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.­INTELLECTUAL PROPERTY

OFFICE OFTHE PHIUPPINES

VICTORIAS MILLING COMPANY, INC., IPC No. 14~2019-00247

Opposer, Opposition to:

-versus- Application No. 4-2019-001649 Date Filed: 31 January 2019

CORAL, DANNY CHING Tradematk·,IIVTCTORIAII

LINSANGAN, III, JULIAN M., Respondent-Applicant.

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DECISION

VICTORIAS MILLING COMPANYl ("Opposer") .filed an . opposition to Trademark Application Serial No. 4-2019-001649. The application, filed by Danny Ching Coral and Julian M. Linsangan IIP ("Respondent-Applicant"), .covers the mark "VICTORIA" for use on "crusta! sugar pieces [conjectionerf]; sugar confeciionenj" under Class 30 of the International Classification of Goods and Services.'

The Opposer alleges: ., '" ~ '."' : - .

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"3. Opposer is the prior user and owner of the mark 'VICfORIAS' and variations thereof, which the company started using when it was establishedon 07 May 1919. The company was among the earliest sugar mills in the Phi'lippihes ·at.the turn of the 20th century. In 1921, Opposer expanded its facilities and established a sugarcane agriculture research department, the first in a sugar central in the cOUIitry.In 1928, Opposer established a sugar refinery. In 1929, Opposer made its first export of raw sugar to the United States and from then on became a regular sugar exporter thereto. In 1934, the Opposer made its first export of high grade refined sugar to the United States . During the outbreak of the Japanese war, Opposer suffered e ~cessive damages but continued operations in 1946.

"3.1 At the onset of the 1970's, the company steadily expanded into a conglomerate that was involved in businesses beyond sugar operations, such as engineering products and services, food processing, agri-business (aquaculture, cut-flower, swine and cattle projects, organic fertilizer), a shipping component, and management and consultancy services. Through the years, Opposer was able to establish more than a dozen subsidiaries and affiliates. : ~ ... .. '

"3.2 Opposer likewise advanced itself in the ' field of 'industrial relations and social responsibility and came to be regarded 'a~' a.i~a der in th~

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IA corporation organized under the laws of the Philipp ines. . . ' . , . . . ~ 2With addresses on record at Bulacan and Metro Manila , Philippines . . .

J The Nice Cla ssificat io~ is a classification of goods and services for the purpose of register.ing trademark and service marks. base~ on a multilateral treaty admini stered by the World Intellectual Property Organization, The treaty IS called __ theNice.Agreement Concerning th International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957.

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Intellectual Property Center #28 Upp er McKinley Road

www.ipophil .gov.ph

e [email protected] McKinley Hill Town Centere +63 2 ~238 6300 Fort Bonifacio. Taguig City

+632-5539480 1634 Philippin es

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sugar industry. As an exponent of industrial peace, it: 'h'a~ b~e~ ~~nferred : the 'CLARA AWARD' by the Department of Trade and Indu·stry. : Other honors include the 'SIKAP-GAWA AWARD', 'Outstanding Community .Development Program Award', 'TANGLAW AWARD', 'UNLAD-BAYAN AWARD' and the 'EMILIO ABELLO AWARD.'

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"3.3 In 1991, the Department of Tourism identified Victorias Milling Company as one of the major tourist attractions in VictoriasCity with its 18-hole golf course sprawling over a 30 hectare area and the Saint Joseph the Worker Parish, famous for its Angry Christ mural. Victorias City itself features Opposer's agro-industrial complex and golf course as among its tourist attractions. Copy of the write up featuring said attractions, as downloaded from the official websites of Victorias City is attached as Annexes'A', 'B' and 'C of the Affidavit of Ms. Isabel Libutan, which is attached hereto and made an integral part. hereof as Exhibit 'B'.

"3.4 At present, Opposer is the biggest supplier of refined sugar in the Philippines. The history and development of the Opposer issetforth in .the affidavit of its Chief Admin. Officer and Compliance and, & Info , ~~ffice'r , Atty -. Eva A. Vicencio Rodriquez, which is attached hereto and made ad -integral part hereof as Exhibit 'C'. , r v. .

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"4. Through long, continued and exclusive use for one hundred (100) years now, the corporate name/business name 'Victorias Milling Company, . Inc.' ..and the . trademark/service mark 'VICTORIES' have become distinctive dfthebusmes's>products and service of Opposer.. The mark 'VlCTORIAS' has long become welt~i<no'wn in the sugar and food industry and synonymous with the quality of the goods and services that Opposer offers.

"4.1 So well known has Opposer become locally and 'internationally that Victorias City, where Opposer has its operations, is considered. lobe notable because it is the site of Victorias Milling Company, 'the world's largest integrated sugar mill, sitting on a 7,000 hectares (17,000 acres) compound that makes it the Philippine's largest sugar refinery.' Copy of the article featuring Victorias City, as downloaded from the Wikipedia website is attached .hereto ;a ~ Armex 'D' of the Affidavit of Ms. Isabel Libutan, which is attached hereto -as Exl\ibit"B'. .' .

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"5. Thus, the registration of the mark 'VICTORIA';'; i'i:Fllie . name of Respondent-Registrant for similar goods in Class 30, i.e., Cryst~l· ,sugar pieces [confectionery]; sugar confectionery, is likely to mislead the public, particularly as to the nature, quality, characteristics and origin of said goods. '

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"6. As the owner of the 'VICTORIAS' mark, Opposer obtainedregistration . :.,.... . . " . , "t r : • "

for the trademark 'VICTORIAS & Design' as early as 09 November 1961. This fact was established in the case of Victorias Milling Company, Inc. vs. Ong Su, et. al., where it was also established that Opposer has been using the mark VICTORIAS for granulated refined sugar at least as early as 1947. The Supreme Court adopted the findings of the Director of Patents, as follows: x x x ~ : .'. .

"7. Thus, in said case, the Supreme Court ruled that: 'The word"Victorias'~

what identifies the s~gar conta~ned in the bag as the product?f tI;ie??f~:~e\~': ~'n:d that :the word 'VICTORIAS' IS the dommant feature of the trademark In question. : " .. . .

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1/8. Likewise, the Bureau of legal Affairs (BlA) has time and again confirmed Opposer's ownership of the mark 'VICTORIAS' and variations thereof, in cases filed by Opposer against third parties using confusingly similar marks, to wit: x x x

1/8.1 On 29 July 2011, this Honorable Bureau; in IPC Case ·No. 14­2018-006262, ordered the cancellation of Certificate ofRegistratiori No. 4-2005­008421 for the mark 'VICTORIA' covering goods in Class 29 (specifically, peanut products, fruit preserves namely dried mangoes) issued .on IflOctober 2007 in the name of Victoria Foods Company. The BlA found said mark to be confusingly similar with Opposer's mark 'VICTORIAS'. Copyof the Decision is attached hereto and made an integral part hereof as Exhibit 'D'.

1/8.2 On 7 March 2012, this Honorable Bureau, in IPC Case No. 14­2009-00038, ordered the cancellation of Certificate of Registration No . 4-2005­008419 for the mark 'Victoria Foods Company' covering goods . in Class 16 (specifically, letterhead, product label for all products of Victoria Foods Company namely: Willybee Juices, pure honey, Victoria peanuts and dried mangoes; marketing papraphernalia namely: flyers, brochures, streamers and banners) issued on 23 July 2007 in the name of Victoria Foods Company. The BlA found said mark to be confusingly similar with Opposer's mark 'VICTORIAS' . Copy of the Decision is attached hereto and made an integral part hereof as Exhibit 'E'. .

1/8.3. On 12 April 2012, this Honorable Bureau,inJ'PC Case No. 14­2008-00260, ordered the cancellation of Certificate of Re~stiati6r{N6 : 4-2005 ~ 007652 for the mark 'VICfORIA' covering goods in Cla'ss30 :(specifiCally, flout, bread, salt, yeast, baking powder, food flavorings and-seasonings; taste and flavor enhancers for food, bread improvers [additives' an d" ii:1gTE~dients : for preparing and improving bakery products], sour dough starters, dough conditioners) issued on 19 February 2007 in the name of Lesaffre et Campagnie The BlA found said mark to be confusingly similar with Opposer's mark 'VICTORIAS'. Copy of the Decision is attached hereto ahdmade'ah 'ii'ttegralpart hereof as Exhibit 'F', ' . r

1/9. Opposer has registrations for the mark 'VICfORIAS' and its variations with the Intellectual Property Office, as follows: x x x .

1/10. The fame and renown of the 'VICfORIAS' mark was established and expanded by the successful growth of Opposer's business since its incep tion in 1919. Through the years and as a result of Opposer's continuous efforts in providing quality products and services, 'VICfORIAS' has become well-known in the .sugar and food processing industry. . . ' . .' l< ; i.. .

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1/11. Information on the history, products and services," ~~tl ' b t.isihesses 'of Opposer as well as the latest news and activities may be 'accessed .:w.orldw idE( at Opposer's official website: http://www.victoriasmillingcom. . . .' ! ! ;;" '" ,

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1/12. The registration of the mark ' VICfORIA' in the name of the Respondents

will violate and c~ntravene the provisions o~ Section~ 123.1 (~). ' <lfld ~9\'?/ ' ~~~PUbliCA. ~~t 8293 (the 'IP Code ), as amended, because said mark IS confusmgly SImilar to 'Opposer s well-known mark 'VICTORIAS,' owned, used and not abandoned by ' the Opposer as to

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be likely when applied to or used in connection with the goods of the Respondents to cause confusion or mistake, or deceive the purchasers thereof 'as to the origins of the goods.

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"13 . The registration of the mark 'VICTORIA' for goods-underClass ~O in the name of Respondents will cause grave and irreparable injury! and ' damage to .the Opposer, for which reason it is filing the instant Petition for Cancellation.

"14. The registration of the trademark 'VICTORIA' in the name of Respondents will contravene and violate Sections 123.1 (e) and (g) of the Intellectual Property Code (the 'IP Code') which provide: x x x

"15 . The iden tity or confusing similarity between Respondents' mark and Opposer's mark 'VICTORIAS' is very likely to deceive the purchasers of goods on which the mark is being used as to the origin or source of said goods and 'as to .the nature, character, quality and characteristics of the goods, to which it is affixed. . , " .

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"16. Respondents' registration of the 'VICTORIA' mark is.' in unfair competition with and an infringement of Opposer's registered 'and::'well-known trademark/service mark 'VICTORIA' as the use of the said on the goods"described in Respondents' application for registration clearly violates the exclusive right of the Opposer to said mark.

"17. The registration of the mark 'VICTORIA' in the riahle 'ot'ilie"Respondents will violate the proprietary rights, interest, business reputation and goodwill of the Opposer over its corporate name and its trademark/service mark 'VICTORIAS: considering that the distinctiveness of said mark will be diluted, thereby causing irreparable injury to the Opposer.

"18. It is also apparent that the registration of the mark 'VICTORIA' in the name of Respondents, which mark is confusingly similar to ' Opposer/s -well-known trademark/service mark 'VICTORIAS' will not only prejudice theOpposer but' will also allow the Respondents to unfairly benefit from and get a freeride on :the 'goodwill of Opposer's mark.

The Opposer's evidence consists of the Special Power of Atiorl1ey and Secretary's Certificate issued by the Opposer; the Affidavit of Ms. Isabel,Libuta!l;\'the Affidavit of Atty. Eva A. Vicencio Rodriguez, Chief Admin. Officer and Compliance 'and Info. Officer; copy of Decision issued by BLA for IPC Case No. 14:-2008:-:006?62; copy of the Decision in IPC Case No 14-2009-00038; and copy of the Decision inJPC Case No. 14­2008-00260.4 " '

This Bureau issued a Notice to Answer and served a <;opy thereof up~ Respondent-Applicant on 30 August 2019. Said Respondent-Applicant, however, did not file an Answer.

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4 Marked as Exhibits " A" to " F", inclusive

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Should the Respondent-Applicant be allowed to register " the trademark VICTORIA?

The Opposer anchors its opposition on the following provisions of 'Republic Act No. 8293, also known as the Intellectual Property Cod'e of the Philippines ("IP Code"):

Sec. 123,Registrability. -123.1. A mark cannot be registered if it: x x x

(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 well­known 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 sector 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; , . .

xx x (g) Is likely to mislead the public, particularly as to ' the nature, quality,

characteristics or geographical origin of the goods or services; : ,j ;'.<:

. ., Records show that at the time the Respondent-Applicant filed their trademark

application on 31 January 2019, the Opposer has existing trademark registrations for the trademark VICTORIAS covering goods in Classes .. 29 and 30 including sugar and refined sugar. This Bureau noticed that the goods indicated in Respondent­Applicant's trademark application, i.e., crystal sugar pieces [confectionery]; sugar confectionery, are similar and closely-related to the Opposer-:s·. .;.:y ;. lL'.', o" "

The competing marks are shown below:

VICTORI·A Opposer's trademark Respondent-Applicarit's.mark

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The marks are obviously identical and used on similar :~!1d 'clb~dy relate'd goods! particularly, sugar, in Class 30. Thus, it is likely that the consumers will 'have the impression that these goods originate from a single source or origin. "The confusion or mistake would subsist not only on the purchaser's perceptio.!\ ,ofglqo 9.,~,1;>ut on the origin thereof as held by the Supreme Court, to wit: .

Callman notes two types of confusion. The first is the confusion of goods in which even~ the ordinary prudent purchaser would be induced to purchase one product in the belief

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that he was purchasing the other. In which case, defendant's goods are theit bought as the plaintiff's and the poorer quality of the former reflects adversely em 'the plaintiff's reputation. The other is the confusion of business. Here, though the goods of the parties are different, the defendant's product is such as might reasonably be assumed to originate with the plaintiff and the public would then be deceived either into that belief or into belief that there is some connection between the plaintiff and defendant which, in fact does not exists

Public interest therefore requires, that two marks, identical to or closely resembling each other and used on the same and closely related goods, but utilized by different proprietors should not be allowed to co-exist. Confusion, mistake, deception, and even fraud, should be prevented. It is emphasized thatthe 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 asuperior article of merchandise, the fruit of his industry and skill; to assurethe public thatthey 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.s ".'....; " , ~' _' ;' _ 1:1 : ' 11\ '

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Succinctly, the field from which a person may select a trademark is practically unlimited. As in all other cases of colorable imitations, the unanswered riddle is why of the millions of terms and combinations of letters and designs available, the Respondent­Applicant had to come up with a mark identical or so closely similar to another's mark if there was no intent to take advantage of the goodwill generated by the other mark? Also, the Respondent-Applicant despite the opportunity given. -did-not tile an Answer to defend their trademark application and to explain howthey.tarrivedat using the mark "VICTORIA" which is identical or similar to the Opposer's-Itisincredible-for the Respondent-Applicant to have come up with a markidenticalorvsimilar to Opposer's mark and used on the same or closely-related goods by pure cointH:i~~.~~.

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The intellectual property system was established to recognize creativity and give incentives to innovations. Similarly, the trademark registration system seeks to reward entrepreneurs and individuals who through their own'mnovati6'ris 'were able to distinguish their goods or services by a visible sign that distinctly points out the origin and ownership of such goods or services.

There is no doubt, therefore, that the subject trademark application is covered by the proscription under Sec. 123.1 (d) of the IP Code. '

;. ~:' . •: c " -, !. :".< ",'-: ;.. '.' i '~"' 5 Converse Rubber Corp . v. Un iversal Rubber Products, Inc. et. aI., G,R. No, L-27906, 08 Jan , 19.8? ;· c" ; : ; j " ,, : :" ,.;:<. . ~\ .- . " . . 6 Pribhdas J. Mirpuri v. Court ofAppeals, G,R. No. 114508 , 19 November 1999. citing Ethepa v. DirectorofPatentssupra, Gabriel v. Perez. seRA 406 ( 1974). See also Article 15, par . ( I), Art. 16, par. (I), of the Trad e Related Aspects of Intellectual P.rolieft)i'(TRlPS Agreement). 7American Wire & Cable Company v. Director ofPatents, G.R. No. L-26557 , 18 Feb. 1970. .' . . . ' . .

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WHEREFORE, premises considered, the instant ·Opposition to Trademark Application No. 4-2019-001649 is hereby SUSTAINED. Let the ' filewrapper of the subject trademark application be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action..' ... .

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SO ORDERED.

Taguig City,

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