SECOND DIVISION
G.R. No. 221347. December 01, 2021
KOLIN ELECTRONICS CO., INC., Petitioner, v. TAIWAN KOLIN CORP. LTD., Respondent.
[G.R. Nos. 221360-61]
TAIWAN KOLIN CORP. LTD., REPRESENTED BY KOLIN PHILIPPINES INTERNATIONAL, INC., Petitioner, v. KOLIN ELECTRONICS CO., INC., Respondent.
D E C I S I O N
HERNANDO, J.:
The purpose a trademark is to point out distinctly the origin or ownership of the goods or services to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product.1 In today's internet-wired market where the online sale and purchase of goods and services is commonplace, domain names not only serve to identify an address on the internet which leads to a website,2 but also perform the function of trademarks in the traditional modes of business.3chanRoblesvirtualLawlibrary
Consumers have come to rely on domain names to identify the desired source of a product or service so they can obtain information to help them decide whether to purchase the product or service.4 Thus, the public frequently expects that a website consisting of or encompassing a trademark used in the physical world is sponsored by or associated with the owner of that trademark, and readily use domain names as a means of finding goods and services online.5chanRoblesvirtualLawlibrary
To protect the goodwill and reputation of their business in the online sphere, proprietors of goods and services have opted to register their domain names as trademarks and to secure protection accorded to trademark owners under Republic Act No. (RA) 8293, or the Intellectual Property Code of the Philippines (IP Code).6 It is thus inevitable that trademark principles will find application to domain names submitted for registration with the Intellectual Property Office (IPO),7 such as the cases before Us.
The two Petitions for Review on Certiorari8 before Us challenge the January 27, 2015 Decision9 and November 4, 2015 Resolution10 of the Court of Appeals (CA) in CA-G.R. SP No. 122566 and CA-G.R. SP No. 122574. The CA upheld the IPO's denial of Taiwan Kolin Corporation Ltd.'s (Taiwan Kolin) Opposition11 to Kolin Electronics Co., Inc.'s (KECI) Application12 for trademark registration of its domain name "www.kolin.ph".
KECI is a domestic corporation engaged in the manufacture, assembly, and marketing of various electronic products since 1989 and is the registered owner of the "KOLIN" trademark for goods and services under Classes 9 and 3513 of the International Classification of Goods and Services for the Purposes of Registrations of Marks (Nice Classification) under Certificate of Registration Nos. 4-1993-08749714 and 4-2007-005421.15chanRoblesvirtualLawlibrary
Taiwan Kolin, represented herein by Kolin Philippines International Inc. (KPII), is a corporation duly organized and existing under the laws of Taiwan and engaged in the home appliance business, particularly in the manufacture, sale and distribution of television sets, air conditioners, washing machines, showcase refrigerators, rice cookers and other similar appliances and electrical products.16 Taiwan Kolin has been using the KOLIN trademark for its home appliances since 1976.17 Since 1996, Taiwan Kolin's products under the KOLIN brand have been made available in the Philippines.18 Taiwan Kolin is the registered owner of the trademark KOLIN for several goods and services, including registrations under Classes 11 and 21 of the Nice Classification.19chanRoblesvirtualLawlibrary
WHEREFORE, for failure of the Opposer to comply with the provisions of Sections 7.1 and 7.3 of Office Order No. 79, series of 2005, this case is, as it is hereby MOTU PROPRIO DISMISSED. Accordingly, Application No. 20-2007-000009 filed on August 16, 2007 by KOLIN ELECTRONICS CO., INC., for the registration of the trademark "WWW.KOLIN.PH" for "Class 35" as it is, hereby GIVEN DUE COURSE.Taiwan Kolin moved for reconsideration41 of the BLA's July 16, 2008 Order, attaching thereto most of the originals and/or certified true copies of its documentary exhibits and alleging that its subsequent submission constitutes substantial compliance.42 The BLA denied the motion in its April 23, 2009 Resolution.43chanRoblesvirtualLawlibrary
Let the filewrapper subject matter of the above-captioned case be forwarded to the Bureau of Trademarks (BOT) for appropriate action in accordance with this Order with a copy thereof to be furnished the Publication Division for information and to update its records.
SO ORDERED.40chanRoblesvirtualLawlibrary
WHEREFORE, premises considered, the instant appeal is hereby DISMISSED. Let a copy of this Decision and the records be furnished and returned to the Director of the Bureau of Legal Affairs for appropriate action. Further, let also the Director of the Bureau of Trademarks and library of the Documentation, Information and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance, and records purposes.In so ruling, the IPO Director General opined that the BLA correctly dismissed Taiwan Kolin's Opposition in view of its failure to attach the original documents, as required under the Inter Partes Regulations. The Director General stressed that the Inter Partes Regulations must be followed since these are indispensable to the prevention of needless delays and the orderly and speedy discharge of business, and may be relaxed only for the most persuasive of reasons, such as to relieve a litigant of an injustice not commensurate with the degree of his thoughtlessness in not complying with the procedure described.49chanRoblesvirtualLawlibrary
SO ORDERED.48chanRoblesvirtualLawlibrary
WHEREFORE, both Petitions for Review under Rule 43 are DENIED. The Decision dated November 23, 2011, issued by Ricardo R. Blancaflor, Director General of the Intellectual Property Office (IPO), in Appeal No. 14-09-40, entitled, Taiwan Kolin Corp., Ltd. represented by herein Kolin Philippines International, Inc. vs. Kolin Electronics Co., Inc., is hereby AFFIRMED.In so ruling, the CA reiterated that the Inter Partes Regulations require the submission of the originals or certified true copies of the supporting documents upon the filing of the Opposition. It observed that Taiwan Kolin's subsequent submission of most of the originals and/or certified true copies of its documentary exhibits in its motion for reconsideration with the BLA does not constitute substantial compliance with the Inter Partes Regulations. Moreover, the circumstances do not warrant the relaxation of the Inter Partes Regulations in favor of Taiwan Kolin.54chanRoblesvirtualLawlibrary
SO ORDERED.53chanRoblesvirtualLawlibrary
Taiwan Kolin's opposition was properly dismissed by the BLA. While the Inter Partes Regulations may be relaxed for meritorious cases and for compelling reasons, the relaxation of the rules is not warranted in the case at bench. |
Section 7.1. The petition or opposition, together with the affidavits of witnesses and originals of the documents and other requirements, shall be filed with the Bureau, provided, that in case of public documents, certified copies shall be allowed in lieu of originals. The Bureau shall check if the petition or opposition is in due form as provided in the Regulations particularly Rule 3, Section 3; Rule 4, Section 2; Rule 5, Section 3; Rule 6, Section 9; Rule 7, Sections 3 and 5; Rule 8, Sections 3 and 4. For petition for cancellation of layout design (topography of integrated circuits), Rule 3, Section 3 applies as to the form and requirements. The affidavits, documents and other evidence shall be marked consecutively as "Exhibits" beginning with the letter "A".It is undisputed that Taiwan Kolin failed to attach the originals or certified true copies of the supporting documents to its Opposition, which is required by the Inter Partes Regulations. The BLA was therefore correct in dismissing the opposition outright.
x x x x
Section 7.3. If the petition or opposition is in the required form and complies with the requirements including the certification of non-forum shopping, the Bureau shall docket the same by assigning the Inter Partes Case Number. Otherwise, the case shall be dismissed outright without prejudice. A second dismissal of this nature shall be with prejudice. (Emphasis supplied)
First, TKCL's claim that its non-compliance with the Regulations[] was due to the fact that it had two Opposition cases and was confused as to which case the original documents should be submitted to, can hardly be considered a justifiable and compelling reason. If the Opposition against Class 35 TM Application (MNO 2008-065) for the use of "www.kolin.ph," were that important, TKCL should have at least submitted with the BLA-IPO even just a signed original or certified true copy of the documents in its Opposition. TKCL could have indicated in the other Opposition case, MNO 2008-064, that the originals were submitted in Opposition case, MNO 2008-065, and thereafter made a reservation for its belated filing. But it neglected to do so.Indeed, the relaxation of procedural rules in the interest of justice was never intended to be a license for erring litigants to violate the rules with impunity. It applies only to proper cases of demonstrable merit and under justifiable causes and circumstances, none of which are present in this case.82chanRoblesvirtualLawlibrary
Second, TKCL's admission that it made a reasonable attempt in complying with the Regulations, and failed only in "adequately informing this Honorable Office of the availability of original exhibits...," clearly reveals that the documents in original form were already at its disposal. Yet, it never bothered to attach the same to its Opposition, and held on to its erroneous interpretation of the Regulations.
Third, TKCL's claim that it had difficulty in securing the "original copies of its documentary exhibits" since the same were kept in its principal address located in Taipei, Taiwan and that it failed "through inadvertence...to indicate in both verified oppositions that 'original copies are available for immediate submission or comparison at the proper time,'" are all but weak excuses. To be sure, records show that despite being given ample time of 120 days reckoned from the time of the subject mark's publication to file its Opposition, TKCL still failed to exert diligent efforts to obtain the original documents. Worse, it never attempted to secure even just certified true copies of said documents. This attitude cannot in any way justify the relaxation of the Regulations.81 (Emphasis supplied)
KECI has the right to register and use the mark "www.kolin.ph". |
The Internet is a decentralized computer network linked together through routers and communications protocols that enable anyone connected to it to communicate with others likewise connected, regardless of physical location. Users of the Internet have a wide variety of communication methods available to them and a tremendous wealth of information that they may access. The growing popularity of the Net has been driven in large part by the World Wide Web, i.e., a system that facilitates use of the Net by sorting through the great mass of information available on it. Advertising on the Net and cybershopping are turning the Internet into a commercial marketplace.90chanRoblesvirtualLawlibraryIn W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc.,91 the Court, cognizant of the increasingly prominent role of the internet in modem commerce, held that the use of a registered mark representing the owners goods or services by means of an interactive website may constitute proof of actual use that is sufficient to maintain the registration of the same, viz:
Cognizant of this current state of affairs, the Court therefore agrees with the IPO DG, as affirmed by the CA, that the use of a registered mark representing the owner's goods or services by means of an interactive website may constitute proof of actual use that is sufficient to maintain the registration of the same. Since the internet has turned the world into one vast marketplace, the owner of a registered mark is clearly entitled to generate and further strengthen his commercial goodwill by actively marketing and commercially transacting his wares or services throughout multiple platforms on the internet. The facilities and avenues present in the internet are, in fact, more prominent nowadays as they conveniently cater to the modern-day consumer who desires to procure goods or services at any place and at any time, through the simple click of a mouse, or the tap of a screen. Multitudinous commercial transactions are accessed, brokered, and consummated everyday over websites. These websites carry the mark which represents the goods or services sought to be transacted. For the owner, he intentionally exhibits his mark to attract the customers' interest in his goods or services. The mark displayed over the website no less serves its functions of indicating the goods or services' origin and symbolizing the owner's goodwill than a mark displayed in the physical market. Therefore, there is no less premium to recognize actual use of marks through websites than their actual use through traditional means. Indeed, as our world evolves, so too should our appreciation of the law. Legal interpretation — as it largely affects the lives of people in the here and now — never happens in a vacuum. As such, it should not be stagnant but dynamic; it should not be ensnared in the obsolete but rather, sensitive to surrounding social realities.92 (Emphasis and underscoring supplied)The industry for electronic equipment is no stranger to this phenomenon. Indeed, consumers nowadays can readily access information on electronic equipment and apparatus and easily and conveniently purchase electronic equipment online through the simple click of a mouse or the tap of a screen. An enterprise which seeks to establish its presence in the online marketplace and sell its products therein may do so by developing its own website, which has a corresponding domain name - an identifier analogous to a telephone number or street address.93 In turn, the modern day consumer frequently expects that a website consisting of or encompassing a trademark used in the physical market is sponsored by or associated with the owner of that trademark, and readily use domain names as an indicator of the source or origin of the goods, i.e., a means of finding goods and services from a preferred source.94chanRoblesvirtualLawlibrary
The applicant must identify the goods and services specifically to provide public notice and to enable the USPTO to classify the goods and services properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d) x x x USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods and/or services covered by the mark. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541 (Fed. Cir. 2007).97 (Emphasis supplied)In this respect, We find the description of the services in KECI's application, i.e., for use on the business of manufacturing, importing, assembling or selling electronic equipment or apparatus,98 of sufficient particularity to accomplish the aforestated objectives. It is worthy to highlight that the Bureau of Trademarks found the description of services in KECI's application to be sufficient,99 since the application was published in the e-Gazette on January 11, 2007. The publication of a trademark application in the IPO e-Gazette means that the trademark application has undergone stringent examination by the examiner-in-charge who assessed the applicant entitled to have its mark registered.100 Neither did the BLA nor the IPO Director General find anything objectionable on the description of the services in the application. The Bureau of Trademarks, as the office tasked by law to examine applications for the registration of marks, issuance of the certificates of registration, and to decide oppositions to the application for registration of marks,101 it is clearly equipped with the necessary expertise to examine the trademark application. As such, its findings on the sufficiency of the description of goods and services in the application should be accorded respect.
While the protection afforded to a registered trademark extends to market areas that are the normal potential expansion of its business, such protection must not infringe on the rights of another trademark owner with a registered mark in its favor. |
KECI's rights from its existing trademark registrations for "KOLIN" do extend to product and market areas that are the normal potential expansion of its business, and goods and services and those in respect of which the trademark is registered where such use would result in a likelihood of confusion. Section 147 of the IP Code provides that the owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered, where such would result in a likelihood of confusion.106chanRoblesvirtualLawlibrary
KECI's Subject Application KECI's related registration103 Taiwan Kolin's Registration for water dispensers104 Taiwan Kolin's registration under Class 11105 Marks www.kolin.ph KOLIN KOLIN KOLIN Application No. 4-2007-100009 4-2007-005421 4-2002-011004 4-2002-011001 Filing Date August 16, 2007 May 29, 2007 December 27, 2002 December 27, 2002 Current Status Pending Registered Removed from register for non-filing of 5th DAU (re-registered under TM application 4/2014/8596 filed on July 10, 2014) Registered Class Covered 35 35, 40 21 11 Goods or Services Covered Services:
Business of
manufacturing, importing, assembling or selling electronic equipment or apparatus
cralawlawlibrary
Services:Business of
manufacturing, importing, assembling or selling electronic equipment or apparatus Goods:Water dispensers Goods:Airconditioners,
refrigerators, electric fans, window type airconditioners, package type airconditioners, ceiling mounted airconditioners, split type airconditioners, dehumidifier, washing machines, refrigerators, show case refrigerators, chest type freezers, upright freezers, beverage coolers, water chillers, household electric fans, industrial electric fans, rice cooker, stew cooker, microwave ovens, gas stoves, gas range, dish dryer, oven toaster, dishwashing machine, bottle sterilizer, electric air pot, water heater, grillers and roasters, coffee and tea makers, turbo broiler, juicemaker,
blender, and other electrical appliances
Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties, but extends to all cases in which the use by a junior appropriator of a trademark or trade-name is likely to lead to a confusion of source, as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field (see 148 ALR 56, et seq.; 53 Am. Jur. 576) or is in any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his business (v. 148 ALR 77, 84; 52 Am. Jur. 576, 577).109chanRoblesvirtualLawlibraryThe abovestated principles in Dermaline and Big Mak remain to be good law. Nevertheless, the said rulings did not contemplate the exceptional situation where there may be existing marks owned by another proprietor that could potentially be infringed should the registered trademark owner be afforded blanket protection in product and market areas that are the normal potential expansion of its business. In such a case, and prior to the cancellation in the proper proceeding of any of the concerned registrations, We so hold that the protection afforded to a trademark with regard to goods and services in market areas that are the normal potential expansion of the trademark owner's business must not infringe on the rights of another trademark owner with a registered mark in its favor.
Endnotes:
* Designated as additional Member per November 15, 2021 raffle vice J. Inting who recused himself; his sister, J. Socorro B. Inting, had prior participation in the Court of Appeals.
1 Ecole de Cuisine Manille, Inc. v. Renaud Cointreau & Cie, 710 Phil. 305-316 (2013), citing Mirpuri v. Court of Appeals, 376 Phil. 628 (1999).
2 A domain name is defined as a unique address of a computer on the internet, made up of three parts: (1) name of the entity, followed by (2) type of the entity, followed by, if located outside the US, (3) entity's geographical location. Domain names provide an easy way to remember internet address which is translated into its numeric address (IP address) by the domain name system. Each website has a domain name that serves as an address, which is used to access the website (W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide. Inc., 822 Phil. 23 (2017), citing <https://techterms.com/domain name> In general, a domain name is comprised of a second-level domain, a "dot," and a top-level domain. The wording to the left of the "dot" is the second-level domain, and the wording to the right of the "dot" is the TLD. (TMEP, SECTION 121 5.01.) For example, in the domain name "www.kolin.ph", "KOLIN" is a second-level domain while the "com" is a top-level domain.
A specific web site is most easily located by using its domain name. Upon entering a domain name into the web browser, the corresponding web site will quickly appear on the computer screen. Sometimes, however, a Web surfer will not know the domain name of the site he is looking for, whereupon he has two principal options: trying to guess the domain name, by typing the company name or trademark followed by a ".com" or some other top level domain, or seeking the assistance of an Internet "search engine.", which look for keywords in places such as domain names, actual text on the web page, and metatags. (Brookfield Communications, Inc. v. West Coast Entertainment Corporation, 174 F.3d 1036, 1044 (9th Cir. 1999). See also Intermatic Inc. v. Toeppen, 40 U.S.P.Q.2d (BNA) 1412 (N.D. Ill. 1996).
3 See Dal, Jon. Alternative Dispute Resolution Proceeding Case No. DSE2017-0038. Accessible at <https://www.wipo.int/amc/en/domains/decisions/text/2017/dse2017-0038.html> Last Accessed on November 30, 2021.
4 Id.
5 Negre, Ferdinand M. Trademark Law in a Knotshell: From Caves to Cyberspace, 46 Ateneo L.J. 465, 486-487. Accessible at <http://www.ateneolawjournal.com/Media/uploads/0de8b3ac08e90d27e455f172146a8617.pdf> or <http://www.iplaw.ph/ip-views/Trademark-Law-From-Caves-to-cyberspace.html> Last Accessed on November 30, 2021.
6 Republic Act No. 8293, or the Intellectual Property Code of the Philippines, as amended. Approved on June 6, 1997.
7 Supra note 3.
8 Rollo (G.R. No. 221347), pp. 11-37; Rollo (G.R. Nos. 221360-61), pp. 33-63.
9 Rollo (G.R. No. 221347), pp. 39-58. Penned by Associate Justice Noel G. Tijam (now a retired Member of this Court) and concurred in by Associate Justice Mario V. Lopez (now a Member of this Court) and Associate Justice Myra V. Garcia-Fernandez.
10 Id. at 60-63.
11 CA rollo (SP No. 122566), p. 244.
12 Rollo (G.R. No. 221347), p. 41.
13 Id. at 40-41.
14 Id. at 64. KECI's registration for Class 9 covers the following: automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified ACDC.
15 Id at 40 and 65. KECI's registration for Class 35 is for the business of manufacturing, importing, assembling or selling electronic equipment or apparatus. Based on a perusal of the Philippine Trademark Database, KECI's registration for Nice Classification 35 has since been modified to cover Nice Classes 35 and 40. KECI's Certificate of Registration No. 4-2007-005421 has been renewed until December 22, 2028 and includes both Nice Classifications. The Philippine Trademark Database may be accessed in <https://www3.wipo.int/branddb/ph/en/>.
16 Id. at 40.
17 Id.
18 Id.
19 The Philippine Trademark Database indicates that Taiwan Kolin's registration for goods and services under Nice Class 11 (airconditioners, refrigerators, electric fans, window type airconditioners, package type airconditioners, ceiling mounted airconditioners, split type airconditioners, dehumidifier, washing machines, refrigerators, show case refrigerators, chest type freezers, upright freezers, beverage coolers, water chillers, household electric fans, industrial electric fans, rice cooker, stew cooker, microwave ovens, gas stoves, gas range, dish dryer, oven toaster, dishwashing machine, bottle sterilizer, electric air pot, water heater, grillers and roasters, coffee and tea makers, turbo broiler, juicemaker, blender, and other electrical appliances) was registered on October 11, 2017 under Certificate of Registration No. 11001 and shall be valid until October 11, 2027. Taiwan Kolin's registration for water dispensers under Class 21 was registered on December 17, 2019 under Certificate of Registration No. 8596 and shall be valid under December 17, 2029. The Philippine Trademark Database may be accessed in <https://www3.wipo.int/branddb/ph/en/>.
20 CA rollo, (S.P. No. 122566), p. 241.
21 Rollo (G.R. No. 221347), p. 40.
22 Id.
23 Id. at 41.
24 Id.
25 CA rollo, (S.P. No. 122574), p. 882.
26 Rollo, (G.R. No. 221347), pp. 89-113.
27 Id. at 114.
28 757 Phil. 326-346 (2015).
29 Id. at 335.
30 Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., G.R. No. 228165, February 9, 2021.
31 Id.
32 Id. at 41 and 65.
33 Id. at 41.
34 Id. at 115.
35 CA rollo (S.P. No. 122574), p. 101.
36 Rollo, (G.R. No. 221347), pp. 119-120.
37 Id. at 115-116.
38 Id. at 115-116.
39 Id.
40 Id. at 116.
41 CA rollo, (S.P. No. 122574), p. 117.
42 Rollo, (G.R. No. 221347), p. 42.
43 CA rollo (S.P. No. 122574), p. 155.
44 Id. at 158-189.
45 Id.
46 Id. at 169-188.
47 Rollo (G .R. No. 221347), pp. 118-125.
48 Id. at 125.
49 Id. at 123-124.
50 Id. at 124.
51 Id. at 125.
52 Id. at 39-58.
53 Id. at 58.
54 Id. at 39-58.
55 Id. at 46-56.
56 Id. at 56-57.
57 Id. at 61.
58 Id. at 60-63.
59 Supra note 8.
60 Rollo (G.R. No. 221347), p. 26.
61 Id. at 443-451, 455-456.
62 Rollo (G.R. Nos. 221360-61), pp. 417-427.
63 642 Phil. 503 (2010).
64 Rollo (G.R. Nos. 221360-61), pp. 418-424.
65 Id. at 43-47.
66 Id. at 49-52.
67 Id. at 53-54.
68 Id. at 55-57.
69 Id. at 58-61 and 470-475.
70 Rollo (G.R. No. 221347), pp. 396-411.
71 Id. at 18.
72 Rollo (G.R. No. 221347), p. 400.
73 GMA Network, Inc. v. National Telecommunications Commission, 818 Phil. 167, 183-184 (2017), citing Eastern Telecommunications Philippines, Inc. v. International Communication Corporation, 516 Phil. 518, 521 (2006).
74 Section 10 of the IP Code provides:
chanroblesvirtuallawlibrarySec. 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall have the following functions:75 Birkenstock Orthopaedie GmbH and Co. KG v. Phil. Shoe Expo Marketing Corp., 721 Phil. 867, 875-876 (2013).
10.1. Hear and decide opposition to the application for registration of marks; cancellation of trademarks; subject to the provisions of Section 64, cancellation of patents, utility models, and industrial designs; and petitions for compulsory licensing of patents;
x x x x
10.3. The Director General may by Regulations establish the procedure to govern the implementation of this Section.
76 Section 5 of the Inter Partes Regulations.
77 Building Care Corporation v. Macaraeg, 700 Phil. 749, 755 (2012), citing Daikoku Electronics Phils., Inc. v. Raza, G.R. No. 181688, June 5, 2009, 588 SCRA 788 at 795.
78 Id.
79 Asian Spirit Airlines (Airline Employees Cooperative) v. Spouses Bautista, 491 Phil. 476, 483-484 (2005), citing Galang v. Court of Appeals, 199 SCRA 683, 689 (1997).
80 See id. at 484-485.
81 Rollo (G.R.. No. 221347), pp. 51-52.
82 See Ramirez v. Court of Appeals, 622 Phil. 782, 798 (2009).
83 Section 7 of the Inter Partes Regulations, as amended by Office Order No. 68, reads:
chanroblesvirtuallawlibrarySection 7. Filing Requirements for Opposition and Petition
x x x x(c) For the purpose of the filing of the opposition, the opposer may attach, in lieu of the originals or certified copies, photocopies of the documents mentioned in the immediately preceding paragraph, as well as photographs of the object evidence, subject to the presentation or submission of the originals and/or certified true copies thereof under Sections 13 and 14 of this Rule. [as amended by Office Order No. 68 (2014)]84 The Court of Appeals' July 31, 2006 Decision in C.A.-G.R. SP No. 80641 at Rollo (G.R. No. 221347), pp. 89-113. Under RA 166, ownership of a tradename is acquired through prior use in commerce.
85 Section 236 of the IP Code reads:
chanroblesvirtuallawlibrarySection 236. Nothing herein shall adversely affect the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act.86 Section 138 of the IP Code reads:
chanroblesvirtuallawlibrarySECTION 138. Certificates of Registration. — A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.87 Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, September 8, 2020, citations omitted.
88 Rollo (G.R. No. 221347), p. 41.
89 Supra note 1.
90 Id. at 649, citing Maureen O'Rourke, Fencing Cyberspace: Drawing Borders in a Virtual World, Minnesota Law Review, vol. 82: 609-611, 615-618 [Feb. 1998].
91 Supra note 2.
92 Id. at 42.
93 Supra note 2.
94 W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., supra note 2, at 42.
95 Supra note 5.
96 Rule 417 of the IRR of the IP Code reads:
chanroblesvirtuallawlibraryRule 417. Broad terms.- In any application, the use of broad terms in identifying the goods, business or services shall be unacceptable. Applicants whose application are based on foreign registration shall be required to specify the goods covered by such foreign registration in all cases where the foreign registration used broad terms in identifying the goods, business or services.97 Trademark Manual of Examining Procedure, Section 1402.1.
98 Rollo (G.R. No. 221437), p. 118.
99 Id. at 118-125.
100 Rule 700, as amended by Office Order no. 34, s. 2004 reads:Rule 700. Publication in the IPO Gazette; end of jurisdiction of the Examiner. - An application for registration is subject to opposition proceeding before issuance of the certificate of registration. Thus, after examination or re-examination of an application for registration, if it should appear to the Examiner in charge of the examination thereof that the applicant is entitled to have his mark registered, the mark will, upon the recommendation of said Examination, be ordered by the Director to be published in the IPO Gazette for opposition, and the applicant notified of such action.The applicant shall, within two (2) months from mailing date of such notice, pay the corresponding fee for the publication of the application in the IPO Gazette; otherwise, the application shall be declared abandoned. The abandoned application, however, may be revived subject to the requirement of these Regulations. (Emphasis and underscoring supplied)101 Sec. 9, 7, and 10 of the IP Code provides:
chanroblesvirtuallawlibrarySec. 9. The Bureau of Trademarks.- The Bureau of Trademarks shall have the following functions:102 Rollo (G.R. No. 221347), p. 22.
x x x 9.1. Search and examination of the applications for the registration of marks, geographic indications and other marks of ownership and the issuance of certificates of registration;
Sec. 7. The Director General and Deputies Director General. - 7.1. Functions - xxxx b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs xxx
Sec. 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall have the following functions: 10.1. Hear and decide opposition to the application for registration of marks; cancellation of trademarks, subject to the provisions of Section 64, cancellation of patents, utility models, and industrial designs; and petitions for compulsory licensing of patents; x x x.
103 Supra note 15.
104 Rollo (G.R. No. 221347), pp. 279-280. See the Philippine Trademark Database, <http://www.wipo.int/branddb/ph/en/>.
105 See the Philippine Trademark Database, <http://www.wipo.int/branddb/ph/en/>.
106 Sec. 147. Rights Conferred. —147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided,That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use.107 Supra note 63 at 514-515.
108 480 Phil. 402 (2004).
109 Id. at 432, citing Sta. Ana v. Maliwat, 133 Phil. 1006 (1968).
110 Supra note 30.
111 Section 151 of the IP Code reads:
chanroblesvirtuallawlibrarySECTION 151. Cancellation. - 151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the registration of the mark under this Act. (b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods and services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. (c) At any time, if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer.151.2. Notwithstanding the foregoing provisions, the court of the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance with this Act. The filing of a suit to enforce the registered mark with the proper court or agency shall exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided (Emphasis supplied)112 See Shangri-la International Hotel Management Ltd. v. Court of Appeals, 411 Phil. 802, 809 (2001).cralawredlibrary