Twin decisions protect GQ marks

In two decisions issued on December 18 and December 21 2007, the Intellectual Property Office of the Philippines has upheld oppositions against the registration of the trademarks GENTLEMEN'S QUINTESSENCE (and G&Q design) and GQ.

Ramon Ong filed two applications for the registration of the marks GENTLEMEN'S QUINTESSENCE (and G&Q design) and GQ.

In the first case, Advance Magazine Publishers Inc opposed the registration of the mark GENTLEMEN'S QUINTESSENCE for belts, wallets, bags and leather products in Class 18 of the Nice Classification, and t-shirts, jeans, briefs, shoes, sandals and footwear in Class 25, on the grounds that the mark applied for contained the dominant and distinctive feature of its registered marks GQ and GQ GENTLEMEN'S QUARTERLY. Advance argued that the mark applied for was likely to mislead the purchasing public into thinking that Ong's products originated from Advance, or were endorsed, sponsored or licensed by it.

The hearing officer sustained the opposition based on the decision of the Supreme Court in McDonald's Corporation v LC Big Mak Burger Inc (Case 143993, August 18 2004). In that case, the Supreme Court held that under Section 155 of the Intellectual Property Code, the 'dominant feature' test must be applied to determine whether two marks are confusingly similar.

Based on this test, the hearing officer held that even if the mark applied for is used only for clothing and leather products, there is still a likelihood of confusion as to the source or origin of the goods. Although Advance's mark is used for magazines, Ong's mark appears on fashion items which may be featured in Advance's magazines.

In the second case, Advance opposed the registration of the mark GQ for services in Class 35 (outlets for clothing apparel, footwear and accessories). The hearing officer declared that Advance's mark GQ is well known under:

• Section 123(1)(e) and (f) of the Intellectual Property Code;
  
  
• Article 6bis of the Paris Convention for the Protection of Industrial Property; and
  
  
• Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights.

The hearing officer held that:

• the mark applied for was identical to the registered mark GQ; and
  
  
• the goods covered by both marks flow through the same channels and cater to the same group of consumers.

Under Section 147 of the code, "in case of use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed". The hearing officer thus upheld the opposition.

Vicente B Amador, SyCip Salazar Hernandez & Gatmaitan, Manila