Region: Philippines

'Dominant feature' test disregarded in WILD GEESE Case

The Bureau of Legal Affairs of the Intellectual Property Office has dismissed an opposition filed by Bacardi & Co Ltd, the owner of the trademark GREY GOOSE, against Lodestar Anstalt's application to register the mark WILD GEESE. The hearing officer disregarded the 'dominant feature' test established by the Supreme Court in <i>McDonald's Corp v LC Big Mak Burger Inc</i>.

13 March 2008

Twin decisions protect GQ marks

The Intellectual Property Office has upheld oppositions against the registration of the marks GENTLEMEN'S QUINTESSENCE and GQ. Among other things, the hearing officer held that under the 'dominant feature' test established by the Supreme Court, there was a likelihood of confusion between GENTLEMEN'S QUINTESSENCE and the opponent's marks GQ and GQ GENTLEMEN'S QUARTERLY.

04 February 2008

Stiff prison term imposed for imitating JOLLIBEE logo

In <i>People of the Philippines v Chua</i>, the Court of Appeals has not only affirmed the conviction of the defendant for violation of the Intellectual Property Code, but also increased the prison term imposed by the trial court to an indeterminate sentence of two to five years. Among other things, the court held that the defendant's JOLILBEE trademark "practically duplicated" Jollibee Food Corporation's JOLLIBEE mark.

21 January 2008

Assignee's fraudulent trademark registrations cancelled

In <i>Superior Commercial Enterprises Inc v Kunnan Enterprises Inc</i>, the Court of Appeals has declared that Superior Commercial Enterprises did not lawfully own the trademarks KENNEX and PRO-KENNEX, as ownership by way of assignment was fraudulently obtained. Superior had failed to disclose that it was a mere distributor of the assignor's products in its application for registration of the trademarks.

05 October 2007

SWISS ARMY defeats bad-faith application

The Intellectual Property Office has upheld an opposition filed by a US company against an application to register the mark SWISS ARMY DHC (and device) by a Swiss company. The office agreed that the applicant could not be considered a prior user in good faith of the SWISS ARMY trademark in the Philippines or elsewhere since it must have been aware of the opponent's earlier use of the SWISS ARMY mark when it filed its application in 1998.

06 September 2007

IPO launches IP Research and Training Institute

As part of its activities to celebrate the 10th anniversary of the signing of the IP Code, the Intellectual Property Office has announced that it is setting up a body called the IP Research and Training Institute. It is envisioned that the institute will act as a centre for IP education and research in the Philippines and in the surrounding region.

24 July 2007

TIFFANY mark reaffirmed as well known in the Philippines

The Office of the Director General of the Intellectual Property Office has overturned an earlier ruling and has held 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 the mark.

07 June 2007

Jockey wins JOCKS opposition

In <i>Jockey International Inc v Myrich Apparel Shoppe</i>, the Intellectual Property Office has upheld the opposition filed by underwear manufacturer Jockey International Inc against an application to register the mark JOCKS for t-shirts. The office held that there is no reasonable explanation for the applicant's choice of JOCKS as a mark for t-shirts, except to cash in on the goodwill enjoyed by the JOCKEY mark.

19 April 2007

Dominancy test approved by Supreme Court

In <i>McDonald's Corporation v Macjoy FastFood Corporation</i>, the Supreme Court has upheld McDonald's Corporation's opposition against the mark MACJOY (and device). In so doing, the court reiterated that the correct test for determining a likelihood of confusion is the test of dominancy and not the holistic test.

20 February 2007

Wind knocked from sails of NS NORTH SAILS application

In <i>North Sails Group LLC v Tuy</i>, the Intellectual Property Office'sBureau of Legal Affairs has rejected an application to register the mark NS NORTHSAILS (and design) for goods in Class 9 of the Nice Classification. The bureauheld that consumers are likely to confuse it with the internationally well-knownmarks NS NORTH SAILS (and design) and NORTH SAILS registered in the name of NorthSails Group LLC for goods in Classes 9 and 25.

26 January 2007

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