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.

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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 [email protected].



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.

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Kawasaki Fails to Protect Patented Design for FURY 125 Motorcycle

July 22, 2015

The Japanese company, Kawasaki, and its Philippine subsidiaries, filed suit to stop a local company (Eastworld) from manufacturing and selling Sapphire 125 model motorcycles. Kawasaki complained that this motorcycle copies the design elements of its own motorcycle model Fury 125.

Kawasaki alleged that the design elements of its Fury 125 motorcycle are protected by a design patent which was issued a year prior to the launching of Sapphire 125. Kawasaki also claimed that its Fury 125 was launched one year before Sapphire 125 began selling in the local market.

The suit was lodged as an administrative action with the Bureau of Legal Affairs, and relied on two causes of action, patent infringement and unfair competition. The complaint asked for preliminary injunction.

The Bureau refused to issue a preliminary injunction and ruled against Kawasaki’s charges of infringement and unfair competition. The Bureau pointed out that infringement is committed only when one uses, makes, sells or imports patented design without the consent of the patentee. In this case, Eastworld did not need to get the consent of Kawasaki because its Sapphire 125 motorcycle used design elements that were covered by its own design patent.

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Intellectual Property Office to Increase Official Fees by 20%

June 18, 2015

An impending increase of 20% in official fees was announced by the Intellectual Property Office (“IPO”) in a public consultation held on June 15, 2015.  Under the Rules, the IPO is authorized to regularly evaluate the level of official fees and to increase the same when necessary.  The planned increase will cover official fees for all patent and trademark filings, but fees related to basic copyright filings will not increase.  The IPO also introduced new fees for patent services, including patent mapping, and those related to patent prosecution and accelerated substantive examination.

The IPO identified government programs, which shall be financed from income generated by the increase.  These are: (1) financing for the IPO’s application to be an International Search Authority (ISA); (2) creation of the Copyright Bureau and Enforcement Unit; (3) creation of Performance Governance System; (4) establishment of IPO Regional Offices; and (5) upgrading of IT related services.

The IPO reminded the public that there has been no increase in the fees since 2004 and that the 20% increase appears to be less than the last increase of 30%, which was implement between the years 1996 and 2000.

The new fees are expected to take into effect July 1, 2015 if the Secretary of the Department of Trade and Industry shall have given his approval before then.  Representatives of law firms expressed concerns that the July 1, 2015 target date leaves little time to notify their clients of the impending increase.  They suggested that the increase be delayed for a period of 3 to 6 months in order to adequately prepare their clients for the fee increase.

Did Supreme Court Signal a Wide Open Door For Trademark Piracy?

June 8, 2015

In a recent decision, the Supreme Court allowed the registrations owned by two competing companies, for an identical trademark, used in connection with goods in the same Class, thereby effectively throwing the doors wide open to trademark copying and creating a climate for potential consumer confusion.

This baffling decision stemmed from the decades old dispute between a local company, Kolin Electronics Co., Inc. (“KE”), and a foreign company, Taiwan Kolin Corporation (“TK”), over the use and registration of the trademark KOLIN for electronic goods.

The relevant facts leading up to the Supreme Court decision are: In December 2002, TK applied to register KOLIN for use on television sets, cassette recorder, and VCD amplifiers, which fall under Class 9 of the Nice Classification (the “Application”). In July 2006, KE opposed claiming that the applied mark is confusingly similar to its KOLIN trademark, which was already registered in November 2003 for automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC under Class 9 of the Nice Classification. Ironically, KE’s KOLIN registration was also the subject of a prior legal dispute between the same parties, in which TK opposed said application, but was denied by the Bureau of Legal Affairs and subsequently affirmed by the Director General of the IPO and the Court of Appeals. Thus, KE was able to register the KOLIN for various products under Class 9 and is now using the said registration to oppose TK’s application for the KOLIN mark for use on goods under Class 9.

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Apple Loses Trademark Battle in the Philippines

June 6, 2015

In a surprising decision, the Bureau of Legal Affairs (“Bureau”) dismissed Apple Inc.’s (“Apple”) opposition, which it lodged against an application for the mark “mylphone” in the name of a local entity, Solid Broadband Corporation (“Solid”) [Apple, Inc. vs. Solid Broadband Corporation (IPC No. 14-2010-00212)]. Solid sought the registration of “mylphone” used in connection with “distribution and sales of mobile and cellular phones including chargers, headsets, micro SD cards, T-Flash cards, extra phone batteries and stylus pens”, under Class 9 of the International Classification of Goods.

Apple anchored its opposition on Section 123.1 (d) of the IP Code, which prohibits the registration of a mark that is confusingly similar to an earlier filed or registered trademark. Apple contended that its “IPHONE” mark is well-known internationally and in the Philippines, and that the registration of “mylphone” is barred as being confusingly similar thereto.

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Opposition Dismissed For Not Filing Original Documents

May 18, 2015

An opposition will be dismissed if an Opposer fails to submit original documents supporting its case at the time the opposition is filed. This was the ruling of the Court of Appeals in a recent decision which it issued affirming the dismissal of the opposition by the Director General and the Bureau of Legal Affairs. This decision was issued on a consolidated Rule 43 petition for review filed by both parties in a bid to protect their respective trademark rights after battling it out at the Intellectual Property Office for over a decade. At the center of the dispute is the trademark “KOLIN”.

The case of Kolin Electronics Co., Inc. vs. Taiwan Kolin Corp, Ltd. (CA-G.R. SP No. 122566), involved two unrelated companies, each one using the disputed mark “KOLIN” as part of its corporate name, and each one being involved in the same industry, which is the manufacture, assembly and sale of electronics products.

For practitioners, the case is noteworthy as it applies strictly Sections 7.1 and 7.3 of Office Order No. 79 (Series 2005), which revised the 1998 Rules and Regulations on Inter Partes Proceedings. Under the rules, parties must submit only original documents in opposition and cancellation proceedings. Certified copies of public documents may be admitted in lieu of originals.

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Stare Decisis: Where Is It?

May 11, 2015

Stability and certainty in judicial decisions – that’s where the rule of law best thrives. The familiar doctrine of stare decisis commands that once a question of law has been examined and decided, it should be deemed settled and closed to further argument. This simply means that a ruling on a certain state of facts established in a final decision of the Philippine Supreme Court has to be followed in subsequent cases by all courts in the land where the facts are substantially the same, regardless of whether the parties and property are the same.

This doctrine, however, disappears in the realm of confusing similarity in trademark disputes.  In 2004, the Supreme Court ruled in the McDonald’s case that confusing similarity is to be resolved only by using the dominancy test because it is explicitly incorporated in Section 155.1 of the Philippine Intellectual Property Code (defining infringement as the “colorable imitation of a registered mark xxx or a dominant feature thereof”). For this reason, the Supreme Court expressly rejected the holistic test, even declaring it as contrary to the elementary postulate of trademark law. Thus, under the dominancy test, confusing similarity is found if one dominant feature is copied, notwithstanding the presence of differentiating words or design. In addition, if the element copied is the first word of the mark, this is deemed sufficient copying of the dominant element.

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