April 20, 2015

Bridgestone Corporation emerges victorious once again in another suit against an applicant seeking the registration of a trademark that uses the suffix “STONE” in connection with goods in Class 12.

A Chinese company attempted to register “R-STONE” in the Philippines for use in Class 12.  In its opposition, Bridgestone alleged that it was the first to use and register “BRIDGESTONE” in connection with the design, manufacture and technology of tires.  It claimed that the ownership and association of the word “STONE” as a distinctive word element of its house mark “BRIDGESTONE” was bolstered by its acquisition in 1998 of Firestone Tire & Rubber Corporation, along with the “FIRESTONE” trademark.  In fact, the “BRIDGESTONE” mark has already been declared a well-known mark in view of approximately 500 trademark applications and registrations, as well as approximately 243 domain name registrations, in numerous countries around the world.  Bridgestone further pointed out that Applicant’s mark contains the word “STONE”, which has been declared as the dominant element of the “BRIDGESTONE” mark, and the letter “R” is found in both marks.

In sustaining the opposition, the Bureau of Legal Affairs (BLA) recognized that Bridgestone’s marks consistently uses the word “STONE”.  Although “stone” is a common English word, according to the BLA, it is not descriptive or generic for tires, hence it is distinctive.  It therefore agreed with Bridgestone’s claim that Applicant should not be allowed to use the same word element as the dominant feature of Bridgestone’s marks.  The BLA further opined that although the preceding letters in the competing marks are different, any perceived difference does not eliminate the probability of confusion or deception on the part of the purchasing public.  That Bridgestone’s marks begin with either the words “FIRE” or “BRIDGE”, while Applicant’s mark begins with “R-”, is of no significance.  There is still a likelihood of consumer confusion, especially since both are used in connection with tires.

The BLA was also persuaded by its previous decisions sustaining oppositions for registration of trademarks that appropriate the word “STONE”.  In Bridgestone Corporation vs. Richard D. Uy (IPC No. 14-2006-00199), it held that the “STONE” element in Applicant’s RIVERSTONE is identical to that of BRIDGESTONE and FIRESTONE.  The presence of “STONE” in the contending trademarks persuaded the BLA to rule that RIVERSTONE is a misappropriation of the dominant element of Bridgestone’s trademarks.  Likewise, in Bridgestone Corporation vs. Shandong Chengsan Tyre Co., Ltd. (IPC No. 14-2008-00068), the BLA also denied the registration of the mark “AUSTONE” for goods in Class 12.

This latest opposition involving “R-STONE” re-affirms the distinctiveness of Bridgestone’s “STONE” marks, which are now afforded a substantially high level of protection.  The BLA took the view that allowing a third party to register other “STONE” marks in Class 12 will damage Bridgestone’s goodwill and reputation, which it has painstakingly earned and established for many years.  There is therefore no doubt that the BLA’s consistent recognition of the strength of the Bridgestone’s marks proves that the rights of Bridgestone are indeed set in “STONE” for now.