Supreme Court precedent disregarded in opposition action

The Bureau of Legal Affairs of the Intellectual Property Office has dismissed an opposition filed by Advance Magazine Publishers Inc against the application for the registration of the mark VOGUE, VIGOR, VALUE V3 for garments and accessories in Classes 14 and 18 of the Nice Classification (March 16 2009).
Monica Cuya applied for the registration of the mark VOGUE, VIGOR, VALUE V3 for jackets, jeans, belts, shoes, socks, scarves, bags, luggage and fancy jewellery. Advance opposed the application on the grounds that it was the first user of the trademark VOGUE in the United States. Advance also argued that it was the first user of the mark in the Philippines, as the magazine bearing the VOGUE mark has been available in the country for many years. 

In addition, Advance claimed that because Vogue is a fashion magazine, Cuya's use of the VOGUE mark for garments and accessories was likely to cause confusion or deceive the public as to the origin of the goods. Advance further argued that consumers might be misled into believing that Cuya's goods were affiliated to or sponsored by Advance, even though the parties’ goods did not directly compete in the market.
Most importantly, Advance alleged that Cuya's unauthorized appropriation of the term 'vogue' was in itself a form of trademark infringement, as defined in Section 155 of the Intellectual Property Code, since the well-known mark VOGUE was the dominant element of the trademark VOGUE, VIGOR, VALUE V3. 

The Bureau of Legal Affairs dismissed the opposition, thus disregarding the decisions of the Supreme Court in McDonald's Corporation v LC Big Mak Burger Inc (for further details please see "McDonald's swallows up BIG MAK infringer - at last") and McDonald's Corporation v Macjoy FastFood Corporation (for further details please see "Dominancy test approved by Supreme Court"). In those cases, the Supreme Court had held that use of the marks BIG MAK for hamburgers and MACJOY (and design) for food products infringed the registered trademark BIG MAC. The court had applied the dominancy test, which focuses on the similarity of the prevalent features of the trademarks that might cause confusion or deception.
Advance has appealed the decision. It will be interesting to see whether the higher administrative and judicial authorities will sustain the decision of the Bureau of Legal Affairs.
Vicente B Amador, SyCip Salazar Hernandez & Gatmaitan, Manila

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