INTELLECTUAL PROPERTY

OFFICE OF THE PHILIPPINES

SUYEN CORPORATION, } IPC No. 14-2015-00211

Opposer, } Opposition to:

} Appln. No. 1219677

} Date Filed: 11 December 2014

■versus- } TM: "21 DAY FIX"

BEACHBODY, LLC, }

Respondent- Applicant. }

NOTICE OF DECISION

MIGALLOS & LUNA LAW OFFICES

Counsel for Opposer

7th Floor, The PHINMA Plaza39 Plaza Drive, Rockwell Center

Makati City

CASTILLO LAMAN TAN PANTALEON & SAN JOSE

Counsel for Respondent-Applicant

2nd, 3rd, 4th, 5th & 9th Floors, The Valero Tower122 Valero Street, Salcedo Village

Makati City

GREETINGS:

Please be informed that Decision No. 2018 - SU dated April 02, 2018 (copy enclosed)

was promulgated in the above entitled case.

Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series 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, April 06, 2018.

MARILYN F. RETUTALIPRS IV

Bureau of Legal Affairs

@ www.ipoplnl.gov.ph q intellectual Property Comer

© mail@ipophil.gov.ph *28 Upper McKintey RoadMcKinloy Hill Fown Cotter

O +632-2386300 h«m Hurl,,,... l..«i ,';'-Vfi +632-5539480 1634 Philippines

INTELLECTUAL PROPERTY

OFFICE OF THE PHILIPPINES

SUYEN CORPORATION, IPC No. 14-2015-00211

Opposer, Opposition to:

Appln. No. 1219677

-versus- Date Filed: 11 December 2014

Trademark: "21 DAY FIX"

BEACHBODY, LLC,

Respondent-Applicant. Decision No. 2018 - £%>

x x

DECISION

SUYEN CORPORATION ("Opposer") ' filed an opposition to Trademark Application

Serial No. 1219677. The application filed by BEACHBODY, LLC ("Respondent-Applicant")2,covers the mark "21 DAY FIX" for "pre-recorded DVDs, and CDs, featuring exercise, fitness,

and dietary information instruction; downloadable, interactive multimedia computer software

featuring audio, audiovisual and video training information on the subject ofphysical exercise,

physical exercise equipment, diet and nutrition, and pictures, images, text, and photos related

thereto; downloadable electronic game software under Class 09; and, "education; providing of

training; entertainment; sporting and cultural activities" and "providing a web site featuring on

line instruction in the field ofphysical exercise and nutrition and tracking progress ofworkouts;

educational services and on-line educational services, namely, providing instruction in the fields

ofexercise equipment, physical exercise and nutrition, and instructional materials distributed in

connection therewith; physical fitness training services, namely, tracking progress of workouts

for others; entertainment services, namely, conducting contests; education and entertainment

services, namely, providing a website featuring non-downloadable musical performances,

musical videos, related audio, video andfilm clips, photographs, and other multimedia materials

featuring information in the field of exercise and physical fitness; educational services, namely,

providing web-based, classroom and other training in the field of exercise equipment, physical

fitness, diet and nutritional programs for certification of and continuing education for

instructors and distribution of training material in connection therewith; educational services,

namely, conducting classes, seminars, conferences, workshops, and field trips in the field of

exercise equipment, diet and nutritional programs, and sales techniques and distribution of

training material in connection therewith; membership club services, namely, providing training

to members in the field of exercise equipment, diet and nutritional programs, and sales

techniques; educational services, namely, offering of assessments and surveys in the field of

A corporation duly organized and existing under Philippine law with offices located at Bench tower, 30th St.,

Corner Rizal Drive, Crescent Park West 5, Bonifacio Global City, Taguig City.

A corporation duly organized and existing under and by virtue of the laws of the laws of the State of

California, United States of America, with principal office address at 3301 Exposition Boulevard, Third

Floor, Santo Monica, California, United States of America.

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© mail@ipophil.gov.ph ff?8 uPPcr McKintey RoadMcKink.'y Hilt I own Center

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educator training and performance for the purpose of improving teaching procedures; physical

fitness training services and consultancy; providing information in the field ofexercise training"

under Class 41 of the International Classification of Goods and Services.

The Opposer alleges that it was incorporated in 1985 as a manufacturing company

dealing in clothing apparel, garments and accessories. It manufactures, distributes, markets and

sells apparel and lifestyle products carrying different brands and trademarks, including its

flagship brand, BENCH. When BENCH started in 1987, it initially offered only men's t-shirts.

Since then, Suyen has expanded its business to a complete range of apparel and lifestyle products

such as fragrances, cosmetics, body care products, accessories, shoes, bags, watches, even

houseware and snacks with the distinction of being present in virtually every retail space in the

Philippines, and with a worldwide network of stores and outlets, reaching as far as the United

States, the Middle East, Singapore and China. Other popular and successful brands owned by

Suyen include "HUMAN", "KASHIECA", "FIX BENCH SALON", "DIMENSIONE", "PCX",

"FIRST AID", and "BE CONNECTED", among others.

The Opposer further alleges that together with its sister companies, Suyen has also

successfully penetrated the service industry in connection with the internet cafe industry,

furniture industry, food industry, beauty salon and skin care industry. In fact, as of October

2016, Suyen and its sister companies have 900 stores in the Philippines alone, which includes

franchises of foreign brands. Suyen has also been a pioneer in the franchising business. It

brought into local market several foreign brands.

The Opposer asserts that it continues to grow at an unparalleled rate by being the pioneer

in the use of celebrity endorsers, television and giant billboards to propel fashion brands that

offer premium quality product at affordable prices. It has been recognized on numerous

occasions by local and international award-giving bodies for its performance by multiple

industries and disciplines. Thus, it claims to become a household name in the retail industry

associated with one hundred percent (100%) premium and high quality Filipino products. It has

become a global company with brand presence in the world with over 600 trademarks registered

in its name both, in the Philippines and abroad, and 36 stores outside the Philippines.

Moreover, Suyen through its sister companies has also penetrated the service industry.

Among the services offered by Suyen is its beauty salon services, under the very popular FIX

Bench Salon, operated and managed by Suyen's affiliate and licensee, B Cut, Inc. The first FIX

Bench Salon opened in 2001. At present, there are sixty-eight (68) said salons. Even prior to its

opening, Suyen already manufactured, advertised, distributed and sold hair products under the

"FIX" trademark and other derivative marks. It was first used in March 2001, and had

continuously used the same. The "FIX" trademarks are registered with the IPOPHL under class

3, among other classes, for hair products and related products. Suyen has also registered the

mark "BENCH FIX" in various countries. There are, at present, over twenty-four (24) hair

products bearing the "FIX" Trademarks of Suyen. These products are marketed and sold in

several FIX Bench salons nationwide.

3 The Nice Classification of goods and services is for registering trademark and service marks, based on a

multilateral treaty administered by the WIPO, called the Nice Agreement Concerning the International

Classification of Goods and Services for Registration of Marks concluded in 1957.

The Opposer sets forth the following grounds for opposition:

1. Respondent-Applicant's 21 DAY FIX is identical to and confusingly similar with

Opposer's duly registered trademarks. The mark of Respondent-Applicant contains

the main, essential and dominant feature of Opposer's registered FIX Trademarks.

The said mark will also mislead the public into believing that the products bearing the

said mark are the same products marketed and sold by Opposer or that the goods

originated from the Opposer or under the sponsorship of Opposer.

2. The mark of Respondent-Applicant may and will be used as an instrument of unfair

competition.

The Opposer's evidence consists of the following:

1. Affidavit of Mr. Dale Gerald G. Dela Cruz, Assistant Vice President (AVP) Brand

Marketing of Suyen Corporation;

2. Certified true copy (Ctc) of Suyen's Certificates of Registration for the trademark FIX

and other marks containing the word FIX;

3. BENCH FIX Registration in China:

4. List of Suyen's products bearing the FIX trademarks;

5. Photographs of some FIX products;

6. Photographs of several FIX Bench salons;

7. Photographs and printouts of sample promotional materials that are posted, displayed

or distributed in the market;

8. Photographs of billboards advertising FIX products;

9. Newspaper and magazine advertisements for FIX Products and Trademarks;

10. Print-outs of webpages from the official website of Suyen;

11. Print-outs of webpages from the official Facebook page of FIX Bench Salon;

12. Bench Care Catalogue; and,

13. Pages from the FIX Catalogue.

On 05 October 2015, Respondent-Applicant filed its Answer. It alleges that in 1998, it

created the websites dedicated to the provision and sale of goods and services related to fitness

and workout programs. It is the creator of popular fitness solutions such as P90X, INSANITY,

Brazil Butt Lift, Slim in 6, Turbo Jam, and Hip Hop Abs, among others. It has programs like

DVD-based workouts, diet and nutrition guidelines, nutritional supplements, and cleanses. It

established systems for peer-support and customer service through TeamBeachbody.com. The

Respondent-Applicant Beachbody is also a multichannel marketer with presence in mobile, print,

online, radio, and various other media. Beachbody offers interactive fitness programs with

options for certain physical impairments, purchased primarily online. They also feature workout

tools and meal plans personalized for each individual user of their products.

Respondent-Applicant further alleges that it is the owner of "21 DAY FIX", the

company's brand for a series of world-class, results-driven workouts partnered with a simple

portion-control container system to take the guesswork out of weight loss. "21 DAY FIX" is not

sold on retail but it can be accessed and purchased online through its website or directly through

Team Beachbody Coaches, individuals who sell Beachbody products.

The "21 DAY FIX" is constantly featured in various print and online publications,

television and radio broadcasts. The sales of "21 DAY FIX" already exceeded US $

175,000,000.00. In respect of customer satisfaction, "21 DAY FIX" has been received

favourably by those who have undertaken the diet and weight loss program. Beachbody has also

maintained an open "21 DAY FIX" Facebook page where customers can express their views

about the program. Thus, to protect its exclusivity over the "21 DAY FIX" mark worldwide, it

registered "21 DAY FIX" in various countries, and has filed an application for its registration

with this Honorable Office in Classes 09 and 41 of the Nice Classification.

The Respondent-Applicant further states that the FIX mark is not exclusive to Opposer.

The IPO has in fact separately allowed the registration of other marks bearing the word FIX. If

at all, the exclusivity that can be claimed by Opposer is limited to the use of FIX on goods

specified in its certificates of registration, which are hair products in Class 03, or hair and

grooming services in Class 44. There is also no truth to Opposer's claim that it first registered

the FIX mark. Contrary to this false claim, the mark FIX had already been registered to Mayon

Consolidated, Inc. on 03 September 1980 for goods in Class 07, considerably ahead of Opposer's

registration of the same mark in 2000.

The Respondent-Applicant refutes any confusing similarity between the contending

marks. According to its argument, its mark prominently shows the "21 DAY" component right

above the word "FIX", which is absent in Opposer's mark. Opposer's "FIX" is not the dominant

element of its mark. In fact, an assessment of Opposer's mark show that "FIX" is regularly used

in tandem with the mark BENCH or in conjunction with other words related to its business. The

FIX products and salon services are almost always used in relation to the BENCH brand and

other related products. In this connection, the respective goods and services are totally unrelated

to each other. Hair products are totally unrelated to DVDs/CDs and online programs giving

access to information on physical fitness, nutrition, and wellness. Considering the dissimilarity

of goods and services involved, the likelihood of an ordinary buyer being misled into purchasing

one product for the other is absent. The "average intelligent buyers" of "21 DAY FIX" product

belongs to a specific clientele or channel of trade.

In addition, the Respondent-Applicant manifests that the "21 DAY FIX" has inherent

distinctiveness, and has attained goodwill and global reputation of its own. The Opposer has

utterly failed to adduce evidence that the buying public exclusively associates the FIX mark

solely to the BENCH brand. Thus, it cannot assert that it has attained global notoriety sufficient

to preclude the use of the mark by other entities.

Finally, the Respondent-Applicant precludes unfair competition in this case. There exists

neither passing off nor any attempt to pass off Opposer's products as Beachbody's own. Since

the products of Opposer and Beachbody are marketed and sold through non-competing and

unrelated channels of trade, and there is no fraudulent intent on the part of Respondent-Applicant

to pass off Opposer's goods and services as its own, the registration of the mark "21 DAY FIX"

will not in any way lead to the commission of unfair competition.

The Respondent-Applicant submitted the following evidence:

1. The Power of Attorney;

2. Printout of website Beachbody.com, At Home Workout Videos & Fitness Programs

available at http://www.beachbody.com;

3. Printout of website Beachbody.com, Company Overview, available at

http://www.beachbody.com/product/aboutus/companyoverview.do;

4. Printout of Extended Press Release;

5. Printout of website, available at

http://www.beachbody.com/product/about_us/products.do;

6. Printout of website, available at

http://www.beachbody.com/product/fitness_programs/21-day-fix-simple-fitness-

eating.do;

7. Printout of website of American Fitness Magazine, Are You ready for Autumn?,

available at

http://www.beachbody.eom/text/about/press/21 DF_AmericanFitness_21 DayFix_Sept

•pdf;

8. Printouts of the websites and print copy of the following: FitnessMagazine.com, 10

Best Workout DVDs - At Home Workouts; FitBottomedGirls.com, 5 Best New

Workout DVD Programs; SkinnyMom.com, 10 DVD Workouts You Need For Your

Collection; Active.com, Editor's Picks: 2014 Nutritional Products to Fuel Your Goals;

http://www.fitnessrocks.org/about-us/; http://www.amazon.com/Autumn-Calabreses-

Day-Fix-Essential/product-reviews/BOO-189MAKS;

http://soreyfitness.eom/fitness/21 -day-fix-autumn-calabrese;

http://www.hallmarkchannel.com/home-and-family/today-on-home-family-friday-

march-7th-2014; http://ktla.com/2014/09/09/21 -day-fix-autumn-calabrose;

https://www.facebook.com/21 DayFix; http://www.fitnessrock.Org/21 -day-fix-review;

and https://twitter.com/21 DayFix; and,

http://www.beachbody.com/product/fitness_programs/best_sellers/21-day-fix-

extreme.do;

9. List of current trademark registrations and applications;

10. Copy of Certificates of Registration in Classes 9 and 41;

11. Statements of grants of protection in countries;

12. Table of marks bearing the FIX registration in IPO Philippines;

13. Judicial Affidavits of Ms. Camille Miller and Atty. Rita Marie L. Mesina.

The Preliminary Conference was held and terminated on 14 June 2017. Thereafter, the

parties submitted their respective position papers4. Hence, this decision.

Should the Respondent-Applicant be allowed to register the trademark 21 DAY FIX?

Records of this instant case show that the Respondent-Applicant filed its application for

registration of the trademark "21 DAY FIX" on 11 November 2014. On the other hand, the

Opposer has various trademark registrations for the trademark "FIX" and its variants, as early as

Opposer filed its Position Paper on 04 July 2017; Respondent-Applicant filed its Position Paper on 27 June 2017.

5

the year 2004 for several goods including Class 03 of Goods Classification.5 Under the law, acertificate of registration constitutes a 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.6

The competing marks are reproduced below for comparison:

Opposer's Trademark Respondent-Applicant's Trademark

A practical approach to the problem of similarity or dissimilarity is to go into the whole

of the two trademarks pictured in their manner of display. Inspection should be undertaken from

the viewpoint of a 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 factors such as "sound; appearance; form, style, shape, size or format; color;

ideas connoted by marks; the meaning, spelling, and pronunciation, of words used; and the

setting in which the words appear" may be considered.7 Thus, confusion is likely between marks

only if their over-all presentation, as to sound, appearance, or meaning, would make it possible

for the consumers to believe that the goods or products, to which the marks are attached, emanate

from the same source or are connected or associated with each other.

An examination of the competing marks show that the marks both contain the word

"FIX". Such resemblance alone, however, is not sufficient to conclude that confusion is likely to

occur. Respondent-Applicant's mark has the numeral and alphabet components "21 DAY"

which provide an independent character and impression to the mark, and constituting a visual

and aural dissimilarity from that of the Opposer's "FIX". Moreover, confusion or mistake, much

less deception, is unlikely in this instance because the goods or service covered by Opposer's

trademark registrations are distinguishable from that of the Respondent-Applicant's. Opposer's

products are generally personal care products for the hair; and has related services in hairstyle,

makeup, and grooming. On the other hand, Respondent-Applicant's goods are entirely different.

In fact, it belongs to separate classification of goods, classes 09 and 41, which refer to exercise,

fitness, dietary and other related information recorded in DVD and CD; seminar, training and

education on fitness and physical exercises and information and related matters which are

accessible in the website or online. Thus, the likelihood of public deception is very remote

because its purchasers are supposed to be more discriminating and sophisticated. In addition, the

parties' respective goods/service neither flow in the same store or sales booth, or cater to the

same class of consumers, as to result to any confusion. The competing goods have their own

specialty stores with its brand names visibly displayed. A consumer could easily discern that

5 Annex F and series of Opposer.

6 Sec. 138, IP Code.

7 Etepha A.G. vs. Director of Patents, G.R. No. L-20635, 31 March 1966.

there is no connection between the two marks where the Opposer's goods with its brands are

substantially different to Respondent-Applicant's specialized products. Buyers of branded and

particular products are highly aware of the channels of trade either to make a purchase, or for the

return of the same.

Corollarily, the enunciation of the Supreme Court in the case of Mighty Corporation vs.

E. & J. Gallo Winery8 aptly states that:

"A very important circumstance though is whether there exists likelihood that an

appreciable number of ordinarily prudent purchasers will be misled, or simply confused,

as to the source of the goods in question. The 'purchaser' is not the 'completely unwary

consumer' but is the 'ordinarily intelligent buyer' considering the type of product

involved, he is 'accustomed to buy, and therefore to some extent familiar with, the goods

in question. The test of fraudulent simulation is to be found in the likelihood of the

deception of some persons in some measure acquainted with an established design and

desirous of purchasing the commodity with which that design has been associated. The

test is not found in the deception, or the possibility of deception, of the person who

knows nothing about the design which has been counterfeited, and who must be

indifferent between that and the other. The situation, in order to be objectionable, must

be such as appears likely to mislead the ordinary intelligent buyer who has a need to

supply and is familiar with the article that he seeks to purchase."

Significantly, this Bureau takes cognizance via judicial notice of the contents of the

Trademark Registry of the Intellectual Property Office of the Philippines, which consist of marks

that has the word mark or contain the word "FIX" in its trademark covering the same or different

goods/service from that of Opposer's, such as: FIX (Reg. No. 43057 dated 03 March 1985 for

class 07); FIX IT (Reg. No. 42012013551 dated 14 June 2013 for class 19); FIXALL (Reg. No.

42008014719 dated 13 April 2009 for class 04); and, FIX & TOX (Reg. No. 1279519 dated 18

February 2016 for class 03)9. These marks are owned by entities other than the Opposer. It

appears that "FIX" is a suggestive mark. "FIX" suggests or implies an action for mending or

repairing something. In the instant case, the goods covered by Respondent-Applicant's "21 DAY

FIX" are related to maintenance and/or improvement of health body through various dietary and

physical programs. Hence, to sustain this opposition solely on the ground that the competing

marks both contain "FIX" would have the unintended effect of giving the Opposer exclusive use

of the same, despite the difference or unrelated character of the goods or service offered.

Finally, it is emphasized that the essence of trademark registration is to give protection to

the owners of trademarks. The function of a trademark is to point out distinctly the origin or

ownership of the goods 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.10 This Bureau finds that the Respondent-Applicant's mark meets this function.

8 G.R. No. 154342, 14 July 2004.

9 IPOPHL Trademarks Database, available at http://www.wipo.int/branddb/ph/en/ (last access 26 March 2018).

10 Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No. 114508, 19 November 1999.

WHEREFORE, premises considered, the instant opposition is hereby DISMISSED.

Let the file wrapper of Trademark Application Serial No. 1219677 be returned, together with a

copy of this Decision, to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

TaguigCity. Q| APR 2018

Atty. GIN^LYN S. BADIOLA, LL.M.

Adjudication Officer, Bureau ofLegal Affairs

8