BY MEL SOMERVILLE
A local Bondi business has been involved in a dispute with a United States clothing giant, prompting Waverley Mayor Sally Betts to step in.
Cosmetic and home products business Bondi Wash is fighting over a trademark of the word ‘Bondi’ with US clothing giant Abercrombie & Fitch.
The US retailer (which does not operate in Australia) is the registered owner of trademark for ‘Bondi Beach’ in the US. When Bondi Wash applied to trademark its name in the US they were prevented due to the similarity of the name to that which Abercrombie & Fitch owned.
Waverley Mayor Sally Betts told The Daily Telegraph “It’s an Australian beach so I don’t believe anyone in another country or another country should be able to trademark it.”
“I’m assuming in Australia we are not allowed to trademark New York.
“It’s disappointing because people who run a business in Bondi and have a wonderful product they want to sell in the US, are unable to trademark their own product.”
A statement from Waverley Council said: “The Mayor, Sally Betts has discussed the matter with the office of The Hon Craig Laundy MP, Assistant Minister for Industry, Innovation and Science whose role it is to look after ‘intellectual property’.”
“A letter is in the process of being drafted to Abercrombie and Fitch, asking them to voluntarily relinquish its trademark on Bondi Beach. This letter will be finalised next week.”
An expert in trademark Law from the University of Technology, Sydney, Professor Isabella Alexander said that Waverley Council can always ask A & F to relinquish the mark but that Mayor Betts has got no legal standing to insist upon that “You can just appeal to their good will” Professor Alexander added.
She said: “It’s very difficult for small businesses like Bondi Wash, especially when a company like Abercrombie & Fitch opposes your mark and have more resources and it’s even worse if you’re doing it overseas because you’re not in the jurisdiction, you don’t have the same access to legal help and information. It makes it very difficult to deal with this issue of global branding when you come up against a big company.”
“A & F would probably have Trademark Attorneys working for them who would say no, don’t do it. It would be unlikely to relinquish the trademark unless they weren’t using it anymore.”
The efforts by Waverley Council to assist Bondi Wash in the matter follow a failed challenge by the retailer last year to challenge Abercrombie & Fitch’s claim over the trademark (and similar marks) on the grounds it believed the US company was no longer using the trademark.
In its petition to the US Patent and Trademark Office (USPTO) Bondi Wash stated: “Use of the marks … has been discontinued with the intent not to resume such use. Thus the Registrant has abandoned its trademarks.”
Abercrombie & Fitch did not back down responding: “Abercrombie & Fitch respectfully requests that [Bondi Wash’s] petition for cancellation be dismissed in its entirety, and that registration be denied.”
Last month, Bondi Wash withdrew its petition in the US and is pursuing alternative classification for its trademark in different categories.
Professor Alexander said: “This case illustrates the problem of global branding. You can get your rights secured in one country and then you expand into another market and you find someone else happily operating using a trademark that is similar in name to yours…It’s a consequence of the way that goods now move around the world, crossing boundaries easily and quickly.
Abercrombie & Fitch did have an outlet at Bondi Junction Westfield and one in Melbourne, but exited Australia in 2015 due to falling sales.
Waverley Council’s letter to Abercrombie & Fitch will be finalised this week.
City Hub was contacted by Abercrombie & Fitch after publication of this article. A spokesperson for the company said “Abercrombie & Fitch Co. worked with Bondi Wash on one potential area of concern relating to its US trademark rights, and the matter was fully and amicably resolved. Our resolution with Bondi Wash does not prevent them from selling any products in any country in the world. Bondi Wash remains able to use and register its mark worldwide and, in fact, continues to use its mark and sell its products in the US, Australia and elsewhere. Its US trademark application has been approved by the USPTO and is proceeding to registration.”