SC bars registration of similar ‘W’ trademarks

MANILA, Philippines — The Supreme Court (SC) has ruled that trademarks with logo designs that closely resemble existing registered marks could not be registered if they were likely to confuse consumers. In a decision written by Associate Justice Ramon Paul Hernando of the First Division granted the petitions of Starwood Hotels & Resorts Worldwide, LLC and reversed previous rulings that allowed Oceanic Empire Limited to register the trademarks “W Globalcenter” and “W Fifth Avenue,” as well as retain its registration for “W Tower.” Starwood, which owns several registered “W” trademarks used for its hotel and entertainment businesses, argued that Oceanic’s marks were confusingly similar and could mislead the public into believing the two companies were connected. The Intellectual Property Office and later the Court of Appeals ruled in favor of Oceanic, saying no one could claim exclusive rights over a single letter and that the companies operated in different industries. The Supreme Court disagreed. The Court said trademark law protected consumers from confusion and only required a likelihood—not proof—of confusion. Applying the Dominancy Test, the high tribunal found that the stylized “W” was the most noticeable feature of both parties’ trademarks. It clarified that Starwood does not own the letter “W” itself, but has rights over its distinctive stylized version. The Court ruled that the additional words “Globalcenter,” “Fifth Avenue,” and “Tower” did not sufficiently distinguish Oceanic’s marks because they were merely descriptive and less prominent than the “W” logo. The Court also noted that both companies prominently use the “W” in their buildings and promotional materials, increasing the possibility that consumers could associate one business with the other. It further found that the parties’ businesses are related because both are involved in high-end property developments and rely heavily on branding and design. The ruling ordered the denial of Oceanic’s trademark applications and the cancellation of its “W Tower” trademark registration.

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