In one of the few decisions in the Philippines dealing with three-dimensional trademarks, the Bureau of Legal Affairs rejected two applications for three-dimensional trademarks consisting of colored engines. The applications were described as “A Three Dimensional Engine Colored Black, Red, White and Silver” and “A Three Dimensional Engine Colored Yellow, Black and Silver.”

The applicant filed two applications for three-dimensional trademarks.  One trademark comprised of an engine using the colors black, red, white and silver, while the other trademark consisted of an engine using the colors yellow, black and silver. These applications were timely opposed by Honda Motor Co., Ltd. (“Honda”) on the ground, among others, that the applications were confusingly similar to its three dimensional trademarks consisting of general purpose engines.

Claiming to be the prior user of famous three-dimensional trademarks consisting of general purpose engines, which are already registered in the Philippines and in many countries around the world, Honda asked the Bureau to reject the applications under Section 123.1 (d) of the IP Code which prohibits registration of confusingly similar trademarks.

The applicant disputed Honda’s claims pointing out that disclaimers to the representation of engine were entered in both applications.  Honda disagreed with the applicant’s defense of disclaimer arguing that precisely the disclaimer rendered the trademarks unregistrable.  With the disclaimer, according to Honda, what remains are the color elements of the trademarks.  Citing law and jurisprudence, Honda argued that unless displayed in a distinct or arbitrary design, color does not function as a trademark, and hence not registrable.

In response, the applicant averred that her three-dimensional trademarks are neither identical nor confusingly similar to any of Honda’s registered three-dimensional marks.  According to the applicant, Honda cannot rely on trademark registration no. 4-2004-002093 as the basis for the oppositions because that registration has been ordered cancelled through a previous BLA proceeding IPC No. 14-2008-00036.  In that proceeding, the Bureau held that “Three-dimensional marks that contain color, as an element are considered to be distinguishing features if the color forms part of a mode of packaging wares or goods the appearance or shape of which is used for the purpose of distinguishing or as to distinguish one person’s goods from those of others.”  Therefore, according to applicant, unlike Honda’s mark which was ordered cancelled in a previous proceeding, her trademarks which claim specific colors distinguish her products from those of other manufacturers or distributors.  Applicant argued that Honda cannot claim a monopoly on all the colors or combination of colors as part of its trademarks for its exclusive use.  In the same manner that Honda was allowed to register its three-dimensional trademarks showing engine designs, she should also be allowed to register her three-dimensional trademarks, which claim certain colors.

The Bureau granted the oppositions and rejected the applications. In reaching its decisions, the Bureau failed to address the issue of whether Honda’s three-dimensional trademarks are confusingly similar to the opposed three-dimensional trademark applications.  Instead, the Bureau found that the opposed trademarks are generic and descriptive of a general purpose engine under Class 7.  The Bureau stated that the applications for three dimensional trademarks “refer obviously to the product itself” and that as a whole, the trademarks contain no distinctive feature that distinguishes applicant’s goods from those manufactured or sold by others.  In examining the pictures submitted with the applications, the Bureau found that applicant’s engines look like any ordinary engines in the market and fail to show a configuration and arrangement of the component parts of the general purpose engines, which distinguishes them from the other engines in the market.

Moreover, the Bureau addressed the issue of color and found that applicant’s use of color alone, without a given form is non-registrable.  The Bureau explained that “three-dimensional trademarks that contain color as an element are considered to be distinguishing features if the color forms part of a mode of packaging wares or goods the appearance or shape of which is used for the purpose of distinguishing it from the other goods.”  In this case, the Bureau concluded that the colors claimed in the applications failed to define an unusual or distinct form and therefore the applications claiming color alone are not registrable under the IP Code.

These cases illustrate another missed opportunity for the Bureau to provide some guidance and create jurisprudence on the criteria for likelihood of confusion between three-dimensional trademarks.  The Bureau did not undertake any comparison between Honda’s trademarks and those of the applicant. Instead, the Bureau simply declared the opposed trademarks to be generic and descriptive, even though it is unclear whether Honda brought out such arguments during the proceedings.  Furthermore, the pronouncement that applicant’s trademarks are generic and descriptive lacks any substantive explanation.  The Bureau makes a sweeping conclusion that applicant’s engines appear like any ordinary engines in the marketplace, yet it failed to cite any examples of other engines in the marketplace or explain the similarities of the applicant’s engines with those of others.  Therefore, for potential applicants of three-dimensional trademarks, the standards remain unclear as to what will render such trademarks distinctive to qualify for registration in the Philippines.