When Fame is Not the Name of the Game

Are all shoes, all stars? It seems like popular shoe brand, Converse Inc., would prefer being the only one. The American shoe giant recently filed an opposition at the IP Office of Singapore (IPOS) against the registration of the “Jazz Star” mark by Malaysian company, Southern Rubber Works Sdn Bhd. The latter was accused of trying to register a mark substantially similar to Converse’s “converse” mark, with a star surrounded by script and bordered by two concentric circles.

To set the stage for this case, let’s remind ourselves of who is Converse Inc. (henceforth “Converse”) and who is Southern Rubber Works Sdn Bhd (henceforth “SRW”). Converse is a company registered in Delaware, which, similar to All Star C.V. (current owner of the registered Converse marks), is a subsidiary of Nike, Inc. Converse is famous for creating iconic American athletic shoes, particularly the Chuck Taylor® All Star® for basketball nearly 100 years ago. Facing it, we have SRW, a Malaysian company manufacturing and selling shoes in Malaysia since 1971, which applied to register the “Jazz Star” mark in 2007 in Singapore and has registered the “JAZZ” and “JAZZ STAR” marks in various countries including Singapore.

The case was decided on the basis of the similarity of the marks and goods, likelihood of confusion for the consumers and passing off. Converse also claimed there was bad faith on the part of SRW with regard to the trademark application, as due to the worldwide fame of the “converse” mark, SRW would have had knowledge of the existence of the said mark and similarities between the two marks.

IPOS proceeded step-by-step: first analysing the degree of similarity between the marks, then between the goods, before moving on to the likelihood of confusion between the two marks for an ordinary retail consumer. Upon considering the degree of similarity between the two marks, the Hearing Officer held that while there was visual similarity, there were no aural and conceptual similarities in the marks. The Hearing Officer then examined the goods and found them similar. It also turned out there was no likelihood of confusion as (a) the visual similarity between the marks was only in relation to the star device and there were other distinctive elements in both marks, (b) the marks, as mentioned, were aurally and conceptually different, and (c) the star device is a common device and although it is prominent in both marks, consumers will focus on other distinctive elements of the marks which are different from each other (i.e., Converse’s mark would be seen as “the Converse mark” and not as “the star device in the circle mark”) and (e) with the goods being footwear, consumers would try them on for the right fit and thus as there is additional attention to the goods, likelihood of confusion is minimized. The Hearing Officer further agreed with SRW’s argument that it is precisely because of the fame of the Converse company and the fact that the “converse” mark is widespread all over the world that confusion is unlikely[i].

On the argument of passing off, Converse had to prove: (i) it had goodwill in the “converse” mark in Singapore prior to the application to register “Jazz Star” as a trademark; (ii) there was misrepresentation of the “Jazz Star” mark as the “converse” mark; and (iii) that there is a real tangible risk of substantial damage to Converse (not only a presumption of damage). Converse succeeded in proving it had goodwill, but failed concerning misrepresentation (as the Hearing Officer already judged that there was no likelihood of confusion between the two marks) and failed also to prove the damage caused to its mark (once again, because there is no risk of confusion, and visual similarity between the marks is not enough to prove a tangible risk of substantial damage).

The last ground brought forward by Converse was that the trademark application was made by SRW in bad faith. To infer bad faith, facts are not enough. Converse had to prove what SRW knew, and what an ordinary person would think of SRW’s action. As Converse had no evidence to prove both of those elements (merely stating that its brand is known worldwide and SRW sought to ride on its coat-tails), this ground was also rejected.

As such, the opposition failed on all grounds and the application by SRW was allowed to proceed to registration. This was a classic tale of David vs Goliath, with David succeeding because the size of Goliath acted against him as opposed to for him! The law developing in this direction is certainly not what famous brand owners had in mind as famous brands actually have a lot of protection worldwide (since the TRIPS agreement was signed in 1994). Could Converse have argued on the basis of dilution perhaps…?



[i] McDonald’s Corp vs Future Enterprises Pte Ltd [2004] SGCA 50 in which the Court of Appeal said, “With widespread education and a public that is constantly exposed to the world, either through travel or the media, one should be slow to think that the average individual is easily deceived or hoodwinked. In fact, the very success of the appellant, which is inseparable from its logo, is also the very reason why confusion is unlikely.”

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