Wind knocked from sails of NS NORTH SAILS application

In North Sails Group LLC v Tuy (Case 14-2006-00099, December 22 2006), the Bureau of Legal Affairs, the adjudicative branch of the Intellectual Property Office (IPO), has rejected an application to register the mark NS NORTH SAILS (and design) filed by Chua Siong Tuy for goods in Class 9 of the Nice Classification. The bureau held that consumers are likely to confuse it with the internationally well-known marks NS NORTH SAILS (and design) and NORTH SAILS registered in the name of North Sails Group LLC for goods in Classes 9 and 25.

North Sails Group based its NORTH SAILS and NS NORTH SAILS marks on the name of Lowell North, a world renowned sailor and gold medal winner in the 1968 Olympics, and a winner of a record five World Championships in International Class racing. North Sails Group has registered the marks in 42 countries worldwide. It also filed applications for the mark NS NORTH SAILS in the Philippines on June 16 2006.

Although Tuy filed his application on May 19 2003 (some three years earlier than North Sails Group), which allowed him to have priority in the examination process over North Sails Group's own application, the bureau nonetheless rejected Tuy's application based on evidence in the form of sales invoices showing that North Sails Group had used the mark NS NORTH SAILS in the Philippines as early as the year 2000.

The bureau adhered to a long line of Supreme Court decisions that trademark rights are acquired through their actual use in commerce. Priority in filing an application leads only to an earlier examination, but does not ensure the registration of the mark where an opponent successfully proves prior use of its own trademark in commerce. North Sails Group's prior use of its mark in the year 2000 prevailed since it indicated that Tuy had seen the mark NS NORTH SAILS in the Philippines before he applied for the registration of a confusingly similar mark with the IPO.

Vicente B Amador, Sycip Salazar Hernandez & Gatmaitan, Manila