In FremantleMedia Limited v Audio Visual Communicators Inc (December 5 2008), the Intellectual Property Office has upheld FremantleMedia Limited's opposition against Audio Visual Communicators Inc's application for the registration of the mark RADIO IDOL (and design).
FremantleMedia and 19 TV Limited
are the creators, producers and distributors of original and copyright-protected entertainment programmes which are broadcast in several countries under the registered IDOL marks. In those countries where the IDOL marks are in commercial use, the dominant element 'idol' is preceded by the name of the country in question.
Audio Visual applied for the registration of the trademark RADIO IDOL (and semi-circular design) in the Philippines for services in Class 38 of the Nice Classification
. FremantleMedia opposed the application on the grounds that Audio Visual's mark was confusingly similar to its IDOL marks.
The Intellectual Property Office acknowledged that FremantleMedia is the owner of the word and figurative mark PHILIPPINE IDOL in the Philippines. It also owns the marks IDOLS, IDOL, POP IDOL, AMERICAN IDOL, AUSTRALIAN IDOL, INDONESIAN IDOL, INDIAN IDOL, SINGAPORE IDOL, MALAYSIAN IDOL, NZ IDOL, CANADIAN IDOL and LATIN AMERICAN IDOL, among others.
Applying the dominant feature test set out by the Supreme Court, the office concluded that Audio Visual's RADIO IDOL mark was confusingly similar to the PHILIPPINE IDOL mark. In both marks, the letters 'D', 'O' and 'L' in the word 'idol' were in lowercase. The only difference was the letter 'I', which was stylized differently in the two marks.
Furthermore, because FremantleMedia’s PHILIPPINE IDOL mark was registered in Class 38, the office held that registration of Audio Visual's mark in the same class was likely to mislead the public as to the source of the services.
Finally, the office reiterated that under Section 123(1) of the code:
"a mark cannot be registered if it is identical to a registered mark belonging to a different proprietor in respect of the same class of goods or services, or closely related goods or services, or if it nearly resembles such mark as to be likely to deceive or cause confusion."
Audio Visual's application was thus rejected.
Vicente B Amador, SyCip Salazar Hernandez & Gatmaitan, Manila