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INTELLECTUAL PROPERTY PHILIPPINES

HANGZHOU HUAYI AEROSOL } IPC NO. 14-2009-00030 CO., LTD., } Opposition to:

Opposer, } Application Serial No. } 4-2008-006578 } Trademark: BIG BIE PAl

-versus- } HUNDRED 100 AND DEVICE } Filing Date: June 5, 2008 }

CAl YAO HUANG, } Respondent-applicant, } Decision No. 2009- If.?;

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DECISION

For decision is the Notice of Opposition filed by Hangzhou Huayi Aerosol Co., Ltd., (hereinafter referred to as opposer), a corporation organized and existing under the laws of China, with address at Datong Village, Louta Town, Xiaoshan District, Hamgzhou, Zhejiang Province, P.R. China, against Application Serial No. 4-2008-006578 for the trademark BIG BIE PAl HUNDRED 100 AND DEVICE for goods under class 5, namely "preparations for killing and destroying pests, pesticides, moth proofers, insect repellents vermin destroying agents and insecticides" filed on June 5, 2008 by Cai Yao Huang, (hereinafter referred to as respondent-applicant), Chinese citizen, with R-602 Pines Tower Numacia St., Binondo, Manila.

Opposer filed the opposition based on the following grounds:

a. Section 123 (d) of the Intellectual Property Code (Republic Act 8293)- which states 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, 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;"

b. Section 123 (e) of the Intellectual Property Code (Republici,fr1-/...,A Act 8293) - which states that a mark cannot be registered if it: jVr /{/'. U

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Republic of the Philippines INTELLECTUAL PROPERTY OFFICE

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"(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;"

c. Section 123 (f) of the Intellectual Property Code (Republic Act 8293) - which states that a mark cannot be registered if it :

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well­known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the 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;"

d. Sections 3 and 160, et. Seq., of Republic Act 8293, which read:

Section 3. International Conventions and Reciprocity. - Any person who is a national or who is dorniciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act."

"Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. - Any foreign national or juridical person Wh~;I)

meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines under existing laws."

2. Opposer is the owner of the mark "100 HUNDRED & DEVICE", having used, registered and popularized the same in various countries of the world. In the Philippines, Opposer has filed an application for registration of the said mark on June 18, 2008.

3. Opposer have been using its marks in Phlippines for 4 years now, having first used and adopted the same as early as 2004. Opposer has first used the mark "100 HUNDRED & DEVICE" on Mar 152004.

4. Clearly, Opposer is the rightful owner of the mark "100 HUNDRED & DEVICE" having used, adopted and applied the same in the Phiilppines and registered on several countries in the world much earlier than Respondent.

5. Being the owner of the marks, Opposer has registered the same in various countries of the world, including Philippines, China.

6. Opposer has developed goodwill and reputation for its mark "100 HUNDRED & DEVICE" through extensive promotion, worldwide registration and use.

7. From the foregoing, it is apparent that Opposer's mark satisfies the criteria set by the Rules and Regulations Implementing RA 8297 to be considered as a well-known mark, entitled to protection under Section 123 (e) and (f) of R.A. 8293.

8. In presentation, general appearance and pronunciation, Respondent-Applicant's mark BIG BIE PAl HUNDRED 100 AND DEVICE and Opposer's "100 HUNDRED & DEVICE" are confusingly similar, and hence, will cause confusion among their prospective market, considering that the goods are similar or related belonging in the same class and sold in the same channels.

9. Considering the above circumstances, registration is proscribed by A.A. 8293 Section 123 (d).

1O. If allowed contrary to existing laws and jurisprudence, Respondent's use of the mark BIG BIE PAl HUNDRED 100 AND DEVICE, which is confusingly similar to Opposer's mark "100 HUNDRED & DEVICE", will indicate a connection between the / .•1 laller's goods and Ihose 01 Respondent's, and will likely mislead Ih~/'1

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buying public into believing that the goods of Respondent's are produced or originated from, or are under the sponsorship of Opposer, to the detriment and damage of Opposer's interests, considering the goods are the same and belong to the same class. Likewise, the use of Respondent of the mark BIG BIE PAl HUNDRED 100 AND DEVICE will diminish or demean or dilute the superior quality image and reputation of Opposer's mark and products characterized by high standards which Opposer has carefully built through its long use.

11. Opposer hereby alleges that the Respondent-Applicant's adoption of BIG BIE PAl HUNDRED 100 AND DEVICE trademark which is confusingly similar to that of Opposer's "100 HUNDRED & DEVICE" was clearly done with the illegal intent of riding on the popularity and goodwill of Opposer's quality-built reputation and will cause great and irreparable damage and injury to the Opposer.

12. Further, Respondent-Applicant is clearly in bad faith in so using and adopting the same trademark as that of Opposer's "100 HUNDRED & DEVICE", which Opposer has, because of its prior use and application, gained worldwide notoriety for said mark.

13. Attached to this Notice of Opposition are labels of Opposer's mark "100 HUNDRED & DEVICE".

14. Opposer reserves the right to present such other documents as may be necessary to prove its foregoing allegations, in the course of the proceedings.

Opposer submitted the following evidence, to wit:

EXHIBIT DESCRIPTION

"An Notice of Opposition

UB" Affidavit of Mr. Yu Shu Jin

"en Business License for Enterprise

"Dn Business License for Enterprise (former name of Opposer)

"E" Document in Chinese (No translation)

"F" Product Sales Contract

"G" Trademark Application form

"H" Trademark Registration in Chin~

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"I" Pictures of products

"J" Special Power of Attorney

In the Verified Answer filed on May 18, 2009, respondent-applicant raised the following defense, to wit:

"3. Squarely addressing the matters raised in the Verified Notice of Opposition, Respondent respectfully submits that:

One, he is the valid and legal owner of the trademark "BIG BIE PAl HUNDRED 100 AND DEVICE", having used it continuously in commerce in the Philippines for more than a decade. He is also the "first to file" for registration of the mark with the Intellectual Property Office (IPO);

Two, the Opposer's "100 HUNDRED & DEVICE" is not well­known; and

Three, "BIG BIE PAl HUNDRED 100 AND DEVICE" has acquired its own reputation as a trademark and is not riding on the alleged "goodwill" and "popularity" of the Opposer's mark.

FIRST, RESPONDENT HAS BEEN USING THE TRADEMARK "BIG BIE PAl HUNDRED 100 AND DEVICE" SINCE 1997. HE IS THE PRIOR ADOPTER, USER AND OWNER OF THE "BIG BIE PAl" MARK

4. Opposer's contention that it "is the rightful owner of the mark 100 HUNDRED & DEVICE having used, adopted and applied the same in the Philippines and registered on several countries in the world much earlier than Respondent" is an unsubstantiated allegation not supported by evidence.

5. On the other hand, Respondent has been exclusively selling his pesticide and insecticide products bearing the "BIG BIE PAl HUNDRED 100 AND DEVICE" mark to customers nationwide for the past twelve years. This sale has been continuous and uninterrupted. To the best of his knowledge, Respondent is not aware of any store or distribution network of the Opposer in the Philippines.

6. An Affidavit narrating Respondent's business origins and ~Jl dealings is hereto attached as Annex "2". I'f ;P1f'~

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7. As held by the Honorable Supreme Court in Shangri-la International Hotel Management, Ltd. et al vs. Developers Group of Companies, Inc.:

"x x x it is clear that actual use in commerce is also the test of ownership . x x x"

8. Clearly, being in business since 1997 and Respondent's exclusive and uninterrupted use of the BIG BIE PAl HUNDRED 100 AND DEVICE" mark from that time up to the present supports his ownership thereof. This time frame is sufficiently longer than the period being claimed by the Opposer ("having first used and adopted the same as early as 2004") for its alleged use of the mark in the Philippines.

SECOND, OPPOSER'S MARK IS NOT WELL-KNOWN BASED ON LAW AND JURISPRUDENCE

9. The crucial question Opposer needs to answer to validly defeat Respondent's trademark registration is this: Is the "100 HUNDRED & DEVICE" a well-known mark?

1O. Respondent respectfully submits it is not. It is very far from being a "well-known" either internationally or in the Philippines. Opposer's mark cannot in any sense be considered "well-known" by the standards set by law, jurisprudence and the established academic opinion of IP experts and practitioners.

11. Section 123, par. (e) provides that a mark cannot be registered if it:

"(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;"

12. Section 123.1, par (f) meanwhile provides that ~ . ,l a mark cannot be registered if it: / I/" ~

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(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well­known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the 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;"

13. In determining whether a mark is "well-known," reference in our jurisdiction is often made to Rule 102 of the Rules and Regulations Implementing Republic Act 8297, or the IP Code.

14. A mark is ''well-known'' if it is known to a large part of those involved in the production or trade or use of the goods concerned, and is clearly associated with such goods as coming from a particular source. The mark should be well-known in the aforementioned sense in the jurisdiction where protection is sought.

15. In the case of McDonald's Corporation vs. Joburger, the South African Supreme Court held that the term well-known should be tested by reference to whether sufficient people knew the mark well enough to entitle it to protection against deception or confusion.

16. Moreover, according to an intellectual property author, there are no particularly helpful definitions of a "well-known mark" in either Article 6bis of the Paris Convention or Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). Therefore, the interpretation of whether a trademark can be considered well-known is interpreted on an independent, national scale.

17. Based on all the above criteria, Is the Opposer's mark "well-known" in the Philippines, the jurisdiction where protection is sought? That is highly unlikely. Is the Opposer's mark "well-known" internationally? Apart from the bare and unsubstantiated allegations in its Verified Notice of Opposition, Opposer has not offered any evidence to prove that it has "popularized [100 HUNDRED & DEVICE]" in various countries of th~ world." General averments cannot act as substitute for sOlidY, ~ evidence. I, /" ~

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18. In fact, in today's much-connected and wired world ruled by the Internet, it is fairly easy to ascertain if a name or mark has attained a loosely "well-known" status. One just has to use a popular search engine to determine if a name or mark is quite "well­known." A Google search of "100 HUNDRED & DEVICE" yields no direct reference to the Opposer's mark. Respondent hereto attaches a printout of the first two pages a Google search result dated May 15,2009 as Annex "3".

19. Marks that have recently been upheld and recognized by the Intellectual Property Office to be "well-known" are Mercedes Benz's ''Three Pointed Star," the "GO" mark and the Greg Norman "Shark" logo. These are so "well-known" as to be household names. Surely, Opposer's "100 HUNDRED & DEVICE" does not belong to this hallowed group of internationally-recognized names and marks.

20. Even assuming that Opposer's mark has been "registered on (sic) several countries," such registration does not automatically make its mark "well-known." As held by the IPO in Price Costco International vs. Ferdinand Vicente Go:

'Worldwide registrations cannot vest a status of well-known mark. Alleged promotion and advertisements, and worldwide registrations do not directly show the duration, extent and geographical area covered by the same. While the mark may be famous, it failed to prove it is well-known." (emphasis supplied)

21. In Yale University vs. Edralyn Bornillio, the Bureau of Legal Affairs (BLA) found the disputed marks to be identical. However, the BLA rejected Yale's claim that its mark was internationally well­known for lack of evidence showing that Yale was well-known in terms of the knowledge of it by the relevant sector of the public around the world as well as in the Philippines.

22. All the above considered, Opposer's claim that it is within the ambit of Sections 123.1 paragraphs (e) and (f) of the Intellectual Property Code as a ''well-known'' mark is exposed to be baseless. Equally significant, "100 HUNDRED & DEVICE" by application of both Philippine and foreign case law on trademarks cannot by any stretch of the imagination be classified as "well-known."

23. Therefore, Opposer's contention that it should be afforded a better and preferred right over the Respondent's earlier registrati0jf;n is totally unwarranted. Law and jurisprudence does not support the ~

Opposer's position.

THIRD, RESPONDENT DOES NOT RIDE ON THE OPPOSER'S ALLEGED GOODWILL AND REPUTATION

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24. Opposer's claim that the registration of Respondent's "BIG BIE PAl HUNDRED 100 AND DEVICE" will "likely mislead the buying public x x x to the detriment of the Opposer's interests" and "will diminish or demean or dilute the superior quality image and reputation of Opposer's mark xxx characterized by high standards which Opposer carefully built through its long use" is a patently unwarranted conclusion bereft of any basis.

25 . It is highly debatable whether Opposer's mark enjoys a reputation in the Philippines. To Respondent's knowledge, Opposer's products are not even available in the country. Only the Respondent sells products with the mark "BIG BIE PAl HUNDRED 100 AND DEVICE" in the Philippines. Why will the Respondent ride on the alleged reputation of Opposer's mark when it was first to offer its products in the Philippines, having been in business since 1997? Opposer's claim is contrary to logic and experience.

26. Opposer has likewise not presented evidence to prove that it indeed enjoys a good reputation abroad and in other countries, apart from its bare and unsubstantiated allegations.

27. In sum, Opposer's position that Resondent's use of the "BIG BIE PAl HUNDRED 100 AND DEVICE" mark demeans its "superior quality image" cannot be sustained for lack of factual basis.

28. Lastly, Respondent is respectfully making a reservation to be able to present additional evidence and arguments in a Supplemental Answer if it so desires, with the kind permission of this Honorable Office.

Respondent-applicant submitted the following evidence, to wit:

ANNEX DESCRIPTION

"1 " Special Power of Attorney

"2" Affidavit of Cai Yao Huang

"3" Print -out of Google page

The Preliminary Conference was initially set on July 16, 2009 but no amicable settlement was obtained so the parties were directed to subm it their respective position papers.

The issue is whether the marks are confusingly similar and whether~1 opposer's mark 100 HUNDRED & DEVICE is well-known. F/~ ~

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The marks of the contending parties are reproduced below for comparison:

OPPOSER'S MARK RESPONDENT-APPLICANTS MARK

The Supreme Court determines the issue of confusing similarity by applying two tests. In Mighty Corporation and La Campana Fabrica de Tabaco, Inc. vs. E. & J. Gallo Winery and the Andresons Group, Inc., G.R. No. 154342. July 14, 2004, the Supreme Court explained:

"Jurisprudence has developed two tests in determining similarity and likelihood of confusion in trademark resemblance:

(a) the Dominancy Test applied in Asia Brewery, Inc. vs. Court of Appeals and other cases and

(b) the Holistic or Totality Test used in Del Monte Corporation vs. Court of Appeals and its preceding cases.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement. If the competing trademark contains the main, essential or dominant features of another, and confusion or deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers."

As can be seen, the marks of the parties contain the identical words HUNDRED 100 and are both encased in a device with the same shape. The only difference is that the respondent-applicant's mark contain the additional words BIG BIE PAl and a Chinese transliteration. By mere observation, it is unmistakably similar in their over-all visual appearance. The dominant part of the opposer's mark 100 HUNDRED was appropriated and the respondent-applicant added other details. lnspite of this, the marks of the parties still lookk~ the same. ~ f~

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Section 123.1 of Republic Act No. 8293, otherwise known as The Intellectual Property Code of the Philippines, which provides:

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

(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;"

The Supreme Court in Societe des Produits Nestle v. Court of Appeals, G.R. No. 112012, explains:

"Differences there will always be, but whatever differences exist, these pale into insignificance in the face of an evident similarity in the dominant feature and overall appearance of the labels of the parties.

"It is not necessary, to constitute trademark 'infringement', that every word of a trade-mark should be appropriated, but it is sufficient that enough be taken to deceive the public in the purchase of a protected article." (Bunte Bros. v. Standard Chocolates, D.C. Mass., 45 F. Supp. 478, 481).

III Infringement' of trade-mark does not depend on the use of identical words, nor on the question whether they are so similar that a person looking at one would be deceived into the belief that it was the other, it being sufficient if one mark is so like another in form, spelling, or sound that one with not a very definite or clear recollection as to the real mark is likely to be confused or misled." (Northam Warren Corporation v. Universal Cosmetic C., C. C. AliI., 18 F. 2d 714, 775). (Philippine Nut Industry, Inc. vs. Standard Brands Incorporated, 65 SCRA 575)

Filewrapper shows that respondent applicant applied for the mark BIG BIE PAl HUNDRED 100 & DEVICE in June 5, 2008 while opposer filed a trademark application for the mark 100 HUNDRED & DEVICE in June 18, 2008 (Exhibit "G") or thirteen days later. Both parties applied the marks on the same goods under class 5, namely: "preparation for killing and destroying pests pesticides, moth proofers, insect repellants, vermin destroying agents, and insecticides. Although respondent-applicant filed an application for the mark at an earlier date, opposer was able to prove that it is the true owner ~ and prior adopter of the 100 HUNDRED mark applied on goods under class 5hfiL

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In Shangri-la International Hotel Management, Ltd. V. Developers Group of Companies, Inc. (G.R. No. 159938. March 31, 2006.), the Court held:

"By itself, registration is not a mode of acquiring ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for registration of the same. xxx

As correctly observed by the petitioners, to which we are in full accord:

. . . When a trademark copycat adopts the word portion of another's trademark as his own, there may still be some doubt that the adoption is intentional. But if he copies not only the word but also the word 's exact font and lettering style and in addition, he copies also the logo portion of the trademark, the slightest doubt vanishes. It is then replaced by the certainty that the adoption was deliberate, malicious and in bad faith.

Opposer submitted evidence of registration of its mark in China (Exhibit "H") and prior use of the mark in the Philippines. Opposer presented the Affidavit of Mr. Yu Shu Jin (Exhibit "B") who attested that the mark was used in the Philippines in 2004, A Product Sales Contract dated March 15, 2004 (Exhibit "F") indicating goods named 100 HUNDRED was submitted to prove that opposer sold its products in the Philippines.

As to whether the mark 100 HUNDRED & DEVICE is well-known, Section 123 of the Intellectual Property Code of the Philippines (Republic Act No. 8293, hereafter "IP Code") provides:

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

x x x

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, that in determining whether a mark is well known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledqe in the Philippines which has been obtained as a result of the promotion of the mark; x x x"

The mark 100 HUNDRED & DEVICE have not acquired well-known~~ status. There is insufficient evidence of the amount of sales and promotio~7#'

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conducted in the Philippines or internationally. There is no evidence to prove that the mark has acquired recognition and commercial reputation of a well­known mark internationally because opposer submitted only one registration of the mark in China (Exhibit "H") and a sample advertising (Exhibit "I"). Thus, 100 HUNDRED & DEVICE is not well-known.

WHEREFORE, premises considered the OPPOSITION filed by opposer, Hangzhou Huayi Aerosol Co. Ltd. is, as it is hereby, SUSTAINED. Accordingly, Application Serial No. 4-2008-006578 for the trademark BIG BIE PAl HUNDRED 100 AND DEVICE for goods under class 5, namely "preparations for killing and destroying pests, pesticides, moth proofers, insect repellents vermin destroying agents and insecticides" filed on June 5, 2008 by respondent-applicant, Cai Yao Huang, is, as it is, hereby REJECTED.

Let the filewrapper of "BIG BIE PAl HUNDRED 100 & DEVICE", subject matter of this case together with a copy of this Decision be forwarded to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

Makati City, 15 Decemb

LUTA BELTRAN-ABELARDO .J.. irector, Bureau of Legal Affairs jOI" ,

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