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Singapore Trademarks: Passing Off as a Fox not a Cunning Move

In Fox Head, Inc. v Fox Street Wear Pte Ltd [2018] SGIPOS 8, Singaporean clothing distributor Fox Street Wear Pte Ltd (‘the Applicant’) applied to register the below mark (‘the Application Mark’) in Class 25. This was the same mark which had previously been refused registration in Singapore in Class 18, via a successful opposition in the case of Fox Street Wear Pte Ltd v Fox Racing, Inc. [2014] SGIPOS 13.

The same opponent, now known as ‘Fox Head, Inc.’ (‘the Opponent’) once again opposed the mark’s registration in Class 25 in this 2018 hearing. The Opponent used the same mark (registered in Class 25, shown below – ‘the Opponent’s Mark) in this case which had previously served to ensure that the Application Mark was refused registration in Class 18 – on grounds of similarity with an earlier mark, registered in respect of similar goods, that would be likely to cause confusion to the public – under Section 8 (2) (b) of the Singapore Trade Marks Act. Perhaps unsurprisingly, the outcome of the 2018 hearing between the parties was to prove to be substantially similar to that in 2014.

In assessing similarity of marks, the Hearing Officer applied the established test set out in Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911 – that of a mark-for-mark comparison, with no external factors considered, for three aspects of similarity – visual, aural and conceptual.

In assessing visual similarity, the Hearing Officer was guided by the ruling in Caesarstone Sdot-Yam Ltd  v Ceramiche Caesar SpA [2016] 2 SLR 1129, which stated that marks should be regarded as visually similar where the similar elements of the competing marks are so dominant as to render the differing elements ineffective at dispelling the similarity between the two marks. In this case, the dominant elements that both marks shared were said to be the capital letters F and X as well as the fox’s head device in between the letters – all of which were of a similar size and positioning in both marks. These were taken to render the differences between the two marks – the additional smaller text within the Application Mark, for example – as ineffective, and so the Hearing Officer found the two marks to be visually similar.

The Hearing Officer’s finding of aural similarity between the marks rested on much the same logic. Given the dominant characteristics of the two marks being the letters F and X with the fox-head in between, it was adjudged that both marks would be read as ‘Fox’. The extra text on the Application Mark was considered too insignificant to form part of the consumer’s consideration of the aural representation of the mark.

Furthermore, the shared dominant elements of the two marks were also considered by the Hearing Officer to convey the same concept – that of a fox. Accordingly, the extra reference to ‘street wear’ within the Application Mark was found to be too insignificant to deviate from this concept.

Both being registered in Class 25, in some cases with respect to identical garments, the goods and services associated with the Opponent’s mark and the Application mark were evidently similar. Therefore, the last matter for the hearing officer to determine before being obliged to refuse the mark’s to registration under Section 8 (2) (b) was the likelihood of confusion on the part of the public.

Taking into account the high degree of similarity in the dominant elements of the marks, as well as the identical goods and services for which they were registered, the Hearing Officer concluded that there was a likelihood of confusion. Even where direct confusion may not occur, the Hearing Officer opined, there was still a likelihood of indirect confusion, particularly in the clothing industry, where companies tend to brand individual products in a variety of different ways, with the use of common words within trade marks being the factor which shows common origin.

Therefore, just as in 2014, the Opponent was successful in opposing the mark’s registration on the ground set out in section 8 (2) (b). In contrast to the previous judgment, however, the Opponent was also successful in opposing the mark under an additional ground – that of Section 8 (7) (a), which states that a mark shall not be registered if its use in Singapore is liable to be prevented by the law of passing off.

In establishing that the tort of passing off had been committed by the Applicant, the Hearing Officer assessed the means by which the three classical elements of the tort were present: the Opponent’s goodwill, misrepresentation by the Applicant that would be likely to lead to the public believing that the Applicant’s goods are those of the Opponent, as well as damage to the Opponent as a result of such misrepresentation.

The Opponent’s goodwill in Singapore was proven by evidence of its sales to distributors there since 1997. The Hearing Officer found that use of the Application amounted to a misrepresentation to the public citing the same reasons for which he found that there would be a likelihood of confusion on behalf of the public if the mark were to be registered. Given that the two parties are in the same field of business activity, the Hearing Officer concluded that this misrepresentation would be likely to damage the Opponent, and thus the ground of opposition under Section 8 (7) (a) succeeded.