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INTELLECTUAL PROPERTY PHILIPPINES
HAWK DESIGNS, INC., } IPC Case No. 4-2009-00072 Opposer, } Case
filed: 17 April 2009
} Opposition to: -versus } Appln. Ser. No. 4-2008-009722
} Date filed: 12 August 2008 YEE LOCK CO and ROBIN K. CHAN,
}
Respondent-Applicant, } TM: "HAWK}
x---------------------------------------------------x Decision
No. 2009-~
DECISION
For consideration is the Verified Notice of Opposition filed by
Hawk Design, Inc. , a corporation duly organized under the existing
laws of the U.S.A, with business address at 15202 Graham Street,
Huntington Beach, CA 92649, U.S.A. against the applications of Yee
Lock Co and Robin K. Chan both located at 26 Podium Level, Prime
Block, Tutuban Mall, Tondo, bearing Application Serial No.
4-2008-009722 used for footwear namely: shoes, boots, sandals,and
slippers under Class 25 of the International Classification of
Goods and which was published in the Intellectual Property
E-Gazette on 07 November 2008.
The grounds for Opposition to the registration of the mark are
as follows:
"1. Opposer is the prior applicant in the Philippines for the
mark "TONY HAWK" covered by Application No. 4-2007-006691 and "HAWK
HEAD DEVICE" covered by Application No. 4-2007-006692, both filed
on June 27, 2007. The subject mark "HAWK" is identical with, or
confusingly similar with the Opposer's marks "TONY HAWK". Hence,
under Section 123.1 (d) of the IP Code, it can no longer be
registered in the name of Respondent-Applicants.
2. Opposer's trademark is a well-known mark hence, approval of
subject application violates the rights arising from the said
status, contrary to Sections 123.1 (e) and (f) of the IP Code;
3. The use and registration of the applied mark by
Respondent-Applicants will cause confusion, mistake and deception
upon the consuming public and mislead them as to the origin,
nature, quality and characteristics of the goods or: which it is
affixed pursuant to 123.1 (g) of the IP Code.
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Republic of the Philippines INTI'" I It'rTTT A I PDOPlt'DTV
Olt'lt',rlf.
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4. Even without Application Nos. 4-2007-006691, the "TONY HAWK"
mark of Opposer deserves full protection since it is already
internationally well-known. Consequently, under Section 123.1 (e)
and Section 123.1 (f) of the IP Code, the subject mark "HAWK" and
any mark that is confusingly similar with Opposer's marks "TONY
HAWK" can no longer be registered by Respondent-Applicants.
5. The approval of the subject application will violate the
proprietary rights and interest, business reputation and goodwill
of the Opposer considering that the mark applied for mark is
identical to Opposer's "TONY HAWK" marks that are highly
distinctive and over which the Opposer has exclusive use and
registration in numerous countries worldwide.
6. The approval of the subject application will enable the
RespondentApplicants to unfairly profit commercially from the
goodwill, fame, and notoriety of the trademarks "TONY HAWK" to the
damage and prejudice of the Opposer herein contrary to Section
168.1 of the IP Code.
7. Trademark dilution under the Supreme Court ruling in the case
of Levi Strauss & Co. & Levi Strauss (Phi/s.), inc. vs.
Clinton Apparelle, Inc., G.R. No. 1?8900, September 30, 2005.
Together with the Verified Notice of Opposition, Opposer
submitted various evidence, to support its opposition, which are
herein enumerated:
Exhibit Description of Document I Material "A" Legalized
Affidavit of Sean Pence "B" Certified copy of Trademark
Registration No. 2299696,
issued on December 14, 1999, in the United States for the
trademark "TONY HAWK"
"B-1" Certified copy of Trademark Registration No. 2931627,
issued on March 8, 2005, at the United States for the trademark
"HAWK HEAD DEVICE"
"B-2" Certified copy of Trademark Registration No. 3413808,
issued on November 21, 2004, in China for the trademark "TONY
HAWK"
I
"B-3" Certified copy of Trademark Registration No. 3413806,
issued on January 14, 2005 in China for the Trademark "HAWK HEAD
DEVICE"
"B-4" Certified copy of Trademark Registration No.
200112874,
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issued on September 20, 2001 in Hong Kong for the trademark
"TONY HAWK"
"8-5"
"8-6"
"8-7"
"8-8"
"8-9"
"8-10"
"8-11"
Certified copy of Trademark Registration No. 1297018, issued on
February 21, 2007, in India for the trademark "TONY HAWK" Certified
copy of Trademark Registration No. 494455, issued on November 30,
2001 in Indonesia for the trademark "TONY HAWK" Certified copy of
Trademark Registration No. 504852, issued on October 29, 2001 on
South Korea for the trademark "TONY HAWK" Certified copy of
Trademark Registration No. 00813/2005, issued on November 7, 2005,
in Mauritius for the trademark "TONY HAWK" Certified copy of
Trademark Registration No. 663683, issued on January 5, 2004 in New
Zealand for the trademark "TONY HAWK" Certified copy of Trademark
Registration No. TOO/18097F, issued on October 3, 2000 in Singapore
for the trademark "TONY HAWK" Certified copy of Trademark
Registration No. 2000/18719, issued on February 6, 2007 on South
Africa for the trademark "TONY HAWK"
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I
"E"
"F"
"G" to "G-2"
A database list of all trademark and service mark I
registrations and applications for the mark "TONY HAWK" Certified
copy of a poster for the "HAWK European Tour in 2007 Affidavit of
Amando S. Aumento Jr., an Associate Lawyer of Federis &
Associates Law Office "E" Legalized Power of Attorney executed by
Opposer in favor of Federis& Associates Law Offices Printouts
of websites http://www.quiksilver.com, http://tonyhawk.com and
http://www.hawk-city.com
"H" to "H-l" Certified copies of Trademark Application No.
4-2007006691 for "TONY HAWK" covering goods in class 25 and
Trademark Application No. 4-2007-006692 for "HAWK HEAD AND
DEVICE"
"I" to "1-26" Printout of internet website where products
bearing the 'w7 J
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marks "TONY HAWK" and/or "HAWK HEAD DEVICE" appear
"J" to "J-19" Printouts of relevant internet websites where the
sports figure Tony Hawk is featured
"K" to "K-1" Printouts of the Google page showing the search
results for the keywords "TONY HAWK"and "HAWK CLOTHING"
On 14 April 2009, a Notice to Answer the Verified Notice of
Opposition was issued by this Bureau and served personally to
Respondent-Applicant's counsel on 15 May 2009. On 25 August 2009,
Respondents filed its Verified Answer alleging the followlnq
Affirmative and/or Special Defenses:
"1. Respondent-applicants are the lawful owners of the trademark
"HAWK" for use on shoes.
1.1. Respondent-Applicants, together with Rosa Kaw, are the
majority stockholders of Sportrend Mfg. Corp., a corporation duly
organized under the laws of the Philippines and existing since its
incorporation last August 29, 1989.
1.2. On December 13, 1985, Rosa Kaw adopted the mark HAWK and
through Sportrend Mfg. Inc. Corp. started using the mark HAWK on
shoes.
Having acquired ownership of the mark HAWK by means of actual
commercial use thereof, on May 28, 1987, Rosa Kaw filed Application
Serial No. 1776 for the registration of the mark HAWK for use on
shoes falling under Class 25.
On November 3, 1989, Rosa Kaw was issued Certificate of
Registration No. 46817 for the mark HAWK.
1.3. On December 13, 1985, Rosa Kaw also adopted the mark LADY
HAWK &DESIGN for use on shoes.
Likewise, havlnq acquired ownership of the mark LADY HAWK &
DESIGN by means of actual commercial use thereof, on July 27, 1988,
Rosa Kaw filed Application Serial No. 65330 for the registration of
the mark LADY HAWK & DESIGN for use on shoes falling under
Class 25.
On October 1, 1990, Rosa Kaw was issued Certificate of
Registratio No. }),I/ 49237 for the mark LADY HAWK & DESIGN.
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1.4. Relying simply on what appears in the face of both Exhibits
"1" and "5", Rosa Kaw thought that her marks were registered for a
term of 20 years. Rosa Kaw did not file any affidavit of use for
her registrations, although through Sportrend Mfg. Corp., her
registered marks have been continuously used without any
interruption, and without any intention of abandoning them.
1.5. On August 12, 2008, Rosa Kawfiled Application Serial No.
4-2008009722, by way of re-application of her Registration No.
46817 which was ordered cancelled for non-filing of an affidavit of
use following its 5th anniversary. There was no abandonment of the
mark HAWK as the use thereof continues.
1.6 Beginning 2003, Respondent-Applicants through their new
corporate vehicle, Shoexpress, Inc. continue using the mark HAWK
for footwear.
1.7. On September 15, 2008, Rosa Kaw executed an Assignment of
Application Serial No. 4-2008-009722 in favor of
Respondent-Applicants, which assignment was presented for recordaI
before this Office on September 16, 2008.
1.8. The exclusive right of Respondent-Applicants and their
assignor to the mark HAWK has been preserved by express provision
of Section 236 of the IP Code.
2. Respondent-Applicants have better and superior right to the
mark HAWK as against Opposer.
2.1. As early as December 13, 1985, that is fourteen (14) years
before Opposer allegedly adopted and started using in 1999 the mark
TONY HAWK for clothing falling Class 25, Rosa Kaw, assignor to
Respondent-Applicants, had adopted and through their corporate
vehicle, Sportrend Mfg. Corp., started using the mark HAWK on
shoes. Such commercial use continues up to the present.
2.2. Through actual and continuous commercial use of the mark
HAWK in shoes since December 13, 1985, Respondent-Applicants have
acquired ownership of the marks HAWK for use on shoes pursuant to
Section 2-A of Republic Act No. 166, as amended.
2.3. Respondent-Applicants right of ownership of the mark HAWK,
including the right to register said mark, has been preserved by
express~ provisions of Sections 236 of the IP Code. lli·
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2.4. Opposer claims that it first used its mark TONY HAWK on
March 1, 1999 and the mark HAWK HEAD DEVICE on November 11, 2000.
Even assuming Opposer's claim to be true, Opposer's claim of first
use is still fourteen (14) years after the date of first use on
December 13, 1985 of the mark HAWK by Respondent-Applicants
assignor.
By December 13, 1985 when Respondent-Applicant assignor adopted
and started using the mark HAWK, Opposer was not yet existing, much
less using its marks TONY HAWK and HAWK HEAD DEVICE.
2.5. Opposer can not invoke sections 123.1 (e), (f), (g) and
168.1 of the IP Code to defeat the registration of the mark HAWK,
as well as Article 6bis of the Paris Convention.
Opposer's mark TONY HAWK was registered in the USA only on
December 14, 1999 while its mark HAWK HEAD DEVICE was registered in
the USA only on March 8, 2005", long after Respondent-Applicant'
assignor had adopted, started using, and registered the mark
HAWK.
2.6. Opposer cannot claim that the use and registration of the
mark HAWK in favor of Respondent-Applicants will cause damage to
its goodwill and/or dilute the alleged distinctiveness of its
marks. As stated above, fourteen (14) years before 1999 when in
(Opposer) started using its mark TONY HAWK, RespondentApplicants'
assignor had already adopted and through Sportrend Mfg. Corp., has
been using the marks HAWK and LADY HAWK & DESIGN. Neither of
Opposer's marks TONY HAWK and HAWK HEAD DEVICE were registered by
May 28, 1987, when Respondent-Applicants' assignor, ROSA KAW filed
her application for the registration of the mark HAWK which ripened
into Registration No. 46817 issued on November 3, 1989 (Exhibit
"1"); or by July 27, 1988, when Rosa Kaw filed her application for
the registration of the mark LADY HAWK & DESIGN which ripened
into Registration No. 49237 I issued on October 1, 1990.
2.7. Even assuming that eventually, Opposer's marks TONY HAWK
and HAWK HEAD DEVICE have become well-known because of the fame of
Tony Hawk in skateboarding, such fame came about definitely very
much later than December 13, 1985 when Respondent-Applicant's
assignor adopted and started using the mark HAWK on shoes.
Opposer's marks were not yet on eXistence'Jr'
much less popular by December 13, 1985. ~. r:
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3. The claim of Opposer that Respondent-Applicant's mark HAWK is
confusingly similar to its marks TONY HAWK and HAWK HEAD DEVICE
will not bar the registration of the mark HAWK in favor of
Respondent-Applicants.
3.1. As established by substantial documentary evidence,
RespondentApplicant's mark HAWK was adopted and started to be used
as early as December 13, 1985. In fact, it was even registered in
favor of RespondentApplicant's assignor, Rosa Kawon November 3,
1989.
3.2. On the other hand, according to its claim, Opposer's mark
TONY HAWK was first used only on March 1, 1999 and its mark HAWK
HEAD DEVICE was first used only on November 11, 2000 (Par. 18 of
the Notice of Opposition). In the Philippines, Opposer claims that
its first use of its mark TONY HAWK was only in the year 2003 (Par.
13 of the notice of Opposition).
3.3. In addition, Opposer's mark TONY HAWK was first registered
in the U.S.A. only on December 14, 1999 while its marked HAWK HEAD
DEVICE was registered only on March 8, 2005.
3.4. Further, Opposer filed its application to register the
marks TONY HAWK and HAWK HEAD DEVICE in the Philippines only on
June 27, 2007. (Par. 14 of the Notice of Opposition).
3.5. In fine, even if Respondent-Applicant's mark HAWK and
Opposer's marks TONY HAWK and HAWK HEAD DEVICE are confusingly
similar, it is the registration of Opposer's marks which is barred
by the existence and continuous use by Respondent-Applicant's of
the mark HAWK, and not the other way around.
Together with the Verified Answer, Respondent-Applicant filed a
Compliance attaching therewith the following documentary
exhibits:
EXHIBIT DESCRIPTION "1" Certified copy of Certificate of
Registration No. 46817
for the trademark HAWK issued on November 3, 1989 on favor of
Rosa Kaw.
"2" Duplicate original copy of the Assignment of Application
serial No. 4-2008-009722 for the trademark HAWK executed by Rosa
Kaw in favor of Respondent
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Applicants. "3", "3-a" to "3-k" Copies of the Acknowledgement of
Filing; Trademark
Application Form; Registrability Report; Response dated October
13, 2008; Drawing; Assignment of Application for Registration;
Notice of Allowance, and printout of the e-Gazette showing details
of Application Serial No. 4-2008-009722 taken from the file wrapper
of subject application. Certified copy of the Certificate of
Incorporation, together with the Articles of Incorporation of
Sportrend Mfg. Corp. Certified copy of Certificate of Registration
No. 49237 for the mark LADY HAWK & DESIGN issued on October 1,
1990 in favor of Rosa Kaw. Original/certified copies of the Mayor's
Permits issued to Sportrend Mfg. Corp. from 1994 to 2002.
Original/certified copies of representative sales Invoices of
Sportrend Mfg. Corp. indicating sale of products bearing the mark
HAWK. Original/certified copies of Price Lists of Sportrend Mfg.
Corp. for its "HAWK" products. Original/certified copies of
representative samples of advertising and promotional materials of
products bearing the mark "HAWK". Original/certified copies of
various Print Budget Appropriations, Broadcast Telecast Orders and
Contracts for "HAWK" products for the years 19911995. Certified
true copy of the Certificate of Incorporation and Articles of
Incorporation of Shoexpress, Inc. Certification issued by the
Government of Malabon City re the issuance to Shoexpress, Inc. of
Mayor's Permits from 2001 to the present, and the Certification
issued by the Office of the Barangay Captain of Potrero, Malabon
City. Original/certified copies of representative sales Invoices of
Shoexpress, Inc. indicating sale of products bearing the mark HAWK.
Duly notarized affidavit of ROSA KAW. Duly notarized joint
affidavit of CO YEE LOCK and ROBIN K. CHAN.
"4"
"5"
"6" to "6-h"
"7" to "7-g"
"8" to "8-1"
L"9" to "9-m" "10" to "10-dd"
"11"
"12" and"12-a"
"13" to "13-1"
"14" "15"
A Reply was filed by Opposer on 04 September 2009 and Respondent
filed a ReiOinderf/i.
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thereto on 24 september 2009. The issues having been joined, a
Notice of Preliminary Conference was issued on 08 October 2009. On
October 20, 2009, the preliminary conference was terminated, there
being no possibility of an amicable settlement. On 09 November
2009, Order No. 2009-1595 was issued requiring the parties to
submit position papers. Opposer filed its Position Paper on 17
November 2009 while Respondent-Applicant filed its Position Paper
on 23 November 2009. Hence, this case is now submitted fir
decision.
The main issue to be resolved in this case is: WHETHER OR NOT
RESPONDENTAPPUCANT'S MARK ftHAWK- SHOULD BE REGISTERED.
To have a better appreciation of the marks of the parties, they
are hereunder reproduced:
&~_~ser's Mari(s - .------ -----.1Resp~~dents-Applica~ts'
Mark I Application serial No. 4-2007-006691 I
TONY HAWK App. serial No. 4-2007-006692
There is no doubt that the above contending marks are
confusingly similar with each other because of the presence of the
dominant word "hawk". However, there is no dispute as to that issue
and as such there is no need to belabor on such matter anymore.
Anent the core issue in this case, Opposer posits that as a
prior filer of the marks TONY HAWK and HAWK HEAD DEVICE, the
registration of Respondents' HAWK mark should be disallowed.
Opposer alleged that its marks TONY HAWK and HAWK HEAD DEVICE for
us:t;r on goods under Class 25 was filed on June 27, 2007, a much
earlier date that Respondents / 1#
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date of filing of its HAWK mark on August 12, 2008 so that in a
contest between filers of applications for trademark registration
for the same mark, the first to file the trademark registration is
considered the exclusive owner of the mark who can defeat a
subsequent registration of the same as the IP Code has now
instituted the first-to-file system. In addition, Opposer contended
that the intention of the lawmakers behind the law is to abandon
use as a source of trademark rights as per the transcript of
legislative deliberations in Congress.
Also, Opposer, relying on the case of Coby Electronics vs.
Mirage International reasoned out that in that case, this Bureau
was not persuaded by the claim of 'first actual use instead the
Bureau applied the first-to-file rule and ruled that as a result of
the earlier filing by Mirage, Mirage had a better right than Coby
over the COBY mark.
Oppositely, Respondents asseverated that they are the lawful
owners of the HAWK mark as they are the prior actual user in
commerce haVing stepped into the shoes of Rosa Kaw who was the
prior user since 1985 and registrant of the HAWK and LADY HAWK
& DESIGN marks. Respondents argued that ownership of the mark
HAWK for use on shoes initially acquired by Rosa Kaw and
subsequently transferred to them have been preserved through
continuous use up to the present. Further, to contradict Opposer's
argument that it has a better right over the mark HAWK, Respondents
asserted that under the so called firstto-file rule in the IP Code,
the first filer does not and cannot automatically be considered as
the owner of the mark applied for. The right to register a mark
under the IP Code is still limited to the owner of the mark which
in turn was acquired by prior appropriation and use in good
faith.
It is quite clear then from the arguments of both parties, that
the determination of the issue at hand hinges on who between
Opposer who is claiming that it is the prior filer and Respondents
who are claiming that they are the prior actual user in commerce of
the HAWK mark have a better right over said mark.
At present, Republic Act No. 8293 otherwise known as the
"Intellectual Property Code of the Philippines" (IP Code) is the
governing law on trademark registration. Section 122 thereof states
clearly how trademark rights are acquired. It states:
"Sec. 122. How marks are acquired. -The rights in a mark shall
be acquired through registration made validly in accordance with
the provisions of this~
law." /V 10
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Corollary thereto, section 123 (d) of the IP Code further
provides:
"SEC. 123. Registrability. - A mark cannot be registered if
it:
x x x
(d) Is identical with a registered mark belonging to a different
proprietor with an earlier filing or priority 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 be
likely
to deceive or cause confusion."
Applying the above-cited provisions, the basis of registration
of a mark is "prior filing" and as between Opposer and Respondents
in this case, it would seem that Opposer has a better right over
the HAWK mark as it was the first filer, haVing filed its
application for the mark TONY HAWK and HAWK HEAD DEVICE on 27 June
2007 as compared to Respondents who filed their application for the
herein subject mark on 12 August 2008. However, it bears stressing
that while the IP Code adheres to the "first-to-file rule", it also
safeguarded the rights which were already acquired prior to its
effectivity. This protection to priorly acquired rights is
explicitly provided in section 236, to wit:
"Section 236. Preservation ofExisting Rights. - Nothing herein
shall adversely affect the rights on the enforcement of rights in
patents, utility models, industrial designs, marks and works,
acquired in good faith prior to the effective date of this Act."
[Emphasis supplied]
Contrary to Opposer's view, while it is true that the IP Code
adheres to the so called "first-to-file" rule, the repeal of
Republic Act No. 166 did not terminate all trademark rights
acquired under and pursuant to said law. It is noteworthy to
emphasize at this point that only the parts of R.A. No. 166
inconsistent with R.A. No. 8293 was repealed. It is a misleading
notion that because of the repeal of Republic Act No. 166, the
ownership rights acquired in a trademark pursuant to said law has
ceased and was terminated. The abovequoted Section 236 guarantees
due process and observance of justice, fairness or equity.
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The adoption of this provision of law finds purpose in the
repeal of R.A. No. 166 by R.A. No. 8293, to protect the rights of
those who have already invested and established goodwill on their
marks and names. said section 236 draws a conclusion that the
rights referred thereto include rights of owners and prior users of
registered and unregistered trademarks that were acquired in good
faith before R.A. No. 8293 took into force and effect on January 1,
1998 which include the right to appropriate exclusive use of the
trademark and the right to prevent the registration of identical
and confusingly similar trademarks.
Going back, how was the ownership of the mark acquired under the
old trademark law or under R.A. 166? section 2-A of the said law
states:
"SEC. 2. Whatare registrable.- Trademark, tradenames and service
marks owned by persons, corporation, partnerships or associations
domiciled in the Philippines and by persons, corporations,
partnerships or associations domiciled in any foreign country may
be registered in accordance with the provisions of this Act:
Provided, That said trademarks, tradenames, or service marks are
actually in use in commerce and services not less than two months
in the Philippines before the time the applications for
registration are filed: And provided, further, That the country of
which the applicant for registration is a citizen grants by law
substantially similar privileges to citizens of the Philippines,
and such fact is officially certified, with a certified true copy
of the foreign law translated into the English language, by the
government of the foreign country to the Government of the Republic
of the Philippines.
SEC. 2-A. Ownership of trademarks, tradenames and service marks;
how acquired. - Anyone who lawfully produces or deals in
merchandise of any kind or who engages in any lawful business, or
who renders any lawful service in commerce, by actual use thereof
in manufacture or trade, in business, and in the service rendered,
may appropriate to his exclusive use a trademark, a tradename, or a
service mark not so appropriated by another, to distinguish his
merchandise, business or service from the merchandise, business or
service of others. The ownership or possession of a trademark,
tradename, service mark, heretofore or hereafter appropriated, as
in this section provided, shall be recognized and protected in the
same manner and to the sam~ extent as are other property rights
known to the law." [Emphasis / ~!2
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supplied]
Undeniably, the afore-quoted law accentuates the "prior user"
rule, otherwise stated, under RA No. 166, actual use in commerce
and trade in the Philippines is the basis for acquiring ownership
of a trademark. Jurisprudentially, this "prior user and adopter
rule" in trademarks has been confirmed and enunciated by the
Supreme Court in the case of Unno Commercial Enterprises,
Incorporated v. General Milling Corporation, et al.1, to wit:
"The right to register a trademark is based on ownership. When
the applicant is not the owner of the trademark being applied for,
he has no right to apply for the registration of the same. Under
the Trademark Law only the owner of the trademark, trade name or
service mark used to distinguish his goods, business or service
from the goods, business or service of others is entitled to
register the same. x x x
Thus, petitioner's contention that it is the owner of the mark
'All Montana' because of its certificate of registration issued by
the Director of Patents, must fail, since ownership of a trademark
is not acquired by the mere fact of registration alone.
Registration merely creates a prima facie presumption of the
validity ofthe registration, of the registrant's ownership of the
trademark and of the exclusive right to the use thereof.
Registration does not perfect a trademark right. As conceded itself
by petitioner, evidence may be presented to overcome the
presumption. Prior use by one will controvert a claim of legal
appropriation by subsequent users. In the case at bar, the Director
of Patents found that "ample evidence was presented in the record
that centennial Mills, Inc. was the owner and prior user in the
Philippines of the trademark 'All Montana' through a local importer
or broker. Use of the trademark by a mere importer, indentor or
exporter (the Senior Party herein) inures to the benefit of the
foreign manufacturer whose goods are identified by the trademark.
The Junior Party has hereby established a continuous chain of title
and, consequently prior adoption and use" and ruled that "based on
the facts established, it is safe to conclude that the Junior Party
has satisfactorily discharged the burden of proving priority of
adoption and usIj; and is entitled to registration." [Emphasis
supplied] ,.
120 scnx 804 (1983) 13
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A review of Respondents' evidence would show that Rosa Kaw
initially filed her application for registration of the mark HAWK
way back on May 28, 1987 and November 3, 1989, the said trademark
was registered in her favor under certificate of Registration No.
46817. For the LADY HAWK 81. DESIGN mark, she filed an application
for registration on 27 July 1988 and the mark was registered on
OCtober 1, 1990 under Certificate of Registration No. 49237. Both
marks were registered while the old Trademark Law was still in
effect. Considering therefore that the acquisition of ownership
over the mark HAWK and LADY HAWK 81. DESIGN was pursuant to the old
law, which was based on actual use in commerce, following the rule
on preservation of rights under Section 236 of the IP Code,
Respondents have a better right over the subject mark since the
trademark right acquired by Rosa Kaw was passed to them upon
assignment.
In comparison to Opposer, as per its admission, it started using
the mark TONY HAWK only in March 1, 1999 and the mark HAWK HEAD
DEVICE in November 11, 2000. Opposer's marks were also registered
in the United States only on December 14, 1999 and March 8, 2005
respectively. In the Philippines, Opposer's mark was applied for
registration on 27 June 2007. These dates are far much later than
Respondents date of use here in the Philippines.
Now, Opposer in trying to convince this Bureau that it has a
better right over the HAWK mark maintains that the first-to-file
rule should be applied in this case since Rosa Kaw's ownership over
the mark HAWK was abandoned when she failed to file an Affidavit of
Use within one year after the fifth anniversary of the registration
of the mark, which is why it was cancelled by the Bureau of
Trademarks.
We do not agree.
Generally, abandonment means the complete, absolute or total
relinquishment or surrender of one's property or right, or the
voluntary giving up or non-enjoyment of such property or right for
a period of time which results in the forfeiture or loss thereof.
It requires the concurrence of the intention to abandon it and some
overt acts from which it may be inferred not to claim it anymore."
To work an abandonment, the disuse must be permanent and not
ephemeral; it must be intentional and voluntary, and not
involuntary or even compulsory. There must be a thorough ongoing
discontinuance of any trade-mark use of the mark in question."
Applying the said concept to ownership or registration O~~.
2 Agpalo, Ruben E., Legal Words and Phrases, 1997 Ed., page I. 3
. Philippine Nut Industry vs. Standard Brands, Incorporated, Et.
aI., G.R. No. L-23035. July 31, 1975 citing Callman,
'f/:; Unfair Competition and Trademark, 2nd Ed., p. 1341)
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trademarks, in order for a trademark registration to be
considered as abandoned, the owner/registrant must relinquish or
voluntarily surrender its rights over the trademark. In the instant
case, there is no overt act from which it can be inferred that
Respondents has abandoned its trademark registration of the mark
HAWK and LADY HAWK & DESIGN. Respondents have sufficiently
established that the ownership of the marks was never abandoned by
Rosa Kaw, the original owner. In fact, as shown by the overwhelming
evidence such as the Mayor's Permit, sales Invoices, Price usts,
representative samples of advertising and promotional materials of
products bearing the mark HAWK, Print Budget Appropriations,
Broadcast Telecast Orders and Contracts for "HAWK" products
(Exhibits "6" to "10-dd''). Later on, the use was continued through
Shoexpress, Inc. through its footwears bearing the mark HAWK., Rosa
Kaw through its company Sportrend Mfg. Corp. has continuously used
the mark HAWK in its shoes which is evidenced by various sales
Invoices, among others.
Consequently, since Respondents were able to prove that it was
the first adopter and user in commerce and trade in the Philippines
of the marks HAWK and LADY HAWK & DESIGN, it has a better right
over the said marks than Opposer and its vested right over the
marks acquired in good faith under the old trademark law or R.A.
No. 166 cannot be impaired by the passage of R.A. No. 8293 or the
IP Code and the application or registration of a similar or
identical mark under the IP Code.
Furthermore, contrary to Opposer's supposition, it bears
stressing that even in the passage of R.A. No. 8293, ownership is
not obtained by mere registration alone. The Philippines
implemented the Agreement on Trade Related Aspects of Intellectual
Property Rights (TRIPS Agreement) when RA 8293 took into force and
effect on 01 January 1998.
Article 15, in relation to Article 16(1) of the said Agreement
provides that, "it is not the registration that confers ownership
of trademark; rather, it is ownership of the trademark that gives
rise to the right to cause its registration and enjoy exclusive use
thereof for the goods associated with it."
"The "First-To-File" rule could not have been intended to
justify the approval of a trademark application just because it was
the first application to be filed regardless of another's better or
superior right to the mark applied for. The rule cannot be used to
commit or perpetrate an unjust and unfair claim. A trademark is an
industrial property and the owner thereof has property rights over
it. The privilege of being issued a registration for its exclusive
use, therefore, should be based on the concept of ownership. RA
8293 implements the TRIPS Agreement and therefore, the idea of
"registered owner" does not mean that ownership is established by
mere registration but that registration establishes merely a
presumptive right of ownership. That presumption of ownership
yields to superior evidence of actual and real ownership of the
trademark and to the TRIPS Agreement requirement that no existing
prior rights shall be prejudiced."
4 Fishwealth Canning Corp. vs Henry Kawson, Appeal Nos. 10-05-03
and 14-05-06, Office of the Director General, 15
$'
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·.
Opposer's reliance on the case of Coby Electronics Corp. vs.
Mirage International Corp." is also misplaced. In the said case,
this Bureau ruled in favor of Mirage as it was the first to file an
application for trademark registration of the mark Coby. But while
this Bureau applied the so called "flrst-to-nle" rule, attention
should be drawn to the facts of the case. Opposer in that case
claimed prior use not in the Philippines but abroad, that is why
this Bureau did not consider prior use in resolving the case
following the territoriality principle on trademarks. Hence, said
case is not applicable to the case at bar. In contrast, herein
Respondents' claim of prior use took place in the Philippines and
not abroad.
Finally, on Opposer's claim that its mark is well-known, we find
the same to be without merit. section 123.1 (e) of Republic Act No.
8293 provides:
"SEC. 123.1 A mark cannot be registered if it:
xxxx
(e) Is identical with or confusingly similar to, or constitutes
a translation of a mark which is considered by the competent
authority of the Philippines to be well known internationally and
in the Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for
registration and used for identical or similar goods or services:
Provided, That in determining whether a mark is well-known, account
shall be taken of the knowledge of the relevant section of the
public, rather than of the public at large, including knowledge in
the Philippines which has been obtained as a result of the
promotion of the mark; xxx." [Emphasis ours.]
The cited provision is very explicit that a mark cannot be
registered if it is identical or confusingly similar to a mark
which has been declared well-known internationally and in the
Philippines by competent authority. The said provision further
requires that in order to determine whether a mark is well-known,
account shall be taken of the relevant sector of the public
including knowledge in the Philippines. The law is unequivocal that
in order that a mark be considered well-known, evidence should be
presented to demonstrate that Opposer's mark is recognized by the
relevant sector of the public or that the public is aware of such
mark as a result of promotion here in the Philippines. In this
regard, oppo~ failed to satisfy this reqUirement of the law as it
failed to Present any evidence to show theI f A
22 January 2007) ~, 5 Decision No. 2007-09 dated January31,
2007, IPC No. 14-2006-00085.
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I ."
extent of promotion/advertisement of its goods bearing its marks
here in the PhNippines. Presentation of proof of the extent of
registration of the mark in various countries is not
sufficient.
WHEREFORE, premises considered, the Notice of Verified
Opposition filed by Opposer, HAWK DESIGNS, INC. against
respondent-applicant YEE LOCK CO and ROBIN K, CHAN's application
for registration of the mark "HAWK" is, as it is hereby DENIED.
Consequently, the trademark "HAWK" bearing Serial No. 4-2008-009722
filed on 12 August 2008 for use on footwear namely: shoes, boots,
sandals,and slippers belonging to Class 25 of the international
dassification of goods is, as it is hereby, GIVEN DUE COURSE.
Let the filewrapper of HAWK be transmitted to the Bureau of
Trademarks (BOn for appropriate action in accordance with this
DECISION.
SO ORDERED.
Makati City, 04 December 2009.
irector, Bureau of Legal Affairs
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