Tiffany wraps up opposition to handkerchief mark

Philippines

In Tiffany & Co v Winston Hankies & Needlecraft Company (Case 14-20001-00008), the director of the Bureau of Legal Affairs - a division of the Intellectual Property Office - has upheld the plaintiff's opposition to the registration of a sign featuring the name 'Tiffany' and some Chinese characters for use in relation to handkerchiefs.

In October 1996 local company Winston Hankies & Needlecraft applied to register a sign featuring the name 'Tiffany' and some Chinese characters as a mark for handkerchiefs. New York company Tiffany opposed the registration on the basis of its ownership and prior use of the TIFFANY mark in relation to luxury goods, including scarves and ties. Tiffany argued that:

  • Winston's sign is confusingly similar to its own mark;

  • Tiffany has superior rights as it began using the TIFFANY mark in 1837; and

  • the TIFFANY mark is entitled to protection as a well-known mark under the Paris Convention for the Protection of Industrial Property because the mark is registered in many countries, many retail stores have been established worldwide (including in Manila), catalogues and advertisements featuring Tiffany products are distributed globally, and the flagship store in New York was even featured in the movie Breakfast at Tiffany's.

The director of the Bureau of Legal Affairs applied the 'dominancy' test in determining that Winston's sign is confusingly similar to Tiffany's mark - that is, he concluded that the word 'Tiffany' is the dominant feature of both. The director also held that simultaneous use of this dominant feature would be likely to confuse consumers as to the origin of Winston's handkerchiefs. As a result, the director upheld Tiffany's opposition and denied Winston's application to register the disputed sign.

Kristine Ninotschka P Lacson, SyCip Salazar Hernandez & Gatmaitan, Manila

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