News & Events, Federis & Associates Intellectual Property Firm

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.

Inexcusable Neglect: What You Don’t Know Can Hurt You

November 9, 2015

Parties to a case, whether or not represented by counsel, must be proactive in monitoring what is going on at every stage of litigation. One must not simply wait for his lawyer to advise him of the status of his case. The party himself must be diligent in knowing how his case is shaping up at all times while a case is pending. This was the lesson taught in a recent case, which was brought to the Court of Appeals. (See Albert Tan vs. Intellectual Property Office, Office of the Director General and Coby Electronics Corporation, CA-G.R. Sp. No. 127039).

In this case, Albert Tan (“Petitioner”) applied for registration of the trademark “COBY” for use on goods under Class 9. Coby Electronics, Inc. opposed alleging, among others, that it is the prior user and owner of the “COBY” trademark in the Philippines. The Bureau of Legal Affairs denied the opposition after concluding that Coby Electronics failed to prove that “COBY” is a well-known trademark in the Philippines. The Bureau further held that Petitioner has a better right to “COBY” because his trademark application was filed earlier and hence deserves priority and protection.

Counterfeit Philip Morris Cigarettes Seized by Philippine Customs Bureau

November 1, 2015

A raid conducted by the Philippine Bureau of Customs on October 15, 2015 resulted in the confiscation of more than 31,000 packs of counterfeit Philip Morris cigarettes. The Customs Bureau’s website confirmed this successful campaign which it initiated after receiving information that counterfeit Philip Morris cigarettes were smuggled into the country.

Acting on the basis of a Letter of Authority signed by the Customs Commissioner, the Bureau’s Enforcement Group coordinated with the local police and the Barangay Chairman in the area where the counterfeit cigarettes were stored. The target of this raid was a four-storey building at the busy downtown area of Sta. Cruz, Manila, which was registered under the name of Paloma General Merchandise.

FEDERIS Sponsors the 2016 Designs Conference in Singapore

October 29, 2015

Federis & Associates is proud to be an Executive Platinum Sponsor of a conference entitled “DESIGNS – INTO THE FUTURE: Leveraging the Value of Design Rights as Key Protection and Enforcement Tools” to be held on Feb. 29-30, 2016 in Singapore. The conference is organized by the International Trademark Association (INTA) in partnership with the International Association for the Protection of Intellectual Property (AIPPI).

Design rights is the key focus of the conference as more and more users are taking advantage of the Hague System for the International Registration of Industrial Designs. Furthermore, as other countries sign on to the Hague System for the International Registration of Industrial Designs, it will become important for brand owners to understand the impact of this and potential cost savings that could be available when managing their trademarks and design portfolios. According to INTA, topics for discussion at the conference will include global design and brand protection strategies, the overlap with other IP rights, alignment of design and brand protection strategies to fuel business growth, key learnings from the Apple v Samsung global dispute, alternative dispute regulation mechanisms, and current issues in design law, 3D printing and design on-line.

The firm’s support for this event strengthens its commitment and interest in bringing together experts, policy makers and professionals to engage in a dialogue on important emerging issues in the IP field such as the registration and protection of industrial designs.

Visit INTA’s website for more information.

Honda Wins Oppositions but Fails to Enforce Three-Dimensional Marks

October 26, 2015

In one of the few decisions in the Philippines dealing with three-dimensional trademarks, the Bureau of Legal Affairs rejected two applications for three-dimensional trademarks consisting of colored engines. The applications were described as “A Three Dimensional Engine Colored Black, Red, White and Silver” and “A Three Dimensional Engine Colored Yellow, Black and Silver.”

The applicant filed two applications for three-dimensional trademarks. One trademark comprised of an engine using the colors black, red, white and silver, while the other trademark consisted of an engine using the colors yellow, black and silver. These applications were timely opposed by Honda Motor Co., Ltd. (“Honda”) on the ground, among others, that the applications were confusingly similar to its three dimensional trademarks consisting of general purpose engines.

Federis To Host INTA Roundtable on Brand Management and Protection

October 7, 2015

The International Trademark Association has announced that Federis & Associates will host a Roundtable titled “Behind the Brand: Insider Perspective on Brand Management and Protection.” The session will be led by Federis partner Jan Ponce-Roxas and will take place on Thursday, November 26, 2015 at 2:30 p.m. at the Makati Shangri-La Hotel.

The INTA Roundtables are a series of popular discussions on current trademark topics held in numerous cities around the world. It is considered by trademark practitioners as an ideal way for members to meet colleagues and stay current on trademark issues.

The roundtable will bring together legal professionals from leading Philippine companies like Banco de Oro (BDO), United Laboratories, and San Miguel Corporation, who will provide their insight based on their recent experiences in brand protection and enforcement in the local Philippine market.

The goal of the roundtable is to provide an opportunity for other in-house attendees to share their own experiences and the challenges they face in brand management and protection, while outside counsel gain first-hand knowledge from the actual experiences of in-house counsel, which will assist them in better serving their clients’ IP needs.

Complete information and registration information is available on INTA’s website here. You may also contact Jan Ponce-Roxas by email at jponce@federislaw.com.ph.

Federis Sponsors INTA’S Geographical Names Conference in Rome, Italy

October 7, 2015

Federis & Associates is proud to be a Platinum Sponsor of the International Trademark Association’s (INTA) Geographical Names Conference: Protecting and Enforcing Geographic Names, GIs, Trademarks and Domain Names. The conference will be held on December 10-11, 2015 in Rome, Italy.

According to INTA’s website, the conference will join together “experts from around the world including representatives from the European Commission, Hungarian IP Office, Mexican Institute of Industrial Property, WIPO and WTO to gain insight into the economic benefits of Geographic indicators as well as brand owners strategies and potential benefits of association with a PGI or PDO.”

The conference will be a great opportunity for trademark professionals and high-level government officials from all over the world to discuss geographic indications, which is a central topic of debate in current international trade agreement talks. Moreover, this topic is very timely as different countries and regions around the world are facing important policy choices on how to protect the names of products that have a link with a specific geographic place. The firm’s support for this event reinforces its commitment to the exchange of dialogue on current hot-button trademark topics affecting trademark stakeholders today.

Visit INTA’s website for more information.

Philippines Takes Step Towards Creating Framework for IP Financing

August 25, 2015

The Intellectual Property Office of the Philippines (IPOPHIL) took the initial step towards promoting the monetization of intellectual property assets in the Philippines. The IPOPHIL, in collaboration with KPMG, held a High-Level Forum on IP Financing last May 15, 2015. The forum was attended by representatives from various government agencies and research institutes, such as Bangko Sentral ng Pilipinas (BSP), Bureau of Internal Revenue (BIR), Department of Finance (DoF), Securities and Exchange Commission (SEC), Department of Science and Technology (DoST), National Economic and Development Authority (NEDA), University of the Philippines – Los Banos, Filipinas Copyright Licensing Society (FILCOLS), and the Philippine Institute of Certified Public Accountants (PICPA). The main purpose of the forum was to formally discuss the possibility of creating a framework for IP financing and IP valuation in the Philippines. This initiative of the IPOPHIL, as the government agency in-charge of advancing intellectual property rights, is a recognition of the growing trend of IP financing as an alternative source of credit, as well as the value of a good IP financing framework to the country’s economy.