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.

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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.

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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 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.

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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.

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.

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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.

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