Secondary Meaning: Proof is in the Chant

September 30, 2014

Basketball in the Philippines is a sport that generates intense passion. While local players do not yet stand on the same footing as world-class NBA players, they are still feted as heroes here. Any team that gets to the top of the heap acquires legendary status, and its name would seemingly echo in eternity. One such team is Ginebra San Miguel, which is owned by the popular maker of gin that is sold under the trademark GINEBRA SAN MIGUEL. And its loyal following, when egging on the players to demolish the other team, has only one monotonous chant to drown out all other noises in the coliseum, and that is “HEE-NE-BRA, HEE-NE-BRA HEE-NE-BRA”.

Claiming to have used GINEBRA SAN MIGUEL substantially and exclusively for its gin products since 1834, the owner which now goes by its corporate name “Ginebra San Miguel, Inc.” opposed the application for GINEBRA KAPITAN filed by Tanduay Distillers, Inc. Opposer claimed that GINEBRA has attained secondary meaning to designate exclusively its gin products, and to allow the registration of GINEBRA KAPITAN will sanction unfair competition where Applicant gets a free ride on the immense goodwill Opposer already enjoys under the GINEBRA SAN MIGUEL brand. The Applicant countered that “ginebra” is generic being the Spanish term for gin, and is therefore incapable of attaining secondary meaning. It pointed to the disclaimer entered by Opposer in its own application for GINEBRA SAN MIGUEL to support its generic claim.

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Starbucks Wins Its Fight Against “FRAP” Trademark in the Philippines

September 30, 2014

The Philippines’ Bureau of Legal Affairs sustained the opposition of Starbucks Coffee Co. against a trademark application for “THE FRAP BAR Everyone Deserves Frap and Design” filed by Café De Manila Corporation in connection with coffee.

In its opposition, Starbucks asserted that Café de Manila should not be allowed to register the term “FRAP” because it is the prefix and the dominant element of its registered mark “FRAPPUCCINO”. Starbucks argued that relevant consumers habitually mention the word “FRAP” when ordering “FRAPPUCCINO” beverages, such that registration of Café de Manila’s mark will likely cause confusion and deception as to the source of Café de Manila’s products.  Moreover, Starbucks alleged that Café de Manila’s use of the word “FRAP” is intended to unfairly profit from the goodwill, fame and notoriety of Starbucks’ FRAPPUCCINO beverages.  The Bureau of Legal Affairs agreed.

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Benson and Hedges Misses a Bulls Eye in a Trademark Contest with Philip Morris

September 13, 2014

Benson and Hedges (Overseas) Limited opposed an application filed by Philip Morris Brands Sarl for a three-dimensional shape of an ICE BALL LENS claiming confusing similarity with earlier trademark registrations for LUCKY STRIKE featuring a BULLS EYE device. Benson asserted expanded protection for its BULLS EYE device under the well-known mark provision of the IP Code. The Bureau of Legal Affairs (BLA) denied the opposition and ruled that the public will not likely be confused by the co-existence of Benson’s LUCKY STRIKE trademarks with Philip Morris’ ICE BALL LENS DEVICE because the aural and visual properties of these competing trademarks are different. Citing the case of Victorias Milling Company, Inc. v. Ong Su and the Honorable Tiburcio S. Evalle, G.R. No. L-28499, 30 Sept 1977, the BLA observed that Benson has not shown that the BULLS EYE device in the LUCKY STRIKE trademark, standing alone, has been used to an extent that purchasers recognized Benson to be the source of the goods.

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Philippines Implements a System of Pre-Grant Third Party Review in Patent Applications

September 11, 2014

The Intellectual Property Office of the Philippines (IPOPHIL) has announced its much-delayed implementation of a pre-grant Community Review Process (CRP) for patent applications.  In a gathering of industry representatives held at the IPOPHIL on September 10, 2014, the Director of the Bureau of Patents announced that the Bureau of Patents will adopt the CRP effective September 1.  He explained that this move is aimed at diffusing knowledge and information to relevant stakeholders, and to promote transparency in the granting of invention patent, utility model and industrial design registrations.  The CRP was initially mandated under the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs, which called for a community review process for invention patent, utility model and industrial applications pursuant to Rule 802 and Rule 1700.

The CRP concept is inspired by the public participation process during patent examination in other jurisdictions.  In the European patent system, the European Patent Convention provides that any person may present observations concerning the patentability of an invention described in a European patent application.  Likewise, a third party observation system relating to novelty and inventive step was also introduced for PCT applications, which can be made at any time from the publication of the PCT application until the expiration of twenty (28) months from the priority date.  And in Japan, third-party observations are accepted by the Japanese Patent Office at any time after a patent application or an application for utility model registration is filed, even after a decision is made to grant a patent or utility model registration.

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Small-sized Firm But With Big League Credentials

It may not have the litigation muscle of big time law firms but what it lacks in quantity, it more than makes up for quality in litigation work. Federis, with a litigation department of4 lawyers, scored towering victories in the previous months in various brand wars for important clients with highly competitive market to protect.

In the battle of cigarette brands, Federis thwarted the ploy of a competitor to copy individual features in 3 registered trademarks of Philip Morris Brands SARL and combine them in one trademark. The Bureau of Legal Affairs (BLA) agreed with the competitor’s claim of lack of confusing similarity but in the decision of the Office of the Director General on appeal, the Director General saw through the ploy and ruled for confusing similarity. Thus, in Philip Morris Products S.A. vs. Pt. Perusahaan Dagang Dan Industri Tresno (Appeal No. 14-2012-0055), it was ruled that the copied individual features sourced from different registered trademarks will likely confuse cigarette users.

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Is the BLA Creating a Grey Area?

Confusing similarity issues are easily resolved, what with the IP Code instituting Dominancy Test as the heuristic to determine confusing similarity (or so as ruled by the High Court in 2004), which simplifies analysis by dwelling only on the similarities in the dominant features of the contending marks. As to what is “dominant”, there is a wealth of precedents and they usually involve simple, common sense rules (such as prefixes usually treated as the dominant features because they are the first to be read and therefore, the one that imprint in the mind of the consumer).

And these rules also clearly delineate what are the cases where confusing similarity is held remote. A prime example is where the goods covered by the contending marks involve medicine/pharmaceutical products. Here, the no-confusion rule is based on this reasoning:

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Applicants Can Now Defer Publication of Industrial Design Patent Applications

Beginning May 20, 2014, an industrial design patent applicant has the option to file a request for deferred publication simultaneously with the filing of the application or at any time prior to the publication date. The maximum period allowed for the deferred publication is thirty (30) months from the filing date or priority date of the application. If the request for deferred publication is made after the filing of the application, the applicant may request for a specific time to publish the application, provided that it does not exceed the allowable thirty (30) months deferment period.

New Deadlines For Payment of Annuities for Divisional Applications

The Bureau of Patents changed the calculation of the deadline for payment of annuities for divisional applications. There is now only one deadline to pay the annual fees for a divisional application and the annual fees for the parent application. This deadline is four (4) years from the international publication date of the parent application (for PCT divisional applications), and four (4) years from the publication date of the parent application (for direct route applications). This change has simplified the process of monitoring the annual fees deadline dates because there will only be one deadline for annual fees for both the parent and the divisional applications.

Raid to Confiscate “Billions of Pesos” of Counterfeit Goods Reveals Corruption

By Caesar J. Poblador

News of police seizure of counterfeits are normally taken by the usual armchair skeptics as just  manufactured press releases, like to put in a good word for the current police leadership. But it’s not another ho-hum press release anymore when the staid reporting also matter-of-factly mentions “billions of pesos” worth of counterfeit, such as the one reported in this link: The press release becomes juicy, at least, for those interested in seeing patterns and causal relationships in current global developments. And certainly, when you see “billions of pesos”, the movement of counterfeit is not a local phenomenon, but has origins beyond Philippine borders. “Billions of pesos” means the operation to move contraband is a sophisticated one, and highly funded. And since it is not possible that movement of such immense peso value can escape official scrutiny, then it is one with the corrupt participation of unscrupulous local government officials and insiders.  So skeptics, this press release is really a sign on the wall. And it is one that should sear a realization in our consciousness that the everyday exercise of consumer choice, such as buying branded articles that come at low, low prices, – yes, counterfeits, – is fraught with unintended dire consequences that reverberate around the world. For our country, the repercussion is insidious. It can potential corrupt government officials.

Vigilant Trademark Enforcement Leads to Stronger Border Protection Against Unwanted and Illicit Goods

By Caesar J. Poblador

Garbage from Canada, in 50 freights, smuggled into the Philippines, – really, even garbage?

So what else is new? This bit of seeming news trivia (see link at reinforces the everyday narrative that people will stop at nothing to make a good buck, and lots of it.  But on second look, there is nothing to trivialize. If garbage can easily slip through, then everything else can, and will. Even drugs. And that’s when the stake becomes much higher. Governments and society do fall into disarray when drug money influences policy-making. Borders thus should be tightened, and in this, hats off to that sector in society which has always been in the forefront of border protection – the trademark owners. If there’s one constant presence that watches over customs borders, it is these trademark owners. Their ploy of stemming counterfeiting at the border should work equally well to suppress the entry of other contraband. It should stand as a model of vigilance and quick action. It should not be seen as protecting the turf of wealthy trademark owners, but the overall strategy to put up a fight against all manner of economic activity involving contraband, for the protection of all. We deal with fakes now decisively, we deal with drug smuggling in the end. We fail even in this task of protecting trademarks, then we cannot defeat the menace of drugs in this country. And for the everyday life among us ordinary people, this should give us pause when tempted by cheap counterfeit. Buying it will egg on demand, which will embolden more smuggling, which will naturally lead the smuggler to expand to other contraband that can cause nations to fall. Like drugs.

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