By Eloise Wilkes-Barnewall
Challenging the validity of a registered trademark through ‘invalidation’ is one of the powerful tools for trademark enforcement. In Singapore, an invalidation claim against a registered trademark can be filed on the basis that it fails to meet registrability criteria. This process took centre stage in the dispute between CrossFit LLC (“CrossFit”) and Play Distribution Pte Ltd (“Play Distribution”).
Background
CrossFit, a globally operating fitness business, contested the validity of Play Distribution’s trademark “CrossFeet” due to its similarities to their own trademark “CROSSFIT”. Amongst other things, both companies are involved in the sale of fitness apparel and accessories.
CrossFit provided the following arguments to support their claim:
- The trademark similarities are likely to cause confusion amongst consumers, thereby rendering “CrossFeet” to be inconsistent with registrability criteria;
- “CROSSFIT” is well-known within Singapore, hence the mark should be afforded greater protection; and
- The elements of passing off can be established.
In determining whether Play Distribution’s mark should be rendered invalid, the Registrar assessed three key factors: the degree of similarity between the marks, the likelihood of consumer confusion, and whether CrossFit had grounds for a successful passing off claim.
Similarity of Trademarks
Overall, the Registrar determined there to be an average degree of similarity. This is because visually, the marks are both lexical blends of common words, thereby lowering the inherent distinctiveness of the marks. Furthermore, despite both marks beginning with “Cross” and sharing the letters “F” and “T,” the prominence of the phonemes “I” and “ee” visually differentiated the marks from one another. Aurally, both marks consist of two syllables: identical first syllables, and similar second syllables – alike beginning and ending sounds, and similar vowel sounds in between. Conceptually, the marks were considered dissimilar: “CROSSFIT” evokes functional fitness, while “CrossFeet” suggests crossed feet. Additionally, both marks are registered under Class 25, indicating an overlap in goods.
Likelihood of Confusion
The Registrar considered several factors to assess potential confusion arising from similarities between the marks. Two identified ways confusion could arise are as follows:
- Consumers mistaking one mark for the other; and
- Consumers correctly distinguishing between the marks, but confused as to which business the goods originate from, or if the marks are economically associated.
The Registrar determined there was no likelihood of direct confusion because the marks evoke clear and specific concepts, making it unlikely for consumers to inaccurately recall the marks as each other.
Moreover, the Registrar found no plausible scenario of indirect confusion. The marks are considerably dissimilar; thus, the average consumer would not assume the marks are economically associated, particularly because “Fit” to “Feet” is not a logical brand extension.
Well-known in Singapore
CrossFit presented substantial evidence of its international recognition but failed to sufficiently demonstrate its presence in Singapore specifically. This evidence included the mark’s first use in the US in 1985, operation of 12 gyms in Singapore in 2022, significant social media following, and coverage in local media like CNA. Additionally, they highlighted their trademark is currently registered in 15 jurisdictions and successfully opposed competing marks in the UK, India, and the US.
Though this evidence demonstrates “CROSSFIT” is well known globally, it lacks specificity in Singapore, such as the first use date of the trademark in Singapore, number of gyms, memberships, and marketing efforts. Moreover, all evidence adduced was current as of 2022 instead of the required 10 June 2019 (filing date of “CrossFeet”). As such, the Registrar concluded the mark was not well known in Singapore as of the relevant date.
Passing Off
The Registrar found no likelihood of confusion between the competing marks, thus the passing off claim failed at the element of misrepresentation.
Significance
The Registrar concluded that the declaration of invalidity by CrossFit failed on all grounds. This case provides valuable insight into the complexity of assessing confusion between similar marks. It demonstrates that while visual and aural similarities exist, conceptual differences can significantly differentiate marks in consumers’ perception.
Moreover, the decision emphasises the importance of presenting precise evidence that substantiates claims within the relevant jurisdiction. Global recognition of a trademark does not automatically translate to local recognition. Therefore, comprehensive evidence specific to each jurisdiction is crucial beyond showcasing global presence alone.
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