When global reputation isn’t enough: lessons from Singapore’s CrossFit v CrossFeet case

The decision of the Intellectual Property Office of Singapore in CrossFit v Play Distribution (2024) revisits the fundamentals of distinctiveness, similarity, and confusion under Singapore’s trademark law. Despite CrossFit’s international fame, its invalidation action against ‘CrossFeet’ failed, reaffirming that reputation cannot cure weak distinctiveness at the threshold stage of analysis.

That.Legal LLC represented the successful respondent, Play Distribution Pte Ltd, owner of the ‘CrossFeet’ mark.

CrossFit LLC, a US company known for its high-intensity training programme and international CrossFit Games, owns multiple Singapore registrations for CrossFit. Play Distribution applied to register ‘CrossFeet’ in Class 25 of the Nice Classification for apparel and footwear.

CrossFit sought to invalidate the registration under sections 8(2)(b), 8(4), and 8(7)(a) of the Trade Marks Act 1998 (TMA), relying on likelihood of confusion, well-known mark status, and passing off.

To succeed under the Section 8(2)(b) ground, CrossFit had to satisfy the three-step test:

• That the marks are similar;

• That the goods or services are similar; and

• That there exists a likelihood of confusion arising from these similarities.

The Registrar compared the marks visually, aurally, and conceptually. While both began with “Cross”, their suffixes (“fit” and “feet”) conveyed distinct meanings.

The Registrar found an average degree of visual and aural similarity but a clear conceptual difference:

• CrossFit evokes fitness or cross-discipline training.

• CrossFeet suggests feet or footwear.

Following the High Court’s decision in Twitter v VV Technology (2023) 5 SLR 513, the Registrar noted that the inherent distinctiveness of the earlier mark must be assessed in the abstract, without importing any acquired distinctiveness or reputation. Consequently, CrossFit could not rely on its international fame or extensive following to enhance its mark’s inherent distinctiveness. “CrossFit” was found to possess low inherent distinctiveness, as its component words alluded to cross-discipline fitness.

On balance, the Registrar held that while the marks were “more similar than dissimilar”, the conceptual differences counteracted the visual and aural similarities, resulting in only an average degree of overall similarity.

As for the similarity in goods, the Registrar found that there was a clear overlap in certain goods registered in Class 25.

However, the Registrar ultimately found no likelihood of confusion, concluding that the clear conceptual distinction between “fitness” and “feet” meant consumers would not perceive CrossFeet products as a brand extension or sub-line of CrossFit. The weak inherent distinctiveness of CrossFit further narrowed its scope of protection.

CrossFit argued that the ‘CrossFit’ mark was well known in Singapore, citing its global reputation, online presence, and network of affiliated gyms. The Registrar found the evidence insufficient to show that the mark was well known among the Singapore public as at the relevant date of June 10 2019.

While CrossFit’s evidence showed that by 2022 it had 11 affiliates operating 12 gyms locally, it was silent on its footprint in 2019. No data was provided on the date of first use, membership numbers, marketing activities, or market share in Singapore. Local media articles were also unpersuasive, referring to “CrossFit” merely as a type of workout rather than a trademark. In the absence of concrete evidence of local recognition, the Registrar held that the well-known mark ground under Section 8(4) of the TMA was not made out.

The passing-off claim under Section 8(7)(a) of the TMA failed for similar reasons. Without any likelihood of confusion, there could be no misrepresentation.

Following Twitter v VV Technology (2023), it is clear that under Singapore trademark law, acquired distinctiveness and reputation are irrelevant at the first step of the three-step test; that is, mark similarity. Such evidence becomes relevant only at the third and final stage, when evaluating the likelihood of confusion. This sequencing places inherently weak marks at a disadvantage from the outset. If the marks are found dissimilar at the first step, the inquiry ends and any evidence of reputation will not be examined.

The CrossFit v CrossFeet decision reaffirms this disciplined approach. It illustrates that while fame or commercial success may influence the confusion analysis, it cannot compensate for a lack of inherent distinctiveness when determining similarity between marks. Where a mark is composed of common, descriptive, or allusive elements, its scope of exclusivity at the first stage is necessarily narrow. Even the most recognisable global brands cannot rely on reputation to widen that initial threshold of protection.

The takeaway is clear: inherent distinctiveness remains the decisive threshold in Singapore trademark law. Where a mark’s inherent distinctiveness is limited, brand owners should invest early in building and documenting consumer recognition, through consistent use, education, and evidence of market presence, not only to support enforcement but also to gradually enhance the mark’s exclusivity.

The CrossFit v CrossFeet decision demonstrates that conceptual differences can be decisive not only at the mark-similarity stage but also in determining whether confusion is likely. Although the marks shared moderate visual and aural resemblance, the clear conceptual distinction between “fitness” and “feet” ultimately dispelled any real likelihood of confusion.

Global brand reputation or online presence does not automatically translate into local well-known status. Brand owners must provide concrete evidence of recognition in Singapore, including sales, advertising expenditure, market share, or surveys.

Brand owners often assert that consumers would assume an association where the second mark appears to extend theirs. The decision in CrossFit v CrossFeet shows that conceptual divergence can neutralise that argument, especially where the original mark is descriptive or weakly distinctive.