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:

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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

 

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