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31st July, 2015

In the opposition hearing of a trade mark application by Southern Rubber Works Sdn. Bhd. (hereinafter be referred “the Applicant”), opposed by Converse Inc. (hereinafter be referred “the Opponent”), the Intellectual Property Office of Singapore (hereinafter be referred as “IPOS”) has reiterated the requirements for opposing a trade mark application for being identical or similar with an earlier trade mark registered and protected for the identical or similar goods and services for which the application is sought to be registered. IPOS has also reiterated the requirements for opposing a trade mark application in that its use should be prevented by virtue of the law of passing off and the requirement for opposing a trade mark application on the ground that the application is made in bad faith.

The application/opposed mark in this hearing is js. The mark is registered in Class 25 for the following goods:

Footwear, sportswear, headwear and articles of clothing, beach clothes, coats, cyclist’s clothing, field coats, jackets, jackets, pajamas, parkas, rainwear, shorts, singlets, sport shorts, sports jerseys, sports shirts, swimming trunks, swimsuits, tennis skirts, track suits, T-shirts, vests, windbreaker, badminton shoes, beach shoes, boots, football boots, football shoes, golf shoes, gymnastic shoes, jogging shoes, mountain slippers, rain shoes, sandals, slippers, sports sandals, sports shoes, tennis shoes, belts [clothing], caps, clogs, hats, headbands, inner soles, sash, skull caps, socks, sports headgear, underwear, visors, wristbands [clothing].

The preliminary issue before the Adjudicator was whether the Opponent must be a registered proprietor of the earlier marks that they are relying on to oppose a trade mark application. The Applicant stated that the Opponent was the proprietor of the earlier trademarks, cited against the opposed mark, at the time of filing the Notice of Opposition. However, as the earlier trademarks have been assigned to All Star CV, an affiliate company of the Opponent, in 2013, the Opponent, who is no longer the owner of the earlier trademarks since 2013, has lost their right to proceed in these opposition proceedings.

The Adjudicator accepted the submission of the Applicant that there is no requirement that the Opponent must be the proprietor of the earlier marks they are relying on for these opposition proceedings nor is there a requirement that they must be persons having any sufficient interest (which even so, arguably they have as they were the proprietors of the earlier trade marks) relying on the decision in J.E Borie SA v MHCS [2013] SGIPOS 4, wherein it was held that a party may rely on third party marks in opposition proceedings under section 8(2) of the Trade Marks Act.

Opposition under Section 8(2)(b)

It is imperative to reproduce Section 8(2)(b) here:

8.—(2) A trade mark shall not be registered if because —

… (b) 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.

The Adjudicator has stated that the test for Section 8(2)(b) is the step-by-step approach enunciated by the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 (“Staywell”). The specific elements that must be considered are: 1) the similarity between the registered mark and the allegedly infringing mark; 2) the similarity or identity between the good or services in relation to which the marks are used; and 3) the relevant segment of the public in relation to whom the court must consider the likelihood of confusion.

With regards to the similarity in the marks, the Adjudicator stated that marks can be visually, aurally or conceptually similar and the assessment for similarity is mark-for-mark without consideration of any external matter (Staywell). The Adjudicator has reiterated the decision in Staywell that the similarity of the marks must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The Adjudicator accepted that the only registered mark that stands to be considered is this mark js02 registered for headwear and footwear. After thorough examination of this mark and the application/opposed mark, taking into account the prominent star devices and the words in the concentric circles, the Adjudicator concluded that the marks are visually similar but are aurally and conceptually different.

With regards to the similarity in the claimed goods, the Adjudicator noted that the marks are claimed for identical goods. The Adjudicator noted that the ultimate question is how the goods are regarded, as a practical matter, for the purposes of trade. The Adjudicator further highlighted the relevant factors outlined in British Sugar v James Robertson & Sons Ltd [1996] RPC 281 would be relevant for this purpose. The factors are as follows:

(a) the respective uses of the respective goods;

(b) the respective users of the respective goods;

(c) the physical nature of the goods;

(d) the respective trade channels through which the goods reach the market;

(e) in the case of self-serve consumer items, whether in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;

(f) the extent to which the respective goods are competitive. This inquiry may take into account how those in the trade classify goods, for instance whether market research companies, who of course act for the industry, put the goods in the same or different sectors.

It was concluded that that articles of clothing are similar to footwear and headgear as they are usually sold through the same trade channels and consumers consider it to be usual for such goods to be sold under the same trade mark and under one roof.

With regards to the likelihood of confusion, the Adjudicator stated that the relevant consumers in this case will be members of the public in general as these are goods that are purchased by ordinary retail consumers. These two marks are visually similar but aurally and conceptually different. The Adjudicator found that the similarities in the two competing marks are not to a high degree and that dissimilarity in the words in the marks outweighs the visual similarity in the layout. The Adjudicator has made reference to the Court of Appeal decision in McDonald’s Corp v Future Enterprises Pte Ltd [2004] SGCA 50, “With widespread education and a public that is constantly exposed to the world, either through travel or the media, one should be slow to think that the average individual is easily deceived or hoodwinked. In fact, the very success of the appellant, which is inseparable from its logo, is also the very reason why confusion is unlikely.” The Adjudicator noted that the Opponent is associated with their brand name “Converse” and not the star device in the circle mark. The Adjudicator further noted that shoes are something that the general consumers would pick up to try for the fit before buying and therefore relevant consumers would notice the words in the logo, the type of material used and the price of the shoes. The Adjudicator concluded that there was no likelihood of confusion.

Opposition under Section 8(7)(a)

It is imperative to reproduce Section 8 (7)(a) here:

8.—(7) A trade mark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented —

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.

The Adjudicator has noted that the Opponent must establish the three elements goodwill, misrepresentation and damage in order to succeed in an action for passing off.

The Adjudicator has concluded that the Opponent has goodwill in their mark as there were invoices dated as early as 1998 that show sales of goods in Singapore. With regards to the element of misrepresentation, the Adjudicator has cited Kellogg Co v Pacific Food Products Sdn Bhd [1998] 3 SLR(R) 904 that the test in the tort of passing off is a more demanding one than the corresponding inquiry in a trade mark infringement action. In the tort of passing off it is necessary to show that the defendant’s actions amount to a misrepresentation that is likely to deceive the relevant segment of the public. It was concluded that there is no misrepresentation in this case since a higher threshold for the likelihood of confusion is required for misrepresentation in a claim for passing off. It was also concluded that there is no presumption of damage be made in this case as there is no likelihood of damage.

Opposition under Section 7(6)

It is imperative to reproduce Section 7(6) here:

Section 7(6) provides that:

7.—(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.

The Adjudicator has cited Valentino Globe BV v Pacific Rim Industries Inc [2010] SGCA 14 where the Court of Appeal held that an allegation of bad faith is a serious claim to make and it must be sufficiently supported by the evidence. Since the Opponent has merely averred that their star logo has achieved fame around the world due to their extensive use and promotion, in particular on high cut basketball shoes, and that by virtue of the Applicant operating in the same industry, the Applicant cannot have been unaware of their marks, especially the star logo. The Opponent argued that because of this background, the Applicant is clearly seeking to ride on the coat-tails of the Opponent. The Adjudicator has rejected this line of argument as bad faith cannot be inferred from circumstances of facts and the Opponent did not adduce any concrete evidence to show that the Applicant has acted in bad faith in applying for registration of their Mark.

Accordingly, the Adjudicator concluded that the opposition failed on all grounds and that the application shall proceed to registration.