January 26, 2015

The “Runbird” logo is a recognizable symbol, which identifies Japanese-based Mizuno Corporation and its sportswear products. This free-flowing, graphic symbol has been compared to other famous logos of leading sportswear companies, such as the three stripes of Adidas and the unmistakable swoosh of industry giant Nike. It is therefore not surprising that Mizuno aggressively protects its “Runbird” logo worldwide.

In the Philippines, Mizuno opposed the application for “ERKE & DEVICE” owned by Fujian Hongxing Erke Sports Goods Co., Ltd. Mizuno contends that the device portion of Fujian’s mark is confusingly similar to its “Runbird” logo. The Bureau of Legal Affairs (BLA) dismissed the opposition and ruled that the device in Fujian’s mark is not identical to the “Runbird” logo in Mizuno’s mark. The BLA pointed out that there are observable differences in the angles, slants and curves, specifically noting the presence of a triangular-shaped hole in the lower middle portion of Mizuno’s device, which is absent in Fujian’s mark. The BLA further explained that Fujian’s mark is a composite mark consisting of a device and the word “ERKE”. Neither the device nor the word “ERKE” is the dominant feature of Fujian’s mark. Instead, the device and “ERKE” complement each other to form a mark with a character that is distinct from Mizuno’s mark. The BLA also noted that even assuming arguendo that there are similarities between the device portions of the parties’ marks, the addition of the word “ERKE” in Fujian’s mark made consumer confusion unlikely.

Unsatisfied with the BLA decision, Mizuno appealed to the Office of the Director General. The Director General, however, agreed with the BLA that the marks are not confusingly similar. The Director General reiterated that the marks at issue are both composite marks. The combination of device and word mark gives each mark a distinct character and appearance. The Director General noted that the words “MIZUNO” and “ERKE” are completely different, and combining them with their respective devices undoubtedly creates two distinctive marks that cannot confuse the buying public. Moreover, the Director General reasoned that there can be no confusion because the goods at issue involve sportswear, not ordinary household goods, which prospective buyers will casually purchase without careful scrutiny.

One of the more noteworthy aspects of this decision is that it sets a precedent for the evaluation of likelihood of confusion with respect to trademarks covering sportswear products. The decision specifically categorizes sportswear products as items that are purchased by discerning and discriminating buyers. This categorization ultimately makes it more difficult for sportswear companies to prove likelihood of confusion when another company uses a slight variation of its design mark or logo. In addition, the decision also has implications on the protection of “composite marks”. Composite marks are defined as trademarks that contain both a device and a word mark. The BLA declared that there can be no dominant element in a composite mark because the word and the design “complement each other to form a mark that is distinct” and not confusingly similar to the contending mark.

The Director General appears to have agreed with the BLA’s analysis. The problem with that approach, however, is that if the device component of the composite mark is similar to the contending mark while the word part is different, the necessary conclusion is that the marks are not confusingly similar. Such analysis essentially makes it easier for potential infringers to copy established brand’s logo provided that they choose a word mark that is completely different from the established mark.

It is also worth noting that the Director General considered Mizuno’s claim for protection under the internationally well-known provision of the IP Code as moot after declaring that the parties’ trademarks are not confusingly similar. But what will surely alarm some trademark owners is the statement he made that if Mizuno’s “Runbird” logo were internationally well-known “it is all the more logical that buyers would be more discerning and discriminating of the trademark and manufacturer of the sportswear that they are purchasing, leaving no room for confusion.” This statement implies that relevant purchasers of famous trademarks can never be confused or deceived when confronted with imitation products. Which is another way of saying that when one asserts protection as a well-known trademark, the owner automatically loses on the likelihood of confusion issue because its relevant buyers never err when choosing products in the marketplace. By this logic, therefore, fame will put its owner at a disadvantage in an enforcement scenario, Section 123.1 (e) and (f), notwithstanding. Fame, it seems, becomes a curse, and not a blessing.