Industrial Design: The Inseparability of Priority from Novelty

November 10, 2016

The essence of prior art as a bar to the registrability of a design lies not only in its similarity with the disputed design but also in the fact that it enjoys precedence. As the adage goes, “first in time, first in right”. The case of KPI Manufacturing, Inc. doing business under the name and style Key Largo Car Accessories Center v. Alwin T. Go (IPC Case No. 13-2015-00523) is instructive of the value of establishing priority in one’s bid to cancel a patented design on the ground of lack of novelty.

The controversy stemmed from a petition for cancellation filed by KPI Manufacturing, Inc. (“KPI”) against the “CAR MAT” design registered under Alwin T. Go (“Go”). KPI averred that Go is not the true and original designer of the disputed car mat product. To substantiate its claim, KPI presented images of actual car mats allegedly imported from another manufacturer in China, similar to that of Go’s car mat. KPI claimed that these car mats imported from China constitutes prior art, which effectively prove that the disputed design was not novel and thus, must not have been registered in the first place. KPI further questioned the novelty of the disputed design as it has alleged that Go committed a prejudicial disclosure to third persons when he bought the mold for his car mat design prior to its application.

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IPOPHL Launches Industrial Design Electronic Filing System

November 9, 2016

The Philippine Intellectual Property Office launched an electronic filing system for industrial design on November 2, 2016 called EIDFILE.

Under the system, applicants seeking protection for industrial design can file his application by the use of a computer terminal with latest versions of web browsers. Applicants may file applications for industrial design with any of the satellite offices of the Intellectual Property Office. Any applicant not yet familiar with the system can get assistance in those offices.

An applicant is not required to register to be able to file the application online.  A cover letter is also not needed for his online application.  Once the applicant proceeds with the online filing, he will be guided by the system on how to submit the application.

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Fashion house Stella McCartney Limited loses an opposition against the Malaysian brand ST ELLA

November 8, 2016

The fashion house Stella McCartney Limited (“opposer”), known for its ready-to-wear apparel, accessories, lingerie, eyewear, and fragrances opposed the registration in the Philippines of the trademark ST ELLA owned by the Malaysian company, Melilea (“applicant”).

Melilea filed an application to register ST ELLA designating, among others, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices in Class 3, and leather goods in Class 18.

The opposer contended that ST ELLA is confusingly similar to its trademark STELLA and infringes its trade name Stella McCartney Limited.  The opposer claimed that it has used and registered STELLA in the Philippines long before the opposed application was filed; that STELLA is an internationally famous trademark, registered and successfully sold in many countries around the world; that the registration of ST ELLA will create a likelihood of confusion, mistake and deception among the consumers, and cause damage to opposer.

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Sumitomo wins another opposition against FALCON for being confusingly similar to FALKEN

November 5, 2016

Japanese company, Sumitomo Rubber Industries, Ltd. has once again successfully opposed an application to register FALCON trademark in the Philippines.  A Chinese national, Peng Tei Liu, applied to register FALCON for use on vehicles and apparatus for locomotion in Class 12. Sumitomo Rubber opposed claiming that FALCON is confusingly similar to its FALKEN trademark, which is used on tires, also in Class 12.

FALKEN is a known brand that is used for ultra high performance tires. FALKEN tires are popularly sold in North America by Sumitomo Rubber’s subsidiary company, Falken Tire Corporation.

This is not the first time that Sumitomo Rubber has opposed an application for FALCON trademark in the Philippines.  In this recent opposition, Sumitomo Rubber argued that not only is FALCON confusingly similar to FALKEN which is registered in Class 12, but is also an infringing copy of the company name of its subsidiary, Falken Tire Corporation.  As an important element of its subsidiary’s name, FALKEN enjoys legal protection under Section 165 of the Intellectual Property Code and Article 8 of the Paris Convention, according to Sumitomo Rubber.

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Pharma Company Thwarts Sysmex Corporation’s Application For ‘HYPHEN’ Mark

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.

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IPO Sides with Daicel in Refusing to Register the ‘DIACEL’ Mark in the Philippines

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.

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IPOPHIL Revises the Rules and Regulations on Inter Partes Proceedings

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.

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BRIDGESTONE Trademark Solidifies its ‘Well-Known’ Status in the Philippines

August 15, 2016

The series of decisions rendered by the Bureau of Legal Affairs (“BLA”) leave no doubt that the BRIDGESTONtrademark 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.

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Unilever Fails to Secure Exclusive Rights Over “CLEAR” Mark

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.

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IPO Cancels Trademark Registration Over Bad Faith Copying of a Japanese 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.

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