iPINTELLECTUAL PROPERTYPHILIPPINES

-vs-

Opposer,

LBC DEVELOPMENTCORPORATION.

}}}}}}}

L1BERCHEM MARKETING (5) }PTE. LTD. }

Respondent-Applicant. }x------------------------------------------------x

IPC NO.. 14-2007-00217Case Filed : July 23 , 2007

Opposition to:

Appl'n . Ser. No. 4-2006-009892Date Filed : 06 September 2006

Trademark: "LBC"

Decision No. 2008 - 100

DECISION

This is a VERIFIED NOTICE OF OPPOSITION filed by LBCDevelopment Corporation to the application for registration of the mark "LBC"bearing Application Serial No. 4-2006-009892 filed on September 06, 2006 byrespondent-applicant Liberchem Marketing (S) Pte. Ltd. for goods under Class07, namely , "Parts of molding machines, namely abrasive grinding wheels(machines) , grinding wheels being parts of machines, pins, cutting tools, diamondwheels, cubic-boron-nitrade (CBN) wheels, diamond cut-off wheels for machines,diamond files (power-operated tolls) dies for machine tools, die-spring, end mills,locating rings, milling, turning, grinding, boring, accessories and attachments,punches for use with machine tools, sleeves, sprue bushing; parts for plasticmolds", which application was published in the Trademark Electronic Gazette ofthe IP Philippines (lP Phil.) that was officially released for circulation on March23,2007.

Opposer is a corporation organized and existing under the laws of thePhilippines with principal office at LBC Group of Companies, LBC Aviat ionCenter , General Aviation Area , Domestic Airport Compound, Pasay City.Respondent-applicant is a private limited company incorporated in Singaporewith business address at 61 Kaki Bukit Ave. 1, #05-18 Shun Li Industrial Park,Singapore 417943.

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

"1. Opposer is a trademark owner and prior user ofthe unabandoned mark LBC (Registration No. 4200105530~~and the applicant for the mark WWW.lbcexpress.co~ I~

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

(Application No. 4200700018), the latter mark bearing thedistinctive and dominant "LBC" mark;

2. Opposer is doing business in the Philippines andhas capacity to sue and and protect its mark under theIntellectual Property (IP) Code;

3. Respondent-applicant is allegedly a foreign entitywith address of record as stated afore, and where it may beserved with notices and processes of this Office;

4. Opposer, however, has no knowledge ofrespondent-applicant's juridical existence and its capac ity toapply for the registration of its mark in the Philippines;

5. Opposer was established in the 1950's as abrokerage and air cargo service provider, known as the LuzonBrokerage Corporation where the current mark "LBC" wasderived ;

6. Opposer was first to introduce a 24-hour air cargodelivery service as envisioned by its founder Don J. Anton ioAraneta;

7. In the 1960's, Carlos R. Araneta revolut ionized thebusiness and introduced the Time-Sensitive Service Principlein the forwarding business ;

8. Since then , "LBC Air Cargo' was the first Filipinohouseholds' by-word for dependable 24-hour air cargo deliveryservice in the country offering courier service and moneyremittance anywhere in the Philippines ;

9. The company established its first overseas office inthe North America, particularly San Francisco, California in1985, and several years later, a branch was opened inVancouver, Canada ;

10. Today , over sixty (60) branches were strategicallyset-up in the USA, the Asian set-up was primarily establishedin Hong Kong, presently four (4) strategically able branchesare operating in the key cities of Hong Kong and branching outto eight (8) other offices in Asian countr ies, and the Europea~

office was set up in Madrid, Spain; { I~

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11. The company's overseas network now spans toseventy six (76) branches , reinforced by LBC authorizedagents located in different continents and in countries wherethere are many Filipinos to serve, and, accordingly, expansionand marketing efforts of the company abroad already madeknown its LBC mark worldwide ;

12. In 1988, from LBC Air Cargo, Inc., the company'sname was changed to LBC Express, Inc., defining itsmodernized operations and by this time utilizes sea, air, andland transports;

13. LBC Express, Inc. is one hundred percent (100%)-owned owned subsid iary of opposer ;

14. Expansion has been inevitable where the companyrequired corresponding increase in manpower specializing incertain aspects of the corporate operations, giving birth to theLBC Group of Companies on the 1990's where herein opposeris a part;

15. The company's information and communicationsinfrastructure has also evolved and constantly enhanced tomatch the equally growing active customer base of about sixmillion three hundred thousand (6,300,000) dating it back tothe computerization in 2000 with transactions going over thirtythousand (30,000) per day;

16. LBC management has envisioned to making theworld a smaller place by year 2020, and Team LBC shall bethe leading access and delivery company , technologically, andprofessionally equipped to serve Filipino families worldwide;

17. Opposer has a nationwide network of six hundredthirty three (633) wholly owned branches with more than threethousand (3,000) multi-skilled customer associates , and hastwo thousand one hundred (2,106) service vehicles nationwidewhere the mark uLBC" is prominently displayed;

18. Opposer is now also a sea cargo forwarder throughits LBC Mundial , Inc.;

19. Opposer is a grantee of secondary license fromthe Philippine Commission on Information and communicatio~

Technology of an author ity to operate as a private express and

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messengerial company , from the Civil Aeronautics Board as anair cargo forwarder, and from the Philippine Shipper's Bureauas a sea cargo forwarder

20. Opposer is registered with the Bangko Sentral ngPilipinas , is now AMLA compliant; is a member of thePhilippine Chamber of Commerce and Industry , the Federationof Aviation Organization of the Philippines , Inc, and the PrivateExpress Messengerial Association of the Philippines , Inc. ;

21. Opposer is the number one Philippine Air LinesCargo Agent and is a valued client of Cebu Pacific Airlines ;

22. Information about opposer , its related companies,and the use of its mark "LBC" can be easily accessed throughwww.lbcexpress.com;

23. Opposer has been spending considerable amountsof money in advertising and promoting its products andservices in the Philippines and abroad;

24. In the Philippines Business Profiles andPerspective, Inc.'s issue of the Top 7000 Corporations in thePhilippines (Business Profiles 2003-2004), many companieswithin the LBC Group of Companies landed in the list of theTop 5000 Corporations;

25. Opposer's business expansion led to the creation of theLBC Development Bank with twenty one (21) branchesnationwide;

26. By reason of the reputation , years of service, andextensive marketing and use of the mark "LBC" in thePhilippines and abroad, opposer strongly believes that themark "LBC" has become distinctive of the product and serviceof the LBC Group of Companies;

27. In view of the foregoing , respondent-applicant'strademark application for the mark "LBC" covering goods inClass 07 should be denied as it is identical to opposer's well-known mark "LBC" for goods falling under Classes 36 and 39as to be likely , when applied to or used in connection withrespondent-applicant's goods , to cause confusion or mistake~

or to dece ive the purchasers ; fi~

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28. The registration of the mark 'LBC" will violateSections 123.1 (d) (iii) and (g) which respectively provides thata mark cannot be registered if it nearly resembles a registeredmark belonging to a different proprietor or a mark with anearlier filing or priority date, or if the mark applied for is likelyto mislead the public particularly as to the nature, quality,characteristics, or geograph ical origin of the goods ;

29. Having established the use of the mark "LBC" inthe 1950s in the Philippines and having it registered here priorto respondent-applicant's application date, there is no doubtthat opposer is entitled to the use of the mark "LBC" to theexclusion of others as it would be unjust to have an identicalmark registered in the name of an entity which is not at allrelated to opposer;

30. In the Philippines and abroad, opposer hasacquired immense and valuable goodwill on the mark "LBC",resulting from the large sums of money spent in advertisingand promoting the same;

31. While the appropriation by opposer of the mark"LBC" is apparent form its history and registration, the samecannot be said of respondent-applicant's similar mark "LBC":Respondent-applicant adopted the mark "LBC" to ride on thecoattails of opposer's well-known mark "LBC";

32. Opposer will be damaged in its proprietaryrights/interest and business reputation by the registration ofrespondent-applicant's mark considering that opposer's well­known mark has long been established not only in thePhilippines but abroad as well;

33. The distinctiveness of opposer's mark "LBC" will bediluted, and will allow respondent-applicant to unfairly benef itfrom and get a free ride on the goodwill of opposer's well­known mark, thereby causing irreparable injury to the latter ;

34. The registration of respondent-applicant's identicalmark will certainly create confusion in the minds of purchaserswho will be deceived into believing that opposer andrespondent-applicant are affiliated entities or that respondent­applicant has opposer's sponsorship to the latter's prejudice;

35. The mark "LBC" is not an ordinary word but th~

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initials of opposer's original business name which was used asearly as the 1950's;

36. In the Philippines, the mark "LBC" is associated tono other company or entity but opposer so much so that themark already became generic to opposer's service andbusiness, and this position finds support in the case of SocieteDes Produits Nestle, S. A. and Nestle Philippines, Inc. v.Court of Appeals and CFC Corporation, (G. R. No. 112012);

37. Resolving conflicting claims in the registration of amark involves determining the existence of confusingsimilarity between the opposing marks : Confusing similarityrefers to such resemblance between a mark or trade name ofa person and that of another as to likely, when applied to orused on their respective goods, business or services, causeconfusion or mistake on the part of the purchasers as to thegoods or services themselves or as to their source or origin;

38. No stretch of imagination is needed to see theobvious similarity of the respective marks of opposer andrespondent-applicant as these are identical in spelling,pronunciation , and even in their solid style of lettering as bothare "LBC";

39.goods;

The public will be deceived as to the origin of the

40. To warrant a denial of an application forregistration of a mark or trade name or to constituteinfringement of a registered mark or trade name, the law doesnot require that the competing marks or trade name produceactual error or mistake: It is sufficient that there is a possibilityor likelihood of the purchaser being mistaken or deceived; and

41 . In view of the foregoing, respondent-applicant'sapplication should be denied in accordance with Section1231.1 9d (iii) and (g) of the IP Code. "

A Notice To Answer dated August 17, 2007 requmnq respondent­applicant to filed its verified answer within thirty (30) days from receipt of saidNotice To Answer was issued by this Bureau . Respondent-applicant received theNotice To Answer on August 31,2007. However, no verified answer was filed b~trrespondent-applicant. Respondent-applicant is, thus, deemed to have waived itl~

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right to file a verified answer.

The issues to be resolved are:

1. Whether respondent-applicant's mark "LBC" is confusingly similaropposer's "LBC" marks ;

2. Whether opposer's "LBC" marks are internationally well-known mark; and

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

Opposer's "LBC" marks are herein depicted as follows :

Registration No. 42001005530

Balla le a IIU "Hr,

Registration No. 42004005569

LBCB,4N K

Registration No. 42000001842

Registration No. 42003004565

Registration No. 2005008280

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WWW.LBCEXPRESS.COM

Registration No. 42007500018

Meanwhile , respondent-applicant's mark is depicted below as follows:

LBCA perusal of opposer's and respondent-applicant's respective marks

shows that obviously, the marks are almost identical visually and aurally: Exceptfor the serifs of opposer's "LBC" marks which are minor details, both marksconsist of the letters "L", "B", and "C"; both are in capital letters; and "LBC" is thedominant mark/feature in opposer's "LBC" marks under Registration Nos.42004005569, 42003004565, 2005008280, and 42007500018. Similarity insize, form and color, while relevant, is not conclusive. Neitherduplication/imitation, or the fact that the infringing label suggests an effort toemulate, is necessary. The competing marks need only contain the main,essential or dominant features of another and that confusion and deception islikely (Sterling Products International, Inc. v. Farbenfabriken BayerAktiengesselschaft, G.R. No. L-19906, April 30, 1969; Lim Hoa v. Director ofPatents, G. R. No. L-8072, October 31, 1956; Co Tiong Sa v. Director ofPatents, et aI., G. R. No. L-5378, May 24, 1954).

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

Though the respect ive marks of the parties are almost identical, thisBureau finds that opposer's services and respondent-applicant's goods aredissimilar and are not even related: The mark "LBC" for which respondent­applicant is applying, is for Class 07 goods, namely, "Parts of molding machines,namely abrasive grinding wheels (machines), grinding wheels being parts ofmachines , pins, cutting tools, diamond wheels, cubic-boron-nitrade (CBN)wheels, diamond cut-off wheels for machines, diamond files (power-operatedtolls) dies for machine tools, die-spring, end mills, locating rings, milling, turning,grinding, boring, accessories and attachments, punches for use with machinetools, sleeves, sprue bushing; parts for plastic molds" while opposer's "LBC"marks are registered for Classes 35, 36, and 39 for money remittance; banking;insurance; pre-need ; real estate ; courier; freight forwarding; banking and financia

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services and transfer for value payment services provided via automated teller

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machines ; acceptance of bills; payment; online services consisting of advertising;promotional services and information services relating thereto; tracking ofshipments; delivery of documents, flowers, pictures, and other goods; andshipment of documents and other goods. Opposer's goods are essentiallymachines while respondent-applicant's goods and services essentially refer tofinancial (money remittance, banking, insurance, pre-need , transfer for valuepayment, acceptance of bills, and real estate) , courier and freight (tracking ofshipments; delivery of documents, flowers , pictures , and other goods , shipmentof documents and other goods), and online services, hence, very different, notrelated and not competitive.

The Supreme Court in the case of Canon Kabushiki vs. Court ofAppeals, et aI., G.R. No. 120900, July 20,2000, stated that:

"The likelihood of confusion of goods or businessis a relative concept, to be determined only according to theparticular, and sometimes peculiar , circumstances of eachcase. Indeed, in trademark law cases, even more than inother litigation, precedent must be studied in the light of thefacts of the particular case. Contrary to petitioner'ssupposition, the facts of this case will show that the cases ofSta. Ana vs. Maliwat , Ang vs. Teodoro and Converse RubberCorporation vs. Universal Rubber Products , Inc. are hardly inpoint. The just cited cases involved goods that wereconfusingly similar , if not identical, as in the case of ConverseRubber Corporation vs. Universal Rubber Products , Inc. Here,the products involved are so unrelated that the public will notbe misled that there is the slightest nexus between petitionerand the goods of private respondent.

In cases of confusion of business or origin, the question thatusually arises is whether the respective goods or services ofthe senior user and the junior user are so related as to likelycause confusion of business or origin, and thereby render thetrademark or tradenames confusingly similar. Goods arerelated when they belong to the same class or have the samedescriptive properties ; when they possess the same physicalattributes or essential characteristics with reference to theirform, composition, texture or quality. They may also berelated because they serve the same purpose or are sold ingrocery stores .

Undoubtedly, the paints , chemical products , toner and~

dyestuff of petitioner that carry the trademark CANON are

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unrelated to sandals , the product of private respondent. Weagree with the BPTTT, following the Esso doctrine, when itnoted that the two classes of products in this case flowthrough different trade channels . The products of petitionerare sold through special chemical stores or distributors whilethe products of private respondent are sold in grocery stores ,sari-sari stores and department stores. Thus , the evidentdisparity of the products of the parties in the case at barrenders unfounded the apprehension of petitioner thatconfusion of business or origin might occur if privaterespondent is allowed to use the mark CANON."

The provision of law that applies to the case at bench is Section 123.1(f) of the IP Code which provides :

"A mark cannot be registered if it:

(f) Is identical with, or confusing similar to, orconstitutes a translation of a mark considered well-known inaccordance with the preceding paragraph (N.B. Section 123.1 [e]of the IP Code), which is registered in the Philippines with respectto goods and services which are not similar to those with respectto which registration applied for: Provided That use of the mark inrelation to those goods or services would indicate a connectionbetween those goods or services, and the owner of the registeredmark: Provided further,That the interests of the owner of theregistered mark are likely to be damaged by such use. . . "

A reading of the aforesaid provision provides for the followingrequisites: 1) 1) The mark must be identical with, or confusingly similar to amark; 2) The mark must be determined by the court , the Director General of theIP Phil., or the Director of the Bureau of Legal Affairs (BLA) to be well-known ; 3)The mark as determined by the court, Director General of the IP Phil. or theDirector of the BLA to be well-known must be well-known internationally and inthe Philippines; 4) The goods on which the mark applied for are used/to be usedare not similar to the goods of opposer; 5) The use of the mark in relation tothose goods would indicate a connection between those goods or services, andthe owner of the registered mark; and 6) The the interests of the owner of theregistered mark are likely to be damaged by such use.

To be considered well-known, thus, among others , there must be afinding of such quality of the mark both internationally and in the Philippines.

The Rules and Regulations on Trademarks, Service Marks, Trad~

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Names and Marked or Stamped Containers, particularly Rule 102 thereofenshrines the criteria to determine a well-known mark, to wit:

"Rule 102. Criteria for determining whether a mark is well-known.In determining whether a mark is well-known, the following

criteria or any combination thereof may be taken into account:

(a) the duration, extent and geographical area of any use ofthe mark, in particular, the duration, extent andgeographical area of any promotion of the mark, includingadvertising or publicity and the presentation, at fairs orexhibitions, of the goods and/or services to which the markapplies;

(b) the market share, in the Philippines and in other countries ,of the goods and/or services to which the mark applies ;

(c) the degree of the inherent or acquired distinction of themark;

(d) the quality-image or reputation acquired by the mark;

(e) the extent to which the mark has been registered in theworld ;

(f) the exclusivity of registration attained by the mark in theworld;

(g) the extent to which the mark has been used in the world;

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world ;

(j) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the issue of whether

the mark is a well-known mark; and

(I) the presence or absence of identical or similar marksvalidly registered for or used on identical or similar goods orservices and owned by persons other than the person claimin~

that his mark is a well-known mark."

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Opposer has not submitted proof of worldwide registrations that wouldmerit its "LBC" marks to be declared as internationally well-known. Moreover,opposer has not submitted proof of use in the world of its "LBC" marks albeit tosuch extent that would likewise merit these marks to be declared asinternationally well-known: What appears on record are posters , ads, and/orfliers showing services offered by opposer using the "LBC" marks in the UnitedStates and United States territories such as Guam and Saipan . These do notprove, however, use of said marks. Adoption is not equivalent to use. Salesinvoices and/or sales receipts are the best evidence of use of a mark (ConverseRubber Corporation v. Universal Rubber Products, et aI., G.R. No. L·27906,January 8, 1987). Granting arguendo that opposer uses the "LBC" marks in theUnited States and in the aforesaid territories thereof, the use in such country andterritories does not qualify said marks to be well-known , considering that theseare only three (3) places/areas in the world. Hence, Opposer's "LBC" marks arenot internationally well-known.

As to the second issue, thus, this Bureau rules in the negative.

In view of the aforesaid findings, discussion as to whether the use ofthe subject mark "LBC" in relation to goods indicated in respondent-applicant'strademark application would indicate a connection between those goods , and theopposer; and as to whether opposer's interests are likely to be damaged by suchuse has become moot and academic.

In fine, respondent-applicant is entitled to the registration of the mark"LBC" for Class 07 goods as applied for. As to the third issue, thus, this Bureaurules in the affirmative.

WHEREFORE, the VERIFIED NOTICE OF OPPOSITION is, as it is,hereby DENIED. Consequently, Application Serial No. 4-2006-009892 filed onSeptember 06, 2006 by respondent-applicant Liberchem Marketing (S) Pte. Ltd.for goods under Class 07, namely, "Parts of molding machines, namely abrasivegrinding wheels (machines) , grinding wheels being parts of machines, pins,cutting tools, diamond wheels, cubic-boron-nitrade (CBN) wheels, diamond cut­off wheels for machines, diamond files (power-operated tolls) dies for machinetools, die-spring, end mills, locating rings, milling, turning, grinding, boring,accessories and attachments, punches for use with machine tools, sleeves,sprue bushing; parts for plastic molds ", is, as it is, hereby GIVEN DUE COURSE.

Let the filewrapper of LBC" subject matter of this case together with thisdecision be forwarded to the Bureau of Trademarks (BOT) for appropriate actiot

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csoe/md

SO ORDERED.

Makati City, May 22, 2008.

/l/V--r '~'vll"-1','(-f( cEST,&LUTA BELTRAN-ABELARDO

" qit; ~to r , Bureau of Legal Affairs

Y CIfi-/'

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