News & Events, Federis & Associates Intellectual Property Firm

Nestle Successfully Proves Secondary Meaning For “CHOW” Mark

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.

FEDERIS To Sponsor INTA Annual Meeting in Orlando, Florida

April 4, 2016

Federis & Associates will be a Housing E-Mail Sponsor of this year’s INTA Annual Meeting. The meeting will be held from May 21 to May 25, 2016 in Orlando, Florida. In conjunction with its sponsorship, the Firm will also be hosting a booth (#1217) at the Exhibition Hall of the Orange County Convention Center. Four lawyers from the Firm will be available to provide information about IP laws in the Philippines, and to answer any questions related thereto. The Exhibition Hall will be open from May 22 to May 25.

The INTA Annual Meeting is a highly anticipated event in the trademark community. It is where trademark owners and professionals gather from all over the world to discuss emerging issues, trends and development in trademark laws. This year’s meeting is expected to have over 9,500 attendees. For more information about this year’s meeting, please visit INTA’s website at www.inta.org.

IPOPHIL Discusses Current State of IPR Enforcement in the Philippines

March 18, 2016

On February 18, 2016, the Intellectual Property Office of the Philippines (IPOPHIL) held a consultation meeting to discuss the current status of intellectual property rights (IPR) enforcement efforts in the Philippines.

According to IPOPHIL, the year 2015 has been challenging in terms of IPR enforcement. The value of seized goods in 2015 was dramatically lower than the value of seized goods for the years 2010 to 2014. IPOPHIL believes that the lower number is the result of fewer raids conducted by the Philippine National Police and National Bureau of Investigation, as well as fewer visits conducted by the Optical Media Board, while there was almost no seizure and detention done by the Bureau of Customs. Moreover, IPOPHIL attributes the lower number of enforcement actions to organizational and leadership changes within the various law enforcement agencies.

Who Owns A Copyright? IP Bureau Rules Against Creator Of a Copyrightable Work

February 15, 2016

In one of the few copyright infringement decisions to be released recently by the Bureau of Legal Affairs, it held that a company is the author of the work, even if the work was created by an individual (the Complainant) while working for the company (the Respondent Company) under a Consultancy Agreement.

The Complainant executed a Consultancy Agreement with Respondent Company, which described the scope of work as including the development of training policies and procedures manual, training manuals, English education materials and lesson plans. Complainant created a work entitled “Conversational English Study Guide First Edition” (the “Work”), which is intended to teach and improve one’s proficiency in the English language. Subsequently, an agent or representative of Respondent Company applied to register the Work with the National Library. Respondent Company also reproduced the Work as teaching materials in its classes and displayed copies of the Work inside its premises.

Complainant objected and demanded that the Respondent Company refrain from using his Work and to cancel the copyright registration issued by the National Library. Complainant then sued the Respondent Company for copyright infringement.

Respondent Company disputed Complainant’s claim of ownership arguing that he was merely an agent of the Respondent Company and that the Work was created while Complainant was performing his regularly-assigned duties.

Supreme Court Declines to Lift Permanent Injunction Banning the Sale of Zynaps in the Philippines

February 11, 2016

The Supreme Court rejected a request to lift a permanent injunction banning the sale of ZYNAPS, an anti-convulsant drug for epilepsy. In a Petition for Review seeking to set aside a Court of Appeals’ decision permanently enjoining the sale of ZYNAPS, the Supreme Court ruled that the issue has become moot in view of the trial court’s decision on the merits of a trademark infringement case. This is an important procedural case regarding the effect of a final decision on the merits when there is a pending appeal on an ancillary writ such as those involving a temporary restraining order or preliminary injunction.

The case originated from a complaint filed by Natrapharm, Inc., a local pharmaceutical company, which manufactures and sells a medicine for heart and stroke patients under the “ZYNAPSE” trademark. Natrapharm filed a case against Zuneca Pharmaceutical, the distributor of ZYNAPS, for trademark infringement with a prayer for a temporary restraining order or a writ for preliminary injunction. In its Answer, Zuneca alleged that it was the first to use the mark “ZYNAPS” based on a product registration issued in 2003. On the other hand, Natrapharm only obtained its trademark registration for “ZYNAPSE” in 2007.

INTA’s Geographical Names Conference Held in Rome

December 23, 2015

The International Trademark Association’s Geographical Names Conference was held in the beautiful City of Rome, Italy last December 10 and 11. Federis was not only a sponsor, but also a participant, with two members of the firm attending the event.

The event was timely given that geographical indications have become a hot topic of debate in current international trade agreement negotiations. Jurisdictions around the world are facing important policy decisions on how to protect the names of products that are linked to a specific geographic place.

Over the two-day conference, experts from around the world debated on the economic benefits of geographic indications and on the appropriate level of protection to be accorded for such products. The participants gained insight into brand owner strategies, as well as policy makers’ point of view on how best to enforce GI protection. The speakers included representatives from the European Commission, European Parliament, WIPO, WTO, as well as brand owners and officers of IP Offices in various countries. INTA also launched a new member resource “Geographical Indications, Certification Marks and Collective Marks: An International Guide” to assist attorneys in determining how to protect geographical indications, certification marks, and collective marks in various jurisdictions.

The conference was not only an educational event, but also provided a great opportunity for networking among the 167 attendees who represent 48 countries. The participants had the opportunity to feast like the Romans when they all gathered for a dinner in the magnificent surroundings of the Costaguti Palace hosted by seven local Italian firms. Overall, the event was a success and certainly brought more attention to an important and controversial topic in IP law.

INTA Roundtable Held in the Philippines

December 5, 2015

Federis & Associates Law Offices hosted this year’s INTA Roundtable in the Philippines. Aptly titled Behind the Brand: Insider Perspective on Brand Management and Protection, in-house lawyers from the leading companies in three industries participated in a lively discussion of the challenges they face in trademark enforcement in the Philippines, and overseas, as they all expand their markets outside the country. The session was moderated by Jan Ponce, a Partner at Federis, and was held on Thursday, November 26, 2015 at the Makati Shangri-La Hotel.

The discussion kicked off with the discussion by the lawyers of San Miguel Brewery Inc., United Laboratories and Banco de Oro (BDO). One common concern that was discussed at length was the challenge of complying with formality requirements when filing trademark applications in South America and in the Middle East.

SEC Cancels Third Party Company Names Using YAHOO and Variations Thereof

December 1, 2015

After a nearly 9-year effort, Yahoo! Inc. has finally prevailed in cancelling corporate names that use YAHOO! and variations thereof in a case filed with the Securities and Exchange Commission (“SEC” or “Commission”).

In February 2006, Yahoo! Inc. petitioned the SEC to cancel the corporate names of six (6) corporations on the ground that the unauthorized use of YAHOO or variations thereof, as corporate names, violated the trademark rights of Yahoo! Inc. The petition claimed that Yahoo! Inc. was the first to use and adopt the YAHOO! name and that the unauthorized use thereof violated its right as owner of this trademark, which has already been declared as famous by the Department of Trade and Industry (“DTI”).

The Petition was directed against these corporations: Yahoo Food Industries Inc., Yahoo Computer Center Co., Yahoo Trading Co., Yahoo Transport Inc., Yaho Corporation and Yaho Sales International Corporation (collectively, the “Respondents”).

Tale of Two Restaurants: Appeals Court Rules for First to Use

November 23, 2015

A trademark right acquired through use under the old law is preserved under the first-to-file system of the IP Code. This is the gist of the ruling issued by the Court of Appeals in its decision in Amber’s Best Restaurant & Ihaw-Ihaw, Inc. vs. Amber Golden Plate Restaurant, CA-G.R. Sp. No. 137629.

A popular restaurant called Amber Golden Plate Restaurant (“Respondent”) started operating in 1988. Sometime in the late 1990, an incorporator and former officer of Respondent, put up her own restaurant business using the name IHAW-IHAW SA AMBER. The latter was registered with the Securities and Exchange Commission in 2004 as “Amber’s Best Restaurant & Ihaw-Ihaw” (“Petitioner”). Until 2008, Petitioner conducted its business alongside Respondent’s business.

On October 7, 2008, Petitioner filed an application to register the mark AMBER’S BEST for several related goods and services. Respondent quickly filed its own trademark application for AMBER & LOGO on October 29, 2008. Meanwhile, Petitioner’s application was granted registration on March 9, 2009 and was cited as a blocking mark to Respondent’s application for AMBER & LOGO.

Appeals Court Rebukes Department of Justice for Dismissing Infringement Complaint

November 16, 2015

In what may be seen as a power struggle between the executive and judicial branches of government, the Court of Appeals issued a ten-page scathing decision declaring that the Department of Justice committed grave abuse of discretion in dismissing the trademark infringement complaint involving the HAVAIANAS trademark.

The case stemmed from a criminal complaint filed by the Brazilian company, Sao Paolo Alpargatas S.A. (SPASA), the registered owner of the HAVAIANAS trademark. The complaint was filed with the Office of the City Prosecutor of Caloocan City against Kentex Manufacturing Corporation (Kentex) and its owners for trademark infringement and damages. SPASA alleged that Kentex offered and sold flip flops using the trademark HAVANA knowing that they were colorable imitations or copies of the popular and well-known HAVAIANAS flip flops. Kentex denied liability and pleaded absence of likelihood of confusion, claiming: (1) that SPASA and Kentex target different markets; (2) that the selling price range between SPASA and Kentex merchandise is very different; and (3) that SPASA and Kentex cater to different sets of purchasers who are clearly smart and discerning enough to distinguish the goods. Kentex submitted certifications of copyright registration, design registrations and copies of trademark applications.