Despite an opposition filed by Mizuno Corporation, the Office of the Director General (ODG) of the Intellectual Property Office of the Philippines (IPOPHL) allowed the registration of the applicant’s mark, Erke and Device. Mizuno is a Japanese firm established in 1906. It was founded by Rihachi Mizuno and is engaged in the manufacture of a wide variety of sports equipment and sportswear. The Mizuno Runbird has been depicted as a beautiful, free-flowing, graphic symbol of Mizuno. The device signals the fitness pursuits and activities of athletes around the world. The Mizuno Runbird line means that Mizuno shoes have a “sense of speed and a feel of strength” as well as “tenderness and flexibility.” Throughout the years, the Runbird logo has been instrumental in making the Mizuno brand famous globally and has helped the company establish itself as an industry leader.

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In 2006, Fujian Hongxing Erke Sports Goods (Erke), a Chinese company, filed an application for registration of the mark “ERKE & DEVICE” in Class 25. An opposition was filed by Mizuno on the basis that the device portion of the “ERKE & DEVICE” mark is confusingly similar to its intentionally well-known Runbird Device.

Erke, on the other hand, argued that it is a leading manufacturer in China and its mark has been registered in over 100 countries. It asserted that the word “ERKE” constitutes the dominant component of the mark and it is not confusingly similar to the Runbird logo. The Bureau of Legal Affairs (BLA) director denied the opposition and ruled that the device in the ERKE mark is not identical to the “running bird,” emphasizing the observable differences in the respective device’s angles, slants and curves, and noting the presence of a “triangular-shaped cavity/void/hole in the lower middle portion” of the Runbird logo, which is absent in the ERKE device.

In the tribunal below, the director of the BLA took the position that the ERKE device is a composite mark consisting of a device and the word “ERKE”. The BLA held, “[a] visual assessment of the Respondent’s mark shows that neither the device nor the word mark “ERKE” is the dominant part of the mark. The device and the ‘ERKE‘ instead complement each other to form a mark with a character that is distinct from the Opposer’s. Assuming that there are similarities between the devices, the word ‘ERKE’ made confusion/ deception unlikely.

Expectedly, Mizuno appealed to the ODG. The latter, in affirming the decision of the BLA relied on the BLA’s findings and held that since the marks at issue are both composite marks, the combination of the device and the word mark gives each a distinct character and appearance. According to the ODG, “the words MIZUNO and ERKE are totally different, and combining them with their respective devices undoubtedly creates two distinctive marks that can never confuse the buying public.”

Noting that while it may be argued that the general appearance of the device in Erke’s mark bears a similarity to the Runbird Device, such similarity is not such as to nearly resemble each other as to likely deceive or cause confusion.

The ODG went further to stress that “the goods on which the marks are used [sportswear] are not ordinary household goods that a prospective buyer will casually buy without a careful scrutiny of the product or its origin.” Quoting a landmark Supreme Court decision in the Philippines, the ODG stressed, “[w]e believe that a person who buys the petitioner’s products and starts to have a liking for it, will not get confused and reach out for private respondent’s products when she goes to a garment store.” (Fruit of the Loom, Inc. vs Court of Appeals, G.R.No. L-32747, November 29, 1984)

Interestingly, the ODG also considered Mizuno’s claim that its mark was well-known, and ruled that “assuming that Mizuno’s Runbird Logo is well-known, all the more logical that buyers would be more discerning and discriminating of the trademark and manufacturer of the sportswear that they are purchasing, leaving no room for confusion.”

This decision has seemingly placed a great deal of trust on the discerning skills of buyers of famous sportswear brands. Oftentimes, fame has its price.

This article was first published in Asia IP on February 28, 2015. For further information, please visit http://www.asiaiplaw.com/ .