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ABSCBN Publishing Inc. v. Director of The BoT

This document summarizes a Supreme Court case regarding the refusal to register the trademark "METRO" for magazines. The Intellectual Property Office refused registration because the mark was identical to three other registered trademarks containing the word "METRO". The Supreme Court upheld this refusal, finding that the dominant feature of all the marks was the word "METRO" and its identical spelling and pronunciation would likely cause confusion regarding the goods' source or origin. The examiner found the marks were identical in sound, spelling, meaning and commercial impression for the same goods, making confusion likely. Therefore, registration was prohibited under intellectual property law.

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Gabrielle Dayao
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154 views

ABSCBN Publishing Inc. v. Director of The BoT

This document summarizes a Supreme Court case regarding the refusal to register the trademark "METRO" for magazines. The Intellectual Property Office refused registration because the mark was identical to three other registered trademarks containing the word "METRO". The Supreme Court upheld this refusal, finding that the dominant feature of all the marks was the word "METRO" and its identical spelling and pronunciation would likely cause confusion regarding the goods' source or origin. The examiner found the marks were identical in sound, spelling, meaning and commercial impression for the same goods, making confusion likely. Therefore, registration was prohibited under intellectual property law.

Uploaded by

Gabrielle Dayao
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as DOCX, PDF, TXT or read online on Scribd
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ABS-CBN PUBLISHING, INC., petitioner, vs.

Director of the Bureau of Trademark, respondent |


G.R. No. 217916, June 20, 2018|
Facts: In 2004, the petitioner filed with the IPO its application for the registration of its
trademark "METRO" (applicant mark) under class 16 of the Nice classification, with specific
reference to "magazines. " The case was assigned to Examiner Icban, who, after a judicious
examination of the application, refused the applicant mark's registration. According to Examiner
Icban, the applicant mark is identical with three other cited marks, and is therefore unregistrable
according to Section 123 .1 (d) of the Intellectual Property Code of the Philippines (IPC). The
cited marks were identified as (1) "Metro" (word) by applicant Metro International S.A. (2)
"Metro" (logo) also by applicant Metro International S.A. with Application and (3) "Inquirer Metro"
by applicant Philippine Daily Inquirer, Inc.
The petitioner appealed the assessment of Examiner Icban before the Director of the Bureau of
Trademarks of the IPO, who eventually affined Examiner Icban's findings. The decision averred
that the applicant and cited marks were indeed confusingly similar, so much so that there may
not only be a confusion as to the goods but also a confusion as to the source or origin of the
goods.
Upon the denial of the petitioner's motion for reconsideration, the petitioner appealed to the
Office of the Director General (ODG) of the IPO. The ODG rendered a Decision which upheld
Examiner Icban's assessment and the Bureau Director's decision.
Issue: Whether the ODG was correct in refusing to register the applicant mark for being identical
and confusingly similar with the cited marks already registered with the IPO
Ruling: YES. According to Section 123 .1 (d) of the Intellectual Property Code of the Philippines
(IPC), a mark cannot be registered if it is "identical with a registered mark belonging to a
different proprietor or a mark with an earlier filing or priority date," in respect of the following: (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.
In the present case, the dominant feature of the applicant mark is the word "METRO"
which is identical, both visually and aurally, to the cited marks already registered with the IPO.
As held by the ODG-and correctly at that-
xx x there is no dispute that the subject and cited marks share the same
dominant word, "Metro". (sic) Even if, as the Appellant (petitioner herein) points out, the
second cited mark owned by Metro International contains an accompanying device, and
the third cited mark contains the terms "Philippine Daily Inquirer", (sic) the dominant
feature of the subject and cited marks is still clearly the word "Metro", (sic) spelled
and pronounced in exactly the same way. The identity between the marks would
indubitably result in confusion of origin as well as goods. (Emphasis and underscoring
supplied, citations omitted)

Also, greater relevance is to be accorded to the finding of Examiner Icban on the


confusing similarity between, if not the total identity of, the applicant and cited marks. Examiner
Icban, in reiterating with finality her earlier findings, said that the applicant and cited marks are
"the same in sound, spelling, meaning, overall commercial impression, covers substantially the
same goods and flows through the same channel of trade," which leads to no other conclusion
than that "confusion as to the source of origin is likely to occur. " This is also the tenor of
Examiner lcban's "Final Rejection" of the application, which stated that:
After an examination of the application, the undersigned IPRS has determined that the
mark subject of the application cannot be registered because it is identical with the cited marks
METRO with Regn. No. 42000002584 and Regn. No. 42000003811. METRO being dominant
word (sic) among the marks causes remarkable similarity in sound, spelling, meaning,
connotation, overall commercial impression, covers identical goods and flows through the same
channel of trade. The concurrent use by the parties of the word METRO is likely to cause
confusion among purchasers as well as confusion of business or origin hence,
registration of this subject application is proscribed under R.A. 8293, Sec. 123.l(d).
(Emphasis and underscoring supplied)

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