Starwood Hotels & Resorts Worldwide, LLC vs. Oceanic Empire Limited

A junior composite mark that reproduces the dominant bold stylized letter of a senior stylized mark is confusingly similar where added words are generic or descriptive and the parties' building-centered services are related, even if the senior owner's plain single-letter word mark alone is non-distinctive and the services fall under different Nice classes.

Starwood Hotels & Resorts Worldwide, LLC operates luxury hotels and related hospitality businesses under registered W marks covering building construction, entertainment, hotel and resort, reservation, food and conference, and beauty services. Oceanic Empire Limited develops and leases premium Grade A office and commercial buildings in the Philippines under W-prefixed building names. The governing framework is Republic Act No. 8293 or the Intellectual Property Code on registrability, opposition, cancellation, and disclaimers, as implemented by the Revised Rules of Procedure on Intellectual Property Rights Cases on likelihood of confusion.

Oceanic Empire Limited filed applications for registration of W GLOBALCENTER and W FIFTHAVENUE on June 19, 2015 for Class 36 real estate affairs, and obtained Registration No. 4-2015-006819 for W TOWER on November 19, 2015. Starwood Hotels & Resorts Worldwide, LLC opposed W GLOBALCENTER on April 18, 2016 and W FIFTHAVENUE on March 2, 2016, and petitioned for cancellation of W TOWER on December 5, 2016 before the IPO Bureau of Legal Affairs, contending the marks were confusingly similar to its own, intended to ride on its popularity and goodwill, and would confuse, deceive, and mislead the purchasing public.

Starwood owned a W word mark registered on February 26 and July 23, 2007 for Classes 37, 41, 43, and 44 covering building construction, repair and installation, entertainment, hotel, motel, resort, reservation, food and drink, conference and function, and beauty salon services, and a stylized W HOTELS mark registered on March 10, 2008. According to Starwood, its protectable mark was not any configuration of the letter W but a unique stylized W in bold typeface, sans-serif style, uppercase, with slightly wide arms or slightly apart stems in solid, straight, and sharp design, with HOTELS in thin letters below. According to Oceanic, the dominant feature of its marks was the entire indivisible composite of W plus GLOBALCENTER, TOWER, or FIFTHAVENUE in the same size on one line, and its high-end real estate development and leasing for business owners seeking office and retail spaces differed from luxury short-term hotel operations.

Thereafter the marks proceeded through successive administrative and judicial review with conflicting results on resemblance and relatedness. The Adjudication Officers and later the Director General and Court of Appeals credited visual differences in font, placement, and added words, different Nice classifications, and the discernment of purchasers of expensive non-household services to find no likelihood of confusion and no bad faith. The BLA Director, by contrast, found the bold stylized W dominant, the added words merely descriptive of nature or geographic location and partly disclaimed, and real estate affairs broad enough to encompass hotel and construction services. In actual commerce, Starwood displayed its stylized W prominently on hotel facades in Bangkok, Kuala Lumpur, and Barcelona, while Oceanic displayed its marks on building facades and online advertisements for W Global Center, W Fifth Avenue, and W Tower, at times showing only the stylized W or placing added terms below it.

• Confusing Similarity and Dominancy: Petitioner argued that the dominant feature of both parties' marks is the identical bold, sans-serif, uppercase stylized W, and that TOWER, FIFTHAVENUE, and GLOBALCENTER are merely generic or descriptive terms that cannot distinguish the marks.
• No Claim Over Plain Letter: Petitioner maintained that it does not claim monopoly over any and all configurations of the letter W, but only over its unique and particular stylized W as used in its registered mark.
• Related Services and Expansion: Petitioner argued that Class 36 real estate affairs are closely related to hotel, construction, and hospitality services as uses of real property, marketed through building prestige, facade display, and online channels, falling within the normal potential expansion of hotel brands into residential and commercial spaces.
• Actual Marketplace Impression: Petitioner maintained that as actually used in commerce on building facades and websites, Oceanic's marks prominently exhibit the stylized W alone or with subordinated added terms, reinforcing visual and connotative resemblance.

• No Monopoly Over Letter: Respondent countered that no one can exclusively appropriate a letter of the English alphabet, especially Starwood's single-letter W word mark in standard character which lacks distinctiveness, as shown by at least 11 to 14 other W registrations.
• Entire Composite as Dominant: Respondent argued that the dominant feature of its marks is the entirety of the indivisible composite mark, W plus GLOBALCENTER, TOWER, or FIFTHAVENUE, with differences in font, size, placement, and single-line arrangement negating visual, aural, and connotative similarity.
• Unrelated Classes and Discerning Buyers: Respondent countered that Class 36 high-end real estate development is unrelated to Classes 43-44 luxury hotel operations for short-term accommodation, that Nice Classification differences negate presumption of confusion, and that buyers of expensive properties exercise deliberate, comparative, and analytical care.
• Good Faith and Distinctiveness: Respondent argued that there was no malice or intent to ride on goodwill, as Starwood failed to prove knowledge of prior creation or that its mark is famous or well-known, while Oceanic's third Declaration of Actual Use proved distinctiveness.

• Resemblance of Marks: Whether Oceanic's W GLOBALCENTER, W FIFTHAVENUE, and W TOWER are confusingly similar to Starwood's marks under the Dominancy Test.
• Relatedness of Services: Whether Oceanic's Class 36 real estate affairs are closely related to Starwood's hotel, construction, and related services so as to produce likelihood of confusion of business.

• Resemblance of Marks: Yes. No confusing similarity exists with Starwood's plain W word mark, which is non-distinctive, but confusing similarity exists with its stylized W, which is the dominant feature reproduced in Oceanic's marks with only generic/descriptive additions.
• Relatedness of Services: Yes. The services are related in nature, cost, purpose, building-centered prestige, and overlapping online and facade marketing channels, supporting likelihood of confusion of source or affiliation and normal business expansion.

• Resemblance of Marks: Word marks are protected irrespective of design or special characteristics, so Starwood's W word mark examined as a standalone standard-character letter lacks distinctiveness and cannot support monopoly over the alphabet, consistent with ASEAN examination guidance and multiple third-party W registrations. By contrast, applying the Dominancy Test, which gives greater weight to main, essential, and dominant features and to aural and visual impressions, the bold, sans-serif, uppercase, solid stylized W with slightly wide arms catches the immediate attention in both parties' marks. Emphasis was deliberately placed on that W by boldfacing against thin non-bold HOTELS, TOWER, FIFTHAVENUE, and GLOBALCENTER lettering, regardless of beside-or-below placement; TOWER and HOTELS are generic for building establishments, while GLOBALCENTER and FIFTHAVENUE are descriptive of kind, quality, geographic origin, or intended purpose absent secondary meaning, with GLOBAL CENTER flagged as descriptive and disclaimed without converting the whole into an indivisible dominant composite. Actual facade and internet use showing the stylized W alone or dominant confirms the overall marketplace impression under Rule 18, Section 5 of the Revised IP Rules.
• Relatedness of Services: Primary reliance on Nice Classification was rejected, since substantive rights cannot rest on a changing classification list and Rule 18, Section 6 prohibits treating same-or-different classes as determinative of similarity. Evaluated under the Mighty Corporation vs. E. & J. Gallo Winery factors as refined in Kolin Electronics Co., Inc. vs. Kolin Philippines International, Inc., both businesses involve development and occupation of real property spaces, relatively expensive and infrequent transactions, and brand value dependent on building location and aesthetic quality marketed to high-end segments through facade display and cyberspace advertising. Starwood's discernible Philippine commercial interaction through its interactive booking website and Oceanic's online promotion of iconic premium buildings place them in a common cybermarketplace where patrons familiar with Starwood hotels abroad could assume association. Relatedness therefore triggers protection against confusion of business and forestalling of normal expansion of hotel brands into branded residences and property management, even for sophisticated buyers, and likelihood — not actual certainty — of confusion suffices as damage for opposition under Section 134 and cancellation under Section 151.1 in relation to Section 123.1(d)(iii).

• Dominancy Test as controlling test for resemblance — Resemblance does not require identity; colorable imitation in form, content, wording, sound, meaning, arrangement, or overall appearance that could mislead an average buyer suffices. Greater weight is given to the main, essential, and dominant features and to aural and visual impressions, disregarding minor differences and giving little weight to price, quality, outlets, or market segments. Applied to find the bold stylized W, not added generic/descriptive words or placement, dominant here, as in McDonald's Corporation vs. Macjoy Fastfood Corporation, Societe Des Produits Nestle, S.A. vs. Court of Appeals, and Skechers, U.S.A., Inc. vs. Inter Pacific Industrial Trading Corp.
• Word marks vs. stylized marks — Where no special characteristics such as design, style, color, or lettering are claimed, protection covers the word itself in standard characters irrespective of representation. Applied to hold Starwood's plain W word mark non-distinctive and incapable of monopolizing the alphabet, while protecting its distinct bold sans-serif stylized W.
• Confusion of goods vs. confusion of business — Confusion of goods induces purchase of one product believing it is the other among competing products; confusion of business exists where non-competing but related goods or services cause the public to assume origin in the earlier registrant or some non-existent connection or affiliation. Applied to find confusion of business/affiliation between real estate and hotel services.
• Likelihood of confusion as relative concept — Absolute certainty or actual confusion is unnecessary; likelihood is determined on the particular circumstances under multifactor criteria, with resemblance of marks and relatedness of goods/services especially significant. Applied to sustain opposition and cancellation on likelihood alone.
• Generic and descriptive marks — Generic terms name the class or genus and descriptive terms designate kind, quality, intended purpose, geographic origin, or characteristics; both are unregistrable under Section 123.1(h) and (j) absent secondary meaning and receive weak protection. Applied to treat TOWER and HOTELS as generic and GLOBALCENTER and FIFTHAVENUE as descriptive.
• Effect of disclaimer — The Office may allow or require disclaimer of an unregistrable component without prejudicing existing or future rights if distinctiveness is later acquired, but disclaimer does not automatically render the whole composite the dominant feature. Applied to reject Oceanic's claim that disclaimed GLOBALCENTER merged into an indivisible dominant mark.
• Nice Classification not determinative of relatedness — Goods or services may not be deemed similar or dissimilar merely because they appear in the same or different Nice classes. Applied to disregard Class 36 versus Classes 37, 41, 43, and 44 as controlling, following Kolin Electronics Co., Inc. vs. Kolin Philippines International, Inc.
• Protection in normal potential expansion and cyberspace goodwill — A registered owner is protected not only against direct competition but where junior use would mislead purchasers that the senior expanded into the field or is connected with the junior, or forestalls normal expansion; goodwill extends through advertising, including the internet, beyond actual physical market penetration. Applied to find relatedness despite Starwood having no physical Philippine hotel, citing W Land Holdings Inc. vs. Starwood and Dermaline, Inc. vs. Myra Pharmaceuticals, Inc.

• "Surely, one desirous of buying real estate would not go to a hotel just because the hotel's name has a "W" on it." — States the rejected reasoning of the Adjudication Officer that discerning real-estate buyers would not be confused, which the Supreme Court overturned upon finding related building-centered services.
• "might reasonably be assumed to originate with the registrant of an earlier product" — Defines the core of confusion of business where different goods or services are assumed to share a source, central to holding real estate and hotel services confusingly related.
• "the dominant feature of the trademark is the stylized "S", as it is precisely the stylized "S" which catches the eye of the purchaser" — Reiterates from Skechers, U.S.A., Inc. vs. Inter Pacific Industrial Trading Corp. the principle applied here that the eye-catching stylized letter, not surrounding matter, controls under the Dominancy Test.

• Kolin Electronics Co., Inc. vs. Kolin Philippines International, Inc., 896 Phil. 190 (2021) — Controlling precedent establishing the Dominancy Test as determinative of resemblance, defining word marks, abandoning Nice Classification as a relatedness factor, and recognizing normal business expansion; followed.
• Skechers, U.S.A., Inc. vs. Inter Pacific Industrial Trading Corp., 662 Phil. 11 (2011) — Precedent applying the Dominancy Test to a stylized letter where the stylized S catching the purchaser's eye constituted infringement despite different surround; followed for the stylized W.
• McDonald's Corporation vs. Macjoy Fastfood Corporation, 543 Phil. 90 (2007) — Precedent finding confusing similarity based on common dominant corporate M design in similar arch-like, capitalized, stylized depiction; cited as analogous application.
• Societe Des Produits Nestle, S.A. vs. Court of Appeals, 408 Phil. 307 (2001) — Precedent finding MASTER dominant through bold, enlarged, emphasized printing and advertising; cited for emphasis-through-boldface analysis.
• Mighty Corporation vs. E. & J. Gallo Winery, 478 Phil. 615 (2004) — Source of multifactor relatedness criteria including business, class, nature, cost, purpose, purchase conditions, and channels of trade; applied.
• W Land Holdings Inc. vs. Starwood, 822 Phil. 23 (2017) — Recognized Starwood's Philippine commercial activity through its interactive website and internet goodwill extending beyond physical presence; relied on for online channels of trade, though not res judicata.
• Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., 642 Phil. 503 (2010) — Articulated protection beyond actual competition to likelihood of confusion of source and forestalling normal potential expansion; followed.
• Ginebra San Miguel, Inc. vs. Director of the Bureau of Trademarks, 927 Phil. 355 (2022) — Defined generic and descriptive categories and their weak protection; followed to classify TOWER, HOTELS, GLOBALCENTER, and FIFTHAVENUE.

• Section 121.1, Intellectual Property Code — Defines mark as any visible sign capable of distinguishing goods or services to identify origin, ensure genuineness, and prevent fraud or substitution; invoked to frame trademark purpose.
• Section 123.1(d), Intellectual Property Code — Bars registration of a mark identical with or nearly resembling a registered or earlier-filed mark for same, closely related, or likely-to-confuse goods or services; basis for opposition and cancellation.
• Section 123.1(h), (j), Intellectual Property Code — Bars registration of marks consisting exclusively of generic signs or descriptive indications of kind, quality, intended purpose, geographic origin, or other characteristics; applied to deny distinctiveness to TOWER, HOTELS, GLOBALCENTER, and FIFTHAVENUE.
• Section 126, Intellectual Property Code — Permits disclaimer of an unregistrable component without prejudice to rights then existing or thereafter arising; applied to Oceanic's disclaimer of GLOBALCENTER.
• Section 134, Intellectual Property Code — Allows any person who believes he would be damaged to oppose registration within 30 days after publication; procedural basis for Starwood's oppositions to W GLOBALCENTER and W FIFTHAVENUE.
• Section 151.1, Intellectual Property Code — Allows any person who believes he is or will be damaged to petition for cancellation at any time if registration was obtained contrary to the Code or misrepresents source; procedural basis for Starwood's cancellation of W TOWER.
• Rule 18, Section 5, Revised Rules of Procedure on Intellectual Property Rights Cases — Requires assessment of likelihood of confusion from the general impression of the ordinary purchaser, weighing visual, aural, connotative comparisons and overall marketplace impressions; applied to facade and online use.
• Rule 18, Section 6, Revised Rules of Procedure on Intellectual Property Rights Cases — Provides goods or services may not be considered similar or dissimilar merely because they appear in same or different Nice classes; basis for rejecting classification-based non-relatedness.

Gesmundo, C.J. (Chairperson), Zalameda, Rosario, and Marquez, JJ., concur.