November 8, 2016

The fashion house Stella McCartney Limited (“opposer”), known for its ready-to-wear apparel, accessories, lingerie, eyewear, and fragrances opposed the registration in the Philippines of the trademark ST ELLA owned by the Malaysian company, Melilea (“applicant”).

Melilea filed an application to register ST ELLA designating, among others, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices in Class 3, and leather goods in Class 18.

The opposer contended that ST ELLA is confusingly similar to its trademark STELLA and infringes its trade name Stella McCartney Limited.  The opposer claimed that it has used and registered STELLA in the Philippines long before the opposed application was filed; that STELLA is an internationally famous trademark, registered and successfully sold in many countries around the world; that the registration of ST ELLA will create a likelihood of confusion, mistake and deception among the consumers, and cause damage to opposer.

The applicant disagreed and countered that ST ELLA and STELLA are neither identical nor confusingly similar.  It pointed out that ST ELLA uses two terms, “ST” and “ELLA” which sufficiently distinguishes it from STELLA because “ST” is pronounced “saint”.  The applicant pointed out that the presence of the common letters S-T-E-L-L-A notwithstanding, ST ELLA is different because it is written with a noticeable gap between the two words, ST and ELLA, and the differences are significant when the two marks are compared to each other.

The Adjudication Officer agreed with the applicant’s arguments and held that although the marks of the parties contain exactly the same letters S-T-E-L-L-A, a comparison of how the marks appear would show that they are different and distinct from each other. The Officer also observed that the trademark STELLA is written in plain uppercase letters while the applicant’s ST ELLA mark is written in highly stylized format. It agreed with the applicant that STELLA is written and pronounced as a single word while the applicant’s trademark consists of two words.  From these, the Officer concluded that the parties’ trademarks are visually and aurally different, hence not confusingly similar.

The decision invoked the 1966 case of Etepha A.G. vs. Director of Patents, (G.R., No. L-20635, 31 March 1966). In that case the Supreme Court said:  “A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademark[s] pictured in their manner of display.  Inspection should be undertaken from the viewpoint of the prospective buyer.  The trademark complained of should be compared and contrasted with the purchaser’s memory (not in juxtaposition) of the trademark said to be infringed.  Some such factors as “sound; appearance; form; style, shape, size or format; ideas connoted by marks; the meaning, spelling and pronunciation, of word used; and the setting in which the words appear may be considered.  Thus, confusion is likely between marks only if their overall presentation as to sound, appearance or meaning would make it possible for consumers to believe that the goods or products, to which the marks are attached, comes from the same source or are connected with each other.”

Etepha uses the sight, sound and meaning trilogy test when comparing similarities between contending trademarks. It prescribes that the whole of the two trademarks must be examined as to their manner of display, form, style, shape, size, format, spelling, pronunciation, and connotation or meaning. And the BLA appears to have done exactly that because it pointed out the style and format in which the opposed mark was written. Nevertheless, the BLA did not seem to observe one important criterion that the Etepha Court prescribed, which is, that inspection of similarities and differences must be made from the viewpoint of the prospective buyer. The Court in Etepha said that when making the comparisons, the marks need not be examined while laid side-by-side.  Rather, one has to rely on the buyer’s memory or recollection of the opposer’s trademark when it is compared with the opposed trademark. This manner of comparison was not observed here.

In the decision at hand, the BLA regarded as a significant difference between the parties’ marks their different pronunciations.  But this appears to be premised on one specific manner of looking at the term “ST” in the opposed mark “ST ELLA”. According to the decision, “ST” really represents the word “saint” and is pronounced or read as such. Thus, the applicant’s mark is pronounced as two words, “saint ella” while the opposer’s mark is pronounced as one word “stella”.

One wonders however whether the Etepha prescription was correctly applied when ST is read as “saint”. ST is not followed by a period but the decision says it really means “saint”? Is this reading of ST representative of the prospective buyer’s viewpoint?  Would a prospective Filipino buyer not familiar with the English language really read “ST” (without period) as “saint”?

Moreover, the decision seems to put great weight on the gap or space between “ST” and “ELLA”.  Is the gap or space significant enough to act as a redeeming factor for applicant’s act of copying all 6 letters of opposer’s “STELLA” and writing them in the exact sequence as S-T-E-L-L-A?

The decision seems to have ignored the fact that ordinary Filipino consumers who are not familiar with the English language may look at “ST” but may fail to associate it with the word “saint”, an English term.  The likelihood of such scenario happening is high because there is no period after the term “ST”.  If that scenario was recognized then the differences in pronunciation disappear, and what remains are two marks which are now identical in spelling, with both using the identical letters S-T-E-L-L-A.

It is interesting to note that in Australia the same opposer also battled the same applicant over the registrabiltiy of ST ELLA.  The opposer won that case and the decision appears to be in line with Etepha because the Judge discussed the Australian’s habits of reading and pronouncing words.  The comment of the Judge in the Australia case is quoted below:

Phonetically the marks are also very similar bearing in mind the tendency for persons, particularly in Australia, to be lazy in their pronunciation. Consequently, even if the Applicant’s mark was referred to as “saint ella”, the word “saint” could easily be slurred to “snt” and “snt ella”, with the emphasis being on the word “ella” and the name being misheard as the more recognized word “stella”.

Unlike the case in Australia however, the Philippine case did not have a similar discussion. The decision made no mention of how ordinary Filipino consumers, not familiar with the English language, would likely read “ST” and why they would likely take “ST” as equivalent to the word “saint”.  That should have been the approach because the mark must be viewed from the point of view of the prospective buyer, according to Etepha.

On the corporate name issue, the Adjudication Officer brushed aside opposer’s argument that the word STELLA as part of its corporate name must also be protected. It cited a Supreme Court decision, which ruled that there is no automatic protection afforded to an entity whose tradename is alleged to have been infringed through the use of that name as a trademark. The Officer ruled that despite the presence of the word STELLA in the opposer’s corporate name, that will not prevent the applicant from registering STELLA as the applicant’s own trademark. The officer concluded that there is no confusing similarity between the parties’ trademarks.