x Decision No. 2021- (pt

INTfLLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

-versus-

HEDINGER BRANDS, LLC., Opposer,

} } } } }

IPC No. 14-2019-00701

Opposition to: Application No. 4-2019-012072 Date Filed: 11 July 2019

IBARRA R. MENDOZA (PH), } }

Trademark:' •

Respondent-Applicant. } x---------------------------x Decision No. 2021- (pt

DECISION

HEDINGER BRANDS, LLC.1 ("Opposer") filed an opposition to Trademark Application Serial No. 4-2019-012072. The application, filed by Ibarra R. Mendoza (PH)2 ("Respondent-Applicant"), covers the mark "lB" for use on "coffee" under Class 30 of the International Classification of Goods and Services.'

The Opposer alleges: x x x

"7.1. The Philippines follows the 'first-to-file' rule as provided in Section 123.1 (d) of the Intellectual Property Code, to wit: x x x

"7.2. The Opposer is the prior user and true and lawful owner of the DAD's trademark.

"7.3. It is undeniable that at the time Respondent-Applicant filed its trademark application for on 11 July 2019, the Opposer was already using the mark DAD's trademark.

"7.4. Moreover, the Opposer's 'DAD'S' trademark has been registered in different jurisdictions long before Respondent-Applicant applied for the registration

of • in Class 30. This is evidenced by multiple Certificate of Registrations issued by Trademark Offices around the world.

"7.5. Considering that Opposer's 'DAD'S' trademark registrations are still valid and subsisting to date in the Philippines and worldwide, the Opposer should be afforded protection under the Intellec tual Property Code of the Philippines and other relevant laws.

'A foreign corporation organized under the laws of United States of Americ a. 2A natural person with address on record in Metro Manila , Philipp ines. ~ 'The Nice Classification is a classific ation of good s and services for the purpose of registering trademark and service marks, based on multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concernin I International Classification of Goods and Service s for the Purposes of the Registration of Marks concluded in 1957 .

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www.ipophil.qov.ph • Intellectu al Property Center

e [email protected]

o +63 2- 2386300

#28 Upper Mc Kin ley Road McK in ley Hill Town Cen ter Fort Bonifacio, Taguig City

+632-5539480 1634 Philippin es

xxx

"7.6. The Dominancy Test, the controlling test in determining confusing similarity and likelihood of confusion, is embodied in Section 155 of R.A. No. 8293 which provides that : x x x

"7.7. The Opposer seeks the application of the Dominancy Test in determining similarity and likelihood of confusion. The dominant element in the mark sought to be opposed is the entire mark of Opposer's DAD'S trademark and it attracts or is usually retained in the mind of the buying public and stands out as the single most eye-catching element.

"7.8. In Prosource International, Inc., vs. Horphag Research Management SA, the Supreme Court explained the Dominancy Test as that which focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public.

"7.9. Applying the Dominancy Test in this case reveals that there is clearly

a likelihood of confusion. It is evident that Respondent-Applicant's lB trademark is a copycat of Opposer's DAD'S trademark, which, as previously discussed, the Opposer has continuously used and adopted since 2010, prior to Respondent-Applicant's 11 July 2019 trademark application.

"7 .10. A review of the competing marks below would show that they are identical: x x x

"7.11. Here, it is obvious that the Opposer and the Respondent-Applicant's marks are visually and phonetically similar. The Opposer's Marks comprise of an identical word with the same configuration of letters 'D':A', 'D' and'S' . The word 'coffee', being generic or descriptive, is not subject to Respondent-Applicant's exclusive appropriation.

"7.12. In American Wire & Cable Company v. Director of Patents and Central Banahaw Industries, the additional word elements do not remove the fact that the marks are identical. In fact, a finding of confusing similarity arises when the copycat mark is slightly different from the original mark. It is not when the marks are so identical but rather the marks are similar to the extent that ' there is a possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it.' x x x

"7 .13. This is more so when the dominant feature in the competing marks are one and the same. This is affirmed in the case of Mang Inasal Philippines, Inc. v. IFP Manufacturing Corporation, x x x

"7.14. The Supreme Court, in the Mang Inasal case, through the use of the dominancy test, ruled on this wise: x x x

"7.15. In like manner, the visual and aural impressions created by the relevant sector of the public and the uncanny resemblance between Respondent-Applicant's and the Opposer's DAD'S trademark render confusion, mistake, or deception likely.

"7.16. As a matter of fact, an average purchaser catching a glimpse of the

Opposer's lB mark would likely associate the goods bearing the mark with the goods bearing the Opposer's 'DAD'S' trademark.

"7 .17. Further, aside from the visual and aural element of the competin~ marks, the Opposer's and the Respondent-Applicant's respective marks cover simil goods as follows: x x x

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"7.18. In the case of In Mighty Corporation v. E. & J Gallo Winery, the Court defined related goods as 'when goods are so related that the public may be, or is actually, deceived and misled that they come from the same maker or manufacturer, trademark infringement occurs; , or 'Non-competing goods may be those which, though they are not in actual competition, are so related to each other that it can reasonably be assumed that they originate from one manufacturer, in which case, confusion of business can arise out of the use of similar marks.'

"7.19. In the same case, it has enumerated a list of factors that come into play when resolving the question of whether the goods are so related: x x x

"7.20. Applying the same, it is clear that the Respondent-Applicant intends to use the 'DAD'S' trademark on related goods. The Opposer's good, specifically, non-alcoholic, non-cereal, maltless beverages, sold as softdrinks, and syrups, concentrates, and extracts for making the same, in relation to Respondent-Applicant's goods, namely, coffee, are similarly considered as a type of beverage which can be found on the supermarket. Hence, since they both fall under the category of beverage, and they have the same type of consumers, such that of confusion, mistake or deception on the relevant sector of the public is compellingly inevitable.

"7.21. Public interest requires that the two marks, identical 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.

"7.22. The Supreme Court in the case of Societe Des Produit Nestle S.A. vs. c.A. noted two types of confusion. Confusion could either be as to the goods or services themselves or as to the origin of such goods or services, or the identity of such business. x x x

"7.23. Respondent-Applicant's use and adoption of the Opposer's DAD'S trademark will mislead the public into believing that Respondent-Applicant's goods bearing the 'DAD'S' trademark, originated from or is licensed or sponsored by the Opposer, which has been identified in trade by consumers as the exclusive source of all products bearing the DAD'S trademark.

"7.24. The likelihood of confusion is higher in cases where the business of one corporation is the same or substantially the same as that of another corporation. The following decisions rendered by this Honorable Office are instructive: x x x

"7.25. The Occidental Chemical Corp., Pigeon Corporation, and John Hancock rulings find application to the present case. The Opposer's and Respondent-Applicant's share similar goods although falling under different Nice Classification and that the public, when availing of the goods of the Respondent-Applicant will have the impression that the goods originate from or otherwise associate them with those of the Opposer's, when no such connection exists.

"7.26. Stated otherwise, it may be inferred that the Respondent-Applicant's goods and the Opposer's goods are (1) are the same, or (2) was produced by by the same Company, or (3) that the Opposer reasonably expanded its goods to coffee.

"7.27. In Tidy Non-Woven SDN BHD v. Yingzi (SH) Enterprises, the Bureau of Legal Affairs found the Ezywipe competing marks to be visually a~ phonetically similar as follow, x x x ~

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''7.28. In Tesco Stores Limited vs. Hans Tan, the Bureau of Legal Affairs similarly found the contending marks 'F F and F' to be identical and/ or confusingly similar: x x x

1/7.29. Public interest requires that the two marks, identical 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.

1/7.30. Accordingly, since the Opposer is similarly situated, there is no other explanation as to why the Respondent-Applicant has chosen a well-known mark without any back-story to explain why 'DAD'S' is actually a coined term. The blantant copying can be deduced as a calculated more to ride on the Opposer's goodwill and draw the public's perception that it is affiliated or sponsored by the Opposer's goods.

1/7.31. Section 123.1 (e) of the Intellectual Property Code provides that a mark cannot be registered if it 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, viz: x x x

1/7.32. Rule 103 of the Rules and Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers of 2017 provides: x x x

1/7.33. In Fredco Manufacturing Corporation vs. President and Fellows of Harvard College (Harvard University), the Supreme Court declared that any combination of the factors stated in Rule 102 of the Trademark Rules will suffice in determining whether a mark is well-known, to wit: x x x

1/7.34. As will be discussed herein the Opposer's 'DAD'S trademark is entitled to be recognized as a well-known mark that has satisfied the criteria for determining whether a mark is well-known, in that: x x x

1/7.35. Based from the foregoing, the Opposer's 'DAD'S' trademark deserves protection, as a mark that is well-known internationally and in the Philippines, not only by Section 123.1 (e) of the Intellectual Property Code but by applicable treaty provisions. La Chemiste Lacoste S.A. vs . Fernandez is instructive: x xx

1/7.36. In Mighty Corporation, et al. vs. E & J Gallo Winery, et al., the Supreme Court further explained that: x x x

1/7.37. Since the 'DAD'S' trademark is well-known internationally and in the Philippines, it, therefore enjoys protection under Article 123.1 (e) of the Intellectual Property Code and Article 6bis of the Paris Convention, and as such,

Respondent-Applicant's • trademark application which covers similar and related goods or services as those of the Opposer must be rejected.

1/7.38. Section 168.1 of the Intellectual Property Code provides that: x x x

1/7.39. Supported by the overwhelming evidence submitted by the Oppos r, the Opposer's 'DAD'S' trademark has such valuable goodwill and reputatio through years of extensive, exclusive, and continuous use, and therefore, the Opposer stands to incur immeasurable damages and suffer trademark dilution due to the

registration of Respondent-Applicant's • mark.

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"7.40. By appropriating the same visual and aural presentation of the Opposer, it is clear that the Respondent-Applicant rides on the goodwill of Opposer's 'DAD'S trademark. It is obviously with the expectation that this will identify and associate its goods and services with Opposer's DAD'S trademark.

"7.41. The Respondent-Applicant has no clear reason to adopt the 'DAD'S' trademark, other than to ride on the goodwill and strong brand recall and market position of Opposer's .

"7.42. Bad faith is evidence when an applicant registers mark without even providing a reasonable explanation for its choice of such mark.

"7 .43. The foregoing finds authoritative support in Societe Des Produits Nestle, S.A. and Nestle Corporation v . Court of Appeals: x x x

"7.44. Similarly, there is no reasonable explanation as to why Respondent-Applicant's chose DAD'S in his brand. In contrast, the Opposer has given sufficient basis as to why it chose 'DAD'S' for its trademark.

"7.45. Furthermore, due to the popularity of the Opposer's 'DAD'S' trademark, and its global and extensive reach, the Respondent-Applicant could not have been unaware of the Opposer's mark at the time when it filed for registration on 11 July 2019.

"7.46. In fact, in the Philippines, DAD'S Rootbeer has been widely available in the groceries and had been extensively advertised. Thus, it is inconceivable that the mark chosen by Respondent-Applicant is an arbitrary and coined mark.

"7.47. In Shangri-La International Hotel Management Ltd., et al. v. Developers Group of Companies Inc., it was held that when an applicant would copy the exact world combination of another mark, then bad faith and intent of deception are evident. x x x

"7.48. In like manner, the same ruling should apply to the case at hand.

"7.49. Considering the foregoing, the registration of the

Respondent-Applicant's • trademark must be rejected.

The Opposer's evidence consists of a copy of the publication on the e-Gazette for Trademark Application No. 4-2019-012072; a copy of the Special Power of Attorney; a copy of the Secretary's Certificate; the Verification and Certificate of Non-Forum Shopping; a copy of the Affidavit of Mr. Keith G. Hedinger; and a copy of Certificate of Registration No. 4-2010-500943.4

This Bureau issued a Notice to Answer and served a copy thereof upon Respondent-Applicant on 11 June 2020. Said Respondent-Applicant, however, did not file an Answer.

Should the Respondent-Applicant be allowed to register the trademark. ?

Sec. 123.1 (d) of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code") provides:

' Marked as Exhibits " A" to "E", inclusive.

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

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;"

It must be emphasized, however, that protection to a trademark under the afore-quoted provision hinges on a factual finding of the existence of similarity or confusing similarity between the trademark sought to be protected and the other.

Hence, the question, does lID resemble Opposer's op.ps Trademark such that confusion or deception is likely to occur? A comparison of the competing marks reproduced below:

Opposer 's trademark Respondent-AppLicant's mark

shows that confusion is likely to occur. Even with the presence of an enclosed device, and another word element ("Coffee"), what draws the eyes and the ears with respect to the Respondent-Applicant's mark is the word "DAD'S" . Hence, Respondent-Applicant's lID is similar with Opposer's o/,o's rademark. This Bureau finds that while the goods indicated in Respondent-Applicant's trademark application are not exactly similar to those covered by the Opposer's registration, confusion is still likely to occur in this instance because both contain the dominant word "DAD'S" and the goods are closely related. Opposer's goods and the Respondent-Applicant's coffee are in the category of beverage. The Supreme Court in EssO Standard Eastern, Inc. vs. Court ofAppeals, et. aI,5 defined what are essentially closely related goods under the trademark law as :

"Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores. Thus, biSCU~.

weco held ,elated to milk because they are both food products." \

5 20 I Phil 803.

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As such, there is likelihood that the public will be confused or mistaken into believing that Respondent-Applicant's mark is just a variation of Opposer's mark or that their goods come from the same source or manufacturer.

The confusion or mistake would subsist not only on the purchaser's perception of goods but 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 event the ordinary prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. In which case, defendant's goods are then bought as the plaintiff's and the poorer quality of the former reflects adversely on 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 exist ."

It is emphasized that 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 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? This Bureau finds that the mark applied for registration by the Respondent-Applicant does not meet the function.

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 Respondent-Applicant 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." 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 innovations 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.

WHEREFORE, premises considered, the instant Opposition to Trademark Application No. 4-2019-012072 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.

6 Converse Rubber Corp. v. Universal Rubber Products, Inc. et. al.• G.R. No. L-27906, OS Jan. 1987. 'Pribhdas J. Mirpuri v. Court of Appeals. G.R. No. 114508, 19 November 1999. citing Ethepa v. Director of Patents, supra. Gabriel v. Perez, 55 SCRA 406 (1974). See also Article 15, par. (I), An . 16, par. (l ), of the Trade Related Aspects of Intellectual Property (TRIPS Agreement) .

"American Wire & Cable Company v. Director ofPatents. G.R. No. L-26557. 18 Feb. 1970.

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"

SO ORDERED.

Taguig City,

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