September 5, 2016
Sysmex Corporation (“Sysmex”) is headquartered in Japan and deals with the development, manufacture, sale, and distribution of diagnostic instruments, reagents and related software. It claims to be the largest supplier of hematology instrumentation and has established its branch office in the Philippines since 2000. Hyphens Pharma Pte. Ltd. (“Hyphens Pharma”) is a Singapore-based pharmaceutical company, which asserts to be the leader in specialty pharmaceuticals throughout the South East Asia region.
The dispute between Hyphens Pharma and Sysmex stemmed from Sysmex’s filing of a trademark application for the mark “HYPHEN BIOMED”, which covers goods under Class 5, namely: in vitro diagnostic and diagnostic preparations, among others. Hyphens Pharma opposed the application arguing that “HYPHEN BIOMED” is confusingly similar to its trademark and tradename “HYPHENS,” also covering goods under Class 5. On the contrary, Sysmex pointed to the presence of “BIOMED” and other device elements in the parties’ respective marks, which it claimed to sufficiently distinguish them from each other.
August 30, 2016
The inquiry of likelihood of confusion generally revolves around the point of view of the ordinary purchaser. In fact, jurisprudence in the Philippines is replete with trademark cases reiterating that competing marks are not meant to be scrutinized in a vacuum, but always in the context of an ordinarily intelligent buyer embedded in the realities of the marketplace. The case of Daicel Corporation vs. CFF GMBH & CO. KG (IPC No. 14-2013-0047) is an example of this standard of analysis.
Daicel Corporation is a Japanese company engaged in the manufacture, sale, and distribution of a wide spectrum of organic and inorganic products. Its predecessor Dainippon Celluloid, Ltd. came about after 8 celluloid manufacturing companies merged together during the First World War. The merger was in response to the unfortunate decrease in the demand of celluloid due to the recession. ‘DAICEL’ was coined and adopted as a trademark in 1956. And in 1966, ‘DAICEL’ was incorporated as the trade name. Presently, Daicel Corporation undertakes several key businesses including Cellulosic derivatives, organic chemicals, plastics, household products, among others.
August 22, 2016
On July 11, 2016, the Director General of the Intellectual Property Office of the Philippines (IPOPHIL) signed IPOPHIL Memorandum Circular No. 16-007 which amended the existing Rules and Regulations on Inter Partes Proceedings as revised by Office Order No. 99, series of 2011. The amendments made to the existing rules and regulations were due to IPOPHIL’s aim to “achieve a more efficient and expeditious resolution” of inter partes cases including oppositions to applications for trademark registrations, petitions to cancel trademark registrations, petitions to cancel invention patents, utility model registrations, industrial design registrations , or any claim or parts of a claim and appeals before the Bureau of Legal Affairs and the Office of the Director General, respectively. The highlight of the recent amendment is that Hearing Officers/Adjudication Officers are now authorized to issue and sign Decisions and Final Orders, which authority used to be only limited to the Director of the Bureau of Legal Affairs or to the Committee of Three, in cases of petitions to cancel patents.
August 15, 2016
The series of decisions rendered by the Bureau of Legal Affairs (“BLA”) leave no doubt that the BRIDGESTONE trademark has solidified its status as a well-known mark in the Philippines and Bridgestone Corporation has secured exclusive rights to use the ‘STONE’ element of its BRIDGESTONE mark when the goods involved belong in Class 12.
Various trademark applications covering tire products filed by different proprietors have put Bridgestone Corporation on guard. First, there was an opposition case against Hangzhou Unibear Industrial Co., Ltd. (“Hangzhou”), wherein Bridgestone successfully convinced the Bureau that Hangzhou’s mark is confusingly similar to its registered B device. Bridgestone based its claim on Article 6bis of the Paris Convention and argued that the copying of even a portion of its well-known mark is enough to bar the registration of the subject mark. Apart from confusing similarity between the marks, the Bureau upheld the existence of likelihood of confusion on the basis of relatedness of the covered goods, which flow through the same channels of trade, i.e. automotive shops.
August 8, 2016
The use of common words as a trademark is a double-edged sword. From a marketing standpoint, it is beneficial to use them because they are easy to recall. From a legal standpoint, however, it is risky to use them because they are considered weak in the spectrum of trademark distinctiveness. The recent case of Unilever N.V. vs. Amorepacific Corporation (IPC No. 14-2011-00450) perfectly illustrates the risks that come along with using common words as a trademark.
The case stems from the trademark application filed by Amorepacific Corporation (“Amorepacific”) for the mark ‘TEEN: CLEAR AND DEVICE’ for use on goods under Class 3 including skin lotions, cosmetics, cosmetic preparation for skin care, among others. Unilever N.V. (“Unilever”) instituted an opposition against the application primarily arguing that the subject mark is confusingly similar to its mark ‘CLEAR’ registered under the same class. Unilever further claimed that it has the right, as the registered owner of the CLEAR mark, to prevent third parties from registering identical or confusingly similar marks. It also argued that its mark is entitled to a wider scope protection because ‘CLEAR’ was registered and being used in different countries and hence should be considered a well-known mark.
July 31, 2016
The Bureau of Legal Affairs recently cancelled a trademark registration, which it deemed to have been obtained maliciously and in bad faith.
The case stemmed from a Petition for Cancellation filed by Japanese Company Toyoda Gosei (“Petitioner”). In the Petition, Petitioner alleged that the registered mark “TG & Design” owned by local Philippine company JRD Dynamics Co. (“Respondent”) is identical and confusingly similar to its trade name and its trademarks “TOYODA GOSEI” and “TG”. The Bureau agreed with Petitioner and found that even though there are differences in the design of the marks, the fact that the registered mark includes the word “TOYODA GOSEI” clearly proves that Respondent copied Petitioner’s trademark deliberately, with malice and in bad faith. This fact is even more apparent especially because there was no explanation from Respondent as to how it came up with the words “TOYODA GOSEI” in its mark.
July 26, 2016
Hayabusa is a falcon bird that is indigenous to Japan. While it is not the biggest bird, it is considered the strongest, with an ability to reach speeds of over 300 kilometers per hour. It is from this characteristic that famed Japanese motorcycle manufacturer Suzuki was inspired to engineer a new motorcycle design, which came to be known as HAYABUSA. In 1999, Suzuki’s “HAYABUSA” motorcycle was recognized as one of the best super bikes around.
As a result of the fame of Suzuki’s mark, a local company (“Respondent”) obtained registration for the design mark using the word “HAYABUSA” for use on “car and motorcycle parts and accessories, namely, rear seats, axle extension, chain, handle grip, chainsets, sprocket” under Class 12 back in September 2013. Immediately thereafter, Suzuki filed its trademark application for “HAYABUSA” also in Class 12, which was blocked by the previous registration for the HAYABUSA design mark. Suzuki then filed a Petition for Cancellation against the registered HAYABUSA design mark. The Petition alleged that the registration is identical, similar or closely related to Suzuki’s goods such that it will cause confusion, mistake and deception upon the consuming public as to the true origin of the parties’ respective goods and businesses. It also alleged that Suzuki is the true owner of the “HAYABUSA” mark, which it claimed to be a well-known trademark, and that the registration of the HAYABUSA design mark was made in bad faith. Suzuki submitted evidence of use of the HAYABUSA mark, advertising, promotional materials, and registrations obtained in other countries around the world. In its Answer, the Respondent alleged that there is no likelihood of confusion between the parties’ marks and that the HAYABUSA mark does not qualify as an internationally well-known mark, especially within the so-called relevant sector of the public.
July 22, 2016
In a decision promulgated on July 20, 2016, the Supreme Court of the Philippines affirmed the validity of the country’s accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”). The accession to the Madrid Protocol was assailed by the Intellectual Property Association of the Philippines (“IPAP”) via a Petition for Certiorari filed in December 2012. IPAP argued that the said accession was unconstitutional for failing to meet the concurrence of at least two-thirds (2/3) of all the members of the Senate. IPAP further alleged that the implementation of the Madrid Protocol conflicts with the Intellectual Property Code (“IP Code”) as the former allows the processing of international trademark applications without the designation of resident agents, contrary to the clear provisions of the IP Code.
The Supreme Court disagreed with IPAP and ruled that the Madrid Protocol is in the nature of an “executive agreement,” not a “treaty,” and therefore it does not require Senate concurrence. The ruling upheld the “exercise of discretion” of the Secretary of Foreign Affairs to determine whether an agreement should be considered an executive agreement or a treaty, as provided under Section 9 of Executive Order No. 459, series of 1997.
As to the perceived conflict between the Madrid Protocol and the IP Code, the Court stated that the “difficulty, which the IPAP illustrates, is minimal, if not altogether inexistent.” The Supreme Court clarified that the Madrid Protocol does not do away with the examination of foreign applications on the basis of the relevant national law.
The Madrid Protocol was ratified by former President Aquino on March 27, 2012. It entered into force in the Philippines on July 25, 2012.
June 14, 2016
The World Intellectual Property Organization (WIPO), in cooperation with the Intellectual Property Office of the Philippines (IPOPHIL), held a workshop on June 13, 2016 entitled “Understanding the Use of Industrial Designs in Southeast Asia”. The Workshop was designed to inform participants about a study being undertaken by WIPO with respect to industrial designs. The study will examine the use of industrial designs in three Southeast Asian countries, namely Philippines, Thailand and Indonesia. Specifically, the study seeks to discover the answers to the following questions: (1) who uses industrial designs in the economy; (2) what motivates firms to apply for industrial designs; (3) what is the value of industrial designs; and (4) what are the challenges that firms face when applying for and enforcing industrial design rights. To accomplish the study, WIPO will rely on empirical data based on the unit-record industrial design filing data. It will analyze the data and survey industrial design applicants. The partners in this study will be Prof. Ramon Clarete from the UP School of Economics and IPOPHIL, which will be sending out the survey to industrial design filers in the Philippines.
In addition to informing participants about the study on industrial designs, the workshop also provided information about the Hague System, which enables the centralized acquisition and maintenance of industrial design rights through the filing of the a single international application for a single international registration with effect in one or more designated Contracting Parties. WIPO emphasized the benefits of the Hague System, such as simplicity, cost-effectiveness, efficiency and flexibility. Currently, there are 65 contracting parties to the Hague System. The Philippines has already committed to accede to the Hague Agreement in the near future.
June 13, 2016
Generally, proving secondary meaning of a trademark in order to overcome a descriptiveness refusal is notoriously difficult. A trademark owner usually has to present a voluminous amount of evidence of continuous use, and sometimes may need to present costly and time-consuming market and consumer surveys. However, in a decision issued by the Bureau of Legal Affairs, Nestle was able to successfully prove secondary meaning with a minimal amount of evidence.
The case stems from an application for the mark “SUPER CHOW” filed by a local Philippine company for use on “dog food” under Class 31. Nestle opposed the application arguing that “SUPER CHOW” is confusingly similar to its registered mark “CHOW” also used in connection with animal food products. In its Answer, the applicant alleges, among other things, that what it seeks to register is the phrase “SUPER” and “CHOW” together, not individually as it had disclaimed both words in the application. It further asserts that it does not seek to appropriate the word “CHOW” alone and that its application readily shows that apart from “SUPER CHOW”, a substantial part of its mark is the designs for the caped dog and two paw prints. The applicant, therefore, concluded that the applied mark is not confusingly similar to Nestle’s “CHOW” trademark.