The Supreme Court (SC) Third Division has barred ISCO Holding Corporation from registering its “NIKON & DESIGN” logo, citing the likelihood of confusion with the globally recognized “NIKON” trademark owned by Nikon Corporation.
Nikon Corp., a foreign company known for its camera products and the prior registrant and user of the “NIKON” mark in the Philippines, opposed ISCO’s trademark application covering home and household goods.
In a decision penned by Associate Justice Maria Filomena Singh, the SC denied ISCO’s application, ruling that Nikon Corp.’s “NIKON” mark is well-known and has long been used, promoted, and registered worldwide, including in the Philippines.
ISCO argued that its goods are unrelated to Nikon Corp.’s products and that differences in design—such as an anchor enclosed in a circle and a distinct color scheme—would prevent consumer confusion.
However, the Intellectual Property Office–Bureau of Legal Affairs (IPO-BLA) sided with Nikon Corp. and denied the application. While the IPO Office of the Director General later reversed this ruling, the Court of Appeals (CA) reinstated the IPO-BLA’s decision, prompting ISCO to elevate the case to the Supreme Court.
The SC found the word “NIKON” to be a highly distinctive trademark, describing it as a coined term with no ordinary meaning in English or Filipino and one not commonly used in the Philippines except as a brand name.
In assessing the marks, the Court applied the Dominancy Test, which focuses on the most prominent and memorable features of a mark while disregarding minor differences in design, color, or layout.
The SC noted that both ISCO’s and Nikon Corp.’s marks prominently feature the word “NIKON,” which appears in identical spelling, bold capital letters, and with the same pronunciation—making it the dominant element in both marks.
The Court emphasized that trademarks serve to identify and distinguish goods or services. Under Section 147 of the Intellectual Property Code, trademark owners have the exclusive right to prevent others from using marks that may cause confusion and harm their business.
The SC further warned that allowing ISCO to use the “NIKON” mark could mislead consumers into believing that its products are made, endorsed, or affiliated with Nikon Corp., or that Nikon has expanded into household goods.
Such use, the Court said, could weaken the distinctiveness of the “NIKON” brand and diminish its ability to identify a single source of goods.