iPINTELLECTUAL PROPERTYPHILIPPINES

-versus-

SANDISK COPRPORATION,Opposer,

}}}}}

MR. DAVID LIM, }Respondent-applicant. }

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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~y

Philippines 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: mail@ipophil.gov.ph

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 well­known 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

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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. 4­2003-011122 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

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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 Respondent­Applicant 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. 4-2003­011122 for "SANDISK"Certified True Copy of Trademark Registration No. 4-2003­011124 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;elikely to deceive or cause confusion "

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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 trademarks must be so identical as toproduce actual error or mistake. It is rather sufficient that the similarity between thetwo trademarks is such that there is a possibility or likelihood of the older brandmistaking the newer brand for it.

The existence of confusion of trademark or the possibility of deception to thepublic hinges on "colorable imitation", which has been defined as "such similarity inform, content, words, sound, meaning, special arrangement or general appearance ofthe trademark or trade name in their overall presentation or in their essential andsubstantive and distinctive parts as would likely to mislead or confuse persons in theordinary course of purchasing the genuine article." (Emerald Garment Mfg. Corp. vsCourt ofAppeals, 251 SCRA 600)

Turning to the names adopted by the parties, " it must be emphasized that intrademark cases in the Philippines, particularly in ascertaining whether one trademark isconfusingly similar to or is a colorable imitation of another, no set of rules can bededuced. Each case must be decided on its own merits. (Emerald GarmentManufacturing Corporation v. Court of Appeals, 251 SCRA 600). In EssoStandard, Inc. v. Court ofAppeals (116 SCRA 336), we ruled that the likelihood ofconfusion is a relative concept; to be determined only according to the particular , andsometimes peculiar, circumstances of each case. Usually, these are signs, color,design, peculiar shape or name, or some special, easily remembered earmarks of thebrand that easily attracts and catches the eye of the ordinary consumer.

With that in mind, the marks of the contending parties are reproduced hereunderfor comparison:

SANDISK Sari)jskJ~

Opposer's Mark

~ .

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Respondent-Applicant's Mark

In resolving the issue of confusing similarity, the law and j urisprudence hasdeveloped two kinds of tests - the Dominancy Test as applied in a litany of SupremeCourt decisions including Asia Brewery, Inc. vs Court of Appeals, 224 SCRA 437; CoTiong vs Director of Patents, 95 Phil. 1; Lim Hoa vs. Director of Patents, 100 Phil. 214;American Wire & Cable Co. vs. Director of Patents, 31 SCRA 544; Philippine NutIndustry, Inc. vs. Standard Brands, Inc., 65 SCRA 575; Converse Rubber Corp. vsUnversal Rubber Products, Inc., 147 SCRA 154; and the Holistic Test developed in DelMonte Corporation vs Court of Appeals, 181 SCRA 410; Mead Johnson & Co. vs N.V.J.Van Dorp, Ltd., 7 SCRA 771; Fruit of the Loom, Inc. vs Court of Appeals, 133 SCRA 405.

Notably, the Supreme Court in McDonald's Corporation v. i.e. Big MakBurger, Inc., G.R. No. 143993, dated 18 August 2004 declared that the test ofdominancy has now been incorporated in the law. The Court held:

"In determining likelihood of confusion, jurisprudence has developed two tests,the dominancy test and the holistic test. The dominancy test focuses on thesimilarity of the prevalent features of the competing trademarks that mightcause confusion. In contrast, the holistic test requires the court to considerthe entirety of the marks as applied to the products, including the labels andpackaging, in determining confusing similarity. x x x

The test of dominancy is now explicitly incorporated into law in Section 155.1of the Intellectual Property Code which defines infringement as the "colorableimitation of a registered mark x x x or a dominant feature thereof."

Applying the dominancy test, the Court finds that respondents' use of the "BigMak" mark results in likelihood of confusion. First, "Big Mak" sounds exactlythe same as "Big Mac". Second, the first word in "Big Mak" is exactly the sameas the first word in "Big Mac". Third, the first two letters in "Mak"are the sameas the first two lettrs in "Mac". Fourth, the last letter in "Mak"while a "K"sounds the same as "c" in spelling, thus "Caloocan" is spelled "Kaloocan'r'(Underscoring supplied)

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The Supreme Court, had relied on the dominancy test in its earlier decisions. InAmerican Wire & Cable Co. vs. Director of Patents, 31 SCRA 544, it held:

"The question is, when is a trademark likely to confuse or to cause the publicto mistake one for another. Earlier rulings of the Court seem to indicate itsreliance on the dominancy test or the assessment of the essential ordominant features in the competing labels to determine whether they areconfusingly similar.

xxx

Along the same line are the rulings denying registration of a markcontaining the picture of a fish (Bangus), as label for soy sauce, for beingsimilar to another registered brand of soy sauce that bears the picture of thefish carp; or that of the mark bearing the picture of two roosters with theword "Bantam", as label for food seasoning (vetsin), which would confusethe purchasers of the same article bearing the registered mark 'Hen Brand"that features the picture of a hen.

The present case is governed by the principles laid down in thepreceding cases. The similarity between the competing marks, DURAFLEXand DYNAFLEX, is apparent. Not only are the initial letters and the last half ofthe appellations identical, but the difference exists only in two out of the eightliteral elements of the designations. Coupled with the fact that both markscovered insulated flexible wires under class 20; that both products arecontained in boxes of the same material, color, shape and size; x x x"

Relatively, in Marvex Commercial Co. Inc. vs Petra Hawpia & Co., 18SCRA 1178, the Supreme Court held:

"The following random list of confusingly similar sounds in the matter oftrademarks, culled form Nims, Unfair Competition and Trade Marks, 1974, vol. 1,will reinforce our view that "SALONPAS" and "LIONPAS" are confusingly similar insound: "Gold Dust" and "Gold Drop", "Jantzen" and "Jazz-Sea"; "Silver-splash"and "Supper-Flash"; "Cascarete" and "Celborite", "Celluloid" and "Cellonite","Charteuse" and "Charseurs", "Cutes" and "Cuticlean"; "Hebe" and "Meje";"Kotex" and "Femetex"; "Zuso" and "Hoo-hoo" Leon Amdur, in his book"Trademark Law and Practice", pp. 419-421, cites, as coming within the purviewof the idem sonans rule. "Yusea" and "U-C-A", "Steinway Pianos" and "SteinbergPianos" and "Seven-Up" and "Lemon-Up". In Co Tiong vs Director of Patents,this Court unquivocally said that "Celdura" and "Condura" are confusingly similarin sound; this Court held in Sapolin Co. vs Balmaceda, 67 Phi l. 795 that the name"Lusolin" is an infringement of the trademark "Saplin", as the sound of the twonames is almost the same."

Applying the foregoing precepts in the appreciation of these two marks subjectmatter of this case, this Bureau assessed that the aural similarities betw een the marksSUNDISK and SANDISK are patently obvious producing the same cadence whenpronounced. Both marks contain two (2) syllables and similar prefi xes and»:They both have seven (7) letters, although Applicant's mark use the letter U in the first

~~

syllable in place of the letter A in Opposer's mark, when pronounced the two markssounds almost the same, SUN DISK is not at all phonetically different from SANDISK.This is an application of the idem sonams rule as held in the case of Sapolin Co. vsBalmaceda, 67 Phil. 795, which provides that confusion is likely to arise betweencontending marks which when pronounced sounds alike.

For purposes of illustration, we have adopted the declaration of the Court in thecase of Celanes Corporation of America vs. E.!. Du Pont de Nemours & Co.(1946), 154F. 2d 146 148 which held that "the following words have the samesignificance or have the same appearance and meaning:

"CELDURA" and "CORDURA" - That both marks consideredas a whole are similar in meaning and appearance can not bedoubted. When spoken as written they sound very muchalike . Similarity of sound alone, under suchcircumstances, is sufficient to cause the marks to beregarded as confusingly similar when applied tomerchandise of the same descriptive properties. "

Records further reveal that the contending marks cover the same class 09 of theclassification of goods. Opposer's registered mark SANDISK covers "semiconductormemory devices, namely integrated circuits electronic circuit cards and cartridges, andflash memory cards, cartridges, adapters, converters controllers, players, readers,storage modules, and computer peripherals; portable digital recording and data storageunits; and computer software for controll ing and operating semiconductor memorydevices and portable digital devices". On the other hand, Respondent"s confusinglysimilar mark SUNDISK covers "MP3 players, VCDjDVD players, microphone, amplifiers"They are competing goods because they pertain to electronic devices and inst rumentsfalling under Class 09 of the International Classification of Goods. Thus, applying thesecompeting marks to the same goods which passed through the same channels of tradeand marketed similarly, may lead to confusion in trade and would damage Opposer'sbusiness it has created since its application and the subsequent issuance of registrat ionin its favor in 2005.

Jurisprudence has not disregarded the fact that differences in contending marksstill exist. But these differences appear insignificant by reason of evident similarity inthe dominant feature and overall appearance of the marks. In this regard, the SupremeCourt has said:

"It is not necessary, to constitute trademark 'infringement', thatevery word of a trade-mark should be appropriated, but it is sufficient thatenough be taken to deceive the public in the purchase of a protectedarticle." (Bunte Bros. vs Standard Chocolates, D.C. Mass, 45 F.Supp. 478, 481). 'Infringement' of trade-mark does not depend on theuse of identical words, not on the question whether they are so similar thata person looking at one would be deceived into the belief that it was theother, it being sufficient if one mark is so like another in form, spelling, o~

sound that one with not a very definite or clear recollection as to the real

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sound that one with not a very definite or clear recollection as to the realmark is likely to be confused or mislead. (Northam Warrencorporation vs Universal Cosmetic C., C.C.A. III, 18 F.2d 714, 775)(Philippine Nut Industry, Inc. vs Standard Brands Incorporated,65 SCRA 575)

Moreover, Respondent-Applicant's non-submission of answer merited his failur eto prove better right over the Opposer nor dislodge the superior right of Opposer overthe mark.

Finally, we cannot lend credence to opposer's contention that it is a well-knownmark. Basic is the rule that Opposer has onus probandi in establishing and proving thatit is well -known internationally and in the Philippines.

Rule 102 of the Rules and Regulations on Trademarks state:

"RULE 102. Criteria for determining whether a mark is well-known,- Indetermining whether a mark is well known, the following criteria or any combinationthereof may be taken into account:

a) the duration, extent and geographical area of any use of themark, in particular, the duration, extent and geographical area ofany promotion of the mark, including advertising or publicity andthe presentation, at fairs or exhibitions, of the goods and/ orservices to which the mark applies;

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

c) the degree of the inherent or acquired distinction of the mark;d) the quality-image or reputation acquired by the mark;e) the extent to which the mark has been registered in the world;f) the exclusivity of registration attained by the mark in the world ;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 wheth er the

mark is a well-known mark; andI) the presence or absence of identical or similar marks validly

registered for or used on identica l or similar goods or servicesowned by persons other than the person claiming that his mark isa well-known mark ."

As aptly enunciated by the Supreme Court in the case of Kabushi KaishaIsetan vs. Intermediate Appellate Court (203 SCRA 593):

"The mere origination or adoption of a particular tradename withoutactual use thereof in the market is insufficient to give any exclusive rigr

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291 Mass. 394), even though such adoption is publicly declared, such asby use of the name in advertisements, circulars, price lists and on signsand stationary. (Consumers Petroleum Co. v. Consumers Co. of III.169 F 2d 153).

The Paris Convention for the Protection of Industrial Property does notautomatically exclude all countries of the world who have signed it fromusing a tradename which happens to be used in one country. Toillustrate- If a taxicab or bus company in a town in the United Kingdom orIndia happens to use the tradename 'Rapid Transportation", it does notnecessarily follow that "Rapid" can no longer be registered in Uganda,Fiji, or the Philippines."

By these standards and the evidence consisting of certificates of registrationsobtained in the Philippines and countries abroad, this Bureau is unconvinced of thestatus of Opposer's mark SANDISK as a well-known mark. Moreover, the evidence isinsufficient to sustain a finding that the mark is well-known internationally and in thePhilippines which is a requirement under Section 123(e) which states: under Section123(e) of R.A. 8293 which states:

"Section 123. A mark cannot be registered if:

e) is identical with, or confusingly similar to, or constitutes a translation ofa mark which is considered by competent authority of the Philippines to be well knowninternationally and in the Philippines, whether or not registered here, as being alreadythe mark of a person other than the applicant for registration, and used for identical orsimilar goods."

Considering however, that as previously discussed, Respondent-Applicant'sSUNDISK is confusingly similar to Opposer's SAN DISK, the registration of the markSUNDISK cannot therefore, be allowed.

WHEREFORE, premises considered, the Verified Notice of Opposition filed bySANDISK CORPORATION is, as it is hereby, SUSTAINED. Accordingly, Application SerialNo. 4-2006-10020 filed by Respondent-Applicant, David Lim on 11 September 2006 forthe mark "SUNDISK AND DEVICE" under class 09, is, as it is hereby, REJECTED

Let the filewrapper of "SUNDISK AND DEVICE", subject matter of this casetogether with a copy of this DECISION be forwarded to the Bur lCfemarks (BOT)for appropriate action.

SO ORDERED.

07 May 2008, Makati City.

UTA BELTRAN-ABELARDOtor, Bureau of Legal Affairs

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