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Singapore – The Honest Concurrent Use Exception In The Context Of Opposition Proceedings.

17 November, 2014

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

 

In Fox Street Wear Pte Ltd v Fox Racing, Inc. [2014] SGIPOS 13, Fox Racing, Inc. (“Fox Racing“), an American motocross apparel company, succeeded in blocking local apparel and bag manufacturer, Fox Street Wear Pte Ltd (“Fox Street“), from registering a trade mark that resembles its own.


On 30 March 2005, Fox Street applied to register its trade mark in Singapore, which was opposed by Fox Racing. Fox Street tried to register the word “FOX” with a fox’s head within the letter “O”, with the slogan “What’s Stopping You?” running underneath (“Application Mark“).

 
However, in 2001 and 2004, Fox Racing had already registered two trade marks in Singapore comprising the word “FOX”, with the depiction of a fox’s head in place of the letter “O”. Although, because of Fox Street’s prior registrations, Fox Racing’s applications were allowed to proceed to publication only after Fox Racing had provided evidence to show honest concurrent use of their marks.

 
The table below is a chronological depiction of the parties’ respective trade marks.

 

(Click to enlarge)
 

bakerchartip

 

 

Both parties appeared to have sold goods in Singapore bearing their respective Singapore-registered marks. Fox Street has been doing so since the 1980s, and Fox Racing since 1996.

 
In challenging Fox Racing’s opposition under section 8(2)(b) of the Trade Marks Act (“TMA”), Fox Street argued that its Application Mark should be registered in Singapore through honest concurrent use just as Fox Racing’s earlier similar mark was permitted to proceed to registration on this basis.

 
Though the Registrar acknowledged the established statutory exception of honest concurrent use under section 9(1) of the TMA, it rejected Fox Street’s argument. The Registrar held that at the time when Fox Racing had registered its prior trade marks in 2001 and 2004, it would have been open to Fox Street to file opposition proceedings against these applications. However, this was not done.

 
According to the Registrar, Fox Street may have instead applied to invalidate Fox Racing’s mark under section 23 of the TMA, which they were expressly permitted to do under section 9(2)(b) of the TMA. However, as this issue was not raised by Fox Street in its submissions, the Registrar declined to address it.

 
The Registrar made the following notable observations pertaining to the exception of honest concurrent use:

 
(a) Honest concurrent use provides a limited exception to the objection that registration of a trade mark should be refused as there is a conflict of marks under the relative grounds;

 
(b) Once the applicant has successfully proven honest concurrent use, the registrar cannot refuse registration by looking at other discretionary matters; and

 
(c) The onus is therefore on the proprietor of the earlier mark to commence opposition proceedings, and if the proprietor does so, the registrar does not have the discretion to permit the registration even though honest concurrent use has been established.

 
Having decided that Fox Racing was entitled to commence the opposition proceedings under section 8(2) of the TMA, even though it is relying on an earlier trade mark which secured registration on the basis of honest concurrent use with other trade marks owned by Fox Street, the Registrar concluded that Fox Racing’sopposition succeeded under section 8(2)(b) of the TMA. Fox Street’s Application Mark was found to be similar to Fox Racing’s earlier trade marks and was to be registered for goods similar to those for which the earlier trade mark is protected.

 
Comments

 
This case considers the statutory exception of honest concurrent use in the context of opposition proceedings under section 8(2) of the TMA.

 
It does appear ironic that new trade marks could be blocked by marks of the proprietor, which could themselves have been blocked by some of the applicants’ own prior marks. However, it was held that there is nothing in the wording of section 8(2) of the TMA which suggests that an opponent may not, in opposition proceedings, rely on an earlier trade mark which has secured registration on the basis of honest concurrent use.

 
Therefore, the onus is placed squarely on the shoulders of existing rights owners to maintain a vigilant watch on newly published marks and to consider taking the appropriate opposition action against marks which may pose a threat to the future expansion of its own trade mark portfolio.

 

Baker McKenzie

 

For further information, please contact:

Andy Leck, Principal, Baker & McKenzie.Wong & Leow

andy.leck@bakermckenzie.com

 

Celeste Ang, Associate Principal, Baker & McKenzie.Wong & Leow

celeste.ang@bakermckenzie.com

 

Angeline Lee, Associate Principal, Baker & McKenzie.Wong & Leow

angeline.m.lee@Bakermckenzie.com

 

Yew Kuin Cheah, Baker & McKenzie.Wong & Leow

yew.kuin.cheah@Bakermckenzie.com

 

Baker & McKenzie.Wong & Leow Intellectual Property Practice Profile in Singapore

 

Homegrown Intellectual Property Law Firms in Singapore 

 
 

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