CA upholds IP Philippines’ decision on Max Mara case

The Intellectual Property Office of the Philippines (IP Philippines) recently received a notice from the Court of Appeals (CA) where it upheld the office’s decision in favor of Max Mara Fashion Group in a trademark infringement case. Max Mara owns the Sportmax trademark while businessman Perfecto Tiu owns the Sportsman brand. Sportmax and Sportsman are both apparel brands. Max Mara’s Sportmax trademark had been registered with IP Philippines in 1990.

Max Mara, a renowned fashion house which started in Italy , carries close to 20 labels. Established in 1951, the company is in the same league as Gucci, Armani, Dior and Prada.

Court records indicate that Max Mara filed a complaint alleging that Sportsman was a “flagrant imitation of its marks as likely to cause confusion mistake and deception to the buying public which will result to the dilution and/or of distinctiveness of its trademark” specifically that of its Sportmax apparel line. Sportmax has been in trade and commerce for various international classes across countries since 1985.

The CA in its decision junked Tiu’s petition for review of an earlier resolution affirmed by IP Philippines, which denied Tiu’s trademark application.

Max Mara in its notice of opposition stated that imitation of its marks would confuse the buying public, resulting in trademark dilution. In response, Tiu averred that the Sportsman mark carried a different spelling, meaning, and label appearance unlikely to confuse or deceive consumers. IP Philippines’ Bureau of Legal Affairs (BLA) sustained Max Mara’s opposition.

A portion of IP Philippines’s decision stated 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 market 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.”

Trademarks, any visible sign that distinguishes the products of an enterprise, are powerful economic assets that serve three main functions: an indicator of source, a guarantee of quality, and an advertising tool.

IP Philippines through its Bureau of Trademarks issues certificates of trademark registration by conducting search and examination of the applications of marks, geographic indications and other marks of ownership. Once registered, the trademark is protected for 10 years, and may be renewed for succeeding periods of 10 years. From 2003 to 2007, the office has granted close to 44,000 trademark registrations from 108 countries of origin. Out of this figure, local applications contributed almost 15,000 or 35 percent are from the Philippines .

For trademark registration and other inquiries, please call the Customer Service Department of IP Philippines at 752-5450 local 207.

Max Mara’s Sportmax trademark, registered with IP Philippines in 1990.

Tiu’s Sportsman trademark. IP Philippines denied Tiu’s trademark application.