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30 May 2024TrademarksMarisa Woutersen

CrossFit’s trademark invalidation bid fails in Singapore

The fitness brand’s attempt to invalidate a trademark owned by a Singapore-based apparel company is unsuccessful | CrossFit’s application rejected despite “vigorous” defence of its IP.

A major sportswear brand has failed in its attempt to invalidate a trademark owned by a Singapore-based apparel company.

US-based CrossFit, known for its fitness content, education, and training services, owns multiple trademark registrations for ‘CROSSFIT’ in Singapore and worldwide.

But the Intellectual Property Office of Singapore (IPOS) rejected its argument that the trademark ‘CrossFeet’, owned by Play Distribution, was infringing.

In its decision, delivered on  May 27 but made public today, May 30, the IPOS argued that the marks share some visual and aural similarities. However, when considered as a whole, the marks have an average degree of similarity.

The IPOS also found that the two marks were unlikely to cause consumer confusion as they are conceptually different and were distinctive marks.

Play Distribution, incorporated in Singapore but primarily based in Sweden, has used the ‘CrossFeet’ mark since December 2020 for training socks and, more recently, for apparel such as T-shirts.

The company’s products are sold globally, and it has registered the ‘CrossFeet’ mark in Switzerland and the EU. Notably, Play Distribution has sponsored several CrossFit events organised by CrossFit’s affiliates.

CrossFit applied for a declaration of invalidity against a trademark registered by Play Distribution, in June 2019.

CrossFit argued that Play Distribution’s mark has a likelihood of causing confusion due to the similarity between ‘CrossFeet’ and ‘CROSSFIT’.

It also argued the ‘CrossFeet’ mark would have an unfair advantage or be detrimental to the distinctive character or reputation of the ‘CROSSFIT’ mark.

Analysing the evidence presented

CrossFit's application for invalidation was backed by several statutory declarations from its general counsel, Marshall Brenner.

These declarations are dated October 2022, September 2023, and November 2023.

Meanwhile, Play Distribution submitted one statutory declaration from its director, Chong Jee Siang, in April 2023.

CrossFit needed to demonstrate that the ‘CrossFeet’ mark is similar to its ‘CROSSFIT’ mark, that the goods are comparable, and that there is a likelihood of public confusion.

IPOS principal assistant registrar Tan Mei Lin noted that both trademarks share the prefix ‘CROSS’ and have similar structures.

However, the word ‘Feet’ in Play Distribution’s mark introduces visual differences, especially with its distinctive rounded letters, said Lin.

Both marks have two syllables and start with ‘CROSS’, and the suffixes ‘FIT’ and ‘Feet’ sound similar due to their initial and final consonants, creating a high degree of aural similarity.

Conceptually, ‘CROSSFIT’ refers to a type of cross-discipline fitness training, while ‘CrossFeet’ suggests a focus on feet in a crossed position.

This difference in meaning contributes to a lack of overall similarity between the marks, explained Lin.

Although the trademarks show an average level of visual similarity and a high level of aural similarity, their conceptual differences are substantial.

As a result, the overall impression of the marks is an average degree of similarity when considered as a whole, Lin concluded.

A likelihood of confusion?

When assessing the likelihood of confusion, factors such as the similarity of the marks, consumer purchasing behaviour, and the nature of the goods or services were considered.

The average consumer, which includes the general public and businesses, is expected to show a moderate level of attention when buying goods, considering aspects like material, aesthetics, and durability.

The assistant registrar noted that although there may be visual and aural similarities during the purchasing process, the marks are conceptually different.

Therefore, there is no likelihood of direct confusion, as consumers are unlikely to confuse one mark for the other due to their distinct conceptual differences.

In assessing indirect confusion, three factors were considered.

First, the common element ‘CROSS’ was recognised as having weak distinctive character, which rules out indirect confusion based on distinctiveness.

Second, the addition of ‘Feet’ to ‘CROSS’ doesn’t simply create a nondistinctive element; instead, it forms a new, unified meaning that decreases the likelihood of indirect confusion.

Third, the change from ‘FIT’ to ‘Feet’ isn't a logical brand extension, and the conceptual disparity between the marks ensures that consumers wouldn't assume the goods originate from the same source.

Ultimately, the registrar decided that there was no other logical basis for indirect confusion.

The distinctiveness and clear conceptual distinction between the marks prevents the consumer from assuming any economic connection between them.

A distinctive approach

CrossFit, established in 2000, has a track record of protecting its IP. According to the company, it recognises the importance of defending its affiliates and members by ensuring that the CrossFit name is used appropriately.

With a portfolio comprising more than 700 trademarks in 150 nations, CrossFit owns various well-known marks, including ‘CrossFit’, ‘Forging Elite Fitness’, ‘The Sport of Fitness’, ‘CrossFit Games’, and ‘Fittest on Earth, 3…2…1…Go!’.

In a distinctive approach to combating IP infringement, CrossFit dedicates a section of its CrossFit.com website to address this concern.

This platform allows the global CrossFit community to report instances of IP theft directly to the legal department.

As a result, CrossFit Legal receives numerous reports of IP theft annually from its community, identifying and reporting any suspected misuse of the trademark.

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