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

 

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?