Converse fails to prevent registration of star device mark for shoes

In In the matter of a trademark application by Southern Rubber Works Sdn Bhd and opposition thereto by Converse Inc ([2015] SGIPOS 11), Converse Inc opposed Southern Rubber Works Sdn Bhd’s application to register a mark in Class 25, based on the grounds of confusing similarity, passing off and bad faith pursuant to the Trademarks Act.

As a preliminary point, the applicant argued that the opponent had no locus standi to proceed with the opposition as the trademark on which the opposition was based had been assigned by the opponent to one of its affiliated companies, All Star CV, post filing of the notice of opposition. The registrar held that the opponent had the locus standi to file an opposition as, based on the statutory language, "any person" may bring opposition proceedings. There is no requirement that the opponent be the proprietor of the trademarks relied on in the proceedings, nor is there a requirement to have sufficient interest.

The registrar first considered confusing similarity under Section 8(2)(b) of the act. In highlighting the principles endorsed by the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide Inc ([2014] 1 SLR 911), the registrar adhered to “the three requirements of similarity of marks, similarity of goods or services, and likelihood of confusion arising from these similarities, [which] are assessed systematically”. Further, the registrar reiterated that, in the test for confusion, extraneous facts relating to the actual and particular circumstances and ways in which the mark was used on the goods in question are generally not relevant in opposition proceedings – except the range of external factors set forth in Staywell. These include factors relating to the impact of the similarity of the marks or the similarity of the goods on consumer perception.

In applying the law to the facts of the case, the registrar held that there was no likelihood of confusion. Although the registrar found that there was some visual similarity between the marks in relation to the star device (which was held to be a common device), the registrar emphasised the vast difference between the two marks’ distinctive components – namely, 'Jazz Star' in the mark applied for, and 'Converse', 'All Star' and 'Chuck Taylor' in the opponent's mark. By focusing on these distinctive elements, the registrar held that consumers were unlikely to be confused. Further, the fact that footwear – the goods in Class 25 which were of greatest interest to both parties – is a type of goods that consumers will take some care to purchase should also minimise the likelihood of confusion. Thus, the ground of opposition under Section 8(2)(b) failed.

With regard to passing off under Section 8(7)(a), the registrar reiterated that the law of passing off required the presence of three elements: goodwill, misrepresentation and damage. The first element of goodwill was deemed to be present because the opponent provided invoices dating back to 1998, which included the opponent's logo (a star device within a circle with the words 'Converse' and 'All Star').

However, this ground of opposition failed because both the elements of misrepresentation and actual damage were not made out. The registrar held that, with regard to the second element of misrepresentation, a higher threshold was required for a finding of likelihood of confusion in a claim for passing off than in a claim of trademark infringement. Since there was no likelihood of confusion between the mark applied for and the opponent's mark under Section 8(2)(b), it followed that there was no misrepresentation for the purposes of Section 8(7)(a).

With regard to bad faith, the registrar highlighted the seriousness of an allegation of bad faith under Section 7(6): such a claim must not be made lightly and must be sufficiently supported by evidence – mere inference from the facts is not permissible. As the opponent was unable to provide any concrete evidence beyond the sole assertion of its fame in relation to the star logo, the ground of opposition under Section 7(6) failed.

As such, based on the facts of the case, the registrar held that the opposition had failed on all counts.

This case highlights the difficulties that trademark proprietors are increasingly facing when third parties develop marks which are similar to an existing registered trademark, but include sufficiently distinguishing elements so that members of the public are unlikely to be confused between the two trademarks. It remains to be seen whether the law will adapt to address this issue.  

Angeline Lee and Cheah Yew Kuin, Baker & McKenzie. Wong & Leow, Singapore