June 13, 2016
Generally, proving secondary meaning of a trademark in order to overcome a descriptiveness refusal is notoriously difficult. A trademark owner usually has to present a voluminous amount of evidence of continuous use, and sometimes may need to present costly and time-consuming market and consumer surveys. However, in a decision issued by the Bureau of Legal Affairs, Nestle was able to successfully prove secondary meaning with a minimal amount of evidence.
The case stems from an application for the mark “SUPER CHOW” filed by a local Philippine company for use on “dog food” under Class 31. Nestle opposed the application arguing that “SUPER CHOW” is confusingly similar to its registered mark “CHOW” also used in connection with animal food products. In its Answer, the applicant alleges, among other things, that what it seeks to register is the phrase “SUPER” and “CHOW” together, not individually as it had disclaimed both words in the application. It further asserts that it does not seek to appropriate the word “CHOW” alone and that its application readily shows that apart from “SUPER CHOW”, a substantial part of its mark is the designs for the caped dog and two paw prints. The applicant, therefore, concluded that the applied mark is not confusingly similar to Nestle’s “CHOW” trademark.
In comparing the parties’ marks, the Bureau observed that the common denominator between them is the word “CHOW”. However, it noted that “CHOW” is generic and/or descriptive of food products as it connotes the noun “food” and/or the verb “eat”. It is well-established that generic and/or descriptive words cannot be registered as trademarks except when the word has acquired secondary meaning. Thus, the Bureau looked towards the Supreme Court decision in Philippine Nut Industry, Inc. vs. Standard Brands Incorporated, which held that “a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise, descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.”
Based on that case and the IP Code provision stating that the Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant’s goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made, the Bureau concluded that Nestle’s mark has acquired secondary meaning from the following evidence: (1) Nestle’s registration of “CHOW” since December 1980, (2) its predecessor-in interest’s registration of the mark “CHOW” since 1960, with a statement that “CHOW” was first used in the Philippines since 1941, (3) sample advertisements, (4) import permits, and (5) approved applications by the Bureau of Animal Industry. These evidence show that the word “CHOW” has been used by and closely associated with Nestle for animal food since 1941 in the Philippines. Hence, the Bureau reasoned that if applicant appropriates the word “CHOW” for its mark covering animal food products, it is highly likely that the consumers will be misled into believing the goods came from the same source and applicant’s disclaimer of the word “CHOW” in its application will not eradicate the likelihood of confusion.
The lesson gleaned from this case is that proving secondary meaning may be as easy as proving continuous and substantial use of a mark for a long period of time. Other evidence such as costly and time-consuming surveys, while it may help in showing the public’s perception of the mark, is less important than proof of long-term actual and continuous use of a mark.