September 30, 2014

Basketball in the Philippines is a sport that generates intense passion. While local players do not yet stand on the same footing as world-class NBA players, they are still feted as heroes here. Any team that gets to the top of the heap acquires legendary status, and its name would seemingly echo in eternity. One such team is Ginebra San Miguel, which is owned by the popular maker of gin that is sold under the trademark GINEBRA SAN MIGUEL. And its loyal following, when egging on the players to demolish the other team, has only one monotonous chant to drown out all other noises in the coliseum, and that is “HEE-NE-BRA, HEE-NE-BRA HEE-NE-BRA”.

Claiming to have used GINEBRA SAN MIGUEL substantially and exclusively for its gin products since 1834, the owner which now goes by its corporate name “Ginebra San Miguel, Inc.” opposed the application for GINEBRA KAPITAN filed by Tanduay Distillers, Inc. Opposer claimed that GINEBRA has attained secondary meaning to designate exclusively its gin products, and to allow the registration of GINEBRA KAPITAN will sanction unfair competition where Applicant gets a free ride on the immense goodwill Opposer already enjoys under the GINEBRA SAN MIGUEL brand. The Applicant countered that “ginebra” is generic being the Spanish term for gin, and is therefore incapable of attaining secondary meaning. It pointed to the disclaimer entered by Opposer in its own application for GINEBRA SAN MIGUEL to support its generic claim.

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September 30, 2014

The Philippines’ Bureau of Legal Affairs sustained the opposition of Starbucks Coffee Co. against a trademark application for “THE FRAP BAR Everyone Deserves Frap and Design” filed by Café De Manila Corporation in connection with coffee.

In its opposition, Starbucks asserted that Café de Manila should not be allowed to register the term “FRAP” because it is the prefix and the dominant element of its registered mark “FRAPPUCCINO”. Starbucks argued that relevant consumers habitually mention the word “FRAP” when ordering “FRAPPUCCINO” beverages, such that registration of Café de Manila’s mark will likely cause confusion and deception as to the source of Café de Manila’s products.  Moreover, Starbucks alleged that Café de Manila’s use of the word “FRAP” is intended to unfairly profit from the goodwill, fame and notoriety of Starbucks’ FRAPPUCCINO beverages.  The Bureau of Legal Affairs agreed.

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September 13, 2014

Benson and Hedges (Overseas) Limited opposed an application filed by Philip Morris Brands Sarl for a three-dimensional shape of an ICE BALL LENS claiming confusing similarity with earlier trademark registrations for LUCKY STRIKE featuring a BULLS EYE device. Benson asserted expanded protection for its BULLS EYE device under the well-known mark provision of the IP Code. The Bureau of Legal Affairs (BLA) denied the opposition and ruled that the public will not likely be confused by the co-existence of Benson’s LUCKY STRIKE trademarks with Philip Morris’ ICE BALL LENS DEVICE because the aural and visual properties of these competing trademarks are different. Citing the case of Victorias Milling Company, Inc. v. Ong Su and the Honorable Tiburcio S. Evalle, G.R. No. L-28499, 30 Sept 1977, the BLA observed that Benson has not shown that the BULLS EYE device in the LUCKY STRIKE trademark, standing alone, has been used to an extent that purchasers recognized Benson to be the source of the goods.

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September 11, 2014

The Intellectual Property Office of the Philippines (IPOPHIL) has announced its much-delayed implementation of a pre-grant Community Review Process (CRP) for patent applications.  In a gathering of industry representatives held at the IPOPHIL on September 10, 2014, the Director of the Bureau of Patents announced that the Bureau of Patents will adopt the CRP effective September 1.  He explained that this move is aimed at diffusing knowledge and information to relevant stakeholders, and to promote transparency in the granting of invention patent, utility model and industrial design registrations.  The CRP was initially mandated under the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs, which called for a community review process for invention patent, utility model and industrial applications pursuant to Rule 802 and Rule 1700.

The CRP concept is inspired by the public participation process during patent examination in other jurisdictions.  In the European patent system, the European Patent Convention provides that any person may present observations concerning the patentability of an invention described in a European patent application.  Likewise, a third party observation system relating to novelty and inventive step was also introduced for PCT applications, which can be made at any time from the publication of the PCT application until the expiration of twenty (28) months from the priority date.  And in Japan, third-party observations are accepted by the Japanese Patent Office at any time after a patent application or an application for utility model registration is filed, even after a decision is made to grant a patent or utility model registration.

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