PHILIPPINES - Intellectual Property · PDF file2008-10-16 ·...

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Transcript of PHILIPPINES - Intellectual Property · PDF file2008-10-16 ·...

  • iPINTELLECTUAL PROPERTYPHILIPPINES

    -versus-

    SANDISK COPRPORATION,Opposer,

    }}}}}

    MR. DAVID LIM, }Respondent-applicant. }

    x--- ----- ------------------------ -----------x

    IPC No. 14-2007-00222Case Filed on: July 30, 2007Opposition to :Application Serial No. 4-2006-010020Date Filed: 11 September 2006Trademark: "SUNDISK

    and DEVICE"Decision No. 2008- f-v'l

    DECISION

    For decision is the Notice of Opposition filed by SANDISK CORPORATION, aforeign corporation duly organized and existing under the laws of United States ofAmerica , with business address at 140 Caspian Court, Sunnyvale, California 94089,U.S.A., hereinafter referred to as opposer against Application Serial No. 4-2006-010020for the mark SUNDISK AND DEVICE, for use under Class 09 namely: MP3 MP4 players,VCDjDVD players, microphone, amplifiers in the name of DAVID LIM, hereinafterreferred to as respondent-applicant with address at Unit 10 San Diego Fisheries Bldg.,462 Carlos Palanca St. Quiapo, Manila.

    The grounds for the opposit ion are as follows:

    1. The registration of the trademark "SUNDISK AND DEVICE" in favor of therespondent-applicant violates Section 123.1(d),(e) and (f) of Republic Act 8293,as amended which states that:

    Sec. 123. Registrability. - 123.1 A mark cannot beregistered if it:

    xxx(d) Is identical with a registered mark belonging to a

    different proprietor or a mark with an earlier filingdate, 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;

    (e) Is ident ical with, or confusingly similar to, orconstitutes a translation of a mark which isconsidered by the competent authority of th~yPhilippines to be well-known internationally a; ) ~

    Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

    351 Sen. Gil Puyat Ave., Makati City 1200 Philippines www.ipophil.gov.phTelephone: +632-7525450 to 65 Facsimile: +632-8904862 email: [email protected]

  • the Philippines, whether or not it is registered here,as being already the mark of a person other than theapplicant for registration, and used for ident ical orsimilar goods or services: Provided, That indetermining whether a mark is well-known, accountshall be taken of the knowledge of the relevantsector of the public, rather than of the public atlarge, including knowledge in the Philippines whichhas been obtained as a result of the promotion ofthe mark;

    (D Is identical with, or confusingly similar to, orconstitutes a translation of a mark considered well-known in accordance with the preceding paragraph ,which is registered in the Philippines with respect togoods or services which are not similar to those withrespect to which registration is applied for : Provided,That use of the mark in relation to those goods orservices would indicate a connection between thosegoods or services, and the owner of the registeredmark: Provided further, That the interests of theowner of the registered mark are likely to bedamaged by such use;

    1. The Opposer is the owner of the marks "SANDISK" (wordmark) and "SANDISKLOGO", which have been registered since 23 July 2005 and 18 February 2006,respectively, for class 09 goods. Listed below are the details and particula rs ofOpposer's Philippine trademark registrations covering the" SAN DISK" mark:

    Trademark

    SANDISK

    SANDISK Logo

    Registration Date Issued/ RenewedNumber4-2003-011122 23-July-2005

    4-2003-011124 18-February-2006

    Classification of Goodsand Services09

    09

    2. Opposer exclusively owns and continuously uses its mark "SANDISK" for goods suchas "Semiconductor memory devices, namely integrated circuits electronic circuitcards and cartridges, and flash memory cards, cartridges, adapters, converterscontrollers, players, readers, storage modules, and computer peripherals ; portabledigital recording and data storage units; and computer software for controlling andoperating semiconductor memory devices and portable digita l devices" covered byboth trademark registration certificates no. 4-2003-0111222 and 4-2003011124 allbelonging to International Class 09.

    3. Respondent-Applicant's mark is applied for goods such as "MP3 PLAYERS, VCD/DVDPLAYERS, MICROPHONE, AMPLIFIERS", which goods are closely-related to Opposer'sgood under registration certificates no. 4-2003-011122 and 4-2003-011~4 ,andf

    2

  • belonging to the same class 09. Verily, the use by respondent-applicant of the"SUNDISK AND DEVICE" mark for the goods covered by the application subject ofthis opposition will likely confuse and/or mislead the purchasing public to the mark'sidentity and origin. More importantly, an examination and comparison of the formaldrawings of the contesting marks would reveal that by reason of over-allappearance, spelling and pronunciation, respondent-applicant's "SANDISK" and"SANDISK LOGO" marks. The true copies of trademark registration certificates no. 4-2003-011122 and 4-2003-011124, showinq the representations of the marks areattached as Annexes "A" and "S", respectively. Thus, the registration of therespondent-applicant's mark will be contrary to Sec.123.1(d) of R.A. 8293.Concomitantly, considering that the "SANDISK" and "SANDISK LOGO" marks arewell-known and world famous, the registration of respondent-applicant's "SUNDISKAND DEVICE" will constitute a violation of Section 123.1 (e) and (f) of R.A. 8293.

    4. Opposer has exclusive right to the mark "SANDISK" and "SANDISK LOGO" for goodsin Class 09 having the right and advantage of being the first filer and prior user ofthe marks.

    5. Allowing the registration and the use of the "SUN DISK AND DEVICE" mark by therespondent-applicant in this case, will not only cause confusion among the buyersbut would also diminish and dilute the distinctiveness and identity of the Opposer'smark which have been established in the local and worldwide market by the Opposerat great effort and expense.

    6. The registration of the "SUNDISK AND DEVICE" mark of the respondent-applicantwill surely cause damage and irreparable injury to the distinctiveness and strength ofthe Opposer's mark, and the qoodwill it has engendered with the buying public,within the meaning of adopted in Sec. 134 of R.A. 8293.

    7. Opposer-registrant, in order to protect its proprietary rights over its "SANDISK" and"SANDISK LOGO" marks, has applied for and registered said marks in the Philippinesand in other countries. Attached as Annex "C" are the details and particulars ofOpposer's trademark applications/registrations worldwide.

    8. The mark "SUNDISK AND DEVICE" sought to be registered by respondent-applicantis confusingly similar in over-all appearance, sound, spelling and pronunciation toOpposer's "SANDISK" and "SANDISK LOGO" marks.

    9. Opposer since 08 January 2003, prior to the filing date of the opposed mark, hascontinuously used and promoted the marks "SAN DISK and " SANDISK LOGO" forcommercial use in the local market for goods as earlier stated and other expandingelements and related product lines belonging to International Class 09, which goodsare identical and/or closely-related to goods covered by the "SUN DISK AND DEVICE"mark of the respondent-applicant.

    10. The SANDISK marks have earned enormous proprietary value and goodwill for theJ~Opposer as manifested by: ( I

    e3

  • a. The large volume of sales generated by the products under the "SANDISKmarks of the Opposer; and

    b. The identification of the Opposer's "SANDISK marks by the relevantpurchasing public sector to be synonymous with good quality products atgood value for money paid.

    11. Opposer will suffer damage and irreparable injury if the registration sought by therespondent-applicant is allowed as it will cause confusing similarity, loss of strengthand distinctiveness, and dilution of the Opposer's "SANDISK" and "SANDISK LOGO"marks and/or variation/s in case of product line and business expansion.

    The Notice to Answer dated 06 August 2006 was sent to the Respondent-Applicant and was received on 08 August 2006. However, the Respondent-applicantfailed to file an Answer, hence the case was submitted for decision.

    The issue in this case is whether or not Respondent-Applicant's "SUNDISK" and"SUNDISK DEVICE" mark is confusingly similar to Opposer's registered marks "SANDISK"and "SANDISK LOGO" and whether Opposer's mark is a well-known mark.

    In support of its prayer for the rejection of Application Serial No. 4-2006-010020for the mark "SUNDISK AND DEVICE", Opposer's evidence consisted, among others, ofthe following:

    Exhibit

    "A"

    "B"

    "e ff

    "D"

    Description

    Duly notarized and authenticated Verified Notice ofOppositionDuly notarized and authenticated Special Power ofAttorneyCertified True Copy of Trademark Registration No. 4-2003-011122 for "SANDISK"Certified True Copy of Trademark Registration No. 4-2003-011124 for "SANDISK Logo"

    A cursory reading of paragraph (d), 123.1 of R.A. 8293 with emphasis onidenticalness and/or confusing similarity of the marks in question states that :

    "123.1. A mark cannot be registered if it:

    (d) Is identical with a registered mark belonging to a differentproprietor or a mark with an earlier filing 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 ;r;e

    likely to deceive or cause confusion "

    t 4

  • In a contest involving registration of trademark, the determinative factor is notwhether the challenged mark would actually cause confusion or deception of thepurchasers but whether the use of the mark would likely cause confusion or mistake onthe part of the buying public.

    It does not require that the competing t