IP Komodo has written how effective the BLA is becoming at civil IP litigation. A long running Philippines civil IP dispute shows the flip side - using the general civil courts. MAKATI SIZZLER was registered as a trademark in 1989 for a restaurant allegedly in operation since 1979 by Makati Food Service Systems.
Sizzler Restaurants International had 2 registrations from 1988 including “Sizzler” for restaurant services. It sought to revoke the mark. The case proceeded through multiple levels up to the Court of Appeals (CA). The question was who owned rights in the term “Sizzler” in the Philippines. The court held Sizzler was a famous trademark protected by the Paris Convention and that MFSS failed to show rights to the mark. The evidence of prior use was weak they said. Anyway it was confusingly similar and should not have been granted. “ This is because there existed a resemblance, exact similarly in sound, spelling, pronunciation, and commercial impressions of the word ‘sizzler’ which was the dominant portion of private respondents’ marks”.
All well and good, but justice delayed is a costly exercise for the IP owners.