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Judge Calls for Compromise in International Trade Mark Dispute

The identical combination of three letters in the names of an international network of accountancy and professional services firms and a Philippines bank has sparked a proliferation of litigation in over 40 jurisdictions around the world. Noting the scale and cost of such litigation, the High Court has called upon the parties to negotiate and find a path towards peaceful co-existence.

The BDO group of professional firms registered the ‘BDO’ letter combination as a trade mark in respect of a wide range of goods and services in 2002. The group is engaged in litigation throughout the world with the Philippines’ leading bank, BDO Unibank, Inc. which also trades under the name ‘BDO’.

Although the bank has no trading presence in the United Kingdom it enjoys tie-up arrangements with a network of third-parties who are engaged in remitting sums earned by Philippino workers to their families in their home country. Such services are provided under the name ‘BDO Remit’ and the BDO group contended that this infringed its trade mark, also complaining of various advertisements placed by the bank in publications which circulate in the European Union.

The BDO group’s plea that the use of the sign ‘BDO Remit’ infringed its copyright was rejected by the court. The bank’s claim for partial revocation of the trade mark was upheld to the extent that the court made a number of variations to the specification of services to which it relates. Although three advertisements placed by the bank were prima face infringements of the trade mark, the court ruled that the use of the ‘BDO’ sign in advertisements did not amount to unfair competition.

The court noted that the dispute between the parties had resulted in litigation in the Philippines, Hong Kong, California and Italy. There were also pending cancellation actions between the parties in Saudi Arabia, Oman, Taiwan, China, Japan and Singapore and 183 opposition actions pending in 40 jurisdictions. The court observed: “The situation cries out for the negotiation of a global, but perhaps geographically differentiated, co-existence agreement”.