A recent decision handed down by the Intellectual Property Office of Singapore (“IPOS”) illustrates the relevance of honest concurrent use in Trade Mark Opposition Proceedings.

This case involved the Opposition of Trade Mark Application No. T05/03947C (“the Applicant’s Opposed Mark”) in the name of Fox Street Wear Pte Ltd (“the Applicant”) by Fox Racing, Inc. (“the Opponent). The Application was filed in Class 18 for Goods including luggage, cases and various bags.

The Opposition was successful under Section 8(2)(b) of the Trade Marks Act (“the Act”) as the Registrar considered the Applicant’s Opposed Mark to be visually, aurally and conceptually similar to Registered Trade Mark No. T01/17910F (“the Opponent’s Mark”).

What is interesting about this case is that the Opponent’s Mark had been earlier registered in Singapore through honest concurrent use over several other of the Applicant’s prior registrations, which centred around the word or image of a FOX.  One of the issues to be considered by the Registrar was therefore whether the Opponent could rely on this Mark in the Opposition Proceedings.

Background

The Applicant is a Singaporean company owning several Registered Trade Marks in Singapore which include the word FOX, a stylised fox head and/or fox tail. Of note was the Applicant’s Registered Trade Mark T81/03475D for a fox head device, for Class 25 Goods, which had been ostensibly acquired by assignment from a previous assignee of the original owner of the Mark:

Click here to view image.

The Applicant’s Opposed Mark for Class 18 Goods included the word “FOX” with the fox head device positioned over the letter “O”:

Click here to view image.

he Applicant claimed to have been distributing their Class 18 Goods in Singapore since the 1980s, with current sales through over 20 departmental stores and other retail outlets.

The Opponent, a Californian company, claimed that since 1974, they had become an international leader in the youth lifestyle clothing market with their famous “Fox Head Logo” seen worldwide.  The Opponent had apparently registered and/or used variations of the fox head device in the United States since 1976, but this Mark had not been registered or used in Singapore.  The Opponent owned, however, several Registered Trade Mark’s in Singapore, including Registered Trade Mark No. T01/17910F (“the Opponent’s Mark”) relating to the word FOX with a stylised representation of a fox’s head replacing the “O” for Class 25 Goods:

Click here to view image.

The Decision

The Opponent relied on several grounds of Opposition, including that the Application had been made in bad faith (Section 7(6)); that the Mark and Goods gave rise to a likelihood of confusion (Section 8(2)(b)); that there was passing off (Section 8(7)(a)); and that the Applicant infringed the Copyright of the Opponent (Section 8(7)(b)).

The Registrar held that the Opponent did not meet the high threshold required to establish bad faith.  Since the Opponent had not furnished a single instance of actual confusion, despite the long period of co-existence of the Marks, the Registrar also held that passing-off had not been established.  Furthermore, the Opponent was found to have failed to produce any evidence as to the creation of the Copyright works relied upon.  Since there is no mechanism to “register” Copyright under Singaporean law, the Opponent had unsuccessfully relied on a Copyright certificate from the Canadian Intellectual Property Office and an undated Copyright Notice accepted by the New Zealand Customs Service.

However, the Opposition was successful in terms of Section 8(2)(b). When the Applicant’s Mark was compared with the Opponent’s Mark, the Registrar found them to be similar.  The Goods to which the respective Mark’s were applied were also considered to be similar. The Registrar therefore held that the Opposition succeeded on the grounds that the Mark and goods gave rise to a likelihood of confusion.

The relevance of registration of the Opponent’s Mark through honest concurrent use

The Registrar noted the irony of circumstance that the Applicant’s Mark could be blocked by a Mark of the Opponent’s, which could itself have been prevented from registration by some of the Applicant’s own prior Marks if not for honest concurrent use.

Irony aside, the Registrar found nothing in Section 8(2) to prevent an Opponent in Opposition Proceedings from relying on an earlier Mark, which had been registered on the basis of honest concurrent use with other Registered Trade Marks owned by the Applicant.  Accordingly, the Opponent was permitted to rely on its registration in the Opposition Proceedings.

In refusing the Trade Mark Application, the Registrar considered other options that the Applicant could have taken, such as opposing the Opponent’s Mark before it proceeded to registration or applying to invalidate the Opponent’s registration under Section 23 of the Act.  The Applicant could also have relied on the doctrine of acquiescence or estoppel.

Take-home message

There is nothing preventing an Opponent from opposing a competitor’s Trade Mark Application in Singapore, and relying on an earlier registration that has been obtained on the basis of honest concurrent use with other Registrations owned by the Applicant.

Applicants seeking Registered Trade Mark Rights in Singapore may wish to consider keeping a watch on the Applications of competitors, and opposing such Applications at the appropriate time to prevent their registration and subsequent use against the Applicant’s future Trade Mark portfolio.