It is a derivative

In Biomedis, Inc. v. Abbott Products Operations AG, January 20, 2017 (14-2013-00255), Biomedis, Inc. (“Opposer”) filed an opposition to the registration of the AMPLACAV mark filed by Abbott Products Operations AG (“Respondent-Applicant”) in Class 05 for “pharmaceutical preparations and substances for human use”. The competing marks are provided below:

Screen Shot 2017-06-30 at 1.25.49 PM

The Adjudication Officer ruled that confusion or deception is unlikely to occur despite the fact that the competing marks both have three syllables, as the visual and aural properties of Respondent-Applicant’s mark render it distinct from Opposer’s trademark. While the first two letters (“AM”) and the last two letters (“AV”) of the competing marks are the same, the letters in between Respondent-Applicant’s mark (“PLA”) make it easier for the consumers to distinguish said mark from Opposer’s trademark. Moreover, Opposer cannot exclusively appropriate the letters “AM” and “AV”, as they are derived from CO-AMOXICLAV, an antibiotic used for the treatment of bacterial infections.

Question:

Are the products bearing the AMPLACAV mark used to treat bacterial infections?

Who actually used it in the Philippines?

In Bata Brands S.A.R.L. v. Michell Cheng Yeung, 19 January 2017 (14-2013-00051), Bata Brands S.A.R.L. (“Opposer”) filed an opposition to the trademark application filed by Michell Cheng Yeung (“Respondent-Applicant”) for the COMFIT & DEVICE mark in Classes 9, 14, 18, 25 and 30. The competing marks are provided below:

Screen Shot 2017-06-21 at 9.25.23 AM

The Opposer’s evidence consisted of the following:

Special Power of Attorney/Director’s Certificate authorizing Opposer’s counsel to prosecute this Opposition; copy of Trademark Reg. No. 4-2008-500450 issued on 21 January 2010 for the mark “COMFIT” for goods in Class 25; copy of details of various foreign registration of Opposer’s mark “COMFIT”; copy of Application Serial No. 4-2012-007235 for the mark “COMFIT & DEVICE”; and the Affidavit of Bata Limited’s Secretary and General Counsel, Mr. Leslie Tenenbaum.

In her Answer, Respondent-Applicant averred the following:

  • She is the exclusive owner and user of the COMFIT & DEVICE mark and that she has been openly and continuously using said mark for several years.
  • The COMFIT brand has made an indelible mark in the women’s footwear brand in the Philippines as shoes bearing the COMFIT mark have garnered popularity and positive reviews from diverse patrons.
  • Various local and international celebrity ambassadors have endorsed COMFIT products.
  • COMFIT has a website and several social media pages, i.e., Facebook (33,631 likes), Instagram (1,821 followers) and Twitter *288 followers).

Respondent-Applicant refuted Opposer’s claim that the latter is the registered owner of the COMFIT trademark as said registration does not exist. Upon verification with the Bureau of Trademark, Respondent-Applicant discovered that Opposer’s alleged trademark registration is subject for removal from the Registry as Opposer failed to file the required Declaration of Actual Use (“DAU”). Respondent-Applicant claimed that Opposer’s failure to file the DAU within three (3) years from the filing date showed that Opposer failed to actually use its COMFIT trademark in the Philippines. Moreover, Opposer’s marketing and other visual materials did not prove that its COMFIT mark was actually used in the Philippines.

Furthermore, Respondent-Applicant alleged that:

The effect of the removal from the registry is to terminate Opposer’s ownership over the mark. Otherwise, or to claim that the cancellation of Opposer’s Registration No. 4-2008-500450 did not deprive it of ownership over the mark, is tantamount to rewarding an applicant or registrant who failed to comply with the DAU requirement with continued exclusive right over the cancelled mark. The danger in this erroneous postulation is that this will lead to an absurd since where applicants or registrants who fail to file their DAU can claim perpetual rights over the cancelled marks by merely alleging its continued use of the marks.

The Respondent-Applicant’s evidence consisted of the following:

Photographs of signages, billboards, magazines marketing/promotional materials and in-store merchandise evidencing use of the mark “COMFIT & DEVICE”; photographs of various local and international celebrity ambassadors using COMFIT’s products; print-outs of the website http://www.shopcomfit.com and domain name registration; print-outs of several social network sites and application which featured the brand “COMFIT & DEVICE”; copy of Certifications issued by the Bureau of Trademarks of IPOPHL stating the current status of Reg. No. 4-208-500450; print-out of Application No. 4-2013-500348 for the trademark “COMFIT”; and the Affidavit of Michell Cheng Yeung, herein Respondent-Applicant.

The Adjudication Officer ruled that the competing marks are confusingly similar because of the close resemblance between the marks, i.e., both marks contain the dominant word COMFIT. Moreover, the goods covered by the competing marks are similar or closely related. The goods covered by the competing marks are “in the category of shoes, bags, men’s/women’s accessories, clothing and apparel; in the fashion industry they are composite and admittedly integral part of each other”. Thus, said goods are “classified as fashion items and may be marketed similarly”.

As the marks are confusingly similar and the goods are similar or closely related, the Adjudication Officer ruled that there is the likelihood that the public would be led to believe that Respondent-Applicant’s mark is just a variation of Opposer’s mark or that their goods come from the same source.

With regard to who has prior right to use the mark, the Adjudication Officer ruled that Opposer filed its trademark application on 11 December 2008 (registered on 21 January 2010), well before the Respondent-Applicant filed her trademark application on 14 June 2012. The fact that Opposer failed to file its 3rd year DAU is of no moment because the Opposer continued to use its COMFIT mark. Hence, it did not abandon its right to the said mark. In fact, Opposer filed a trademark application for the COMFIT mark in 2013 bearing Application No. 4-2013-500348.

The Adjudication Officer further ruled:

Generally, abandonment means the complete, absolute or total relinquishment or surrender of one’s property or right, or the voluntary giving up or non-enjoyment of such property or right for a period of time which results in the or loss thereof. It requires the concurrence of the intention to abandon it and some overt acts from which it may be inferred not to claim it anymore. To work abandonment, the disuse must be permanent and not ephemeral; it must be intentional and voluntary, and not involuntary or even compulsory. There must be a thorough ongoing discontinuance of any trade-mark use of the mark in question. Applying the said concept to ownership or registration of trademarks, in order for a trademark registration to be considered as abandoned, the owner/registrant must relinquish or voluntarily surrender its rights over the trademark. There was no overt act from which it can be inferred that Opposer abandoned its right over the mark COMFIT. In fact, to ensure continuity of its registration and to prove that Opposer is the prior user of the trademark COMFIT in the concept of an owner, Opposer filed application for registration of the mark COMFIT in 2013 bearing Application No. 4-2013-500348. Hence, Opposer’s re-application or re-registration of the mark COMFIT plus the continued use by Opposer of its mark, Opposer has prior right than Respondent- Applicant. (Citations omitted)

However, the Adjudication Officer ruled that the proscription under section 123.1 (d) of the Intellectual Property Code of the Philippines only covers goods that are similar or closely related to the Opposer’s goods. Thus, Respondent-Applicant’s trademark application for “baguettes” in Class 30 is not covered by the proscription.

Questions and Comment:

  • Can the subsequent filing of a trademark application, on its own, be sufficient proof that the trademark owner did not abandon its right to the mark?
  • Can the failure to file the DAU without proof of continued use be considered as an abandonment of the trademark owner’s right to the mark?
  • What proof of use did the Opposer present to show that it continued to use its COMFIT trademark in the Philippines, especially during the period after it failed to file the 3rd year DAU but before it filed its trademark application in 2013?
  • At the time Respondent-Applicant filed her trademark application in 2012, there was no valid COMFIT trademark registration as Opposer failed to file the 3rd Year DAU. Assuming the Respondent-Applicant knew of the existence and status of Opposer’s COMFIT registration, can you blame her for appropriating the COMFIT mark?
  • This case shows that an opposition will be sustained only with respect to the goods that are identical or closely related to the opposer’s goods.
  • A simple trademark search revealed that the Respondent-Applicant did not file a trademark application for the COMFIT & DEVICE mark in Class 30.

I used it in the Philippines first

INTERNATIONAL FOODSTUFFS COMPANY (“Opposer”) first adopted the TIFFANY mark in UAE in 1982 for “biscuits confectionary and snack food”.Opposer is the owner of the following Philippine trademarks in Class 30:

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In International Foodstuffs Company v. Sunmaru Confectionery Manufacturing Corporation, 18 January 2017 (IPC No. 14-2011-00123), Opposer filed an opposition to the trademark application of the PRINCESS TIFFANY AND DEVICE mark by SUNMARU CONFECTIONERY MANUFACTURING CORPORATION (“Respondent-Applicant”) for “breads, cakes and pastry” in Class 30. The competing marks are provided below:

Screen Shot 2017-06-15 at 9.54.32 AM.png

In its Answer, Respondent-Applicant claimed that it is the true owner of the TIFFANY’S trademark for bread, cakes and pastries, as it adopted and actually used it in commerce as early as 1992. Therefore, it has the right to adopt the PRINCESS TIFFANY AND DEVICE mark since it was derived from its TIFFANY’S trademark.

Opposer filed a Motion to Admit Additional Evidence, which was opposed by Respondent- Applicant. An Order was subsequently issued denying the Motion to Admit for being contrary to Section 5, Office Order No. 79.

Respondent-Applicant then filed a Petition for Cancellation of Registration of Opposer’s TIFFANY trademark. It alleged that it was the prior adopter and user of the TIFFANY’s trademark. Moreover, Opposer’s registration of the TIFFANY trademark is likewise contrary to the provisions of Sections 2 and 2-A of the old trademark law (“R.A. 166”), the law under which the TIFFANY trademark was based. Said law requires that the trademark must have been used in commerce in the Philippines at least two months before its filing. Respondent-Applicant alleged that no evidence of actual use was submitted by the Opposer as it only filed its Declaration of Actual Use in 2009. In fact, Opposer’s TIFANNY mark with Application No. 4-2000-002086 was refused registration for non-filing of the required Declaration of Actual Use.

Upon motion, the two cases were consolidated.

The Adjudication Officer ruled that when the Opposer filed its trademark application under R.A. 166, it based its application on Sec. 27 of the said law. Sec 27 of R.A. 166 provides that a trademark application filed in the Philippines by a foreign registrant does not require evidence of use in commerce provided that the applicant filed its application within six (6) months from the date it was filed in the foreign country. Therefore, Opposer’s mark remains valid as it was based on a foreign application.

As to whether Respondent-Applicant’s PRINCESS TIFFANY AND DEVICE mark can be registered, the Adjudication Officer pointed out that Opposer’s TIFFANY trademark was already registered when the subject trademark application was filed. However, the other TIFFANY marks were not yet registered at the time of the filing of the application. The Adjudication Officer also took notice of the fact that the name of the daughter of Respondent-Applicant’s General Manager is Tiffany.

The Adjudication Officer ruled the marks are identical with respect to the word TIFFANY. However, the presentation of the competing marks is different even if they both contain the word TIFFANY. The competing marks are depicted in different styles and fonts, especially the letter “T” of Respondent-Applicant’s marks, as it is depicted with an upward artistic loop. Moreover, the Respondent-Applicant’s mark includes a device encasing the words PRINCESS TIFFANY in dainty and creative sparkles. Said mark thus “portrays a distinct, unique commercial impression”. Therefore, the competing marks are visually and aurally distinct.

Moreover, the Respondent-Applicant’s goods are various kinds of bread and pastries that are local delicacies. Thus, the Adjudication Officer ruled that, considering the difference in the goods to which the marks are applied, mistake and confusion as to the source of the goods is not likely. Customers intending to buy food would already have in mind, the brand or the kind of bread, pastry or cake that will satisfy their cravings before making purchases. Hence, said customers would not immediately form a connection that the goods are that of the Opposer’s simply because of the presence of the word TIFFANY on different kinds of bread.

The Adjudication Officer also pointed out that:

More importantly, the evidence shows that the Respondent-Applicant has been engaged in the sale of its products bearing its PRINCESS TIFFANY AND DEVICE mark since 1992, long before the Opposer/Respondent-Registrant began its business in the Philippines. The records show voluminous duplicate/original copies of sales invoices and delivery receipts, earliest of which was dated 27 December 199216 and 21 May 199317, stickers18 meticulously compiled; and testimonies to attest to the day- to-day facet of the operations of the Respondent-Applicant in its business of selling bread. Therefore, its long, consistent prior commercial use has earned for the Respondent- Applicant valuable goodwill for its mark PRINCESS TIFFANY AND DEVICE in relation to the goods in the Philippines since 1992.

Trademark goodwill is a property right protected by law. Section 236 of the Intellectual Property Code of the Philippines (“IP Code”) provides:

Section 236. Preservation of Existing Rights. – Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act. (n)

Therefore, the passage of the IP Code did not diminish Respondent-Applicant’s trademark rights.

Questions and Decisions:

  • Should Opposer’s TIFFANY mark be canceled? Why did the Adjudication Officer not rule on this issue?
  • Are the competing goods identical, similar or closely related?
  • Do you agree with the Adjudication Officer’s rationale that customers intending to buy food would already have in mind the brand or the kind of food that will satisfy their cravings before making the purchase; thus, this would not result in a likelihood of confusion even if an identical or similar mark is used?
  • Is the fact that Opposer’s other TIFFANY marks were not yet registered at the time of the filing of the application relevant?
  • Did the name of the daughter of the Respondent-Applicant’s General Manager affect the outcome of the case?
  • What is the dominant feature of Respondent-Applicant’s PRINCESS TIFFANY mark?
  • Did the Respondent-Applicant, as stated in the decision, use the PRINCESS TIFFANY AND DEVICE mark since 1992?
  • All the evidence must be attached to the Opposition
  • The IP Code no longer requires actual use prior to the filing of the trademark application

 

Taking judicial notice of registered marks

On September 2009, Opposer introduced a new collection of body sprays, i.e., Sexy Deo Body Spray. One of the scents in its collection is OH LALA! Said mark was registered on 19 May 2011.

In Suyen Corporation v. Emmanuel Jose Maria Dela Cruz Quiblan, 19 January 2017 (IPC No. 14-2014-00375), Suyen (“Opposer”) filed an opposition to the registration of the EULALA mark filed by Emmanuel Jose Maria Dela Cruz Quiblan (“Respondent-Applicant”) for “”fragrances, perfumes, body mists, eau de toilette, colognes, lotions, hand and body wash, hand sanitizers” in Class 3.

The competing marks are provided below:

Screen Shot 2017-06-09 at 5.06.34 PM

A Notice to Answer was served on Respondent-Applicant. However, Respondent-Applicant did not file an Answer. Thus, he was declared in default.

The Adjudication Officer ruled that the marks are not confusingly similar as the only similarity between the competing marks is the term LALA. However, the presentation of the term LALA in both marks will not lead one to believe that the said term is the prevalent feature of the competing marks. Hence, both marks should be appreciated in their entirety. Consequently, confusion between the two marks is likely only if their overall presentation as to sound, appearance, or meaning, would lead consumers to believe that the goods covered by the competing marks emanate from the same source or are connected or associated with each other.

The Adjudication Officer pointed out that Opposer’s trademark consists of two separate words (i.e., OOH and LALA!), while Respondent-Applicant’s mark is composed of only one word (i.e., EULALA). Furthermore, the Adjudication Officer took judicial notice of two trademarks registered in Class 3 that use the term LALA (i.e., LU LA LA and OOH LA-LASH). Said marks were registered long before Opposer filed its trademark application for the subject mark.

Questions and Comment:

  • Are the competing marks aurally similar?
  • Does it matter if Opposer’s trademark is composed of two words, while Respondent-Applicant’s mark is composed of only one word?
  • Do the cited marks in Class 3 (i.e., LU LA LA and OOH LA-LASH) cover identical or similar goods?
  • Failing to file an Answer will not result in an automatic win for the Opposer.

 

Shark Battle

In Great White Shark Enterprises, Inc. v. Caralde, 21 November 2012 (G.R. No. 192294), Great White Shark Enterprises, Inc. (“Petitioner”) assailed the decision of the Court of Appeals (“CA”), which reversed and set aside the decision of the Director General of the Intellectual Property Office of the Philippines.

On 31 July 2002, Danilo M. Caralde, Jr. (“Respondent”) filed a trademark application for the registration of the SHARK & LOGO mark in Class 25 for slippers, shoes, and sandals. Petitioner filed an opposition to the said registration stating that the subject mark is confusingly similar to its world famous Greg Norman logo, which was pending registration in Class 25 for clothing, headgear, and footwear. Said mark was subsequently registered during the pendency of this case.

The Bureau of Legal Affairs (“BLA”) ruled in favor of the Petition and rejected Respondent’s trademark application. However, the BLA held that Petitioner’s trademark is not a well-known mark. The Director General affirmed the decision of the BLA. However, the CA reversed and set aside the decision of the Director General.

The Supreme Court (“Court”) denied the Petition.

A mark can be registered if it is capable of distinguishing the goods of one person from that of another. In other words, the mark sought to be registered must be distinctive. Thus, a generic figure such as a shark can be registered if it is designed in a distinctive manner.

Section 123.1 (d) of the Intellectual Property Code of the Philippines provides that a mark cannot be registered if it is identical to a mark belonging to a different proprietor with an earlier filing or priority date, with respect to the same or closely related goods or services, or has a near resemblance to such mark as to likely deceive or cause confusion.

The Court held there is no confusing similarity between the competing marks, regardless of the test used (Dominancy or Holistic test). The fact that both marks use the shape of a shark is not enough as the competing marks are visually and aurally distinct:

In Great White Shark’s “GREG NORMAN LOGO,” there is an outline of a shark formed with the use of green, yellow, blue and red lines/strokes, to wit:

Shark 1

In contrast, the shark in Caralde’s “SHARK & LOGO” mark is illustrated in letters outlined in the form of a shark with the letter “S” forming the head, the letter “H” forming the fins, the letters “A” and “R” forming the body, and the letter “K” forming the tail. In addition, the latter mark includes several more elements such as the word “SHARK” in a different font underneath the shark outline, layers of waves, and a tree on the right side, and liberally used the color blue with some parts in red, yellow, green and white. shape with two linings, thus: The whole design is enclosed in an elliptical shape with two linings, thus:

shark 2

Therefore, the evident and significant visual dissimilarities between the competing marks negate the possibility of confusion in the minds of the ordinary purchaser.

Question:

How are the marks aurally different?

 

Year printed on the cover of the catalog is not enough

 

In KPI Manufacturing, Inc. v. Go, 18 January 2017 (IPC No. 13-2015-00542), KPI Manufacturing, Inc., doing business under the name Keylargo Car Accessories Center (“Petitioner”), filed a Petition for Cancellation of Industrial Design Registration No. 3-2014-000447 issued in favor of Alwin T. Go (“Respondent-Registrant”).

Petitioner claimed that Respondent-Registrant is not the true and original designer of the subject design as said design lacked novelty. Petitioner claimed that it had been importing car mats with similar designs prior to the filing of Respondent-Registrant’s design application. Petitioner’s witness narrated that on 26 October 2013, the Petitioner purchased car mats with similar designs from its Chinese supplier and sold the same on 19 February 2014. Moreover, the car mats embodying the registered design was published in the 2013 CARMATS HONGSHENGYUAN product catalog.

On the other hand, Respondent-Registrant claimed that it specifically designed the subject car mat using SolidWorks on 2 February 2013. Thereafter, he engaged the services of a Malaysian manufacturer to produce the mold. Said transaction is evidenced by a purchase order dated 15 May 2013. Respondent-Registrant then filed its application for the registration of the subject design on 13 May 2014.

Section 23 of the Intellectual Property Code of the Philippines (“IP Code”) provides that an invention shall not be considered new if it forms part of the prior art. Section 24 of the IP Code, on the other hand, provides what prior art shall consist of:

Section 24. Prior Art. – Prior art shall consist of:

24.1. Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and

24.2. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application: Provided further, That the applicant or the inventor identified in both applications are not one and the same.

At the outset, it must be pointed out that the Respondent-Registrant objected to the submission of Petitioner’s evidence since they are mere photocopies. However, assuming arguendo that the 2013 product catalog is considered as evidence, the Adjudication Officer ruled that the said catalog does not anticipate the subject design since there is no evidence of its publication or circulation date apart from the year 2013 written on the cover page. Therefore, it cannot be verified whether it was printed prior to 13 May 2014, the filing date of the subject design. In order to support this conclusion, the Adjudication Officer cited the case of Manzano v. CA, wherein the Supreme Court held:

Thus the Director of Patents explained his reasons for the denial of the petition to cancel private respondent’s patent —

Even assuming gratia arguendi that the aforesaid brochures do depict clearly on all fours each and every element of the patented gas burner device so that the prior art and the said patented device become identical, although in truth they are not, they cannot serve as anticipatory bars for the reason that they are undated. The dates when they were distributed to the public were not indicated and, therefore, they are useless prior art references.

xxx Another factor working against the Petitioner’s claims is that an examination of Exh. “L” would disclose that there is no indication of the time or date it was manufactured. This Office, thus has no way of determining whether Exh. “L” was really manufactured before the filing of the aforesaid application which matured into Letters Patent No. UM- 4609, subject matter of the cancellation proceeding.

In addition, Respondent-Registrant requested for a Registrability Report. Said report did not point to any document that destroyed the subject design’s newness and originality. The Adjudication Officer pointed out that Patent Office is the expert body preeminently qualified to determine questions of patentability. Thus, its findings must be accepted if they are consistent with the evidence.

Questions:

Is this case on all fours with the cited Manzano v. CA case?

Do you agree that the year 2013 printed on the cover of the product catalog is not enough to show that said catalog was published in 2013?

Do product catalogs normally print their date of publication/circulation?

 

It sounds the same

Facton Limited (“Opposer”) is the owner of the G-STAR trademark in Class 25 for clothing. In Facton Limited v. Zhenjiang Wang, 12 January 2017 (IPC No. 14-2015-00003) the Opposer filed an Opposition to the registration of the E-STAR mark by Zhenjiang Wang (“Respondent-Applicant”) in Class 25 for clothing. The competing marks are provided below:

Screen Shot 2017-06-02 at 4.43.03 PM

The Adjudication Officer held that confusion is likely because of the close resemblance between the marks as the Respondent-Applicant adopted the dominant feature of Opposer’s G-STAR trademark. Thus, it is of no moment that the word STAR is preceded by a different letter, or that Respondent-Applicant’s mark is written in lower case letters while Opposer’s mark is written in upper case letters.

The Adjudication Officer also pointed out that competing marks sound similar. As held by the Supreme Court, similarity of sound is sufficient ground to rule that the competing marks are confusingly similar. Moreover, the Adjudication Officer ruled that:

Trademarks are designed not only for the consumption of the eyes, but also to appeal to the other senses, particularly, the faculty of hearing. Thus, when one talks about the Opposer’s trademark or conveys information thereon, what reverberates is the sound made in pronouncing it. When Respondent-Applicant’s mark is pronounced, the sound of Opposer’s G-STAR mark is practically replicated. Similarity of sound is sufficient ground to rule that two marks are confusingly similar when applied to merchandise of same descriptive properties.

Question: What is the dominant feature of Opposer’s G-STAR trademark?