Mandaluyong court junks BDO trademark suit

MANILA, Philippines—The Regional Trial Court (RTC) of Mandaluyong City has junked a trademark infringement and unfair competition complaint filed by European accounting group Stichting BDO against the Philippines’ Banco de Oro Unibank.

In a ruling dated February 29, Branch 211 of the Mandaluyong RTC dismissed the case against BDO when it found that the bank of the Sy family did not violate any trademark rule.

“Neither could the defendant be held guilty of unfair competition since defendant is the prior user in the Philippine market of the mark BDO, such that it has already established goodwill in the local market and banking industry, hence the element of intent to deceive the public and defraud a competitor is lacking,” said the court order penned by Judge Ofelia Calo.

Stichting BDO filed the civil case in 2009 to prevent Banco de Oro from using the initials “BDO.” The European accounting firm claims sole ownership over the initials due to its alleged prior use in 2004, and its supposed trademarks registrations for “BDO” in the Philippines and other countries.

Stichting BDO was established in 1963 with the consolidation of accounting firms from the United Kingdom, the Netherlands, Germany, the United States and Canada. It was known as Binder Seidman International Group until 1973, when it adopted the name Binder Dijker Otte & Co., or “BDO,” based on its website.

Also, the court noted that the Bureau of Legal Affairs of the Philippine Intellectual Property Office had canceled Stichting’s trademark registration for “BDO.” While the cancellation of the mark is not yet final, it nevertheless has been executed pending appeal.