Manila
FIRST DIVISION
[ G.R. No. 250800. July 06, 2021 ]
SUYEN CORPORATION, PETITIONER, VS. DANJAQ LLC, RESPONDENT.
D E C I S I O N
CARANDANG, J.:
This is a Petition for Review on Certiorari1 under Rule 45 of the Rules of Court assailing the Decision2 dated September 2, 2019 and the Resolution3 dated December 4, 2019 of the Court of Appeals (CA) in CA-G.R. SP No. 159794. The said Decision and Resolution denied petitioner Suyen Corporation's (Suyen) petition for review (under Rule 43 of the Rules of court) and affirmed the Decision4 dated December 20, 2018 of the Office of the Director General (ODG) of the Intellectual Property Office (IPO). The ODG, in turn, dismissed Suyen's appeal and affirmed the Decision5 dated October 10, 2014 of the IPO's Bureau of Legal Affairs (BLA), which sustained respondent Danjaq, LLC's (Danjaq) opposition to Suyen's application for the mark "AGENT BOND."
Facts of the Case
Suyen is a corporation operating in the Philippines using the BENCH trademark. On February 16, 2010, it filed an application for the registration of the mark AGENT BOND - specifically for "hair refresher, hair gel, hair lotion, hair treatment, hair shampoo, and hair conditioner.6
Danjaq, a foreign corporation based in Santa Monica, California, United States of America, opposed Suyen's application for being confusingly similar with its trademark, JAMES BOND. According to Danjaq, Suyen 's AGENT BOND is an attempt to ride on the popularity of JAMES BOND and its associated "Bond" marks. James Bond, also known as Agent 007, is a fictional character who portrays himself as a British Secret Agent/Spy. James Bond has been the star of 22 films since 1962 and has gained international popularity due to the success of the James Bond films/franchise. Because of the character's popularity as James Bond/Agent 007, Danjaq claimed to have prior use of the AGENT BOND mark.7
In its Answer8 to Danjaq's opposition, Suyen denied any confusing similarity between the marks AGENT BOND and JAMES BOND. Suyen explained that JAMES BOND is not known as Agent Bond and has never been referred to as Agent Bond in any of the 22 films. Even if James Bond is referred to as Agent Bond, the supposed popularity of the JAMES BOND mark is insufficient to prove that it is a well-known mark in accordance with Section 123.1 of the Intellectual Property Code.9
Suyen questioned Danjaq's claim that it sold products here in the Philippines. The documentary evidence attached to Danjaq's Opposition10 to prove sales of BOND GIRL 007 products in the Philippines is an alleged royalty report with no explanation or indication that such was for product sales in the Philippines.11
Suyen narrated the facts leading to its application for registration of the AGENT BOND mark. It entered the service industry with its sister companies12 by operating beauty salons named "FIX Bench Salon." Prior to FIX Bench Salon (i.e., March 2001), "Suyen manufactured, advertised, distributed and sold hair products and other hair styling products ranging from hair refreshers, hair gels, styling gums, hair lotions, hair treatments, hair shampoos and hair conditioners under the 'FIX' trademark."13 AGENT BOND, one of its styling gums, was placed on packaging materials with the FIX Trademark and has been marketed, adve1iised, distributed, and sold since March 8, 2005. AGENT BOND is only "a creative but non-descriptive way of making reference to the function of the product."14 The word "agent" in AGENT BOND is used to convey to purchasers that the product is a device, while the word "bond" refers to the ability of the product's ingredients to hold or bind the hairstyle.15
In insisting that AGENT BOND is not confusingly similar to JAMES BOND, Suyen applied the dominancy and holistic tests. Under the dominancy test, the competing marks' common word - BOND - is not the dominant word for both marks. The words AGENT and JAMES were equally prominent in AGENT BOND and JAMES BOND, respectively. Neither will the terms be easily mistaken from one another. Suyen averred that the word BOND has been diluted - having been used in several trademarks in the Philippines such as ROYAT BOND, SURE-BOND, BOND STREET, G-BOND, CONTACT BOND, SPIDER BOND, GOLD BOND, STAR BOND, etc.16
Suyen added that Danjaq does not have exclusive rights to the word "bond." Danjaq has not established any right to the AGENT BOND mark and cannot over-extend the protection of its JAMES BOND trademark to include AGENT BOND.17
Reiterating its claim that AGENT BOND products include a prominent display of the BENCH and FIX trademarks, Suyen insisted that it is not using the AGENT BOND trademark in bad faith nor to create confusion with JAMES BOND. Suyen averred that it has never received any complaint or inquiry showing that the market for AGENT BOND has confused the same with the JAMES BOND trademark.18
In Danjaq's Position Paper,19 Danjaq retorted that it is not actual confusion that is required to deny registration of a trademark but the possibility of confusion.1a⍵⍴h!1 The use of AGENT BOND causes confusion as to the origin - making it appear that Danjaq approved the use of AGENT BOND as a trademark. Because JAMES BOND is a well-known mark, any product bearing the JAMES BOND trademark or other related marks is highly marketable.20
Ruling of the Intellectual Property Office - Bureau of Legal Affairs
In its Decision21 dated October 10, 2014, the BLA sustained Danjaq's opposition and denied Suyen's trademark application for AGENT BOND.
Below is a juxtaposition of the competing marks, as placed by the BLA:
(image supposed to be here-no pdf available)
The BLA ruled that since both marks contain the commonly used word "Bond," a closer look into the distinctive words AGENT and JAMES were made. Since the word AGENT is placed before the word BOND, the said mark gave an impression that it was connected to JAMES BOND - who is referred to as "Agent 007" or "Agent Bond." There can be a confusion of business if Suyen's trademark application for AGENT BOND was granted. A confusion of business occurs because AGENT BOND may be assumed to originate from Danjaq, causing the public to believe that the subject good is connected to that of Danjag. As a result, the BLA found Suyen's AGENT BOND mark nonregistrable under Section 123.1 (d) of the Code.24
Aggrieved, Suyen appealed the BLA's decision with the ODG, insisting that any association between the competing marks does not lead to confusion or a likelihood of confusion. If an "[a]ssociation of marks for parody purposes without corresponding association of manufacturers does not tarnish or appropriate the goodwill of the manufacturer,"25 then a mere association with JAMES BOND cannot also be deemed an infringement. Otherwise, Danjaq would be over-extending the protection of the JAMES BOND trademark.26
In its Memorandum of Appeal,27 Suyen included pictures28 of its AGENT BOND products in different packages to prove that there is no confusion as to AGENT BOND's origin. Suyen alleged that it spent substantial amounts to extensively promote AGENT BOND as Suyen's products and also included Suyen's FIX or /Bench trademarks. Using various forms of media and engaging the services of celebrity endorsers, AGENT BOND became immediately identified as Suyen's product under its BENCH product line.29
Suyen pointed out that the BLA never ruled that JAMES BOND is a well-known mark,30 contrary to the requirements for declaring a trademark as well-known under Section 123.1(e) of the Code and La Chemise Lacoste, S.A. v. Fernandez.31 This was vehemently denied by Danjaq in its Comment,32 stating that JAMES BOND meets all the criteria33 listed in Rule 102 of the Trademark Rules and Regulations.34
According to Danjaq, JAMES BOND is entitled to protection against the unauthorized use of the fictional character's persona as part of Danjaq's right of publicity. Registration of AGENT BOND will dilute the distinctiveness of the JAMES BOND and BOND GIRL 007 trademarks35 following this Court's definition of Trademark Dilution in Levi Strauss & Co. v. Clinton Apparelle, Inc.36 - particularly that: (1) JAMES BOND is a well-known mark following Rule 102 of the Rules and Regulations; (2) the use of AGENT BOND began after JAMES BOND became famous; and (3) the use of AGENT BOND will lead the public wondering "whether a particular 'James Bond-related' or 'James Bond-like' item of merchandise is from [Danjaq] or some other source."37
Ruling of the Intellectual Property Office - Office of the Director General
In a Decision38 dated December 20, 2018, the ODG denied Suyen's appeal and focused its discussion on: (1) the similarity between the competing trademarks; and (2) AGENT BOND's tendency to deceive or cause confusion with JAMES BOND. Finding the competing trademarks confusingly similar with each other, the ODG opted out of discussing JAMES BOND's classification as a well-known mark.39
The ODG ruled that since Danjaq was able to prove prior use and registration of JAMES BOND, Suyen had the burden of evidence to show that it was not riding on JAMES BOND's goodwill. The ODG observed that Suyen never explained the reason for adopting AGENT BOND. Citing Societe Des Produits Nestle, S.A. v. Court of Appeals,40 the ODG concluded that of the "'millions of terms and combinations of letters and designs available' for its use on its products,"41 Suyen's choice of using AGENT BOND, when it is so closely associated with JAMES BOND, shows that it intended to take advantage of JAMES BOND's goodwill. It thus leads the public to believe that AGENT BOND is Danjaq's products.42
Unfazed, Suyen elevated the matter to the CA seeking to have the BLA's and ODG's decisions reversed and prayed that the IPO be ordered to reprocess its trademark application for AGENT BOND.43 Suyen accused the BLA and ODG of over-extending Danjaq's rights to JAMES BOND by lowering the standards of "confusing similarity" to one of "mere association."44
Suyen averred that it explained to the BLA and ODG the reason for using AGENT BOND - i.e., a non-descriptive reference to the product's function as a hair styling gum. Therefore, as a suggestive mark, AGENT BOND is entitled to recognition as a trademark. Danjaq maintained AGENT BOND's non-registrability despite the absence of any technical infringement or unfair competition because AGENT BOND impliedly associates itself with JAMES BOND.45
Ruling of the Court of Appeals
In its Decision46 dated September 2, 2019, the CA denied Suyen's petition and held that an administrative agency's factual findings are accorded great weight and respect.47 Nevertheless, the appellate court discussed the two types of confusion48 arising from the use of similar or colorable imitation marks and concluded that placing the word "Agent" before the word "Bond" impresses upon the public a connection between Suyen's product and the fictional character of James Bond - a form of confusion of business.49
The appellate court did not find AGENT BOND to be a suggestive mark because the combination of these words were not fancifully or arbitrarily crafted. Explaining a suggestive mark to be a word, picture, or other symbol that suggests the quality or nature of a product, the CA agreed with Danjaq that AGENT BOND does not describe a product that binds the hairstyle but refers to the fame of the James Bond franchise. The CA, thus, ruled on the popularity of the JAMES BOND trademark and declared it to be well-known.50 Applying Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers,51 the CA held that JAMES BOND is a well-known trademark because of the following criteria:
(a) extent and exclusivity of the worldwide registrations of the mark JAMES BOND; (b) length and extent of use of JAMES BOND worldwide; (c) the degree of the inherent or acquired distinction of the mark; (d) the extent and promotion of the mark JAMES BOND; and (e) the commercial value attributed to the mark in the word.52
Considering the commercial value of the James Bond movies, the James Bond character transformed into a well-known trademark with goodwill of $5 billion in sales of merchandise.53
Suyen filed its Motion for Reconsideration54 challenging the appellate court's declaration of JAMES BOND as a well-known mark since it was not raised on appeal. Suyen insisted that the BLA, ODG, and CA misappreciated the facts presented and erroneously ruled that AGENT BOND and JAMES BOND are confusingly similar.55
In its Comment56 to the Motion for Reconsideration, Danjaq emphasized the irrelevance of including other trademarks (i.e., FIX and BENCH/) with the AGENT BOND mark because AGENT BOND will still remind purchasers of the world-renowned character, James Bond.57
The CA denied Suyen 's Motion for Reconsideration in its Resolution58 dated December 4, 2019. Thus, Suyen filed the instant Petition for Review on Certiorari under Rule 45 of the Rules of Court.
Proceedings before this Court
Petitioner's Arguments
In the instant petition, Suyen repeats its earlier arguments. First, the BLA, ODG, and CA cannot over-extend Danjaq's rights simply because a mark includes the word "bond" or because it may be associated with JAMES BOND. Second, AGENT BOND is not a colorable imitation of James Bond, following Section 155 of the Intellectual Property Code. Third, a mere reminder of JAMES BOND does not automatically confuse the purchaser as to the product's origin since the ordinary purchaser would be able to see obvious differences between the two marks. To prove its registrability, Suyen manifested that in 2005, the IPO allowed the registration of SECRET AGENT - a mark that may also be associated with JAMES BOND.59
Suyen also pointed out that AGENT BOND and JAMES BOND are used for different classes of products. Although Danjaq's BOND GIRL 007 is under the same classification as AGENT BOND (i.e., class 3), the BOND GIRL 007 trademark was removed from the IPO's registry for non-filing of the required Declaration of Actual Use.60
Respondent's Comment
Danjaq sought the dismissal of the instant petition because the issues raised therein refer to factual matters that are beyond the ambit of a petition for review. Combining the words "agent" and "bond" implies a connection with the fictional character, James Bond. Danjaq arduously contends that AGENT BOND does not suggest a hair product and that the combination of these words leads the public to assume that AGENT BOND originates from Danjaq.61
Petitioner's Reply
In reply to Danjaq's Comment, Suyen asserted that its petition simply raised a question of law - i.e.: (1) whether the BLA, ODG, and CA can overextend Danjaq's rights over JAMES BOND by denying trademark applications involving the word "bond;" and (2) whether the CA had the jurisdiction to declare a trademark as well-known even if such issue was not raised in the appeal to the CA.62
Ruling of the Court
The petition must fail. While We uphold the factual findings of the administrative agencies and the CA when it ruled on the non-registrability of AGENT BOND, a more elaborate disquisition must be made explaining why Suyen's application for registration of AGENT BOND was correctly denied. Along with this discussion is a clarification on the BLA, ODG, and CA's power to approve or deny trademark applications involving the word "bond" and the CA's authority to declare a trademark as well-known.
To be clear, Suyen's application for registration of the AGENT BOND mark is denied for violating Section 123.1, paragraphs (d) and (f) of the Intellectual Property Code.
AGENT BOND is non-registrable because it nearly resembles the registered mark, JAMES BOND and is likely to deceive or cause confusion.
Section 123.1 (d) of the Intellectual Property Code states:
Section 123. Registrability. 123.1. A mark cannot be registered if it:
x x x x
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
Following Section 123.1 (d)(iii), AGENT BOND was properly denied registration, specifically because AGENT BOND nearly resembles JAMES BOND as to be likely to deceive or cause confusion. This confusion can exist even if the products bearing the competing marks are dissimilar since item (iii) of the said section does not require that the competing marks belong to the same nor to closely related goods or services. The crux of the controversy under this section is ascertaining the existence of a likelihood of confusion.
Needless to say, the fact that Suyen has marketed its products carrying the AGENT BOND mark with the BENCH or FIX brand does not change the fact that using the combination of the words "agent" and "bond" in that particular order may lead the purchaser to believe that the product is related to JAMES BOND. Again, it is not actual confusion that is required in trademark infringement cases but only a likelihood of confusion.
The manner in determining the likelihood of confusion between two marks was set forth in Section 5, Rule 18 of the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases,63 which provides:
Section 5. Likelihood of confusion in other cases. - In determining whether one trademark is confusingly similar to or is a colorable imitation of another, the court must consider the general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade, and giving the attention such purchasers usually give in buying that class of goods. Visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace must be taken into account. Where there are both similarities and differences in the marks, these must be weighed against one another to determine which predominates.
In determining likelihood of confusion between marks used on non-identical goods or services, several factors may be taken into account, such as, but not limited to:
a) the strength of plaintiff's mark;
b) the degree of similarity between the plaintiff's and the defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.
"Colorable imitation" denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him or her to purchase the one supposing it to be the other.
Absolute certainty of confusion or even actual confusion is not required to accord protection to trademarks already registered with the IPO.
The abovementioned criteria, which Associate Justice Caguioa refers to as the multifactor test64 in the recent En Banc case of Kolin Electronics, Inc. v. Kolin Philippines International, Inc.,65 are present in this case.
It is undisputed that the popularity and name-recall of JAMES BOND and the James Bond Franchise have been around prior to Suyen's use of AGENT BOND in 2005. Suyen even admits this fact when it mentions the local and international parodies created imitating the James Bond character. Thus, the strength of Danjaq's mark is great both internationally and in the Philippines.
There is a large degree of similarity between JAMES BOND and AGENT BOND not because both words merely contain the word "bond." The Dominancy Test does not solely rely on the visual and aural aspects of the mark but also the connotative comparisons and overall impressions between them.66 In other words, it is not the fact that a particular set of words was used but the manner in which they were utilized.
The terms "agent" and "bond" - when put together in that particular order - inevitably suggests a connection with James Bond as he was also known by his spy name, Agent 007.
Suyen's explanation for using the AGENT BOND mark leaves much to be desired. It claims that the word "Agent" in AGENT BOND refers to a device. In general terms, a device refers to a mechanism. There is no mechanism to speak of in a hair styling product. Conversely, the use of the word "Bond" to the hair presupposes that the hair should be bound to something other than itself. In fact, the registered trademarks containing the word "bond," as mentioned by Suyen, (with the exception of Bond Street) all refer to adhesives.
| TRADEMARK (registration number) |
MARK |
INTERNATIONAL CLASSIFICATION OF GOODS AND SERVICES |
STATUS/REMARKS |
| SECRET AGENT (4149) |
SECRET AGENT |
Cosmetics, namely, under makeup moisturizer, foundation, moisturizer, eye cream, body cream, body lotion and concealer. |
Removed from Register for non-filing of 5th DAU (Declaration of Actual Use) |
| MIGHTY BOND67(501432) |
MIGHTY BOND |
Self-adhesives tapes for stationery or household purposes; gums [adhesives] for stationery or household purposes; gluten [glue] for stationery or household purposes; glue for stationery or household purposes; pastes for for stationery or household purposes; adhesive tapes for stationery or household purposes; adhesive bands for stationery or household purposes; adhesives [glues] for stationery or household purposes; starch paste [adhesive] for stationery or household purposes, all included in Class 16 |
Registered |
| ROYAT BOND AND DEVICE |
(image supposed to be here) |
Paper, cardboard; printed matter; bookbinding material; photographs; stationary; adhesives for stationary or household purposes; paint brushes; typewriters; plastic materials for packaging (not included in other classes); printers' type; printing blocks |
Removed from register for non-filing of 5th DAU |
| SURE-BOND (14544) |
SURE-BOND |
Contact cement; adhesives and glues for industrial and commercial purposes |
Registered |
| BOND STREET (507514) |
BOND STREET |
Tobacco, raw or manufactured; tobacco products; cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); electronic cigarettes; tobacco products for the purpose of being heated; electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; liquid nicotine solutions for use in electronic cigarettes; smokers' articles, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches |
Registered |
| G-BOND (059962) |
G-BOND |
Contact cement |
Renewed |
| CONTACT BOND (502506) |
CONTACT BOND |
Adhesives used in industry class 1 |
Registered |
| SPIDER BOND |
SPIDER BOND |
Industrial adhesives |
Removed from register for non-filing of DAU |
| GOLD BOND (2840) |
GOLD BOND |
Tobacco, whether manufactured or unmanufactures; smoking tobacco; Pipe tobacco; hand rolling tobacco; chewing tobacco; cigarettes; cigars; cigarillos; snuff; snus; lighters; cigarette papers; cigarette tubes and matches |
Removed from register for non-filing of DAU |
| STAR BOND (4694) |
STAR BOND |
Adhesives used in industry |
For vallidation |
Suyen's allegation that James Bond was never referred to as agent bond in any of the franchise's 22 films takes a narrow-minded approach to legal hermeneutics. This literal approach was never contemplated in cases of trademark infringement. By using the terms "likelihood of confusion," the law recognizes the reality that trademark infringement cases delve into a wide spectrum of instances where a mark can ride on the goodwill and reputation of a business or might lead the purchaser to assume a connection between the competing marks.1âшphi1
In the movies where James Bond is portrayed (whether these movies are part of the James Bond franchise or his character is used in a parody), James Bond was always depicted as a man with a calm, confident composure and a perfectly kempt appearance. The reason why James Bond is portrayed in parodies is precisely because of his overall appearance - including his straight, neatly combed, and well-styled hair. His styled, straight hair is "part of the package" - so much so that one look at the fictional character James Bond will inevitably lead one to notice his clean-cut hairdo. It cannot be gainsaid that AGENT BOND - a hair styling product used to "bind" straight hair- may lead the purchaser to relate AGENT BOND with the fictional secret spy agent, James Bond. In fact, Suyen does not deny this connection. Suyen simply insists that a mere association of AGENT BOND to JAMES BOND will not confuse the purchasers between the two marks. Such contention is an admission that the purchasers may think of an affiliation between AGENT BOND and JAMES BOND. As what Associate Justice Caguioa aptly states, the "[c]onceptual similarity is high and it is reasonable to conclude that both marks taken as a whole are connotative equivalences of each other."68 The similarity caused by this particular play of words is too obvious to ignore.1âшphi1
The likelihood of confusion refers to two instances - a confusion of products or a confusion of business. "Confusion of business exists when the products are non-competing but related enough to produce confusion of affiliation."69 It contemplates a situation where "[Suyen's] product is such as might reasonably be assumed to originate with [Danjaq], and the public would then be deceived either into that belief or into the belief that there is some connection between [Danjaq] and [Suyen] which, in fact, does not exist."70 In UFC Philippines, Inc. v. Barrio Fiesta Mfg. Corp.,71 We explained that allowing registration of a trademark that will cause a confusion of business will render the oppositor's hard-earned goodwill to be associated with a newer product introduced by the applicant. In that case, the word "PAPA" used by Barrio Fiesta Manufacturing Corporation in "PAPA KETSARAP" and "PAPA BOY & DEVICE" was found to be the marks' dominant feature since "KETSARAP" was merely descriptive of the product while PAPA was written on top the other words in the "PAPA BOY & DEVICE" mark. "PAPA" was ruled to be in commercial use for decades by petitioner and petitioner's successors-in-interest and has, thus, established goodwill among customers.72
Associate Justice Caguioa also points out another aspect to be considered in determining a trademark resemblance - i.e., the type of mark used. AGENT BOND and JAMES BOND are similar with the type of mark used since they do not use special characteristics. Therefore, both the type of marks used and the Dominancy Test establish a resemblance between AGENT BOND and JAMES BOND.
It does not end here. As correctly noted by Associate Justice Caguioa, Suyen's AGENT BOND is non-registrable for violating Section 123.1 (f) of the Intellectual Property Code.
The use of AGENT BOND suggests a connection with the well-known mark, JAMES BOND, to the damage of Danjaq.
Section 123.1 (f) of the Intellectual Property Code states:
SECTION 123. Registrability. 123.1. A mark cannot be registered if it:
x x x x
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use[.]
Associate Justice Caguioa appositely notes that the elements under Section 123.1 (f) are distinct from those under Section 123.1 (d) insofar as concept of damages are concerned. Under Section 123.1 (d), the damage is caused by a likelihood of confusion to the targeted buyers between the competing marks whereas damages under Section 123.1 (f) are those caused to the interests of the registered owner of a well-known mark.
Is JAMES BOND a well-known mark? Suyen assails the CA's authority to declare JAMES BOND as a well-known mark. Suyen also insists that JAMES BOND failed to establish that it is a well-known mark.
This Court uphold's the CA's declaration of JAMES BOND as a well-known mark on the basis of substantial evidence. Rule 101 (d) of the Rules and Regulations on Trademarks, Service Marks, Trade names and Marked or Stamped Containers73 (Rules and Regulations) enumerates the competent authorities that can declare a mark as well-known - namely (1) the courts, (2) the Director General, and (3) the director of the Bureau of Legal Affairs - so long as some of the criteria under Rule 103 of the Rules and Regulations are met, to wit:
RULE 103. Criteria for Determining Whether a Mark is Well-known. - In determining whether a mark is well-known, the following criteria or any combination thereof may be considered:
(a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of ay promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
(b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
(c) the degree of the inherent or acquired distinction of the mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has been used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and
(l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that the mark is a well-known mark.
As what Associate Justice Caguioa underscores, "[w]hile the CA may have used different criteria, it is clear that its conclusion that the 'JAMES BOND' mark is well-known is amply supported by substantial evidence on record."74 Particularly, the certificates of registration of the JAMES BOND and other related "Bond" marks in at least 32 countries, the fame of the James Bond movie franchise (as evinced in the webpage of the internet movie database "All-Time Non-USA Box Office"),75 and Suyen's own admission of the popularity of the fictional character, James Bond, to the extent that parodies were created imitating his persona.
The other elements of Section 123.1 (f) have also been sufficiently established: (1) there is confusing similarity between the competing marks, (2) the use of AGENT BOND would indicate a connection between it and JAMES BOND [with both elements previously discussed], and (3) the use of AGENT BOND will likely damage Danjaq's interest over JAMES BOND.
Damages under Section 123.1 (f) is present when there is Trademark Dilution. In Levi Strauss & Co.,76 this Court defined trademark dilution, viz.:
Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception. Subject to the principles of equity, the owner of a famous mark is entitled to an injunction "against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." This is intended to protect famous marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it.77
As pointed out by Associate Justice Caguioa, our laws and jurisprudence have not yet elaborated on the two kinds of trademark dilution (i.e., dilution by tarnishment and dilution by blurring) stated in Levi Strauss & Co. However, the same case cites American Jurisprudence, which referred to American Law distinguishing between the two, that is:
(B) For purposes of paragraph (1), "dilution by blurring" is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
(i) the degree of similarity between the mark or trade name and the famous mark.
(ii) the degree of inherent or acquired distinctiveness of the famous mark.
(iii) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) the degree of recognition of the famous mark.
(v) whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) any actual association between the mark or trade name and the famous mark.
(C) For purposes of paragraph (1), "dilution by tarnishment" is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.78 (Emphasis omitted)
Echoing Associate Justice Caguioa's discussion, the elements of dilution by blurring are present here:
• Factor (i) has already been established x x x involving the Dominancy Test to show resemblance of the marks
• Factors (ii) and (iv) are already satisfied by the CA's pronouncement that "JAMES BOND" is well-known
• Factor (v) is established by Suyen's admission that there is a mental connection created between "AGENT BOND" and the well-known "JAMES BOND" mark.79
As a result of the abovementioned findings, it is clear that AGENT BOND is non-registrable under Section 123.1, paragraphs (d) and (f).
This Court recognizes and protects the goodwill painstakingly created by businesses. In Ang v. Teodoro,80 this Court held:
The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and the merit of his wares or services. Experience has demonstrated that when a well-known trade-mark is adopted by another even for a totally different class of goods, it is done to get the benefit of the reputation and advertisements of the originator of said mark, to convey to the public a false impression of some supposed connection between the manufacturer of the article sold under the original mark and the new articles being tendered to the public under the same or similar mark. As trade has developed and commercial changes have come about, the law of unfair competition has expanded to keep pace with the times and the element of strict competition in itself has ceased to be the determining factor. The owner of a trademark or trade-name has a property right in which he is entitled to protection, since there is damage to him from confusion of reputation or goodwill in the mind of the public as well as from confusion of goods.81
Thus, "[t]he objects of trademark are to point out distinctly the origin or ownership of the articles to which it is affixed, to secure him who has been instrumental in bringing into market a superior article or merchandise the fruit of his industry and skill"82 and to allow the original owner of the mark to expand his/her/its business without the fear of a second user freely riding on the original owner's goodwill.
WHEREFORE, the instant Petition for Review on Certiorari is DENIED. The Decision dated September 2, 2019 and the Resolution dated December 4, 2019 of the Court of Appeals in CA-G.R. SP No. 159794 are hereby AFFIRMED.
SO ORDERED.
Gesmundo, C. J., Zalameda, and Gaerlan, JJ., concur.
Caguioa, J., Please see concurring opinion.
Footnotes
1 Rollo, pp. 10-43.
2 Penned by Associate Justice Franchito N. Diamante with the concurrence of Associate Justices Eduardo B. Peralta, Jr. and Tita Marilyn B. Payoyo-Villordon; id. at 51-62.
3 Id. at 64-65.
4 Id. at 332-338.
5 Id. at 236-240.
6 Id. at 52.
7 Id.
8 Id. at 141-153.
9 Id. at 141-142.
10 Id. at 66-72.
11 Id. at 143.
12 I.e., BCut, Inc. and Mother Unit Corporation.
13 Rollo, p. 144.
14 Id. at 146.
15 Id. at 145-146.
16 Id. at 148.
17 Id. at 149-150.
18 Id. at 150-152.
19 Id. at 219-233.
20 Id. at 226-227.
21 Supra note 5.
22 Rollo, p. 238.
23 Id. at 239.
24 Id. at 239-240.
25 Id. at 253.
26 Id. at 251-254.
27 Id. at 241-266.
28 Id. at 244.
29 Id. at 244-245.
30 Id. at 259-264.
31 214 Phil. 332 (1984).
32 Rollo, pp. 275-284.
33 Id. at 275-283.
34 Now under IPOPHIL Memorandum Circular No. 17-010 entitled Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers of 2017.
35 Rollo, pp. 282-283.
36 507 Phil. 238 (2005).
37 Id. at 327.
38 Supra note 4.
39 Rollo, pp. 334-338.
40 408 Phil 307 (2001).
41 Rollo, p. 337.
42 Id.
43 Id. at 361.
44 Id. at 360-361.
45 Id. at 352-353, 356-360.
46 Supra note 2.
47 Rollo, pp. 57, 61-62.
48 I.e., Confusion of Goods and Confusion of Business.
49 Rollo, pp. 54-60.
50 Id. at 60-61.
51 IPOPHL Memorandum Circular N. 17-010.
52 Rollo, p. 61.
53 Id.
54 Id. at 396-404.
55 Id. at 400-404.
56 Id. at 408-411.
57 Id. at 409-411.
58 Supra note 3.
59 Rollo, pp. 24-32.
60 Id. at 32-36.
61 Id. at 419-424.
62 Id. at 433-435.
63 A.M. No. 10-3-10-SC dated October 6, 2020. This was reproduced from the 2011 Rules of Procedure for Intellectual Property Rights Cases under the same administrative circular dated October 18, 2011.
64 This is different from the multi-factor or economic test mentioned by this Court in cases determining the presence of employer-employee relationship. Maricalum Mining Corp. v. Florentino, 836 Phil. 655, (2018); Dumpit-Murillo v. Court of Appeals, 551 Phil. 725 (2007). This multi factor test should also be differentiated from the multifactor balancing test referred to in criminal and constitutional law. See Lejano v. People, 652 Phil. 512 (2010), citing Allado v. Diokno, 302 Phil. 213 (1994).
65 G.R. No. 228165, February 9, 2021.
66 Societe Des Produits Nestle, S.A. v. Court of Appeals, 408 Phil. 307, 324 (2001).
67 Other two registered trademarks - i.e., Mighty Bond and Mighty Bond Sakto - are under the same applicant, Pioneer Adhesives, Inc.
68 See Associate Justice Alfredo Benjamin S. Caguioa's Reflections, p. 13.
69 McDonald's Corp. v. LC. Big Mak Burge, Inc., 480 Phil. 402, 429-430 (2004).
70 Id. at 428, citing Sterling Products International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, 137 Phil. 838, 852 (1969).
71 778 Phil. 763 (2016).
72 Id.
73 IPO Memorandum Circular No. 17-010.
74 See Associate Justice Alfredo Benjamin S. Caguioa's Reflections, p. 13.
75 Id. at 11.
76 Supra note 36.
77 Id. at 254-255.
78 See Associate Justice Alfredo Benjamin S. Caguioa's Reflections at 15-16.
79 Id. at 16.
80 74 Phil. 50 ( 1942).
81 Id. at 55.
82 Etepha, A.G. v. Dir. of Patents, 123 Phil. 329, 332-333 (1966).
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