TIFFANY mark reaffirmed as well known in the Philippines

On May 3 2007 the Office of the Director General of the Intellectual Property Office ruled that TIFFANY is an internationally well-known mark belonging to Tiffany & Co which is protected against unauthorized appropriation by third parties, even on goods that are unrelated to those on which Tiffany & Co is using that mark.

The director general's ruling reverses the decision of the director of the Bureau of Legal Affairs (BLA), which dismissed Tiffany & Co's opposition against an application filed by a local trader for the registration and use of the TIFFANY mark for goods in Class 20 of the Nice Classification, including furniture, mirrors and picture frames.

The BLA director declared that TIFFANY was not a well-known mark because it was not one of the listed world-famous marks under the November 20 1980 memorandum of the then minister of trade. Based on this memorandum, which includes the guidelines prescribed in Article 6bis of the Paris Convention for the Protection of Industrial Property she also held that the broader protection available to well-known marks can be invoked only when the sign is used for identical or similar goods.

In reversing the BLA director's decision, the director general relied upon the liberal and protective regime of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) and the IP Code. He categorically held that pursuant to Sections 123.1(e) and (f) and Section 147.2 of the IP Code, TIFFANY should be considered an internationally well-known mark on the basis of its commercial use worldwide for more than a century and the goodwill it has earned among consumers. Since TIFFANY is registered in the Philippines, it cannot under Section 123.1(f) be appropriated and used by other parties, even on goods or services that are dissimilar to those for which the registration has been issued.

The director general relied upon an earlier decision rendered by the BLA director herself dated March 7 2003, which found that TIFFANY has been used for more than 150 years and has, for that reason, long enjoyed a worldwide reputation for the high-quality luxury goods bearing the mark.

The director general expressed surprise that the BLA director had contradicted her earlier decision after determining in 2003 that TIFFANY is a well-known mark internationally and in the Philippines, when Tiffany & Co had proved through substantial evidence in this second case that its TIFFANY mark is well-known internationally and in the Philippines.

The director general further declared that the IP Code, which consolidated and updated the laws of the Philippines on intellectual property, was promulgated in compliance with the country's obligations or commitments under international agreements such as TRIPs. Section 12.3(f) of the IP Code restates the text of Article 16(3) of TRIPs, which expanded the protection of well-known marks to cover goods or services that are dissimilar to those on which Tiffany & Co has been using its mark. Under the current legal regime, the protection covers dissimilar goods or services, since even this use would likely indicate a false connection with Tiffany & Co, which is likely to be damaged by such use.

Vicente B Amador, SyCip Salazar Hernandez & Gatmaitan, Manila