November 5, 2016
Japanese company, Sumitomo Rubber Industries, Ltd. has once again successfully opposed an application to register FALCON trademark in the Philippines. A Chinese national, Peng Tei Liu, applied to register FALCON for use on vehicles and apparatus for locomotion in Class 12. Sumitomo Rubber opposed claiming that FALCON is confusingly similar to its FALKEN trademark, which is used on tires, also in Class 12.
FALKEN is a known brand that is used for ultra high performance tires. FALKEN tires are popularly sold in North America by Sumitomo Rubber’s subsidiary company, Falken Tire Corporation.
This is not the first time that Sumitomo Rubber has opposed an application for FALCON trademark in the Philippines. In this recent opposition, Sumitomo Rubber argued that not only is FALCON confusingly similar to FALKEN which is registered in Class 12, but is also an infringing copy of the company name of its subsidiary, Falken Tire Corporation. As an important element of its subsidiary’s name, FALKEN enjoys legal protection under Section 165 of the Intellectual Property Code and Article 8 of the Paris Convention, according to Sumitomo Rubber.
In the opposition, Sumitomo claimed that FALKEN represents one of its most valued trademarks, that FALKEN tires are successfully sold and distributed in over 90 countries, including the Philippines. FALKEN is registered in 90 countries around the world. In the Philippines, FALKEN was registered in 2002 and renewed in November 2012.
The Bureau of Legal Affairs determined that FALCON is indeed confusing similarity to FALKEN, noting the following similarities: (1) both marks have six letters and two syllables; (2) both marks are in uppercase letters; and, (3) that the marks are phonetically identical. Furthermore, the Bureau found that the marks share identical meaning because “FALKEN” is merely the German translation for “FALCON”.
The Bureau cited one of its earlier decisions involving FALCON, which another company tried to register in the Philippines, also for Class 12 goods. In that earlier case, FALKEN’S right to stop FALCON from being registered for Class 12 was upheld. In deciding to maintain its ruling in the first opposition, the Bureau expressed the opinion that it saw no reason to depart from the earlier decision which involved precisely the same trademark and the same Class of goods.