G.R. No. 250800, July 6, 2021
Suyen Corporation, Petitioner, vs. Danjaq LLC, Respondent.

FACTS

Petitioner Suyen Corporation, operating under the BENCH trademark, filed an application on February 16, 2010, for the registration of the mark “AGENT BOND” for hair care products. Respondent Danjaq LLC, a foreign corporation and owner of the “JAMES BOND” trademark related to the fictional character, opposed the application. Danjaq argued that “AGENT BOND” was confusingly similar to its well-known “JAMES BOND” mark and was an attempt to ride on its popularity. Suyen countered that there was no confusing similarity, that “AGENT BOND” was a suggestive mark describing the product’s function (to bond hair), and that Danjaq had not proven “JAMES BOND” was a well-known mark in the Philippines or had exclusive rights to the word “BOND.”
The Intellectual Property Office’s Bureau of Legal Affairs (BLA) sustained Danjaq’s opposition, finding the marks confusingly similar and that “AGENT BOND” would create a confusion of business, making it appear the goods originated from Danjaq. The Office of the Director General (ODG) affirmed the BLA, ruling Suyen’s choice of mark showed an intent to take advantage of JAMES BOND’s goodwill. The Court of Appeals (CA) denied Suyen’s petition, affirming the IPO decisions and declaring JAMES BOND a well-known mark. Suyen elevated the case to the Supreme Court via a Petition for Review on Certiorari.

ISSUE

Whether the mark “AGENT BOND” is confusingly similar to the well-known mark “JAMES BOND” such that its registration should be denied under the Intellectual Property Code.

RULING

The Supreme Court DENIED the petition and AFFIRMED the Court of Appeals Decision. The Court held that “AGENT BOND” is confusingly similar to “JAMES BOND,” a well-known mark, and its registration is barred under Section 123.1(e) and (d) of the Intellectual Property Code (R.A. No. 8293).
The Court applied the dominancy test, focusing on the similarity of the prevalent features of the marks likely to cause confusion. It found the shared word “BOND” to be the dominant feature, as it is the distinctive component of the JAMES BOND mark. The prefix “AGENT” directly relates to the JAMES BOND character, who is famously a secret agent (Agent 007). This combination creates a direct association with Danjaq’s property. The Court rejected Suyen’s argument that “AGENT BOND” was merely suggestive of its product’s function, finding the chosen combination was not arbitrary but deliberately evoked the James Bond persona.
Furthermore, the Court affirmed the declaration that JAMES BOND is a well-known mark, noting its worldwide fame, extensive registrations, and long-standing use. As a well-known mark, it is entitled to protection against dilution, which occurs when a later mark impairs the distinctiveness of the famous mark. The use of “AGENT BOND” for hair products, unrelated to Danjaq’s film business, dilutes the uniqueness of the JAMES BOND mark by blurring its association with a single source. The Court concluded that Suyen’s use of “AGENT BOND” capitalizes on the goodwill of JAMES BOND and is likely to cause confusion, making the mark unregistrable.