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US company blocks S’pore firm from registering similar trademark

SINGAPORE — Fox Racing, Inc, an American motocross apparel company, has succeeded in blocking local apparel and bag manufacturer Fox Street Wear Pte Ltd from registering a trademark that resembles its own.

SINGAPORE — Fox Racing, Inc, an American motocross apparel company, has succeeded in blocking local apparel and bag manufacturer Fox Street Wear Pte Ltd from registering a trademark that resembles its own.

In his judgment released yesterday, Mr Mark Lim, principal assistant registrar of trademarks, said the mark in question will confuse the public as it bears a high degree of visual, aural and conceptual similarity with Fox Racing’s prior trademarks.

The mark the Singapore manufacturer had tried to register in March 2005 was the word “FOX” with a fox’s head within the letter “O”, with the slogan “What’s Stopping You?” running underneath.

However, in 2001 and 2004, the American company had already registered two trademarks here: The word “FOX”, with the depiction of a fox’s head in place of the letter “O”.

Mr Lim noted that both entities had intended to use the marks for similar products, such as backpacks, sports bags, wallets and purses.

Since both Fox Racing’s and Fox Street Wear’s products are sold at low- to mid-range prices, it is probable that consumers would not take an undue degree of care when purchasing them, he added.

Incorporated here in 1999, Fox Street Wear manufactures and distributes apparel and bags. It has various registered trademarks that bear fox-related motifs, including one for the depiction of a fox’s head that was registered as early as 1981 by a now-defunct company and was assigned for Fox Street Wear’s use.

The company argued that the mark in question was an extension of one of its earlier trademarks, which depicted a fox’s tail in the letter “O”. The firm said it was aware of Fox Racing’s trademark, but had taken pains to incorporate distinguishing features in its own mark.

But Fox Racing, a motocross apparel company established in 1974 and which has had dealings in Singapore since 1996, launched a bid to block Fox Street Wear’s application. It sought to do so based on five grounds of the Trade Marks Act, but failed to establish four of these grounds with the courts.

In his 43-page judgment, Mr Lim said Fox Racing did not meet the high threshold required to establish that Fox Street Wear’s application was made in bad faith. He also turned down the argument that Fox Racing’s trademark is well known to the public at large in Singapore, apart from motocross enthusiasts.

Mr Lim also disagreed that there was misrepresentation involved. Rather, he highlighted that both companies have coexisted in Singapore since 1996, with neither raising any complaints before.

“It could well be argued that it is instead (Fox Racing) which is passing itself off as (Fox Street Wear). For reasons best known to themselves, neither party is advancing any argument along those lines,” he said.

Lastly, Mr Lim also dismissed Fox Racing’s argument that its trademark was protected by copyright as it failed to provide evidence of authorship, date of creation and place of publication.

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