) has refused registration of Singapore Trade Mark Application No. T05/03947C in Class 18 filed by Fox Street Wear Pte Ltd.

Fox Street Wear Pte Ltd (“herein referred as the Applicant”) filed Trade Mark Application No. T05/03947C in Class 18 for the mark clip_image002 with IPOS (hereinafter referred to as the “Application Mark”). The Application Mark was accepted by IPOS and subsequently published for opposition on 15 January 2007.
Fox Racing, Inc (“hereinafter referred as the Opponent”) filed a Notice of Opposition on 14 May 2007 to apply to IPOS to refuse the Application Mark from being registered. They have provided evidence of use of their marks and the trade mark registration details of their Singapore trade marks such as clip_image004, clip_image006,clip_image008 etc. (hereinafter the Opponent’s Marks).

The Opponent had relied on many Sections of the Singapore Trade Marks Act to oppose the Application Mark but for the purposes of this article, the author is relying on Section 8(2) (b) only as it is the ground for opposition that had succeeded.

Under Section 8(2) (b), a trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public.

In order to succeed under Section 8(2) (b), there are two threshold issues that need to be satisfied i.e. visual, aural and conceptual similarities between the Application Mark and the Opponent’s Mark(s) and good/service similarities the Application Mark and the Opponent’s Mark(s).

In discussing the visually similarity, the IPOS held that “The dominant component of both marks is the “fox head” device within the word “FOX”. Furthermore, the overall graphic design and font style used for the textual features are similar, while the “fox head” devices strongly resemble each other”.
With regards to the aural similarity, the IPOS had adopted the Court of Appeal’s decision in Staywell case i.e. by ascertaining the “common dominant element” of both marks and the IPOS held that both the Application Mark and the Opponent’s Marks would be pronounced by the average consumer as “FOX” and held that the marks are aurally similar (and arguably identical, from an aural perspective).

With regards to the conceptual similarity, the IPOS held that the Application Mark and the Opponent’s Marks both rely on the concept of a fox. However, the IPOS has aldo indicated that that this similarity is less relevant since the concept of a fox is also used by other traders such as Fox-Wizel Ltd and “FOX” by Twentieth Century Fox Film Corporation) at least in relation to the goods in Class 25.

Under the first threshold, the IPOS had agreed with the Opponent that the Application Mark is visually, aurally and conceptually similar to the Opponent’s Marks.
In discussing the good/service similarity, the IPOS had noted that the Application Mark is applied for in respect of “Luggage and cases; bags and back packs, sports bags, satchels, schoolbags, portfolios, cases, wallets, holders, travelling bags, knapsacks, rucksacks, holdalls, handbags, purses, briefcases, belts, straps, garment bags, duffel bags, shoulder bags, waist bags, toiletry bags, key fobs, key cases, all made wholly or principally of leather, imitation leather, canvas fabric or combinations thereof; parts and fittings included in Class 18 and that the Opponent does not have any registrations in Class 18. Among the goods for which the Opponents have relevant registrations, the goods which could most reasonably be regarded as being similar are “Clothing, namely jackets, sweatshirts, jerseys, shirts, shorts, hats, caps, gloves and belts” registered in Class 25. It would therefore be convenient to compare these goods with the Applicants’ goods of interest.

The IPOS held that the Applicant and the Opponent both retail the relevant goods in Class 18 and Class 25 to their customers and therefore the goods in question are similar.
Therefore, the IPOS had refused registration of the Application Mark and awarded the Opponent 50% of their costs to be taxed, if not agreed.