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Introduction
Trade mark invalidation is a crucial aspect of intellectual property law, providing a legal mechanism to challenge the validity of a registered trade mark. This comprehensive guide delves into the intricacies of trade mark invalidation in Singapore, drawing insights from the landmark case of CrossFit LLC v Play Distribution Pte Ltd [2024] SGIPOS 4. By examining the legal principles, grounds for invalidation, and the decision-making process, this resource aims to provide a thorough understanding of the subject matter.
Background of the Parties
CrossFit LLC, the applicant in this case, is a well-known entity in the fitness industry, specializing in fitness content, education, and training services. Founded in 2000 and based in the United States, CrossFit LLC operates a significant number of affiliates worldwide, including in Singapore.
Play Distribution Pte Ltd, the proprietor, registered the trade mark in question, a stylized mark for “CrossFeet”, under Trade Mark No. 40201912621Q. The company, incorporated in Singapore but primarily based in Sweden, uses the mark for various fitness-related apparel and accessories.
Grounds for Invalidation
The applicant sought a declaration of invalidity on multiple grounds under the Trade Marks Act (Cap. 332, 2005 Rev. Ed.) (“the Act”). The primary grounds of invalidation included:
- Section 23(3)(a)(i) read with Section 8(2)(b): Similarity of marks and likelihood of confusion.
- Section 23(3)(a)(iii) read with Section 8(4)(b)(i) and Section 8(4)(a): Well-known trade mark in Singapore.
- Section 23(3)(b) read with Section 8(7)(a): Passing off.
Applicant’s and Proprietor’s Evidence
Applicant’s Evidence
The applicant presented evidence through multiple statutory declarations, asserting the extensive use and recognition of the CrossFit brand, both globally and in Singapore. The evidence included:
- Details of CrossFit affiliates and gyms in Singapore.
- Social media statistics and online presence.
- Media coverage and academic recognition of the CrossFit brand.
- Registration and recognition of the CrossFit mark in various jurisdictions.
Proprietor’s Evidence
The proprietor countered with evidence supporting the independent development and use of the “CrossFeet” mark, emphasizing its distinctiveness and lack of intent to deceive or cause confusion with the CrossFit mark.
Legal Framework and Burden of Proof
The applicable legal framework is provided by the Trade Marks Act. The burden of proof lies with the applicant to demonstrate the grounds for invalidation. Key considerations include the similarity of marks, the similarity of goods/services, and the likelihood of confusion.
Detailed Analysis of Grounds for Invalidation
Similarity of Marks (Visual, Aural, and Conceptual)
The analysis of mark similarity involves comparing the visual, aural, and conceptual aspects of the competing marks. Key points include:
- Visual Similarity: Both marks share the prefix “Cross” but differ in their suffixes (“Fit” vs. “Feet”). The distinct visual impression of the word “Feet” reduces the likelihood of confusion. The Principal Assistant Registrar noted that the “ee” in “Feet” provides a significant visual distinction.
- Aural Similarity: The marks sound similar, with the first syllable “Cross” being identical. However, the differing vowel sounds in the second syllable (“Fit” vs. “Feet”) are distinguishable upon careful pronunciation. The Registrar emphasized the differences in vowel sounds as a key factor in reducing aural confusion.
- Conceptual Similarity: The marks evoke different concepts. “CrossFit” suggests cross-discipline fitness, while “CrossFeet” suggests an association with feet, potentially relating to footwear or foot-related fitness products. The conceptual difference was deemed significant enough to distinguish the two marks.
Similarity of Goods and Services
The goods under both marks overlap significantly, particularly in Class 25 (apparel and accessories). The shared market for fitness-related products enhances the potential for consumer confusion. The Registered Goods for the “CrossFeet” mark included various types of clothing and footwear, which were found to overlap with the goods covered by the CrossFit mark.
Likelihood of Confusion
Despite the similarities in goods and the average degree of mark similarity, the decision emphasized that the distinct conceptual differences and the detailed attention of consumers in the fitness market reduce the likelihood of confusion. The Registrar highlighted that consumers purchasing fitness-related products tend to exercise a medium degree of attention, further mitigating the risk of confusion.
Well-Known Trade Mark
The applicant argued that the CrossFit mark is well-known in Singapore, citing extensive use and recognition. However, the evidence provided was insufficient to establish that the mark was well-known to the relevant sector of the public in Singapore as of the relevant date (10 June 2019). Specifically, the applicant failed to provide detailed evidence of market share, promotional activities, or consumer recognition specific to Singapore.
Passing Off
The claim for passing off required proof of goodwill, misrepresentation, and damage. While goodwill was not disputed, the lack of likelihood of confusion negated the claim of misrepresentation, leading to the failure of this ground. The court applied the principles of classical passing off, emphasizing that the misrepresentation must be likely to deceive the public into believing that the goods are those of the applicant.
Legal Precedents and Cases
Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911
The Staywell case is a cornerstone in understanding the assessment of mark similarity in Singapore. It laid down the principles for evaluating visual, aural, and conceptual similarities between marks and emphasized the importance of considering the overall impression left by the marks.
Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2013] SGCA 56
This case highlighted that the registration of a plain word mark in capital letters protects the word itself irrespective of the font, typeface, or design used. It stressed the significance of the overall impression and the inherent distinctiveness of the marks.
Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd [2013] 2 SLR 941
Hai Tong underscored the principle of imperfect recollection, which recognizes that consumers may not remember marks with perfect accuracy, especially when observed at different times and places.
Singsung Pte Ltd v LG 26 Electronics Pte Ltd [2016] 4 SLR 86
This case provided guidance on the issue of distinctiveness in the context of misrepresentation for passing off. It clarified that a mark or get-up must be distinctive of the plaintiff’s products or services to support a claim of passing off.
VV Technology Pte Ltd v Twitter, Inc [2023] 5 SLR 513
The Twitter case reiterated that acquired technical distinctiveness should not be considered at the marks-similarity stage. The court emphasized the need to focus on inherent distinctiveness when comparing marks.
CrossFit, Inc. v. Haeusler, Opposition No. 91220565 (T.T.A.B. 2018)
In this US case, the TTAB recognized the distinctiveness of the CrossFit mark and ruled in favor of CrossFit, Inc. in an opposition against the “CROSSBOX” mark, reinforcing the global recognition and enforcement of the CrossFit brand.
Conclusion
The application for invalidation failed on all grounds. The Principal Assistant Registrar concluded that the marks were sufficiently distinguishable, and the evidence did not support the claim of the CrossFit mark being well-known in Singapore or the likelihood of confusion among consumers.
Implications for Trade Mark Law in Singapore
This case underscores the importance of robust evidence when challenging a trade mark’s validity. Key takeaways for practitioners include:
- Comprehensive Evidence: Demonstrating a mark’s well-known status requires extensive and specific evidence, including market presence, promotional activities, and consumer recognition.
- Distinctiveness Analysis: Understanding the nuances of mark similarity, including visual, aural, and conceptual differences, is critical in assessing the likelihood of confusion.
- Consumer Perception: The purchasing habits and attention levels of consumers play a significant role in determining the likelihood of confusion.
The case of CrossFit LLC v Play Distribution Pte Ltd [2024] SGIPOS 4 provides valuable insights into the legal principles governing trade mark invalidation in Singapore. By examining the grounds of invalidation, the evidence presented, and the legal reasoning, this guide offers a comprehensive resource for understanding trade mark disputes and the critical factors influencing their outcomes.
