f ~iPonlineservices.ipophil.gov.ph/ipcaselibrary/ipcasepdf/...Ortigas Center 1605 Pasig City APPEAL NO. 14-06-09 Inter Partes Case No. 14-2004-00084 Petition for Cancellation: Registration

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~iP INTELLECTUAL PROPERTY PHILIPPINES

;.OFFICE OF THE DIRECTOR GENERAL

SHEN DAR ELECTRICITY APPEAL NO. 14-06-09 MACHINERY CO.~ LTD.~ Inter Partes Case No. 14-2004-00084 !

fPetitioner-Appellant, Petition for Cancellation: I -versus- Registration No. 4-1999-005393 I

Date issued: 19 January 2004 iE.Y. INDUSTRIAL SALES INC., ENGRACIO YAP~ ET.AL. TRADEMARK: VESPA (

Respondents-Appellees. f :;

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NOTICE OF DECISION- ',

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INTELLECTUAL PROPERTY PHILIPPINES

OFFICE OF THE DIRECTOR GENERAL

SHEN DAR ELECTRICITY MACHINERY CO., LTD.,

Petitioner-Appellant,

-versus-

KY. INDUSTRIAL SALES INC., ENGRACIOYAP, ET.AL.

DEL ROSARIO BAGAMASBAD & RABOCA Counsel for Appellant Rosadel Bldg. 1011 Metropolitan Avenue, Makati City

REYES & SANTOS LAW OFFICES Counsel for Appellee Unit 1003 Manila Luxury Condominium Pearl Drive comer Goldloop Street Ortigas Center 1605 Pasig City

APPEAL NO. 14-06-09 Inter Partes Case No. 14-2004-00084 Petition for Cancellation:

Registration No. 4-1999-005393 Date issued: 19January 2004

TRADEMARK: VESPA

Respondents-Appellees.

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NOTICE OF DECISION

DIRECTOR CORAZON T. MARQUESES Administration, Finance and Human Resource Development Service Bureau Intellectual Property Office

DIRECTOR CARMEN G. PERALTA Documentation, Information and Technology Transfer Bureau Intellectual Property Office

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I DIRECTOR ESTRELLITA B. ABELARDO DIRECTOR LENY B. RAZ It:;

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Bureau of Legal Affairs Director of the Bureau of Trademarks Intellectual Property Office Intellectual Property Office

GREETINGS:

Please be informed that on 25 May 2007, the Office of the Director General rendered a Decision in the above-titled case (copy attached).

Makati City, 28 May 2007.

Very truly yours,

AT At ey Office of the Director General

Republic of tbe Pbilippines INTELLECTUAL PROPERTY OFFICE

151 Sen. Gil Puvat Ave Malcati City 1200 Philinnines • wwwjnonhiL2ov_nh

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INTELLECTUAL PROPERTY PHiliPPINES

OFFICE OF THE DIRECTOR GENERAL

SHEN DAR ELEctRICITY Appeal No. 14-06-09 MACHINERY CO. LTD.,

Appellant, Inter Partes Case No. 14-2004-00084 Petition for Cancellation

-versus- Registration No. 4-1999-005393 Date Issued: 18January 2004

E. Y. INDUSTRIAL SALES, INC., Trademarlc VESPA ENGRACIOYAP, ET AL.,

Appellees. x-------------------------------------------x

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DECISION

SHEN DAR ELECTRICITY MACHINERY CO. LID. ("Appellant") appeals the Decision No. 2006-40 rendered by the Director of the Bureau of Legal Affairs ("Director") on 29 May 2006. In her decision, the Director denied the Appellant's Petition for Cancellation of the registration of the trademark VESPA issued in favor of E.Y. INDUSTRIAL SALES, INC.

Records show that on 09 June 1997 the Appellant filed Trademark Application Serial No. 4-1997-121492 for the mark VESPA, CHINESE CHARACTERS & DEVICE for use on air compressor and spot welding. More than two (2) years later, E.Y. INDUSTRIAL SALES, INC. filed Trademark Application Serial No. 4-1999005393 for the mark VESPA, also for use on air compressor. E.Y. INDUSTRIAL SALES, INC. obtained Certificate of Registration No. 4-1999-005393 on 18 January 2004.

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On 21 June 2004 the Appellant filed a Petition for Cancellation alleging among others, the following:

1. The registration of the mark VESPA in favor of E.Y. INDUSTRIAL SALES, INC. was obtained fraudulendy or contrary to the provisions of Sec. 123.1 par. (d), (e) and (f) of Republic Act No. 8293, known as the

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Intellectual Property Code ("IP Code");

2. The registration of the mark VESPA in favor of E.Y. INDUSTRIAL SALES, INC. has caused and will cause great and irreparable injury to the Appellant;

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3. The Appellant is the true and rightful owner of the mark VESPA for air compressors and spot welding machines and as such is entided to the registration thereof;

Republic of tbe Pbilippines INTELLECfUAL PROPERTY OFFICE

351 Sen. Gil PuvatAve.. Makati City 1200 Philiooines· www.iooehil.eov.eh A I

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4. The Appellant's pending application for the mark VESPA covering air compressors has an earlier filing date and should have barred E.Y. INDUSTRIAL SALES, INC's application;

5. Appellant first used the mark VESPA for air compressors in the Philippines in June 1996 through its appointed distributor E.Y. INDUSTRIAL SALES, INC;

6. All air compressors sold and delivered by the Appellant to E.Y. INDUSTRIAL SALES, INC bear the mark VESPA;

7. Not being the true and lawful owner of the mark VESPA, E.Y. INDUSTRIAL SALES, INC committed fraudulent acts by appropriating it and securing a registration;

8. The Appellant has a prior and exclusive right to use and register the mark VESPA in the Philippines under the provisions of the Paris Convention; and

9. The Appellant's products are widely sold and distributed in the Philippines so there is no doubt that E.Y. INDUSTRIAL SALES, INC intended and intends to ride on the popularity of the mark VESPA.

In its petition, the Appellant likewise named as respondents Engracio Yap who is the Chairman of E.Y. INDUSTRIAL SALES, INC, and some former and current officials and employee of the Intellectual Property Office, namely, former Director General Emma C Francisco, Director Leny B. Raz and Trademark Examiner Wilfredo Pulmano of the Bureau of Trademarks, and Director Corazon T. Marqueses of the Administrative, Finance and Human Resource Development Services Bureau.

In their ANSWER to the petition, E.Y. INDUSTRIAL SALES, INC and Engracio Yap (hereinafter, collectively referred to as the "Appellees") denied the allegations of the Appellant and averred the following:

1. The Appellees are the true and lawful owners of the mark VESPA for air compressors, being its sole assembler and fabricator in the Philippines since the early 1990's;

2. The Appellant has maliciously, falsely, and fraudulently filed a trademark application for the mark VESPA for air compressors and spot welding machines despite the fact that it does not manufacture, assemble, fabricate, use or distribute air compressors bearing the mark in the Philippines or in the Republic of China and with full knowledge that the Appellees are the true and lawful owner thereof;

3. The Appellant uses the mark SHEN DAR or SD for its air compressors and spot welding machines and never the mark VESPA, the same being owned and exclusively used by the Appellees for its air compressors;

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4. The Appellant has never used the mark VESPA for air compressors in the Philippines or elsewhere nor has the Appellant ever appointed the Appellees as its distributor of VESPA air compressors;

5. The Appellant only markets SHEN DAR or SD air compressors to the Appellees and not a single VESPA air compressor;

6. The Appellees had acquired ownership over the mark VESPA for air compressors through the actual use in commerce of the same; being the true and lawful owner of the mark for air compressors, the Appellees have the right to its exclusive use.

7. The Appellant could not validly claim any right to the mark VESPA or avail of the provisions of the Paris Convention or the IP Code, as it is not the owner thereof;

8. The Appellant has not sold even a single air compressor bearing the mark in the Philippines or elsewhere; the Appellees have no reason to ride on the popularity of the mark for air compressors being the creator thereof; and

9. The Appellees have no obligation or duty to protect the Appellant as the former is the true and lawful owner of the mark VESPA for air compressors.

The other respondents, former Director General Francisco, Directors Raz and Marqueses, and Trademark Examiner Pulmano, did not file their answer(s). Instead, they filed a Manifestation and Motion dated 06 August 2005, asking the Director that they be dropped from the instant case.

After appropriate proceedings', the Director rendered the assailed decision. Interestingly, the Director did not rule on the Manifestation and Motion filed by Franscisco, et al. Instead, she discussed and resolved the issue in her decision. The Director held that Francisco, et aL

" ... do not have interest in the subject matter of the proceedings, either in obtaining any relief, whatsoever or the success of the private respondents, hence, they could not be impleaded in this case."

Obviously not satisfied with the decision, the Appellant filed the instant appeal alleging that the Director erred in finding that:

1. the Appellant did not submit any evidence; 2. the Appellee's mark was rightfully registered despite the fact that Appellant's

application had an earlier filing date and covers the same goods air compressor; and

3. the Appellee is the true owner of the mark VESPA..

1 Governed by the Regulations on InterPartes Proceedings, as amended by Office Order No. 79, s. 2005

The Appellant raises the following issues:

1. Under the "new rules" on Inter Partes Proceedings, the petition, reply, dulymarked affidavits and the documents submitted shall constitute its entire evidence, hence, there is no need to resubmit the documents which have already been filed before the Bureau of Legal Affairs;

2. The Appellees' mark is confusingly similar if not identical to its mark;

3. The filing date of the Appellant's application was on 09 June 1997 - more than two years earlier than the 28 July 1999 filing date of the Appellees' application;

4. Under Sec. 123.1, par. (d) of the IP Code, the Appellees' application should not be allowed to mature into registration;

5. Substantial evidence, if not proof beyond reasonable doubt, which it presented proves that it is the true and lawful owner of the mark VESPA.

This Office issued on 08 August 2006 an Order giving the Appellees thirty (30) days from receipt thereof to file their comment to the appeal. The Appellees, however, did not do so. Hence, this Office issued an Order on 31 October 2006 declaring that the Appellees had waived their right to file their comment and that the appeal was deemed submitted for decision.

Consequently, the Appellees filed on 17 November 2006 a "MOTION FOR RECONSIDERATION AND MOTION TO ADMIT HEREIN ATIACHED COMMENT." This Office in its Order dated 22 January 2007 denied the motion for lack of merit.

On 27 February 2007 the Appellant filed a "MANIFESTATION" reiterating that the appealed Decision be set aside. The Appellant asserts that the Appellees' registration should be cancelled as it was obtained through false and fraudulent misrepresentation, pointing out that attached to the Declaration of Actual Use (DAD) filed by the Appellees, is a brochure which shows that the Appellees are not manufacturers of VESPA air compressors but are merely retailers of the VESPA air compressors manufactured by a certain company - Ming Tyan Iron Works Co., Ltd.

Finally, on 30 March 2007 the Appellees filed a "MOTION TO EXPUNGE (pETITIONER-APPELLANT'S MANIFESTATION DATED FEBRUARY 20, 2007)" praying that the Appellant's Manifestation be expunged form the records of the case.

On the first issue, the records show that while the Director ruled that the Appellant did not submit its marked evidence in compliance with the new rules on Inter

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Partes Proceedings.' she nonetheless considered the annexes attached to the Appellant's Petition for Cancellation, thus:

"However, for the sake of being able to determine the substantial issues of the case, we shall assume arguendo that petitioner have (sic) submitted the annexes attached to its petition to constitute its evidence.

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"This conclusion is belied by the evidence. We have gone over each and every document attached as Annexes 'A', 'A' 1-48 which consist of Bills of Lading and Packing/Weight List. Not one of these documents referred to a 'VESPA' air compressor. Instead it simply describes the goods plainly as air compressors which is type 'SD' and not 'VESPA'. More importantly, the earliest date reflected on the Bill of Lading was on May 5, 1997. (Annex - 'A-1). Petitioner also attached as Annex 'B' a purported Sales Contract with respondent EY Industrial Sales dated April 20, 2002. Surprisingly, nowhere in the document does it state that respondent EY Industrial agreed to sell 'VESPA' air compressors."3

With respect to the second and third issues raised by the Appellant, this Office finds these issues non-debatable. It has been established that the competing marks are identical, or at least confusingly similar; and that the Appellant's trademark application has an earlier filing date than the Appellees.

This Office now resolves the contentious issues.

Considering that the Appellees filed the trademark application on 28 July 1999, the provisions of the IP Code, which took into effect on 01 January 1998, apply. The Appellant now insists that the Appellees' Certificate of Registration No. 4-1999-005393 should be cancelled pursuant to Sec. 123.1 (d) of the IP Code, to wit:

"SEC. 123. Registrability.- 123.1 A mark cannot be registered if it: xxx xxx xxx (d) Is identical with a registered mark belonging to a different proprietor or a mark 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;"

Considering that the Appellant's trademark application preceded the Appellees' trademark application by more than two years, should the Certificate of Registration No. 4-1999-005393 be cancelled pursuant to Sec. 123(d) of the IP Code?

In resolving this issue, there is a need to revisit the raison d'etre underlying the trademark system. The essence of trademark registration is to give protection to the owners of trademarks. The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his

2 Office Order No. 79, s. 2005 (Amendments to the Regulations on Inter Partes Proceedings). 3 DECISION, p. 8.

industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product."

Significandy, 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. 5 Art. 15 of TRIPS Agreement reads:

"Section 2: Trademarks

Article 15

Protectable Subject Matter

"1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

"2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967).

"3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application.

"4. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark.

"5. Members shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration. In addition, Members may afford an opportunity for the registration of a trademark to be opposed."

4 Pribbdas J. Mirpuri v. CA, G.R. No. 114508, 19 Nov. 1999, citing Etepha v. Director ofPatents, 16 SCRA 495 (1966), Gabriel v. Perer, 55 SCRA 406 (1974).

5 The TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994. The agreement recognises that widely varying standards in the protection and enforcement of intellectual property rights and the lack of a multilateral framework of principles, rules and disciplines dealing with international trade in counterfeit goods have been a growing source of tension in international economic relations. Rules and disciplines were needed to cope with these tensions. To that end, the agreement addresses the applicability of basic GATT principles and those of relevant international intellectual property agreements; the provision of adequate intellectual property rights; the provision of effective enforcement measures for those rights; multilateral dispute settlement; and transitional arrangements.

Art. 16 (1) of the TRIPS Agreement states:

"Article 16 Rights Conferred

"1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use."

Significantly, RA 8293 adopted the definition of the mark under RA 166, to wit:

"121.1. 'Mark' means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods; (Sec. 38, R.A. No. 166a)."

and provides:

"SEC. 138. Certificates of Registration.-A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate." (Emphasis supplied)

From this legal backdrop it is plain that, in this jurisdiction, it is not the registration that confers ownership of trademark; rather, it is the 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. While RA 8293 does not contain express references to ownership of marks as a basis for their registration, the definition of the term "mark" implies that the right of registration belongs to the owner.

Although the country's legal regime on trademarks shifted to a registration system, thereby adopting the policy of "First-to-File" rule, there are indications that it is not the intention of the legislators not to recognize the preservation of existing rights of Trademark owners at the time the IP Code took into effect." 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.

6 See Sec. 236 of the IP Code.

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I The law on trademarks (and tradenames) is based on the principle of business

integrity and common justice. This law, both in letter and spirit, is laid upon the premise that, while it encourages fair trade in every way and aims to foster, and not to hamper, competition, no one, especially a trader, is justified in damaging or jeopardizing another's business by fraud, deceipt, trickery or unfair methods of any sort. This necessarily precludes the trading by one dealer upon the good name and reputation built up by another.' A trademark being any visible sign capable of distinguishing the goods of an enterprises connotes that the right to register a mark belongs to its owner. Aptly, only the owner of a trademark may apply for its registration."

The IP Code adheres to the existing rationale of trademark registration. That is, certificates of registration should be granted only to the real owners of trademarks. While the "First-to-File" rule is the general rule for trademark applications filed under and governed by RA 8293, it is not to be applied if there is a determination in appropriate proceedings:

1. that the 'first-filer' is not the owner of the trademark or is not authorized by the owner to procure registration of the trademark in his, her, or its favor; or

2. that the adoption and/or use by the 'first-filer' of the trademark, even in good faith, is preceded by an actual use by another, also in good faith, prior to the taking into force and effect of RA 8293."

To illustrate, assuming that, in spite the fact that the beer products of San Miguel Corporation under the brand "San Miguel' has been in the market for more than a century already, "San Miguel' is not yet registered as a trademark. Another company - say, Company X - also produces beer, appropriated the brand "San Miguel', and filed a corresponding trademark application. That trademark application, however, should not prosper even if Company X invokes the "First-to-File Rule". The mark "San Miguel' used on beer products is already owned by another entity, i.e, San Miguel Corporation. Moreover, San Miguel Corporation has been using it on the same or identical products way ahead of Company X, predating the IP Code and even the old laws on trademark.

In the instant case, the parties submitted evidence to support their respective claims of ownership of the contested mark. After scrutinizing these pieces of evidence, this Office finds no reason to depart from the conclusions of the Director that the Appellee's claim of ownership is superior to the Appellant's, thus:

"On the contrary, respondent EY Industrial was able to prove the use of the mark 'VESPA' in the concept of owner as early as 1991. Although Respondent E. Y. indicated in its trademark application that its first use was in December 22, 1998, it was able to prove by clear and positive evidence of use prior to such date.

7 UI Chemise Lacoste, S. A. v. Oscar C Femandes, etal., G. R. Nos. 63796-97, 21 May 1984. 8 See Sec.121.1 of the IP Code. 9 Unno Commercial Enterprises, Inc. v. General Miffing Corporation and Tiburcio S. Evaffe, in his capacity as Director of Patents, G. R. No. L-28554, 28 Feb. 1983.

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"In Chung Te v. Ng Kian Guiab and Director of Patents, L-23791, 23 November 1966, the High Court clarified: Where an applicant for registration of a trademark states under oath the date of his earliest use, and later on he wishes to carry back his first date of use to an earlier date, he then takes on the greater burden of presenting 'clear and convincing evidence' of adoption and use as of that earlier date. (B.R. Baker Co. vs. Lebow Bros., 150 F. 2d 580).

"Private respondents witness, Benito Sy, owner of Starret enterprise located in Pasig City testified that he bought VESPA air compressors since 1991 from respondent EY Industrial. (Exhibit-'388,) Benito Sy's company also sold SO air compressors originating from EY Industrial. In fact, private respondents was able to submit evidence showing the air compressors bearing the 'SO', 'Shendar' trademark on an advertising brochure of petitioner, Shen Dar Electricity Machinery Co., Ltd. (Exhibit '382', '383'). A perusal of the advertising brochures submitted by the respondent which is contained in its filewrapper unequivocally prove that its air compressors bear the 'VESPA' mark. 'VESPA' label is also contained in the filewrapper of respondent-registrant. Witness Josephine Macuja also testified that the NC Construction Supply, a business located in Pasig City, wherein she was an employee bought VESPA air compressors from EY Industrial once every two months. (Exhibit-'387,).

''Based on the evidence, Respondent E.Y. Industrial is a legitimate corporation engaged in buying, importing, selling, industrial machineries and tools, manufacturing, among others since its incorporation in 1988. (Exhibit '1). Indeed, private respondents have submitted photographs (Exhibit '376', '377', '378', '379') showing an assembly line of its manufacturing or assembly process.

"More importantly, the private respondent's prior adoption and continuous use of the mark 'VESPA' on air compressors is bolstered by numerous documentary evidence consisting of sales invoices issued in the name of respondent EY Industrial and Bills of Lading. (Exhibits '4' to '375'). Sales Invoice No. 12075 dated March 27, 1995 antedates petitioner's date of first use in January 1, 1997 indicated in its trademark application filed in June 9, 1997 as well as the date of first use in June of 1996 as indicated in the Declaration of Actual Use submitted on December 3, 2001. (Exhibit '385'). The use by respondentregistrant in the concept of owner is shown by commercial documents, sales invoices unambiguously describing the goods as 'VESPA' air compressors. Private respondents have sold their compressors bearing the 'VESPA' to various locations in the Philippines as far as Mindanao and the Visayas since the early 1990's. We carefully inspected the evidence consisting of three hundred seventy one (371) invoices and shipment documents which show that 'VESPA' air compressors were sold not only in Manila, but to locations such as Iloilo City, Cebu City, Dumagete City, Zamboanga City, Cagayan de Oro City, Davao City to name a few. There is no doubt that it is through private respondents' efforts that the mark 'VESPA' used on air compressors has gained business goodwill and reputation in the Philippines for which it has validly acquired trademark rights. Respondent EY Industrial's right has been preserved until the passage of RA 8293 which entitled it to register the same. The law provides:

'Section 236. Preservation of Existing Rights.- Nothing herein shall adversely affect the rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act.'"

The Appellant's claim that it was the first to use the mark crumbles under the weight of the substantial evidence submitted by the Appellees. The Appellees submitted proof that they have been using the mark VESPA as early as 1991.

Thus, if ever the trademark VESPA has been known to exist and has established a reputation, it is because of the trade activities of the Appellees. It is through the Appellees' efforts that the mark has been introduced and made known to the relevant segment of the purchasing public. In their Answer to the Petition for Cancellation,

Appellees even explained the circumstances on its use of the mark and the fact that the Appellant only learned of the mark through the Appellees themselves. In this regard, the burden of evidence shifted to the Appellant to prove otherwise. The Appellant, however, failed to do so.

While it may be true that the Appellees are importing air compressors from the Appellant, there is nothing in the records that shows that the air compressors have the mark VESPA. Even the alleged "Sales Contract" between the parties did not indicate that the air compressors sold by the Appellant to the Appellees bear the mark VESPA. lO

What the records say is that the air compressors imported by the Appellees from the Appellant are air compressors described as "1YPE: SD-(NO.)"11 These refer to those products marked with "SD" and "Shendar".

The Appellant presented the Affidavit-Direct Testimony of a certain Manuel Sy to show its use of the mark VESPA. However, none of the sales invoices and/or delivery receipts offered by the Appellant to support Sy's testimony is dated earlier than April 2003.12 Moreover, if indeed the Appellant is the prior user and owner of the mark VESPA for air compressor, it could have easily presented documents showing its prior use of the mark VESPA in Taiwan and in the People's Republic of China. These documents may include a copy of the certificate of registration issued by its home country indicating that it is the owner and user of the mark VESPA or such documents which would prove that it is the originator of the mark VESPA and that it has been using the mark VESPA for all its air compressors manufactured, distributed and exported to the Appellees.

On the Appellant's "MANIFESTATION" of 20 February 2007 and the documents attached thereto, the rule is that the court or tribunal shall not consider any evidence, which has not been formally offered. 13 Moreover, the issue or the "subject" of the documents were not even mentioned during the proceedings in the Bureau of Legal Affairs. Neither the documents can be considered newly discovered evidence, because through ordinary diligence and efforts they could have been obtained by the Appellant and presented in the earlier proceedings. And even if they were, they have no probative value. None of these documents proves or supports the Appellant's claim that that the Appellees obtained Certificate of Registration No. 4-1999-005393 through fraud, or that the Appellees are merely retailers of Ming Tyan Iron Works Co., Ltd.

Finally, this Office also noted that the records in the Trademark Registry indicate that the Appellant was issued Certificate of Registration No. 4-1997-121492dated 08 February 2007 for the trademark VESPA, Chinese Characters & Device for goods air compressor and spot welding machine.

10 See Annex "B" of the Petition for Cancellation and Annex "F" of the Appellant's Memorandum. II See Annexes "Al" to "A48" attached to the Petition for Cancellation filed by the Appellant. 12 See Exhibit "N", Annex "G" of the Affidavit-Direct Testimony of Mr. Manuel Sy marked as Exhibit "GU •

13 Concepcion v. CA, et al., G.R. No. 123450, 31 Aug. 2005, citing Sec. 34, Rule 132, Rules of Court.

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The Bureau of Trademarks issued Certificate of Registration No. 4-1997-121492 while this Petition for Cancellation case, now on appeal, is still pending. The Director had already decided and determined the Appellee's superior claim of ownership of the contested trademark over that of the Appellant's, a ruling which this Office now sustains, renders the issuance of Certificate of Registration No. 4-1997-121492 without legal basis, and therefore, null and void.

Accordingly, while the instant case involves a petition to cancel the registration of the Appellee's trademark VESPA, the interest of justice requires that Certificate of Registration No. 4-1997-121492 be cancelled. While the normal course of proceedings should have been the filing of a petition for cancellation of Certificate of Registration No. 4-1997-121492, that would involve critical facts and issues that have already been resolved in this case. To allow the Appellant to still maintain in the Trademark Registry Certificate of Registration No. 4-1997-121492 would nullify the exclusive rights of Appellee as the true and registered owner of the mark VESPA and defeat the purpose of the trademark registration system.

WHEREFORE, premises considered, the appeal is DENIED. Certificate of Registration No. 4-1999-005393 for the mark VESPA for air compressor issued in favor of Appellee is hereby upheld. Consequently, Certificate of Registration No. 4-1997

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121492 for the mark VESPA, Chinese Characters & Device for goods air compressor and spot welding machine issued in favor of Appellant is hereby ordered cancelled.

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fLet a copy of this Decision as well as the records of this case be furnished and returned to the Director of Bureau of Legal Affairs for appropriate action. Further, let also the Directors of the Bureau of Trademarks, the Administrative, Financial and Human Resources Development Services Bureau, and the Documentation, Information and Technology Transfer Bureau be furnished a copy of this Decision for information,

tguidance, and records purposes.

SO ORDERED. !t

J MAY 25 2007 Makati City.

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