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SUYEN CORPORATION v. DANJAQ LLC

FACTS:

On February 16, 2010, Suyen Corporation filed an application for the registration of the mark "AGENT BOND" for various hair products. Danjaq, LLC, the owner of the trademark "JAMES BOND," opposed the registration, claiming that it would cause confusion. The Bureau of Legal Affairs (BLA) sustained Danjaq's opposition and denied Suyen's application, ruling that the mark would cause confusion with the "Bond" marks. Suyen appealed to the Office of the Director General (ODG), presenting evidence to show that there was no confusion among consumers. The ODG denied the appeal, finding the marks similar and that Suyen intended to take advantage of the goodwill of the JAMES BOND mark. Suyen then appealed to the Court of Appeals (CA), which affirmed the decisions of the BLA and ODG, citing confusion with the fictional character James Bond. Suyen filed a motion for reconsideration challenging the declaration of "James Bond" as a well-known mark. The Court ruled that Suyen's application for registration was correctly denied as it closely resembled the registered mark and would likely cause confusion.

ISSUES:

  1. Whether the CA can overextend Danjaq's rights over JAMES BOND by denying trademark applications involving the word "bond."

  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.

  3. Whether there is a likelihood of confusion between the trademark "AGENT BOND" and the fictional character "JAMES BOND."

  4. Whether there is a confusion of business between the products associated with the marks "AGENT BOND" and "JAMES BOND."

  5. Whether or not JAMES BOND is a well-known mark.

  6. Whether or not the use of AGENT BOND is confusingly similar or likely to cause damage to JAMES BOND.

  7. Whether or not AGENT BOND violates Section 123.1 (f) of the Intellectual Property Code.

  8. Whether the elements of trademark dilution by blurring are present in the case.

  9. Whether the mark "AGENT BOND" is non-registrable under Section 123.1, paragraphs (d) and (f).

RULING:

  1. The petition fails. 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 nearly resembles the registered mark JAMES BOND and is likely to deceive or cause confusion. The likelihood of confusion between the marks is established through a multifactor test considering the strength of the plaintiff's mark, the degree of similarity between the marks, proximity of the products or services, likelihood of the plaintiff bridging the gap, evidence of actual confusion, defendant's good faith, quality of defendant's product or service, and sophistication of the buyers. The popularity and name-recall of JAMES BOND, along with the manner in which the terms "agent" and "bond" are utilized in AGENT BOND, suggest a connection with James Bond. The CA has the power to deny trademark applications involving the word "bond" and to declare a trademark as well-known, as long as the legal requirements are met.

  2. Yes. The Court holds that there is a likelihood of confusion between the trademark "AGENT BOND" and the fictional character "JAMES BOND." The use of the term "AGENT BOND" in relation to a hair styling product may lead purchasers to associate it with the fictional secret spy agent, James Bond. The similarity caused by this play of words is too obvious to ignore.

  3. Yes. The Court finds that there is a confusion of business between the products associated with the marks "AGENT BOND" and "JAMES BOND." The products are non-competing but related enough to produce confusion of affiliation. The public may be deceived into believing that there is some connection between the owner of the "JAMES BOND" mark and the owner of the "AGENT BOND" mark, which in fact does not exist.

  4. The Court upholds the declaration of the Court of Appeals (CA) that JAMES BOND is a well-known mark based on substantial evidence.

  5. The use of AGENT BOND is found to be confusingly similar and likely to cause damage to JAMES BOND.

  6. AGENT BOND violates Section 123.1 (f) of the Intellectual Property Code as it suggests a connection with the well-known mark JAMES BOND, which would likely damage the interests of the owner of the registered mark.

  7. The elements of trademark dilution by blurring are present in the case. The court considered the relevant factors, including the degree of similarity between the marks, the degree of distinctiveness of the famous mark, the exclusive use of the mark, and the recognition of the famous mark. These factors were satisfied, and it was established that the mark "AGENT BOND" creates a mental connection with the well-known "JAMES BOND" mark.

  8. The mark "AGENT BOND" is non-registrable under Section 123.1, paragraphs (d) and (f) as it violates the law on dilution and tarnishment of a famous mark.

PRINCIPLES:

  • Likelihood of confusion is the key factor in determining the registrability of a mark. Actual confusion is not required. (Section 123.1 (d) of the Intellectual Property Code)

  • The Dominancy Test considers visual, aural, and connotative comparisons, as well as overall impressions between marks. (Section 5, Rule 18 of the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases)

  • The multifactor test considers various factors in determining likelihood of confusion, including the strength of the plaintiff's mark, the degree of similarity between the marks, proximity of the products or services, likelihood of the plaintiff bridging the gap, evidence of actual confusion, defendant's good faith, quality of defendant's product or service, and sophistication of the buyers.

  • Protection can be accorded to trademarks already registered with the IPO even without absolute certainty of confusion or actual confusion.

  • Likelihood of confusion - Refers to 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.

  • Confusion of business - Occurs when the products are non-competing but related enough to produce confusion of affiliation. It contemplates a situation where the public would be deceived into believing that there is some connection between the owners of the competing marks, which does not exist.

  • Protection of goodwill - The court recognizes the importance of protecting the goodwill established by a business and prevents newer products from causing confusion by associating with an established mark.

  • The determination of a well-known mark can be made by the courts, the Director General, and the director of the Bureau of Legal Affairs, as long as certain criteria are met (Rule 101 (d) of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers).

  • The criteria for determining whether a mark is well-known include the duration, extent, and geographical area of use, market share, distinction of the mark, reputation acquired, registrations and use worldwide, among others (Rule 103 of the Rules and Regulations).

  • Trademark dilution occurs when a famous mark's capacity to identify and distinguish goods or services is lessened, regardless of competition or likelihood of confusion. The owner of a famous mark is entitled to an injunction against another person's commercial use that causes dilution (Levi Strauss & Co. case).

  • Trademark dilution can occur through blurring or tarnishment.

  • Dilution by blurring arises from the similarity between a mark or trade name and a famous mark, which impairs the distinctiveness of the famous mark.

  • In determining whether a mark or trade name is likely to cause dilution by blurring, various factors need to be considered.

  • Dilution by tarnishment arises from the similarity between a mark or trade name and a famous mark, which harms the reputation of the famous mark.

  • The rights of the original owner of a trademark are protected to preserve the valuable link between the owner and the public and to prevent confusion of reputation or goodwill.

  • Trademarks are meant to point out distinctly the origin or ownership of goods and protect the original owner's goodwill in the market.