October 4, 2016
In a bid to get exclusive rights over the use of the word METRO for print and online publications, ABS-CBN Publishing, Inc. filed an opposition to the registration of the trademark HOY! METRO filed by Jose Miguel Manalo. ABS-CBN based its opposition on the prior registrations for METRO HOME and METROWEAR. The first mark is being used by ABS-CBN on magazines, both physical and digital, while the other mark is being used on fashion events. ABS-CBN claims that the mark HOY! METRO is confusingly similar to its marks since it also uses the word METRO.
Mr. Manalo however claims that the marks are distinct as the common element METRO is not sufficient to mislead the public. Mr. Manalo further argued that apart from the different target markets, the element METRO cannot be subject of exclusive appropriation by ABS-CBN since the word merely describes a geographical coverage.
The Bureau of Legal Affairs (BLA) of the Intellectual Property Office (IPO) of the Philippines ruled that even with the presence of the common word METRO, the contending marks are not confusingly similar. The BLA commented that the word METRO is “a common English word”, and thus, the words and/or figures that accompany METRO will determine the presence of confusing similarity. Thus, since the marks subject of the case have different meanings when taken together, they are not likely to cause confusion on the public. To further prove that METRO is commonly used, even for goods in the same classes as ABS-CBN’s goods, the BLA cited existing trademarks in the IPO registry that use the word METRO.
In addition, the BLA pointed out that the goods covered by the trademarks are those that are thoughtfully chosen by their target consumers. The buyers, according to the BLA, are not the completely unwary consumer but the ordinary intelligent buyer considering the type of product involved.
In this particular case, ABS-CBN wanted to exclude others from using the word METRO based on its use of this element in the marks METRO HOME and METROWEAR. However, the BLA, instead of agreeing with ABS-CBN, concluded that METRO is a common English word which is commonly used by different owners for products in the same class. Indeed, METRO is a common word and is a weak mark at best as it indicates a geographic area. As this word relates to physical and online publications, the word is not really clearly distinctive. What could have played into the decision of the BLA in this case is the fact that ABS-CBN did not prove its ownership over the word METRO. Its registered trademarks are METRO HOME and METROWEAR and it does not own any registration for METRO alone.