Beverly Street restrained from selling counterfeit A&F clothing

By S.S. Selvanayagam

The Colombo High Court issued interim order restraining the D. K. N. International (Pvt) Ltd which is the owner of a chain of Beverly Street retail shops from selling purported counterfeit clothing with the famous American lifestyle trademarks of a Swiss firm.

High Judge M. Samayawardena also issued notice returnable for December 12 on the Defendant D. K. N. International.

 The Plaintiff Abercrombie and Fitch Europe SA of Switzerland initiated legal action under Intellectual Property Act against the Defendant for the alleged selling of counterfeit merchandise with trademarks/logos/device belonging to A&F for which Abercombie and Fitch has the exclusive rights.

Nihal Fernando with Ruchira Anthony instructed by Sudath Perera Associates appeared for the Plaintiff.

Plaintiff states the Defendant is engaged inter alia in the retail business of selling clothes, footwear, headgear and cosmetics and the owner of the retail shop Beverly Street which sells clothes, footwear, headgear and cosmetics.

Plaintiff further states the Abercrombie & Fitch came into existence in 1892 as a partnership between David Abercrombie and Ezra Fitch and for many decades was mainly an elite excursion goods retailer that outfitted wealthy businessmen for their outdoor pursuits.

It continued to expand its business of designing, manufacturing, merchandising, promoting, marketing and retailing its high quality men’s, women’s and kids clothing, footwear, headgear, sporting equipment and personal care products, it said.

Plaintiff states the name Abercrombie & Fitch which has been in use since 1892 is owned by it which also owns the Trademarks “Abercrombie & Fitch”, Abercrombie”, “A&F”  and the device of a moose.

It claims the Abercrombie & Fitch is known today throughout the world for its high quality collegiate inspired casual all American lifestyle brand of clothing and is one of the world leaders in the manufacture of high quality goods.

The trademarks ‘Abercrombie & Fitch’, ‘Abercrombie’, ‘A&F’ and the devise of the moose are registered in the United States Patent and Trademark Office in the name of A & F Trademark Inc. and which trademarks are valid, subsisting and in full force and effect, it maintains.

The trademarks ‘Abercrombie & Fitch’, ‘Abercrombie’, ‘A&F’ and the devise of the moose are registered in its name in more than 10 countries throughout the world including United Kingdom, Japan, Denmark, France, Germany, Spain and Sweden, it claims.

The Plaintiff states that consequent to A & F Trademark Inc applying in Sri Lanka for the registration of trade mark Nos.80003, 70142, 70143, 96591, 96592, 96593, 96595 and 96596, the said trade marks were duly registered in the name of the A & F Trademark Inc and as such A & F Trademark Inc was the registered owner in Sri Lanka of the said trademarks.  

Plaintiff contends that in the aforesaid circumstances, it is the proprietor and/or the registered owner in Sri Lanka of the following trademarks  which are registered in the name of the Plaintiff under class 25 for clothing, footwear and headgear and under class 42 for retail clothing and personal care product store services, mail order catalogue services featuring clothing and personal care products and accessories thereof and under class 03 for bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices.

The Plaintiff states no entity or person in Sri Lanka or anywhere else in the world is entitled to use the aforesaid trademarks and service marks of the Plaintiff for any purpose whatsoever except with the express consent or authority of Abercrombie & Fitch and/or the Plaintiff.

Abercrombie & Fitch and/or the Plaintiff has authorised a few companies operating garment factories in Sri Lanka to apply and/or affix the aforesaid trademarks of the Plaintiff on its behalf for the limited purpose of fulfilling the orders or instructions placed by Abercrombie & Fitch to the said companies for merchandise, components and services, it added.

The apparels so manufactured on the instructions of Abercrombie & Fitch are only for export and not for wholesale or retail trade in Sri Lanka, it maintains.

From the year 2000 over 10 million units have been manufactured by Abercrombie and Fitch in Sri Lanka, it states.

It further states that Abercrombie & Fitch stringently controls the channels of distribution of Abercrombie & Fitch goods and that all goods including apparel manufactured all over the world under the authority of Abercrombie & Fitch is sent to its final destinations in New Albany, Ohio in the United States of America, Hong Kong and Netherlands for distribution. All internet orders are shipped only from Abercrombie & Fitch offices in New Albany, Ohio.

The Plaintiff states that the Defendant is not authorised to offer for sale, sell and/or stock for sale Abercrombie & Fitch goods.

By the Defendant purchasing goods not emanating from Abercrombie & Fitch and offering for sale and/or selling and/or stocking for sale such goods on which marks identical and/or misleadingly resembling and/or confusingly similar to the Plaintiff’s trademarks have been affixed, Defendant is aware and cannot be unaware that the public and the trade would likely to be misled and/or deceived into believing that such goods are the goods of Abercrombie & Fitch, it complains.

The Plaintiff is seeking a permanent injunction from the Court restraining the Defendant  from directly and/or indirectly, continuing to use and/or offer for sale and/or sell and/or stock for sale and/or distribute and/or advertise and/or market and/or promote and/or import into and/or export out of Sri Lanka and/or otherwise deal with goods bearing the said trademarks and/or any mark identical and/or misleadingly resembling and/or confusingly similar to the trademarks and/or service marks of the Plaintiff.