image: Mango

image: Mango

Big fashion brands, such as Louis Vuitton and co., often get a bad name for policing others’ unauthorized uses of their names. Paris-based Louis Vuitton has been called a “trademark bully” by multiple plaintiffs and judges for sending strongly-worded cease and desists letters and filing lawsuits when others use its trademarks. Hermès was smeared in the press after filing suit against counterfeiters in Australia, and Chanel has not made many friends in its fight against fakes.  

Well, with a single trademark opposition, Mango has arguably put all of them to shame. The Spanish fast fashion giant waged war against South Korean skincare company, TheFaceShop, earlier this year seeking to block it from registering a trademark containing the word “Mango.”

However, the fast fashion retailer is taking it a bit too far, according to the Singapore Intellectual Property Office, at least, in part, because its name is the same as a common fruit, which could be used to describe – well, cosmetics containing mango ingredients, for one thing – which is exactly what TheFaceShop is trying to do.

On the heels of Mango filing to oppose one of TheFaceShop’s pending trademark applications – a trademark for “Mango Seed” for use on cosmetics that contain mango seed oil – the Intellectual Property Office of Singapore has ruled against Consolidated Artists, the company that holds all of the trademarks associated with the Mango brand.  

While the Singapore IP Office acknowledged that the two parties’ marks shared some similarities (namely, the word “mango”), they are “more dissimilar than similar in totality,” largely because TheFaceShop is not seeking registration for the words “Mango Seed” alone but for “Mango Seed TheFaceShop.”

In siding with TheFaceShop, the IP Office held that “in relation to the likelihood of confusion, there is no risk of misperception of co-branding or any likelihood of confusion in the sense of an economic link between the parties.” And as a result, TheFaceShop should be permitted to have its mark registered despite the existence of the already-registered “Mango” marks in the same class of goods.

TheFaceShop might have won one in this matter, but the validity of its soon-to-be-registered trademark and whether it can file for similar protection in the U.S. is another matter entirely. Because TheFaceShop’s “Mango Seed” products contain mango seed oil, the mark is pretty darn descriptive of the products themselves.

With that in mind, TheFaceShop would have an uphill battle – in the U.S., at least – proving that its otherwise weak trademark has gained secondary meaning amongst consumers, meaning that they have come to see the “Mango Seed” mark as an identifier of TheFaceShop brand. The addition of the “TheFaceShop” to the end of the mark will certainly help.