"REYES ROAST" versus "REYES ROASTERY"
A Manila coffee company has registered the word mark "REYES ROAST" in Class 30 for roasted coffee, coffee beans, and ground coffee since 2018. In 2024, a new café operator files "REYES ROASTERY" with a circular logo of a coffee cup for Class 43 café and restaurant services. The prior registrant opposes, alleging confusing similarity and bad faith. The junior applicant argues that the classes are different, that "Reyes" is a common surname, that "roast" and "roastery" are descriptive, and that its logo distinguishes the mark. The prior registrant has evidence of two instances in which suppliers asked whether the café was affiliated with the prior registrant. It also has evidence that the junior applicant's owner worked as a barista for the prior registrant until 2022. The junior applicant has already opened two branches and has spent on signage and social-media promotion. The opposition period is pending.
1. Apply the holistic test. Is there confusing similarity between the two marks and the related goods/services?
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Likely yes. Philippine practice does not decide confusion by comparing classes alone; it asks whether the marks, in their entirety, would likely cause confusion as to source, affiliation, or sponsorship. The dominant element in both marks is "REYES." The prior mark adds "ROAST"; the junior mark adds "ROASTERY." Those additions are conceptually almost identical in the coffee trade and are descriptive or laudatory. The junior's circular coffee-cup logo does not neutralize the words, especially because the prior registration is a word mark and the junior's word element is visually prominent. Coffee products in Class 30 and café services in Class 43 are commercially related: the same consumer expects coffee served in a café and coffee beans sold for home use, and the channels overlap. The two supplier inquiries are evidence of actual confusion, though modest. The former-employment fact supports an inference that the junior applicant knew of the prior mark, which weighs toward bad faith. The surname weakness argument has some force, but a registered composite can acquire distinctiveness, and "REYES ROAST" is more than a bare surname. On these facts, the opposer has a strong likelihood-of-confusion case.
2. What procedural and evidentiary steps should the prior registrant take, and what defenses may the junior applicant raise?
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The prior registrant should file a verified notice of opposition within the 30-day opposition period under the rules, pay the required fees, and plead the registration number, dates, goods/services, and the factual basis for confusion. Evidence should include the certificate of registration, specimens showing use of "REYES ROAST," advertising and sales figures, the supplier inquiries in affidavit form, employment records showing the junior owner's work history, and any social-media posts or reviews that show actual confusion. The opposer should also preserve evidence of the junior's two branches and promotional spending, because those facts may affect prejudice and damages but do not cure confusion. The junior may defend by arguing that the marks are visually and aurally different because of the logo and the suffix, that the goods and services are distinct, that "REYES" is a common surname entitled to a narrow scope, that "ROAST/ROASTERY" is descriptive, and that there was no bad faith. The junior may also seek a coexistence agreement, but a mere agreement does not bind the Bureau if confusion remains likely.
3. If the opposition succeeds, what post-opposition steps and commercial options remain for the junior applicant?
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If the Bureau sustains the opposition, the junior's application will be refused. The junior can appeal to the Director General within the period set by the rules and, thereafter, to the Court of Appeals. Commercially, the junior should rebrand rather than continue using a confusingly similar mark. Options include adopting a wholly different name, adding a clearly distinguishing house mark, or negotiating a license or coexistence agreement with the prior registrant. Any coexistence agreement should define the permitted goods/services, channels, logos, and geographic scope, and it should be recorded if a license is involved. The junior should also consider whether the prior registration is vulnerable to cancellation for non-use, but that is a separate proceeding requiring proof of no genuine use in the Philippines for the relevant period. Continuing to open branches under the challenged mark after an adverse decision increases the risk of infringement liability and damages.