Leading fashion brands such as Louis Vuitton and Chanel frequently manage to prevent others from using their names for commercial gain. Now Spanish fashion house Mango wants to do the same. Unfortunately, the strategy doesn’t always work. Why not?
Clothing vs cosmetics
As you’d expect, when it comes to clothing Mango is good at stopping others from using its name. After all, it’s a familiar and highly distinctive brand. But that doesn’t mean it can extend the wide- ranging protection to its cosmetic line.
In Singapore, MANGO has as a result failed to stop Mango Seed TheFaceshop from using the word ‘mango’ to denote cosmetics. The word mango, it was ruled, has little or no acquired distinctiveness when applied to cosmetics. It must be regarded as descriptive because it could also refer to a mango scent. The suffix ‘TheFaceshop’ also means consumers won’t readily associate Mango Seed TheFaceShop with the Mango brand.
The fact that both trademarks contain the word Mango and are both applied to cosmetics therefore isn’t sufficient to constitute a trademark infringement. That’s the downside of having a trademark that can be regarded as merely descriptive of certain products. So Mango for clothing is fine – in fact it’s a good strong brand name – but not for cosmetics.