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.
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