28 November, 2015
Our firm was one of two firms which represented Southern Rubber Works Sdn Bhd, a Malaysian shoe manufacturer, whose application for registration of their star device mark in Singapore was opposed by Converse Inc., now owned by Nike Inc., and represented by Drew & Napier. Our clients were successful in obtaining IPOS' decision to register their mark. A summary of the issues follow.
The case is a useful update of the most commonly argued issues in the Singapore Trademark Act, namely: marks similarity, goods similarity, likelihood of confusion, goodwill, misrepresentation, damage and bad faith.
It was found by the Hearing Officer at IPOS that other than some similarity between the marks and similarity between the goods registered, every argument proffered by Converse in opposing Southern Rubber Works’ trademark registration failed. Some notable points of the decision to take away were:
a) The opponent of the mark bears the burden of proof.
b) While there is visual similarity, there is neither aural nor conceptual similarity between the marks.
c) As the star device is a common motif found in several other registered trademarks, consumers would
therefore focus on the other distinctive elements of the product and not be confused.
d) Footwear is not “normally purchased on a whim or in a hurry”.As consumers consider their purchase
carefully, confusion is minimised.
e) In an action of passing off, there must be “areal tangible risk of substantial damage”.Damage cannot
be presumed by virtue of similarities between the marks and between the goods.
f) To establish that the trademark registration was made in bad faith, evidence must be provided.
In conclusion, for a trademark opposition to succeed the opponent must establish that: (i) the relevant consumers are likely to be confused; (ii) the action of passing off is made out with “real tangible risk of substantial damage”; or (iii) the registration was done in bad faith. It is insufficient to simply assert that just because the marks and goods are similar, the mark should not be registered. Evidence of bad faith must be provided.
For further information, please contact:
Arthur Loke, Senior Partner, Virtus Law LLP
(a member of the Stephenson Harwood (Singapore) Alliance)
arthur.loke@virtus-law.com
