A registered trademark is a defense against trademark infringement

James A. Magtalas, doing business under the firm name Amm Yang Chow Food (“Complainant”) is the registered owner of the AMM YANG CHOW FOOD EXPRESS AND LOGO trademark that was registered on 18 March 2010 in Class 43. HTK Food Specialist, Inc. (“Respondent”), on the other hand, is the registered own of the YANG CHOW DIMSUM & TEAHOUSE & DESIGN trademark that was registered on 8 September 2011 in Class 43.

In Magtalas v. HTK Food Specialist, Inc., 18 January 2017 (IPV No. 10-2011-00017), Complainant filed a trademark infringement case against the Respondent. The competing marks are provided below:

Screen Shot 2017-05-31 at 3.35.41 PM.png

The Bureau of Legal Affairs (“BLA”) held that the marks are not confusingly similar. While both trademarks contain the term YANG CHOW, said term is generic as it refers to a popular Chinese-style wok fried rice dish. In addition, the BLA held that “[e]ven the font style or how the Yang Chow is printed and stylized by the parties in their marks is standard or the Chinese way of printing the word/s YANG CHOW”. Thus, no one can claim exclusive right over the generic term and common font used. Moreover, both the Complainant and Respondent disclaimed the term YANG CHOW in their trademark applications.

Hence, what is left for comparison is the combination of words and the logo used. The BLA held that the competing marks “vary substantially in the composition and integration of the other main and essential features, in the general design and their overall appearance”. Therefore, ordinary consumers would not be drawn to the minute similarities. Rather, they would focus on the glaring dissimilarities between the competing marks that would easily distinguish one from the other.

Furthermore, Respondent’s trademark is registered. Thus, it cannot be guilty of trademark infringement.

Questions and Comment

  • There’s a standard Chinese way of printing the word YANG CHOW?
  • Can generic marks be registered?
  • This is why it is not advisable to use a generic or descriptive term as the dominant feature of the mark.
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