Suyen Corporation vs. Danjaq LLC

AGENT BOND is non-registrable under Section 123.1(d) and (f) of the Intellectual Property Code because it nearly resembles the registered JAMES BOND mark as to be likely to deceive or cause confusion, and because its use suggests a connection with the well-known JAMES BOND mark to the damage of its owner.

Suyen Corporation is a Philippine corporation that operates under the BENCH trademark. Danjaq, LLC is a foreign corporation based in Santa Monica, California, which asserted rights in the JAMES BOND trademark and related Bond marks. James Bond, also known as Agent 007, is a fictional British secret agent/spy who has starred in 22 films since 1962 and has achieved international popularity. The dispute concerns the registrability of a trademark under the Intellectual Property Code, particularly Section 123.1, and the protection afforded to well-known marks and their goodwill.

Suyen Corporation, a Philippine corporation operating under the BENCH trademark, filed an application with the Intellectual Property Office on February 16, 2010 to register the mark AGENT BOND for "hair refresher, hair gel, hair lotion, hair treatment, hair shampoo, and hair conditioner." Danjaq, LLC, a foreign corporation based in Santa Monica, California, United States of America, opposed the application, asserting that AGENT BOND was confusingly similar to its JAMES BOND trademark and associated "Bond" marks. According to Danjaq, Suyen sought to ride on the popularity of JAMES BOND and its associated marks. James Bond, also known as Agent 007, is a fictional British secret agent/spy who has been the star of 22 films since 1962 and has gained international popularity through the James Bond films/franchise. Danjaq claimed prior use and registration of the JAMES BOND mark.

In its Answer, Suyen denied any confusing similarity between AGENT BOND and JAMES BOND. Suyen explained that JAMES BOND is not known as Agent Bond and has never been referred to as Agent Bond in any of the 22 films; even if he were, the supposed popularity of the JAMES BOND mark was insufficient to prove that it is a well-known mark under Section 123.1 of the Intellectual Property Code. Suyen also questioned Danjaq's claim that it sold products in the Philippines, noting that the documentary evidence attached to Danjaq's opposition to prove sales of BOND GIRL 007 products was an alleged royalty report with no explanation or indication that it was for product sales in the Philippines. Suyen narrated that it entered the service industry with its sister companies by operating beauty salons named "FIX Bench Salon"; prior to March 2001, it manufactured, advertised, distributed, and sold hair products under the "FIX" trademark. AGENT BOND, one of its styling gums, was placed on packaging materials with the FIX trademark and had been marketed, advertised, distributed, and sold since March 8, 2005. Suyen described AGENT BOND as a creative but non-descriptive reference to the function of the product: "agent" was used to convey that the product is a device, while "bond" referred to the ability of the product's ingredients to hold or bind the hairstyle. Applying the dominancy and holistic tests, Suyen argued that the common word BOND was not the dominant word for both marks, that AGENT and JAMES were equally prominent, and that BOND had been diluted by numerous trademarks in the Philippines. Suyen added that Danjaq had no exclusive rights to the word "bond" and could not over-extend the protection of its JAMES BOND trademark to AGENT BOND. Suyen reiterated that its AGENT BOND products prominently displayed the BENCH and FIX trademarks, that it did not use AGENT BOND in bad faith or to create confusion with JAMES BOND, and that it had never received any complaint or inquiry showing actual confusion.

In its Position Paper, Danjaq retorted that it is not actual confusion that is required to deny registration but the possibility of confusion. Danjaq argued that the use of AGENT BOND causes confusion as to origin, making it appear that Danjaq approved the use of AGENT BOND as a trademark; because JAMES BOND is a well-known mark, any product bearing the JAMES BOND trademark or other related marks is highly marketable. Danjaq also asserted that JAMES BOND is entitled to protection against unauthorized use of the fictional character's persona as part of Danjaq's right of publicity, and that registration of AGENT BOND would dilute the distinctiveness of the JAMES BOND and BOND GIRL 007 trademarks under Levi Strauss & Co. vs. Clinton Apparelle, Inc., particularly because JAMES BOND is a well-known mark, the use of AGENT BOND began after JAMES BOND became famous, and the use would lead the public to wonder whether a particular "James Bond-related" or "James Bond-like" item of merchandise is from Danjaq or another source. Danjaq further emphasized the irrelevance of including other trademarks, such as FIX and BENCH, with the AGENT BOND mark because AGENT BOND would still remind purchasers of the world-renowned character James Bond.

Danjaq's opposition before the IPO precipitated the administrative and judicial proceedings. The BLA, ODG, and CA found that Danjaq had established prior use and registration of JAMES BOND, that the James Bond franchise had extensive worldwide registrations and fame, and that Suyen had used AGENT BOND since 2005 with the FIX and BENCH marks.

• Over-extension of JAMES BOND rights: Suyen argued that the BLA, ODG, and CA cannot over-extend Danjaq's rights simply because a mark includes the word "bond" or because it may be associated with JAMES BOND.
• No colorable imitation: Suyen maintained that AGENT BOND is not a colorable imitation of JAMES BOND under Section 155 of the Intellectual Property Code.
• No likelihood of confusion: Suyen contended that a mere reminder of JAMES BOND does not automatically confuse the purchaser as to the product's origin since the ordinary purchaser would be able to see obvious differences between the two marks. It cited the IPO's 2005 allowance of SECRET AGENT, a mark that may also be associated with JAMES BOND, and pointed out that AGENT BOND and JAMES BOND are used for different classes of products; although BOND GIRL 007 was under the same class as AGENT BOND, it was removed from the IPO registry for non-filing of the required Declaration of Actual Use.
• Suggestive mark: Suyen argued that AGENT BOND is a suggestive mark entitled to recognition because it is a creative but non-descriptive reference to the product's function as a hair styling gum, with "agent" referring to a device and "bond" referring to the ability to bind the hairstyle.
• No bad faith and no actual confusion: Suyen asserted that its AGENT BOND products prominently displayed the BENCH and FIX trademarks, that it spent substantial amounts to promote AGENT BOND as Suyen's product, that it engaged celebrity endorsers, and that it had never received any complaint or inquiry showing actual confusion with JAMES BOND.
• Well-known mark not established: Suyen questioned Danjaq's evidence of Philippine sales and argued that JAMES BOND was not shown to be a well-known mark under Section 123.1(e) of the Intellectual Property Code and La Chemise Lacoste, S.A. vs. Fernandez.
• CA jurisdiction over well-known status: Suyen challenged the CA's declaration of JAMES BOND as a well-known mark because the issue was not raised on appeal, and insisted that the BLA, ODG, and CA misappreciated the facts and erroneously ruled that AGENT BOND and JAMES BOND are confusingly similar.

• Dismissal for factual issues: Danjaq sought the dismissal of the petition because the issues raised referred to factual matters beyond the ambit of a petition for review.
• Likelihood of confusion: Danjaq countered that it is not actual confusion that is required to deny registration but the possibility of confusion; the use of AGENT BOND causes confusion as to origin, making it appear that Danjaq approved the use of AGENT BOND as a trademark.
• Well-known mark: Danjaq argued that JAMES BOND meets all the criteria listed in Rule 102 of the Trademark Rules and Regulations and is a well-known mark; because of this, any product bearing the JAMES BOND trademark or other related marks is highly marketable.
• Right of publicity: Danjaq maintained that JAMES BOND is entitled to protection against the unauthorized use of the fictional character's persona as part of Danjaq's right of publicity.
• Trademark dilution: Danjaq contended that registration of AGENT BOND would dilute the distinctiveness of the JAMES BOND and BOND GIRL 007 trademarks under Levi Strauss & Co. vs. Clinton Apparelle, Inc., because JAMES BOND is a well-known mark, the use of AGENT BOND began after JAMES BOND became famous, and the use would lead the public to wonder whether a particular "James Bond-related" or "James Bond-like" item of merchandise is from Danjaq or another source.
• Irrelevance of FIX and BENCH: Danjaq emphasized that including other trademarks such as FIX and BENCH with the AGENT BOND mark is irrelevant because AGENT BOND will still remind purchasers of the world-renowned character James Bond.
• AGENT BOND not suggestive: Danjaq argued that AGENT BOND does not suggest a hair product and that the combination of the words "agent" and "bond" leads the public to assume that AGENT BOND originates from Danjaq.

• Over-extension of trademark rights: Whether the BLA, ODG, and CA over-extended Danjaq's rights over JAMES BOND by denying trademark applications involving the word "bond."
• Likelihood of confusion under Section 123.1(d): Whether AGENT BOND nearly resembles the registered JAMES BOND mark as to be likely to deceive or cause confusion.
• Well-known mark and Section 123.1(f): Whether AGENT BOND is non-registrable under Section 123.1(f) because it is confusingly similar to the well-known JAMES BOND mark, its use indicates a connection with JAMES BOND, and Danjaq's interests are likely to be damaged.
• Well-known status and CA authority: Whether JAMES BOND is a well-known mark and whether the CA had authority to declare it as such even if the issue was not raised on appeal.
• Suggestive mark: Whether AGENT BOND is a suggestive mark entitled to registration.

• Over-extension of trademark rights: No. The denial did not rest on the mere inclusion of the word "bond"; it rested on likelihood of confusion and protection of a well-known mark under Section 123.1(d) and (f) of the Intellectual Property Code.
• Likelihood of confusion under Section 123.1(d): Yes. AGENT BOND nearly resembles JAMES BOND as to be likely to deceive or cause confusion; actual confusion is not required.
• Well-known mark and Section 123.1(f): Yes. JAMES BOND is a well-known mark; the use of AGENT BOND indicates a connection with it and is likely to damage Danjaq through dilution.
• Well-known status and CA authority: Yes. JAMES BOND is a well-known mark on substantial evidence; Rule 101(d) allows courts to declare a mark well-known, and the CA could rule on the issue.
• Suggestive mark: No. AGENT BOND does not describe a hair-binding product; its combination connotes James Bond and was not shown to be a suggestive mark entitled to registration.

• Over-extension of trademark rights: The Court clarified that the denial was not because any mark containing "bond" is automatically barred. The BLA, ODG, and CA have the power to approve or deny trademark applications involving the word "bond"; here, denial was based on Section 123.1(d) and (f) of the Intellectual Property Code. Under Section 123.1(d)(iii), a mark cannot be registered if it nearly resembles a registered mark as to be likely to deceive or cause confusion; the provision does not require that the competing marks belong to the same or closely related goods or services. The crux is the existence of a likelihood of confusion. Because AGENT BOND's combination and order of words, not merely the shared word "bond," created a likelihood of confusion, there was no over-extension of Danjaq's rights.

• Likelihood of confusion under Section 123.1(d): The Court applied Section 5, Rule 18 of the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases, which requires consideration of the general impression of the ordinary purchaser, visual, aural, and connotative comparisons, and overall impressions engendered by the marks in the realities of the marketplace. For non-identical goods or services, factors include the strength of the plaintiff's mark, the degree of similarity between the marks, the proximity of the products or services, the likelihood that the plaintiff will bridge the gap, evidence of actual confusion, the defendant's good faith in adopting the mark, the quality of the defendant's product or service, and the sophistication of the buyers. Actual confusion or absolute certainty of confusion is not required. The Dominancy Test does not rely solely on visual and aural aspects but also on connotative comparisons and overall impressions; it is not the fact that a particular set of words was used but the manner in which they were utilized. JAMES BOND's popularity and name recall predated Suyen's use of AGENT BOND in 2005, and Suyen admitted the popularity of the character, including the existence of parodies. The terms "agent" and "bond," when put together in that particular order, inevitably suggest a connection with James Bond as he was also known by his spy name, Agent 007. Suyen's explanation that "agent" refers to a device and "bond" refers to binding the hairstyle was weak: there is no mechanism in a hair styling product, and the registered trademarks containing the word "bond," except Bond Street, all refer to adhesives. The fact that Suyen marketed its products with the BENCH or FIX brand did not change the likelihood that purchasers would believe the product is related to JAMES BOND. Confusion of business exists when the products are non-competing but related enough to produce confusion of affiliation; it contemplates a situation where Suyen's product might reasonably be assumed to originate with Danjaq, and the public would be deceived into that belief or into the belief that there is some connection between Danjaq and Suyen that does not exist. The Court cited UFC Philippines, Inc. vs. Barrio Fiesta Mfg. Corp. and McDonald's Corp. vs. L.C. Big Mak Burger, Inc. on confusion of business. Thus, AGENT BOND violated Section 123.1(d).

• Well-known mark and Section 123.1(f): Section 123.1(f) bars registration of a mark that is identical with, confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services not similar to those for which registration is applied for, provided that use of the mark would indicate a connection between those goods or services and the owner of the registered mark, and provided further that the interests of the owner of the registered mark are likely to be damaged by such use. The elements under Section 123.1(f) are distinct from those under Section 123.1(d) insofar as damages are concerned: under Section 123.1(d), damage is caused by a likelihood of confusion to the targeted buyers between the competing marks, whereas damages under Section 123.1(f) are those caused to the interests of the registered owner of a well-known mark. JAMES BOND is a well-known mark. Rule 101(d) of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers enumerates the competent authorities that can declare a mark well-known—namely, the courts, the Director General, and the director of the Bureau of Legal Affairs—so long as some of the criteria under Rule 103 are met. The CA's declaration was supported by substantial evidence: certificates of registration of JAMES BOND and other related "Bond" marks in at least 32 countries, the fame of the James Bond movie franchise as evinced in the webpage of the internet movie database "All-Time Non-USA Box Office," and Suyen's own admission of the popularity of the fictional character to the extent that parodies were created imitating his persona. The other elements of Section 123.1(f) were also established: confusing similarity between the competing marks, the use of AGENT BOND would indicate a connection between it and JAMES BOND, and the use of AGENT BOND would likely damage Danjaq's interest over JAMES BOND. Damages under Section 123.1(f) are present when there is trademark dilution. In Levi Strauss & Co. vs. Clinton Apparelle, Inc., the Court defined trademark dilution as the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of the famous mark and other parties, or likelihood of confusion, mistake, or deception. The Court noted that laws and jurisprudence have not yet elaborated on dilution by tarnishment and dilution by blurring, but the elements of dilution by blurring were present: the degree of similarity between the mark and the famous mark was established through the Dominancy Test; the degree of inherent or acquired distinctiveness and recognition of the famous mark were satisfied by the CA's pronouncement that JAMES BOND is well-known; and Suyen's admission that there is a mental connection created between AGENT BOND and the well-known JAMES BOND mark established the intent to create an association. Thus, AGENT BOND was non-registrable under Section 123.1(f).

• Well-known status and CA authority: The Court upheld the CA's declaration of JAMES BOND as a well-known mark on the basis of substantial evidence. Rule 101(d) of the Rules and Regulations enumerates the courts, the Director General, and the director of the Bureau of Legal Affairs as competent authorities that can declare a mark well-known, so long as some of the criteria under Rule 103 are met. Rule 103 lists criteria including the duration, extent, and geographical area of use and promotion; market share; degree of inherent or acquired distinction; quality-image or reputation; extent of registration and use worldwide; exclusivity of registration and use; commercial value; record of successful protection; outcome of litigations; and the presence or absence of identical or similar marks validly registered or used by others. While the CA may have used different criteria, its conclusion that JAMES BOND is well-known was amply supported by substantial evidence on record. Suyen's challenge that the issue was not raised on appeal did not invalidate the CA's declaration.

• Suggestive mark: The CA did not find AGENT BOND to be a suggestive mark because the combination of the words was not fancifully or arbitrarily crafted. Explaining a suggestive mark as a word, picture, or other symbol that suggests the quality or nature of a product, the CA agreed with Danjaq that AGENT BOND does not describe a product that binds the hairstyle but refers to the fame of the James Bond franchise. The Supreme Court found Suyen's explanation for using the AGENT BOND mark weak and concluded that the combination and order of the words connoted James Bond. Thus, AGENT BOND was not entitled to registration.

• Likelihood of Confusion under Section 123.1(d)(iii), Intellectual Property Code — A mark cannot be registered if it nearly resembles a registered mark as to be likely to deceive or cause confusion. Actual confusion or absolute certainty of confusion is not required; only a likelihood of confusion is needed. The provision does not require that the competing marks belong to the same or closely related goods or services. In this case, AGENT BOND was found to nearly resemble JAMES BOND because of the connotative and overall impression created by the combination and order of the words, not merely because both contain the word "bond."

• Dominancy Test and Connotative Comparison — In determining confusing similarity, the court must consider the general impression of the ordinary purchaser, visual, aural, and connotative comparisons, and overall impressions engendered by the marks in the realities of the marketplace. The Dominancy Test does not rely solely on visual and aural aspects but also on connotative comparisons and overall impressions; it is not the fact that a particular set of words was used but the manner in which they were utilized. The terms "agent" and "bond," when put together in that particular order, inevitably suggest a connection with James Bond as he was also known by his spy name, Agent 007.

• Confusion of Business — Confusion of business exists when the products are non-competing but related enough to produce confusion of affiliation. It contemplates a situation where the defendant's product might reasonably be assumed to originate with the plaintiff, and the public would be deceived either into that belief or into the belief that there is some connection between the plaintiff and the defendant that does not exist. The Court applied this doctrine because AGENT BOND may be assumed to originate with Danjaq, causing the public to believe that Suyen's product is connected to Danjaq.

• Well-Known Marks under Section 123.1(f), Intellectual Property Code — A mark cannot be registered if it is identical with, confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services not similar to those for which registration is applied for, provided that use of the mark would indicate a connection between those goods or services and the owner of the registered mark, and provided further that the interests of the owner of the registered mark are likely to be damaged by such use. The competent authorities that can declare a mark well-known under Rule 101(d) include the courts, the Director General, and the director of the Bureau of Legal Affairs, so long as some of the criteria under Rule 103 are met. JAMES BOND was declared a well-known mark on substantial evidence.

• Trademark Dilution — Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of the famous mark and other parties, or likelihood of confusion, mistake, or deception. It includes dilution by blurring and dilution by tarnishment. Under Section 123.1(f), damage to the interests of the registered owner of a well-known mark may be shown through dilution. The elements of dilution by blurring were present in this case: similarity between the marks, the well-known status and recognition of JAMES BOND, and Suyen's admission of a mental connection between AGENT BOND and JAMES BOND.

• Goodwill and Protection of Trademarks — The original owner is entitled to the preservation of the valuable link between him and the public that has been created by his ingenuity and the merit of his wares or services. The law of unfair competition has expanded to keep pace with the times, and the element of strict competition has ceased to be the determining factor. The owner of a trademark or trade name has a property right entitled to protection because there is damage from confusion of reputation or goodwill in the mind of the public as well as from confusion of goods. The Court cited Ang vs. Teodoro and Etepha, A.G. vs. Dir. of Patents to justify protecting the goodwill of the JAMES BOND mark against free riding.

• "The crux of the controversy under this section is ascertaining the existence of a likelihood of confusion." — The Court used this to frame the Section 123.1(d)(iii) inquiry, emphasizing that the central question is likelihood of confusion rather than actual confusion.
• "The terms "agent" and "bond" - when put together in that particular order - inevitably suggests a connection with James Bond as he was also known by his spy name, Agent 007." — This is the core similarity finding under the Dominancy Test and connotative comparison, explaining why AGENT BOND nearly resembles JAMES BOND.
• "Absolute certainty of confusion or even actual confusion is not required to accord protection to trademarks already registered with the IPO." — This states the standard for likelihood of confusion and supports the denial of registration even without proof of actual confusion.
• "Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception." — The Court adopted this definition from Levi Strauss & Co. vs. Clinton Apparelle, Inc. to explain the damage element under Section 123.1(f).

• Kolin Electronics, Inc. vs. Kolin Philippines International, Inc., G.R. No. 228165, February 9, 2021 — Cited as the recent En Banc case referring to the multifactor test in determining likelihood of confusion; the Court found the criteria present in this case.
• Societe Des Produits Nestle, S.A. vs. Court of Appeals, 408 Phil. 307 (2001) — Cited for the Dominancy Test including connotative comparisons and overall impressions; also cited by the ODG for the principle that the choice of a mark closely associated with another's mark may show intent to take advantage of goodwill.
• Levi Strauss & Co. vs. Clinton Apparelle, Inc., 507 Phil. 238 (2005) — Cited for the controlling definition of trademark dilution and for the concepts of dilution by blurring and dilution by tarnishment; applied to establish damage under Section 123.1(f).
• UFC Philippines, Inc. vs. Barrio Fiesta Mfg. Corp., 778 Phil. 763 (2016) — Cited to explain that allowing registration of a trademark that will cause confusion of business will render the oppositor's hard-earned goodwill associated with a newer product introduced by the applicant.
• McDonald's Corp. vs. L.C. Big Mak Burger, Inc., 480 Phil. 402 (2004) — Cited for the definition of confusion of business, which exists when the products are non-competing but related enough to produce confusion of affiliation.
• Sterling Products International, Incorporated vs. Farbenfabriken Bayer Aktiengesellschaft, 137 Phil. 838 (1969) — Cited in McDonald's Corp. vs. L.C. Big Mak Burger, Inc. for the formulation of confusion of business.
• Ang vs. Teodoro, 74 Phil. 50 (1942) — Cited for the principle that the original owner is entitled to the preservation of the valuable link between him and the public created by his ingenuity and the merit of his wares or services.
• Etepha, A.G. vs. Dir. of Patents, 123 Phil. 329 (1966) — Cited for the objects of trademark: to point out distinctly the origin or ownership of the articles to which it is affixed, to secure the fruit of industry and skill, and to allow the original owner to expand business without fear of a second user riding on goodwill.
• La Chemise Lacoste, S.A. vs. Fernandez, 214 Phil. 332 (1984) — Cited by Suyen to challenge the well-known status of JAMES BOND; the Court instead upheld the CA's well-known declaration under the applicable Rules.

• Section 123.1(d), Intellectual Property Code — A mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of the same goods or services, closely related goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion. The Court applied this provision because AGENT BOND nearly resembles JAMES BOND as to be likely to deceive or cause confusion; actual confusion was not required, and the provision did not require the goods or services to be the same or closely related.
• Section 123.1(f), Intellectual Property Code — A mark cannot be registered if it is identical with, confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services not similar to those for which registration is applied for, provided that use of the mark would indicate a connection between those goods or services and the owner of the registered mark, and provided further that the interests of the owner of the registered mark are likely to be damaged by such use. The Court applied this provision because JAMES BOND is a well-known mark, the use of AGENT BOND indicates a connection with it, and Danjaq's interests are likely to be damaged through dilution.
• Section 5, Rule 18, 2020 Revised Rules of Procedure for Intellectual Property Rights Cases — In determining whether one trademark is confusingly similar to or is a colorable imitation of another, the court must consider the general impression of the ordinary purchaser, visual, aural, and connotative comparisons, and overall impressions engendered by the marks in the realities of the marketplace. For non-identical goods or services, factors include the strength of the plaintiff's mark, the degree of similarity between the marks, the proximity of the products or services, the likelihood that the plaintiff will bridge the gap, evidence of actual confusion, the defendant's good faith, the quality of the defendant's product or service, and the sophistication of the buyers. The Court applied these factors in finding a likelihood of confusion.
• Rule 101(d), Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers (IPOPHL Memorandum Circular No. 17-010) — Enumerates the competent authorities that can declare a mark well-known: the courts, the Director General, and the director of the Bureau of Legal Affairs, so long as some of the criteria under Rule 103 are met. The Court applied this provision to uphold the CA's authority to declare JAMES BOND a well-known mark.
• Rule 103, Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers — Lists the criteria for determining whether a mark is well-known, including the duration, extent, and geographical area of use and promotion; market share; degree of inherent or acquired distinction; quality-image or reputation; extent of registration and use worldwide; exclusivity of registration and use; commercial value; record of successful protection; outcome of litigations; and the presence or absence of identical or similar marks validly registered or used by others. The Court applied these criteria to find substantial evidence supporting the well-known status of JAMES BOND.

Chief Justice Gesmundo, Justice Zalameda, and Justice Gaerlan concurred. Justice Caguioa submitted a concurring opinion. As reflected in the majority's citations, Justice Caguioa emphasized that the conceptual similarity between AGENT BOND and JAMES BOND is high, that both marks are similar in type because they use no special characteristics, that the CA's well-known finding is supported by substantial evidence, and that the elements of dilution by blurring are present.