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INTELLECTUAL PROPERTY PHILIPPINES

GLOBAL QUEST VENTURES, INC., } IPC NO. 14·2007·00112 Opposer, } Case Filed on: April 23, 2007

} Opposition to: } App. Serial No. 4-2006-002157

-versus­ } Date Filed: 24 February 2006 } TM: "MEGALICIOUS MR.

MA. SHARMAINE R. MEDINA, } GULAMAN & DEVICE" Respondent-Applicant. }

x----------------------------------------------------x Decision No. 2009· jW

DECISION

Before us is a Verified Notice of Opposition filed against the application for registration of the mark "MEGALICIOUS MR. GULAMAN & DEVICE" used for powder based jelly dessert under Class 29 of the international classification of goods bearing Application Serial No. 4-2006-02157 which was published in the Intellectual Property Office Electronic Gazette on 23 March 2007.

Opposer, GLOBAL QUEST VENTURES, INC., is a domestic corporation, with business and postal address at No. 1841 P. Hidalgo Lim Street, Malate, Manila. On the other hand, Respondent-Applicant, is a Filipino citizen with address at No. 201-3 Juan Luna Plaza, No. 668 Juan Luna Street, Binondo, Manila.

The grounds for opposition are as follows:

"1. Respondent Medina is not the owner of the trademark Mr. Gulaman but the Opposer Global Quest. She is simply the source and author of fake jelly powder mix products manufactured and sold by Bendum and she imitated, copied and pirated the mark Global Quest has been using for the said products. It must be emphasized that the trademark Mr. Gulaman and its logo design is protected by a copyright under the name of its creator and owner, Mr. Benjamin Irao, Jr. and that copyrighted name was assigned by Mr. Irao to Global Quest on 14 February 2005.

2. Mr. lrao, the copyright creator-owner and assignor of the mark If:' MR. GULAMAN & LOGO DESIGN, and Global Quest, the copyright assignee, f ~ i

Republic of tbe Pbilippines INTELLECTUAL PROPERTY OFFICE

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did not authorize Ms. Medina to register the MR. GULAMAN marks with the Bureau of Trademarks. Apparently, Ms. Medina is working for Bendum Trading that is imitating the Opposer's products. When Medina first filed an application on 09 May 2005 for the registration of the mark MR. GULAMAN (Stylized}, she was acting in bad faith because she knew

that herein Opposer Corporation has already been using the mark as its trade name for its gulaman jelly powder mix products since 1997.

3. MR. GULAMAN and its logo design is the mark that Global Quest has been using since they started manufacturing and selling gulaman powder mix products since 1997 as evidenced by the numerous sales invoices it issued for its customers. The mark MR. GULAMAN is used by Global Quest as a visible sign to distinguish its products from other brands of the same products.

4. Herein respondent Medina cannot claim that she is the creator of the mark MR. GULAMAN and its logo design since the same is copyrighted under the name of Mr. Benjamin lrao, Jr. as early as 1996 and who assigned its ownership to Global Quest Ventures, Inc. in 2005.

5. It is clear from the foregoing that Ms. Medina cannot claim ownership of the mark MR. GULAMAN. First, the mark is copyrighted and its current owner is Global Quest Ventures, Inc. Second, the Opposer Corporation has been using the said mark for its gulaman jelly powder mix products it manufactures and sells in the market since 1997. Although, Ms. Medina was able to register the mark on 25 July 2006, such registration is not yet final and is presently being contested with this Honorable Office.

6. The registration of the MR. GULAMAI\I (Stylized) under the name of Ms. Medina has already caused severe damage to the business profit and reputation of the Opposer. To allow the registration again of MEGALICIOUS MR. GULAMAN & DEVICE like MR. GULAMAN (Stylized) under the name of Ms. Sharmaine Medina will definitely exacerbate these damages. The petition for the cancellation of the trademark MR. GULAMAN (Stylized) is hoped to cure the damages inflicted against Opposer.

7. Under the circumstances, therefore, Respondent's application for the registration of the mark MEGALICIOUS MR. GULAMAN & DEVICE must not be allowed to be registered with the Bureau of Trademarks and should

not be recorded in its books of registered marks because the Opposer iSf

the owner and first user of the trademark MR. GULAMAN. Otherwise stated, the processing of the application of the mark MEGALICIOUS MR. GULAMAN & DEVICE, in the interest of justice, equality and convenience, should not be registered or at least be held in abeyance because there is a prejudicial issue of ownership which is still being resolved in another case which is the cancellation of the registration of the mark MR. GULAMAN (Stylized).

The Opposer relied on the following set of facts in its opposition:

"1. The Opposer is engaged in the manufacture and sale of gulaman jelly powder mix bearing the copyrighted name MR. GULAMAN and its logo design as printed on the box and sachet used in its packaging of the products. The corporation has been engaged in the said manufacturing business and has been selling the product bearing the mark MR. GULAMAN since the year 1997.

2. In 1996, Mr. Benjamin Irao, Jr. was asked by the corporation to design and register MR. GULAMAN and logo design with the National Library. The said mark (MR. GULAMAN & LOGO design), together with the intellectual creations of Mr. lrao, was registered with the National Library on September 1996.

3. On 14 February 2005, Mr. Irao transferred the ownership of the copyrighted works which include MR. GULAMAN and its logo design to Global Quest Ventures, Inc. through a Deed of Assignment.

4. Sometime in 2004, Opposer learned that a group of persons, who are doing business under the name Bendum Trading, imitated the products of Global Quest and, sold it to the market using the copyrighted name MR. GULAMAI\I in its packaging, without the knowledge and permission of the Opposer. Bendum's packaging is exactly identical to that of the opposer Global Quest. Since this imitation seriously affected the Opposer's business, it initiated some legal actions against Bendum which includes copyright infringement at the Regional Trial Court of Manila.

5. While awaiting the decision of the RTC, herein Opposer corporation, on 13 January 2006 and 01 February 2006, respectively, filed separate applications for trademark registration of MEGALICIOUS MR. GULAMAN label mark bearing Application Serial 1\10. 4-2006-00442, and

MR. GULAMAN and device, characterized by a baker holding a plateful o~ j,f;:­jelly, with Application Serial No. 4-2006-001148 with the Bureau o~ (13

Trademarks of the Intellectual Property Office.

6. While on the process of application, the Opposer learned that a certain Ma. Sharmaine Medina had earlier filed, on 05 May 2005, a similar application for the registration of the trademark MR. GULAMAN (Stylized) without its knowledge and authorization. The application bears Serial No. 4-2005-004181.

7. Immediately, after learning thereof, and without waiting for the thirty-day (30) notice period, as provided for by Section 134 of R.A. No. 8293, Opposer, through counsel, informed IPO of its opposition against the application of Ms. Medina.

8. However, on 04 August 2006, the Opposer learned that the Bureau of Trademarks has approved Medina's application for the registration of trademark MR. GULAMAN (Stylized) on 25 July 2006. The said registration of the mark MR. GULAMAN (Stylized) is now subject of the Petition for Cancellation of Trademark Registration now pending at the Bureau of Legal Affairs of the IPO docketed as IPC No. 14-2006-000121, and filed by herein Opposer against Ms. Medina.

9. Meanwhile, Ms. Medina while processing the registration under her name of the mark MR. GULAMAI'J (Stylized), also applied on 24 February 2006, for the registration of the mark MEGALICIOUS MR. GULAMAN & DEVICE, (said application is exactly similar to the mark earlier applied for registration by herein Opposer) submitting again with the Bureau of Trademarks and exactly same mark including the logo design of Mr. Irao and now assigned to the Opposer corporation as its trademark in the packaging of its gulaman jelly powder mix products.

10. On 21 March 2007, the Bureau of Trademarks through its IPRS­in-charge Mr. Arnold Rilloraza, informed the Opposer through its counsel that its application for trademark registration MEGALICIOUS MR. GULAMAN LABEL MARK is not registrable since it is identical to an already registered mark, referring to Ms. Medina's registration of MR. GULAMAN (Stylized). Immediately after the receipt of the said registrability report (Paper No.6), the Opposer submitted a response to the Bureau of Trademarks.

11. However, on 23 March 2007, the Bureau of Trademarks

published in the IPO Gazette Ms. Medina's trademark application f01( MEGALICIOUS MR. GULAMAN & DEVICE for the purpose of opposition.

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Presumably, the publication for the opposition of the application of Ms. Medina for MEGALICIOUS MR. GULAMAN LABEL MARK and the denial of the application of herein Opposer for the same mark is due to the fact that Ms. Medina is now the holder of a certificate of registration for the mark Mr. Gulaman. This Office should note, however, the existence of IPC 1\10.

14-2006-00121 for the cancellation of Medina's Certificate of Registration for the mark MR. GULAMAN which is now submitted for resolution."

In support of the opposition, the following pieces of evidence were submitted:

Exhibits Description

"A" Secretary's Certificate executed by on April 19, 2007

Anna Marie Chan

uB Il Sample of Opposer's product's box packaging

"en Certificate of Copyright Registration Irao issued on September 16, 1996

of Mr. Benjamin

"Dit Deed of Assignment executed by Benjamin Irao, Jr. of the copyright registration of Mr. Gulaman (with logo design) among other to Global Quest Ventures, Inc. on February 14,2005

liE" Copy of the application for registration of the mark "Megalicious Mr. Gulaman" bearing Serial No. 4-2006­000442 filed by Opposer on 13 January 2006

"F" Copy of the application for registration of the mark "Mr. Gulaman & Device" bearing Serial No. 4-2006-001147 filed by Opposer on 01 February 2006

"G" Letter by Abad & Casis Law Office addressed Adrian Cristobal, Jr. dated 20 February 2006

DG Atty.

uH II Response of the Abad & Casis Law Office to Paper No. 6 of the Bureau of Trademarks on Application Serial No. 4-2006-000442 dated March 27, 2007

"In Global Quest Sales Invoice Nos. 103, 105, 111, 117,151,152,154,162,358,360, and 361 evidencing sales of their Mr. Gulaman product dated in years 2000, 2001, and 2003

On 7 May 2007, this Bureau issued a Notice to Answer to Respondent-Applicant. Said notice was personally served to Respondent's address and was received by a~

certain Kelly Uy on May 18,2007. On 14 June 2007, Respondent-Applicant filed her

5 &.

verified Answer stating the following Special and Affirmative Defenses:

"1. Opposer has no cause of action against herein Respondent for the reason that the latter's trademark MEGALICIOUS MR. GULAMAN & DEVICE has been used since 2004 and still is in use in its product long before Opposer filed its application for registration of the aforesaid trademark for which reason the same, must be dismissed outright.

2. It must be stressed at this juncture that Respondent Medina has already acquired vested rights upon the approval of her trademark Mr. Gulaman (Stylized) and corollary rights in creating or using based from the said trademark is well recognized like in the instant registration of MEGALICIOUS MR. GULAMAN & DEVICE.

3. As the "first-user and first-registrant" of the trademark MR. GULAMAN, respondent Medina enjoys the rights and privileges appurtenant thereto protected by the Trademark Law.

4. The contrasting claims of Opposer that they learned the imitation sometime in 2004 and the assignment of alleged copyright of the said trademark of MR. GUILAMAN is a mere prevarication, if not preposterous. It must be stressed that as early as 2004, respondent Medina is already doing business using the said trade name and subsequently applied and registered under her name. How can the Opposer say that Respondent is imitating the said product bearing the said trade name when in fact they are using it earlier than 20047 Thus, Respondent has no standing personality, even assuming, for the sake of argument that they discovered the said imitation as early as 2004, when in fact the alleged assignment of Mr. Irao's copyright was executed dated 14 February 2005.

5. It was only January 13, 2006 and February 1, 2006 that Opposer belatedly filed the applications of I\IIEGALICIOUS MR. GULAMAN LABEL MARK and MR. GULAMAN & DEVICE. The first application was rejected by the Bureau of Trademarks dated March 21, 2007, through IPRS-in-charge Mr. Arnold F. Rilloraza perfunctorily found that MEGALICIOUS MR. GULAMAN is not registrable since it is identical to an already registered mark, referring to Ms. Medina's registration of MR. GULAMAN (Stylized).

In short, their unfounded claim was made only to hamper the smoot!]; approval of Respondent's application for the said trade name.

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6. Succinctly, even assuming without admitting that Opposer and Mr. Irao executed an alleged deed of assignment for the said copyright, the same cannot bar Respondent to use it, because the said copyright was not "in rem" and it does not bind the whole world or third parties. In the same light, the right of the Opposer begins only from the date of the execution of the alleged deed of assignment. In so far as Respondent, her right to the said trademark was already vested when she started using it in her business and after the application was granted.

7. Respondent in the early 2004, the trademark of MEGALICIOUS MR. GULAMAN & DEVICE was already made use for the products in her business. To note, the alleged execution of the Deed of Assignment was made only in the year 2005."

In said Answer, Respondent-Applicant attached documentary evidence consisting of the following:

Exhibits Description

"1 " Delivery Receipt No. 616 dated August 3, 2004 issued by Wackey Trading to Luz Dy

Delivery Receipt No. 620 dated August 8, 2004 issued by Wackey Trading to Jimmy Dy

Joint-Affidavit of Jimmy Dy and Luz Dy

"2"

"3"

On 25 June 2007, a Notice of Preliminary Conference was issued. During the preliminary conference, the parties moved that their case be referred to mediation, which motion was granted. On February 18, 2008, however, the mediator Atty. Jesus Antonio Z. Ros issued Order No. 2008-272 declaring a failure of mediation. Acting on said Order, this Bureau issued Order No. 2008-312 setting the case for the continuation of preliminary conference. On 10 October 2008, Opposer filed a Manifestation with Motion to Resolve Pending Opposition for Registration of Trademark stating that the instant case be resolved since the cancellation case involving the same parties have already been resolved by this Bureau. Respondent-Applicant filed a Counter­Manifestation saying that the cancellation case is not yet final and executory. On 10 December 2008, the preliminary conference was terminated. Consequently, on 15 December 2008, Order No. 2008- 1970 was issued directing the parties to submit their respective position papers. On 16 January 2009, Respondent-Applicant filed he~ k Posilion Paper. On January 26, 2009, Opposer filed a Malian for Extension of Time If/¢.

File Position Paper which was opposed by Respondent-Applicant. On 29 January 2009, the Opposer's motion was denied under Order No. 2009-263. On 04 February 2009, Opposer filed by registered mail its Position Paper. On 27 February 2009, Opposer filed a Motion for Reconsideration of this Bureau's denial of the Motion for Extension to File Position Paper. Resolving the said Motion, this Bureau issued Order No. 2009-1553 dated 20 October 2009 denying the Motion for Reconsideration. Hence, this case is now submitted for decision sans Opposer's Position Paper.

The issue to be resolved in this case is: WHETHER OR NOT RESPONDENT­APPLICANT'S MEGALICIOUS MR. GULAMAN & DEVICE SHOULD BE REGISTERED.

Section 123.1 of the IP Code enumerates various instances where a mark subject of an application cannot be registered. Specifically, paragraph (d) thereof states:

"Section 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; xxx

It is clear from the foregoing provision that when a mark that is being applied for registration is identical or confusingly similar to a registered mark or to mark which has an earlier filing or priority date, its registration is proscribed. To determine whether the marks of the parties are confusingly similar to each other, the same are hereunder shown for purposes of comparison:

Opposer's Mark Respondent-Applicant's Mark

Indubitably, the above marks are not only confusingly similar but in fact are identical. Thus, this Bureau does not need to delve further on that issue. What is left now to be determined is who between Opposer and Respondent-Applicant has a better right over the said mark.

A perusal of the allegations in the opposition and answer would show that both parties claim ownership of the herein subject mark. To show its ownership over the herein subject mark, Opposer posited that the corporation has been engaged in the manufacture and sale of gulaman jelly powder mix using the mark MR. GULAMAN since 1997, which mark they use, was created by a certain Mr. Benjamin Irao, Jr. and registered with the National Library on September 1996. In 14 February 2005, Mr.-Irao transferred ownership of the copyright thereto to herein Opposer by virtue of a Deed of Assignment. With respect to Respondent-Applicant, it asseverated that she is the owner of the mark. She claimed that she has been using the herein subject mark since 2004 long before Opposer filed its application for registration of the same mark and said mark is still in use in her products. She also stressed that she has already acquired vested rights upon the approval of her trademark Mr. Gulaman (Stylized). As the "first­user and first-registrant" of the trademark MR. GULAMAN, she enjoys the rights and privileges appurtenant thereto protected by the Trademark Law.

After a thorough assessment of the arguments of the parties vis-a-vis the pieces of evidence presented by them to support their arguments, this Bureau finds for the Opposer.

As already mentioned, Section 123.1 (d) of the IP Code states that a mark subject of an application cannot be registered if it is identical with a registered mark or identical with a mark with an earlier filing or priority date. Seemingly, from this provision, we could easily conclude that herein Respondent-Applicant has a better right over the subject mark. However, it must be emphasized that in numerous cases decided by the Supreme Court, the right to register trademarks, trade names and service marks by any person, corporation, partnership or association domiciled in the Philippines or in any foreign country, is based on ownership, and the burden is upon the applicant to prove such ownership. 1

In the case of UNNO COMMERCIAL ENTERPRISES, INC. VS. GENERAL MILLING CORPORATION, ET. AL., 2 the High Court enunciated:

"The right to register 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. f I #.

Marvex Commercial Co., Inc. vs. Petra Hawpia, G.R. No. L-l9297, promulgated on December 22,1966 citing Operators, Inc. vs. Director of Patents.

2 G.R. No. L-28554, February 28, 1993

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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 of the 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 use and is entitled to registration." [Emphasis supplied]

Moreover, it bear stressing that even in the passage of R.A. No. 8293, ownership is not obtained by mere registration. 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 ownershlp"

In claiming ownership and priority of rights over the herein subject mark, Opposer presented a Certificate of Copyright Registration in the name of a certain Benjamin Irao, Jr. , whom it asked in 1996 to design the Mr. Gulaman and Design mark. While Respondent-Applicant is correct in saying that copyright ownership is entirely different from trademark ownership, Opposer's right of ownership over the trademark was n~~~ solely based on the copyright acquired through the Deed of Assignment but from use 01/&. , F;,hw"lth Canning Cn",." Henry Kawson, Appeal No'. 10-05-03 and 14-05-06, Office of the Director General, ~. 22 January 2007)

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the Mr. Gulaman & Device mark by Opposer in its gulaman jelly powder mix since 1997, with the consent of the copyright owner who created the Mr. Gulaman design. Aside from presenting the copyright registration of Mr. Irao (later on transferred to herein Opposer), sample sales invoices dating back to 2000, among others, were also presented by Opposer to show that indeed it has used in commerce as a trademark in its gulaman jelly powder mix product the copyrighted Mr. Gulaman and Design created by Mr. Irao. These evidence of sales dating back to 2000 corroborates Opposer's claim of use of the mark even before the copyright registration of the MR. GULAMAN design was assigned to it in 2005. The fact is, even prior to the assignment, Mr. Irao has given his consent to use his work as the trademark in Opposer's gulaman jelly powder mix. It is not impossible for Opposer to use a copyrighted work of another person, in this case Mr. Irao's work, when the creator of such work has given its consent. It is of no moment whether the assignment was made only in 2005.

In contrast, Respondent-Applicant presented also delivery receipts but these delivery receipts were dated only sometime in 2004, a much later date than the date of use of the identical mark by Opposer.

Noteworthy also is the fact that as between Opposer and Respondent-Applicant, the former was first to apply for registration for the MEGALICIOUS MR. GULAMAN & DEVICE, having filed its application on 13 January 2006 while Respondent filed her own application only on 01 February 2006. An indication of good faith is the possibility that two businessmen or entities are, independently of each other, able to come up with identical or similar marks for use on same or related goods. However, both of them should be able to give plausible explanations regarding the origin and ownership of the trademark. When a trademark copycat adopts the word portion of another's trademark as his own, there may still be some doubt that the adoption is intentional. But if he copies not only the word but also the word's exact font and lettering style, the slightest doubt vanishes. It is then replaced by the certainty that the adoption was deliberate, malicious and in bad faith." In the case at bar, Respondent failed to give plausible explanation as to how she was able to come up with an identical mark as that of Opposer. With that, we can only conclude that Respondent copied her mark from Opposer.

It is worthy to note that 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 industry and skill; to assure to 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."

All told, since Opposer was able to present substantial evidence to prove that it has a better right over the herein subject mark, its registration in the name of Respondent-Applicant should be disallowed.

4 Shangri-la International Hotel Management, Ltd. vs. Developers Group of Companies, Inc., G.R. No. 159938. March 31, 2006

5 Mirpuri vs., Court of Appeals, G.R. No. 114508, November 19, 1999. 11

WHEREFORE, premises considered, the Notice of Verified Opposition filed by Opposer, GLOBAL QUEST VENTURES, INC. against Respondent-Applicant SHARMAINE MEDINA is, as it is hereby SUSTAINED. Consequently, the trademark application for mark "MEGALICIOUS MR. GULAMAN & DEVICE" bearing Serial No. 4­2006-002157 filed on 24 February 2006 by Respondent-Applicant for powder based jelly dessert under Class 29 of the international classification of goods is, as it is hereby, REJECTED.

Let the filewrapper of "MEGALICIOUS MR. GULAMAI'J & DEVICE" subject matter of the instant case together with a copy of this Decision be forwarded to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

Makati City, 14 December 2009.

EST LITA BELTRAN-ABELARDO Oi" etor, Bure;~f Legal Affairs

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