Abercrombie & Fitch opposed MMC International’s (a Singapore entity) application to register the trade mark in Class 9 for eye wear related goods.
The opponent holds trade mark registrations in Singapore for both its Moose Device and A&F (both shown below), but none of its prior registrations covered Class 9 eye wear goods. In addition to its registrations (albeit for non-identical goods), the opponent was able to show use of both of its marks in Singapore since at least 2002.
The opponent pressed grounds of passing off, bad faith and the well-known nature of its marks.
In its defence, the applicant argued that the opponent had no interest in Class 9 eye wear goods, as it had not made any effort to cover those goods under its registrations or made any use of its trade marks in relation to those goods.
The Hearing Officer concluded that there is a connection between clothing (the goods on which the opponent had shown use and holds registrations) and eye wear in Class 9 and, based on the use of the opponent’s marks in Singapore, the applicant would have had knowledge of the opponent’s marks. Accordingly, the opposition was successful on the grounds pressed and the application refused registration.