iPINTELLECTUAL PROPERTYPHILIPPINES

- versus -

YALE UNIVERSITYOpposer,

}}}}}}}}

EDRALYN BORNILLO, }Respondent-Applicant. }

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DECISION

IPC No. 14-2007-00094Case Filed:

Opposition to:

Serial No. 4-2006-002142Date Filed: 23 Feb. 2006Trademark: "YALE"

Decision No. 2008 - 119

This is a VERIFIED NOTICE OF OPPOSITION filed by the YaleUniversity to the application for registration of the mark "YALE" bearingApplication Serial No. 4-2006-002142 filed on February 23, 2006 by respondent­applicant Edralyn Bornillo for goods under Class 25, namely: "T-shirt, blouse,sando, skirts, jeans, short pants, polo shirt, and pants ", which application waspublished in the Trademark Electronic Gazette of the IP Philippines (IP Phil.) thatwas officially released for circulation on November 10, 2006.

Opposer is a non-profit corporation organized and existing under thelaws of the United States with business address at 105 Wall Street, New Haven,Connecticut 06520. Respondent-applicant is a Filipino citizen with address atBldg. No.1 , Unit No.2, South Terminal, Commercial Center, 3030 Taft AvenueExtension, Pasay City.

Opposer filed its VERIFIED NOTICE OF OPPOSITION based on thefollowing grounds:

1. Opposer is the first to adopt, use, and register themark "YALE" and its derivatives ("YALE"marks , for brevity);

2. Opposer has been issued worldwide registrationscovering goods under Classes 06, 09, 11, 12, 14, 16, 17,18, 20, 21, 24-28 , 35, 37, 42, 43, 45, 52, and 112 for the"YALE" marks;

3. The "YALE" mark is used particularly for thefalling under Class 25: shirts , suits,

following 900ljcdSheadwear,

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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: mail@ipophil.gov.ph

footwear, sweaters, ponchos, rainwear, garters, sleepwear,and undergarments;

4. The "YALE" marks are well-known worldwide and in thePhilippines as being identified with opposer, a premiereducational institution providing instruction and training inundergraduate, graduate, post-graduate, and professionallevels falling under Class 41 and, therefore, enjoys underSection 147 of the IP Code the right to exclude others fromregistering or using an identical or confusingly similar marksuch as respondent-applicant's "YALE" trademarks;

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Opposer's "YALE" marks are well-known internationally andin the Philippines, taking into account the knowledge of therelevant sector of the public rather than the public at large asbeing marks expressly and directly referring to and owned byopposer for which reason, thus, respondent-applicant's"YALE" mark cannot be registered in the Philippines pursuantto the express provision of Sections 123.1 (e) and 147.2 of theIP Code;

Opposer's "YALE" marks have been used, promoted, andadvertised for a considerable duration of time and over widegeographical areas;

Opposer has invested tremendous amount of resources inthe promotion of its "YALE" marks through articles andadvertisements published in well-known magazines, books ,journals, and brochures;

Opposer also maintains a website , www .yale.edu;

As evidence of its worldwide popularity international studentshave made their way to Yale since the 1830s when the firstLat in American student enrolled;

Today, Yale ranks fourth (4th) among the Top 40

universities in the world by Newsweek magazine ;

There is already a high degree of distinction of opposer'S16;"YALE" marks, having been used in commerce as early as ~

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1814 and having been in existence since 1701, opposer hasearned international acclaim as well as the distinct reputationof being a provider of high quality educational services;

12. Opposer's educational services carried under the "YALE"marks had for more than three hundred (300) years earnedinternational acclaim as well as the distinct reputation of highquality educational services;

13. Respondent-applicant's use of the "YALE" mark for itsproducts in Class 25 will dilute the distinctiveness and erode the goodwill of opposer's "YALE" marks;

14. It is the result and goodwill and popularity of opposer's"YALE" marks and, accordingly, the use and approval forregistration of the subject mark constitutes an infringement orinvasion of opposer's property rights to its "YALE" marks whichis protected by law;

15. Such will most assuredly cause the dilution and loss ofdistinctiveness of opposer's "YALE" marks as well as causeirreprable damage and injury to opposer;

16. There is likelihood of confusion between opposer's "YALE"marks and respondent-applicant's "YALE" mark because thelatter is identical in spelling , sound, and appearance to theformer;

17. No doubt , the use of respondent-applicant's "YALE" mark forits products will indicate a connection between theseproducts and those of opposer's;

18. The confusion made more certain as opposer's andrespondent-applicant's respective marks are used for identicalgoods falling under Class 25;

19. Respondent-appl icant , by adopting the "YALE" mark for itsproducts in Class 25, is likely to cause confusion or mistake, orto deceive as to affiliation ; connection ; or association withopposer, or as to origin of its products by opposer for which itis liable for false designation of origin, or false description~representation under Section 169 of the IP Code; I / ~

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20. Opposer's interests are likely to be damaged byrespondent-applicant's use of the "YALE" mark for its productsin Class 25; and

21. The mark "YALE" being registered for educationalservices under Class 41 is protected under Section 165 of theIP Code even prior to or without registration against unlawfulacts such as its unauthorized use by respondent-applicant."

On September 17, 2007, respondent-applicant filed a verifiedANSWER specifically denying the allegations in the VERIFIED NOTICE OFOPPOSITION and alleging the following special and affirmative defenses:

"1. After the filing of Trademark Application No. 4-2006­002142 for the mark "YALE" with the IP Philippines underClass 25 on February 23, 2006, respondent-applicantproceeded to engage in the manufacture and retail of t-shirts ,polo shirts, blouse, skirts, jeans , short pants, and pants andsince then, respondent-applicant has been using the mark"YALE " in commerce on said goods;

2. Respondent-applicant's products bearing themark "YALE" are sold/distributed to various commercialestablishments in the Philippines, namely: TaybeeCommercial located at 301-303 Manalili St., Cebu City; TheBeefly Clothing Center at J. Burgos St., Cagayan De Oro City;and the Parsons Enterprises located at 173 Taft Avenue ,Baclaran, Parafiaque City;

3. At the onset, respondent-applicant never made anyrepresentations to the public that her products are derivedfrom or related to opposer: Respondent-applicant has made itknown to the public that her products are locally made and arein no way related to any of the goods coming from othercountries;

4. The purchasing public has come to know, rely upon, andrecognize the quality of respondent-applicant's products;

5.lt is respondent-applicant who first appropriated andexclusively used the mark "YALE" on t-shirts , polo shirts,blouse, skirts, jeans, short pants, and pants in this jUrisdiction~~

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6. No proof has been presented by opposer to show its bonafide commercial use of the mark in the Philippines: Recordswould show that opposer never conducted any business orpromoted its mark in the Philippines, belying thus its claim thatit is a well-known mark here;

7. Opposer's mark may be known to Filipinos who have goneabroad or studied in said university but it is generally unknownto the public as a commercial brand for t-shirts, polo shirts,blouse, skirts, jeans, short pants, and pants;

8. While opposer may have actually used in commerce themark in other jurisdictions, there is no evidence to show thatthe mark was adopted , used, and sold in commerce within theterritory under Class 25;

9. It is worth stressing that opposer has no existing registrationor pending application for the mark "YALE" filed with the IPPhilippines to date ;

10. Per Section 123.1 (e) of the IP Code, it is a requirement fora mark to be accorded "well-known status" that it must beconsidered so by the competent authority in the Philippines tobe well-known not only in the international market but in thePhilippines as well , and opposer failed in proving thisrequirement;

11. There is no evidence to support the notoriety of opposer's"YALE" marks in the Philippines;

12. It has been ruled that mere ownership of variouscertificates of registration worldwide is insufficient to accord a"well-known status" to a mark unless the owner can also provethe mark's "notoriety " in the Philippines ;

13. While it is true that opposer is a well-known and highlyrespected educational institution worldwide , such well-knownstatus cannot be used as basis to exclude third parties fromusing the mark on other goods such as t-shirts, polo shirts ,blouse, skirts, jeans, short pants, and pants as opposer is notprimarily engaged in the commercial sale of distribution ofproducts bearing the mark "YALE" under Class 25 for whichreason, thus, opposer cannot be damaged of the use r-:

respondent-applicant of the mark "YALE" on these goods;

14. Even the possibility of mistaken association in the minds ofthe purchasing public regarding opposer's products vis-avisrespondent-applicant's products is very unlikely: First of all,opposer's products are far more expensive compared to thegoods sold by respondent-applicant; and second, opposer'sproducts would bear labels stating that such goods are madeabroad whereas respondent-applicant's products are locallymade ;

15. The establishments selling or distributing the products ofthe two parties are different: Opposer's goods under Class 25can only be purchased exclusively at the Yale Bookstore inthe United States and, apparently, thus , there are nocommercial establishments selling opposer's goods to thepublic ;

16. Respondent-applicant's t-shirts , polo shirts , blouse , skirts,jeans, short pants , and pants bearing the mark "YALE are soldin Philippine establishments only;

17. There is simply no irreparable harm or damage posed toopposer by respondent-applicant's use of the mark "YALE" asthose who deal with opposer's products are discriminatingpurchasers and would not mistakenly associate opposer withrespondent-applicant;

18. Granting that opposer has rights to the mark "YALE",opposer's rights are of narrow scope on account of the existingtrademark registrations at the IP Philippines for marks whichare identical to opposer's mark;

19. It is to be noted that some of the aforementionedregistrations also fall under the same class as that covered bythe fore ign registrations owned by opposer and yet thesemarks were allowed registration ; and

20. In sum, it is clear that as between respondent-applicantand opposer, it is the former who stands to be prejudiced anddamaged should the instant opposition be sustained asrespondent-applicant has sufficiently proven that it is the firstand prior user of the mark "YALE" in the Philippines for t-shirt1~

polo shirts , blouse, skirts , jeans , short pants, and pants . "

During the preliminary conference held on 21 January 2008, counselfor respondent-applicant manifested that the parties be given time to agree on anamicable settlement. Without objection from opposer's counsel , the parties weregiven on or before 20 February 2008 to submit a compromise agreement. Therebeing no compromise agreement, Order No. 2008-801 was issued giving theparties a non-extendible period from receipt of their respective copies of saidOrder within which to file their respective position papers and, if desired, draftdecisions. Opposer received its copy of the Order on 02 June 2008 and filed itsposition paper on 06 June 2008 which is within the reglementary period whilerespondent-applicant received its copy of the Order on 02 June 2008 and filed itsposition paper on June 16, 2008.

The issues to be resolved are as follows:

1. Whether respondent-applicant's mark "YALE" is confusingly similar toopposer's "YALE" marks;

2. Whether Opposer's "YALE" mark is an internationally well-known mark;and

3. Whether respondent-applicant is entitled to the registration of his "YALE"mark.

Before the issues are discussed in detail , it is important to determinefirst whether opposer's and respondent-applicant's respective goods are similarand/or related .

It appears from the records that opposer's "YALE" marks areregiste red for goods under Class 25 in such countries/areas as the United States,the European Community, Korea, and are being applied for registration inArgentina , Brazil, Chile, India, Mexico. Also, the following marks appear to beregistered in favor of opposer: 1) "Lux Et Veritas YALE & design " in the UnitedStates , the European Union, Canada , Japan, Korea, Singapore, and Australia forClass 25 goods; and 2) "YALE Club" in Japan for Class 17 goods [for clothing ,fabric apparel accessories, beddings] (Exhibits "G" and , "J" and submarkings). Itappears, thus , that opposer's "YALE" marks are either registered or at the leastsought to be applied for in other countries for goods similar or related torespondent-applicant's goods for which the subject mark "YALE" is being apPlie~for now in this jurisdiction. '/~

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In sum, opposer and respondent-applicant's respective goods aresimilar or related.

Opposer's "YALE" marks are as follows:

"YALE"

"YALE"- EXH. "F-1"

"'~r:ti3(:'":f ::~:'Ml V l~:l~_i:'i~AS

Y /\ I.E': -Y /\ L E r>nelL>CSi.gl)32/{(;(,-· 1756 1'I

"LUX ET VERITAS YALE AND DESIGN"

Meanwhile , the mark respondent-applicant mark is applyingdepicted below:

YALE

registration for is~

II~

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A perusal of opposer's and respondent-applicant's respective marksshows that obviously, the marks are identical and confusingly similar visually andaurally: Opposer's and respondent-applicant's respective marks have the samespell ing and in one depiction of opposer's "YALE" mark, the letters compris ing theword mark are all in uppercase. Similarity in size, form and color, while relevant,is not conclusive. Neither duplication/imitation, or the fact that the infringing labelsuggests an effort to emulate, is necessary. The competing marks need onlyconta in the main , essential or dominant features of another and that confusionand deception is likely (Sterling Products International, Inc. v. FarbenfabrikenBayer Aktiengesselschaft, G.R. No. L-19906, April 30, 1969; Lim Hoa v.Director of Patents, G. R. No. L-8072, October 31, 1956; Co Tiong Sa v.Director of Patents, et aI., G. R. No. L-5378, May 24, 1954). Even as toopposer's "Lux Et Veritas YALE & design", the dominant mark is the word "YALE"with which the subject mark is confusingly similar.

As to the first issue, thus , this Bureau rules in the affirmative.

As to the second issue of whether opposer's "YALE" marks areinternationally well-known marks , this Bureau rules in the negative.

As earlier ruled , opposer's and respondent-applicant's respectivemarks, are similar or related and are confusingly similar. Further, opposeralleges that its "YALE" marks are well-known. Section 123.1 (e) of the IP Codeapplies , thus in the case at bench.

Section 123.1 (e) provides for the requisites wherein a mark cannotbe registered in view of the existence of another mark , provided the followingrequis ites concur:

1. The mark applied for is identical or confusingly similar to, orconst itutes a translation of the other mark;

2. The mark is considered by the competent authority of the Philippines,that is, either the Director General or the Director of the Bureau of Legal Affairs(BLA) , to be well-known internationally and locally, that is, in the Philippines ,provided that account shall be taken of the knowledge of the relevant sector ofthe public rather than of the public at large including knowledge in the Philipp inesobtained as a result of the mark 's promotion;

3. The other mark mayor may not be registered ; and

4. The goods to which applicant's mark is being used are the same o~

similar to the goods to which the other mark is being used. / /~

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What needs to be settled, thus , is the requisite as provided in NO.2 ofthe above enumeration.

A careful perusal of opposer's evidence would show that opposer hasnot dispensed by substantial evidence its allegation that its "YALE" marks arewell-known in terms of the knowledge of it by the relevant sector of the publicaround the world as well as in the Philippines. Opposer's evidence only consistsof printouts from its webs ite essentially about the Yale school system , theproducts from its bookstore, certificates of registration issued by the UnitedStates Patent and Trademark Office (USPTO) for the mark "YALE" under Classes6, 8, 9, 11, 12, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 28, 37 and 41, an articlefrom Newsweek, an unauthenticated list of living alumni outside of the UnitedStates , and an unauthenticated table of the status of applications for registrationof different "YALE" marks in different countries (Exhibits"A" to "J" andsubmarkings). These by themselves do not prove that opposer's "YALE" marksare well-known to the relevant sector of the public in the world or in thePhilippines for Class 25 goods . The Newsweek art icle is essentially about YaleUniversity's openness and diversity and distinction in research but this does notequate to opposer's "YALE" marks as being well-known internationally in thesense that the law requires .

Rule 102 of the Rules On Trademarks, Service Marks , Trade NamesAnd Marked Or Stamped Containers provides, among others, that the extent towhich the mark has been registered and used in the world may be taken intoaccount in determining whether or not a mark is well-known . From theunauthenticated table of the status of applications for registration of opposer's"YALE" marks, even assuming arguendo that this is admissible, it appears thatopposer's registration of the "YALE" marks for goods similar or related torespondent-applicant's goods is confined only to the United States, the EuropeanCommunity, Korea , Canada, Japan, Korea, Singapore, and Australia . This hardlyqualifies opposer's "YALE" marks as being internationally well-known, Use of the"YALE" marks, moreover, has not been adequately shown such that wouldprompt this Office to declare them as well-known . Moreover, evidence from theunauthenticated list of living alumni in the Philippines totaling to 114, assumingarguendo, too, that this is admissible, does not necessarily mean that opposer isalready well-known in the Philippines.

To reiterate, this Bureau rules in the negative as to the second issue.y-Thus , Opposer's "YALE" marks are not internationally well-known. I f~

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In view of the discussions above, this Bureau rules in the affirmativeas to the third issue of whether or not respondent-applicant is entitled to theregistrat ion of his YALE mark .

WHEREFORE, the VERIFIED NOTICE OF OPPOSITION is, as it is,hereby DENIED. Consequently, Application Serial No. 4-2006-002142 for themark "YALE" on goods/services under Class 25 filed on February 23, 2006 bythe Edralyn Bornillo is, as it is hereby, GIVEN DUE COURSE.

Let the filewrapper of YALE subject matter of this case be forwardedto the Bureau of Trademarks (BOT) together with a copy of this Decision forappropriate action.

SO ORDERED.

Makati City, June 30, 2008.

UTA BELTRAN-ABELARDOrector, Bureau of Legal Affairs~

csoe/md

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