Béaba, a French corporation in the business of manufacturing high-end baby cooking products, carrier bags, changing bags and other sophisticated baby products, filed in 2018 before the Intellectual Property Office of the Philippines (IPOPHL) its application for registration of the trademark BEABA under International Registration No. M11464864, covering goods in Classes 8, 12, 16, 18, 24, 25, and 27. The trademark examiner denied it stating that the mark BÉABA nearly resembles the BEABI mark owned by Yasabeli Concepts, Inc. for goods in Classes 16 and 18, particularly bags, and that said resemblance is likely to deceive or cause confusion. To facilitate the registration of the mark in other classes, a divisional application for Classes 16 and 18 was requested and, later on, Class 16 was requested for deletion, and subsequently a statement of grant was issued to the parent application. The divisional application, and the single remaining pending application for the BÉABA mark covered only the goods in Class 18, namely, sling bags baby carriers for carrying infants, pouch baby carriers and back frames for carrying children. Still, the trademark examiner rejected the same for the same reason. On appeal, the BOT Director affirmed the rejection by the Examiner of the BEABA application in Class 18 ruling that the mark is confusingly similar to the mark, and that the goods covered are related. The decision of the Bureau of Trademarks (BOT) director was appealed to the Office of the Director General (ODG). The BÉABA mark and the cited BEABI mark are shown below. Are these marks confusingly similar?  

BÉABA’s mark	YASABELI CONCEPTS INC.’s mark
BÉABA

The ODG found that the BÉABA mark is NOT confusingly similar to the cited BEABI mark; hence, the BÉABA mark is capable of registration. 

In this case, the IPOPHL addressed two significant issues under trademark law: the treatment of divisional applications under the Madrid Protocol and the registrability of similar marks for unrelated goods or services. This ruling highlights subtle nuances in trademark law, particularly in regards to international registrations and the extent of protection for similar trademarks, as explained below: 

Divisional applications under the Madrid Protocol 

The Madrid Protocol provides a mechanism for the international registration of trademarks, allowing a streamlined process for trademark protection in multiple countries. In the BÉABA case, it was clear that the applicant filed for a division of its application stemming from international registration under the Madrid Protocol. The applicant sought the division of its trademark application to isolate specific goods or services for separate examination. This method is acceptable under the Protocol and in accordance with IPOPHL’s regulations, which allow for flexibility to meet the strategic requirements of trademark applicants. 

Divisional applications are essential for managing broad international applications, particularly when an objection might apply only to a subset of goods or services. This approach helps applicants navigate through provisional refusals more efficiently, ensuring that parts of their applications that are unobjectionable can proceed to registration without delay. 

Registration of similar marks for unrelated goods or services 

The BÉABA ruling stressed that having the same initial letters does not automatically mean that the marks are confusingly similar. Thus, the IPOPHL found that the applicant’s BÉABA mark and the BEABI cited mark are dissimilar and that an ordinary consumer will not be misled into considering that the applicant’s mark is associated with the mark cited by the examiner. The evaluation of trademark similarity must be approached carefully, taking into account the particular goods or services in question. The ODG determined that while the marks in question shared some phonetic and visual similarities, the goods covered under the respective applications were sufficiently unrelated to mitigate any potential confusion among the public. This part of the decision is significant for illustrating the balance between protecting trademark rights and allowing market diversity. It highlights that the scope of trademark protection is not absolute and extends only in cases where there is a relevant market overlap that could potentially confuse consumers. 

Differentiation in goods 

The trademarks in question were registered for significantly different categories of goods. The applicant’s mark covers goods in Class 18, particularly “baby carriers, sling bags for carrying infants, pouch baby carriers [and] back frames for carrying children,” all of which belong to a category of baby products. On the other hand, the cited mark covers a more general set of unrelated products, such as “trunks & travelling bags, umbrellas, bays, shopping bags, foldable bags, tote bags [and] duffel bags.” This clear demarcation in product categories helps to ensure that the average consumer is unlikely to assume that the goods come from the same source or are somehow related. 

Market channels and consumer perception 

The decision further took into account the different market channels through which the respective goods are sold and the typical consumer base for each product category. Products in different categories are often sold in different retail environments and may target different demographic segments, which further reduces the likelihood of confusion. For example, baby products are frequently purchased by expectant parents in specialized stores or sections of stores that focus on child care, whereas general merchandise are more likely to be found in home goods stores or sections. The distinct consumer bases and sales environments contribute to minimizing confusion, despite the similarity in the trademarks. 

Industry practices 

The decision also considered the common industry practices regarding the branding of such goods. In industries where branding tends to be specific and highly targeted toward particular consumer needs, the likelihood that similar trademarks will cause confusion diminishes, especially when those marks are used in unrelated sectors. 

Conclusion on goods distinction 

The BÉABA decision reinforces the principle that the specificity of the goods or services associated with a trademark is crucial in determining the scope of protection. This helps maintain a balance between protecting trademark rights and fostering a competitive market where companies can freely innovate and brand their products without undue interference from non-competing sectors. This focused analysis on how different goods allow for the co-existence of similar marks underlines the importance of detailed product and market considerations in trademark law, emphasizing a tailored approach to each case based on the actual market dynamics and consumer perceptions. 

The BÉABA case offers valuable insights into the practical application of trademark law under the Madrid Protocol and in scenarios involving similar marks. For practitioners and businesses, understanding these nuances is crucial for strategic trademark management and navigating the complexities of global trademark registration.