When a name is too famous to copy

When a name is too famous to copy | Daily Tribune

The Supreme Court agreed. It first affirmed the well-known status of the “NIKON” mark. The Court noted that the Intellectual Property Office of the Philippines-Bureau of Legal Affairs had previously declared the mark well-known based on Nikon’s trademark registrations in the Philippines and abroad, as well as evidence of extensive sales, advertising and promotional activities. Under IPOPHL Memorandum Circular 2025-009, a prior declaration by a competent authority is sufficient recognition of a mark’s well-known status.

More importantly, the Court clarified the distinction between registered and unregistered well-known marks. Under Sections 123.1(e) and (f) of the Intellectual Property Code, an unregistered well-known mark is generally protected only against identical or similar marks used on identical or similar goods. A registered well-known mark, however, enjoys a broader shield. Protection may extend even to unrelated goods or services if the use of the later mark would suggest a connection with the owner of the registered mark and would likely damage its interests.

This distinction proved decisive. ISCO argued that its products were entirely different from Nikon’s cameras and related imaging products. The Court was not persuaded. It held that the law does not require competing goods to be identical when a registered well-known mark is involved.

Applying the Dominancy Test, the Court found that the dominant feature of both marks was the word “NIKON.” The marks were spelled exactly the same, appeared in bold capital letters and were pronounced identically. Minor differences in font style and design were insufficient to eliminate the likelihood of confusion.

The Court likewise emphasized that the fame of Nikon’s trademark creates an immediate association in the minds of consumers. A person encountering the word “NIKON” on household products would naturally think of Nikon Corporation. This perceived connection is precisely what the law seeks to prevent.

The decision also highlights the concept of trademark dilution by blurring. Even where consumers are not confused as to the source of the goods, the use of a famous mark on unrelated products can weaken its distinctiveness and diminish its commercial value. The law protects famous marks not only from direct competition but also from the gradual erosion of their identity.

The ruling serves as a reminder that trademarks represent more than mere names or logos. They embody reputation, goodwill and consumer trust built over many years. For owners of well-known brands, the decision reaffirms that Philippine law provides robust protection against attempts to ride on the reputation of a famous mark. For businesses seeking to build their own brands, it underscores a simple lesson: originality remains the safest and most sustainable path.

For more of Dean Nilo Divina’s legal tidbits, please visit www.divinalaw.com. For comments and questions, please send an email to cad@divinalaw.com.