Ever wondered about the IP strategy behind the scenes before foreign brands launch in Singapore? We unveil the trade mark foresight behind a successfully planned launch.

Chick-fil-A is coming to Singapore

Chick-fil-A (pronounced chick-fil-ay), the third largest restaurant chain in the United States, is renowned for its iconic pressure-cooked chicken sandwich, signature waffle fries and famous dipping sauce.

So far so normal, but despite being closed on Sundays, the average non-mall franchised Chick-fil-A restaurant reportedly takes around US$8.7 million in sales annually, more than twice compared to the average franchised McDonald’s location open 7 days a week.

What is in its secret sauce? This might come as a surprise, but there is one stand-out ingredient: Friendly service. Chick-fil-A staff are specifically trained to follow the chain's "Core 4" values: Create eye contact, share a smile, speak with a friendly tone, and always say, "My pleasure."

This deceptively simple point of difference makes it stand out in a crowded marketplace. Besides exceptional customer service, the family-owned company has built a reputation for meticulous quality control and a strong brand identity. 

Chick-fil-A has set its sights on Singapore, which is in the running to become its first international expansion outside the North American continent. The company has reportedly set up a head office and is already recruiting for training positions.

The fast food landscape in Singapore has seen a revolving door of US chains like Shake Shack, Five Guys, A&W, Popeyes, Taco Bell, Wendy’s (and the highly anticipated In-N-Out pop-up) among others, but can Chick-fil-A kill them all with kindness?

Trade Mark Foresight: A Recipe for Future Domination

Interestingly, Chick-fil-A has had Singapore in its sights for over 30 years – their first local trade mark was registered in 1993.

In preparation for their entry into the Singapore market, Chick-Fil-A has been strategically securing trade marks. At That.Legal LLC, we call this strategy for pre-emptive IP protection, Trade Mark Foresight. 

Some of Chick-fil-A’s marks were registered more recently (2016-2021) but some were first registered in 1993 (and continuously renewed since then). This future-oriented approach offers our clients several advantages to control their brand identity and future endeavours: 

Brand Defence: Protects brand identity from being used by competitors and hinders competitors from establishing themselves in potential markets. By securing trade marks for variations of your brand name, slogans, or potential future products, companies safeguard their intellectual property. This prevents competitors from capitalising on your brand recognition and potentially confusing consumers.

Planning for Growth: Allows companies to lay groundwork for future endeavours. For example, Chick-fil-A registering "Chick-fil-A Express" suggests they might be considering venturing into smaller format stores or express service options.

Investment: Pre-emptive registration demonstrates a company's long-term vision and commitment to specific markets or product lines. This can be attractive to investors or potential franchise partners.

Globalisation: For companies aiming to enter international markets, securing trade marks early on can prevent local businesses from owning the rights to their brand name.

The consequence of not registering your trade mark in a future intended market can be significant. Don Don Donki is a prime example. 

The Consequences of a Lack of Trade Mark Foresight

Don Quijote is a Japanese grocery store chain that expanded its operations to Singapore in 2017. However, the company was forced to rebrand when they entered Singapore partly because of an existing Don Quijote trade mark belonging to a local Spanish restaurant.

The consequences of Don Quijote’s oversight were far-reaching – all subsequent Southeast Asian stores were then branded as Don Don Donki instead of Don Quijote, including those found in Hong Kong, Thailand, Taiwan, Malaysia, and Macau. 

Interestingly, the Don Quixote Spanish restaurant unfortunately closed in March 2022.

Preventing Non-Use Revocation

While registering trade marks in a potential market holds advantages, failure to actively use them within 5 years can lead to cancellation. This is to prevent companies from stockpiling trade marks without genuine business intent.

Technically, it would have been possible for someone to initiate a non-use revocation action against the Chick-Fil-A trade marks that have been registered since 1993. To defend against such an action or such allegations, Chick-Fil-A would need to prove that they had put those marks to genuine use or had proper reasons for their non-use – which seems difficult given the lack of any previous Chick-Fil-A presence in Singapore.   

In-N-Out Burger, another American fast-food chain without a physical presence in Singapore so far, offers a prime example of how to avoid non-use revocation. In-N-Out’s trade marks were registered in 2010. However, in 2012, 2014, and 2019, In-N-Out strategically utilised pop-up restaurants to demonstrate active use of their trade marks. 

To safeguard their trade marks, companies without a current physical presence in Singapore should consider:

Pop-up restaurants: Pop-ups have the dual benefit of testing the market and maintaining trademark activity.

Licensing: Partnering with existing Singaporean businesses to offer menu items under existing trade marks could be another option.

While early trade mark registrations provide a strategic advantage, active use is crucial to maintain ownership.

Trade Marks Offer Strategic Hints Into a Company’s Future

Chick-fil-A's diverse trade mark portfolio offers a glimpse into their long-term vision. A trade mark portfolio might signify:

Market Expansion: Singapore could be the first step in a wider Asian expansion strategy.

Product Diversification: In the United States, Chick-fil-A’s “Holiday by Chick-fil-A” trade mark suggests that they might be venturing beyond the restaurant business and into retail gift shops.

New Business Models: “Chick-fil-A Express” has not been registered by the company yet, but such a mark would suggest an exploration of new restaurant formats or express service options.

Chick-fil-A's strategic trade marks, coupled with their focus on quality and customer service, paves the way for a promising future in Singapore and other new markets. 

As a business strategy, trade marks can be registered defensively, preventing others from using similar names, without a concrete plan for immediate use. While trade mark registration does not guarantee these plans will be pursued, analysing a company's registered trade marks can offer valuable insights into their potential growth plans.

At That.Legal LLC, we understand that intellectual property isn't just about protection, it's about fueling your creative vision. We go beyond simply defending your rights – we become your strategic partners, working alongside you to unlock the full potential of your ideas. 

Our team of legal experts bring both deep legal knowledge and entrepreneurial, creative thinking to the table. Contact us today to unlock your Trade Mark Foresight.

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Disclaimer

This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. That.Legal LLC represents neither party in this dispute and is not privy to any confidential information pertaining to the parties. All facts stated herein are compiled from publicly available sources. If you require any advice or information, please speak to a practising lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of That.Legal LLC accepts or assumes responsibility, or has any liability, to any person in respect of this article.