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.
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.
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”).
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.
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.
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.
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.
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.
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.
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 [email protected].