August 15, 2016

The series of decisions rendered by the Bureau of Legal Affairs (“BLA”) leave no doubt that the BRIDGESTONE trademark has solidified its status as a well-known mark in the Philippines and Bridgestone Corporation has secured exclusive rights to use the ‘STONE’ element of its BRIDGESTONE mark when the goods involved belong in Class 12.

Various trademark applications covering tire products filed by different proprietors have put Bridgestone Corporation on guard.  First, there was an opposition case against Hangzhou Unibear Industrial Co., Ltd. (“Hangzhou”), wherein Bridgestone successfully convinced the Bureau that Hangzhou’s mark is confusingly similar to its registered B device.  Bridgestone based its claim on Article 6bis of the Paris Convention and argued that the copying of even a portion of its well-known mark is enough to bar the registration of the subject mark. Apart from confusing similarity between the marks, the Bureau upheld the existence of likelihood of confusion on the basis of relatedness of the covered goods, which flow through the same channels of trade, i.e. automotive shops.

It is the same challenge that Bridgestone successfully weathered in another opposition this time against an individual, Alex Mesina (“Mesina”).  Mesina filed an application to register the mark ‘SILVERSTONE’ for use on tires. The Bureau decided in favor of Bridgestone as it cited previous pronouncements against several other proprietors appropriating the term –STONE for use on similar or related goods. Indeed, -STONE has been established as the distinctive feature of the ‘BRIDGESTONE’ mark. Accordingly, the Bureau sustained the opposition and refused the registration of ‘SILVERSTONE’.

Finally, Bridgestone successfully opposed the application for the ‘QUICKSTONE’ mark filed by another individual, Christina Ong Choi. In this particular case, Bridgestone presented an exhaustive discussion to show the extent of its investment in and the resulting fame of its ‘BRIDGESTONE’ mark. Bridgestone also cited previous decisions by the Bureau and by the World Intellectual Property Organization panels, where these tribunals upheld the well-known status of the BRIDGESTONE mark. Based on these arguments, the Bureau sustained the opposition after finding confusing similarity between the marks, and on the basis of precedents vesting exclusive rights to Bridgestone for the term –STONE covering tire products under Class 12.

These cases are just a part of a long list of trademark disputes, where the BRIDGESTONE mark is declared as a well-known mark in the Philippines, thereby resulting in an even greater scope of protection. These decisions further reinforce Bridgestone Corporation’s exclusive right to the ‘STONE’ portion of its mark, especially when such element is used on tire products.  And more importantly, these decisions can be cited in future inter partes cases that Bridgestone may file against confusingly similar marks using ‘STONE’ for tire products.