Too close for comfort
The lesson is clear: Genuine distinctiveness must come from more than superficial styling or an ordinary qualifying word.
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The lesson is clear: Genuine distinctiveness must come from more than superficial styling or an ordinary qualifying word.
Some names cut too close for comfort. That was the Supreme Court’s take on Autophil Zone Sales Corporation’s bid to register a mark that bore an uncanny resemblance to two already in the books.
In Autophil Zone Sales Corporation v. Director of Bureau of Trademarks (GR 270575, 28 January 2026), the Supreme Court En Banc, through Associate Justice Jhosep Y. Lopez, affirmed the denial of Autophil’s application to register the mark “FUJI METAL STYLIZED” for its confusing similarity to two previously registered “FUJI” marks.
Autophil, a domestic corporation engaged in the importation and distribution of automotive spare parts, applied to register “FUJI METAL STYLIZED” with the Intellectual Property Office of the Philippines (IPOPHL). The trademark examiner denied the application, finding it too similar to an already registered “FUJI” mark owned by Terrence Santos and a then-pending “FUJI” mark owned by Leo Tire Manufacturing Corporation, both covering automotive-related goods.
Autophil argued that its mark’s stylized lettering and distinctive design sufficiently set it apart. It also claimed that the word “FUJI” had already been diluted by its incorporation into several registered trademarks. In any case, Autophil maintained that confusion was unlikely because buyers of vehicles and automotive parts are particularly discerning and can distinguish between its products and those sold under other “FUJI” marks.
The Bureau of Trademarks, the Office of the Director General, and the Court of Appeals were unconvinced. All denied the trademark registration.
Before the Supreme Court, Autophil raised essentially the same arguments. It added that the IPOPHL had previously allowed multiple trademark registrations incorporating the word “FUJI.” To deny its application, it argued, would amount to a denial of equal treatment and protection.
The Court was not persuaded. Its decision rested on two factors: the resemblance of the marks and the relatedness of the goods.
Applying the Dominancy Test, the Court found Autophil’s mark confusingly similar to those of Santos and Leo Tire. Across all three marks, the word “FUJI,” rendered in plain, uppercase block letters, stood out as the dominant feature. Minor stylistic variations, such as Santos’s colored rectangle, were immaterial and did not alter the overall impression.
Neither could the word “METAL” come to Autophil’s rescue. The Court held that the term was merely generic and descriptive of the goods it identified — automobile spare parts — and therefore could not sufficiently distinguish Autophil’s mark from the others.
The visible resemblance was amplified by the relatedness of the goods. All three marks covered automotive parts serving the same purpose and sold through the same trade channels. Far from eliminating confusion, these circumstances heightened its likelihood.
Significantly, the Court clarified that the burden of presenting substantial evidence to prove likelihood of confusion rests solely on private parties, not trademark examiners.
Examiners, tasked with protecting consumers from confusion, may instead rely on jurisprudence, established rules and their own technical expertise to arrive at well-informed conclusions. They need not build an evidentiary record in the same manner required of private litigants.
The Autophil ruling reinforces two key principles. First, a generic or descriptive add-on cannot rescue an otherwise confusingly similar mark. Second, trademark examiners enjoy considerable latitude in policing the trademark register, even before any private party steps in to file an opposition.
For businesses eyeing a mark built around an already registered term, the lesson is clear: Genuine distinctiveness must come from more than superficial styling or an ordinary qualifying word.
In trademarks, as in life, getting too close to another’s identity may simply be too close for comfort.
