Case Summary (G.R. No. 250800)
Facts of the Trademark Application and Opposition
Suyen’s application sought registration of AGENT BOND for hair refresher, gel, lotion, treatment, shampoo, and conditioner. Danjaq opposed on grounds of confusing similarity with JAMES BOND and dilution of its well-known marks. Danjaq presented certificates of registration of JAMES BOND and related marks in over 32 jurisdictions and asserted prior use of BOND GIRL 007 products in the Philippines.
Suyen’s Position and Arguments
Suyen denied confusing similarity, explaining that “AGENT BOND” is a non-descriptive, coined reference to the product’s function (agent as device, bond as binding) and that BENCH/FIX trademarks dominate packaging. It challenged Danjaq’s proof of local sales, asserted lack of well-known status for JAMES BOND under Section 123.1(e), and claimed absence of actual confusion or bad faith.
IPO Bureau of Legal Affairs Ruling
On October 10, 2014, the BLA sustained the opposition under Section 123.1(d), finding that AGENT BOND nearly resembles JAMES BOND. Applying the dominancy test, it held that the sequence “Agent Bond” evokes the fictional spy Agent 007 and would likely deceive or cause confusion among purchasers.
IPO Office of the Director General’s Resolution
The ODG, in its December 20, 2018 Decision, affirmed the BLA. It focused on confusing similarity and inferred Suyen’s bad faith in choosing a mark closely associated with James Bond’s goodwill, citing Societe Des Produits Nestle v. CA on the duty to avoid deceptive imitations.
Court of Appeals’ Affirmation and Well-Known Mark Finding
The CA denied Suyen’s petition, giving due respect to administrative findings. It distinguished confusion of business from confusion of goods and held AGENT BOND not to be a suggestive mark but a deliberate invocation of the James Bond franchise. The CA also declared JAMES BOND a well-known mark under Rule 102 of the Trademark Rules, considering its extensive worldwide registrations, use, promotion, inherent distinctiveness, and commercial value.
Legal Issues before the Supreme Court
Suyen raised two legal questions: (1) Whether IPO and CA may over-extend Danjaq’s rights merely because a mark contains “bond” or is “associated” with JAMES BOND; and (2) Whether the CA had jurisdiction to declare a mark well-known on its own motion.
Likelihood of Confusion under IP Code Section 123.1(d)
The Court upheld the multifactor test (2020 Revised Rules, Rule 18 Sec. 5) for determining likelihood of confusion, focusing on strength of Danjaq’s mark, trademark resemblance via the dominancy test (visual, aural, connotative comparisons), Suyen’s bad faith, and the plausibility of Danjaq entering the hair care market (normal potential expansion). The coined, fanciful JAMES BOND mark enjoys high distinctiveness and consumer name-recall. AGENT BOND’s visual/aural similarity and conceptual linkage to the spy character create a likelihood o
...continue readingCase Syllabus (G.R. No. 250800)
Procedural History
- Petition for Review on Certiorari filed under Rule 45, challenging:
- Court of Appeals Decision dated September 2, 2019 (CA-G.R. SP No. 159794)
- Court of Appeals Resolution dated December 4, 2019
- CA had denied Suyen Corporation’s petition for review under Rule 43 and affirmed:
- ODG Decision dated December 20, 2018 of the Intellectual Property Office (IPO)
- BLA Decision dated October 10, 2014 of the IPO’s Bureau of Legal Affairs
- Suyen sought registration of the mark “AGENT BOND” while Danjaq opposed under Section 134 of the Intellectual Property Code.
Facts of the Case
- Suyen Corporation:
- Philippine corporation operating under the BENCH trademark
- Filed on February 16, 2010 an application for the mark AGENT BOND for hair care products (Class 3)
- Used AGENT BOND as a styling gum since March 8, 2005 under its FIX Bench Salon line
- Danjaq LLC:
- U.S. corporation owning the JAMES BOND and related “Bond” marks
- Alleged priority use since 1962 and international fame from 22 films
- Claimed AGENT BOND unfairly trades on the popularity and goodwill of JAMES BOND
- Suyen’s defense:
- JAMES BOND never called “Agent Bond” in films; AGENT BOND is a suggestive reference to product function
- No evidence of actual consumer confusion; the common word BOND is diluted in the marketplace
- Disputed Danjaq’s claim of Philippine sales and well-known status
- Danjaq’s claim:
- Possibility of confusion suffices; AGENT BOND suggests Danjaq’s approval
- JAMES BOND qualifies as a well-known mark under Section 123.1(e)
Rulings of the Intellectual Property Office
- BLA Decision (Oct. 10, 2014):
- Noted confusing similarity under Section 123.1(d) — likelihood of business confusion
- Denied Suyen’s AGENT BOND application
- ODG Decision (Dec. 20, 2018):
- Upheld BLA’s finding of confusing similarity; did not address well-known status
- Cited Suyen’s failure to explain its mark choice and inferred bad faith
Ruling of the Court of Appeals
- Decision (Sept. 2, 2019):
- Gave great weight to IPO’s findings on confusing similarity
- Distinguished confusion of goods vs. confusion of business; found th