Case Details
- Citation: [2018] SGIPOS 12
- Court: Intellectual Property Office of Singapore
- Date: 2018-07-20
- Judges: See Tho Sok Yee
- Plaintiff/Applicant: Lutong Enterprise Corp
- Defendant/Opponent: Adidas International Marketing BV
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2015] SGIPOS 9, [2015] SGHC 216, [2016] SGCA 25, [2016] SGCA 33, [2018] SGIPOS 12, [2018] SGIPOS 2
- Judgment Length: 25 pages, 10,198 words
Summary
This case involves a trade mark opposition between Adidas International Marketing BV, a major multinational sportswear company, and Lutong Enterprise Corp, a Taiwanese clothing manufacturer. Adidas opposed Lutong's application to register the trade mark "JUMP & Device" in Singapore, relying on several grounds under the Trade Marks Act. The key issues were whether Lutong's mark was confusingly similar to Adidas' earlier "Adidas and Device" mark, and whether Lutong had acted in bad faith in adopting its mark. After a detailed analysis of the evidence and legal principles, the Intellectual Property Office of Singapore ruled in favor of Lutong, allowing its trade mark application to proceed to registration.
What Were the Facts of This Case?
Adidas International Marketing BV ("Adidas") is a multinational company that manufactures and retails a variety of athletic products, including clothing, footwear, and equipment. Adidas originated in Germany in 1920 and now operates globally through an extensive network of related companies. Adidas relies on the device mark "Adidas and Device" as its earlier trade mark in these proceedings. This mark was designed in 1990 and has been used by Adidas on its products worldwide, including in Singapore since shortly after its global launch.
Lutong Enterprise Corp ("Lutong") is a Taiwanese company incorporated in 1979 that manufactures and sells clothing, footwear, caps, hats, and umbrellas. Lutong was motivated to create an affordable brand of American-styled clothing and footwear for the Taiwanese market. In 1981-1982, Lutong commissioned four student designers from the Fine Arts Department of Chinese Culture University in Taiwan to design the "JUMP & Device" logo, which fully incorporates the trade mark that is the subject of Lutong's application in this case.
Lutong applied to register the "JUMP & Device" trade mark in Singapore on 22 May 2015. Adidas filed an opposition to the registration, relying on several grounds under the Trade Marks Act. The key evidence submitted by the parties is summarized in the judgment.
What Were the Key Legal Issues?
The key legal issues in this case were:
1. Whether Lutong's "JUMP & Device" mark is confusingly similar to Adidas' earlier "Adidas and Device" mark, such that registration should be refused under Section 8(2)(b) of the Trade Marks Act.
2. Whether Lutong's application should be refused under Section 8(4) of the Act, on the basis that the "JUMP & Device" mark is similar to Adidas' well-known "Adidas and Device" mark and its use would indicate a connection with Adidas that would be detrimental to Adidas' interests.
3. Whether Lutong's application should be refused under Section 8(7)(a) of the Act, on the basis that the use of the "JUMP & Device" mark is liable to be prevented by the law of passing off.
4. Whether Lutong's application should be refused under Section 7(6) of the Act, on the basis that Lutong had applied to register the mark in bad faith.
How Did the Court Analyse the Issues?
On the issue of confusing similarity under Section 8(2)(b), the Hearing Officer conducted a detailed visual, aural, and conceptual comparison of the two marks. While acknowledging some visual similarities, the Hearing Officer found that the marks were conceptually different, with Adidas' mark conveying a sense of dynamism and athleticism, while Lutong's mark had a more playful, whimsical concept of a person jumping. The Hearing Officer also noted that the word "adidas" was a dominant and distinctive element of Adidas' mark, which was absent from Lutong's mark. Overall, the Hearing Officer concluded that the differences between the marks outweighed the similarities, and that there was no likelihood of confusion.
On the issue of well-known trade mark under Section 8(4), the Hearing Officer accepted that Adidas' "Adidas and Device" mark was well-known in Singapore. However, the Hearing Officer found that Lutong's use of its "JUMP & Device" mark would not be detrimental to Adidas' interests or take unfair advantage of the distinctive character of the Adidas mark. The Hearing Officer noted that the conceptual differences between the marks meant that Lutong's mark would not call Adidas' mark to mind.
On the issue of passing off under Section 8(7)(a), the Hearing Officer found that Adidas had not established the necessary goodwill in Singapore in relation to the "Adidas and Device" mark alone, as distinct from Adidas' other marks. The voluminous evidence provided by Adidas related primarily to the broader "adidas" brand rather than the specific "Adidas and Device" mark.
Finally, on the issue of bad faith under Section 7(6), the Hearing Officer accepted Lutong's evidence that the "JUMP & Device" mark was independently created in 1981-1982, well before Adidas' global launch of the "Adidas and Device" mark in 1990. The Hearing Officer was satisfied that Lutong had not acted in bad faith in adopting its mark.
What Was the Outcome?
After considering all the evidence and legal arguments, the Hearing Officer ruled in favor of Lutong. The opposition was dismissed, and Lutong's application to register the "JUMP & Device" trade mark in Singapore was allowed to proceed to registration.
Why Does This Case Matter?
This case is significant for several reasons:
Firstly, it demonstrates the importance of conducting a comprehensive comparison of trade marks, considering not just visual and aural similarities, but also conceptual differences. The Hearing Officer's analysis shows that even where there are some visual similarities between marks, other factors such as the overall conceptual impression can be decisive in assessing likelihood of confusion.
Secondly, the case highlights the high evidentiary threshold required to establish that a trade mark is "well-known" under the Trade Marks Act. Despite Adidas' global reputation, the Hearing Officer found that Adidas had not sufficiently proven the requisite level of goodwill and reputation in Singapore specifically in relation to the "Adidas and Device" mark.
Finally, the case serves as a reminder that the registration of a trade mark can be successfully opposed on bad faith grounds only where there is clear evidence that the applicant deliberately and dishonestly copied the opponent's mark. The Hearing Officer's acceptance of Lutong's evidence that its mark was independently created decades earlier was crucial to the outcome.
Overall, this decision provides useful guidance on the legal principles and evidentiary requirements in trade mark opposition proceedings, which will be of interest to both trade mark owners and applicants navigating the complex landscape of global brand protection.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2015] SGIPOS 9
- [2015] SGHC 216
- [2016] SGCA 25
- [2016] SGCA 33
- [2018] SGIPOS 12
- [2018] SGIPOS 2
Source Documents
This article analyses [2018] SGIPOS 12 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.