Singapore Update – Adidas Failed to Prevent Taiwan-based Manufacturer from Registering Trademark in Singapore

ADIDAS INTERNATIONAL MARKETING BV V LUTONG ENTERPRISE CORP [2018] SGIPOS 12

The dispute between the two sportswear manufacturers, Adidas International Marketing BV (“Adidas”) and Lutong Enterprise Corp (“Lutong”) had a brand new outcome in Singapore. While in the past, Adidas successfully opposed or invalidated Lutong’s trademark in South Korea, Germany and Hong Kong, the result was different in Singapore. Lutong’s trademark consists of three sloping lines in an inverted pyramid with a circle on one edge.

In Singapore, Adidas filed opposition proceedings against Lutong’s trademark application on the grounds, inter alia, that there was visual similarity between the marks in the three stripes that form the shape of a triangle. Adidas also argued that the trademark was made in bad faith as the overall design of Lutong’s footwear was allegedly similar to Adidas’.

Adidas explained that due to their highly distinctive trademark, their mark enjoyed a high level of technical distinctiveness that differentiated them from competitors.

And whilst Adidas admitted that there were differences in the marks, they argued that the differences were too minor to impact the overall similarity of the marks. They claimed that the three stripes in Lutong’s mark immediately were visually dominant and resulted in visual similarity between the marks.

Nonetheless, the Intellectual Property Office of Singapore dismissed Adidas’ claim that the similarities could cause confusion for consumers and allowed the application to proceed to registration.

The Hearing officer, Ms. See Tho Sok Yee held that:

 “A triangle whose right angle points upwards may give the visual impression of a mountain, or at least something grounded. A triangle whose right angle points downwards gives a significantly different visual impression, that of something en pointe, perched or being balance”.

Ms. See found the two marks to be visually more dissimilar than similar. She held that the additional circle component in Lutong’s trademark and the top-bottom inversion sufficiently distinguished Lutong’s mark beyond the normal threshold of protection enjoyed by Adidas’ mark.

Adidas’ argument that Lutong’s application was made in bad faith also failed.

Ms. See explained that the presence of Lutong’s trademark did not contribute to the overall impression of similarity in design and that if Adidas had an issue with Lutong’s footwear design as a whole, the course of action lies elsewhere but not in opposition to the registration of the trademark.

Please don’t hesitate to contact us if you have any questions about protecting your trademark in Singapore.