Benson and Hedges (Overseas) Limited opposed an application filed by Philip Morris Brands Sarl for a three-dimensional shape of an ICE BALL LENS claiming confusing similarity with earlier trademark registrations for LUCKY STRIKE featuring a BULLS EYE device. Benson asserted expanded protection for its BULLS EYE device under the well-known mark provision of the IP Code. The Bureau of Legal Affairs (BLA) denied the opposition and ruled that the public will not likely be confused by the co-existence of Benson’s LUCKY STRIKE trademarks with Philip Morris’ ICE BALL LENS DEVICE because the aural and visual properties of these competing trademarks are different. Citing the case of Victorias Milling Company, Inc. v. Ong Su and the Honorable Tiburcio S. Evalle, G.R. No. L-28499, 30 Sept 1977, the BLA observed that Benson has not shown that the BULLS EYE device in the LUCKY STRIKE trademark, standing alone, has been used to an extent that purchasers recognized Benson to be the source of the goods.

Citing the case of Pribhdas J. Mirpuri v. Court of Appeals, G.R. No. 115508, 19 Nov. 1999, the BLA noted that Benson’s BULLS-EYE device is a two dimensional and plain circular figure, which will be regarded as a common geometric shape ordinarily lacking distinctiveness unless it has acquired a secondary meaning. The BLA concluded that Benson failed to establish secondary meaning for the Device. And in ruling out protection as a well-known mark, the BLA found no evidence showing the extent, duration and degree of use, registration, promotion and market share of its BULLS-EYE Device mark in the Philippines and in other countries. In contrast to the plain circular shape of the BULLS-EYE, the BLA also explained that the opposed ICE BALL LENS mark was found to have distinctive attributes capable of identifying the goods of Philip Morris thereby anointing it as a protectable trademark, which cannot be confused with Benson’s LUCKY STRIKE trademark.

From the facts in this case, it is clear that one who asserts protection for a plain geometric shape that is featured in a registered mark must present evidence to establish that the shape has attained a secondary meaning. And if one asserts expanded protection for well-known mark, he must present evidence showing the extent, duration and the degree of use, registration, promotion and market share of the mark in the Philippines and in other countries. Clearly in this initial round, Philip Morris responded to the BULLS-EYE challenge but Benson missed the mark.

The appeal period has not lapsed as of this writing.