LEVI STRAUSS & CO., opposer, vs.
ARTHUR SORIANO, “(b) That the use of Respondent-Applicant’s mark DOCKERS on the goods
respondent-applicant.
Inter Partes Case No. 3753
Opposition to:
Application Serial No. 70959
Date Filed : February 22, 1990
Trademark: “DOCKLAND”
DECISION
This is an Opposition to the registration of the mark “DOCKLAND” under
Application Serial No. 70959 filed by Respondent-Applicant Arthur Soriano. CIScaA
The file wrapper of the subject application shows that on February 22, 1990,
Arthur Soriano (hereafter “Respondent” filed with the then Bureau of Patents,
Trademarks and Technology Transfer his application for registration of the
trademark “Dockland” for use on shoes under Class 25 of the International
Classification of Goods, claiming first use of the mark in the Philippines on
October 1, 1989.
On September 5, 1990, the Bureau of Patents, Trademarks and Technology
Transfer sent Respondent a letter (Paper No. 3) advising him that the subject
mark is confusingly similar with the mark “Dockers” in the name of Levi Strauss &
Co. under Registration No. 45556 issued on June 30, 1989, and with the mark
“Docksides” and Device being applied for registration by Adel Morales under
Serial No. 67771 dated April 26, 1989.
On October 15, 1990, the Bureau of Patents Trademarks and Technology Transfer
declared the subject application as Abandoned for the failure of Respondent to
reply and submit the additional requirements requested by the Bureau of Patents
Trademarks and Technology Transfer.
On February 6, 1991, herein Respondent filed his Petition for Revival declaring
that he had no intention of abandoning his application. Respondent further
alleged that his mark had a different spelling, pronunciation and meaning, and
that the marks mentioned in Paper No. 3 covered distinct and different products,
hence, confusion is remote. Finding meritorious grounds therein, the Bureau of
Patents Trademarks and Technology Transfer granted the petition to revive the
abandoned application in accordance with Paper No. 6 (Office Memorandum) and
on May 16, 1991, recommended the publication of the application after finding
that the mark had complied with the requirements of the law. Respondent’s
application was published for opposition in the November v. December 1991 issue
of the Bureau of Patents Trademarks and Technology Transfer Official Gazette,
Volume IV, No. 6 that was released for publication on December 31, 1991.
On January 31, 1992, Levi Strauss & Co. (hereafter “Opposer” filed its Notice of
Opposition alleging that it would be damaged by the registration of Respondent’s
mark based on the following grounds:
“1. That the Opposer is the owner-registrant of the trademark DOCKERS
(Registration No. 45556) and DOCKERS Design (Registration No. 46619) which
has been continuously used in trade and commerce on goods covered in Class 25,
and, specifically, which use has not been abandoned.
“2. That the trademark DOCKLAND is confusingly similar to opposer-registrant’s
trademark, to wit:
“(a) That the trademark DOCKLAND of Respondent-Applicant is nearly if not
completely identical and therefore confusingly similar to the trademark DOCKERS
used and owned by the opposer on essentially the same goods. Thus, the use in
the Philippines of the trademark DOCKLAND by the Respondent Applicant
constitutes an unlawful appropriation of a mark previously used and registered
and not abandoned, a statutory violation of Section 4 (d) of Republic Act No. 166,
as amended.
mentioned in the application will likely cause confusion or mistake, or will likely
deceive purchasers who may be led to believe that the mark of Respondent-
Applicant and the goods on which Respondent Applicant’s mark are used or to be
used are those of the Opposer herein, and vice versa.
“3. For the reasons set forth in paragraph 2 above, Opposer will be damaged by
the registration of the trademark DOCKLAND in the name of Respondent-
Applicant and further; should the respondent applicant’s product be of an inferior
quality to that of Opposer’s, Opposer’s business reputation and goodwill will
suffer grave and irreparable injury.”
In his Answer dated June 19, 1992, Respondent denied the material allegations in
the Opposition and interposed the following special defenses:
“4. It is clear from the alleged Notice of Opposition that Levi Strauss and
Company, the alleged Opposer, is not a duly registered entity in the Philippines,
nor does it have any authorized agent duly registered in the Philippines; hence,
the alleged Opposer has no legal personality to sue in the Philippines.
“5. Being without any legal representative or authorized agent in the Philippines,
the Notice of Opposition should be dismissed outright under Secs. 1 and 3 of Rule
3 of the Rules of Court, and that the alleged Opposer is not a legally registered
juridical person in the Philippines, it cannot do business nor litigate in the
Philippines.
“6. DOCKLAND being a distinct and different trademark from the so-called
DOCKERS, Respondent is legally entitled to maintain the same in his business.
“7. As author/creator of trade name DOCKLAND, respondent has caused a
copyright registration thereof as evidenced by a Certificate of Copyright
Registration hereto attached as Annex “1″.
As no amicable settlement was arrived at by the parties during the pre-trial
conference, the case proceeded to trial on the merits.
During trial, Opposer presented the testimonies of its witnesses, Ramon
Martelino, Stephen Nathan Goldstein, and Bernabe Alajar. It also presented
documents consisting of Exhibits “A” to “W” including their sub-markings that
were admitted in evidence in accordance with Order No. 98-45 dated February
17, 1997.
For his part, Respondent failed to present evidence despite proper notices issued
by the Bureau of Patents Trademarks and Technology Transfer. On motion of
Opposer, Respondent was subsequently declared as having waived his right to
present evidence under Order No. 2000-230 dated May 10, 2000. On August 7,
2000, Opposer filed its Memorandum, hence, this Decision based on the evidence
of Opposer.
Under Section 21-A of Republic Act No. 166, any foreign corporation or juristic
person to which a mark or trade name has been registered or assigned under said
Act may bring an action for infringement, for unfair competition, or false
designation of origin and false description, whether or not it has been licensed to
do business in the Philippines under Act No. 1459, as amended, otherwise known
as the Corporation Law, provided, that at the time it brings the complaint, the
country of which said foreign corporation or juristic person is a citizen, or in which
it is domiciled, by treaty, convention or law, grants a similar privilege to corporate
or juristic persons of the Philippines. Being the holder of Certificates of
Registration No. 45556 and 46619 issued by the Bureau of Patents Trademarks
and Technology Transfer on June 30, 1989 and valid for a term of twenty (20)
years, there is no question that Opposer has the legal personality to file the
instant Opposition and has the exclusive right to use the marks “Dockers” and
“Dockers and Design” for goods falling under Class 25.
Consequently, the only issue left to be resolved is whether Respondent’s mark is
confusingly similar to Opposer’s mark as to preclude the registration of the
former.
The law provides that the owner of a trademark, trade name or service mark used
to distinguish his goods, business or services from the goods, business or services
of others shall have the right to register the same on the principal register, unless
it consists of or comprises a mark or trade name which so resembles a mark or
trade name registered in the Philippines or a mark or trade name previously used
in the Philippines by another and not abandoned, as to be likely, when applied to
or used in connection with the goods, business or services of the applicant, to
cause confusion or mistake or to deceive purchasers. [Section 4 (d) Republic Act
No. 166, as amended.]
The confusion referred to in the law exists when the ordinary prudent purchaser
would be induced to purchase one product or service because of the similarity of
the marks or trade names used thereon. In other words, a person’s goods or
services are purchased as those of another person, and the poorer quality of the
former reflects adversely on the latter’s reputation. [Sterling Products
International, Inc. v. Farbenfabriken Bayer, 27 SCRA 1214 (1969)].
In this case, Respondent’s mark “Dockland” appearing on the shoe label and in
the bristol board contained in the file wrapper is written in capital letters with two
(2) bold horizontal lines placed on the top and bottom portion. Located on the left
side of the mark is a representation of a ship’s anchor that is encircled by a rope.
On the other hand, the mark of Opposer consists of the word “Dockers” written in
capital letters placed above a device with a wing-shaped design consisting of four
(4) solid, horizontal lines with each of the lines gradually decreasing in length
from top to bottom. The words “since 1850″ are also printed on top in a
semicircular fashion, with an anchor and ribbon-like figure in the middle of the
device with the word “LEVI’S” placed underneath. Both marks are used on goods
falling under the same class — Respondent’s mark on shoes in Class 25 and
Opposer’s mark on pants also in Class 25. ATSIED
After considering how the marks are written and spelled, and after evaluating the
manner in which the marks and devices are placed alongside each other, this
Office finds confusing similarity between the two marks that would lead an
ordinary purchaser to believe that the shoes with the mark “Dockland” are also
being manufactured and sold by Opposer. Colorable imitation exists in the
general appearance of the mark as the two (2) marks both start with four lettered
word “DOCK” both written in CAPITAL LETTERS and contain an illustration of a
ship’s anchor encircled by a rope.
Colorable imitation is such a close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an
ordinary purchaser giving such attention as a purchaser usually gives, and to
cause him to purchase the one supposing it to be the other. [Etepha v. Director of
Patents, 16 SCRA 495(1966)]. It does not mean such similitude as “amounts to
identity, nor does it require that all the details be literally copied. Colorable
imitation refers to such similarity in form, content, words, sound, meaning,
special arrangement, or general appearance of the mark or trade name with that
of the other mark or trade name in their over all presentation or in their essential,
substantive and distinctive parts as would likely to mislead or confuse persons in
the ordinary course of purchasing the genuine article. [Agpalo, The Law on
Trademark, Infringement and Unfair Competition, 2000 ed., p. 49; Co Tiong Sa v.
Director of Patents, 95 Phil. 1 (1954)]. ATICcS
A visual comparison of “Dockers” and “Dockland” as they appear on the product
labels shows that the first four letters spelled as “DOCK” is the dominant feature
of these composite marks. This is the word that the ordinary buyer would
remember and recall when shopping for similar goods in department stores. Aside
from this, another common feature of the two marks is the use of a ship’s anchor
surrounded by a rope that appears to have been used to supplement the word
“dock” which in the English language means to disembark or moor in a pier. While
it may true that Respondent’s mark also contains the additional word “land” after
“Dock”, it does not afford such a substantial difference as to prevent likelihood of
confusion among the purchasers. The format, design, and arrangement all point
to the existence of confusing similarity between the marks of Respondent and
Opposer. In addition, confusion of goods becomes more likely because pants and
shoes flow in the same channel of trade and purchased by the same class of
consumers aside from the fact that they fall under one international classification
of goods i.e. Class 25.
The above finding is consistent with existing jurisprudence and decisions of the
Supreme Court. As pointed out by Opposer in its Memorandum, the Supreme
Court has previously held in Marvex Commercial Inc. v. Petra Hawpia & Co., 18
SCRA 1178 (1966) that the marks “SALONPAS” and “LIONPAS” are confusingly
similar. In Sapolin v. Balmaceda, 67 Phil. 705, (1939), the words “Sapolin” and
“Lusolin” were also held to be confusingly similar. Also, this Office previously held
in Guess, Inc. v. The Clothes Shop, Inc., Inter Partes Case No. 3899, Decision No.
97-19 dated November 13, 1997, that the marks “GEORGE MACHADO” and
“GEORGES MARCIANO” are confusingly similar. Likewise, in General Garments v.
Sadhwani, Inter Partes Case No. 322, Decision dated August 29, 1978, it was held
that the marks “PURITRON” and “PURITAN” are confusingly similar. And in
Jantzen, Inc. v. Janton Garment Manufacturing Co., Inter Partes Case No. 1312,
Decision No. 64 dated August 3, 1988, this Office ruled that “JANTZEN” and
“JANTON” are confusingly similar.
We find no reason to deviate from these rulings, and reiterate our findings on the
existence of colorable imitation that is likely to cause confusion to the buying
public.
In view of the foregoing, the instant Opposition is hereby SUSTAINED. Accordingly,
the application for registration of the mark “Dockland” used on shoe under Serial
No. 70959 filed by Arthur Soriano is hereby REJECTED.
Let the file wrapper of DOCKLAND subject matter of the instant case be
forwarded to the Administrative, Financial, and Human Resource Development
Service Bureau for appropriate action in accordance with this Decision with a
copy thereof to be furnished the Bureau of Trademarks for information and update
of its record.
SO ORDERED.
(SGD.) ESTRELLITA BELTRAN-ABELARDO
Director
Bureau of Legal Affairs
Intellectual Property Office
[IPO Decision No. 01-29. December 19, 2001.]
WILFRO P. LUMINLUN, opposer, vs. ALEXANDER JULIAN, INC., respondent-
applicant.
Inter Partes Case No. 3704
Opposition to:
Application Serial No. : 70197
Filed : November 29, 1989
Trademark: Bar Design (with the Colors
Blue, Red, and Green)
DECISION
This pertains to an opposition made by Wilfro P. Luminlun, Filipino, of legal age
and with address at No. 595 Soler St., Binondo, Manila, to the above-captioned
trademark application filed by Alexander Julian, Inc, a corporation organized and
existing under the laws of North Carolina, United States of America, with business
address at 8th West, 40th Street, New York, N.Y. 10018, U.S.A.
On September 1991, Opposer filed a Motion for Extension of Time to File Notice of
Opposition, which was granted by the Bureau of Patents, Trademarks and
Technology Transfer as per Order No. 91-806 giving Opposer until 30 October
1991 within which to file the Notice of Opposition. The Opposer filed the Verified
Notice of Opposition on 16 October 1991 based on the following grounds:
“1. The approval of Application Serial No. 70197 is contrary to Section 4(d) of
Republic Act No. 166, as amended.
“2. The approval of Application Serial No. 70197 is violative of the Copyright Law.
“3. As of the date of the filing of Application Serial No. 70197 on November 28,
1989, respondent-applicant was not entitled to register subject LABEL MARK WITH
THE COLORS GREEN, RED, BLUE, RED AND GREEN in its favor in the Philippines.
“4. The Opposer will be damaged and prejudiced by the registration of subject
LABEL MARK WITH THE COLORS GREEN, RED, BLUE, RED AND GREEN in the name
of the respondent-applicant and his business reputation and goodwill will suffer
great and irreparable injury.
To support the opposition, Opposer relied upon the following facts, among others:
“1. That Opposer adopted and started the use of the trademark COLOURS on
January 1, 1982 in good faith.
“2. That Opposer is the registered owner of the trademark COLOURS for use on
shoes, sandals, slippers, boots, jeans, pants, t-shirts, shirts, briefs, shorts, socks,
handkerchiefs, belts, jogging pants and sweat shirts under Registration Certificate
No. 54870 issued on July 26, 1989, without any opposition being filed thereto, and
which registration is still in full force and effect.
“3. That Opposer has been using the trademark COLOURS together with the
COLOURS LABEL MARK in lawful commerce in the Philippines since January 1,
1982 continuously up to the present.
“4. That Opposer has registered his COLOURS LABEL MARK under Certificate of
Registration 8383 issued on October 30, 1990.
“5. That in addition, Opposer has copyrighted the COLOURS LABEL MARK for
which he was issued last March 20, 1990, Certificate of Copyright Registration No.
0-9253 by the National Library.
“6. That the LABEL MARK WITH THE COLORS GREEN, RED, BLUE, RED AND GREEN
being registered by the respondent-applicant is identical and/or confusingly
similar to Opposer’s duly registered and copyrighted COLOURS LABEL MARK.
“7. That Opposer has spent a considerable amount of time money and efforts to
advertise and promote his products bearing his registered trademark COLOURS
and registered and copyrighted COLOURS LABEL MARK, so much so that said
trademark and label mark has become distinctive of Opposer’s goods and
received the consumer’s recognition and goodwill.
“8. That considering that the goods upon which respondent-applicant uses its
subject label mark, are identical/and or related to the goods upon which the
Opposer uses his registered trademark COLOURS and duly registered and
copyrighted COLOURS LABEL MARK, likelihood of confusion, deception or mistake,
as to the actual source or origin of respondent-applicant’s goods is likely.
“9. That the allowance of Application Serial No. 70197 is clearly violative of
Section 4(d) of Republic Act 166, as amended.
“10. That the approval of Application Serial No. 70197 is contrary to the Copyright
Law.
“11. That as of November 29, 1989, when it filed Application Serial No. 70197,
respondent-applicant was not entitled to register the LABEL MARK WITH COLORS
GREEN, RED, BLUE, RED AND GREEN under Section 37 of Republic Act No. 166, as
amended.
“12. That respondent-applicant is now precluded by the equitable principles of
acquiescence, estoppel and laches from registering the LABEL MARK WITH
COLORS GREEN, RED, BLUE, RED AND GREEN. ADCSEa
“13. That the allowance of Application Serial No. 70197 will damage and prejudice
Opposer and his business reputation and goodwill will suffer great and irreparable
injury.
In its Answer filed on 22 November 1991, Respondent-Applicant denied the
allegations in the Opposition and claimed that the Notice of Opposition was filed
beyond the reglementary period of thirty days from the publication of the mark in
the Official Gazette, which in the instant case, was on 31 August 1991. In his
Comment filed on 8 January 1991, Opposer manifested that the Notice of
Opposition was filed within the extended period granted by the BPTTT in its Order
No. Order No. 91-806, which gave Opposer until 30 October 1991 within which to
file said Notice. Consequently, on 30 January 1992, the Respondent-Applicant
filed another Answer, alleging as its affirmative defenses that (a) the mark LABEL
WITH COLORS GREEN RED BLUE RED AND GREEN had long enjoyed trademark
protection in the United States and in other countries, i.e., Canada and Mexico;
(b) that the trademark, which has been in continuous use since its adoption, has
a wide consumer following in various countries: (c) that the trademark has gained
tremendous goodwill for the Respondent-Applicant and has become clearly
distinctive of the products it manufactures and distributes; and (d) that the
trademark can be considered as a well-known mark and therefore, entitled to
protection pursuant to Article 6bis of the Paris Convention and Executive Order
No. 913 issued by the Minister of Trade on 7 October 1983.
On 31 January 1991, Opposer filed a Motion for Judgment on the Pleadings,
alleging that Respondent-Applicant’s Answer, filed on 22 November 1991, failed
to tender an issue since the Answer merely contained general denials of the
grounds and supporting facts alleged in the Opposition. Hence, under Rule 169-I
of the Revised Rules of Practice in Trademark Cases, the Respondent-Applicant is
deemed to have admitted the material allegations of the Opposition, such that a
judgment on the pleadings may be rendered by the Director of Patents.
On 19 February 1991, Opposer filed a Motion to Strike Off Respondent-Applicant’s
Answer dated 29 January 1992, alleging that said Answer was filed beyond the 12
December 1991 deadline for the Respondent-Applicant to file its Answer, and
without prior leave of court after a prior Answer had already been filed on 19
December 1991.
On 24 February 1992, Respondent-Applicant filed an Opposition to the Motion for
Judgment on the Pleadings, stating that said motion has no basis in law and in
fact. Citing its Answer filed on 30 January 1992, Respondent-Applicants claimed
that contrary to Opposer’s allegation that only general denials were made in the
Answer, Respondent-Applicant stated in its Answer that its trademark has enjoyed
tremendous goodwill in various countries, such mark being well-known and
registered in various countries.
On 31 March 1999, this Office issued Order 99-68 denying the Motion for
Judgment on the Pleadings in the interest of justice and fair play. The case was
thereafter set for pre-trial trial. The pre-trial proceedings failed to result in an
amicable settlement. Subsequently, trial on the merits was conducted and the
parties were directed to present their respective evidence. HSIDTE
On 04 May 2000, Opposer commenced the presentation of its evidence by
presenting and marking as exhibits the following documents: (a) certified true
copy of Certificate of Registration No. 45840 of the trademark COLOURS issued in
the name of Opposer on 26 July 1989, together with the Affidavits of Use filed on
02 December 1994 and 01 June 2000; (b) labels actually being used by the
Opposer and on file with the records of Registration No. 45840 of the trademark
COLOURS; (c) certified true copy of Certificate of Registration No. SR-8383 of the
COLOURS LABEL MARK issued in the name of the Opposer on 30 October 1990,
together with the Affidavit of Use filed on 02 October 1996; (d) certified true copy
of Certificate of Copyright Registration No. 0-9253 for COLOURS Label issued in
the name of the Opposer on 20 March 1990; (e) certified true copy of Certificate
of Registration No. 62139 of the trademark COLOURS AGAINST A RECTANGULAR
BACKGROUND COLORED BLUE, RED, GREEN; and (f) certified true copy of
Certificate of Copyright Registration No. 0-12308 for COLOURS (the colors, blue,
red and green are claimed) Label issued in the name of the Opposer on 01
October 1992, together with the notarized application for copyright, to defend its
proprietary right to the LABEL MARK WITH COLORS BLUE, RED AND GREEN.
Opposer fled its Formal Offer of Exhibits on 10 August 2000, to which
Respondent-Applicant did not file any comment or objection. Hence, the
Opposer’s documentary evidence consisting of Exhibits “A” to “F” inclusive of sub-
markings were admitted for whatever purpose they may be worth.
The case was set for hearing on 12 February 2001 for the presentation of
Respondent-Applicant’s evidence. For failure of Respondent-Applicant or its
counsel to appear, the case was re-set for hearing on 15 March 2001 and 19 April
2001. Neither of the Respondent Applicant or its counsel appeared on the
scheduled hearings so that counsel for the Opposer moved that Respondent-
Applicant be deemed to have waived its right to present evidence.
On 19 April 2001, this Office issued Order No. 2001-196 declaring Respondent-
Applicant to have waived its right to present evidence. The instant case was
submitted for resolution on the basis of the evidence on record.
The issues to be resolved in this particular case are: (a) whether or not there
exists a confusing similarity between the Opposer’s trademarks COLOURS and
COLOURS LABEL MARK and Respondent-Applicant’s trademark BAR DESIGN WITH
COLORS GREEN, RED, BLUE, RED AND GREEN; and (b) who between the Opposer
and the Respondent-Applicant is the prior user entitled to protection under the
Trademark Law.
Considering that the Application subject of the instant opposition was filed under
the old Trademark Law (R.A. 166, as amended), this Office shall resolve the
instant case under said law so as not to adversely affect rights already acquired
prior to the effectivity of the new Intellectual Property Code (R.A. 8293).
The applicable provision of the Trademark Law, Section 4(d) provides:
“SECTION 4. Registration of trademarks, trade-names and service-marks on the
principal register. — . . . The owner of a trademark, trade-name or service-mark
used to distinguish his goods, business or services from the goods, business or
service of others shall have a right to register the same on the Principal Register,
unless it:
xxx xxx xxx
“(d) Consists of or comprises a mark or trade-name which so resembles a mark or
trade-name registered in the Philippines or a mark or trade-name previously used
in the Philippines by another and not abandoned, as to be likely, when applied to
or in connection with the goods, business or service of the applicant, to cause
confusion or mistake or to deceive purchasers.”
The determinative factor in a contest involving registration of trademark is not
whether the challenged mark would actually cause confusion or deception of the
purchasers but whether the use of the mark would likely cause confusion or
mistake on the part of the buying public. The law does not require that the
competing trademarks must be so identical as to produce actual error or mistake.
It would be sufficient that the similarity between the two trademarks is such that
there is a possibility or likelihood of the older brand mistaking the newer brand for
it.
The Supreme Court, in determining whether or not there is confusing similarity
between trademarks, has relied on the dominancy test or the assessment of the
essential or dominant features in the competing trademarks. If the competing
trademark contains the main or essential or dominant features of another by
reason of which confusion or deception are likely to result, then infringement
takes place. Duplication or imitation is not necessary. A similarity in the dominant
features of the trademark would be sufficient. Factors such as similarity in
appearance, form, style, shape, format and color have been considered in
determining confusing similarity. HTCIcE
In the case of case of Etepha vs. Director of Patents (16 SCRA 502), the Supreme
Court stated that:
“The essential element of infringement is colorable imitation. This term has been
defined as “such a close or ingenious imitation as to be calculated to deceive
ordinary purchasers, or such resemblance of the infringing mark to the original as
to deceive an ordinary purchaser giving such attention as a purchaser usually
gives, and to cause him to purchase the one, supposing it to be the other.”
In the case of Del Monte Corporation vs. Court of Appeals (G.R. No. 78325, 25
January 1990) the Supreme Court, in ruling that the Sunshine Tomato Catsup label
is a colorable imitation of the Del Monte trademark, found that:
“Sunshine Tomato Catsup label is a colorable imitation of the Del Monte
trademark due to prominent similarities in general design although there are
some differences. The predominant colors used in the Del Monte label are green
and red orange, the same with Sunshine. The word “catsup” in both bottles is
printed in white and the style of the print/letter is the same. Although the logo of
Sunshine is not a tomato, the figure nevertheless approximates that of a tomato.”
In the instant case, a comparison of Opposer’s trademarks COLOURS, COLOURS
LABEL MARK and COLOURS AGAINST A RECTANGULAR BACKGROUND COLORED
BLUE, RED AND GREEN and the Respondent-Applicant’s BAR DESIGN (WITH
COLORS BLUE, RED AND GREEN) will show that other than the word “COLOURS”
in the trademarks of the Opposer, the appearance of the Opposer’s and
Respondent-Applicant’s marks/labels are the same. The shape of both
trademarks/labels is rectangular. The design of both trademarks/labels is also the
same bar design with the same colors, i.e., blue, red and green. And considering
that both trademarks/labels also covers similar goods, i.e., clothing and
accessories that flow through the same channels of trade, confusion between the
trademarks/labels is likely to result in the mind of the prospective buyers.
As per the evidence presented, the trademark COLOURS and the COLOURS LABEL
MARK were first used by the Opposer in the Philippines on 01 January 1982.
Opposer has continuously been using said marks as proven by the Affidavits of
Use presented by the Opposer. On the other hand, no evidence was presented
pertaining to the first use by the Respondent-Applicant of the trademark/label
BAR DESIGN (with colors blue, red and green) in the Philippines. Respondent,
while claiming registration of its mark in other countries and that said mark is a
well-known mark, did not present evidence to prove said allegations.
Thus, it is clear from the foregoing that between the Opposer and the
Respondent-Applicant, the former has sufficiently proven that it is prior user of
the trademark COLOURS and COLOURS LABEL MARK and is therefore entitled to
protection from infringement thereof.
WHEREFORE, premises considered, the Notice of Opposition is hereby
SUSTAINED. Consequently, Application bearing Serial No. 70197 for the mark
“BAR DESIGN (with colors green, red and blue)” filed by ALEXANDER JULIAN, INC.
on 29 November 1989 is hereby REJECTED.
Let the filewrapper of BAR DESIGN, subject matter of this case be forwarded to
the Administrative, Financial and Human Resource Development Bureau for
appropriate action in accordance with this Decision with a copy thereof furnished
the Bureau of Trademarks for information and update of its record. SCIcTD
SO ORDERED.
(SGD.) ESTRELLITA BELTRAN-ABELARDO
Director
Bureau of Legal Affairs
Intellectual Property Office