CARANDANG, J.:
(a) extent and exclusivity of the worldwide registrations of the mark JAMES BOND; (b) length and extent of use of JAMES BOND worldwide; (c) the degree of the inherent or acquired distinction of the mark; (d) the extent and promotion of the mark JAMES BOND; and (e) the commercial value attributed to the mark in the word.[52]Considering the commercial value of the James Bond movies, the James Bond character transformed into a well-known trademark with goodwill of $5 billion in sales of merchandise.[53]
AGENT BOND is non-registrable because it nearly resembles the registered mark, JAMES BOND and is likely to deceive or cause confusion. |
Section 123. Registrability. 123.1. A mark cannot be registered if it:Following Section 123.1 (d)(iii), AGENT BOND was properly denied registration, specifically because AGENT BOND nearly resembles JAMES BOND as to be likely to deceive or cause confusion. This confusion can exist even if the products bearing the competing marks are dissimilar since item (iii) of the said section does not require that the competing marks belong to the same nor to closely related goods or services. The crux of the controversy under this section is ascertaining the existence of a likelihood of confusion.
x x x x
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
Section 5. Likelihood of confusion in other cases. - In determining whether one trademark is confusingly similar to or is a colorable imitation of another, the court must consider the general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade, and giving the attention such purchasers usually give in buying that class of goods. Visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace must be taken into account. Where there are both similarities and differences in the marks, these must be weighed against one another to determine which predominates.The abovementioned criteria, which Associate Justice Caguioa refers to as the multifactor test[64] in the recent En Banc case of Kolin Electronics, Inc. v. Kolin Philippines International, Inc.,[65] are present in this case.
In determining likelihood of confusion between marks used on non-identical goods or services, several factors may be taken into account, such as, but not limited to:
a) the strength of plaintiff's mark;
b) the degree of similarity between the plaintiff's and the defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.
"Colorable imitation" denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him or her to purchase the one supposing it to be the other.
Absolute certainty of confusion or even actual confusion is not required to accord protection to trademarks already registered with the IPO.
Suyen's allegation that James Bond was never referred to as agent bond in any of the franchise's 22 films takes a narrow-minded approach to legal hermeneutics. This literal approach was never contemplated in cases of trademark infringement. By using the terms "likelihood of confusion," the law recognizes the reality that trademark infringement cases delve into a wide spectrum of instances where a mark can ride on the goodwill and reputation of a business or might lead the purchaser to assume a connection between the competing marks.
TRADEMARK
(registration number) MARK INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES STATUS/REMARKS SECRET AGENT
(4149) SECRET AGENT Cosmetics, namely, under makeup moisturizer, foundation, moisturizer, eye cream, body cream, body lotion and concealer. Removed from Register for non-filing of 5th DAU (Declaration of Actual Use) MIGHTY BOND[67]
(501432) MIGHTY BOND Self-adhesives tapes for stationery or household purposes; gums [adhesives] for stationery or household purposes; gluten [glue] for stationery or household purposes; glue for stationery or household purposes; pastes for for stationery or household purposes; adhesive tapes for stationery or household purposes; adhesive bands for stationery or household purposes; adhesives [glues] for stationery or household purposes; starch paste [adhesive] for stationery or household purposes, all included in Class 16 Registered ROYAT BOND AND DEVICE (image supposed to be here) Paper, cardboard; printed matter; bookbinding material; photographs; stationary; adhesives for stationary or household purposes; paint brushes; typewriters; plastic materials for packaging (not included in other classes); printers' type; printing blocks Removed from register for non-filing of 5th DAU SURE-BOND
(14544) SURE-BOND Contact cement; adhesives and glues for industrial and commercial purposes Registered BOND STREET
(507514) BOND STREET Tobacco, raw or manufactured; tobacco products; cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); electronic cigarettes; tobacco products for the purpose of being heated; electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; liquid nicotine solutions for use in electronic cigarettes; smokers' articles, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches Registered
G-BOND
(059962) G-BOND Contact cement Renewed CONTACT BOND
(502506)
CONTACT BOND Adhesives used in industry class 1 Registered SPIDER BOND SPIDER BOND Industrial adhesives Removed from register for non-filing of DAU GOLD BOND
(2840)
GOLD BOND Tobacco, whether manufactured or unmanufactures; smoking tobacco; Pipe tobacco; hand rolling tobacco; chewing tobacco; cigarettes; cigars; cigarillos; snuff; snus; lighters; cigarette papers; cigarette tubes and matches Removed from register for non-filing of DAU STAR BOND
(4694) STAR BOND Adhesives used in industry For vallidation
The use of AGENT BOND suggests a connection with the well-known mark, JAMES BOND, to the damage of Danjaq. |
SECTION 123. Registrability. 123.1. A mark cannot be registered if it:Associate Justice Caguioa appositely notes that the elements under Section 123.1 (f) are distinct from those under Section 123.1 (d) insofar as concept of damages are concerned. Under Section 123.1 (d), the damage is caused by a likelihood of confusion to the targeted buyers between the competing marks whereas damages under Section 123.1 (f) are those caused to the interests of the registered owner of a well-known mark.
x x x x
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use[.]
RULE 103. Criteria for Determining Whether a Mark is Well-known. - In determining whether a mark is well-known, the following criteria or any combination thereof may be considered:As what Associate Justice Caguioa underscores, "[w]hile the CA may have used different criteria, it is clear that its conclusion that the 'JAMES BOND' mark is well-known is amply supported by substantial evidence on record."[74] Particularly, the certificates of registration of the JAMES BOND and other related "Bond" marks in at least 32 countries, the fame of the James Bond movie franchise (as evinced in the webpage of the internet movie database "All-Time Non-USA Box Office"),[75] and Suyen's own admission of the popularity of the fictional character, James Bond, to the extent that parodies were created imitating his persona.
(a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of ay promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
(b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
(c) the degree of the inherent or acquired distinction of the mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and
(l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that the mark is a well-known mark.
Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception. Subject to the principles of equity, the owner of a famous mark is entitled to an injunction "against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." This is intended to protect famous marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it.[77]As pointed out by Associate Justice Caguioa, our laws and jurisprudence have not yet elaborated on the two kinds of trademark dilution (i.e., dilution by tarnishment and dilution by blurring) stated in Levi Strauss & Co. However, the same case cites American Jurisprudence, which referred to American Law distinguishing between the two, that is:
(B) For purposes of paragraph (1), "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:Echoing Associate Justice Caguioa's discussion, the elements of dilution by blurring are present here:
(i) the degree of similarity between the mark or trade name and the famous mark.
(ii) the degree of inherent or acquired distinctiveness of the famous mark.
(iii) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) the degree of recognition of the famous mark.
(v) whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) any actual association between the mark or trade name and the famous mark.
(C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.[78] (Emphasis omitted)
• Factor (i) has already been established x x x involving the Dominancy Test to show resemblance of the marksAs a result of the abovementioned findings, it is clear that AGENT BOND is non-registrable under Section 123.1, paragraphs (d) and (f).
• Factors (ii) and (iv) are already satisfied by the CA's pronouncement that "JAMES BOND" is well-known
• Factor (v) is established by Suyen's admission that there is a mental connection created between "AGENT BOND" and the well-known "JAMES BOND" mark.[79]
The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and the merit of his wares or services. Experience has demonstrated that when a well-known trade-mark is adopted by another even for a totally different class of goods, it is done to get the benefit of the reputation and advertisements of the originator of said mark, to convey to the public a false impression of some supposed connection between the manufacturer of the article sold under the original mark and the new articles being tendered to the public under the same or similar mark. As trade has developed and commercial changes have come about, the law of unfair competition has expanded to keep pace with the times and the element of strict competition in itself has ceased to be the determining factor. The owner of a trademark or trade-name has a property right in which he is entitled to protection, since there is damage to him from confusion of reputation or goodwill in the mind of the public as well as from confusion of goods.[81]Thus, "[t]he objects of trademark are to point out distinctly the origin or ownership of the articles to which it is affixed, to secure him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill"[82] and to allow the original owner of the mark to expand his/her/its business without the fear of a second user freely riding on the original owner's goodwill.
In its Answer,[9] Suyen claims that it has been doing business under its famous BENCH trademark, and one of its businesses is a beauty salon called "FIX Bench Salon".[10] Suyen claims that, prior to the opening of these salons, it had already been selling several hair products/styling products under the "FIX" trademark.[11] One of its products is a styling gum bearing the mark "AGENT BOND" since 2005,[12] and Suyen claims that it is "a fanciful coined name associated with styling gum x x x making reference to the function of the product."[13] Supposedly, the word "AGENT" is used to convey that the product is a device, while "BOND" relates to the function of the device, and certainly not to confuse the public as to the origin of the product.[14] Claiming that its "AGENT BOND" mark has earned its own goodwill and that it continues to exert efforts to promote this mark,[15] Suyen denies that it relied on the goodwill of Danjaq's marks and states that there has been no confusion.[16] Suyen argues in the main that the opposition should be denied because there is no likelihood of confusion between "AGENT BOND" and "JAMES BOND"[17] and Danjaq's BOND marks are not well-known.[18]
Mark JAMES BOND[7] BOND GIRL 007[8]Status Registered Removed for non-filing of the 5th DAU Filing Date August 19, 2003 November 14, 2007 Registration October 22, 2007 January 12, 2009 Class/es 9,41 3 Goods/Services 9: SCIENTIFIC, NAUTICAL, SURVEYING AND ELECTRICAL APPARATUS AND INSTRUMENTS (INCLUDING WIRELESS), PHOTOGRAPHIC, CINEMATOGRAPHIC,OPTICAL, WEIGHING,MEASURING,SIGNALLING CHECKING (SUPERVISION), LIFE SAVING AND TEACHING APPARATUS AND INSTRUMENTS; COIN OR COUNTER-FREED APPARATUS; TALKING MACHINES CASH REGISTERS; CALCULATING MACHINES; FIRE-EXTINGUISHING APPARATUS.
41: EDUCATION AND ENTERTAINMENT. (Emphasis and underscoring supplied) FRAGRANCE, COSMETIC AND TOILETRY PRODUCTS, NAMELY, EAU DE TOILETTE, EAU DE PARFUM, BODY LOTION, BODY POWDER, SHOWER GEL, FRAGRANCED BODY SPRAY, LIQUID SOAP, FOAM BATH, LIP BALM, HAND CREAM, LIPSTICK.
SECTION 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language. For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of such extension. The Regulations shall fix the maximum period of time within which to file the opposition. (Sec. 8, R.A. No. 165a) (Emphasis supplied)Some forms of "damage" may be found in Section 123.1[21] of the IP Code, which provides what marks may not be registered. As correctly held by the ponencia, there are two aspects of damage caused to Danjaq and these are described in Section 123.1, paragraphs (d) and (f) of the IP Code.
SECTION 123. Registrability. - 123.1. A mark cannot be registered if it:In 2011, the Court laid down the criteria for determining the existence of likelihood of confusion in the Rules of Procedure for Intellectual Property Rights Cases,[22] viz.:
x x x x (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) The same goods or services, or (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion[.](Emphasis supplied)
The provision was reproduced in the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases,[23] evincing the Court's intent to make this the standard method of determining likelihood of confusion.Rule 18
x x x x
SEC. 4. Likelihood of confusion in other cases. - In determining whether one trademark is confusingly similar to or is a colorable imitation of another, the court must consider the general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods. Visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace must be taken into account. Where there are both similarities and differences in the marks, these must be weighed against one another to see which predominates.
In determining likelihood of confusion between marks used on nonidentical goods or services, several factors may be taken into account, such as, but not limited to:
a) the strength of plaintiff's mark;
b) the degree of similarity between the plaintiff's and the defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.
x x x x (Italics in the original; emphasis supplied)
In its Petition, [Kolin Electronics Co., Inc. (KECI)] squarely raises the issue of likelihood of confusion, arguing that [Kolin Philippines International, Inc.'s (KPII)] trademark should not be registered based on, among others, Section 123.1 (d) of the IP Code, which reads:The BLA,[26] ODG,[27] and CA[28] uniformly found that confusion is likely if "AGENT BOND" is allowed registration, despite the fact that the covered goods/services of the marks are unrelated, and the ponencia correctly affirms this consistent finding.
x x x x
In determining likelihood of confusion - which can manifest in the form of "confusion of goods" and/or "confusion of business" - several factors may be taken into account, such as:
a) the strength of plaintiff's mark; b) the degree of similarity between the plaintiff's and the defendant's marks; c) the proximity of the products or services; d) the likelihood that the plaintiff will bridge the gap; e) evidence of actual confusion; f) the defendant's good faith in adopting the mark; g) the quality of defendant's product or service; and/or h) the sophistication of the buyers.
These criteria may be collectively referred to as the multifactor test. Out of these criteria, there are two which are uniformly deemed significant under the Trademark Law and the IP Code: the resemblance of marks (the degree of similarity between the plaintiff's and the defendant's marks) and the relatedness of goods or services (the proximity of products or services). Nevertheless, the other factors also contribute to the finding of likelihood of confusion, as will be discussed.[25] (Emphasis and underscoring supplied)
The factor on "strength of plaintiffs mark" pertains to the degree of distinctiveness of marks, which can be divided into five categories enumerated in decreasing order of strength below:Danjaq's "JAMES BOND" is a coined or fanciful mark and, as aptly mentioned by the ponencia, this highly distinctive mark is popular and has name-recall.[31]
1) Coined or fanciful marks - invented words or signs that have no real meaning (e.g., Google, Kodak). These marks are the strongest and have the greatest chance of being registered.
2) Arbitrary marks - words that have a meaning but have no logical relation to a product (e.g., SUNNY as a mark covering mobile phones, APPLE in relation to computers/phones).
3) Suggestive marks - marks that hint at the nature, quality or attributes of the product, without describing these attributes (e.g., SUNNY for lamps, which would hint that the product will bring light to homes). If not considered as bordering on descriptive, this may be allowed.
4) Descriptive marks - describe the feature of the product such as quality, type, efficacy, use, shape, etc. The registration of descriptive marks is generally not allowed under the IP Code.
5) Generic marks - words or signs that name the species or object to which they apply (e.g., CHAIR in relation to chairs). They are not eligible for protection as marks under the IP Code.[30]
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement. If the competing trademark contains the main, essential or dominant features of another, and confusion or deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers.[35]Visually, "JAMES BOND" and "AGENT BOND" appear to contain two words and both marks commonly feature the word "BOND". The words appear to be of equal prominence/dominance and there is no peculiar stylization to emphasize either word in "JAMES BOND" or "AGENT BOND". When only a visual examination is made, it may be correct to state that "the mere use of a common word or element x x x is not sufficient to conclude confusing similarity,"[36] as Suyen argues. In other words, the visual similarity between "AGENT BOND" and "JAMES BOND" is merely average. However, as mentioned, the Dominancy Test also relies on the aural comparison, connotative comparison, and overall impressions between the marks to form a conclusion on their resemblance.
In this instance, the Appellant has 'millions of terms and combinations of letters and designs available' for its use on its products. Why it insists on using AGENT BOND that resembles, is similar and is closely associated to JAMES BOND betrays its intention to take advantage of the goodwill generated by [Danjaq's] mark. x x x[42] (Emphasis supplied)Lastly, the factor on the likelihood that the plaintiff will bridge the gap, i.e., the factor on normal potential expansion of business, also finds application here. The discussion in Sta. Ana v. Maliwat,[43] which was cited by ODG in its decision, is instructive:
Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties, but extends to all cases in which the use by a junior appropriator of a trade mark or tradename is likely to lead to a confusion of source, as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field (see 148 ALR 56 et seq; 52 Am Jur. 576) or is in any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his business (v. 148 ALR, 77, 84; 52 Am. Jur. 576, 577). It is on this basis that the respondent Director of Patents adverted to the practice "among local tailors and haberdashers to branch out into articles of manufacture which have some direct relationship" x x x "to garments or attire to complete one's wardrobe". Mere dissimilarity of goods should not preclude relief where the junior user's goods are not too different or remote from any that the owner would be likely to make or sell; and in the present case, wearing apparel is not so far removed from shoes as to preclude relief, any more than the pancake flour is from syrup or sugar cream (Aunt Jemima Mills Co. vs. Rigney & Co., LRA 1918 C 1039), or baking powder from baking soda (Layton Pure Food Co. vs. Church & Co., 182 Fed. 35), or cosmetics and toilet goods from ladies' wearing apparel and costume jewelry (Lady Esther Ltd. vs. Lady Esther Corset Shoppe, 148 ALR 6). x x x[44] (Emphasis and underscoring supplied)Based on the disquisition above, the factor on normal potential expansion of business looks into the plausibility that the complaining party's business may be expanded to include the goods/services covered by the other party.
RULE 204. Period to File Declaration of Actual Use. - The Office will not require any proof of use in commerce upon filing of an application. All applicants or registrants shall file a Declaration of Actual Use (DAU) of the mark with evidence to that effect and upon payment of the prescribed fee on the following periods:From the above provision, it can easily be inferred that if Danjaq was not able to file any evidence of use of its mark, the mark would have been refused registration/removed from the register even before reaching the period when the 5th year DAU had to be filed based on the disputable presumption "[t]hat official duty has been regularly performed."[46]
(a) Within three (3) years from the filing date of the application;
(b) Within one (1) year from the fifth anniversary of the registration;
(c) Within one (1) year from date of renewal;
(d) Within one (1) year from the fifth anniversary of each renewal;
otherwise, the application shall be refused registration or the registered mark shall be removed from the Register by the Director. (Italics in the original; emphasis and underscoring supplied)
[Danjaq] has actually sold products bearing the marks JAMES BOND and BOND GIRL 007 in the Philippines through its distributors and through various stores and media in the Philippines. Goods in International Class 3 under the BOND GIRL 007 mark were first sold in the Philippines in 2008 and are currently available in the Philippines for purchase under the mark. Attached as Annex "C" is documentary evidence of the BOND GIRL 007 mark as used in commerce in the Philippines.[49]Indeed, Annex "C" of the Affidavit referred to is the Royalty Report Form[50] of Bond Girl for the period October 2008 to December 2008.
SECTION 123. Registrability. - 123.1. A mark cannot be registered if it:A comparison of Section 123.1 (d) and (f) would reveal that they differ in terms of their elements.
x x x x
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph,[51] which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;
x x x x
(1) | the opposer's registered mark is considered by a competent authority of the Philippines to be well-known internationally and in the Philippines; |
(2) | there is confusing similarity/trademark resemblance between the opposed mark and the well-known mark, or that the opposed mark is a translation of the well-known mark, notwithstanding that the opposed mark is being used for dissimilar goods/services; |
(3) | the use of the opposed mark in relation to its goods or services would indicate a connection between the goods or services of the opposed mark and the owner of the registered well-known mark; and |
(4) | that the use of the opposed mark will likely damage the interest of the owner of the well-known mark. |
(1) | The opposer's registered mark is considered by a competent authority of the Philippines to be well-known internationally and in the Philippines |
RULE 101. Definitions. - Unless otherwise specified, the following terms shall have the meaning provided in this Rule:The Rules and Regulations also provides the criteria used to determine whether a mark is well-known, viz.:
x x x x
(d) "Competent authority" for purposes of determining whether a mark is well-known, means the courts, the Director General and the Director of the Bureau of Legal Affairs.
x x x x (Italics in the original; emphasis supplied)
RULE 103. Criteria for Determining Whether a Mark is Well-known. - In determining whether a mark is well-known, the following criteria or any combination thereof may be considered:In Sehwani, Incorporated v. In-N-Out Burger, Inc.,[53] the Court agreed with the finding that a mark is considered well-known because it satisfies criteria (a), (d), and (e) based on its worldwide registrations and advertisements, among others, viz.:
(a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; (b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies; (c) the degree of the inherent or acquired distinction of the mark; (d) the quality-image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world; (f) the exclusivity of registration attained by the mark in the world; (g) the extent to which the mark has been used in the world; (h) the exclusivity of use attained by the mark in the world; (i) the commercial value attributed to the mark in the world; (j) the record of successful protection of the rights in the mark; (k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and, (l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that the mark is a well-known mark. (Emphasis and italics in the original)
[BLA] Director Beltran-Abelardo found that:Here, based on criteria (a) to (e), the CA found that "JAMES BOND" is a well-known mark.[55] A review of the records shows that the CA's conclusion of the well-known status of the "JAMES BOND" mark is suppo11ed by substantial evidence."Arguing mainly that it is the owner of an internationally well-known mark, complainant presented its United States trademark registrations, namely: United States Trademark Registration No. 1,514,689 for the mark 'IN-N-OUT Burger and Arrow Design' under class 25 dated November 29, 1988 for the shirts (Exhibit 'L'); United States Trademark Registration No. 1,528,456 for the mark 'IN-N-OUT Burger and Arrow Design' under Class 29, 30, 32 and 42 dated March 7, 1989 for milk and french-fried potatoes for consumption on or off the premises, for hamburger sandwiches, cheeseburger sandwiches, hot coffee and milkshakes for consumption on or off the premises, lemonade and softdrinks for consumption on and off the premises, restaurant services respectively (Exhibit 'M'); US Trademark Registration No. 1,101,638 for the mark 'IN-N-OUT' under Class No. 30 dated September 5, 1978 for cheeseburgers, hamburgers, hot coffee and milkshake for consumption on or off premises (Exhibit 'N'); US Trademark Registration No. 1,085,163 'IN-N-OUT' under Class 42 dated February 7, 1978 for Restaurant Services and carry-out restaurant services (Exhibit 'Q'). For its mark 'Double-Double' it submitted Certificates of Registration of said mark in several countries (Exhibits 'MM' and submarkings)."We find the foregoing findings and conclusions of Director Beltran-Abelardo fully substantiated by the evidence on record and in accord with law.[54] (Emphasis and underscoring supplied)
x x x x
Moreover, complainant also cites our decision in Inter Partes Case No. 14-1998-00045 dated 12 September 2000, an opposition case involving the mark "IN-N-OUT" between IN-N-OUT Burger (herein complainant) and Nestor SJ Bonjales where we ruled:"And last but not the leas[t], the herein Opposer was able to prove substantially that its mark 'IN-N-OUT Burger and Arrow Design' is an internationally well known mark as evidenced by its trademark registrations around the world and its comprehensive advertisements therein."The nub of complainant's reasoning is that the Intellectual Property Office as a competent authority had declared in previous inter partes case that "IN-N-OUT Burger and Arrow Design" is an internationally well[-]known mark.
In the aforementioned case, we are inclined to favor the declaration of the mark "IN-N-OUT" as an internationally well-known mark on the basis of "registrations in various countries around the world and its comprehensive advertisements therein."
The Ongpin Memorandum dated 25 October 1983 which was the basis for the decision in the previous inter partes case and which set the criteria for determining whether a mark is well known, takes into consideration the extent of registration of a mark. Similarly, the implementing rules of Republic Act 8293, specifically Section (e) Rule 102 Criteria for determining whether a mark is well known, also takes into account the extent to which the mark has been registered in the world in determining whether a mark is well known.
Likewise, as shown by the records of the instant case, Complainant submitted evidence consisting of articles about "IN-N-OUT Burger" appearing in magazines, newspapers and print-out of what appears to be printed representations of its internet website (www.innout.com) (Exhibits "CCC" to "QQQ"), as well as object evidence consisting of videotapes of famous celebrities mentioning IN-N-OUT burgers in the course of their interviews (Exhibits "EEEE" and "FFFF") showing a tremendous following among celebrities.
The quality image and reputation acquired by the complainant's IN-N-OUT mark is unmistakable. With this, complainant's mark have met other criteria set in the Implementing Rules of Republic Act 8293, namely, 'a' and 'd' of Rule 102, to wit:
x x x x
Hence, on the basis of evidence presented consisting of worldwide registration of mark "IN-N-OUT" almost all of which were issued earlier than the respondent's date of filing of its application and the subsequent registration of the mark "IN-N-OUT" in this Office, as well as the advertisements therein by the complainant, this Office hereby affirms its earlier declaration that indeed, the mark "IN-N-OUT BURGER LOGO" is an interna[tiona]lly well-known mark.
While the CA may have used different criteria, it is clear that its conclusion that the "JAMES BOND" mark is well-known is amply supported by substantial evidence on record.
(a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; x x x x (c) the degree of the inherent or acquired distinction of the mark; (d) the quality-image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world; x x x x (g) the extent to which the mark has been used in the world; x x x x (i) the commercial value attributed to the mark in the world[.][58]
(2) | There is confusing similarity/trademark resemblance between the opposed mark and the well-known mark, or that the opposed mark is a translation of the well-known mark, notwithstanding that the opposed mark is being used for dissimilar goods/services |
(3) | The use of the opposed mark in relation to its goods or services would indicate a connection between the goods or services of the opposed mark and the owner of the registered well-known mark |
x x x Parodies are gimmicks that are appreciated and well recognized internationally as humorous twists used to marke[t] products. x x x In cases of parody, American courts have concluded that intentional similarity is unavoidable considering that the keystone of parody is imitation. x x xUnlike in the United States, our laws and jurisprudence do not yet recognize parody as a viable defense against infringement. In any event, trademark infringement is not the main issue here, but the damage caused to the interests of the owner of the well-known mark.
x x x x
x x x This Honorable Court must admit that "AGENT BOND" is a fanciful and funny play with words that may suggest some reference to James Bond, but certainly does not lead to an intelligent purchaser to believe that it is the product being sold or marketed by the creators or producers of James Bond or James Bond movies. x x x[60]
(4) | That the use of the opposed mark will likely damage the interest of the owner of the well-known mark |
Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception. Subject to the principles of equity, the owner of a famous mark is entitled to an injunction "against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." This is intended to protect famous marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it.[63] (Emphasis and underscoring supplied)The discussion above suggests two kinds of dilution: blurring and tarnishment. Our laws and jurisprudence have not yet elaborated on these concepts, but in Levi Strauss & Co., the Court made reference to American jurisprudence, which in turn cited the American law against dilution.[64]
x x x xThe elements of "dilution by blurring" are present here:
(B) For purposes of paragraph (1), "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the
following:
(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.
(C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.[65] (Emphasis supplied)
(a) | Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; | |
(b) | Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; | |
(c) | Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow; | |
(d) | Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: | |
(i) | The same goods or services, or | |
(ii) | Closely related goods or services, or | |
(iii) | If it nearly resembles such a mark as to be likely to deceive or cause confusion; | |
(e) | Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; | |
(f) | Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use; | |
(g) | Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; | |
(h) | Consists exclusively of signs that are generic for the goods or services that they seek to identify; | |
(i) | Consists exclusively of sign or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; | |
(j) | Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; | |
(k) | Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; | |
(l) | Consists of color alone, unless defined by a given form; or | |
(m) | Is contrary to public order or morality. |
[24] G.R. No. 228165, February 9, 2021.Rule 18
x x x x
SEC. 5. Likelihood of confusion in other cases. - In determining whether one trademark is confusingly similar to or is a colorable imitation of another, the court must consider the general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade, and giving the attention such purchasers usually give in buying that class of goods. Visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace must be taken into account. Where there are both similarities and differences in the marks, these must be weighed against one another to determine which predominates.
In determining likelihood of confusion between marks used on non-identical goods or services, several factors may be taken into account, such as, but not limited to:
a) the strength of plaintiff's mark;
b) the degree of similarity between the plaintiff's and the defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.
"Colorable imitation" denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him or her to purchase the one supposing it to be the other.
Absolute certainty of confusion or even actual confusion is not required to accord protection to trademarks already registered with the IPO. (Italics in the original, Emphasis supplied)
(a) | the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; |
(b) | the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies; |
(c) | the degree of the inherent or acquired distinction of the mark; |
(d) | the quality-image or reputation acquired by the mark; |
(e) | the extent to which the mark has been registered in the world; |
x x x x (IPOPHL Memorandum Circular No. 17-010, Rule 103.) |
Subject to the principles of equity, the owner of a famous mark is entitled to an injunction "against another person's commercial use in commerce of a mark or trade name, isuch use beoins after the mark has become famous and causes dilution of the distinctive quality of the mark." 15 U.S.C. § 1125(c)(l).[65] 15 U.S. Code § 1125.