Opposition Dismissed For Not Filing Original Documents

May 18, 2015

An opposition will be dismissed if an Opposer fails to submit original documents supporting its case at the time the opposition is filed. This was the ruling of the Court of Appeals in a recent decision which it issued affirming the dismissal of the opposition by the Director General and the Bureau of Legal Affairs. This decision was issued on a consolidated Rule 43 petition for review filed by both parties in a bid to protect their respective trademark rights after battling it out at the Intellectual Property Office for over a decade. At the center of the dispute is the trademark “KOLIN”.

The case of Kolin Electronics Co., Inc. vs. Taiwan Kolin Corp, Ltd. (CA-G.R. SP No. 122566), involved two unrelated companies, each one using the disputed mark “KOLIN” as part of its corporate name, and each one being involved in the same industry, which is the manufacture, assembly and sale of electronics products.

For practitioners, the case is noteworthy as it applies strictly Sections 7.1 and 7.3 of Office Order No. 79 (Series 2005), which revised the 1998 Rules and Regulations on Inter Partes Proceedings. Under the rules, parties must submit only original documents in opposition and cancellation proceedings. Certified copies of public documents may be admitted in lieu of originals.

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Stare Decisis: Where Is It?

May 11, 2015

Stability and certainty in judicial decisions – that’s where the rule of law best thrives. The familiar doctrine of stare decisis commands that once a question of law has been examined and decided, it should be deemed settled and closed to further argument. This simply means that a ruling on a certain state of facts established in a final decision of the Philippine Supreme Court has to be followed in subsequent cases by all courts in the land where the facts are substantially the same, regardless of whether the parties and property are the same.

This doctrine, however, disappears in the realm of confusing similarity in trademark disputes.  In 2004, the Supreme Court ruled in the McDonald’s case that confusing similarity is to be resolved only by using the dominancy test because it is explicitly incorporated in Section 155.1 of the Philippine Intellectual Property Code (defining infringement as the “colorable imitation of a registered mark xxx or a dominant feature thereof”). For this reason, the Supreme Court expressly rejected the holistic test, even declaring it as contrary to the elementary postulate of trademark law. Thus, under the dominancy test, confusing similarity is found if one dominant feature is copied, notwithstanding the presence of differentiating words or design. In addition, if the element copied is the first word of the mark, this is deemed sufficient copying of the dominant element.

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Bridgestone’s Trademark Rights are Set in “STONE”

April 20, 2015

Bridgestone Corporation emerges victorious once again in another suit against an applicant seeking the registration of a trademark that uses the suffix “STONE” in connection with goods in Class 12.

A Chinese company attempted to register “R-STONE” in the Philippines for use in Class 12.  In its opposition, Bridgestone alleged that it was the first to use and register “BRIDGESTONE” in connection with the design, manufacture and technology of tires.  It claimed that the ownership and association of the word “STONE” as a distinctive word element of its house mark “BRIDGESTONE” was bolstered by its acquisition in 1998 of Firestone Tire & Rubber Corporation, along with the “FIRESTONE” trademark.  In fact, the “BRIDGESTONE” mark has already been declared a well-known mark in view of approximately 500 trademark applications and registrations, as well as approximately 243 domain name registrations, in numerous countries around the world.  Bridgestone further pointed out that Applicant’s mark contains the word “STONE”, which has been declared as the dominant element of the “BRIDGESTONE” mark, and the letter “R” is found in both marks.

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Abbott Lab Suffers Setback in Bid for Exclusivity of EYE-Q Trademark

April 13, 2015

Abbott Laboratories, the company responsible for bringing the nutrition drink ENSURE, which is popular among seniors and the elderly, has suffered a set back in the Philippines in relation to its infant formula bearing the trademark EYE-Q.  A local businessman applied for the trademark EYE Q in connection with school and office supplies in Class 16.  Abbott opposed the application claiming that it is the first to use and register the trademark EYE-Q in the Philippines in connection with infant formula.  Abbott alleged that since the application covers an identical trademark, registration is barred by Sections 123.1(d) to (g) of the IP Code.  Abbott further argued that the goods covered by the application are within its natural zone of potential business expansion.

The BLA rejected the opposition convinced that no consumer can possibly be deceived by the Applicant’s trademark and mistakenly purchase the Applicant’s goods while intending to purchase the Abbott’s goods.  On appeal, the Director General upheld the dismissal noting that the parties’ trademarks cover different and unrelated goods thereby negating likelihood of confusion.  The Director General rejected Abbott’s argument that the Applicant’s goods, i.e. school and office supplies, are within its natural zone of business expansion.  It noted that Abbott failed to explain why dealing with office supplies can be considered a normal expansion of its infant formula business.

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FEDERIS Named One of Philippines’ Top Trademark Firms by WTR 1000

January 31, 2015

FEDERIS and its managing partner, Mila Federis, have been recognized by World Trademark Review (WTR) for inclusion in the 2015 edition of the WTR 1000. In its debut, FEDERIS, as a firm, was praised for its “strong growth and A-list clients”. The publication also recognized the firm’s successes in filing opposition cases on behalf of Yahoo! and Universal City Studios. On the litigation side, the group was acknowledged for successfully representing Philips in a dispute involving trademark infringement and unfair competition claims.

Managing Partner, Mila Federis, who is no stranger to the WTR 1000 rankings, has been praised as a “standout” trademark practitioner and recognized for her “IP nous and international experience”. In the 2015 edition, she was also proclaimed as being the “go-to enforcement lawyer” in the Philippines and applauded for her skill and dedication to IP practice.

According to the publication, the “patronage of such brand-conscious rights holders is a clear indication of the quality of services on offer at Federis & Associates”.

For information on the methodology behind WTR 1000, visit the World Trademark Review’s website.


Film Makes The Music

January 29, 2015

A local recording and music publishing company in the Philippines attempted to register “UNIVERSAL RECORDS and U Design” for cassette tapes, compact discs, laser discs, digital audiotapes in Class 9. Universal City Studios Inc. (“UCSI”) opposed the application claiming prior rights based on its earlier registration for UNIVERSAL for entertainment services in Class 41, films in Class 9, printed matters in Class 16, clothing in Class 25 and based on the international fame of its UNIVERSAL trademark. UCSI is part of the Universal group, the giant worldwide entertainment company whose businesses extend to movie, television, music, theme parks and a host of other entertainment products.

The applicant countered that its use of UNIVERSAL RECORDS on music albums will not create any confusion or deception among relevant consumers, arguing that its music albums are not related to UCSI’s motion pictures and films. UCSI pointed out, however, that music-making has been part of its long business history where its trademark UNIVERSAL has been consistently used until today and in tandem with its film production. UCSI maintained that music and film are closely related even while it presented proof to support its claim that its UNIVERSAL trademark is internationally famous and therefore enjoys expanded protection even for unrelated goods and services. UCSI also presented evidence showing that applicant was using UNIVERSAL RECORDS and U Design in bad faith.

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Mizuno Loses Bid to Protect Its “Runbird” Logo in the Philippines

January 26, 2015

The “Runbird” logo is a recognizable symbol, which identifies Japanese-based Mizuno Corporation and its sportswear products. This free-flowing, graphic symbol has been compared to other famous logos of leading sportswear companies, such as the three stripes of Adidas and the unmistakable swoosh of industry giant Nike. It is therefore not surprising that Mizuno aggressively protects its “Runbird” logo worldwide.

In the Philippines, Mizuno opposed the application for “ERKE & DEVICE” owned by Fujian Hongxing Erke Sports Goods Co., Ltd. Mizuno contends that the device portion of Fujian’s mark is confusingly similar to its “Runbird” logo. The Bureau of Legal Affairs (BLA) dismissed the opposition and ruled that the device in Fujian’s mark is not identical to the “Runbird” logo in Mizuno’s mark. The BLA pointed out that there are observable differences in the angles, slants and curves, specifically noting the presence of a triangular-shaped hole in the lower middle portion of Mizuno’s device, which is absent in Fujian’s mark. The BLA further explained that Fujian’s mark is a composite mark consisting of a device and the word “ERKE”. Neither the device nor the word “ERKE” is the dominant feature of Fujian’s mark. Instead, the device and “ERKE” complement each other to form a mark with a character that is distinct from Mizuno’s mark. The BLA also noted that even assuming arguendo that there are similarities between the device portions of the parties’ marks, the addition of the word “ERKE” in Fujian’s mark made consumer confusion unlikely.

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Proposed Drug Name “OMEZOLE” Rejected as Identical to Generic Term “OMEPRAZOLE”

By:  Mila Federis

November 10, 2014

A recent decision of the Philippine Bureau of Legal Affairs (“BLA”) tackled the issue of distinctiveness in designations for pharmaceutical products.  In Westmont Pharmaceutical, Inc. vs. Platinum Pharmaceuticals (PVT), Ltd. (IPC No. 14-2011-00153), 22 September 2014, the applicant attempted to register “OMEZOLE” as a trademark for  “pharmaceutical preparations for the treatment of duodenal ulcer, gastric ulcer, gastro-esophageal reflex disease (gerd) and management of zollinger Ellison syndrome”.  The application was opposed on grounds that OMEZOLE is confusingly similar to opponent’s registered trademark OMEPRON, which is also used in connection with “pharmaceutical preparations for the treatment of ulcer and gastritis”.  Opponent further alleged that OMEZOLE resembles the generic name OMEPRAZOLE, a pharmaceutical drug used as proton pump inhibitor, and as such, registration is not permitted under Sections 123.1 (j) and 123.a(I) for being generic or descriptive.

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Philippines to Accede to the Nice and Vienna Agreements, STLT and the Hague Agreement in 2015

October 23, 2014

At the National Seminar on Industrial Designs and Trademarks hosted by the Intellectual Property Office of the Philippines (IPOPHIL) last October 17, 2014, it was announced that in 2015 the Philippines plans to accede to the Nice and Vienna Agreements, to the Singapore Trademark Law Treaty, as well as to the Hague Agreement.

The IPOPHIL also disclosed that it is currently working on a proposal to amend some provisions of the Intellectual Property Code.

On the trademark side, the definition of a “trademark” will be amended to include any indication that can be graphically represented. The new definition is intended to accommodate the registration of non-traditional trademarks.  It was not clear which specific non-traditional marks will be covered.

Another amendment will be the elimination of the third year Declaration of Actual Use and the requirement of home registration as a condition for the registration of applications claiming convention priority.

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Philippines Announces Initiatives in support of ASEAN Integration

October 23, 2014

The Intellectual Property Office of the Philippines (IPOPHIL) announced several initiatives that show its resounding support for the move to establish an ASEAN community.  These initiatives were discussed in a public forum held on October 17 participated by IP professionals and IP rights holders.

IPOPHIL disclosed its plan to launch sometime in 2015 an online and paper version of an ASEAN common trademark application form. IPOPHIL is also working with intellectual property offices in other ASEAN countries to begin the adoption of common substantive examination guidelines by January 2015.  Furthermore, the trademark records of intellectual property offices in some ASEAN member states have been compiled and are now accessible through a centralized web portal called ASEAN TMview.  They are also currently testing other web portals that could serve as a central record of goods and services classification in ASEAN countries (ASEAN TMClass) and as a search tool for industrial design registrations (Designview) in the ASEAN countries. These web portals will be available in a multilingual format.

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