A registered trademark is a defense against trademark infringement

James A. Magtalas, doing business under the firm name Amm Yang Chow Food (“Complainant”) is the registered owner of the AMM YANG CHOW FOOD EXPRESS AND LOGO trademark that was registered on 18 March 2010 in Class 43. HTK Food Specialist, Inc. (“Respondent”), on the other hand, is the registered own of the YANG CHOW DIMSUM & TEAHOUSE & DESIGN trademark that was registered on 8 September 2011 in Class 43.

In Magtalas v. HTK Food Specialist, Inc., 18 January 2017 (IPV No. 10-2011-00017), Complainant filed a trademark infringement case against the Respondent. The competing marks are provided below:

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The Bureau of Legal Affairs (“BLA”) held that the marks are not confusingly similar. While both trademarks contain the term YANG CHOW, said term is generic as it refers to a popular Chinese-style wok fried rice dish. In addition, the BLA held that “[e]ven the font style or how the Yang Chow is printed and stylized by the parties in their marks is standard or the Chinese way of printing the word/s YANG CHOW”. Thus, no one can claim exclusive right over the generic term and common font used. Moreover, both the Complainant and Respondent disclaimed the term YANG CHOW in their trademark applications.

Hence, what is left for comparison is the combination of words and the logo used. The BLA held that the competing marks “vary substantially in the composition and integration of the other main and essential features, in the general design and their overall appearance”. Therefore, ordinary consumers would not be drawn to the minute similarities. Rather, they would focus on the glaring dissimilarities between the competing marks that would easily distinguish one from the other.

Furthermore, Respondent’s trademark is registered. Thus, it cannot be guilty of trademark infringement.

Questions and Comment

  • There’s a standard Chinese way of printing the word YANG CHOW?
  • Can generic marks be registered?
  • This is why it is not advisable to use a generic or descriptive term as the dominant feature of the mark.
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It is just a variation

In Starbucks (HK) Limited v. Information Capital Technology Ventures, Inc., January 12, 2017 (IPC No. 14-2013-00264), Starbucks (HK) Limited (“Opposer”), the owner of the NOW TV & DEVICE trademark that is registered in various countries, filed an opposition to the registration of the NOWPLANET.TV mark of Information Capital Technology Ventures, Inc. (“Respondent-Applicant”).

Opposer filed its NOW TV & DEVICE trademark application in the Philippines on 06 September 2012, with a priority claim based on its earlier filing with the European Union on 23 March 2012. On the other hand, Respondent-Application filed its NOWPLANET.TV trademark application on 20 February 2013.

The Opposition was dismissed because Respondent-Applicant was able to show that it has an existing NOWPLANET.TV trademark that was registered on 20 January 2012. Therefore, the Opposer’s trademark application cannot be used as a basis to prevent Respondent-Applicant from registering a mark that appropriates the term NOWPLANET.TV using a different design.

Question:

Opposer argues that Respondent-Applicant’s NOWPLANET.TV mark is visually, phonetically and connotatively similar to its NOW TV & DEVICE mark. Does that mean that Respondent-Applicant can have Opposer’s trademark canceled (Opposer’s trademark was registered on 21 July 2016) since it is the prior registrant in the Philippines?

Expired trademark? No problem

Occidental Chemical Corporation (“Opposer”) is a manufacturer of chemical products necessary for various products, such as plastics, pharmaceuticals, and water treatment chemicals. It is the owner of the OXYCHEM trademark for goods under Classes 1, 17 and 19.

In Occidental Chemical Corporation v. Oxychem Corporation, Opposer filed an opposition to the registration of Oxychem Corporation’s (“Respondent-Applicant) OXYCHEM CORPORATION AND LOGO mark in Class 3 for the following goods:

Disinfectant concentrate, sanitizer, oven cleaner, carpet shampoo, fuel, gel, chaufing dish, wax stripper, all purpose detergents, windshield cleaner, tire black degreaser, dashboard polish, water marks remover, radiator coolant, radiator cleaner, smokehouse cleaner, table top sanitizer, stainless cleaner, liquid hand soap, chlorinated alkaline cleaner, rust and scale cleaner, liquid detergent for food industry, powder bleach, oxygen bleach, anti-yellowish agent, alkali, laundry starch, softener paint and oil greaser remover, rust stain cleaner, fabric freshner, fabric cologne, dry cleaning solution, buffable emulsion wax, stone polish, automatic dishwashing machine cleaner, drying agent for automated dishwashing machine, tub and tile cleaner, insecticide-food grade, juice dispenser cleaner, special dishwashing solution, flame wax solution, and other products for industrial and institutional industry products related to preventive maintenance chemicals.

The competing marks are provided below:

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The Adjudication Officer ruled in favor of the Opposer despite the fact the Opposer’s trademark has already expired. The Adjudication Officer noted that in a prior Inter Partes case involving the same parties, the Bureau of Legal Affairs held that Opposer is the prior adopter, registrant, and owner of the OXYCHEM mark

The Adjudication Officer ruled that the competing marks are identical, as the OXYCHEM word component of both marks are identical. Moreover, the goods covered by Opposer’s trademark are related to the “other products for industrial and institutional industry products related to preventive maintenance chemicals” covered by Respondent-Applicant’s trademark application. Therefore, there is a likelihood that consumers will be mistaken, confused or deceived as to the origin or affiliation of the Respondent- Applicant’s goods if the subject application is allowed to proceed to registration.

Questions:

Are the marks really identical?

Respondent-Applicant sells eco-friendly cleaning chemicals, commercial grade cleaning supplies and cleaning and sanitation equipment, while Opposer manufactures chemical products necessary for a variety of products such as plastics, pharmaceuticals, and water treatment chemicals. Are the abovementioned goods competing or closely related?

Would Respondent-Applicant’s trademark application be allowed to proceed to registration if Respondent-Applicant removed “other products for industrial and institutional industry products related to preventive maintenance chemicals” from the list of goods covered by the mark?

Consolidated Verified Notice of Opposition was filed out of time

In Man Truck & Bus AG v. Halla Holdings Corporation, IPC No. 14-2016-00546, 14-2016-00547 and 14-2016-00548 (January 12, 2017), the subject trademark applications were published on 30 August 2016. Section 134 of the Intellectual Property Code of the Philippines provides:

Sec. 134. Opposition. Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. xxx

While Rule 2, Section 12 of the Revised Rules and Regulations on Inter Partes Proceedings (IPOPHL Memorandum Circular No. 16-007) provides:

Section 2. Period to file opposition. – The verified notice of opposition must be filed within 30 days from the date of the publication of the trademark application in the IPOPHL “Gazette”. Upon proper motion anchored on meritorious grounds which must be expressly indicated in the motion, and the payment of the filing fee for opposition and other applicable fees, the Bureau may grant an additional period of 30 days within which to file the opposition. A second motion for extension of 30 days may also be granted on meritorious grounds and upon payment of the applicable fees. A third and last motion for extension of 30 days may be granted on compelling grounds and upon payment of the applicable fees; Provided, that in no case will the filing of the opposition exceed one hundred and twenty (120) days from the date of the aforementioned publication; Provided, furtlier, that if the last day for filing of the verified opposition or motion for extension falls on a Saturday, Sunday, holiday, non-working day or on a day when the Office or the Bureau is closed for business as may be declared by the Director General, the filing must be done the next succeeding working day. (Emphasis supplied)

Opposer Man Truck & Bus AG (“Opposer”) filed two Motions for Extension of Time to File Opposition. Thus, it had until 28 November 2016 within which to file its oppositions. Opposer filed its Consolidated Verified Notice of Opposition on 29 November 2016.

Rule 2, Section 8 (b) of the Amendments to the Rules and Regulations on Inter Partes Proceedings (Office Order No. 99, Series of 2011) provides:

Section 8. Action on the Notice of Opposition or Motion for Extension to File Notice of Opposition and Petition. – xxx (b) The notice of opposition or petition may be dismissed outright and/or motu propio for having been filed out of time, due to lack of jurisdiction, and/or failure to state a cause of action. Likewise, a motion for extension of time to file notice of opposition shall be denied outright if the opposer fails to state meritorious grounds.

Therefore, the Consolidated Verified Notice of Opposition was dismissed for being filed out of time.

Comment: Deadlines are important.