IN THE HEARINGS AND MEDIATION GROUP OF
THE INTELLECTUAL PROPERTY OFFICE OF SINGAPOREREPUBLIC OF SINGAPORE

Trade Mark Application No. T1308820H
17 May 2016

IN THE MATTER OF A TRADE MARK APPLICATION BY

MMC INTERNATIONAL SERVICES PTE LTDANDOPPOSITION THERETO BY

ABERCROMBIE & FITCH EUROPE SAGLHearing Officer:

Ms Sandy Widjaja
Principal Assistant Registrar of Trade MarksMs Eileen Chong (Drew & Napier LLC) for the Opponents

Cur Adv Vult

GROUNDS OF DECISION

1This is an opposition to the registration of the following trade mark T1308820H("Application Mark"):

in relation to the following goods in Class 09:
Anti-dazzle spectacles; bars for spectacles; bows adapted for spectacle frames; carrying
cases adapted for spectacles; cases adapted for spectacles; chains for spectacles;
computer programs for use in fitting spectacles; containers for spectacles; cords forspectacles; devices for supporting spectacles; devices in the nature of spectacles fordisplaying televised images; devices in the nature of spectacles for viewing recorded
video images; devices in the nature of spectacles for viewing televised images; finishedlenses for spectacles; fitted cases for spectacles; frames for spectacles; lenses forspectacles; lorgnettes (spectacles); optical lenses for use with spectacles; optical
spectacles; protective glasses (spectacles); protective spectacles; safety spectacles;
spectacle cases; spectacle chains; spectacle frames; spectacle frames having elastic
hinges; spectacle holders; spectacle lenses; spectacle mountings; spectacle support
bands, chains, cords, and straps; spectacles; spectacles (optics); spectacles for sports;
spectacles used in information science; sport glasses (protective spectacles); sport
glasses (spectacles); sports glasses (spectacles); straps for spectacles; sun spectacles.
2
MMC International Services Pte Ltd (“the Applicants”) applied to protect the
Application Mark in Singapore on 4 June 2013. The application was accepted andpublished on 30 January 2014 for opposition purposes. Abercrombie & Fitch Europe
SA (now known as Abercrombie & Fitch Europe SAGL) (“the Opponents”), filed their
Notice of Opposition to oppose the registration of the Application Mark on 23 May
2014. The Applicants filed their Counter-Statement on 18 July 2014. The Opponents
filed evidence in support of the opposition on 20 March 2015. The Applicants filed
evidence in support of the application on 21 September 2015. The Opponents
subsequently filed their evidence in reply on 17 December 2015. The Pre-Hearing
Review was held on 19 January 2016 and the hearing was set for 17 May 2016.
Grounds of Opposition
3
The Opponents rely on Sections 7(6), 8(2)(b), 8(4)(b)(i) and 8(7)(a) of the Trade
Marks Act (Cap 332, 2005 Rev Ed) (“the Act”) in this opposition.
Opponents’ Evidence
4

The Opponents’ evidence comprises the following:

-2-

(i)

Statutory Declaration by Mr Reid M. Wilson, Authorised
Representative of the Opponents, dated 16 March 2015 (“theOpponents’ 1st Evidence”);(ii)

Statutory Declaration in Reply by Mr Reid M. Wilson, dated 9
November 2015 (“the Opponents’ 2nd Evidence”);

Applicants’ Evidence
5
The Applicants’ evidence comprises a Statutory Declaration made by Mr Neo
Teck Joo, Director of the Applicants dated 18 September 2015 (“the Applicants’
Evidence”).
Applicable Law and Burden of Proof
6
As the applicable law is the Act, there is no overall onus on the Applicants either
before the Registrar or in opposition proceedings. The undisputed burden of proof in
the present case falls on the Opponents.
Background
7
The Opponents are a subsidiary of Abercrombie & Fitch Co., as is Abercrombie& Fitch Trading Co. Abercrombie & Fitch Trading Co. is the holding company for trade
mark applications and registrations in the United States of America (USA) and Canada.
The Opponents are the holding company for trade mark applications and registrations
worldwide, excluding USA and Canada, but including Singapore (see paragraph 10 of
the Opponents’ written submissions). Thereafter, the term “Opponents” will be used torefer to the Opponents as well as their related entities as provided above.
8
The Opponents deposed at paragraph 7 of the Opponents’ 1st Evidence that thetrade mark “A & F” is a well-known acronym of the Opponents’ brand and that trade
mark “Abercrombie & Fitch” has been in use in the USA since at least 1902 while the“A & F” trade mark has been in use in the USA since at least as early as 1978.
9
At paragraph 8 of the Opponents’ 1st Evidence, the Opponents deposed that the“A & F” trade mark has been in use in Singapore since at least 2002 when goods
purchased on the Opponents’ website were shipped to Singapore. Further, theOpponents deposed at paragraph 9 of the Opponents’ 1st Evidence that the Opponents’boutique in Orchard Road opened in 2011 such that goods bearing the “A & F” trade
mark have been sold from the physical boutique since then.
10 In relation to the device of a moose () (“the Moose Device”), the Opponents
stdeposed at paragraph 19 of the Opponents’ 1 Evidence that it has been in use in the
USA since 2002. In relation to Singapore, the Opponents deposed at paragraph 20 of
the Opponents’ 1st Evidence that the Moose Device has been in use in Singapore since-3-2002 when goods purchased on the Opponents’ website were shipped to Singapore.
Further, as mentioned above, the Opponents’ boutique in Orchard Road opened in 2011
such that goods bearing the Moose Device have also been sold from the physicalboutique since then (paragraph 21 of the Opponents’ 1st Evidence).
11 The Opponents relied on the following earlier marks (“collectively the
Opponents’ Earlier Marks”, “Opponents’ Earlier “A&F” Mark” and “Opponents’
Earlier Moose Device Mark” respectively as indicated in the table below - paragraphs 4
and 5 of the Opponents’ 1St Evidence):

S/N

Opponents’
Earlier Marks

1
T1117126D

2
T0002872D

3
T0002873B

Class
Opponents’ Earlier “A&F” MarksClass 14
Precious metals and their alloys and goods in precious
metals or coated therewith, not included in other classes;
jewelry, precious stones; timepieces and chronometric
instruments.
Class 18
Leather and imitations of leather, and goods made of thesematerials and not included in other classes; animal skins;
trunks and traveling bags; umbrellas, parasols and walking
sticks; whips, harness and saddlery.
Class 03
Personal care products, namely, nail polish, nail polishremover, nail stencils, hard artificial nails, shower gel,bubble bath, fragrant body splash, hand lotion, body lotion,
face lotion, hand soap, body soap, face soap, hair shampoo,
hair conditioner, hair styling gel, hair spray, hair dyes, hairrinses, perfume, cologne, body glitter, mascara, blush, eyeshadow, lip stick, lip gloss, make-up, make-up remover,eyecream, hand cream, body cream, face cream, astringent
for the face, face cleanser, bath oil, bath beads, body
powder, face powder, liquid talcum powder, non-medicatedblemish stick, shaving cream, deodorant, potpourri, air
freshening room spray, incense, sachets, scented beads,
body and face suntanning lotion, body and face sunlesstanning lotion, body and face pre-suntanning lotion andbody and face after suntanning lotion in International Class
3.
Class 25
Clothing, footwear, headgear.

-4-4
T0002874J
5
T0202014C

6
T0721760C

7
T1111521F

Class 35
Retail store services in relation to clothing and personal careproducts; all in Class 35.
Class 35
The bringing together, for the benefit of others of a varietyof goods, enabling customers to conveniently view andpurchase those goods from a general merchandise catalogue
by mail order.
Class 25
Clothing, footwear, headgear; clothing, namely, bathrobes,
beach cover-ups, beachwear, belts, blazers, blouses, body
shapers [foundation garments], body suits, boxer shorts,
bras, bustiers, camisoles, caps, coats, dresses, footwear,
foundation garments, garter belts, girdles, gloves, gowns,
halter tops, hats, headbands, hosiery, jackets, jeans, jogging
suits, knee high stockings, knit shirts, knit tops, leotards,
lingerie, loungewear, mittens, negligees, night gowns, night
shirts, pyjamas, panties, pants, pantyhose, sarongs, scarves,
shirts, shorts, skirts, slacks, sleepwear, slips, socks,
stockings, suits, sweat pants, sweat shirts, sweat shorts,
sweat suits, sweaters, swim wear, t-shirts, tank tops, tap
pants, teddies, ties, tights, underpants, undershirts,
underwear and vests.
Class 35
Advertising; business management; business administration;
office functions; retail store services connected withclothing, footwear, headgear, soaps, perfumes, essential oils,
cosmetics, hair lotions, jewellery and bags; online retailstore services connected with clothing, footwear, headgear,soaps, perfumes, essential oils, cosmetics, hair lotions,jewellery and bags.
Opponents’ Earlier Moose Device MarksClass 24
Textiles and textile goods not included in other classes; bed
and table covers.

8

T1314410H
9T0721747F

Class 03
Bleaching preparations and other substances for laundry
use; cleaning, polishing, scouring and abrasive preparations;soaps; perfumery, essential oils, cosmetics, hair lotions;dentifrices; personal care products, namely, nail polish, nailpolish remover, nail stencils, hard artificial nails, shower-5-gel, bubble bath, fragrant body splash, hand lotion, handsoap, body soap, face soap, hair shampoo, hair conditioner,
hair styling gel, hair spray, hair dyes, hair rinses, perfume,
cologne, aftershave lotion, aftershave balm, toilet water,
talcum powder, face lotion, body lotion, hair lotion, bath oil,scented sachets, shaving soap, shaving cream, bodyshampoo, body glitter, mascara, blush, eye shadow, lip stick,lip gloss, make-up, make-up remover, eyecream, handcream, body cream, face cream, astringent for the face, facecleanser, bath beads, body powder, face powder,nonmedicated blemish stick, deodorant, potpourri, air
freshening room spray, incense, scented beads, body andfacesuntanning lotion, body and face sunless tanning lotion,body and face pre-suntanning lotion and body and face after
suntanning lotion.
Class 14
Precious metals and their alloys and goods in precious
metals or coated therewith, not included in other classes;
jewellery, precious stones; horological and chronometric
instruments; jewelry, namely, necklaces and bracelets.
Class 18
Leather and imitations of leather, and goods made of thesematerials and not included in other classes; animal skins,
hides; trunks and travelling bags; umbrellas, parasols andwalking sticks; whips, harness and saddlery; backpacks,
duffel bags, gym bags, handbags, tote bags, travel bags,
purses, wallets, luggage, key cases, credit card cases, briefcases, cases for toiletries and umbrellas.
Class 25
Clothing, footwear, headgear; clothing, namely, bathrobes,
beach cover-ups, beachwear, belts, blazers, blouses, body
shapers [foundation garments], body suits, boxer shorts,
bras, bustiers, camisoles, caps, coats, dresses, footwear,
foundation garments, garter belts, girdles, gloves, gowns,
halter tops, hats, headbands, hosiery, jackets, jeans, jogging
suits, knee high stockings, knit shirts, knit tops, leotards,
lingerie, loungewear, mittens, negligees, night gowns, night
shirts, pyjamas, panties, pants, pantyhose, sarongs, scarves,
shirts, shorts, skirts, slacks, sleepwear, slips, socks,
stockings, suits, sweat pants, sweat shirts, sweat shorts,
sweat suits, sweaters, swim wear, t-shirts, tank tops, tap
pants, teddies, ties, tights, underpants, undershirts,
underwear and vests.
Class 35
Retail store services in relation to clothing, footwear,
headgear, bags, accessories and personal care products.

-6-Based on the above list, it would appear that the Opponents do not have any marks inClass 9, nor any “composite” marks comprising the letters “A&F” and the Moose Device.
This will be discussed further below.
12 The Applicants did not provide any information as to their background whether in
the Counter-Statement, Applicants’ Evidence or written submissions. In this regard,
please see comments below.
Preliminary Comment
13 As a preliminary comment, the Applicants did not attend the hearing. The
Applicants indicated, via an email letter dated 14 April 2016 enclosing their written
submissions, that they would not be attending the hearing. The Applicants submitted
that all the relevant information has been provided, via the documents tendered, in
relation to the case. In this regard, the documents tendered from the Applicants’ end are(i) the Counter-Statement; (ii) the Applicants’ Evidence; and (iii) the Applicants’
written submissions.
14 Further, a look at the documents referred to above will reveal that very little
information has been provided. As alluded to above, the Applicants did not provide any
information as to their corporate background nor any other further information in
relation to the Application Mark (for example, how the Application Mark was derived),
except for some representation as to how the Application Mark, or at least a variation of
the same, will be applied to the goods. In this regard, reference is made to theApplicants’ Evidence at pages 2 - 6. It can be seen that the Application Mark is used onlenses on the glasses while only the Applicants’ moose device is replicated on the frameof the glasses.
15 Further, at the outset, it is noted that the Applicants have appeared to repeat theirmain arguments in their Counter-Statement, Applicants’ Evidence as well as theirwritten submissions. In the main, the Applicants argued that:(i) the Application Mark is in Class 9 and none of the Opponents’ Earlier
Marks are in Class 9;(ii) the Applicants have a first mover advantage.
The details of the Applicants’ submissions will be considered below.
MAIN DECISION
Ground of Opposition under Section 7(6)16Section 7(6) of the Act provides that:-7-7.—(6) A trade mark shall not be registered if or to the extent that the application
is made in bad faith.
Decision on Section 7(6)17 The Opponents did not apply to cross-examine the Applicants’ deponent and theRegistrar is therefore left to decide the issue of bad faith based on the documents filed.
The combined test for bad faith
18 The legal test for determining the presence of bad faith is fairly settled and issummarized in Valentino Globe BV v Pacific Rim Industries Inc [2010] 2 SLR 1203(“Valentino”) at [29], citing Wing Joo Loong Ginseng Hong (Singapore) Co Pte Ltd v
Qinghai Xinyuan Foreign Trade Co Ltd [2009] 2 SLR(R) 814 (“Wing Joo Loong”) at[105]-[106]:[29] In Wing Joo Loong ([21] supra), this court observed at [105] that “[t]he testfor determining the presence of bad faith, in the context of the English Trade
Marks Act, was settled by the English Court of Appeal” [emphasis in original]. It
would be useful to set out in full the observations of this court at [105]–[106]which are as follows:
105 The test for determining the presence of bad faith, in the context of
the English Trade Marks Act, was settled by the English Court of Appeal
in Harrison v Teton Valley Trading Co Ltd [2004] 1WLR 2577, where Sir
William Aldous, with whom Arden and Pill LJJ agreed, expressed the test
as follows (at [26]):
The words ‘bad faith’ suggest a mental state. Clearly when
considering the question of whether an application to register ismade in bad faith all the circumstances will be relevant. However
the court must decide whether the knowledge of the applicant wassuch that his decision to apply for registration would be regarded
as [being] in bad faith by persons adopting proper standards.
This test, which was referred to by Sir Aldous (id at [25]) as the‘combined’ test of bad faith, contains both a subjective element (viz, what
the particular applicant knows) and an objective element (viz, whatordinary persons adopting proper standards would think).
106 Recently, this combined test of bad faith was succinctly explained in Ajit
Weekly Trade Mark [2006] RPC 25 as follows (at [35] and [41]):
35 … Bad faith is to be judged according to the combined test of
dishonesty for accessory liability [for] breach of trust set out by the
majority of the House of Lords in Twinsectra Ltd v Yardley [2002] 2 A.C.

-8-

164, with Gromax Plasticulture [([103] supra)] … providing theappropriate standard namely, acceptable commercial behaviour observedby reasonable and experienced persons in the particular commercial area
being examined.
…
41 … [T]he upshot of the Privy [Council’s] decision in [Barlow Clowes
International Ltd v Eurotrust International Ltd [2006] 1WLR 1476] is: (a)to confirm the House of Lords’ test for dishonesty applied in Twinsectra,
i.e. the combined test; and (b) to resolve any ambiguity in the majority of
their Lordships’ statement of that test by making it clear that an enquiry
into a defendant’s views as regards normal standards of honesty is not partof the test. The subjective element of the test means that the tribunal must
ascertain what the defendant knew about the transaction or other mattersin question. It must then be decided whether in the light of that knowledge,
the defendant’s conduct is dishonest judged by ordinary standards ofhonest people, the defendant’s own standards of honesty being irrelevantto the objective element …
This court in Wing Joo Loong then applied at [107]–[117] the combined test of
bad faith which, to reiterate, contains both a subjective element (viz, what theparticular applicant knows) and an objective element (viz, what ordinary persons
adopting proper standards would think). It is therefore apparent to us that bad
faith as a concept is context-dependent. In the final analysis, whether bad faith
exists or not hinges on the specific factual matrix of each case.
[Emphasis as underlined mine]
19 Further, as stated in Valentino at [30] citing Nautical Concept Pte Ltd v JefferyMark Richard and another [2007] 1 SLR(R) 1071 at [15] that was in turn citing theEnglish decision in Royal Enfield Trade Marks [2002] RPC 508 (“Royal Enfield”):[30] Furthermore, it is pertinent to note that an allegation of bad faith is a serious
claim to make and it must be sufficiently supported by the evidence (see Nautical
Concept Pte Ltd v Jeffery Mark Richard [2007] 1 SLR(R) 1071 at [15] which we
reproduced below):
An allegation that a trade mark has been applied for in bad faith is aserious one. In Royal Enfield Trade Marks [2002] RPC 508, it was held (at[31]) that:
A plea of fraud should not be lightly made … and if made should
be distinctly alleged and distinctly proved. It is not permissible toleave fraud to be inferred from the facts (see Davy v. Garett [1878]
7 CH.D 473 at 489). In my judgment precisely the sameconsiderations apply to an allegation of … bad faith made under-9-

section 3(6) [of the UK Trade Marks Act 1994]. It should not bemade unless it can be fully and properly pleaded and this will
rarely be possible by a process of inference. [Emphasis added;
emphasis in original omitted]
20 However, the above is not an absolute prohibition. In this regard, I refer to Law
of Intellectual Property of Singapore (Sweet & Maxwell, 2014 Rev Ed) by Professor
Ng-Loy Wee Loon (“Law of Intellectual Property of Singapore”) at [21.4.1]). The
author pointed out, at footnote 109, that the High Court in Festina Lotus SA v
Romanson Co Ltd [2010] 4 SLR 552 (“Festina”) at [115] indicated that a finding of bad
faith is largely, if not invariably, based on circumstantial evidence.
21 Finally, bad faith should also be determined as at the date of the application: Festina
at [100]) – in this case, as of 4 June 2013.
22 The Courts have provided some guidelines and indicators in the factual inquiry.
In this regard, I refer to Law of Intellectual Property of Singapore”) at [21.4]):

23

(i)

Knowledge of the trade mark applicant that there existed another trade
mark belonging to the party opposing the application. While thisknowledge alone does not amount to bad faith, whether there is bad
faith in a case where the trade mark applicant possesses this knowledge
depends on whether, in light of all the other circumstances, an ordinary,honest person possessing this knowledge would have considered it
appropriate to apply to register the mark (see Law of Intellectual
Property of Singapore at [21.4.5]).

(ii)

Bad faith is a distinct and independent concept from the issue ofconfusing similarity between the marks such that bad faith can exist
even where use of the trade mark sought to be registered would not
result in the public being confused (see Law of Intellectual Property ofSingapore at [21.4.6]).

(iii)

However, resemblance between the marks has some relevance as thenotion of bad faith cannot be decided in vacuum and has to be decided
in the context of some link or nexus between the parties in dispute.
Where the two competing trade marks are identical or similar, whether
or not this similarity is liable to cause confusion, this resemblance cango towards establishing the nexus between parties (see Law ofIntellectual Property of Singapore at [21.4.7]).

(iv)

Where the trade mark applicant has “hijacked” the trade mark he isseeking to register, such conduct is highly suggestive of bad faith (seeLaw of Intellectual Property of Singapore at [21.4.12]).

I will proceed to apply the above principles to the current case.

- 10 -

Knowledge of the trade mark applicant
24 The Opponents deposed, at paragraph 7 of the Opponents’ 1st Evidence, that thetrade mark “Abercrombie & Fitch” has been in use in the United States (US) since atleast 1902 and that the “A&F” trade mark has been in use in the (US) as well since atleast 1978. On the other hand, the Moose Device has been in continuous use in the US
as early as 2002 (paragraph 19 of the Opponents’ 1st Evidence).
25 In this regard, the total annual sales of the Opponents’ goods worldwide from
2000- 2013 is as follows (paragraph 25 of the Opponents’ 1st Evidence):

Year
2000
2001
2002
2003
2004
2005
2006
2007
2008
2009
2010
2011
2012
2013

Worldwide Sales Figures
USD
1,229,868,225.41
1,331,434,374.59
1,446,033,686.44
1,392,961,733.85
1,437,432,431.77
1,768,953,097.75
1,920,942,875.84
2,109,973,952.47
1,951,997,241.05
1,615,451,121.98
1,875,678,709.11
2,063,038,124.17
2,086,699,659.52
1,893,955,283.60

SGD
1,537,270,000
1,664,230,000
1,807,470,000
1,741,130,000
1,796,720,000
2,211,100,000
2,401,080,000
2,637,360,000
2,439,900,000
2,019,230,000
2,344,500,000
2,578,690,000
2,608,270,000
2,367,350,000

26 The amount spent on advertising worldwide, including Singapore, from 2002 –2013 is as follows (paragraph 27 of the Opponents’ 1st Evidence):

Year
2002
2003
2004
2005
2006
2007
2008
2009
2010
2011
2012

Worldwide Promotional Figures
USD
27,509,834
23,967,919
25,262,602
33,110,621
33,783,977
35,490,521
33,493,017
25,334,552
26,130,264
32,894,649
44,743,064- 11 -

SGD
34,385,900
29,958,700
31,577,000
41,386,600
42,228,300
44,361,400
41,864,600
31,666,900
32,661,500
41,116,700
55,926,600

2013

41,748,874

52,184,000

27 In relation to Singapore, the Opponents deposed, at paragraphs 8 and 20 of the
Opponents’ 1st Evidence that the Opponents’ Earlier Marks have been in use in
Singapore since at least 2002 when goods purchased from the Opponents’ website wereshipped to Singapore. Further, the Opponents deposed at paragraphs 9 and 21 of the
Opponents’ 1st Evidence, that the Opponents’ boutique in Orchard Road opened in 2011
such that goods bearing the Opponents’ Earlier Marks have been sold from the physicalboutique since then.
28 In relation to the use of the Opponents’ Earlier Marks in Singapore, I refer toparagraph 23 of the Opponents’ 1st Evidence. The total annual sales of goods from the
Opponents’ website to Singapore from 2002 to 2013 are as follows:

S/N
1
2
3
4
5
6
7
8
9
10
11
12

Total annual sales of goods from the Opponents’ website to Singapore1
Year
USD
SGD2
2002
26,557.47
33,237.20
2003
62,072.94
77,685.50
2004
148,584.01
185,956
2005
101,986.71
127,6382006
180,818.36
226,2982007
355,643.19
445,095
2008
436,469.23
546,2502009
350,604.88
438,7892010
474,497.04
593,8432011
407,801.04
510,3712012
432,927.46
541,8172013
1,083,701.53
1,356,270

29 Total annual store sales in Singapore from 2011 – 2013 is as follows (paragraph
24 of the Opponents’ 1st Evidence):

S/N
1
2
3

Year
2011
2012
2013

Total annual store sales in Singapore3
USD
SGD4
5,262,914.80
6,869,260.95
23,952,609.20
29,832,456.64
20,356,348.71
25,564,691.09

30 One point to note about the figures above is that they pertain to sales andpromotion of the Opponents’ whole host of goods in relation to a whole range of brands
owned by the Opponents, including Opponents’ Earlier Marks.
1

The column on “Merchandise Orders” have been excluded.
Exchange rate from oanda as at 15 May 2014.
3
The column on “Merchandise Orders” have been excluded.
4
Exchange rate from oanda as at 15 May 2014.
2- 12 -

31 The opening of the Opponents’ boutique in Orchard Road attracted much
publicity (paragraph 9 of the Opponents’ 1st Evidence). In this regard, I refer to thefollowing articles in Exhibit 2 of the Opponents’ 1st Evidence (in chronological order):Sample publications in the media in relation to the Opponents in Singapore
S/N
Date
Publication
Title
Page in
Opponents’1st
Evidence
1
25 AugStraits Times
New Fashion Entrants to94
2011
shake up Orchard Road230 SepStraits Times
Singapore Finds
45
2011
Abercrombie & Fitch’s
Banner Offensive
34529 Sep2011
29 Sep
2011
30 Sep2011

mrbrown.com
Marketinginteractive.com
Yahoo! News
Singapore6

30 Sep2011

7

1 Oct 2011

The Sitch on Fitch
http://anfnewsnow.blog
spot.com/2011/09/abercrombie-fitch-too-fiercein.html
Straits Times Online

8

1 Oct 2011

AsiaOne news

9

4 Oct 2011

Today Online

1011

4 Oct 20118 Oct 2011

AsiaOne news
Straits Times Online

12

7 Oct 2011Yahoo! Entertainment
Singapore13

8 Oct 2011

SGLinks.com

14

9 Oct 2011

The Sunday Times

Abercrombie & Fitch ad at
Orchard Road Suspended
Update: Authorities Mull
Fate of A&F Ad
MDA backs ASAs Call to
Remove Abercrombie &Fitch adAbercrombie & Fitch Too
Fierce in Sexuality for
Singapore46

Advertising Watchdog
Denies Claims of “Double
Standards”

51

Waxing Firm’s Ad More
Vulgar than
Abercrombie & Fitch’s
This Ad is Okay in a
Pluralistic Society
Too hot? Too much?
Abercrombie & Fitch ‘ad
ab-solutely by the book’To buy or not to buy into
Abercrombie & Fitch’s
ways
Abercrombie & Fitch ‘ad
ab-solutely by the book’
Furore over Ad may Benefit

53- 13 -

55
47

57

61
62
65
67

66
73

15
16
17
18

19
20
21
22
23

12 Oct2011
12 Oct2011
14 Oct2011
21 Nov
2011
23 Nov
2011
25 Nov
2011
28 Nov
2011
12 Dec2011
15 Dec2011

24

Undated25

Undated26

Undated27

Undated28

Undated29

UndatedAsia One NewsMy PaperThe Straits Times –Urban
Yahoo! Entertainment
Singapore

A&F’s Image, say Experts
Preparations Underway to
Remove A&F Poster
Preparations Underway to
Remove A&F Poster
Undress for Success

Abercrombie & Fitch toopen in S’pore on 15
DecemberHis Style Diary
A& F Singapore opens on
15 December
Youth.sg
Your take: “Shirtless
greeters” for store opening
Star blog on STOMP
15 of Dec is marked on mycalendarLifestyle
Abercrombie & Fitch opens
in Singapore
http://Sg.entertainment.
Hundreds flock to
yahoo.com
Abercrombie & Fitch
LaunchThe Wall Street Journal Abercrombie & Fitch Tests
OnlineTaste Limits in Singapore
Not Specified
Abercrombie & Fitch on
hunt for attractive staff
Not Specified
Abercrombie & Fitch
believes all publicity is good
publicity
Not Specified but it
Ads watchdog to work withwould appear to the anagencies
SPH publication see
writer’s email at theend of the article
Not Specified
Watchdog to vet ads before
they go public
Not Specified

Chinese article and notranslation provided

72
75
74
80

82
84
87
90
96

70
76
77

78

79

95

32 It is observed that the publicity above spans a period from 25 August 2011 – 15
December 2011 which is a period of approximately 3.5 months. Further, it is also notedthat the publicity ranges from the mainstream media such as, for example, the Straits
Times and Asia One, to online news sources (Yahoo! Entertainment Singapore).
33 It will be apparent from the evidence above that the publicity is not in relation to
the Opponents products per se, but that a good part of it is in relation to the banner of- 14 -

the Opponents which was displayed across the front window of the Opponents’ 4-level
store at Knightsbridge, Orchard Road. The banner includes a picture of a man wearing
jeans exposing his well-built body. The advertisement shows the model’s chest andtorso, drawing attention to his hands pushing down his low-slung jeans (see page 46 of
Exhibit 2 of the Opponents’ 1st Evidence). Related to this is also the Opponents’ choiceof hiring “shirtless greeters” in line with the said advertisement (see page 84 of Exhibit
2 of the Opponents’ 1st Evidence).
34 The Advertising Standards Authority of Singapore (ASAS) called for the banner
to be removed and the Media Development Authority (MDA) backed this call (see page
47 of Exhibit 2 of the Opponents’ 1st Evidence). ASAS said that the advertisement wassuspended “due to breach of the Singapore Code of Advertising Practice guidelines on
decency” (see page 48 of Exhibit 2 of the Opponents’ 1st Evidence). The public’s
reaction towards the advertisement has been mixed (see page 50 of Exhibit 2 of the
Opponents’ 1st Evidence). Some were offended while others were simply amused.
35 Regardless of the public reaction to the Opponents’ advertisement, the point isthat with that much publicity about the Opponents’ entry into the local market, during
such an extended period of time, and via various media platforms, the Applicants would
have been aware of the Opponents, at the very latest, by this time, even if the Applicants
were not aware of the Opponents previously (it is the Opponents’ evidence that thetrade mark “Abercrombie & Fitch” has been in use in the US since at least 1902, the“A&F” trade mark since at least 1978, and the Moose Device since 2002).
Bad faith is a distinct and independent concept from the issue of confusing similarity /Resemblance between the marks
36

I will deal with the two issues together as they are related.

37 I refer to the Opponents’ submissions at paragraph 15 where the Opponents
referred to Festina at [115]:[115] The categorisation by Bently & Sherman as seen above hints that despite
the broad nature of the notion of bad faith, one must show some sort of nexus
between the parties in dispute. Otherwise, the notion of bad faith would have to be
decided in a vacuum. A clear-cut example of such a nexus would be an
outright copying of the proprietor’s mark such that the two competingmarks are practically identical. However, the nexus may be in the guise ofsomething more subtle. In finding a nexus between the parties, a parallel may be
drawn between ss8(2)(b) and s7(6) TMA. For example, there may be cases where
although there is some similarity of marks or of the goods or services, it falls shortof confusing similarity (i.e , no likelihood of confusion) within the meaning ofs8(2)(b) TMA. Nevertheless, the evidence of this similarity may be taken into
account and considered against the background facts from which bad faith may beinferred. In other words, while the finding of bad faith is largely, if not invariably,
based on circumstantial evidence, the party alleging bad faith needs to show some- 15 -

link between the parties, perhaps by way of a pre-existing relationship or someacts of association with the proprietor or some nexus between the two competingmarks.
[116] There may be a fine line between being inspired by another’s trade mark as
opposed to blatant copying or copying with some modifications made to themark. The former would not attract punitive measures whereas the latter would
lead to the mark being rejected...”[Emphasis in bold the Opponents’ and emphasis as underlined mine]
38

S/N
1.

2.

For ease of comparison, the marks are as follows:

Application MarkTABLE 1
Opponents’ Earlier “A&F” Mark

Opponents’ Earlier Moose Device Mark

39 In this regard, the Opponents have provided evidence as to the derivation of the
Opponents’ Earlier Marks. While this information is not as critical as the derivation of
the Application Mark, it does add legitimacy, and support, to the Opponents’ case.
40 The Opponents have deposed, at paragraph 7 of the Opponents’ 1st Evidence (andreferred to above) that “A & F” is an acronym of the Abercrombie & Fitch brand. At
paragraph 15(i) of the Opponents’ 1st Evidence, it was deposed that David Abercrombieand Ezra Fitch were the founders of the Opponents. In this regard, I am of the view,contrary to the Opponents’ submissions at paragraph 29 of their written submissions,that “A&F” is not invented, unlike, for example, “VOLVO”. However, I do agree with
the Opponents’ arguments at paragraph 29 of their written submissions, that the
Opponents’ Earlier “A&F” Mark has no meaning at all in relation to the goods andservices claimed thereunder (aside from that described above) and as such enjoy a highdegree of technical distinctiveness.
41 In relation to the Opponents’ Earlier Moose Device, the Opponents also argued, atparagraph 32 of their written submissions, that it is invented and has no meaning or
significance in relation to the goods and services claimed thereunder. Again, I do notthink that the Opponents’ Earlier Moose Device Mark can be said to be invented, since- 16 -

it is simply a device of a common animal, although it could be argued that the specificdepiction of the moose is invented (see below). However, I do agree that it has no
significance in relation to the goods and services claimed and as such enjoy a highdegree of technical distinctiveness.
42 Specifically, in relation to the Moose Device, I refer to the Opponents’ 1st
Evidence at paragraphs 11 – 15.
43 The Opponents deposed that the author and creator of the Moose Device is one
Mr Tom Ward. Mr Ward was the Senior Director for graphics concept design for the
Opponents. Before that, Mr Ward was an art director for the Opponents. Mr Ward waswith the Opponents from 2000 – 2009. He has since left the Opponents and is no longer
an employee of the Opponents such that the Opponents are unable to locate hiswhereabouts.
44 The Opponents submitted as Exhibit 4 of the Opponents’ 1st Evidence, a copy of
Mr Ward’s declaration made under oath in the US, in the case of Abercrombie & Fitch
Co. and Abercrombie & Fitch Trading Co., v Moose Creek, Inc. and Juno of California,
L.L.C. 486 F.3d 629 (9th Cir. 2007).
45 The Opponents summarised the salient points in Mr Ward’s declaration as
follows:(i)

The Moose Device was created by Mr Ward after the Opponents
planned on featuring a silhouette moose design in its Christmas 2001
catalogue and magazine.

(ii)

Following the successful reaction to several items on which the
Opponents used the silhouette moose design in 2001, the then CEO
Michael Jeffries told Mr Ward that he wanted the Opponents to trade
mark a silhouette moose design.

(iii)

Mr Ward began the design process by referring to the silhouette moose
design used in 2001 and to a clip art website, clipart.com to which the
Opponents subscribed, which featured different versions of a moose
device. As with the version used in 2001, he worked with thesilhouette of a moose.

(iv)

Mr Ward then tweaked the silhouette by hand to make it more
recognisable as a moose. He altered the positioning of the legs,
modified the antlers and eliminated the beard above the neck. Thesechanges were driven by the need for the moose to be discernible
regardless of whether it was embroidered or printed on a small scale.
The design that he rendered conveyed a clean and distinctly
unmistakable image of a moose.

- 17 -

(v)Thus the Moose Device was Mr Ward’s original creation. The antlers
were arranged so that both racks were displayed. This three-quarterview of two separable and distinct antlers next to a side view of theface is atypical. The Moose Device also lacks a tail and a beard so thatthe lines are cleaner and the image more defined.

(vi)

Mr Ward also independently created a “back story” about the moose
known as “The Legend of the Moose” to enliven the moose
iconography. This story was used on hangtags, tissue paper and on the
Opponents’ website during the 2003 holiday period. “The Legend of
the Moose” is a fictionalised account of an encounter that the
Opponents’ founders, David Abercrombie and Ezra Fitch, had with amoose in the Adirondacks in 1901 in which the moose spared theirlives.

46 Further, the Opponents also deposed, at paragraph 16 of the Opponents’ 1st
Evidence, that they are the rightful and legal owner of the copyright subsisting in the
Moose Device as it was created by Mr Ward in the course of his employment with the
Opponents. In this regard, the Opponents tendered Certificate of Registration (VA 1231-955) issued by the Copyright Office in the US (COUS) on 22 September 2003
tendered as Exhibit 5 of the Opponents’ 1st Evidence. The Certificate was issued to A
& F Trade Mark Inc, a subsidiary of the parent company, Abercrombie & Fitch Co.
47 Finally, the Opponents also deposed, at paragraph 18 of the Opponents’ 1st
Evidence, that A & F Trade Mark Inc, also owns the copyright in graphic design
consisting of the Moose Device and “A&F” trade mark, again, registered in the COUS,on 18 December 2001 (VAu 542-906), tendered as Exhibit 6 of the Opponents’ 1st
Evidence.
48 At the hearing, the Opponents’ attention was drawn to paragraph H of Circular 3of 2015:
H. Evidence Filed in Related Proceedings
Where a party wishes to rely on an SD, affidavit or witness statement filed inrelated proceedings, as far as possible, the same evidence should be re-declared(that is, to declare a fresh SD with the same content) by the same deponent for the
purposes of the proceedings before the Registrar.
The Registrar may accept the SD, affidavit or witness statement appended as an
exhibit to an SD filed for the purposes of proceedings before the Registrar, butwill give the appropriate weight to that exhibit.
49 In light of the above, the Registrar will have the ultimate discretion as to theweight to the accorded to Mr Ward’s declaration since it was filed for anotherproceeding. However, the fact that Mr Ward is no longer in the employ of the- 18 -

Opponents such that the Opponents are unable to locate Mr Ward will be taken into
account.
50 As mentioned, the above information does legitimise and support the Opponents’claim in relation to the Opponents’ Earlier Marks. In particular, it explains why (i) the
characters “A&F” were chosen; (ii) the Moose Device was chosen; and (iii) the fact that
the Moose Device is portrayed the way it is (clean cut without a tail and a beard to assist
in replicating the device on the goods).
51

S/N
1.

For ease of reference, the marks are as follows:

Application MarkTABLE 1
Opponents’ Earlier “A&F” Mark

Opponents’ Earlier Moose Device Mark2.

52 In relation to the depiction of the moose device, there is an uncanny resemblance
between the Application Mark and the Opponents’ Earlier Moose Device Mark. In thisregard, the devil is in the details. The following aspects have been noted to be very
similar:
(i)
(ii)
(iii)
(iv)

The positioning of the legs;
There is no beard above the neck;
There is no tail;The arrangement of the antlers.

53 While the Opponents have provided their reasons as to why the depiction is as
such, the Applicants did not provide any reason at all. In the current case there is no
derivation provided by the Applicants for the Application Mark. As indicated above,
the Applicants did not attend the hearing. Further, and more importantly, as alluded toabove, there is nothing in the documents filed by the Applicants relating to thederivation of the Application Mark.
54 It is noted that at paragraph 3 of the Applicants’ Evidence, the Applicants deposedthat the Applicants’ application is for “an animal silhouette and common alphabets andsymbols characters”. While I accept that the moose device is not an invented device (oranimal) and that “A&F” consists of common alphabets, surely, there must be a reason- 19 -

as to why the moose device and the “A&F” characters are chosen? What is needed isfor the Applicants to provide an explanation as to the choice as well as the particular
depiction of the Applicants’ moose device and the characters “A&F” for the relevant
goods.
55 In this regard, it is observed that “A&F” cannot be an acronym of the Applicantssince they are “MMC International Services Pte Ltd”. Further, the deponent, who is adirector of the Applicants, is one Mr Neo Teck Joo (see paragraph 1 of the Applicants’
Evidence) such that it cannot be his initials either. Or perhaps it could be the initials of
his alias. But that is precisely the problem, in that it would appear that the Applicants
did not deem it important enough to provide an explanation, in order to defend theircase.
56 In relation to the Applicants’ moose device, as mentioned above, while the moose
device is not an invented device (in that the moose is not an invented animal), thechoice of the device of the moose (and well as the specific depiction) is peculiar in
relation to the goods claimed by the Applicants.
57 The Opponents, at paragraph 16 of their written submissions, further submitted
that in Festina, the Court held, at [122] and [123], that the respondent’s failure to
furnish a credible explanation of how "ESTINA" in its mark "J.ESTINA" was derived
could only lead to the irresistible conclusion that the word "ESTINA" was copied fromthe Appellant:[122] In my opinion, the Respondent’s brand story on the name “J.ESTINA”
appears extremely contrived. Firstly, the use of Princess Jovanna’s name(compressed to “J.”) only explains the use of the letter “J”. It does not explain
why the meaningless word “ESTINA” was chosen. The six letters in “ESTINA”
are not even the initials of “Jovanna Elizabeth Antonia Romana Marie” nor dothey have any nexus with the tiara or the pet cat “Jenna” which were repeatedlyreferred to whenever the question of derivation of the brand name was raised. The
brand story certainly does not answer any of the queries regarding the derivationof “ESTINA”. As mentioned at [91] above, giving a European setting to the story
merely reinforces the association between the two competing marks.
[123] The graphs which supposedly illustrate the process of ultimately choosing
the name “J.ESTINA” also do not explain in any way how the word “ESTINA”
came into being. As the Respondent has conceded, “ESTINA” is an invented
word with no meaning. The failure to furnish the court with a credible explanationof how “ESTINA” in the brand name “J.ESTINA” was derived, where theexplanation is particularly pertinent since six out of seven letters are in identicalsequence in the two competing marks, can only lead to the irresistible conclusionthat the word “ESTINA” was blatantly copied from the Appellant by a “cut andpaste” job. The adding of “J” with a dot just before “ESTINA” makes little
difference to the final name as both words in the competing marks (including theAppellant’s other marks) would still look alike and sound remarkably similar- 20 -

whether “J.ESTINA” is pronounced “jay-estina” (with the “jay” sound likely tobe slurred) or “jes-tina”. Such outright copying of the Appellant’s mark is an act
that falls short of the acceptable commercial behaviour observed by reasonable
and experienced men in the relevant trade.
[Emphasis as underlined mine]
58 In the Festina case, the portion which was copied was a meaningless word
“ESTINA”. The Respondents in Festina had provided a brand story but Justice Tay(now Judge of Appeal Tay) was of the view that the Respondent’s brand story on thename “J.ESTINA” appeared extremely contrived and did not explain why themeaningless word “ESTINA” was chosen (Justice Tay opined “[t]he six letters in“ESTINA” are not even the initials of “Jovanna Elizabeth Antonia Romana Marie”).
Justice Tay was of the view that the failure to furnish the court with a credible
explanation of how “ESTINA” in the brand name “J.ESTINA” was derived (“ESTINA”
is an invented word with no meaning) where the explanation is particularly pertinent
since six out of seven letters are in identical sequence in the two competing marks, canonly lead to the irresistible conclusion that the word “ESTINA” was blatantly copiedfrom the Appellant by a “cut and paste” job. Such outright copying of the Appellant’s
mark was an act that falls short of the acceptable commercial behaviour observed byreasonable and experienced men in the relevant trade.
59 In the current case, the Applicants proffered no reasons at all, as to the choice ofthe characters “A&F” and the Applicants’ moose device, as well as their specificdepiction. I have already mentioned above that while the Opponents’ Earlier “A&F”
Mark and the Opponents’ Earlier Moose Device Mark are not invented per se, they areof no significance in relation to the goods claimed and are as such of a high degree oftechnical distinctiveness. The failure of the Applicants to provide any explanation atall, where an explanation is very pertinent since the Application Mark is simply a
combination of the Opponents’ Earlier “A&F” Mark and the Opponents’ Earlier Moose
Device Mark (there is no modification whatsoever) can only lead to the irresistible
conclusion that the Application Mark was slavishly copied from the Opponents by a“cut and paste” job.
60 Applying Festina, I can only conclude that such outright copying of the
Opponents’ Earlier Marks is an act that falls short of the acceptable commercial
behaviour observed by reasonable and experienced men in the relevant trade.
Where the trade mark applicant has “hijacked the trade mark - no intention to use themark
61 I refer to Law of Intellectual Property of Singapore at [21.4.12] where thelearned author gave some examples of where the trade mark applicant has “hijacked”
the mark:(i) The applicant has no bona fide intention to use the trade mark but
wishes to prevent a competitor from using the mark or one similar to it;- 21 -

(ii)The applicant has no present intention or fixed intention to use the markbut wishes to stockpile the mark for use at some indeterminate time infuture;(iii) The applicant becomes aware that someone plans to use the mark andfiles a pre-emptive application with a view to selling it.
At [21.4.13], the author referred to the case of PT Swakarya Indah Busana v Dhan
International Exim Pte Ltd [2010] 2 SLR 109 (“PT Swakarya”) as a variation of
scenario (a) above.
62 In this regard, I refer to the Festina case which also referred to PT Swakarya at[105]:[105] In the case of PT Swakarya Indah Busana v Dhan International Exim Pte
Ltd [2010] 2 SLR 109, Lai Siu Chiu J found that after registering the mark
“EMPEROR MARTIN” in 2002, the defendant did not intend to use the mark.
Instead, on the shirts sold by the defendant was the defendant’s tailored mark (asopposed to the registered mark) which showed the word “MARTIN” in a much
more prominent font than that of “Emperor”. Lai J found that there was an
obvious and conscious effort on the part of the defendant to copy the plaintiff’s
mark in the usage of the word “MARTIN”. The plaintiff had a total of six marks
registered in Singapore (all of which included the name “MARTIN”) and there
was a deliberate preference to use the defendant’s tailored mark instead of the
defendant’s registered mark. Thus, the lack of bona fide intention to use the markin the form that was applied to be registered was found to be an act of bad faith.
[Emphasis as underlined mine].
63

Further, the following is noted at [90] in the case of PT Swakarya:[90] It is noteworthy that Sanjay and/or Neeraj made no attempt to offer any
explanation at all as to why the defendant chose to use the word MARTIN in the
defendant’s mark. Sanjay’s explanation for adopting the word EMPEROR as aprefix was unbelievable in any case as the clear emphasis in the defendant’s
tailored mark was on the word MARTIN and not on the word EMPEROR.
Further, Sanjay did not elaborate on what he meant by marketing strategy in the
difference in font size used for the words EMPEROR and MARTIN nor why theword MARTIN was so obviously highlighted.
[Emphasis as underlined mine].

64 The Opponents argued, at paragraph 64 of their written submissions (albeit for the
ground of objection under Section 8(2)(b)) that there is “relatedness” between the
Opponents’ goods on the one hand and the Applicants’ goods on the other.

- 22 -

65 In this regard, although the Opponents do not themselves apply the Opponents’
Earlier Marks on glasses, the Opponents sought to tender evidence to show that it iscommon for clothing retailers to branch out into fashion accessories including glasses
and sunglasses. I refer to Exhibit 14 of the Opponents’ 1st Evidence. For example, atpages 1543 - 1544, it shows pictures of glasses of the brand “Armani Exchange”. It isnoted that either “Armani Exchange” (page 1543 – first row, left most column) or “AX”
(page 1544 – second row, left most column) is reflected on the frame of the glasses. On
pages 1549 - 1550, it shows pictures of glasses of the brand “Burberry”. Again it isnoted that “Burberry” (page 1549 – first row, right most column) is reflected on theframe of the glasses. Finally, at the oral hearing, the Opponents referred to pages 1568
– 1602; these pages show pictures of glasses of the brand “Prada”. In particular, theOpponents pointed out that “Prada” (page 1568 – second row, right column) wasreflected on the frame of the glasses as well as a thin film on the lenses. In this regard,
it is also noted that Festina decided that clothing and spectacles can be regarded assimilar (see below).
66 The Opponents also sought to highlight how the Applicants intend to apply the
Application Mark onto their products. The Opponents referred to the Applicants’
Evidence (Appendix A) where the Applicants sought to show that they have marketready products such that they are in a more advanced stage of commercialising theirproducts. Most of the glasses in the Appendix reflect the Applicants’ moose device
only on the frame and the Application Mark which consists of the device of the moose
and the words “A&F”, on the thin film on the lenses (see pages 2 – 6 of the Applicants’
Evidence).
67 In this regard, the Opponents at paragraph 75 of their written submissions(although this argument was made in the context of the objection under Section
8(2)(b)), sought to argue that the Application Mark is not always used as applied forsuch that the Applicants’ moose device only is applied onto the frames of the glasses.
As alluded to above, this moose device on the frame is virtually identical to the
Opponents’ Earlier Moose Device Mark. The fact that only the Applicants’ moose
device is applied onto the frames heightens the similarity between the marks (I also notethat the thin film will be removed when the glasses are used, thus leaving only the
Applicants’ moose device on the frames when the glasses are actually in use).
68 I note that there could be plausible reasons why only the Applicants’ moose
device is replicated on the frame. However, the issue is that the Applicants did notprovide any explanation as to why this is so.
69 Applying the case of PT Swakarya, the lack of bona fide intention to use the markin the form that was applied to be registered was found to be an act of bad faith (it isnoted that the thin film will be removed when the glasses are used, thus leaving only the
Applicants’ moose device on the frames when the glasses are actually in use).
Conclusion- 23 -

70 I am mindful of the warning in Royal Enfield above that an allegation of bad faithshould not be made unless it can be fully and properly pleaded and should not be upheld
unless it is distinctly proved and this will rarely be possible by a process of inference.
However, taking into account all of the above, I am convinced that in the present case, astrong inference of bad faith has been made out.
71 I come to this view having regard to the Applicants’ arguments in their written
submissions that:(i)the Opponents have no prior interest in Class 9 before theApplication Mark;(ii) the Applicants should not be penalised for their “first moveradvantage” for the Opponents’ “mistake and carelessness” by notregistering in Class 9;(iii) the Opponents are trying to take advantage of the Applicants’business idea to expand into Class 9.
72 The Applicants argued in their written submissions, that the Applicants “[h]aving
come up with an original business plan and taking the first initiative, it would now be aflaw in the system if the [O]pponents is allowed to take a second bite at the cherry justbecause they are a multi-million dollar company”. Taking into account the evidence
above in relation to the expansion of clothing retailers’ product line into sunglasses andglasses, I do not think that it is accurate to say that the Applicants could have given the
Opponents the business idea to expand into Class 9, nor could it be said that such an
idea is “original”.
73 Further, while I accept the possibility that the Opponents may have been carelessin terms of their overall expansion strategy, by not applying for Class 9 all these years
and that the Opponents may have been jolted into action to file a relevant application inClass 9 (overseas) upon realisation and awareness of the Application Mark (see page349 of Exhibit 7 of the Opponents’ 1st Evidence, which appears to be an English
translation of a registration in Switzerland where the application date was indicated as
21 August 2013), I also do not think that it would be accurate to say that the Applicants
are penalised for “first mover advantage”.
74 To begin with, the “first mover advantage” is not absolute. This is the reason thatthe opposition process is part and parcel of the registration procedure and that it is also
possible to initiate post-registration actions to challenge a registration. Whether or not
the Applicants are penalised for “first mover advantage” must be seen in the light of thesurrounding circumstances.
75 In the current case, taking all of the circumstances above into consideration,
namely:(i)(ii)

the possible knowledge by the Applicants of the Opponents;
the striking similarity of the marks;- 24 -

(iii) the expansion route of clothing retailers; and(iv) the evidence pertaining to how the Applicants intend to use theApplication Mark on the goods,
I am of the view that bad faith has been made out.
76

The ground of objection under section 7(6) succeeds.

Ground of Opposition under Section 8(2)(b)77 The relevant provisions of the Act are Section 2 and 8(2)(b), which provide as
follows:
2. —(1) In this Act, unless the context otherwise requires —“earlier trade mark” means —(a) a registered trade mark or an international trade mark (Singapore), the application
for registration of which was made earlier than the trade mark in question, taking
account (where appropriate) of the priorities claimed in respect of the trade marks; or(b) a trade mark which, at the date of application for registration of the trade mark inquestion or (where appropriate) of the priority claimed in respect of the application, wasa well known trade mark,and includes a trade mark in respect of which an application for registration has been
made and which, if registered, would be an earlier trade mark by virtue of paragraph (a)subject to its being so registered;“well known trade mark” means —(a) any registered trade mark that is well known in Singapore; or(b) any unregistered trade mark that is well known in Singapore and that belongs to aperson who —(i) is a national of a Convention country; or(ii) is domiciled in, or has a real and effective industrial or commercial establishment
in, a Convention country,
whether or not that person carries on business, or has any goodwill, in Singapore;
8. —(2) A trade mark shall not be registered if because…

- 25 -

(b) it is similar to an earlier trade mark and is to be registered for goods or services
identical with or similar to those for which the earlier trade mark is protected, there
exists a likelihood of confusion on the part of the public.
Decision on Section 8(2)(b)
Step-by-step approach
78 In the recent authoritative decision of Staywell Hospitality Group v Starwood
Hotels & Resorts Worldwide [2014] 1 SLR 911 (“Staywell”), the Court of Appeal reaffirmed the 3-step test approach in relation to an objection under section 8(2)(b), andalso rejected the argument that the threshold of marks similarity is a low one as follows
at [15] to [20]:[15]…Since this court’s decision in Polo (CA), our courts have given effect to thisstatutory wording by applying what is now known as the “step-by-step” approach,as opposed to the competing “global appreciation approach” applied in Europe
after Sabel BV v Puma AG, Rudolf Dassler Sport [1998] RPC 199 (“Sabel v
Puma”). Under the step-by-step approach, the three requirements of similarity ofmarks, similarity of goods or services, and likelihood of confusion arising fromthe two similarities, are assessed systematically. The first two elements areassessed individually before the final element which is assessed in the round…
[16] However we do not agree with the Opponents’ approach to the extent that itsuggests that any particularly or notably low threshold of marks-similarity
applies…
[17] More fundamentally, the minimal threshold approach is inconsistent with thereality that the similarity of marks is ultimately and inevitably a matter ofimpression rather than one that can be resolved as a quantitative or mechanistic
exercise (see Polo (CA) at [35] and Wagamama Ltd v City Centre Restaurants Plc[1995] FSR 713 at 732)…The court must ultimately conclude whether the marks,
when observed in their totality, are similar rather than dissimilar. The three
aspects of similarity are meant to guide the court’s inquiry but it is not helpful toconvert this into a checkbox exercise in which a tick, however faint it might be, in
any one box must compel the court to find that the marks are similar when asensible appraisal of the marks as a whole would show otherwise.
[18] We observed this in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd[2013] SGCA 26 (“Hai Tong”) at [40(a)]. Congruously, there is no prescribed
requirement that all three aspects of similarity must be made out before the marks
can be found to be similar: MediaCorp News Pte Ltd v Astro All Asia Networks
plc [2009] 4 SLR(R) 496 (“MediaCorp”) at [32] and Sarika Connoisseur Café Pte
Ltd v Ferrero SpA [2013] 1 SLR 531 (“Sarika”) at [16]. In short, the criteria ofvisual, aural and conceptual similarities do not invite a formulaic consideration;rather, they are signposts towards answering the question of whether the marks- 26 -

are similar. Trade-offs can occur between the three aspects of similarity in themarks-similarity inquiry: Ozone Community Corp v Advance Magazine
Publishers Inc [2010] 2 SLR 459 (“Ozone”), see also Bently and Sherman,
Intellectual Property Law (Oxford University Press, 3rd Ed, 2009) ("Bently &Sherman") at p 864.
[19]…A productive and appropriate application of the step-by-step approachnecessitates that the court reach a meaningful conclusion at each stage of theinquiry…
[20] Finally, on this issue, we reiterate that the assessment of marks similarity ismark-for-mark without consideration of any external matter: see Mediacorp at[33], Sarika at [17] and Hai Tong at [40(b)]. This means that at the marks
similarity stage this even extends to not considering the relative weight andimportance of each aspect of similarity having regard to the goods. This does notmean that the court ignores the reality that the relative importance of each aspectof similarity might vary from case to case and will in fact depend on all thecircumstances including the nature of the goods and the types of marks, as we
observed at [40(b)] of Hai Tong. Rather, such considerations are properly
reserved for the confusion stage of the inquiry, because that is when the court iscalled upon to assess the effect of objective similarity between the marks, on theperception of consumers. We recognise that this reflects a slight departure fromthe approach taken by the High Court in Festina Lotus SA v Romanson Co Ltd[2010] 4 SLR 552 at [55]–[56], and by this court in Sarika at [38]. We think that
this is conceptually clearer because it recognises that the issue of resemblance
between the competing marks is distinct from the question of the effect of suchresemblance…
[Emphasis as underlined mine.]
Similarity of Marks
79 In relation to similarity of marks, the Court in Staywell has this to say at [25],[26] and [30]:[25] Technical distinctiveness is an integral factor in the marks-similarity inquiry(see Sarika at [20], Ozone Community at [47] and Polo (CA) at [36]); a markwhich has greater technical distinctiveness enjoys a high threshold before acompeting sign will be considered dissimilar to it (Sarika at [36]). While thecomponents of a mark may be inherently technically distinctive, ultimately theability of the mark to function as a strong badge of origin must be assessed bylooking at the mark as a whole. Conversely, the components of a mark may not be
inherently distinctive, but the sum of its parts may have sufficient technicaldistinctiveness…

- 27 -

[26] When speaking of the assessment of a mark as a whole, it may be noted thatthe cases have consistently stated that the “visual, aural or conceptual similarity ofthe marks in question, must be based on the overall impression given by themarks, bearing in mind, in particular, their distinctive and dominant components”(Sabel v Puma at 224, Matratzen Concord GmBH v OHIM, Case T-6/01 [2002]
ECR II-4335 (“Matratzen”), Doctor's Associates Inc v Lim Eng Wah (trading as
SUBWAY NICHE) [2012] 3 SLR 193 (“Subway Niche”) at [19] and Bently &Sherman at p 864).
…
[30] We reiterate, as was held in Sarika (at [20]) and in Hai Tong (at [26]), that
distinctiveness (in both its technical and non-technical senses) is a factor
integrated into the visual, aural and conceptual analysis as to whether thecompeting marks are similar. It is not a separate step within the marks-similarity
inquiry.
[Emphasis as underlined mine.]
80 Further, the Court provided the following principles in Hai Tong Co (Pte) Ltd v
Ventree Singapore Pte Ltd and another and another appeal [2013] SGCA 26 at [40]("Hai Tong"):[40] (c) Although the focus of this part of the inquiry is on the marks in question,
it is necessary to set out the viewpoint the court should assume. This viewpoint isthat of the average consumer who would exercise some care and a measure ofgood sense in making his or her purchases, not that of an unthinking person in ahurry (see Polo (CA) ([16] supra) at [34]).
(d) Furthermore, it is assumed that the average consumer has “imperfectrecollection” (see MediaCorp at [33], citing Nautical Concept Pte Ltd v JefferyMark Richard [2007] 1 SLR(R) 1071 (“Nautical Concept”) at [30]). As such, thetwo contesting marks are not to be compared or assessed side by side andexamined in detail for the sake of isolating particular points of difference. Instead,the court will consider the general impression that will likely be left by the
essential or dominant features of the marks on the average consumer (see Saville
Perfumery Ld v June Perfect Ld and FWWoolworth & Co Ld (1941) 58 RPC 147(“June Perfect”) at 161–162).
[Emphasis as underlined mine].
81

S/N

For ease of comparison, the marks are as follows:

Application MarkTABLE 1
Opponents’ Earlier “A&F” Mark- 28 -

1.

2.

Opponents’ Earlier Moose Device MarkAs a preliminary point, it has been verified in Rovio Entertainment Ltd v Kimanis Food
Industries Sdn Bhd [2014] SGIPOS 10 (“Rovio 1”) at [49] that the above approach(Table 1) and not the approach below (Table 2), is the correct approach for an analysis of
the marks.

S/N

Application MarkTABLE 2
Opponents’ Earlier “A&F” Mark

Opponents’ Earlier Moose Device Mark

It is clear that the method for comparison is mark-for-mark or to put it another way, it is[a] mark-for-[a] mark.
82

With the above approach in mind, I will proceed to analyse the marks.

Distinctiveness
83 I am mindful of the Court’s guidance in Staywell (discussed above) that
distinctiveness is a factor integrated into the visual, aural and conceptual analysis as towhether the competing marks are similar and it is not a separate step within the markssimilarity inquiry. However, for ease of analysis, I will summarise my findings first,
before applying them within the context of the mark-similarity analysis. In this regard,
I note that Hai Tong at [26] provided as follows:[26] Distinctiveness is considered within the assessment of similarity, as noted bythis court in Sarika. However, for the purpose of elucidating the analytical process,we have highlighted it here as a separate step…
[Emphasis as underlined mine].
- 29 -

Opponents’ Earlier “A&F” Mark84 The Opponents submitted at paragraph 29 of their written submissions that the
Opponents’ Earlier “A&F” Mark is invented and has no meaning at all in relation to thegoods and services claimed thereunder such that the Opponents’ Earlier “A&F” Markhas a high degree of technical distinctiveness.
85 Further, the Opponents argued, at paragraph 30 of their written submissions, thatthe extensive use of the Opponents’ Earlier “A&F” Mark in Singapore has enhanced
their distinctiveness.
86 As mentioned above, the Opponents have deposed, at paragraph 7 of the
Opponents’ 1st Evidence that “A & F” is an acronym of the Abercrombie & Fitch brand.
At paragraph 15(i) of the Opponents’ 1st Evidence, it was deposed (albeit in the context
of explaining the derivation for the Moose Device) that David Abercrombie and Ezra
Fitch were the founders of the Opponents. In this regard, “A&F” is not invented, forexample, like “NUTELLA”. However, I agree that the Opponents’ Earlier “A&F”
Mark has no meaning at all in relation to the goods and services claimed thereunder(aside from that described above) and thus I agree that the Opponents’ Earlier “A&F”
Mark possesses a high level of technical distinctiveness.
87 In relation to the use of the Opponents’ Earlier “A&F” Mark in Singapore, I havereferred to the same above. One point to note about the figures above is that they
pertain to sales and promotion of the Opponents’ whole host of goods in relation to awhole range of brands owned by the Opponents, including the Opponents’ Earlier
Marks (see paragraphs 26 of the Opponents’ 1st Evidence, which referred tophotographs of goods bearing the Opponents’ Earlier Marks, reflected at Exhibit 10 of
the Opponents’ 1st Evidence as well as paragraph 27 of the Opponents’ 1st Evidence,
which referred to sample promotional emails sent to customers, including those in
Singapore, reflected at Exhibit 11 of the Opponents’ 1st Evidence). Therefore, theextent of the figures which can be apportioned to the Opponents’ Earlier Marks canonly be an approximate.
88 So for example, in terms of photographs of goods bearing the Opponents’ marks,
pages 578 and 584 of Exhibit 10 show use of the Opponents’ Earlier “A&F” Mark
while page 589 shows use of the Opponents’ Earlier Moose Device Mark. On the other
hand, page 591 shows “A & Fitch” and Opponents’ Earlier Moose Device Mark below.
89 In relation to promotional emails as attached to Exhibit 11, pages 1190 and 1315
show use of Opponents’ Earlier “A&F” Mark. On the other hand, pages 718 and 724
show the Opponents’ Earlier Moose Device Mark. Further, pages 627 and 632 of thesame show “abercrombie” while page 626 shows “Abercrombie & Fitch”. Finally, on
pages 601 and 604, there are depictions of the Opponents’ Earlier Moose Device Markas well as “Abercrombie & Fitch”.

- 30 -

90 In relation to the above issue, reference is made to HMG Circular No. 3/2015. In
particular, I refer to Part C and D of the said Circular as follows:
C. Evidence of Sales
Statements of account; or figures given in the main body of SDs as supported bysample invoices in the exhibits, are generally acceptable. However, the weight tobe given to such evidence will vary depending on the relevance of the documents.
For example, where the sample invoices do not reflect the subject mark in relation
to the specification in question, the weight to be given to such invoices, if any, islow. This in turn affects the weight of the assertions on annual sales volume
which is purportedly supported by the invoices.
D. Evidence of Advertising Expenditure
Advertising expenditure figures given in the main body of SDs as supported bysample invoices in the exhibits are generally acceptable. However, as with C.
above, the weight to be given to such evidence will vary depending on therelevance of the documents. For example, where there is no demonstrable link
between the sample invoices, the advertisements themselves and the subject markin relation to the specification in question, the weight to be given to such invoices,
if any, is low. This in turn affects the weight of the assertions on the amount ofadvertising expenditure which is purportedly supported by evidence over theyears.
In light of the above, while I would give some weight as to the above evidence, suchweight as accorded will not be as high.
91 The above is so taking into consideration that the totality of the sales andpromotional figures tendered in Singapore was / is rather substantial. In particular, withregard to the annual store sales in Singapore for the period 2011- 2013 (above), it isnoted that the average annual sales figures in Singapore for that 3-year period is SGD
20,755,469.56 (this figure excludes sales from the Opponents’ website).
92 For completeness, in addition to Exhibits 10 and 11 of the Opponents’ 1st
Evidence dealt with above, I also refer to paragraph 23 of the Opponents’ 1st Evidence
which referred to random samples of shipping confirmations as provided at Exhibit 8 of
the Opponents’ 1st Evidence. The Opponents also deposed, at paragraph 8 of the
Opponents’ 1st Evidence, that as the Opponents only began to retain the shipping
confirmation emails relating to their online sales from 2009 onwards, no shipping
confirmation emails relating to sales in 2002 are available.
93 For example, at page 388 of Exhibit 8, the first item “Reid”, reflects the
Opponents’ Earlier “A&F” Mark, while the third (“Payton”), fourth and fifth (both“Christine”) items reflect the Opponents’ Earlier Moose Device Mark.

- 31 -

94 On the other hand, at page 397 of Exhibit 8, the third item shows a T-shirt“Bradley Pond” which reflects simply “Abercrombie” on the front of the shirt. On page403 of the same Exhibit, the second item shows a sweater, “Little Moose Mountain”
reflects “ANF” on the front of the sweater. Last but not least, on page 405 of the same
Exhibit, the last item shows a T-shirt “Cellar Mountain” which reflects “Abercrombie
and Fitch” on the front of the shirt
95 As mentioned above, one point to note is that the figures do not simply reflect the
Opponents’ Earlier “A&F” Mark, but they reflect as well other marks of the Opponents
in relation to a whole hosts of goods, including those claimed under the relevant marksin the current case. Therefore, in trying to come to a conclusion as to the extent of defacto distinctiveness of the Opponents’ Earlier “A&F” Mark, the figures as provided
above cannot be taken literally.
96 Most importantly, I am of the view that, regardless of the extent to which thefigures above can be attributed to the Opponents’ Earlier “A&F” Mark and as such theweight to be accorded to the same to establish de facto distinctiveness, the Opponents’
Earlier “A&F” Mark, in itself is inherently distinctive and enjoys a high level oftechnical distinctiveness as it is meaningless in relation to the goods and services
claimed.
Opponents’ Earlier Moose Device Mark97 In relation to the Opponents’ Earlier Moose Device Mark, the Opponents also
argued, at paragraph 32 of their written submissions, that it is invented and has no
meaning or significance in relation to the goods and services claimed thereunder suchthat it also has a high degree of technical distinctiveness. Again I do not think that the
Opponents’ Earlier Moose Device Mark can be said to be invented, since it is simply adevice of a common animal. However, I do agree that it has no significance in relation
to the goods and services claimed.
98 Similarly, the Opponents also argued that the extensive use of the Opponents’
Earlier Moose Device Mark has enhanced its distinctiveness (paragraph 33 of the
Opponents’ written submissions). In relation to this argument, the same comments
apply. That is, in trying to come to a conclusion as to the extent of de facto
distinctiveness of the Opponents’ Earlier Moose Device Mark, the figures as provided
above cannot be taken literally.
99 However, having said the above, as is the case for the Opponents’ Earlier “A&F”
Mark, I am of the view that, regardless of the extent to which the figures above can be
attributed to the Opponents’ Earlier Moose Device Mark and as such the weight to beaccorded to the same to establish de facto distinctiveness, the Opponents’ Earlier Moose
Device Mark, in itself is inherently distinctive and enjoys a high level of technicaldistinctiveness as it is meaningless in relation to the goods and services claimed.
100 With the above in mind, I will proceed to analyse the marks.

- 32 -

Visual Similarity
101 For ease of comparison, I reproduce the marks again as follows:

S/N
1.

Application MarkTABLE 1
Opponents’ Earlier “A&F” Mark

Opponents’ Earlier Moose Device Mark2.

102 As a starting point, I note that the Application Mark is a composite mark while theOpponents’ Earlier “A&F” Mark is a word only mark while the Opponents’ Earlier
Moose Device Mark consists only of a device.
103 The Opponents, at paragraph 36 of their written submissions, referred to the caseof Hai Tong at [62]:[62]…We consider that the following non exhaustive list of principles may becalled in aid when assessing the visual similarity of composite marks:(a) As we have noted above at [40(c)] and [40(d)], when assessing twocontesting marks or signs, the court does so with the “imperfectrecollection” of the average consumer (see MediaCorp ([40] supra) at [33],citing Nautical Concept ([40] supra) at [30]). The two marks or signs
should not be compared side by side or examined in detail because “theperson who is confused often makes comparison from memory removed intime and space from the marks” (see MediaCorp at [33], citing Caterpillar([40] supra) at [55]).
(b) The visual similarity of two contesting marks or signs must normallybe assessed by reference to the overall impressions created by the marks orsigns, bearing in mind their distinctive and dominant components. Whenthe other components of a complex mark or sign are of negligible
significance, it is permissible to make the comparison solely on the basisof any dominant element(s).

- 33 -

(c) The overall impression conveyed to the public by a composite trade
mark may, in certain circumstances, be dominated by one or more of its
components (see Specsavers ([54] supra) at [52(e)]).
(d) The textual component of a composite mark or sign could (but will notnecessarily or always) be the dominant component of the mark or sign.
Some instances where this might be the case include where:(i) The two marks or signs in question each contain a similar
device. The overall resemblance between them may then be
diminished if they bear words which are entirely different fromeach other (see Lee Cooper at 501).
(ii) The textual component is large, and is in a prominent locationin relation to the other components or stands out from thebackground of the mark or sign (see the decision of the CFI in
Shaker di L Laudato & C Sas v Office for Harmonisation in theInternal Market (Trade Marks and Designs) (Case T-7/04) [2009]
ETMR 16 (“Shaker (CFI)”) at [41]–[43]).
(iii) The textual component is in itself already widely known (seeFestina ([52] supra) at [33], Medion at [34] and Crazy Ron’s at[99]).
(iv) The composite mark or sign is applied to goods or services
marketed or sold primarily through online trade channels (seeFestina at [55] and Intuition Publishing ([30] supra) at [64]–[65]).
(e) The device component has been found to be an equally significant, if not thedominant, component of a composite mark or sign where:(i) the device is significant and large (see, eg, the decision of the European
General Court in New Yorker SHK Jeans GmbH & Co KG v Office for
Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)(Case T-415/09) (29 September 2011));(ii) the accompanying word(s) are devoid of any distinctive character, or
are purely descriptive of the device component (see Quelle AG ([58] supra)
at [60]; see also Sime Darby ([37] supra) at [18] and [20]–[21]) or ofsimilar goods of a superior quality (see the decision of the CFI in Saiwa
SpA v Office for Harmonisation in the Internal Market (Trade Marks andDesigns) (OHIM) (Case T-344/03) [2006] ECR II-1097 at [41] and [45]);or(iii) the device component is of a complicated nature (see, eg, Waseem
Ghias t/as Griller v Mohammed Ikram t/as The Griller Original, Esmail- 34 -

Adia t/as Griller King, Shahzad Ahmad t/as Griller Hut, Griller Original
Limited, Griller Hut Limited [2012] EWPCC 3).
But usually not where:(iv) the device is simple and will not evoke any particular concept for the average
consumer (see, eg, the decision of the European General Court in KavaklidereEurope v Office for Harmonisation in the Internal Market (Trade Marks andDesigns) (OHIM) and Yakult Honsha Kabushiki Kaisha (Case T-276/09) [2012]
ETMR 45);(v) the device component does not attract the attention of the average consumer ofthe goods in question because such a consumer is regularly confronted withsimilar images in relation to those goods (see Shaker (CFI) at [42]); or(vi) the device component is more likely to be perceived as a decorative element
rather than as an element indicating commercial origin (see Trubion ([56] supra)
at [45] and Oberhauser ([56] supra) at [47]; see also Wassen ([56] supra)).
[Emphasis as underlined mine]
104 I note that the above guidelines are generally applicable to composite marks whilein this case, the Opponents’ Earlier “A&F” Mark is a word only mark while Opponents’
Earlier Moose Device Mark is a device only mark. However, the above is still useful asa general guide.
105 The Application Mark has taken up the whole of the Opponents’ Earlier “A&F”
Mark. The characters “A&F” take up about a third of the Application Mark. As
referred to earlier, the Opponents’ Earlier “A&F” Mark, in itself is inherently distinctive
and enjoys a high degree of technical distinctiveness as it is meaningless in relation to
the goods and services claimed. .
106 The Opponents also argued, at paragraph 39 of their written submissions,applying the principle in Staywell at [25] (replicated above), that “a mark which has
greater technical distinctiveness enjoys a high threshold before a competing sign will beconsidered dissimilar to it”. In light of this, I am of the view that the marks are visuallysimilar to some extent despite that fact that the words “A&F” only take up about a thirdof the Application Mark.
107 Similarly, the Application Mark has taken up the whole of the Opponents’ Earlier
Moose Device Mark. The moose device takes up about two thirds of the Application
Mark. As referred to earlier, the Opponents’ Earlier Moose Device Mark in itself isinherently distinctive and enjoys a high degree of technical distinctiveness as it ismeaningless in relation to the goods and services claimed.

- 35 -

108 Similarly, applying the principle in Staywell at [25], that “a mark which has
greater technical distinctiveness enjoys a high threshold before a competing sign will beconsidered dissimilar to it”, I am of the view that the marks are visually similar.
Aural Similarity
109 With regard to aural similarity, the Court in Staywell stated at [31] and [32] that
there are two approaches in this regard. One approach is to consider the dominantcomponent of the mark and the other is to undertake a quantitative assessment as towhether the competing marks have more syllables in common than not (see also the
Opponents’ written submission at paragraph 45).
110 In relation to the Opponents’ Earlier “A&F” Mark, the Opponents submitted, atparagraphs 46 and 47 of their written submissions that the sole aural element of both
marks is the word “A&F” such that applying, in particular, the dominant component
approach assessment, both marks are aurally identical. Alternatively, applying thequantitative approach, it is clear that the marks have more syllables in common – infact, the syllables are identical.
111 I am more inclined to accept the quantitative approach and in that regard, I agreewith the Opponents that the marks, that is, the Application Mark and the Opponents’
Earlier “A&F” Mark are aurally identical.
112 In relation to the Opponents’ Earlier Moose Device Mark, as submitted by the
Opponents at paragraph 49 of their written submissions, it has no verbal element (since
it is a device only mark). The Opponents thus concluded in the same paragraph of theirwritten submissions that an aural comparison merely results in a neutral conclusion
rather than that the marks are aurally dissimilar. I agree. This is also the approachtaken in Rovio 1 at [60].
Conceptual Similarity
113

The Court in Staywell expounded at [35] as follows:[35] …Unlike the aural analysis, which involves the utterance of the syllables
without exploring the composite meaning embodied by the words, the conceptual
analysis seeks to uncover the ideas that lie behind and inform the understandingof the mark as a whole (Bently & Sherman at p 866). Greater care is therefore
needed in considering what the conceptually dominant component of a composite
mark is, because the idea connoted by each component might be very different
from the sum of its parts…
[Emphasis as underlined mine]- 36 -

114 In relation to the Opponents’ Earlier “A&F” Mark, the Opponents argued, atparagraph 52 of their written submissions that both marks convey the idea of a pair of
initials, such that they are conceptually similar.
115 It has been referred to above that for the Opponents’ Earlier “A&F” Mark, it is anacronym of the surnames of the founders of the Opponents, David Abercrombie andEzra Fitch.
116 In relation to the Application Mark, it is noted that the Application Mark also
contains a moose device, which takes up about two thirds of the Application Mark, in
addition to the initials “A&F”. Further, as alluded to in the preliminary comments
above, there is no information provided, as to the genesis of the Application Mark, inparticular, as to what “A&F” stands for.
117 In light of the above, having regard to the Court’s guidance above, I can only
conclude that there is a low level of conceptual similarity between the Opponents’
Earlier “A&F” Mark and the Application Mark, due to the presence of the common
denominator, “A&F” in both marks.
118 With regard to Opponents’ Earlier Moose Device Mark, the Opponents argued atparagraph 53 of their written submissions the marks are conceptually similar as theyboth convey the idea of a moose.
119 While the moose device is the common denominator for both marks, I am mindfulthat for the Application Mark, there are also the characters “A&F” (which take up abouta third of the Application Mark) and the fact that there has been no explanation
proffered as to what the characters stand for.
120 In light of the above, and again, having regard to the Court’s guidance, I can only
conclude that there is some conceptual similarity between the Opponents’ Earlier
Moose Device Mark and the Application Mark, due to the presence of the common
denominator, the moose device, in both marks.
Conclusion on the similarity of marks
121 It is to be recalled following Staywell at [17] and [18] above that:[17] … The court must ultimately conclude whether the marks, when observed intheir totality, are similar rather than dissimilar…
[18] … Trade-offs can occur between the three aspects of similarity in the markssimilarity inquiry…
[Emphasis as underlined mine]- 37 -

122 Further, the average consumer has an “imperfect recollection” and there is a needto consider the general impression that will likely be left by the essential or dominantfeatures of the marks. However, it is also important to remember that the average
consumer is one who would exercise some care and a measure of good sense in making
his or her purchases, not that of an unthinking person in a hurry.
123 In light of the analysis above, I am of the view that the Opponents’ Earlier “A&F”
Mark and the Application Mark are visually similar to some extent, aurally similar andconceptually similar to a low extent such that the marks are more similar than dissimilar
in totality.
124 By the same token, in relation to the Opponents’ Earlier Moose Device Mark and
the Application Mark, in light of the analysis above, I am of the view that they are
visually similar, aurally neutral and conceptually similar to some extent such that themarks are more similar than dissimilar in totality.
Similarity of Goods / Services
125 In relation to this limb, the Court in Staywell provided the following principles at[43]:[43]…the real question is whether Staywell’s services that were sought to beregistered under Class 35 are similar to the Opponents’ services under Class 43,
having regard to all relevant factors relating to the services themselves. Some of
the factors set out in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC
281 (“British Sugar”) at 296 would be relevant at the goods-similarity stage of theinquiry, in particular the consideration of the uses and the end-users of theservices. The question is how the services are regarded, as a practical matter, forthe purposes of trade…
126 The factors set out in British Sugar Plc v James Robertson & Sons Ltd [1996]
RPC 281 are as follows:(a) the respective uses of the respective goods or services;(b) the respective users of the respective goods or services;(c) the physical nature of the goods or acts of service;(d) the respective trade channels through which the goods or services reach themarket;(e) in the case of self-serve consumer items, whether in practice they are
respectively found or likely to be found in supermarkets and in particularwhether they are, or are likely to be, found on the same or different shelves;(f) the extent to which the respective goods or services are competitive.
127 For ease of reference, the relevant goods / services are as follows:
S/N

Opponents’ Earlier “A&F” Marks- 38 -

Application Mark

1

2

T1117126D

T0002872DClass 14
Precious metals and their
alloys and goods in precious
metals or coated therewith, notincluded in other classes;
jewelry,
preciousstones;timepieces and chronometric
instruments.
Class 18
Leather and imitations ofleather, and goods made ofthese materials and notincluded in other classes;
animal skins; trunks andtraveling bags; umbrellas,parasols and walking sticks;
whips, harness and saddlery.
Class 03
Personal
care
products,
namely, nail polish, nail polishremover, nail stencils, hard
artificial nails, shower gel,bubble bath, fragrant bodysplash, hand lotion, body
lotion, face lotion, hand soap,
body soap, face soap, hairshampoo, hair conditioner, hairstyling gel, hair spray, hairdyes, hair rinses, perfume,
cologne, body glitter, mascara,
blush, eye shadow, lip stick, lip
gloss,
make-up,make-upremover,
eyecream,
handcream, body cream, facecream, astringent for the face,
face cleanser, bath oil, bathbeads, body powder, facepowder, liquid talcum powder,
non-medicated blemish stick,shaving cream, deodorant,
potpourri, air freshening room
spray, incense, sachets, scented
beads,
body
and
face
suntanning lotion, body andface sunless tanning lotion,- 39 -Class 9Anti-dazzle spectacles; bars forspectacles; bows adapted forspectacle frames; carrying cases
adapted for spectacles; cases
adapted for spectacles; chainsforspectacles;
computerprograms for use in fitting
spectacles;
containersfor
spectacles; cords for spectacles;
devicesforsupporting
spectacles; devices in the natureof spectacles for displaying
televised images; devices in thenature of spectacles for viewing
recorded video images; devices
in the nature of spectacles forviewing
televised
images;finished lenses for spectacles;
fitted cases for spectacles;
frames for spectacles; lenses forspectacles;
lorgnettes(spectacles); optical lenses foruse with spectacles; optical
spectacles; protective glasses(spectacles);protective
spectacles; safety spectacles;
spectacle
cases;
spectacle
chains;spectacle
frames;spectacle frames having elastic
hinges;spectacle
holders;
spectacle
lenses;spectacle
mountings; spectacle support
bands, chains, cords, and straps;
spectacles; spectacles (optics);
spectacles for sports; spectacles
used in information science;
sport
glasses(protective
spectacles);sport
glasses(spectacles); sports glasses(spectacles);strapsfor
spectacles; sun spectacles.

body and face pre-suntanning
lotion and body and face after
suntanning
lotioninInternational Class 3.
3

T0002873B

4

T0002874J

5

T0202014C

6

T0721760C

Class 25
Clothing, footwear, headgear.
Class 35
Retail store services in relation
to clothing and personal careproducts; all in Class 35.
Class 35
The bringing together, for the
benefit of others of a variety ofgoods, enabling customers toconvenientlyview
andpurchase those goods from ageneral merchandise catalogue
by mail order.
Class 25
Clothing, footwear, headgear;
clothing, namely, bathrobes,
beach cover-ups, beachwear,
belts, blazers, blouses, body
shapers [foundation garments],
body suits, boxer shorts, bras,bustiers, camisoles, caps, coats,
dresses, footwear, foundation
garments, garter belts, girdles,
gloves, gowns, halter tops,hats,
headbands,
hosiery,
jackets, jeans, jogging suits,knee high stockings, knit shirts,
knit tops, leotards, lingerie,loungewear, mittens, negligees,night gowns, night shirts,
pyjamas,panties,pants,
pantyhose, sarongs, scarves,
shirts, shorts, skirts, slacks,
sleepwear, slips, socks,
stockings, suits, sweat pants,
sweat shirts, sweat shorts,
sweat suits, sweaters, swim
wear, t-shirts, tank tops, tap
pants, teddies, ties, tights,
underpants,
undershirts,- 40 -

underwear and vests.
7
T1111521F
Class 35
Advertising;businessmanagement;
business
administration;
officefunctions; retail store services
connected
withclothing,
footwear, headgear, soaps,
perfumes,essentialoils,
cosmetics,
hair
lotions,
jewellery and bags; online
retail store services connectedwithclothing,
footwear,headgear, soaps, perfumes,
essential oils, cosmetics, hairlotions, jewellery and bags.
Opponents’ Earlier Moose Device Marks
8
T1314410HClass 24
Textiles and textile goods notincluded in other classes; bed
and table covers.
9
T0721747F
Class 03
Bleaching preparations andother substances for laundryuse;cleaning,
polishing,scouring
andabrasive
preparations; soaps; perfumery,essential oils, cosmetics, hairlotions; dentifrices; personalcare products, namely, nailpolish, nail polish remover,nail stencils, hard artificial
nails, shower gel, bubble bath,fragrant body splash, handlotion, hand soap,
body soap, face soap, hairshampoo, hair conditioner, hairstyling gel, hair spray, hairdyes, hair rinses, perfume,
cologne, aftershave lotion,
aftershave balm, toilet water,
talcum powder, face lotion,body lotion, hair lotion, bathoil, scented sachets, shaving
soap, shaving cream, bodyshampoo,bodyglitter,- 41 -

Application MarkClass 9Anti-dazzle spectacles; bars forspectacles; bows adapted forspectacle frames; carrying cases
adapted for spectacles; cases
adapted for spectacles; chainsforspectacles;
computerprograms for use in fitting
spectacles;
containersfor
spectacles; cords for spectacles;
devicesforsupporting
spectacles; devices in the natureof spectacles for displaying
televised images; devices in thenature of spectacles for viewing
recorded video images; devices
in the nature of spectacles forviewing
televised
images;finished lenses for spectacles;
fitted cases for spectacles;
frames for spectacles; lenses forspectacles;
lorgnettes(spectacles); optical lenses foruse with spectacles; optical
spectacles; protective glasses(spectacles);protective
spectacles; safety spectacles;
spectacle
cases;
spectacle
chains;spectacle
frames;mascara, blush, eye shadow,
lip stick, lip gloss, make-up,
make-up remover, eyecream,
hand cream, body cream, facecream, astringent for the face,
face cleanser, bath beads, body
powder, face powder,nonmedicatedblemishstick,
deodorant,
potpourri,
airfresheningroom
spray,
incense, scented beads, bodyand face suntanning lotion,body and face sunless tanning
lotion, body and face presuntanning lotion and body andface after suntanning lotion.
Class 14
Precious metals and their
alloys and goods in precious
metals or coated therewith, notincluded in other classes;
jewellery, precious stones;
horological and chronometric
instruments; jewelry, namely,
necklaces and bracelets.
Class 18
Leather and imitations ofleather, and goods made ofthese materials and notincluded in other classes;
animal skins, hides; trunks andtravelling bags; umbrellas,parasols and walking sticks;
whips, harness and saddlery;backpacks, duffel bags, gym
bags, handbags, tote bags,
travel bags, purses, wallets,
luggage, key cases, credit card
cases, brief cases, cases fortoiletries and umbrellas.
Class 25
Clothing, footwear, headgear;
clothing, namely, bathrobes,
beach cover-ups, beachwear,
belts, blazers, blouses, body
shapers [foundation garments],- 42 -

spectacle frames having elastic
hinges;spectacle
holders;
spectacle
lenses;spectacle
mountings; spectacle support
bands, chains, cords, and straps;
spectacles; spectacles (optics);
spectacles for sports; spectacles
used in information science;
sport
glasses(protective
spectacles);sport
glasses(spectacles); sports glasses(spectacles);strapsfor
spectacles; sun spectacles.

body suits, boxer shorts, bras,bustiers, camisoles, caps, coats,
dresses, footwear, foundation
garments, garter belts, girdles,
gloves, gowns, halter tops,hats,
headbands,
hosiery,
jackets, jeans, jogging suits,knee high stockings, knit shirts,
knit tops, leotards, lingerie,loungewear, mittens, negligees,night gowns, night shirts,
pyjamas,panties,pants,
pantyhose, sarongs, scarves,
shirts, shorts, skirts, slacks,
sleepwear,
slips,
socks,
stockings, suits, sweat pants,
sweat shirts, sweat shorts,
sweat suits, sweaters, swim
wear, t-shirts, tank tops, tap
pants, teddies, ties, tights,
underpants,
undershirts,
underwear and vests.
Class 35
Retail store services in relation
toclothing,
footwear,headgear, bags, accessories andpersonal care products.
128 The Opponents sought to rely specifically on the case of Festina (paragraph 58 of
the Opponents’ written submissions). The Opponents submitted, that in Festina, thegoods in comparison were as follows (see Festina at [64]):
Relevant goods claimed underapplication markClass 14…necklaces; rings; bracelets;
earrings; medals; brooches

Relevant goods under Appellant’s
registrations
Class 9Spectacles
Class 18
Leather and imitation leather; goods made ofthese materials and not included in other classes;
animal skins and hides; trunks and suitcases;
umbrellas; parasols…
Class 25
Clothing and footwear

129 The Opponents further referred to paragraphs [71] and [72] in Festina:- 43 -

[71]…there is a growing phenomenon of brands expanding into goods of various
kinds in recent years. Sometimes, the crossing-over takes place between goods
that one does not commonly associate with each other, for instance, cigarettes andclothing. The idea of licensing out one's trade mark or engaging in a sister brandor diffusion line has inevitably led to the same trade mark being found on amultitude of goods available in the market. In this regard, there is force in theAppellant's submissions that there is a sense of "relatedness" between goods
such as necklaces and clothing and a broad classification of these items as"fashion accessories" or "lifestyle goods" may be justified.
[72] Applying the British Sugar ([66] supra) test to the present facts, it would bereasonable in the modern context to regard the goods in Classes 9, 14, 18 (trunks
and suitcases and, in some instances, even umbrellas and parasols) and 25 ascomplementary in nature and are likely to be of similar uses, targetingalmost identical end users and employing similar if not identical tradechannels by which the goods reach the market. Thus, there is some similarity
between "necklaces, rings, bracelets, earrings, medals and brooches" in the
Respondent's application and the goods for which the Appellant's other marks areregistered in Classes 9, 18 (the items specified above) and 25.
[Emphasis in bold the Opponents’ and emphasis as underlined mine]
130 The High Court concluded as follows in at Festina [75]:[75] To summarise the findings thus far:...
(c) There is similarity between “necklaces, rings, bracelets, earrings, medals andbrooches” in the Respondent’s application and the Appellant’s goods in Classes 9,
18 (trunks and suitcases and, in some instances, even umbrellas and parasols) and25.
[Emphasis as underlined mine]
131 The Opponents submitted, at paragraph 63 of their written submissions, that theclasses of goods to be compared here are practically on all fours with the classes ofgoods compared in Festina.
132 I refer to the goods for which the Application Mark and the Opponents’ Earlier
Marks are registered for (above). For ease of reference, the pertinent goods in light ofFestina have been underlined above and for ease of reference indicated below:
Opponents’ Earlier “A&F” Marks- 44 -

Application MarkT1117126D

Class 14
Precious metals and their
alloys and goods in precious
metals or coated therewith,
not included in other classes;
jewelry, precious stones;
timepieces and chronometric
instruments.

T0002873B

Class 25
Clothing, footwear, headgear.

T0721760C

Class 25
Clothing, footwear, headgear;
clothing, namely, bathrobes,
beach cover-ups, beachwear,
belts, blazers, blouses, body
shapers[foundation
garments], body suits, boxer
shorts,bras,bustiers,
camisoles,
caps,
coats,
dresses, footwear, foundation
garments,
garterbelts,
girdles, gloves, gowns, halter
tops,
hats,
headbands,
hosiery,
jackets,
jeans,
jogging suits, knee highstockings, knit shirts, knit
tops,
leotards,
lingerie,loungewear,
mittens,
negligees, night gowns, night
shirts, pyjamas,panties,pants, pantyhose, sarongs,
scarves, shirts, shorts, skirts,
slacks,sleepwear,
slips,
socks,
stockings, suits, sweat pants,
sweat shirts, sweat shorts,
sweat suits, sweaters, swim
wear, t-shirts, tank tops, tap
pants, teddies, ties, tights,
underpants,
undershirts,
underwear and vests.

- 45 -Class 9Anti-dazzle spectacles; bars
for spectacles; bows adapted
for spectacle frames; carrying
cases adapted for spectacles;
cases adapted for spectacles;
chainsfor
spectacles;
computer programs for use infitting spectacles; containers
for spectacles; cords forspectacles;
devicesforsupporting
spectacles;
devices in the nature ofspectacles for displaying
televised images; devices in
the nature of spectacles forviewing recorded video
images; devices in the natureof spectacles for viewing
televised images; finishedlenses for spectacles; fitted
cases for spectacles; frames
for spectacles; lenses forspectacles;
lorgnettes(spectacles); optical lenses
for use with spectacles;
optical spectacles; protective
glasses(spectacles);protective spectacles; safety
spectacles; spectacle cases;
spectacle chains; spectacle
frames; spectacle frames
havingelastic
hinges;spectacle holders; spectaclelenses; spectacle mountings;
spectacle support bands,
chains, cords, and straps;
spectacles;
spectacles(optics);
spectacles
for
sports; spectacles used in
information science; sport
glasses(protective
spectacles); sport glasses(spectacles); sports glasses(spectacles);strapsfor
spectacles; sun spectacles.

Opponents’ Earlier Moose Device Marks
T0721747F Class 14
Precious metals and their
alloys and goods in precious
metals or coated therewith,
not included in other classes;
jewellery, precious stones;
horological and chronometric
instruments; jewelry, namely,
necklaces and bracelets
Class 25
Clothing, footwear, headgear;
clothing, namely, bathrobes,
beach cover-ups, beachwear,
belts, blazers, blouses, body
shapers[foundation
garments], body suits, boxer
shorts,bras,bustiers,
camisoles,
caps,
coats,
dresses, footwear, foundation
garments,
garterbelts,
girdles, gloves, gowns, halter
tops,
hats,
headbands,
hosiery,
jackets,
jeans,
jogging suits, knee highstockings, knit shirts, knit
tops,
leotards,
lingerie,loungewear,
mittens,
negligees, night gowns, night
shirts, pyjamas,panties,pants, pantyhose, sarongs,
scarves, shirts, shorts, skirts,
slacks,sleepwear,
slips,
socks, stockings, suits, sweat
pants, sweat shirts, sweat
shorts, sweat suits, sweaters,
swim wear, t-shirts, tank tops,
tap pants, teddies, ties, tights,
underpants,
undershirts,
underwear and vests.
133 In light of the above, I agree that the classes, and specifically the particularspecification of goods (as underlined) to be compared here are practically on all fours
with the classes of goods (and the particular specification of goods as underlined above)- 46 -

compared in Festina. Having regard to the fact that I am bound by Festina , I conclude
that there is similarity here with regard to the goods as claimed under the marks as
underlined.
134 The Opponents also submitted, at paragraph 64 of their written submissions, that
there is evidence that it is common for clothing retailers to branch out into fashion
accessories including glasses and sunglasses. However, I do not think it is necessary todelve into this argument at this juncture for the purposes of this element under thisground of objection.
Likelihood of Confusion
135 The relevant principles for the likelihood of confusion are expounded by the
Court in Staywell at [60], [64], [83] and [96]:[60] Accordingly in opposition proceedings the inquiry must take into account thefull range of the competing monopoly rights that are already enjoyed on the one
hand, namely the actual and notional fair uses to which the incumbent proprietor
has or might fairly put his registered trade mark, and compare this against the fullrange of such rights sought by the applicant by reference to any actual use by theapplicant (assuming there has been prior use) as well as notional fair uses towhich the applicant may put his mark should registration be granted…
[64] …Once similarity between the competing marks and goods or services has
been established, the impact of these similarities on the relevant consumers’ability to understand where those goods and services originate from falls to beconsidered. The only relevant confusion is that which results from the similarity
between marks and goods or services. Our courts have consistently recognised
this since Lai Kew Chai J articulated it in Polo (HC) at [15]. Equally however, theplain words of ss 8(2) and 27(2) do not have the effect of making a finding ofconfusion automatic upon the establishment of similarity of marks and goods orservices. If that was what was intended, as observed in Polo (CA) at [25] and inSarika at [60], Parliament would have provided that once such similarity is foundthe matter ends there without any need to examine whether there is a likelihood ofconfusion as a result. However, we reiterate that the statute requires that any
likelihood of confusion must arise from the similarity of marks and goods orservices.
[83] On the effect of the foregoing on the relevant segment of the public –extraneous factors may be considered to the extent that they inform the court as to
how the similarity of marks and goods will likely affect the consumer’s
perception as to the source of the goods…
[96] Based on these considerations, the following represents a non-exhaustive listof factors which we regard as admissible in the confusion inquiry:- 47 -

(a) Factors relating to the impact of marks-similarity on consumer perception: thedegree of similarity of the marks themselves (see Hai Tong at [85(c)(iii)], thereputation of the marks (see Polo (CA) at [34]), the impression given by themarks (see Polo (CA) at [28]), and the possibility of imperfect recollection of themarks would all be relevant. Clearly, the greater the similarity between the marks,
the greater the likelihood of confusion. As to the reputation of the mark, Mobil
Petroleum Co, Inc v Hyundai Mobis [2010] 1 SLR 512 (“Mobil”) at [74] makes it
clear that a strong reputation does not necessarily equate to a higher likelihood ofconfusion, and could in fact have the contrary effect as in McDonald’s Corp v
Future Enterprises Pte Ltd [2005] 1 SLR(R) 177 (see at [64]).
(b) Factors relating to the impact of goods-similarity on consumer perception: it
would be legitimate to take into account factors concerning the very nature of thegoods without implicating any steps that are taken by the trader to differentiate
the goods. This includes the normal way in or the circumstances under which
consumers would purchase goods of that type (see [20] above, Mystery Drinks at[48], Lloyd Schuhfabric Meyer v Klijsen Handel BV, Case C-342/97 [1999] 2
CMLR 1343 at 1352; and Philips-Van Heusen Corp v OHIM [2004] ETMR 60 at[55]). This factor is not directly dependent on the marketing choices that thetrader makes. As alluded to at [94] above, it would also be relevant to have regard
to whether the products are expensive or inexpensive items, the nature of thegoods and whether they would tend to command a greater or lesser degree offastidiousness and attention on the part of prospective purchasers (see generally
Hai Tong at [85(c)(i)]), and the likely characteristics of the relevant consumers
and whether they would or would not tend to apply care or have specialist
knowledge in making the purchase. We refer here to In the matter of an
Application by the Pianotist Company for the Registration of a Trade Mark (1906)
23 RPC 774 (“Pianotist”) where it was observed that, having regard to the natureof the article in question (musical instruments), the (high) price at which it was
likely to be sold, and the nature of the consumers who are likely to purchase suchproducts (“generally persons of some education”), a man of ordinary intelligence
was unlikely to be confused (at 778). The price of the type of product being soldis distinct from the issue of price disparity between the parties’ products. The
former consideration directly impinges on the degree of care the consumer islikely to pay to his purchase and therefore his ability to detect subtle differences.
As observed in Reed Executive Plc v Reed Business Information Ltd [2003] RPC
12 at [103], “a 50 pence purchase in the station kiosk will involve different
considerations from a once-in-a-lifetime expenditure of 50,000 pounds”. On theother hand, superficial price disparity between the competing goods, which speak
more about the trader’s marketing choices rather than differences in the nature of
the goods themselves, is not a factor we find relevant to the inquiry.
[Emphasis as underlined mine].

- 48 -

136 With regard to the Opponents’ Earlier “A&F” Mark and the Application Mark, I
have concluded above that in terms of the factors relating to the impact of markssimilarity on consumer perception, the marks are visually similar to some extent, aurally
similar and conceptually similar to a low extent such that the marks are more similar
than dissimilar in totality. In this regard, as the relevant goods are retail items(jewellery and spectacles), it is the visual and aural aspects which are more important.
137 I have also concluded above that the Opponents’ Earlier “A&F” Mark is not only
inherently distinctive but also possesses a high level of technical distinctiveness. In
addition, the Opponents’ Earlier “A&F” Mark has been claimed to have acquired defacto distinctiveness having regard to the use of the Opponents’ Earlier “A&F” Mark(although the extent to which the sales and promotional figures in Singapore which canbe accorded to it can only be an approximate).
138 It is also noted that the Courts have cautioned that “a strong reputation does notnecessarily equate to a higher likelihood of confusion, and could in fact have thecontrary effect”. Whether this is so will depend on the actual circumstances of the case.
Suffice it to say that in the current case I am of the view that the reputation of the
Opponents’ Earlier “A&F” Mark would be one factor which enhances the likelihood ofconfusion.
139 In relation to the Opponents’ Earlier Moose Device Mark, I have concluded abovethat the marks are visually similar, aurally neutral and conceptually similar to someextent such that the marks are more similar than dissimilar in totality.
140 Similarly, I have also concluded above that the Opponents’ Earlier Moose Device
Mark is not only inherently distinctive but also has a high level of technicaldistinctiveness. Additionally, the Opponents’ Earlier Moose Device Mark has been
claimed to have acquired de facto distinctiveness having regard to its use (although theextent to which the sales and promotional figures in Singapore which can be accorded
to it can only be an approximate).
141 Last but not least, I am of the view that the reputation of the Opponents’ Earlier
Moose Device Mark in this case would be a factor which increases the likelihood ofconfusion.
142 In relation to the issue of goods similarity, I am mindful of the case of The
Polo/Lauren Company, L.P. v United States Polo Association [2015] SGIPOS 10(“Polo”) where the learned IP Adjudicator concluded as follows at [109] and [110]:[109] Having clarified this matter, though, I do not think that it is necessary inevery case to focus on the price of the type of goods concerned. Ultimately, theaim of the exercise is to determine the degree of care that the average consumer islikely to pay when purchasing that type of goods. In this exercise, there may befactors other than price which are more useful.

- 49 -

[110] In my view, eyewear is a type of goods the purchase of which involves afairly high degree of care regardless of their price range, for the following
reasons. First, eyewear as a type of goods is not purchased on a regular or
frequent basis. Second, eyewear as a type of goods is usually bought throughsalespersons particularly, as the Opponents have pointed out, when they are soldin optical shops. Third, eyewear is a type of goods that will command a higher
degree of fastidiousness on the part of a consumer who is likely to inspect the
product closely in order to decide if the particular spectacle frame fits well interms of comfort level (e.g. whether the nose pad of the spectacle frame sits
comfortably on the consumer’s nose bridge).
…
[112] …Where similarity of the marks is concerned, it should be noted thateyewear are usually purchased based on visual inspection and hence the visual
aspect of the marks is likely to have a greater impact on the consumer: see[101(c)(i)] above…
[Emphasis as underlined mine]
143 However, despite the above, I am of the view that the similarity between themarks is likely to cause confusion. The Applicants have essentially combined the wholeof the Opponents’ Earlier “A&F” Mark and the whole of the Opponents’ Earlier Moose
Device Mark. It ill behoves them to argue that: (a) on the one hand that there is no (orlittle) likelihood of confusion with the Opponents’ Earlier “A&F” Mark as the
Application Mark also incorporates the Opponents’ Earlier Moose Device Mark; and (b)on the other hand that there is no (or little) likelihood of confusion with the Opponents’
Earlier Moose Device Mark as the Application Mark also incorporates the Opponents’
Earlier “A&F” Mark. This is discussed in more detail below when considering the
ground of opposition under Section 8(7)(a) (specifically, when discussing the issue of
misrepresentation).
144 The ground of opposition under Section 8(2)(b) therefore succeeds.
Ground of Opposition under Section 8(4)(b)(i)145 Section 8(4) of the Act reads:
8. —(4) Subject to subsection (5), where an application for registration of a trade
mark is made on or after 1st July 2004, if the whole or an essential part of the trade markis identical with or similar to an earlier trade mark, the later trade mark shall not beregistered if —(a) the earlier trade mark is well known in Singapore; and(b) use of the later trade mark in relation to the goods or services for which the later- 50 -

trade mark is sought to be registered —(i) would indicate a connection between those goods or services and the
proprietor of the earlier trade mark, and is likely to damage the interests of the
proprietor of the earlier trade mark…
Decision on Section 8(4)(b)(i)Similarity of marks
146 In relation to this ground, it is clear that the first element that must be satisfied isthat "the whole or essential part of the trade mark must be identical or similar to an
earlier mark".
147 In relation to this element, the Opponents repeat their submissions (see paragraph
91 of the Opponents’ written submissions) in relation to the “similar” limb under
Section 8(2)(b). In relation to this element, my view is primarily the same in relation to
the “similar” element under Section 8(2)(b).
148 In short, I am of the view that this element has been made out.
Well-known in Singapore
149 The critical question is whether the Opponents' Earlier Marks are well known in
Singapore as at the relevant date of 4 June 2013, which is the date of application of the
Application Mark.
150 The starting point for this limb is Section 2(7), (8) and (9) of the Act.
Section 2(7) of the Act states:
Subject to subsection (8), in deciding, for the purposes of this Act, whether a trade
mark is well known in Singapore, it shall be relevant to take into account any
matter from which it may be inferred that the trade mark is well known, including
such of the following matters as may be relevant:(a) the degree to which the trade mark is known to or recognised by any
relevant sector of the public in Singapore;(b) the duration, extent and geographical area of –(i) any use of the trade mark; or(ii) any promotion of the trade mark, including any advertising of,any publicity given to, or any presentation at any fair or exhibitionof, the goods or services to which the trade mark is applied;- 51 -

(c) any registration or application for the registration of the trade mark inany country or territory in which the trade mark is used or recognised,
and the duration of such registration or application;(d) any successful enforcement of any right in the trade mark in any
country or territory, and the extent to which the trade mark wasrecognised as well known by the competent authorities of that country
or territory;(e) any value associated with the trade mark.
Section 2(8) of the Act reads:
Where it is determined that a trade mark is well known to any relevant sector of
the public in Singapore, the trade mark shall be deemed to be well known in
Singapore.
Section 2(9):In subsections (7) and (8), “relevant sector of the public in Singapore” includes
any of the following:(a) all actual consumers and potential consumers in Singapore of thegoods or services to which the trade mark is applied;(b) all persons in Singapore involved in the distribution of the goods orservices to which the trade mark is applied;(c) all businesses and companies in Singapore dealing in the goods orservices to which the trade mark is applied.
151 Section 2(7)(a) is arguably the most crucial factor when determining whether atrade mark is well known in Singapore due to Section 2(8) of the Act which states that"[w]here it is determined that a trade mark is well known to any relevant sector of the
public in Singapore, the trade mark shall be deemed to be well known in Singapore":see [139] of Novelty Pte Ltd v Amanresorts Ltd and another [2009] SGCA 13("Amanusa").
152 It is to be remembered that the Court in Amanusa provided at [229]:[229] Finally, it will be recalled that it is not too difficult for a trade mark to be
regarded as “well known in Singapore” – essentially, the trade mark in questionneed only be recognised or known by “any relevant sector of the public in
Singapore” [emphasis added] (see s 2(7)(a) of the current TMA), which sector
could in certain cases be miniscule…

- 52 -

153 However, despite the above, the High Court in Caesarstone Sdot-Yam Ltd v
Ceramiche Caesar SpA [2016] SGHC 45 (“Caesarstone”) commented as follows at[159] and [160]:[159] …Whilst the Court of Appeal has commented that it is “not too difficult”
for a trade mark to be considered well-known in Singapore (Amanresorts at [229]),
this should not be taken to mean that the hurdle that trade mark owners have tocross is minimal.
[160]…I am of the view that the statement of the Court of Appeal in Amanresortsthat it is “not too difficult” for a trade mark to be considered as well-known,
especially on a sectorial basis, must be applied with judicious caution to the actual
facts and circumstances of each case.

It is noted that Caesarstone is subject to appeal to the Court of Appeal. However, as at
the date of this decision, the High Court decision is still applicable.
154 The court in Amanusa also discussed the ambit of the phrase "all actual
consumers and potential consumers in Singapore of the goods” at [152] and concluded
that "the inquiry is much more focused and manageable if one looks only at the specificgoods or services to which the [Opponents'] trade mark has been applied (that is, if one
considers only the [Opponents'] goods or services)."
155 Further, following Amanusa at [137]:[137]…It appears that the court is ordinarily free to disregard any or all of thefactors listed in s 2(7) as the case requires (subject to [Section 2(7)(a) of the Act]),
and to take additional factors into consideration….
[Emphasis as underlined mine].
156 In relation to this ground of objection, the Opponents submitted, at paragraph 84
of their written submissions, that the relevant sector of the public in Singapore is theactual and potential consumers of goods bearing the Opponents’ Earlier Marks (ieconsumers of fashion accessories and clothing), the persons involved in the distributionof goods bearing the Opponents’ Earlier Marks and the businesses and companies in
Singapore dealing with goods bearing the Opponents’ Earlier Marks.
157 In particular, the Opponents argued that the following factors are relevant(paragraphs 86 – 90 of the Opponents’ written submissions):
(i)

(ii)

The “A&F” trade mark has been in use in the USA since at least as
early as 1978 while the Moose Device has been in continuous use in the
USA since as early as 2002;
The Opponents’ Earlier “A&F” Mark and the Opponents’ Earlier
Moose Device respectively has been in use in Singapore since at least- 53 -

as early as 2002 when goods purchased on the Opponents’ website wereshipped to Singapore;(iii) The Opponents’ boutique in Orchard Road opened in 2011 and goods
bearing the Opponents’ Earlier Marks have been sold from the physicalboutique since then.
(iv) There was also a great amount of publicity regarding the opening of the
Opponents’ boutique in Singapore;(v) The total annual sales of goods from the Opponents’ website toSingapore for the period 2002 – 2013 are substantial (see above);(vi) The total annual store sales at the Opponents’ store in Singapore for theperiod 2011 – 2013 are also substantial (see above);(vii) The total annual sales of Opponents’ goods worldwide for the period
2000 – 2013 are very substantial (see above);(viii) The Opponents’ marks have been widely promoted worldwide and in
Singapore and the total annual promotional expenditure, including for
the Opponents’ Earlier Marks for the period 2002 – 2013 are very
substantial (see above);(ix) The Opponents also argued that the “A&F” trade mark and the Moose
Device have been extensively protected around the world throughnumerous trade mark applications / registrations as follows:a. The “A&F” trade mark and the Moose Device have been protected
in many countries for well over 50 years and this protection has
been consolidated with on-going filings over the entirety of thebrand’s life.
b.The jurisdictions in which the Opponents and / or theirpredecessors own their registrations for the “A&F” trade mark andthe Moose Device include, amongst others (i) USA; (ii) United
Kingdom; (iii) China; (iv) Australia; and (v) the European Union.
(x) Finally, the Opponents sought to highlight the following:a. The “A&F” trade mark has been recognised as being well-known
in the following countries / territories:(i) Korea Intellectual Property Office (KIPO);(ii) Turkish Patent Institute;(iii)Office for Harmonization in the Internal Market (“OHIM”)(now known as European Union IP Office);(iv) Supreme Court of France;(v) Spanish Patent & Trade Mark Office; and(vi) Swiss Federal Institute of Intellectual Property
b.The Moose Device has been recognised as being well-known by
the following countries / territories:(i) Korea;(ii) Spain;(iii)Taiwan; and(iv) OHIM.

- 54 -

158 In light of the foregoing, the Opponents submitted (at paragraph 90 of theirwritten submissions) that the Opponents’ Earlier Marks are well known to the relevant
sector of the public in Singapore and by virtue of Section 2(8) of the Act, theOpponents’ Earlier Marks are deemed to be well known in Singapore.
159 I have mentioned the local sales and promotional expenditure of the Opponents
above. The total worldwide sales and promotional figures of the Opponents have also
been referred to above.
160 In contrast, the sales figures in Caesarstone are as follows at [153]:
Year
2002
2003
2004
2005
2006
2007

Singapore Sales (in SGD)

Worldwide sales (in SGD)

3,390,094
1,874,266
935,055
1,433,751
203,634
577,656

119,929,925
108,568,093
119,036,242
159,243,918
173,550,987
176,795,005

161 The promotional figures in Caesarstone are provided at [155] although it is notedthat it is unclear as to the extent to which the figures relate to promotional activities in
Singapore:

Year
2002
2003
2004
2005
2006
2007

Worldwide Promotional Figures
Amount (SGD)
273,387
247,812
1,339,131
2,092,412
2,234,788
1,120,784

162 A comparison of the sales figures will show that the Opponents in the current caseenjoy much stronger sales in Singapore in contrast to the Appellants in Caesarstone. It
is noted that the average annual store sales in Singapore for the period 2011- 2013 for
the Opponents in the current case is SGD 20,755,469.56 (although, I am mindful of thefact that it is unclear as to the extent to which the figures above can be apportioned to
the Opponents’ Earlier Marks in the current case). In contrast, the average annual sales
figure for the Appellants in Caesarstone is SGD 1,402,409.33.
163 The same is true for the promotional figures. I note that the average annual
worldwide promotional expenditure (including for the Opponents’ Earlier Marks) forthe period 2002 - 2013 for the Opponents in the current case is SGD 39,943,183.33
while the worldwide promotional figures (including Singapore) for the period 2002 2007 in Caesarstone is SGD 1,218,052.33.

- 55 -

164 I am mindful of the caution given by the High Court in Caesarstone above.
However, I am of the view that, in light of the evidence above, the Opponents’ Earlier
Marks could be said to be well known to the relevant sector of the public, and in thiscase, all actual consumers and potential consumers / all persons involved in the
distribution / all businesses and companies dealing with, in Singapore, of the goods orservices to which the Opponents’ Earlier Marks are applied, specifically, the Opponents'
goods or services.
165 With the above in mind, I am of the view that this limb has been satisfied.
Confusing connection
166 In this regard, the Court at Staywell provided as such at [120]:…As for the third element, the detailed analysis in Amanresorts has put it beyond
doubt that the connection requirement of s 8(4)(b)(i) and s 55(3)(a) of the Act will besatisfied where there is a likelihood of confusion (see Amanresorts at [226] and[233])….

167 Further, as submitted by the Opponents, in Sarika Connoisseur Cafe Pte Ltd v
Ferrero SpA [2012] SGCA 56, the Court held that:(20) In the present case, there was the requisite confusing connection under s55(3)(a) TMA. The test for the “connection” requirement was similar in substanceto the test for the misrepresentation requirement in passing off, and the findings
for the misrepresentation requirement were in turn based on the finding of alikelihood of confusion under s 27(2)(b) TMA…
168 Having taken the above into consideration, I am of the view that there will be a
confusing connection here for largely the same reasons that I have provided for myconclusion in relation to the likelihood of confusion under Section 8(2)(b) as well as for
misrepresentation under the ground of objection for passing off, below.
Likelihood of Damage
169

In relation to this element, Amanusa provided at [234]:[234] In the instant case, we agree with the Judge’s finding (at [74] of the
Judgment) that the tests to be adopted for the purposes of the “connection”
requirement and the “likely to damage the [plaintiff’s] interests” requirement in s
55(3)(a) of the current TMA would yield the same results as those obtained fromapplying the corresponding tests vis-à-vis the Respondents’ claim for passing
off…However, we pause to clarify that while the tests relating tomisrepresentation and damage under the law of passing off are substantively thesame as the tests relating to, respectively, the “connection” requirement and the“likely to damage the [plaintiff’s] interests” requirement in s 55(3)(a) of thecurrent TMA, the two sets of tests are not identical in one aspect. An important- 56 -

distinction is that the tests relating to misrepresentation and damage in passing off
actions concern the plaintiff’s goodwill (see [69] above), whereas thecorresponding tests under s 55(3)(a) of the current TMA concern the interests ofthe plaintiff and not its goodwill (indeed, as the definition of “well known trademark” in s 2(1) of the current TMA makes clear, the plaintiff’s trade mark may be
a “well known trade mark” for the purposes of s 55(3)(a) even if the plaintiff has
no goodwill in Singapore).
[Emphasis as underlined mine]
170 With regard to this element, the Opponents argued at paragraph 95 of their written
submissions
95
One well-recognised head of damage is where there is “an identical fieldof business activity giving rise to direct competition” (see Hai Tong at [118]). On
the present facts, it is important to bear in mind that the goods covered by the
Application Mark and the Opponent’s “A & F” Marks andMarks are closely
related. We have also shown that there is a real likelihood of confusion. The “reallikelihood of damage” arises from the potential diversion of sales from one party
to another if consumers of the relevant segment of the public were led to believethat the goods under the Application Mark were associated with or connected with
the Opponent.
171 I do not think that there will be any “diversion of sales”. I am of the view that thelikelihood of damage comes in the form of restriction on the Opponents to expand into
eyewear. In this regard, the Court of Appeal in Amanusa provided as such:[117] We accept the principle that a plaintiff who has established goodwill in one
form of commercial activity (“the established activity”) may be entitled toprotection from passing off vis-à-vis another form of commercial activity which isa natural expansion of the first (“the extended activity”). Thus, in Alfred Dunhill
Limited v Sunoptic SA [1979] FSR 337, it was understandable why the English
Court of Appeal prevented the defendant from marketing sunglasses under thename “Dunhill” given that the plaintiff, a well-known producer of tobacco goods
under the same name, had expanded its business to include the sale of luxury
goods for men, likewise under the name “Dunhill”. The plaintiff had also showedthat although it had not sold sunglasses in England, it was planning to produce
sunglasses itself.
[118] It is, however, important to stress the close connection which must exist
between the established activity and the extended activity for that connection
forms the foundation for this head of damage. Wadlow in The Law of PassingOff ([73] supra) cites (at para 4-42) the following extract from the American caseof S C Johnson & Son, Inc v Johnson 116 F 2d 427 (2nd Cir, 1940) at 429 (perHand J) as being representative of the English position in this regard:- 57 -

It is true that a merchant who has sold one kind of goods … sometimes
finds himself driven to add other ‘lines’ in order to hold or develop his
existing market; in such cases he has a legitimate present interest inpreserving his identity in the ancillary market, which he cannot do … ifothers make his name equivocal there. But if the new goods have no such
relation to the old, and if the first user’s interest in maintaining thesignificance of his name when applied to the new goods is nothing morethan the desire to post the new market as a possible preserve which he may
later choose to exploit, it is hard to see any basis for its protection [ie, forthe protection of the merchant’s name in the new market]. The public may
be deceived, but [the merchant] has no claim to be its vicarious champion;
his remedy must be limited to his injury and by hypothesis he has none.
In our view, this passage is representative of the position in Singapore as well.
[121] In our view, in the instant case, the Respondents’ field of business (which,in the context of this appeal, is the high-end hotel and resort business (see [65]above)) and the Appellant’s field of business (viz, the residential accommodation
business) are closely connected. Both fields concern accommodation. The factthat the Respondents have already expanded into the residential accommodation
business overseas (see [8]–[9] above) buttresses this conclusion…The use by theAppellant of the name “Amanusa” or of other names similar to the “Aman”
names in the field of residential accommodation in Singapore would prevent the
Respondents from expanding into the residential accommodation business in thiscountry. For this reason, we hold that this head of damage (viz, restriction on the
Respondents’ expansion into the residential accommodation business) has been
proved.
[Emphasis as underlined mine]
172 As mentioned above, the Opponents sought to tender evidence to show that it iscommon for clothing retailers to branch out into fashion accessories including glasses
and sunglasses. This is reflected in Exhibit 14 of the Opponents’ 1st Evidence, which I
have already referred discussed in detail above.
173 Further, as noted above, the Opponents have, albeit belatedly, sought to apply formarks in relation to Class 9 overseas, the details of which have been referred to briefly
above. One example is their registration in Switzerland and the details are as follows:

(i)
(ii)
(iii)
(iv)
(v)

Registration No. 652031
Application Date: 21 August 2013
Class: 9Specification: Eye glasses; sunglasses…
Mark: Moose Device- 58 -

174 Taking all of the above into account, I am of the view that the element oflikelihood of damage has been made out.
175 The ground of opposition under Section 8(4) therefore succeeds.
Ground of Opposition under Section 8(7)(a)176 Section 8(7)(a) of the Act reads:
8. —(7) A trade mark shall not be registered if, or to the extent that, its use in
Singapore is liable to be prevented —(a) by virtue of any rule of law (in particular, the law of passing off) protecting an
unregistered trade mark or other sign used in the course of trade.
Decision on Section 8(7)(a)177 In relation to this ground, it is clear that there are 3 elements to be established andthey are:
(i)
(ii)
(iii)

Goodwill;
Misrepresentation; andDamage.

178 A widely-quoted description of goodwill is as follows (see The Commissioners ofInland Revenue v Muller & Co's Margarine, Limited [1901] AC 217, referred to at
Law of Intellectual Property of Singapore at [17.1.1]):
It is the benefit and advantage of the good name, reputation, and connection of abusiness. It is the attractive force which brings in custom. It is the one thing which
distinguishes an old-established business from a new business at its first start. The
goodwill of a business must emanate from a particular centre or source. However
widely extended or diffused its influence may be, goodwill is worth nothing
unless it has a power of attraction sufficient to bring customers home to the sourcefrom which it emanates.
[Emphasis as underlined mine].
179 It is important to focus on goodwill in Singapore as the Court in Staywell at [136]has clarified that the local approach, unlike other jurisdictions like Australia, is still the“hardline” approach, albeit such an approach having been softened by CDL Hotels
International Ltd v Pontiac Marina Pte Ltd [1998] 1 SLR(R) 975 to include pretrading activity.
180 It is important to note that the Opponents must establish that they have acquired
goodwill as at the relevant date and this date is the date on which the defendant's- 59 -

conduct complained of started: Law of Intellectual Property of Singapore at [17.2.5]).
Applying the principle to the current case, the relevant date in this instance is the date of
the application of the Application Mark which is 4 June 2013.
181 Recently, the High Court in Allergan, Inc and another v Ferlandz Nutra Pte Ltd[2016] SGHC 131, referring to the Court of Appeal case of Singsung Pte Ltd v LG 26
Electronics Pte Ltd (trading as L S Electrical Trading) [2016] SGCA 33(“Singsung”), further clarified as such at [170]:[170] Goodwill is the legal property protected by the law of passing off. Goodwill in
the context of passing off is not goodwill in the mark, logo or get-up as such. Instead,
goodwill is the trading relationship with his customers. Viewed from this perspective,
passing off is concerned with goodwill in the business as a whole and not its
constituent elements such as the mark, logo or get-up that it uses.
[171] The Court of Appeal in Singsung held (at [37]) that for conceptual clarity, theissue as to whether a mark or get up is distinctive of the plaintiff’s product or services
is best dealt with in the context of whether the defendant had made amisrepresentation. Further, at [55], the Court of Appeal emphasised that the goal of
the tort is to prevent unfair competition brought about by deception or
misrepresentation by the defendant as to, amongst other things, the origin of goods…

[Emphasis as underlined mine]

182 In relation to proving goodwill, the Court of Appeal provided as such in Singsungat [58]:[58] Evidence of sales and income of the business are a “proxy for the attractive
force of the business”…
[Emphasis as underlined mine]
183 Further, it is clear that under the law the “get up” can include various aspects ofthe business, including a mark, (see Law of Intellectual Property of Singapore at[17.2.10] – [17.2.11]:[17.2.10]: The action for passing off is no longer anchored…to the name or trade
mark of a product or business…The real issue is not what type of indicia isemployed by the plaintiffs to market his goods or services, but whether the
relevant public associates the indicia exclusively with the plaintiff’s goods orservices.
[17.2.11] The different types of indicia used by the traders to distinguish theirproducts or services are sometimes known generically as “get-up”…

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184 Last but not least, the High Court in Rovio Entertainment Ltd v Kimanis Food
Industries Sdn Bhd [2015] SGHC 216 (“Rovio 2”) at [164] clarified as follows:[164] Having considered the statutory language of s 8(7)(a) of the TMA and thelimited authorities on the matter, I am of the view that s 8(7)(a) of the TMA at thevery least requires an opponent to adduce sufficient evidence to establish a prima
facie case on goodwill, misrepresentation, and damage…
[Emphasis as underlined mine].
185 In relation to goodwill I have already dealt with the Opponents’ sales andpromotional figures in Singapore. As mentioned above, a point to note in relation to thefigures above is that the figures do not simply reflect the Opponents’ Earlier Marks, butother marks of the Opponents as well and in relation to a range of the Opponents’ goods,
and not just in relation to the relevant goods claimed under the Opponents’ Earlier
Marks. However, as elucidated above, under this ground of objection for passing off,the Opponents can rely not only on the Opponents’ Earlier Marks but also any otherrelevant get-up as well.
186 Further, the Opponents are also not restricted to the relevant goods claimed under
the Opponents’ Earlier Marks. The only issue is that the different goods to which the
Opponents’ get-up have been applied to may affect the issue of the proximity of the
fields the parties are engaged in and in turn affect the element of misrepresentation.
This is dealt with below.
187 In light of the above, I am of the view that, the Opponents have shown that they
have the relevant goodwill in Singapore, at the very latest, by 2011, when the
Opponents’ physical store was opened in Singapore. This is so, especially in light of
the High Court’s guidance above that the Opponents only need to show a prima faciecase of passing off.
Misrepresentation
188 Some of the more pertinent factors under this element in relation to this case areas follows (see Law of Intellectual Property of Singapore at [18.3.13] – [18.3.16]):(i)

The nature of the relevant public has been identified as notunobservant morons in a hurry but ordinary sensible people using
ordinary care. This level of ordinary care will vary depending on
various factors including:a.
b.

Whether the goods / services are expensive
The length and complexity of the purchase transaction- 61 -

c.
d.

Whether the goods / services are of a specialised nature which arepurchased by professionals
Level of education of the purchaser.

Using the factors including those above, the court will calibrate the degreeof "consumer sophistication" of the ordinary or average person in therelevant public to determine the level of care that this person would
exercise when making purchasing decisions.
(ii)

The question whether there would be confusion is a matter to be
decided by the judge.

(iii)

The finding of confusion is a question of fact to be determined by the
court in light of surrounding circumstances. Some factors which havebeen applied by the Courts are as follows:
a.
b.
c.
d.

Degree of similarity between the parties' get-ups
Degree of distinctiveness of the plaintiff's get-up
Price differences between the parties' goods or services
Proximity of the parties' fields of activity.

189 I propose to deal with the factors listed in item (iii) first.
Degree of distinctiveness of the Opponents’ get-up
190 The issue of distinctiveness of the Opponents’ Earlier Marks has been discussed
extensively above. In essence, I am of the view that the Opponents’ Earlier Marks are
inherently distinctive and enjoys a high degree of technical distinctiveness as they aremeaningless in relation to the relevant goods claimed.
191 The above is bolstered by the use of the Opponents’ Earlier Marks in Singapore.
The local sales and promotional figures have been provided above and will not be
repeated here. It has also been commented above that the figures as provided above
cannot be taken literally to simply reflect use of the Opponents’ Earlier Marks per se.
192 Nevertheless, as mentioned above, for the purposes of an objection under passing
off, the get-up of the Opponents (which includes the Opponents’ Earlier Marks) can betaken into account. In this regard, the Opponents’ get up includes, for example,“Abercrombie & Fitch” or the Opponents’ Earlier Moose Device Mark together with
“Abercrombie & Fitch” (see Exhibit 11 of the Opponents’ 1st Evidence, pages 605 and
601 respectively). See also for example, Exhibit 8 at page 508 – third item whichshows a T-shirt, with the moose device in between the two characters “A” and “F” aswell as at page 528 of the same Exhibit, the third item, which shows the Opponents’
Earlier “A&F” Mark on top and the Opponents’ Earlier Moose Device Mark below.
Finally, reference is made to Exhibit 10 at page 591, which shows “A & Fitch” and the
Opponents’ Earlier Moose Device Mark below.

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193 Needless to say, it would be obvious that, for example, the Opponents’ Earlier
Moose Device Mark together with “Abercrombie & Fitch” would be inherently
distinctive in relation to the goods.
194 To conclude this issue, I am of the view that in light of the inherent and de facto
distinctiveness of the Opponents’ get-up, the Opponents’ get-up can said to be highly
distinctive.
Degree of similarity between the parties' get-ups
195 For ease of comparison, the relevant marks are as follows:

S/N
1.

Application MarkTABLE 1
Opponents’ Earlier “A&F” Mark

Opponents’ Earlier Moose Device Mark2.

196 The striking similarity between the moose device in the Application Mark and the
Opponents’ Earlier Moose Device Mark has been commented on above and I will not
repeat it here.
197 In short there is an uncanny resemblance as follows:
(i)
(ii)
(iii)
(iv)

The positioning of the legs;
There is no beard above the neck;
There is no tail;The arrangement of the antlers.

198 In addition, it has been mentioned above that the Opponents’ get-up includes, forexample, the Opponents’ Earlier Moose Device Mark together with “Abercrombie &Fitch” (see Exhibit 11 of the Opponents’ 1st Evidence at 601). When compared with theApplication Mark, this increases the similarity of the marks / get-up as the consumer islikely to think that the characters “A&F” are simply the acronym of “Abercrombie &Fitch”.

- 63 -

199 Thus such actual use would enhance the similarity between the Application Markand the Opponents’ get-up.
Proximity of the parties' fields of activity
200 In relation to this issue, Justice Wei in Rovio 2 provided as follows:[199] Whilst the law of passing off no longer requires that the parties arecompeting in the same or common field of activity, a relevant factor in deciding
whether any misrepresentation is likely to cause confusion is how close or far
apart the fields of activity are. Much will depend on the actual facts andcircumstances. As was said in Ng-Loy Wee Loon at para 18.3.28:
The closer the defendant’s field of business activity is to that of theplaintiff, the greater is the risk of confusion. However, it does not
automatically follow from this that confusion cannot arise if the parties arein completely different fields of activity.
[200] In general, the fact that the defendant used a similar mark in a wholly
unrelated field will lessen the likelihood of confusion, and, indeed, damage. But,
equally, where the plaintiff’s mark is well established and the fields of activity(whilst not identical) are close or related, a likelihood of confusion and damage
may still be found. Other relevant factors in determining misrepresentation andconfusion include whether the plaintiff has already started using the mark in thatdifferent field of activity.
[Emphasis as underlined mine]
201 In the current case I have already concluded under the ground of Section 8(2)(b)that the relevant goods in question are similar. This is on the basis of Festina, which isbinding on me.
202 Further, as alluded to above, the Opponents argued, at paragraph 64 of theirwritten submissions (albeit for the ground of objection under Section 8(2)(b)) that there
is “relatedness” between the Opponents’ relevant goods on the one hand and theApplicants’ goods on the other. The Opponents’ evidence in this regard was tenderedas Exhibit 14 of the Opponents’ 1st Evidence. The evidence has been discussed in detailabove and will not be repeated here.
203 In light of the above, the parties can be considered to be in related fields ofbusiness and thus illustrate the proximity of the activities.
Price differences between the parties' goods or services / Level of care
204 I will deal with price difference and level of care (see item (i) above) together as
they are inter-related.

- 64 -

205 In relation to the above factors, I am mindful of Polo where the learned IP
Adjudicator concluded as follows at [109] – [112]:[109] Having clarified this matter, though, I do not think that it is necessary inevery case to focus on the price of the type of goods concerned. Ultimately, theaim of the exercise is to determine the degree of care that the average consumer islikely to pay when purchasing that type of goods. In this exercise, there may befactors other than price which are more useful.
[110] In my view, eyewear is a type of goods the purchase of which involves afairly high degree of care regardless of their price range, for the following
reasons. First, eyewear as a type of goods is not purchased on a regular or
frequent basis. Second, eyewear as a type of goods is usually bought throughsalespersons particularly, as the Opponents have pointed out, when they are soldin optical shops. Third, eyewear is a type of goods that will command a higher
degree of fastidiousness on the part of a consumer who is likely to inspect the
product closely in order to decide if the particular spectacle frame fits well interms of comfort level (e.g. whether the nose pad of the spectacle frame sits
comfortably on the consumer’s nose bridge).
[112] …Where similarity of the marks is concerned, it should be noted thateyewear are usually purchased based on visual inspection and hence the visual
aspect of the marks is likely to have a greater impact on the consumer: see[101(c)(i)] above…
[Emphasis as underlined mine]
206 However, in this case, I am of the view that the striking similarity between the
get-ups, as well as the proximity of the relevant goods are likely to cause confusion
even in light of, for example, the normal circumstances of purchase of such goods as
highlighted in Polo. In this regard, the Opponents went further to argue that even thesales person would be confused in light of the two factors as discussed.
207 In relation to the price of the products, the Opponents argued at the oral hearingthat eyewear is considered as “mid-range” products. The Opponents sought to argue
that in relation to eyewear, it is the lenses which constitute the bulk of the price suchthat the frames can only be considered as “mid-range” products. It is not necessary to
go into such details. Suffice to say that I am of the view that eyewear in general (intotality, frames and lenses included) can be considered as “mid-range” products, that is,somewhere between “a 50 pence purchase in the station kiosk” and a musicalinstrument.
208 In any case, as elucidated by the IP Adjudicator in Polo “[u]ltimately, the aim of
the exercise is to determine the degree of care that the average consumer is likely to pay- 65 -

when purchasing that type of goods. In this exercise, there may be factors other thanprice which are more useful.”
Conclusion in relation to misrepresentation
209 Taking into account all of the surrounding factors, I am of the view that, on abalance of probabilities, there is a likelihood of misrepresentation that the Applicants
and the Opponents are one and the same or that they are economically linked.
Damage210 For the same reason that I am of the view that the element of likelihood ofdamage is made out under the ground of objection under Section 8(4)(b)(i) above, I amof the view that this element has been satisfied here. Specifically, I am of the view thatthe damage comes in the form of restriction on the Opponents to expand into eyewear.
Conclusion
211 In light of all of the above, the ground of opposition under Section 8(7)(a)therefore succeeds.
Conclusion
212 Having considered all the pleadings and evidence filed and the submissions madein writing and orally, I find that the opposition succeeds on all grounds. Accordingly,
the Application Mark shall not proceed to registration. The Opponents are also entitled
to costs to be taxed, if not agreed.

Dated this 16th day of August 2016______________
Sandy Widjaja
Principal Assistant Registrar of Trade MarksHearings and Mediation GroupIntellectual Property Office of Singapore- 66 -