The recent case of Daiso Industries Co Ltd v Ma Olivia Tan(1) has reiterated the Philippines' adherence to the principle of protection accorded to a well-known mark.
Daiso Industries of Japan opposed a trademark application filed by Ma Olivia Tan for the mark MYSMART ONE-SHOP DAISO, covering household goods, home products and general merchandise.
Daiso Industries based its opposition on Sections 123.1(d), (e) and (f) of the Intellectual Property Code. It asserted ownership of the DAISO mark, which it had registered in several countries, including the Philippines. Daiso Industries also contended that MYSMART ONE-SHOP DAISO was confusingly similar to its mark DAISO, and that Tan intended to take advantage of the goodwill belonging to Daiso Industries. Daiso Industries also asserted that the director general of the Intellectual Property Office (IPO) had declared DAISO a well-known mark.
Tan opposed Daiso Industries' theories and claimed that DAISO was not well known or confusingly similar to MYSMART ONE-SHOP DAISO.
The IPO ruled for Daiso Industries, citing Sections 123.1(d), (e) and (f) of the code, which provide that a mark cannot be registered if:
- it is identical to a mark belonging to another party or a mark with a priority date;
- it is identical to, is confusingly similar to or constitutes a translation of a mark which is considered to be well known by the competent authority; or
- it is identical to, is confusingly similar to or constitutes a translation of a mark which is registered in the Philippines with respect to goods or services which are not similar to those for which registration is sought.
The IPO emphasised that, aside from giving protection to trademark owners, the essence of trademark registration revolves around the origin or ownership of genuine goods so as to prevent fraud and protect manufacturers against substitution and sale of inferior or different articles. It went on to rule that it is undisputed that the competing marks both included the word 'Daiso'. It held that DAISO was a strong mark because it was neither generic nor descriptive of the goods it covered. The IPO reiterated that confusing similarity exists when there is close imitation calculated to deceive ordinary persons. It added that confusion cannot be dispelled by merely adding, removing or changing some letters of a registered mark. The IPO ruled that the addition of the phrase 'my smart one-shop' was insufficient to make the applicant's mark distinctive.
Further, the IPO ruled that the goods covered under MYSMART ONE-SHOP DAISO were similar and closely related to those under DAISO. Therefore, it was highly likely that the public would be confused or would mistake the marks as a mere variation of each other. The IPO added that DAISO had already been declared well known(2) and there was therefore no cogent reason for to deviate from this ruling.
As a result, the opposition of Daiso Industries was sustained.
For further information on this topic please contact Lee Benjamin Z Lerma at Romulo Mabanta Buenaventura Sayoc & De Los Angeles by telephone (+63 2 848 0114) or email (firstname.lastname@example.org). The Romulo Mabanta Buenaventura Sayoc & De Los Angeles website can be accessed at www.romulo.com.
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