Expanded Protection of Well-Known Marks: A Look at the Supreme Court’s Ruling in ISCO v. Nikon Corporation

How much protection is afforded to trademarks considered well-known? The Supreme Court defines these parameters in the recent case of ISCO Holding Corporation v. Nikon Corporation (G.R. No. 256002, November 17, 2025).

The Case

At the center of the dispute is ISCO Holding Corporation (ISCO), a Philippine company, seeking protection of its trademark for its household goods and appliances in Classes 7, 9, 11, 14, and 21 in 2009. Nikon Corporation (Nikon), a Japanese company globally known for its cameras and optical products, challenged the application in 2011 for being confusingly similar to its own “NIKON” wordmark, registered in the Philippines in Class 9 for cameras since 1981.

In response, ISCO claimed the marks appear different given the anchor logo beside the word “Nikon” in its mark, and argued that its household goods and Nikon’s cameras are unrelated, hence the public will not be misled.

The Considerations

The Supreme Court decided in favor of Nikon applying the principles of well-knownness, dominancy test, trademark dilution, and trade name protection.

The Supreme Court reaffirmed the broad protection given to well-known marks.

Based on two previous decisions by the IPO Bureau of Legal Affairs, and as affirmed in this case by the Court of Appeals, the Supreme Court held that “Nikon” has already acquired a well-known status in the Philippines for its extensive geographic presence, numerous international registrations, inherent distinctiveness, and long-standing reputation, among others.

Considering that “Nikon” is a well-known mark that has an existing registration in the Philippines, its protection extends not only to goods covered by the registration, but also to unrelated goods. This is pursuant to Sec. 123.1 (f) of the IP Code, which bars the registration of a trademark that is identical or confusingly similar to a well-known trademark registered in the Philippines for goods which are “not similar to those with respect to which registration is applied for.” The registration in the Philippines of the well-known mark “NIKON” in cameras thus bars the registration of an identical or confusingly similar mark for household goods and appliances.

Applying the Dominancy Test, the Supreme Court found that ISCO’s and Nikon’s wordmark “NIKON” are confusingly similar. The word “Nikon” is the dominant feature of both marks, rendering the ISCO and Nikon’s marks visually and phonetically similar, potentially causing confusion among the public. The Supreme Court stressed that ISCO cannot simply rely on the minor dissimilarities such as the anchor logo, as such “do not outweigh the blatant similarities in their general features.”

Applying further the qualifications under Sec. 123.1 (f) of the IP Code, the Supreme Court held that:

1. The use of the well-known mark “NIKON” in ISCO’s household goods would lead the public to think that Nikon has expanded its camera business into household goods.
2. Nikon’s interests are likely to be damaged by such use. The ruling also seeks to protect owners of well-known brands from damage arising from trademark dilution, which is the lessening of the capacity of a famous mark to identify its goods and services either by blurring (association that impairs the distinctiveness of the famous mark) or tarnishment (association which causes harm to the famous mark). “Dilution by blurring” was applied in this case owing to the palpable similarity between ISCO’s and Nikon’s marks, and the recognition of “Nikon” as a well-known mark by the BLA and the CA.

Finally, the Supreme Court also applied the prohibition on registering a mark that constitutes an existing trade name of another party if such new trademark will likely mislead the public.

The Implications

This case reiterates the principles which are central to the expanded protection already afforded to well-known trademarks. With it comes the reassurance that these brands and their established commercial identities are protected against third parties that may capitalize on the goodwill associated with well-known marks.

Brand owners of well-known marks are also encouraged to register the same with the Intellectual Property Office of the Philippines’ (IPOPHL) in order to extend this protection to unrelated goods and services.

For new trademark applicants, the key is to adopt marks that are sufficiently distinctive, both visually and aurally, from already existing marks, whether well-known or otherwise. It would also be good to check the published database of the IPOPHL of Well-Known Marks registered in the Philippines, which can be found through this link, for further guidance.

To consult on trademark registration and protection in the Philippines, you may reach out to us at ipteam@platonmartinez.com.

Click here to read the full text of ISCO Holding Corporation v. Nikon Corporation (G.R. No. 256002, November 17, 2025).