••• ~INTElLECTUAL PROPERTY OFFICEOFTHE PHIUPPINES

SUYEN CORPORATION, } IPC No. 14-2018-00506 Opposer, } Opposition to:

} Appln . Serial No. 4-2017-001861 } Date Filed: 20 November 2017 } TM : "B GENTLE" }

-versus­ } } } } }

BONIFACIO MARTIN T. SANCHEZ, } doing business with INFADULTS } HEALTHCARE PRODUCTS, }

Respondent-Applicant. }

)(------_...._-------------------------------------------------------)(

NOTICE OF DECISION

MIGALLOS & LUNA LAW OFFICES Counsel for Opposer t h Floor The PHINMA Plaza 39 Plaza Drive , Rockwell Center Makati City

BONIFACIO MARTIN T. SANCHEZ (doing business with INFADULTS HEALTHCARE PRODUCTS) Respondent-Applicant 2nd Floor L & L Bldg., Panay Avenue corner EDSA Brgy. South Triangle, Quezon City

GREETINGS:

Please be informed that Decision No. 2019 -~ dated 28 June 2019 (copy enclosed) was promulgated in the above entitled case .

Pursuant to Section 2, Rule 9 of the IPOPH L Memorandum Circular No. 16-007 ser ies of 2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees.

Taguig City, 28 June 2019 .

(\1~ : A'" ko_~ Atty. MA~~~A. ISABEDRA IPRS IV, Bureau of Legal Affairs

• vvww.ipo ph il.gov.ph o Intellec tual Property Cente r 1128 Upp er Mc Kinl ey Road

e mail@ipophil.gov.ph McKinley Hill Town Cente ro +632- 2386300 For t Bonifacio, Taguig City

+632-5539480 1634 Philippines

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

SUYEN CORPORATION, } IPC NO. 14-2018-00506 Opposer, }

} Opposition to: -versus- } App. Ser. No. 4-2017-001861

} Date Filed: 20 November 2017 BONIFACIO MARTIN T. SANCHEZ, } TM:B GENTLE doing business with INFADULTS } HEALTHCARE PRODUCTS, }

Respondent-Applicant. } x-----------------------------------------------------------x Decision No. 2019- gO

DECISION

SUYEN CORPORATIONl ("Opposer"), filed an opposition to Trademark Application Serial No. 4-2017-001861. The application filed by BONIFACIO MARTIN T. SANCHEZ - doing business with INFADULTS HEALTHCARE PRODUCTS2 ("Respondent-Applicant"), covers the mark "B GENTLE" for use on "body washes; baby shampoo" under Class 03 and"ointment for treating nappy rash (medicated)" under Class 05 of the International Classification of Goods.'

The Opposer alleges the following grounds:

II A. Opposer will be damaged by the registration of the mark B' GENTLE covered by Respondent-Applicant's application. The said mark is confusingly similar with Opposer's B LOGO trademarks and the associated Bench trademarks. The registration of Respondent-Applicant's B GENTLE mark will mislead the public into believing that the goods covered by the said mark originate from, are associated with, and/or are under the sponsorship of Opposer.

"B. The B' GENTLE mark of Respondent-Applicant may and will be used as an instrument of unfair competition.

Opposer's evidence consists of the following:

1. Affidavit of Mr. Dale Gerald G. Dela Cruz;

I A domest ic corporation with address at Bench Tower, 30th St ., Comer Rizal Drive, Crescent Park West 5. Bonifacio Global City, Taguig City

2 A Filipin o with address at 2nd FIr. L & L Bldg. , Panay Ave. cor. EDSA, Brgy. South Triangle, Quezon City ' The Nice C lass ification is a classification of goods and services for the purpose of registering trademarks and service marks based on a mult ilateral treaty admin istered by the World Intellectual Property Organization. Th is treaty is called the Nice Agreement Concerning the International Classification of Goods and Serv ices for the Purposes of Registrat ion of Marks concluded in 1957.

® www.ipo phil.gov.ph o Intellectual Prop er ty Center e mail@ipophil.gov.ph #28 Upper McKinle Road

Mckinley Hill Town Center() +632-2386300

Fort Bonifac io. Taguig City +632-5539480 1634 Philippines

~r ~(-.... .... -- ..... ~~~1.t'.-, - I .... _

2. Images of various BENCH products taken from the official website of Suyen, http://shop.bench.com.ph/;

3, List of the local BENCH Trademarks that are registered, and pending registration, with the IPOPHL; 3. List of the BENCH Trademarks that are registered and pending registration

abroad; 4. Photographs of the various products of Suyen bearing the BENCH

Trademarks; 5. Printouts of Suyen's webpages featuring the BENCH Trademarks; 6. Copies of the Bench Care Catalogue showing the various products bearing

the BENCH Trademarks; 7. Certified true copies of the certificates of registration of the B LOGO

trademarks with Registration Nos. 4-2012-009890, 4-2012-009891, 4-2017­011830,4-2017-016831,4-2017-016848 and 4-2017-016847;

8. Copies of the certificates of registration of the B LOGO trademarks with Registration Nos. 4-2018-001512 and 4-2018-001510;

9. Copies of the applications for registration of B LOGO trademarks with Application Nos. 4-2017-011832 and 4-20180154;

10. Original photographs of the billboards carrying BENCH advertisements which display the B LOGO Trademarks alongside BENCH products;

11. Photographs taken during some of the events organized by Suyen for its BENCH products which show the B LOGO trademarks;

12. Printouts of online articles featuring celebrities Kathryn Bernardo and Daniel Padilla in the recently held 30th anniversary fashion show of Bench, "Under the Stars";

13. Scanned copies of some of the newspaper advertisements made by Suyen for its products bearing the B LOGO trademarks;

14. Printouts of the digital copies of Suyen's promotional materials showing the B LOGO trademarks;

15. Original photographs of the standees and posters of Suyen in their BENCH stores bearing the B LOGO trademarks;

16. Photographs of Suyen's products as they are sold in the market incorporating the B LOGO trademarks on its products or packaging;

17. Screenshots of Suyen's social media pages displaying the B LOGO trademarks; and

18. Printouts of relevant pages of www.shop.bench.com.ph using the B LOGO trademarks.

This Bureau issued on 18 January 2019 a Notice to Answer and personally served a copy thereof upon the Respondent-Applicant on 29 January 2019. Despite the receipt of Notice, Respondent-Applicant did not file the answer. On 24 May 2019, an order was issued declaring Respondent-Applicant in default for failure to file the answer. Accordingly, the case is deemed submitted for decision on the basis of the opposition, the affidavits of witnesses, if any, and the documentary evidence submitted by the Opposer.

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Should the Respondent-Applicant be allowed to register the mark H' GENTLE?

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others.' A trademark is an intellectual property deserving protection by law. In trademark controversies, each case must be scrutinized according to its peculiar circumstances, such that jurisprudential precedents should only be made to apply if they are specifically in points

Section 134 of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code"), as amended, provides:

Section 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application.

Records will show that at the time Respondent-Applicant filed its application for registration of its mark "B' GENTLE" on 20 November 2017, Opposer already has existing registration for its "B/" and "b/" marks issued way back in 2005. Opposer has also applied for registration of its "B LOGO" mark in 2012. As such, pursuant to Section 1386 of the IP Code, Opposer's certificate of registration is a prima facie evidence of the its ownership of the mark, and its exclusive right to use the same in connection with the goods or services specified in the certificate and those that are related thereto. And further, pursuant to Section 1477of the IP Code, it has a right to oppose the herein subject application for registration of Respondent­Applicant's "B' GENTLE" mark as it may stand to be damaged and prejudiced if and when it is determined that Respondent-Applicant's mark is confusingly similar to its bland B LOGO marks.

Corollary, Section 123.1 (d of the IP Code provides:

Section 123. Registrability. - 123.1. A mark cannot be registered if it:

xxx

, Prosource International, Inc. v. Horphag Research Management SA, G.R. No. 180073, November 25, 2009. 605 SCRA 523. 528; McDonalds Corporation v. MacJoy Fastfood Corporation, G.R. No. 166115. February 2.2007.514 SCRA 95, 107. $ Philip Morris. Inc. v. Fortune Tobacco Corporation. G.R. No. 158589, June 27, 2006, 493 SCRA 333. 356. 6 Section 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. 7 Section 147. Rights Conferred . - 147.1. The owner of a registered mark shall have the exclus ive 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 . ln 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.

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(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:

i. The same goods or services, or ii. Closely related goods or services, or iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion;

In determining the registrability of a mark, the most important element is the existence of resemblance (colorable imitation) of the subject mark to a mark already registered or which has priority rights, which would likely cause confusion, mistake or deception on the part of the public. Absent any finding of its existence, there can be no likelihood of confusion."

Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all the details be literally copied. Colorable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or trade name with that of the other mark or trade name in their over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article."

In Mighty Corporation v. E. & J Gallo Winery,10 the Court held that in determining the likelihood of confusion, the Court must consider: [a] the resemblance between the trademarks; [b] the similarity of the goods to which the trademarks are attached; [c] the likely effect on the purchaser and [d] the registrant's express or implied consent and other fair and equitable considerations.

The determinative factor in a contest involving trademark registration is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark will likely cause confusion or mistake on the part of the buying public. To constitute an infringement of an existing trademark, patent and warrant a denial of an application for registration, the law does not require that the competing trademarks must be so identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that the similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it.ll

Also, in determining similarity or dissimilarity, lithe practical approach is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of the prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed. Some such factors as "sound; appearance; form, style, shape, size or format; color; ideas

8 Seri Somboonsakdikul v. Orlane S.A., Gr. No. 188996. promulgated on 01 February 2017. 9 Emerald Garments Manufacturing Corporation vs, Court of Appeals, G.R. No . 100098. December 29,1995 10 G.R. No. 154342, July 14,2004,434 SCRA 473 . II G.R. No. L-26557. 18 Feb. 1970.

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connoted by marks; the meaning, spelling and pronunciation, of words used; and the setting in which the words appear" may be considered."12

The representative images of Opposer IS and Respondent-Applicant's marks culled from the filewrapper and IPOPHL Trademark Database are reproduced below:

b/ b/ SIMPLEPURE

Opposer's Mark

B'GENTLE Respondent-Applicant's Mark

A scrutiny of the marks of the parties would show that they are similar. Opposer's variance of its "B" marks consist of the letter "B II (upper case or lower case) succeeded by the slash symbol and combined with the word PURE, SIMPLE, BARE, and BODY. Its "B LOGO" mark consists of the image of a shaded black B. On the other hand, Respondent-Applicant's "B" also uses the letter "B" with apostrophe followed by the word "GENTLE". The use of Respondent-Applicant of the letter "B" would likely cause confusion or mistake on the public into believing that Respondent-Applicant's mark is another variegation of Opposer's B marks or that it is associated, affiliated or connected with Opposer. The use of the letter "B" in various goods has been associated with Opposer. Through various advertisement or promotional activities of Opposer, the public has identified the "B" trademarks of Opposer and other variants as a source indicator of the goods and services being offered by Opposer. As such, if Respondent-Applicant's mark will be allowed registration, the probability that consumers will likely get confused as to the source or origin of Respondent-Applicant's goods as coming from Opposer. Any information or impression that the public may have over Respondent-Applicant's goods bearing the B'GENTLE mark might be unfairly attributed to Opposer. Furthermore, the goods upon which Respondent-Applicant's mark is being applied for are goods that Opposer are already dealing with as Opposer also sells goods under Class 3 and 5 which will all the more add up to the likelihood of confusion.

12 Etepha v. Director of Patents, G.R. No. L-20635, 31 March 1966

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Thus, in McDonald 1s Corporation v. Mcloy Fastfood Corporation'>, the Court held:

When one applies for the registration of a trademark or label which is almost the same or very closely resembles one already used and registered by another, the application should be rejected and dismissed outright, even without any opposition on the part of the owner and user of a previously registered label or trademark, this is not only to avoid confusion on the part of the public, but also to protect an already used and registered trademark and an established goodwill.

Accordingly, this Bureau finds that the registration of Respondent-Applicant's "B' GENTLE" trademark is proscribed by Sec. 123.1 (d) of the IP Code.

WHEREFORE, premises considered, the instant opposition is hereby SUSTAINED. Let the filewrapper of Trademark Application Serial No. 4-2017­001861, together with a copy of this Decision, be returned to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

28 JUN 20\9Taguig City, _

MWV. ~~ Adjfdication offi~~--

Bureau of Legal Affairs

13 G.R. No. 166115. February 2, 2007, citing Faberge Inc. v. lAC, 35 citing Chuanchow Soy & Canning Co. v. Dir. of Patents and Villapanta

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