3. Well-known Marks

Canon Kabushiki Kaisha v. Court of Appeals

Facts of the Case:

• Canon Kabushiki Kaisha, the owner of the famous "Canon" trademark used primarily for cameras and imaging equipment, objected to a local company's use of the "Canon" trademark for its brand of electrical lamps.

Court's Decision:

• The Supreme Court of the Philippines held that the use of the "Canon" trademark by the local company for electrical lamps did not infringe on Canon Kabushiki Kaisha's trademark rights.
• The rationale was that Canon Kabushiki Kaisha did not deal in electrical lamps, and thus, there was no likelihood of confusion among consumers regarding the source of the products.
• The Court emphasized that trademarks are protected to prevent confusion about the origin of goods and services, and if no such confusion is likely because the products are unrelated, the trademark owner cannot validly object to the use of the same trademark.

Updated: Isco Holding Corporation v. Nikon Corporation, G.R. No. 256002, 17 November 2025, clarifies that, subject to statutory qualifications, a registered well-known mark bars registration of a confusingly similar or identical mark even for dissimilar goods; confusing similarity is assessed under the Dominancy Test.

WELL-KNOWN MARKS

The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such wellknown mark or an imitation liable to create confusion therewith. (Art. 6 bis , Paris Convention¹)

Note: The essential requirement under this Article is that the trademark to be protected must be “well-known” in the country where protection is sought. The power to determine whether a trademark is well-known lies in the “competent authority of the country of registration or use.” This competent authority would be either the registering authority, if it has the power to decide this, or the courts of the country in question if the issue comes before a court. (Sehwani v. In-N-Out² Burger, Inc., G.R. No. 171053, 15 October 2007)³

The question of whether or not respondent's trademarks are considered “well-known” is factual in nature, involving as it does the appreciation of evidence adduced before the BLA-IPO. The settled rule is that the factual findings of quasi-judicial agencies, like the IPO, which have acquired expertise because their jurisdiction is confined to specific matters, are generally accorded not only respect, but, at times, even finality if such findings are supported by substantial evidence. (Sehwani v. In-N-Out Burger, Inc.)

Factors Which Shall Not be Required in Determining Whether a Mark is a Well-known Mark:

• that the mark has been used in, or that the mark has been registered, or that an application for registration of the mark has been filed in or in respect of the Member State;
• that the mark is well known in, or that the mark has been registered, or that an application for registration of the mark has been filed in or in respect of, any jurisdiction other than the Member State;
• that the mark is well known by the public at large in the Member State. (Part I, Art. 2.3, 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks⁴ cited with approval in Sehwani v. In-N-Out)

Criteria for determining whether a mark is wellknown:

• Duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
• Market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
• Degree of the inherent or acquired distinction of the mark;
• Quality-image or reputation acquired by the mark;
• Extent to which the mark has been registered in the world;
• Exclusivity of registration attained by the mark in the world;
• Extent to which the mark has been used in the world;
• Exclusivity of use attained by the mark in the world;
• Commercial value attributed to the mark in the world;
• Record of successful protection of the rights in the mark;
• Outcome of litigations dealing with the issue of whether the mark is a well-known mark; and
• Presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his mark is a well-known mark.

(Rule 102, Rules and Regulations On Trademarks, Servicemarks, Tradenames and Marked or Stamped Containers⁵)

Updated: However, if an existing well-known trademark is also registered in the Philippines, a confusingly similar or identical mark may be refused registration even for goods or services that are not identical or similar, provided that use of the later mark would indicate a connection with the owner of the registered mark and the interests of that owner are likely to be damaged by such use (Intellectual Property Code, Sec. 123.1(f); Isco Holding Corporation v. Nikon Corporation, G.R. No. 256002, 17 November 2025).