Bridgestone Corporation (the Opponent), a Japanese tire manufacturer, successfully opposed the registration of R-STONE in the name of Jianxian Rubber Co., Ltd (the Respondent) in Class 12. In support of its opposition, Bridgestone argued that it was the first to use and register BRIDGESTONE in connection with the design, technology and manufacture of tires. Tracing the history of the first “BRIDGESTONE” tire in 1930, the Opponent argued that the ownership and association of the word “stone” as a distinctive element of its house mark BRIDGESTONE was bolstered by the acquisition of Firestone Tire & Rubber, along with the mark FIRESTONE in 1998. The Opponent also claimed that BRIDGESTONE is a well-known mark in view of its numerous trademark applications/registrations across the globe, totaling about 500, in addition to approximately 243 domain name registrations.

The Opponent further claimed that it had invested enormous resources in advertising and popularizing its BRIDGESTONE mark in the Philippines, and that the mark had been featured in various newspapers and magazine articles. Also, the Opponent had recently opened a 1,000-square meter showroom and service center in Bonifacio Global City, Philippines.

A Notice to Answer was issued and served on the Respondent on December 13, 2013, but the Respondent did not file an answer. Thus, the Respondent was declared in default.

Ruling in favor of the Opponent, the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL) noted that the Opponent had consistently used the word “stone” in its marks. It ruled that even if the word “stone” is a common English word, it is neither descriptive nor generic of tire products and therefore is considered distinctive. Consequently, the BLA-IPOPHL said that the Respondent could not use the word “stone” as the prevalent feature of its own mark.

The BLA did not find notable distinguishing features between the competing trademarks and held “that the Opposer’s marks begin with either the words ‘fire’ or ‘bridge’ while that of the Respondent-Applicant’s with a mere ‘R-’ is of no consequence. There is the likelihood of the consumers being confused. Confusion cannot be avoided by merely adding, removing, or changing some letters of a registered mark.”

This decision is consistent with several earlier decisions of the BLA-IPOPHL, in which it sustained oppositions filed by Bridgestone against applications for the marks RIVERSTONE and AUSTONE, both for use in Class 12. The BLA-IPOPHL finally concluded that “the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed.”

Thus, Bridgestone’s ownership over the STONE marks in Class 12 and the distinctiveness of these marks for “tire products” have been further set in stone.

The decision is final, as the Respondent chose not to appeal.

 

This article was first published in INTA Bulletin on June 15, 2015. For further information, please visithttp://www.inta.org/INTABulletin/Pages/INTABulletin.aspx.