Owner of IDOL marks successfully prevents registration of RADIO IDOL
Legal updates: case law analysis and intelligence
The Bureau of Legal Affairs of the Intellectual Property Office has upheld FreemantleMedia Limited's opposition against Audio Visual Communications Inc's application for the registration of the mark RADIO IDOL for broadcast media and communications services (June 27 2008).
FreemantleMedia, anticipating the possibility that third parties might seek to cash in on the reputation of its IDOL mark for media services, had applied for the registration of the marks PHILIPPINE IDOL (and design), PHILIPPINE IDOL and PINOY IDOL, which are well known among Philippine TV viewers.
Audio Visual subsequently applied for the registration of the trademark RADIO IDOL in the Philippines. FreemantleMedia opposed the application on the grounds that:
- RADIO IDOL was confusingly similar to FreemantleMedia's IDOL marks; and
- use of the RADIO IDOL mark was likely to mislead consumers into believing that Audio Visual’s services were affiliated with, or sponsored by, FreemantleMedia.
Based on FreemantleMedia’s use and registration of its IDOL marks in over 30 countries worldwide, the Bureau of Legal Affairs concluded that Audio Visual was seeking to take advantage of the reputation of the IDOL marks without having first obtained a licence from FreemantleMedia. The bureau's conclusion was reinforced by the fact that FreemantleMedia had licensed the use of its IDOL marks in several countries (eg, AMERICAN IDOL, AUSTRALIAN IDOL, INDONESIAN IDOL, INDIAN IDOL, SINGAPORE IDOL and MALAYSIAN IDOL).
In addition, the bureau highlighted that, under the Intellectual Property Code, the term 'idol' was considered to be the dominant feature of the IDOL marks. Therefore, use of the mark RADIO IDOL by Audio Visual would have amounted to trademark infringement, notwithstanding the addition of the word 'radio'. According to the bureau, Audio Visual’s use of the RADIO IDOL mark for broadcast media and communications services would have resulted in the misappropriation of the dominant feature of FreemantleMedia’s IDOL marks.
Consequently, the bureau upheld FreemantleMedia’s opposition on the grounds that Audio Visual deliberately intended to free-ride on the reputation of the IDOL marks.
Vicente B Amador, Sycip Salazar Hernandez & Gatmaitan, Manila
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10