Manila: The Supreme Court (SC) on Monday ruled that trademark or logo designs with similarities that may confuse purchasers can be grounds to prevent the registration of subsequent marks, even if new words are incorporated.
According to Philippines News Agency, the high tribunal's First Division, in a 30-page decision written by Associate Justice Ramon Paul L. Hernando, granted Starwood Hotels and Resorts Worldwide, LLC's (Starwood) consolidated petitions and overturned the Court of Appeals' (CA) rulings that allowed the registration of Oceanic Empire Limited's (Oceanic) marks.
Oceanic had filed to register the trademarks 'W Globalcenter' and 'W Fifth Avenue' and previously secured registration for 'W Tower.' Starwood, which owns several registered 'W' trademarks for hotels and entertainment services, opposed these applications and sought the cancellation of the 'W Tower,' arguing that Oceanic's marks were confusingly similar to its own.
Starwood contended that Oceanic would capitalize on the popularity and reputation of its brand, misleading the public into believing that Oceanic's business was associated with Starwood. However, the Intellectual Property Office (IPO) dismissed Starwood's claims, ruling that no one can claim exclusive rights to a letter of the alphabet and that the differences in the marks' designs and the parties' businesses were sufficient to avoid confusion.
The CA upheld the IPO's decision, finding that the marks were not confusingly similar and that Oceanic's real estate business was distinct from Starwood's hotel operations. Nevertheless, the SC disagreed, emphasizing that a trademark serves to distinguish one's goods or services from others.
Under Section 123.1 of the Intellectual Property Code, a mark cannot be registered if it is identical to an existing mark for the same or closely related goods or services, or if it closely resembles such a mark as to likely cause confusion. The SC explained that trademark protection aims to prevent confusion of goods and businesses, with only the likelihood-not actual proof-of confusion required. Each case must be evaluated based on the resemblance of the marks and the relatedness of the services.
Applying the Dominancy Test, the SC placed emphasis on the dominant or most striking features of the marks. In this case, the SC determined that 'W' is the dominant feature of both Starwood's and Oceanic's marks. While Starwood's 'W' is registered as a word mark, the SC clarified that Starwood cannot claim the letter 'W,' but only its distinct stylized version.
The SC stressed that purchasers would immediately notice the similarity between the parties' 'W' marks. It held that minor textual differences do not alter the fact that both use the same style, which appears visually similar. The SC further ruled that the added terms 'Globalcenter,' 'Fifth Avenue,' and 'Tower' do not diminish the dominance of the 'W' in Oceanic's marks. These words are generic or descriptive of their location only and are less noticeable than the 'W.'
The SC also considered the actual market use of the marks, noting that both parties prominently display their 'W' on their buildings and in online promotions. This similarity in real-world use increases the likelihood that purchasers would confuse Oceanic's business with Starwood's. It also found that the parties' businesses are related, as both involve high-end property development and rely heavily on brand image and building design.
