The Office of the Director General of the Intellectual Property Office of the Philippines (IPOPhil) issued about 56 decisions on trade marks in 2009. The Office of the Director General (ODG) decides appealed cases from the Bureau of Legal Affairs (BLA), which is the adjudicating bureau of IPOPhil for opposition, cancellation and administrative actions involving violations of the IP Code such as infringement and unfair competition and from the other bureaus such as the Bureau of Trademarks, Bureau of Patents and licensing disputes.
Out of the 56 cases, 12 cases or 21% were dismissed on technical grounds, 22 decisions or 39% were reversals of the BLA decisions and 40% of the ODG decisions affirmed or sustained the BLA decisions. While the decision of the ODG is appealable to the Court of Appeals, the relatively high rate of dismissals due to technicalities is a cause for concern because IPOPhil is not bound by strict technical rules of procedure and evidence, as a matter of policy. Likewise, the high rate of reversals by the ODG of the decisions of the BLA is equally alarming since it puts in question the competence of either the BLA or the ODG. An analysis of these cases may help both the IP practitioners and the trade mark owners what to consider or avoid to protect their trade marks.
Cases dismissed on technical grounds
Five cases were dismissed for having been filed out of time. In the case of Ruben Lumanog Bansil vs Heirs of the Intestate Estate of Paulina Lumanog Bansil (appeal no 14-09-01), the appeal of Ruben was filed late by four days. In Dermaline Inc vs Myra Pharmaceuticals (appeal no 14-09-15), Dermaline missed the deadline by one day. In Eurohealth Care Exponents vs Novartis AG (Appeal no 14-09-07) involving the mark EU-RAN, Eurohealth filed its motion for reconsideration one day late. Under the uniform rules on appeal, the appealing party has 30 days to either file a motion for reconsideration before the BLA or directly file an appeal to the DG. If a motion for reconsideration is filed and this is denied, the appealing party has only the balance of the prescribed period to file the appeal. In Blue Cross Insurance Inc et al vs Blue Cross and Blue Shield Association (Appeal no 14-09-36) for the trade mark Blue Cross, Blue Cross Insurance received the unfavourable decision on its motion for reconsideration from the BLA on April 16 2009 and since it had consumed the 30 day period, it had only one day (until April 17) to file its appeal. However, it filed its appeal on May 18 2009, which led to the dismissal. The same thing happened in the case of Novartis Vaccines and diagnostic GMBH vs Biofemme Inc (Appeal no 14-09-31). Novartis had only one day left (until April 2 2009) from receipt of the denial of its motion for reconsideration to file the appeal, which unfortunately was filed on April 3 -one day late.
Under Bar Matter 1922, lawyers are required to indicate the number of their certificate of compliance for the mandatory continuing legal education (MCLE) in all pleadings, and its absence could result to the outright dismissal of the case and the expunction of the pleadings from the records. The DG enforced this rule strictly against LT2 LLC in the case of Specifique Garments Mfg vs LT2 LLC (Appeals nos 14-08-03, 14-08-44) involving the marks Le Tigre Stylised and Le Tigre & Design.
Only final orders or those which dispose of the subject matter in its entirety so that nothing else remains but to enforce or execute it, are appealable to the DG. Hence, interlocutory orders are not appealable to the DG. This was the ground for dismissal of the appeals filed by Supergen in the case of Supergen Inc vs Westmont Pharmaceuticals (Appeal no 14-09-11), against ABS-CBN in the cases ABS-CBN film Productions Inc vs Star Television Productions Limited (appeals nos 14-09-32, 14-09-33) for the mark Star TV and Star Device.
Reasons for reversal of BLA decisions
A survey of the decisions issued by the ODG for 2009 reversing the decisions of the BLA shows three common grounds: misapplication of the first-to-file rule, difference in appreciation of confusing similarity and relaxation of technical rules. Some cases are shown as examples below.
Clarification of the first-to-file rule
The majority of the BLA decisions reversed by the ODG dealt with the misapplication of the so-called first-to-file rule. In these cases, the BLA dismissed the oppositions or cancellations on the basis that the applicant filed the opposed trade mark ahead of the opposer or complaining party citing Section 123.1 (d) of the IP Code, which provides that a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date with respect to the same goods or services, or closely related goods or services, or it nearly resembles such a mark as to be likely to deceive or cause confusion.
In clarification, the ODG pronounced that Section 123.1(d) is one of the grounds upon which the examiner may refuse a trade mark application or for an interested party to file an action for opposition or cancellation. According to the ODG, an opposition against a trade mark application is a review of the application to determine whether the legal requirements for registration have been satisfied and not necessarily a contest as to who has an earlier trade mark application or who has a better right to register the mark. The ODG further stated repeatedly in its decisions that there is nothing in the IP Code which says that registration confers ownership of the mark, but that the rights in a mark shall be acquired through registration made validly in accordance with law. Clearly, the ODG ruled, it is ownership which confers the right to registration and to enjoy exclusive use thereof for the goods or services associated with it and that the rule cannot be used to commit or perpetrate an unjust and unfair claim.
In the case of Donald J Trump vs Megaworld Corporation (appeal no 14-08-19), the ODG reversed the BLA and sustained the opposition of Trump against the trade mark application for the mark The Trumps. The ODG found that Trump submitted undisputed evidence that he has owned and used the mark Trump for real estate since 1968 and has obtained and continues to obtain registrations for the mark in several countries. Further, the ODG noted that the mark Trump as used on real estate is distinctive, which makes it unlikely that Megaworld, a business competitor, could come up with the same mark and that Megaworld's claim that its mark The Trumps is derived from the word "triumph" is weak.
Paul Frank Industries filed an opposition against the mark Paul Frank with logo and Paul Frank collection with house design claiming that the mark is a combination of its marks Paul Frank and its design of a monkey called Julius Monkey Design (Paul Frank Industries Inc vs Alan Sia Yu, appeal no 14-09-19), which the BLA denied on the ground that Paul Frank did not present a certificate of registration nor a trade mark application of its marks in the Philippines unlike the applicant Sia, who presented an earlier registration for Paul Frank Logo issued on November 2006 and several applications involving similar and related marks. The BLA held that Sia was the first user and adopter of the opposed mark. The ODG, reviewing the records and evidence, agreed with Paul Frank's claim that Sia's application was tainted by fraud and bad faith since his mark was indeed a combination of the trade marks of Paul Frank wholly copied and just put together by Sia. According to the ODG, Paul Frank has proven its ownership of its mark, which is also its corporate name and has submitted proof of use as early as 2000 and evidence of use in different countries worldwide. For his part, Sia failed to explain why his mark is identical to Paul Frank's. The ODG granted Paul Frank's appeal and set aside the decision of the BLA.
In the case of Voit Corporation vs Murli J Sabnani (appeal no 14-08-14), involving the trade mark Voit for backpacks, schoolbags and sporting goods, the ODG found that Voit Corporation, as shown by the evidence, is the originator and creator of the mark Voit. The mark is derived from the name of William J Voit who created the brand in the 1920s and has used and registered this mark in different countries long before Sabnani filed its applications. The ODG found also that for Sabnani to have come up with the mark without any plausible reason is mind boggling and failure to show proof of ownership leads to the conclusion that he only copied the mark. For these reasons the ODG granted the appeal and set aside the decision of the BLA.
Confusing similarity
In the case of Jennifer Robles vs Binalot Fiesta Foods Inc (appeal no 14-06-21), Robles' application for the trade mark Balot Balot Republic of Meals in Banana Leaves was opposed by BFF on the ground that it was confusingly similar with the latter's trade name Binalot Fiesta Foods and registered trade mark Binalot & representation of Pinoy Meal. The BLA, using the dominancy test, held that the marks are confusingly similar and sustained the opposition. On appeal, the DG reversed the BLA and ruled that while the term Binalot and Balot Balot were derived from the same Tagalog word balot meaning wrapper or to wrap, and that Binalot is the past tense of ballot, the term Balot Balot is not a grammatically correct term and in combination with the other non-disclaimed word which is Republic, the play of words renders the mark fanciful and registrable, which is highly distinguishable from BFF's name and mark.
Are the marks Coco and Coco Vibe confusingly similar? Not according to the BLA, which denied the opposition of Chanel (Chanel Sarl vs Tupperware Products SA, appeal no 14-09-22) and ruled that the addition of the word Vibe and other elements in Tupperware's proposed mark such as the picture of the coconut and the style of lettering and colour form make this mark unique and distinct. The ODG, however, did not share the view of the BLA and reversed its decision, holding that the dominant element Coco stands out and would likely give a consumer the impression that the mark is just a derivative of the various Coco marks of Chanel.
The BLA held that the marks American Eagle Inside an Oblong Device used on motorcycles and scooters and Eagle used on tyres are not confusingly similar (The Goodyear Tire and Rubber Company vs Good Year Import and Export Corporation, appeal no 14-08-11). The ODG, however, reversed the BLA and held that the word Eagle in both marks easily draws attention and further held that the goods of the parties are related because motorcycles and scooters cannot be used without tyres.
In the case of Yahoo! Inc vs Alaska Milk Corporation (appeal no 14-08-26), involving the mark Alaska Yamoo! for milk and milk products and advertising, the BLA ruled that the competing marks are confusingly similar, the only difference being the letter M replacing the letter H in YAHOO! The ODG did not agree with this decision and set it aside finding that the marks are not identical. The mark of Alaska Milk has two words Alaska and Yamoo while Yahoo has only one word. In addition, the goods and services of the parties are so unrelated that ordinary purchasers will not mistake one as the source of origin of the other.
Applying technical rules
While the ODG was overly strict in the application of the appeal period, it was more liberal over formal requirements for oppositions. There were a few cases dismissed by the BLA on the ground that the oppositions or petitions did not contain original and duly authenticated verifications and certifications of non-forum shopping. In Solvay Pharmaceuticals BV vs Biopharma International Medical Distributor Inc (appeal no 14-09-21), Solvay attached a photocopy of the verification and certification of non-forum shopping, but later submitted the original documents. The ODG in reversing the BLA held that the rule requiring the submission of the documents may be relaxed considering that, although it is obligatory, it is not jurisdictional.
Considering these decisions, IP practitioners will be happy to note that the first-to-file rule, which has been the more common reason used by the BLA in dismissing cases, even those filed by owners of well-known marks, has been clarified.
| Editha R Hechanova |
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Editha R Hechanova is the managing partner of the Hechanova Bugay & Vilchez law offices, which specialise in IP, corporate and immigration law. She is also the CEO of Hechanova & Co, a company handling trade mark and patent prosecution, copyright and domain name registrations, trade mark valuation and searches. She obtained her law degree from the Ateneo de Manila University. She is also a certified public accountant and specialises as a litigation lawyer in IP law and has initiated and completed numerous successful enforcement actions against counterfeiters and infringers.
Hechanova has been cited as leading lawyer in the Philippines in the field of intellectual property from 2002 to 2009 by Asialaw magazine. She has published several articles on intellectual property in various international publications such as Managing Intellectual Property and has lectured on these subjects in many conferences. She is founding chairman of the Institute on Studies of Intellectual Property (ISIP), a non-profit foundation that has the primary objective of bringing IP information in schools and the public at large.
Hechanova is an accredited mediator for cases pending before the Court of Appeals. She is past president of the Intellectual Property Alumni Association composed of professionals who trained under the Japan Institute for Invention and Innovation (JIII) and the Japanese Patent Office (JPO), and a member of the SEAD Alumni (South East Asia Patent Drafting Course) sponsored by the FICPI and EPO, and other international organisations. |