ISCO Holding Corporation vs. Nikon Corporation

A trademark that is identical or confusingly similar to a well-known mark registered in the Philippines cannot be registered even for goods or services not similar to those of the registered mark, provided the use would indicate a connection between the goods and the registered mark's owner and the latter's interests are likely to be damaged; additionally, a mark that constitutes another's trade name cannot be registered if its use would likely mislead the public.

Nikon Corporation is a foreign corporation that owns the NIKON trademark, registered in the Philippines and used on cameras. ISCO Holding Corporation is a domestic corporation. The Intellectual Property Code governs trademark registrability, including prohibitions on marks identical or confusingly similar to registered and well-known marks, and protects trade names even without registration. Prior IPO-BLA proceedings had declared the NIKON mark well-known in the Philippines.

On September 25, 2009, ISCO Holding Corporation, a domestic corporation, filed a trademark application for "NIKON & DESIGN" for use on home and household goods. The mark featured an anchor in blue color and the word "Nikon" below it in red. The application was published.

On January 24, 2011, Nikon Corporation, a foreign corporation, filed a Verified Notice of Opposition. Nikon Corp. asserted that it was the true owner, prior registrant, and user of the NIKON mark; that its NIKON mark is well-known; that ISCO's NIKON mark is confusingly similar to its NIKON mark; and that it would be damaged if ISCO's NIKON mark was registered. Nikon Corp.'s NIKON mark, which is registered in the Philippines, is used on cameras. Nikon Corp. likewise argued that its NIKON mark should be protected because it is also its business name or trade name, and that the mere use by a third party of the NIKON mark will cause dilution and/or restrict the expansion of its business.

ISCO contended that Nikon Corp.'s Opposition should be dismissed on the ground of res judicata. It cited two cases previously decided by the IPO-BLA in 2006, both entitled Nikon Corporation vs. Nikon Industrial Corporation, wherein the IPO-BLA ruled that the NIKON mark can be used for household appliances without infringing Nikon Corp.'s mark, since the latter is used only for cameras.

The IPO-BLA ruled in favor of Nikon Corp. It found that ISCO's mark is identical with that of Nikon Corp., and that ISCO's use of the mark is likely to cause deception or confusion, would indicate a connection between its goods and those of Nikon Corp., and will mislead the public. The IPO-BLA likewise sustained Nikon Corp.'s claim that its NIKON mark is a well-known mark. It also found that ISCO's use of the NIKON mark violates Section 165.3 of the IP Code, since the said mark is also Nikon Corp.'s trade name.

On appeal, the IPO-ODG found that res judicata does not apply, but it found noticeable differences between Nikon Corp.'s and ISCO's marks. It also found that Nikon Corp.'s and ISCO's products are unrelated, and that Nikon Corp. failed to establish that ISCO's use of the NIKON mark will likely damage Nikon Corp.'s mark. The CA, however, found that Nikon Corp. sufficiently established that ISCO's mark cannot be registered because it is identical with, or confusingly similar to, Nikon Corp.'s registered and well-known mark. The CA added that even assuming Nikon Corp.'s mark is neither registered nor well-known, ISCO's application must still be denied since the NIKON mark comprises Nikon Corp.'s trade name.

• Res Judicata: ISCO contended that Nikon Corp.'s Opposition should be dismissed on the ground of res judicata, citing two 2006 IPO-BLA cases, both entitled Nikon Corporation vs. Nikon Industrial Corporation, wherein the IPO-BLA ruled that the NIKON mark can be used for household appliances without infringing Nikon Corp.'s mark, since the latter is used only for cameras.
• Unrelated Goods and No Likelihood of Confusion: ISCO maintained that its goods and Nikon Corp.'s goods are unrelated; its use of the NIKON mark will unlikely mislead the public, and thus it should be allowed to register it even though it is Nikon Corp.'s trade name.
• Section 123.1(e) Requirement: ISCO argued that under Section 123.1(e), in order for its NIKON trademark to be barred from registration, it must be used for identical or similar goods as those of Nikon Corp.
• No Confusing Similarity: ISCO argued that its NIKON trademark is not confusingly similar to Nikon Corp.'s, citing the IPO-ODG's finding of differences primarily due to the design of an anchor enclosed in a circle and its color claims of blue and red; the presence of the similar term "NIKON" is not sufficient to conclude confusing similarity.

• Ownership and Prior Use: Nikon Corp. asserted that it was the true owner, prior registrant, and user of the NIKON mark.
• Well-Known Status: Nikon Corp. asserted that its NIKON mark is well-known.
• Confusing Similarity and Damage: Nikon Corp. asserted that ISCO's NIKON mark is confusingly similar to its NIKON mark and that it would be damaged if ISCO's mark was registered.
• Trade Name Protection: Nikon Corp. argued that its NIKON mark should be protected because it is also its business name or trade name.
• Dilution and Business Expansion: Nikon Corp. argued that mere use by a third party of the NIKON mark will cause dilution and/or restrict the expansion of its business.

• Main Issue: Whether the CA committed a reversible error in ruling that ISCO cannot validly register the NIKON trademark for household goods and appliances.
• Well-Known Mark: Whether Nikon Corp.'s NIKON trademark is well-known under Section 123.1(e) and (f) of the IP Code.
• Dissimilar Goods: Whether ISCO's NIKON trademark may be barred from registration even though it is used for goods not identical or similar to Nikon Corp.'s goods.
• Confusing Similarity: Whether ISCO's NIKON trademark is confusingly similar to Nikon Corp.'s NIKON trademark.
• Connection and Damage: Whether ISCO's use of the NIKON trademark would indicate a connection between its goods and Nikon Corp. and likely damage Nikon Corp.'s interests under Section 123.1(f).
• Trade Name: Whether ISCO's NIKON trademark cannot be registered because it constitutes Nikon Corp.'s trade name under Section 165.2.

• Main Issue: No. The CA correctly ruled that ISCO cannot validly register the NIKON trademark for household goods and appliances. The petition was denied despite procedural infirmities because the IP Code bars registration under Section 123.1(f) and Section 165.2.
• Well-Known Mark: Yes. The IPO-BLA's finding, affirmed by the CA, that Nikon Corp.'s NIKON trademark is well-known is sustained under Section 123.1(e) and (f) of the IP Code.
• Dissimilar Goods: Yes. Because Nikon Corp.'s well-known NIKON mark is registered in the Philippines, Section 123.1(f) bars registration even for non-similar goods, subject to the connection and damage qualifications.
• Confusing Similarity: Yes. Under the Dominancy Test, the word "NIKON" is the dominant feature of both marks; they are spelled the same and sound the same, while the anchor and color are minor differences.
• Connection and Damage: Yes. Consumers hearing "NIKON" will think of Nikon Corp.'s cameras, and allowing ISCO's use would suggest Nikon Corp. expanded into household appliances and cause dilution by blurring.
• Trade Name: Yes. Section 165.2 protects trade names even without registration, and ISCO's use of NIKON would likely mislead the public.

• Main Issue: The CA did not commit reversible error. The Court preliminarily noted that ISCO filed the Petition for Review under Rule 43, which is erroneous because Rule 43 governs appeals from the Court of Tax Appeals and quasi-judicial agencies to the CA, while Rule 45 governs petitions for review before the Court. The Supplement to Petition for Review was also not admissible because it did not set forth transactions, occurrences, or events that happened after the date of the pleading sought to be supplemented, as required by Rule 10, Section 6 of the Rules of Court. Even ignoring these procedural infirmities, the petition lacks merit because the IP Code bars registration under Section 123.1(f) and Section 165.2.
• Well-Known Mark: Under Section 123.1(e), well-known status is determined by a competent authority: the courts, the Director General, or the Director of the Bureau of Legal Affairs under Rule 101(d). Rule 103 criteria include the duration, extent, and geographical area of use or promotion; market share; inherent or acquired distinctiveness; quality-image or reputation; worldwide registration; exclusivity; commercial value; litigation outcomes; and related factors. The IPO-BLA declared NIKON well-known based on certificates of registration in the Philippines, a list of registrations in different countries, and evidence of sales and promotion. The mark is registered, used, and promoted in the Philippines and abroad; it has market share; it is a coined or fanciful term with no real meaning in English or Filipino and no common usage; it has acquired reputation; prior IPO-BLA cases, namely Nikon Corporation vs. San Mateo Rubber Corporation and Nikon Corporation vs. Alfra Steel Industrial, Inc., declared it well-known; the CA affirmed; and the IPO-ODG never contradicted the well-known finding. Rule 14 of the 2025 Rules and Regulations also makes a declaration of well-known mark prima facie evidence of that status.
• Dissimilar Goods: Section 123.1(d) is a general provision applicable when the existing trademark is not well-known. Sections 123.1(e) and (f) are specific provisions for well-known marks. Section 123.1(e) covers well-known marks whether or not registered in the Philippines and bars identical or confusingly similar marks for identical or similar goods. Section 123.1(f) covers well-known marks registered in the Philippines and bars identical or confusingly similar marks for goods that are not similar, provided the use indicates a connection between the goods and the registered mark's owner and the latter's interests are likely to be damaged. Since Nikon Corp.'s well-known NIKON mark is registered in the Philippines, Section 123.1(f) applies. ISCO's goods, such as electric fans and oven toasters, and Nikon Corp.'s cameras are neither identical nor similar. Thus, ISCO's argument that Section 123.1(e) requires identical or similar goods fails because Section 123.1(f) does not require similarity.
• Confusing Similarity: Under Kolin Electronics Co., Inc. vs. Kolin Philippines International, Inc., the Dominancy Test, incorporated in Section 155.1 of the IP Code, governs confusing similarity. Greater weight is given to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences; the Court considers aural and visual impressions, appearance, sound, meaning, and overall impression. The Holistic or Totality Test has been abandoned. The dominant feature may be the signs, color, design, peculiar shape or name, or some special, easily remembered earmark that readily attracts the ordinary consumer. Here, both marks include the identical word "NIKON." In Nikon Corp.'s mark, it is the only word; in ISCO's mark, it is also the only word. They are spelled exactly the same, both in bold and capital letters, and they sound the same. The blue anchor inside a circle and the red color in ISCO's mark are minor differences that do not outweigh the blatant similarities.
• Connection and Damage: Under Section 123.1(f), the use of the mark must indicate a connection between the applicant's goods and the owner of the registered mark, and the registered mark owner's interests must be likely damaged. Because NIKON is well-known for cameras, consumers hearing "NIKON" will think of Nikon Corp.'s cameras, not ISCO's household appliances. If ISCO uses the mark, the public may attribute ISCO's goods to Nikon Corp. and think that Nikon Corp. expanded into household appliances. Damage under Section 123.1(f) is present when there is trademark dilution. Under Suyen Corporation vs. Danjaq LLC, dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of competition or likelihood of confusion, and it may be by blurring or tarnishment. Here, there is dilution by blurring: the high degree of similarity between the marks was established through the Dominancy Test, and the distinctiveness and recognition of Nikon Corp.'s mark were established by its well-known status.
• Trade Name: Section 165.2 protects trade names even prior to or without registration against unlawful acts by third parties. In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark, or any use of a similar trade name or mark likely to mislead the public, is unlawful. The word "NIKON" appears on both ISCO's and Nikon Corp.'s trademarks and also constitutes Nikon Corp.'s trade name. Through the Dominancy Test, ISCO's colorable imitation of Nikon Corp.'s NIKON trademark is established because of the glaring similarity as to words, sound, and general appearance. Thus, ISCO cannot register its NIKON trademark, which constitutes Nikon Corp.'s trade name, as it would likely mislead the public.

• Dominancy Test — In determining whether two trademarks are confusingly similar, greater weight is given to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences. The Court considers aural and visual impressions, appearance, sound, meaning, and overall impression. Applied here, the word "NIKON" is the dominant feature of both marks; they are spelled the same and sound the same, while the anchor and color are minor differences.
• Abandonment of the Holistic or Totality Test — The Holistic or Totality Test, which considers the entirety of the trademarks as applied to the products, including labels and packaging, has been abandoned. Thus, ISCO cannot rely on minor dissimilarities in the appearance of its mark to avoid a finding of confusing similarity.
• Well-Known Mark Criteria — Under Rule 103, criteria for determining whether a mark is well-known include the duration, extent, and geographical area of use or promotion; market share; inherent or acquired distinctiveness; quality-image or reputation; worldwide registration; exclusivity; commercial value; litigation outcomes; and related factors. Competent authorities are the courts, the Director General, and the Director of the Bureau of Legal Affairs. Applied here, Nikon Corp.'s NIKON mark was sustained as well-known.
• Specific vs. General Provisions in Trademark Registrability — Section 123.1(e) and (f) are specific provisions for well-known marks, while Section 123.1(d) is a general provision for marks that are not well-known. Specific provisions prevail over general provisions. Applied here, because NIKON is well-known and registered in the Philippines, Section 123.1(f) governs.
• Section 123.1(e) vs. Section 123.1(f) — Section 123.1(e) bars registration of identical or confusingly similar marks to well-known marks whether or not registered in the Philippines, for identical or similar goods. Section 123.1(f) bars registration for well-known marks registered in the Philippines even for non-similar goods, provided the use indicates a connection and likely damage. Applied here, Section 123.1(f) barred ISCO's mark despite the dissimilarity of goods.
• Trademark Dilution — Dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of competition or likelihood of confusion. It has two kinds: dilution by blurring and dilution by tarnishment. Damage under Section 123.1(f) is present when there is trademark dilution. Applied here, dilution by blurring was established through the similarity of the marks and the distinctiveness and recognition of Nikon Corp.'s well-known mark.
• Protection of Trade Names — Under Section 165.2, trade names are protected even prior to or without registration. Subsequent use of a trade name or a similar mark likely to mislead the public is unlawful. Applied here, NIKON is Nikon Corp.'s trade name, and ISCO's use of the mark would likely mislead the public.
• Colorable Imitation — Colorable imitation is such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or trade name in their overall presentation or in their essential and substantive distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article. Applied here, ISCO's mark colorably imitated Nikon Corp.'s NIKON trademark.
• Right to Exclude — The owner of a registered mark has the exclusive right to prevent third parties without consent from using identical or similar signs where the use would result in a likelihood of confusion. For a well-known registered mark, this right extends to goods and services that are not similar, subject to the connection and damage qualifications. Applied here, Nikon Corp. could exclude ISCO from using the NIKON mark.

• "Under the Dominancy Test, greater weight is given to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences." — This states the controlling test for confusing similarity applied to both marks.
• "Thus, if a well-known existing trademark is not registered in the Philippines, a trademark which is identical or confusingly similar to it cannot be registered in the Philippines only if both trademarks are used for identical or similar goods. On the other hand, if a well-known existing trademark is registered in the Philippines, a trademark which is identical or confusingly similar to it cannot be registered, whether or not both trademarks are used for identical or similar goods, subject to the qualifications under Section 123.1(f) if the goods are not identical or similar." — This distinguishes Section 123.1(e) and (f) and supports denial despite dissimilar goods.
• "In the present case, there is trademark dilution by blurring, as some of the factors enumerated above have been duly established." — This establishes likely damage under Section 123.1(f).
• "Based on the above-quoted provision, a new trademark cannot be registered if it constitutes an existing trade name belonging to another person or entity, if the use of such new trademark will likely mislead the public." — This states the independent trade-name ground for denial.

• Kolin Electronics Co., Inc. vs. Kolin Philippines International, Inc., 896 Phil. 190 (2021) — The Court relied on this to hold that the Dominancy Test governs confusing similarity and that a coined or fanciful mark is a strong indication of distinctiveness; it also held marks phonetically and aurally identical despite lowercase and an italicized letter.
• Suyen Corporation vs. Danjaq LLC, 907 Phil. 269 (2021) — The Court relied on this for the rule that damages under Section 123.1(f) are present when there is trademark dilution, and for the definitions of dilution by blurring and tarnishment.
• Societe Des Produits Nestle, SA. vs. Dy, Jr., 641 Phil. 345 (2010) — Cited to illustrate application of the Dominancy Test where "NANNY" was confusingly similar to "NAN" because of the dominant feature and aural similarity.
• Skechers, U.S.A., Inc. vs. Inter Pacific Industrial Trading Corp. and/or Inter Pacific Trading Corp., 662 Phil. 11 (2011) — Cited to support that the Holistic or Totality Test has been abandoned and that minor dissimilarities do not outweigh blatant similarities.
• UFC Philippines, Inc. vs. Barrio Fiesta Mfg. Corp., 778 Phil. 763 (2016) — Cited for the rule that the dominant feature is the first word or figure that catches the eyes or appears prominently.
• Seri Somboonsakdikul vs. Orlane S.A., 805 Phil. 37 (2017) — Cited for the definition of colorable imitation and for factors in determining the dominant feature, including signs, color, design, peculiar shape, or name.
• Sehwani, Inc. and/or Benita's Frites, Inc. vs. IN-N-OUT Burger, Inc., 562 Phil. 217 (2007) — Cited for the quality-image or reputation criterion in determining well-known status, where worldwide registration and use satisfied the criterion.
• Batangas City vs. Pilipinas Shell Petroleum Corp., 763 Phil. 312 (2015) — Cited for the statutory-construction rule that specific provisions prevail over general provisions, applied to Sections 123.1(e) and (f) over Section 123.1(d).
• Felix Gochan & Sons Realty Corp. vs. Commission on Audit, 851 Phil. 923 (2019) — Cited for the rule that a supplemental pleading must set forth transactions, occurrences, or events that happened after the date of the pleading sought to be supplemented.
• McDonald's Corporation vs. L.C. Big Mak Burger, Inc., 480 Phil. 402 (2004) — Cited in Kolin for the Dominancy Test.

• Section 147, Intellectual Property Code — Rights conferred; the owner of a registered mark has the exclusive right to prevent third parties from using identical or similar signs where the use would result in a likelihood of confusion. For a well-known registered mark, the right extends to non-similar goods and services subject to connection and damage. Applied to recognize Nikon Corp.'s right to exclude ISCO.
• Section 123.1(d), Intellectual Property Code — General prohibition on registration of an identical or confusingly similar registered mark with an earlier filing or priority date for the same or closely related goods or services. The Court characterized it as general and applicable when the existing trademark is not well-known.
• Section 123.1(e), Intellectual Property Code — Bars registration of an identical or confusingly similar mark to a well-known mark whether or not registered in the Philippines, for identical or similar goods or services. The Court held it did not require similarity in this case because Section 123.1(f) applied.
• Section 123.1(f), Intellectual Property Code — Bars registration of an identical or confusingly similar mark to a well-known mark registered in the Philippines for non-similar goods or services, provided the use would indicate a connection and the registered mark owner's interests are likely to be damaged. This was the primary basis for denying ISCO's registration.
• Section 155.1, Intellectual Property Code — Defines infringement and incorporates the Dominancy Test. Applied to determine confusing similarity between the marks.
• Section 165.2, Intellectual Property Code — Protects trade names even prior to or without registration; subsequent use of a trade name or similar mark likely to mislead the public is unlawful. Applied as an independent ground for denying registration.
• Section 121.1, Intellectual Property Code — Defines a trademark as any visible sign capable of distinguishing the goods of an enterprise. Cited in defining trademark.
• Section 122, Intellectual Property Code — Rights are acquired through registration made validly in accordance with the IP Code. Cited for the trademark owner's rights.
• Rule 101(d), IPO Memorandum Circular No. 17-010 (2017 Rules and Regulations) — Defines competent authority for determining whether a mark is well-known: the courts, the Director General, and the Director of the Bureau of Legal Affairs. Applied to recognize the IPO-BLA and CA as competent authorities.
• Rule 103, IPO Memorandum Circular No. 17-010 (2017 Rules and Regulations) — Criteria for determining whether a mark is well-known. Applied to sustain NIKON's well-known status.
• Rule 5, IPOPHL Memorandum Circular No. 2025-009 — Provides the same criteria for determining whether a trademark is well-known, requiring letters (a), (b), (c), and (d) to be included. Cited in the well-known analysis.
• Rule 14, IPOPHL Memorandum Circular No. 2025-009 — A declaration of well-known mark is prima facie evidence of the well-known status of the mark. Applied to support the finding.
• Rule 19, IPOPHL Memorandum Circular No. 2025-009 — Recognizes the well-known status of a trademark previously declared as such by a competent authority. Cited in the well-known analysis.
• Rule 10, Section 6, Rules of Court — A supplemental pleading must set forth transactions, occurrences, or events that happened after the date of the pleading sought to be supplemented. Applied to reject ISCO's Supplement to Petition for Review.

Caguioa (Chairperson), Inting, Gaerlan, and Dimaampao, JJ., concur.