The Battle of the “F” Marks

Valeriano Del RosarioManaging Partner, Vera Law (Del Rosario Raboca Gonzales Grasparil)

Question: What’s in a letter? Will adding another letter to an existing trademark make a difference? NO, said the IPO Bureau of Legal Affairs. 

In its Decision No. 2017-299 dated 13 July 2017, the IPO Bureau of Legal Affairs denied the registration of the trademark “F F AND F” for being confusingly similar with “F & F”.

The case started when Hans Tan (“respondent-applicant”) sought to register the mark “F F AND F” under Classes 25 and 35, respectively for “clothing, footwear, headgear” and “advertising, business management, business administration, office functions”.

Tesco Stores Limited (“Opposer”) opposed the registration of Respondent-applicant’s “F F AND F” trademark claiming that it is confusingly similar with its in-house clothing brand “F&F”, which was originally called “Florence and France”.

The IPO Bureau of Legal Affairs observed that the prevalent feature of the Opposer’s mark is “F&F”. Also, looking at the Respondent-Applicant’s mark, the IPO Bureau of Legal Affairs observed that similar elements are incorporated therein. Firstly, the symbol “&” is merely a shortened version of the word “and”. Secondly, it appears that the Respondent-Applicant merely added another letter “F” at the beginning in coming up with the applied mark. Thirdly and most noteworthy, the position of the additional letter “F” in the Respondent-Applicant’s mark is on top of “F AND F”. As a result, “F AND F” is even more emphasized because the said phrase is separately placed from the beginning letter “F”.

As repeatedly emphasized by the IPO Bureau of Legal Affairs, “confusion cannot be avoided by merely adding, removing or changing some letters of a registered mark. Confusing similarity exists when there is such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such resemblance to the original as to deceive ordinary purchaser as to cause him to purchase the one supposing it to be the other”.The Honorable Bureau further stated that this is most especially true in this case where the contending marks similarly cover goods/or services under Classes 25 and 35.