Fuente: STRAITSTIMES
Nike loses shoe trademark battle
It was ruled that
although there is some visual similarity between the two star devices in the
competing marks, they are "aurally and conceptually different".
American
sports apparel giant Nike, which owns the firm making the iconic "Converse
All Star" basketball shoes, has failed to stop a Penang-based company from
using the "Classic Jazz Star" brand for its high-cut basketball
shoes.
The David
and Goliath battle is the first to be settled in the region, with applications
by the Jazz Star owner pending in countries such as China, Indonesia and
Vietnam.
Adjudicator
Lee Li Choon of the Intellectual Property Office of Singapore overruled all of
Converse's objections and ruled that "Classic Jazz Star" could
register as a trademark. In judgment grounds released on Wednesday, she said
although there is some visual similarity between the two star devices in the
competing marks, they are "aurally and conceptually different".
The
"dissimilarity in the words of the two competing marks outweighs the
visual similarity in the layout", Ms Lee added.
It was
ruled that although there is some visual similarity between the two star
devices in the competing marks, they are "aurally and conceptually
different".
Southern
Rubber Works had sought in 2007 to register its trademark. The move was opposed
by Converse Inc, which had prior trademark registration and is now owned by All
Star C.V., another Nike subsidiary.
Lawyer
Ngoi Soon Hui, who represents Converse, argued that its product reputation goes
beyond the United States and it is known for the star device in its mark.
Converse
added that consumers have come to associate marks which have a star in a circle
and words inside the circle element with goods by Converse.
But
lawyers G. Radakrishnan and Gillian Tan countered that the fact that the
Converse mark is a well-known mark "works against the likelihood of
confusion".
Ms Lee
also noted that there are several other valid marks in the trademark register
which have a prominent star device.
She said
that as consumers are used to seeing different forms of the star device in
marks, their focus will not be on the star device but on the accompanying
items, such as "Classic Jazz Star " or "Converse All Star"
as in this case.
She added:
"More importantly, in relation to footwear, it is to be said that they are
not normally purchased on a whim or in a hurry.
"The
moment the consumer picks up a pair of shoes bearing the application mark, it
would immediately become apparent to him or her that the shoes are manufactured
by the Jazz Star owner and not the owners of Converse."
There was
no likelihood of confusion, said Ms Lee, who noted that the marketing,
packaging and pricing of both brands are different.
The annual
sale of goods sold in Singapore under the "Classic Jazz Star" brand
is understood to be negligible.