A Tale of Two Foxes – in the case of Fox Street Wear Pte Ltd v Fox Racing, Inc. [2014] SGIPOS 13

By Kevin Wong (Ella Cheong LLC)

Two companies were recently caught up in a contentious saga in Singapore over their trade marks relating to the above-captioned mammal. At the end of its tale (pun intended), the opponents succeeded in putting the brakes on registration of the applicants’ mark, notwithstanding that one of the earlier marks relied upon by the opponents could have been refused registration in the first place because of the applicants’ own marks, but for the honest concurrent use the opponents had established.
Summary of Facts

On 30 March 2005, Fox Racing, Inc. (“the Opponents”), an American apparel company (now known as Fox Head, Inc.) with its roots in motocross apparel, filed an opposition against Fox Street Wear Pte Ltd (“the Applicants”), a local apparel company, before the Registrar of Trade Marks, Intellectual Property Office of Singapore (IPOS). The Opponents’ objection pertained to the Applicants’ Singapore application in Class 18 for a trade mark comprising, among other things, the word “FOX” with a “Fox Head Device” within the letter “O”, and the slogan “WHAT’S STOPPING YOU?” below it (“the Applicants’ Mark”). The prior Singapore registrations the Opponents relied on in the opposition included various registrations for trade marks comprising of a “Fox Head” device between the letters “F” and “X” (“the Opponents’ Word and Device Mark”), or a “Fox Head” device on its own (“the Opponents’ Device Mark”), in Classes 9, 16 and/or 25. Among other foreign registrations, the Opponents also cited prior US registrations for iterations of the Opponents’ Word and Device Mark (registered in 1985; first used in 1981) and the Opponents’ Device Mark (registered in 1989; first used in 1976) notably in Class 25. To add to the intrigue, the Opponents claimed prior (1997) use in both Singapore and the US of the slogan “What’s Stopping You?” in connection with their apparel products.

On the Applicants’ part, they cited existing Singapore registrations including those for a “Fox Head Device” in Class 25 (registered in 1981; assigned to them from a “Fox Clothing Company” effective 9 January 1998) and Class 18 (registered in 1998); a trade mark comprising of the word “FOX” with a “Tail Device” within the letter “O”, in Class 25 (registered in 1989) and Class 18 (registered in 1998); and a trade mark comprising of, among other things, the same word “FOX” with “Tail Device” but also including the slogan “What’s Stopping You?”, in Classes 18 and 25 (registered in 1999).

It is further interesting to note that the Opponents had secured registration of the Opponents’ Word and Device Mark in Class 25 as abovementioned on the basis of honest concurrent use with the Applicants’ abovementioned three marks.
Opposition Grounds and Decision

The Opponents based their opposition on five grounds: bad faith, confusing similarity, well known mark, passing off and copyright. The Registrar held that the opposition succeeded on the ground of confusing similarity but failed on all the other grounds.
Issue of Interest

A question arose as to whether an applicant can successfully defend against an opposition action, simply because the opponent’s claimed trade mark rights had only achieved registration because of honest concurrent use with the applicant’s own marks. This was prompted by the Applicants’ argument that since the Opponents’ Word and Device Mark in Class 25 as abovementioned was allowed to proceed to registration on the basis of honest concurrent use, the Applicants’ Mark, of which the Applicants claimed first use in 1999, should likewise be allowed registration.

In this regard, the Registrar referred to the honest concurrent use provisions under the Trade Marks Act (“the Act”) which are generally accepted as affording trade mark applicants a limited exception to the raising of any relative ground of refusal (e.g. confusing similarity to prior conflicting marks). Once a case for honest concurrent use is made out by the applicant for registration of the later mark, the Registrar no longer has the discretion to refuse its registration on the basis of that relative ground of refusal; however, if the proprietor of the earlier mark subsequently opposes the later mark on that ground after it gets published, the Registrar then has no discretion to allow registration notwithstanding that honest concurrent use had been made out during the examination phase.

The Registrar further opined that the ground of confusing similarity under the Act does not prevent an opponent from relying on an earlier mark registered on the basis of honest concurrent use with other marks of the applicant.

As such, the Registrar was unable to agree with the Applicants’ argument or find that the Opponents could not rely on the Opponents’ Word and Device Mark in Class 25 as abovementioned in opposing the Application Mark on the relative ground of confusing similarity. The Registrar then went on to hold in favour of the Opponents under this ground, based on overall visual, phonetic and conceptual mark similarity, similarity of goods and likely confusion between the Application Mark and the Opponents’ marks.
Conclusion

This case serves as a reminder to trade mark owners in Singapore that the honest concurrent use provisions of the Act can potentially operate to permit registration of a trade mark, notwithstanding its similarity to an earlier registered mark of another party, and that they should all the more so remain vigilant in monitoring and opposing applications for such marks which may pose legal obstacles or complications in the long run.

Click HERE for the detailed decision for Fox Street Wear Pte Ltd v Fox Racing, Inc.