Adidas loses bid to prevent Taiwan-based manufacturer from registering trademark in Singapore

Adidas opposed the application by Lutong Enterprise mainly on the grounds that Lutong's trademark was similar to its own, in spite of "minor" differences.
Adidas opposed the application by Lutong Enterprise mainly on the grounds that Lutong's trademark was similar to its own, in spite of "minor" differences.PHOTO: REUTERS

SINGAPORE - Sportswear giant Adidas has lost a bid to prevent a Taiwan-based manufacturer from registering its trademark here.

Lutong Enterprise applied to register its trademark of three sloping lines in an inverted pyramid with a circle on one edge in Singapore on May 22, 2015. The company produces and sells Western-styled clothing, footwear and other assorted items.

But Adidas opposed the application mainly on the grounds that Lutong's trademark was similar to its own, in spite of "minor" differences.

Adidas, represented by lawyers Yvonne Tang and Lorenda Lee of Drew and Napier, argued that the two marks were visually similar as both had three stripes forming the shape of a triangle, according to judgment documents issued on July 20, 2018.

Lutong Enterprise was represented by Ms Gillian Tan of Infinitus Law.

Hearing officer See Tho Sok Yee from the Intellectual Property Office of Singapore found the two marks "visually dissimilar when compared as wholes", judgment papers showed.

Ms See Tho said that as opposed to Adidas' mark, which may give the "impression of a mountain", Lutong's was significantly different in that it was "of something en pointe, perched or being balanced".

"Add to that the circle device, which cannot be hived off the consumer's impression, and the visual impression is even more different from the opponent's mark," said Ms See Tho.

She added that an average consumer could even see Lutong's mark as a shuttlecock.

Ms See Tho also threw out Adidas' argument that the application was made in bad faith.

Adidas' lawyers argued that Lutong's mark has been successfully opposed or invalidated in "many other jurisdictions". In addition, the lawyers said, the brand or its related companies offered footwear with designs similar or identical to Adidas.

But Ms See Tho found that Lutong's mark, if anything, made the design of the shoes less similar.

It was commissioned in 1981, while Adidas' mark was designed in 1990.

"If the opponent takes issue with the applicant's shoe designs as a whole, its course of action could lie elsewhere, but not in opposition to the registration of the application mark," said Ms See Tho.

Lutong's trademark will proceed to registration.

Adidas has successfully opposed or invalidated Lutong's mark in other jurisdictions, including in South Korea, Germany and Hong Kong.