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22 August 2016
San Miguel Brewery Inc and Iconic Beverages Inc, both subsidiaries of San Miguel Corporation, filed an opposition against a trademark application by Fraser and Neave Ltd for the mark ICE MOUNTAIN for non-alcoholic beverages in Class 32. It was alleged that Iconic Beverages was the registered owner of the BLUE ICE device mark covered by a certificate of registration under Class 32 and that San Miguel Brewery held the licence to manufacture and distribute products bearing this trademark. The beer products sold under the BLUE ICE device mark have been commercially distributed within the Philippines for many years.
It was further argued by San Miguel and Iconic Beverages that Fraser and Neave's ICE MOUNTAIN mark resembled its BLUE ICE device mark. The alleged similarities included:
San Miguel and Iconic Beverages contended that consumers would likely be confused because the goods covered by the marks were closely related, moved within the same trade channels and were distributed, marketed, displayed and sold in similar locations. Further, the goods were similarly classified as beverages. The applied mark, if allowed, would allegedly prevent use of the BLUE ICE device mark for goods within their normal range of expansion.
Fraser and Neave replied that the marks were not similar. It explained that the dominant feature of the mark registered by San Miguel and Iconic Beverages was the word 'ice', while the dominant feature of the Fraser and Neave mark was the mountain ridges above the words 'ice mountain'. It was also pointed out that the lettering and fonts were presented differently.
The Bureau of Legal Affairs saw no cogent reason to deny the trademark application because the competing marks were not confusingly similar. In San Miguel's and Iconic Beverages's registered mark, the word 'blue' was prominently positioned in between the word 'ice' and the mountain figure. These elements were absent in Fraser and Neave's mark. Further, in the applied mark, the word 'mountain' was present as well as the depiction of the mountain figure. The bureau ruled that the possibility of confusion was remote, even in respect of aural and conceptual projection. This applied in particular since the registrations for BLUE ICE were used only on beers, not non-alcoholic beverages.
The hearing officer noted that the word 'ice' is a common English word used widely for beverages. In fact, it was pointed out that there are numerous other registered marks using the same word, as well as marks depicting mountains in their logos.
The hearing officer also noted that:
"The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him who has been instrumental in bringing into the mark a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product. In this case [Fraser and Neave]'s mark sufficiently met this function."
For further information on this topic please contact Lee Benjamin Z Lerma at Romulo Mabanta Buenaventura Sayoc & De Los Angeles by telephone (+63 2 848 0114) or email (firstname.lastname@example.org). The Romulo Mabanta Buenaventura Sayoc & De Los Angeles website can be accessed at www.romulo.com.
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Benjamin Z Lerma