The Supreme Court has upheld the denial of a trademark application by Autophil Zone Sales Corporation to register the mark "FUJI METAL STYLIZED," finding that the mark closely resembles previously registered and pending "FUJI" marks and would likely cause consumer confusion.
The decision affirmed the ruling of the Court of Appeals (CA), which in turn upheld the Decision of the Office of the Director General (ODG) of the Intellectual Property Office of the Philippines (IPOPHL).
The Case
The controversy stemmed from a trademark application filed by Autophil, a domestic corporation engaged in the importation and distribution of automotive spare parts, seeking to register its mark, "FUJI METAL STYLIZED."
On September 27, 2017, Examiner Ana Maida J. Zamora (Examiner Zamora) issued a Registrability Report denying Autophil's application because its mark resembled a previously registered mark "FUJI" under a certain Terrence Santos (Santos) and a mark then pending registration, also using the word "FUJI," under Leo Tire Manufacturing Corporation (Leo Tire).
Autophil, through counsel, responded that its mark was not similar to those of Santos and Leo Tire given its distinctive design and use of stylized lettering, and that the only similarity was the use of the word "FUJI." It argued that the word "FUJI" was diluted, having been incorporated in several registered trademarks in the Philippines, and that confusion was highly unlikely because buyers of vehicles and automotive parts are particularly intelligent.
On July 11, 2019, Examiner Zamora issued a Refusal reiterating the denial. On December 16, 2020, Director Leny B. Raz (Director Raz) of the Bureau of Trademarks affirmed the denial, ruling that the marks nearly resemble each other in appearance and overall impression due to the word "FUJI" as the dominant feature. The ODG dismissed Autophil's appeal on December 13, 2022, invoking the dominancy test. The CA denied Autophil's Petition for Review under Rule 43 and affirmed the ODG.
The Issue
The question before the Court was whether the CA committed reversible error in affirming the denial of Autophil's application to register the mark "FUJI METAL STYLIZED," given the likelihood of confusion with the marks of Santos and Leo Tire.
The Ruling
The Court found that the word "METAL" is not subject to registration for being generic and descriptive of the goods it seeks to identify — automobile spare parts. Without any clear-cut element to distinguish Autophil's mark, there is nothing that would eradicate the possibility of mistake or confusion due to the marks' resemblance.
The Court also found that the visible resemblance between the marks was amplified by the relatedness of the goods involved. Applying the factors for determining relatedness, the Court concluded that the goods covered by Autophil's mark and the marks of Santos and Leo Tire are related, belong to the same class of products, serve the same purpose, may be found in the same channels of trade, and appeal to the same purchasers.
By the Numbers
- G.R. No. 270575
- September 27, 2017 — Examiner Zamora issued the Registrability Report
- July 11, 2019 — Examiner Zamora issued the Refusal
- December 16, 2020 — Director Raz's Decision (Application No. 4-2017-00013013)
- December 13, 2022 — ODG Decision (Appeal No. 04-2021-0018)
- January 13, 2023 — Autophil filed its Petition for Review with the CA
- November 13, 2023 — CA Decision (CA-G.R. SP No. 176717)
The Court's Reasoning
Applying the dominancy test, the Court noted that the dominant feature "FUJI" is unmistakable in Autophil's mark and the cited marks. Making reference to Section 123.1(h) of Republic Act No. 8293, the Court explained that generic terms are those which constitute "the common descriptive name of an article or substance," or those which "refer to the basic nature of the wares or services provided[.]" Such terms are part of the public domain and cannot be exclusively appropriated or registered.
In assessing relatedness, the Court pointed out that, pursuant to its ruling in Kolin, it had already abandoned the use of product or service classification as a factor, and instead applies the factors laid down in Mighty Corporation v. E. & J. Gallo Winery, including the business to which the goods belong, the class of product, the product's quality and nature, the purpose of the goods, and the channels of trade.
The Court noted that Autophil's mark covers automotive parts and fittings, Santos's mark covers automobile parts, and Leo Tire's mark involves motorcycle, bicycle, and automobile tires and interior. Taken together, the goods all involve automotive parts and belong to the same class of products. The Court added that another basis for finding relatedness is complementarity, finding that the goods may be used for the same purpose — for automobiles and other vehicles.
This report is based on the Supreme Court decision in G.R. No. 270575.
This report summarizes a public Supreme Court decision and is not legal advice.