What Abercrombie & Fitch’s trade mark win means for businesses

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6 September, 2016

Dear Readers,
The recent Abercrombie and Fitch trade mark case shows the relatively strong trade mark regime in Singapore. Your business should seriously consider registering trade marks for your brands to protect against competitors that want a free ride.

- Koh C-u Pinn, Arielle Law Corporation

What Abercrombie and Fitch's trade mark win means for businesses

Earlier this year, Abercrombie and Fitch (“Abercrombie”) successfully stopped another company from registering the “A&F” trade mark. MMC International Services (“MMC”) had tried to register the “A&F” abbreviation and the moose silhouette as its trade marks under class 9 for spectacles and eyewear.

A registration made in bad faith

Abercrombie had trade marks for various classes, including those for clothing and personal care products. However, it had not registered under class 9 for spectacles and eyewear.

In this case, Abercrombie opposed the registration by MMC before the Intellectual Property Office of Singapore (IPOS). They argued that the “A&F” trade mark has been in use in Singapore since at least 2002 when goods purchased on the website were shipped to Singapore. In addition, Abercrombie’s boutique in Orchard Road opened in 2011 and goods bearing the “A&F” trade mark have been sold from the physical boutique since then.

The Principal Assistant Registrar Sandy Widjaja of IPOS noted that MMC did not attend the hearing, and its written submissions did not provide information as to its corporate background. More importantly MMC also did not explain how it derived the marks that it submitted for registration. The Registrar made the observation that the Application Mark was just opportunistically copied from Abercrombie. She stated that it was not “acceptable commercial behaviour observed by reasonable and experienced men in the relevant trade”.

As MMC had no prior interest in eyewear, the registration was meant to take advantage of Abercrombie’s existing business, and the Registrar concluded that MMC’s trade mark registration was done in bad faith.

What this means for businesses

What this means for businesses is that if you are serious about building a business in a particular sector, it is worth the while to register your trade marks. If your business registers a trade mark in a particular class, there is possible protection for areas that you may wish to expand into, especially against competitors with no track record looking to ride on your brand.

Koh C-u Pinn is a director at Arielle Law Corporation, a boutique law firm that provides individualized services tailored specifically to your needs.

Simply email us at ask@ariellelaw.com, or give us a call at (+65) 6268-8963 to chat with us about your needs. We are always happy to discuss what works best for you, whether over email, the phone, or a freshly brewed cup of coffee.

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