Fashion giant Mango loses trademark case against South Korean skincare firm

Spanish retail giant Mango and skincare firm TheFaceShop.
Spanish retail giant Mango and skincare firm TheFaceShop.PHOTOS: BLOOMBERG, LIANHEZAOBAO

SINGAPORE - Spanish retail giant Mango has failed in its bid to block skincare firm TheFaceShop from registering "Mango Seed TheFaceshop" as a trademark.

A trademarks registrar found that the skincare firm's brand for a range of cosmetic products including skin lotions, make-up foundation powder and hair shampoo, looked and sounded different, and was conceptually different, too.

Consolidated Artists B.V. - which owns the Mango trademark as part of a retail empire that spans clothes and cosmetics, among others - said TheFaceShop's application was similar to its own registered trademark, which was first introduced in Spain in 1984, and is now used for products sold in more than 100 countries.

The firm relied on trademarks it has used for cosmetics, such as Mango and Mango Adorably, to oppose TheFaceshop trademark.

TheFaceShop is a South Korea-based skincare and cosmetics manufacturer, retailer and franchiser, with stores in more than 20 countries. It sought to register the trademark in Singapore in 2013.

Principal Assistant Registrar of Trade Marks Sandy Widjaja overruled Mango's objections and approved The FaceShop's registration of the trademark.

In decision grounds issued last week (June 28), Ms Widjaja said the use of the words "The FaceShop" and "Seed" in the South Korean firm's trademark "sufficiently and substantially distinguishes" it from Mango.

She added that the use of the word "Seed" meant "there can be no confusion in relation to the marks via confusion as to an economic link between the parties".

"The price (mid-range), the nature of the products (personal, self-care products) and the mode of sale (self-service items with some level of assistance by specialists), all these factors, taken together, point away from a likelihood of confusion," she added.

Ms Widjaja said in a competitive consumer market, it was accepted that business owners created catchy trademarks for their products to stand out from others.

Under the Trade Marks Act, a trademark must be distinctive, among other things, to qualify for registration.

Ms Widjaja said one issue to consider was whether a common word can treated as distinctive. For instance, she said while "Apple" cannot be registered for apples, "Apple" for computers would be regarded as sufficiently distinctive to secure registration.

"However, such a strategy can be a double-edged sword, as illustrated by the current case," she added.