'Dominant feature' test disregarded in WILD GEESE Case

The Bureau of Legal Affairs of the Intellectual Property Office has dismissed an opposition filed by Bacardi & Co Ltd, the owner of the trademark GREY GOOSE, against Lodestar Anstalt's application to register the mark WILD GEESE, despite the fact that both marks cover beers, mineral and aerated water and other non-alcoholic drinks and fruit juices (Case 14-2007-00062, December 14 2007).

Bacardi acquired the trademark GREY GOOSE from winemaker Sidney Frank for $2 billion, the largest amount ever paid for a liquor brand. Lodestar subsequently applied to register the trademark WILD GEESE for similar goods. Bacardi opposed the application on the grounds that Lodestar's mark was similar to its well-known trademark GREY GOOSE and that it was thus likely to mislead consumers into believing that there was a connection between Lodestar's products and Bacardi.

Bacardi argued that WILD GEESE was confusingly similar to its GREY GOOSE mark under Section 155(1) of the Intellectual Property Code, which has adopted the 'dominant feature' test to determine whether there is a likelihood of confusion between two marks. In addition, Bacardi - which was founded on February 4 1862 - argued that the acquisition of the internationally renowned GREY GOOSE trademark had enhanced its own reputation; in contrast, Lodestar's WILD GEESE mark was not well known worldwide.

Although the hearing officer referred to the "predominant words" of rival marks as a basis for determining whether the marks are confusingly similar, she declined to apply the 'dominant feature' test without reason and declared that the "spelling and pronunciation" of GREY GOOSE and WILD GEESE were different.

In reaching this conclusion, the hearing officer disregarded the Supreme Court's decision in McDonald's Corp v LC Big Mak Burger Inc (Case GR 143993, August 18 2004), in which the court held that the 'dominant feature' test has been codified in the Intellectual Property Code. The Supreme Court rejected the 'holistic test', which takes into account certain differences between the marks. The Supreme Court held that the courts should give more weight to the dominant features of the marks and ignore minor differences (for further details please see "McDonald's swallows up BIG MAK infringer - at last").

The hearing officer's decision illustrates the fact that the Bureau of Legal Affairs of the Intellectual Property Office tends to follow its own approach in determining whether trademarks are confusingly similar, thereby disregarding binding Supreme Court precedent. This is likely to lead to inconsistencies in trademark oppositions and infringement cases.

Vicente B Amador, SyCip Salazar Hernandez & Gatmaitan, Manila