FNB owner fails to block Abu Dhabi’s FAB trademark

FirstRand, SA’s biggest banking group by market capitalisation, has tried and failed to bar Abu Dhabi’s leading banks from using the FAB trademark, which it says resembles that of its FNB subsidiary.

FirstRand, valued at nearly R400bn on the local bourse, took umbrage with the name First Abu Dhabi Bank (FAB), saying the abbreviated name resembles that of FNB.

The group initially also challenged the word “First” in First Abu Dhabi Bank but later abandoned that challenge in what judge Mandla Mbongwe described as a wise decision considering that FirstRand cannot by law claim exclusive use of the word “First”.

What remained was for Mbongwe to determine whether FAB shortcuts FNB’s trademark.

FAB was created from a 2017 merger between First Gulf Bank and National Bank of Abu Dhabi, creating the largest bank in the United Arab Emirates (UAE).

FirstRand, which also owns Rand Merchant Bank, WesBank and Ashburton Investments, argued the name FAB breaches trademark laws, particularly class 36, which includes services for insurance, financial, monetary and real estate affairs.

The court documents suggest that FAB, which S&P Global Market Intelligence says has a market capitalisation of $51bn, plans to have a presence in SA.

The UAE group has made two trademark applications as it intends to trade in “banking affairs and services, internet banking services, telebanking services, mobile banking services, banking, home banking” and other services in SA.

FirstRand opposed the application, arguing that the similarities between the trademark sought by FAB and its own registered trade mark, FNB, mean they are likely to be confused.

HEARSAY

Mbongwe found FirstRand’s opposition to have no basis. One of the distinguishing features the judge found was that FAB had a flash red logo and Arabic script. Mbongwe said it is “simply inconceivable” the described elements in the mark proposed by FAB can be ignored.

“The applicants have not demonstrated the infringements they sought to rely on in opposition to the respondent’s trademark registration application,” the judgment reads.

“In fact, I find the opposition unwittingly patronising and speculatory on the grounds that, by their own version, the applicants do not know much about the respondent save the hearsay evidence the founding affidavit is replete of and the suggestion of nonexistent prerequisites for eligibility to apply for the registration of a class 36 trademark,” the judgment reads.

“The applicant clearly has no factual grounding for opposing the respondent’s applications.

“The applicant’s conduct, in the circumstances, has the hallmarks of a drive to thwart lawful competition ... resulting from this and the earlier findings in this judgment, the applicants’ opposition to the respondent’s trademark applications stands to be dismissed.”

FAB in May appointed SAborn banker Lars Kramer as CFO, responsible for overseeing all financial activities, including “groupwide finance, treasury, investor relations and strategy”.

Kramer, who was educated at the University of Cape Town, joined FAB from Netherlandsbased ABN Amro, where he has been finance director since June 2021. He was previously CFO at Hellenic Bank and spent the bulk of his career with ING, where he was CFO for ING Direct, ING Retail Banking Direct and International, and ING Commercial Bank.