Tatler enforces its 300-year-old mark

In Tatler Publishing Co Ltd v Illustrated Magazine Publishing Co Ltd (Case 3405), the Intellectual Property Office's Bureau of Legal Affairs has ordered the cancellation of the defendant's MANILA TATLER trademark. The bureau held that the mark is confusingly similar to the plaintiff's TATLER mark and the plaintiff has superior rights.

In May 1988 Illustrated Magazine Publishing, a Hong Kong company, registered MANILA TATLER in the Philippines in relation to books and magazines. In 1989 Tatler Publishing, a UK company owned by Condé Nast , instituted cancellation proceedings on the basis of its ownership and prior use of the TATLER mark on similar items. Tatler argued that:

• Illustrated's mark is confusingly similar to its TATLER mark;
  
  
• it has superior rights (based on prior use of the mark) under the Filipino trademark law that was in force in 1988; and
  
  
• its mark is entitled to protection as a well-known mark under the Paris Convention for the Protection of Industrial Property.

Tatler supported these arguments by providing evidence that it has used the TATLER mark since 1709. Although Illustrated claimed that it had used various marks incorporating the word 'Tatler' for an even longer period, it failed to provide evidence of such use.

The Bureau of Legal Affairs ruled in Tatler's favour. Applying a 'dominancy test' enunciated by the Filipino Supreme Court, the bureau's director determined that the two marks are confusingly similar because the word 'Tatler' is the dominant feature of each. Having found confusing similarity between the marks, the director upheld the superior rights of Tatler and ordered the cancellation of Illustrated's registration.

Franco Noel A Manaig, Sycip Salazar Hernandez & Gatmaitan, Manila