INTEllECTUAL 'IOPElnP H I L I P I N ES

PP

r- ppellant,

. 1 -0 -

-\' r u -

' . BHDpplicant- ppell .

I I

that on 31 January 1 pp lie til d in the d funct Bureau ofPat n , Tra mark and Te hnology Tran fer BPlTf)3 of the D partment of Trade andIndu try an appl ication for the regi tration of the trademark UE for co tume jewelryin c rdan ith Republic Act o. 166, a amended RA 16 . Th application waspubli hed for pp itionS on 05 August 2002 . On 24 a tob r 2 02, ppellant filed a

erified opp ition to the application alleging the following:

I. Appellant i the registered owner of the trademark va UE in the..A. since 1892, and in the Philippines and other countries long

before the Appellee appropriated the same for it own products;

2. ppellce ' trademark so re emble Appellant as to b likely, whenapplied to or u ed to cause confu ion, mi take and deception byintentionally mi leading the public that ppellee' good come fromor ar pon or d or licensed by the ppellant;

te f York .S.A. ith bu in address I

th BPTIT

,J Ian Raja Chulan , 50200

f Ih Philippin

im

OF TRADE ARKS.CO PETITIO D F LSED OR OTHER PURPO ES".

D i ionn e v. Cos y

P ge I of7

351

3. Appell ee ' s registration and use of its trademark will d iminish thedistinctiveness and dilute the goodwi ll of Appellant's trademark;

4. Appellant is the first user of the trademark VOGUE in Philippinecommerce and elsewhere for decades and that its publications andbooks bearing that trademark are dedicated to fashion , costume andaccessories, including jewelry; and

5. Appellee's appropriation and use of the trademark VOGUE infringeupon Appellant's exclusive right to use that trademark, the registrationthereof in the name of the Appellee being contrary to the provisions ofthe IP Code.

Due to the failure of the Appellee to file its Answer. the Director issued an Orderdated 09 June 2003 granti ng Appellant's "Motion to Declare Respondent-Applicant InDefault with Motion 10 Present Evidence Ex Pane". After the Appellant had presentedits evidence ex-parte, the Director promulgated the assailed decision on 10 August 2005.the dispositive portion ofwhich reads :

~WHEREFORE. in view of the foregoing. the Notice of Opposition filed by theOpposer is, as it is heTdlyDENIED.

"Conside ring however that , as shown by the records , Respondent-Applicant.des pite due notice failed to file its Answer to the Notice of Opposition nor filed anymot ion to lift the Order of Default, which is indicative of Respondem-A pplicam'slack ofinterest in its app lication, thus it is dee med 10 have abandoned the same.

" Moreover. under Rule 602 of the Rules and Regulat ions on Trademarks,Service Marks, Trade Names and Marked or Stamped Contai ners. the law imposes uponthe Respondent-Appl icant the dury to look afte r his own interest in the prosecution of hisappli cation. In the cas e at bar, Respondent-Applicant appea rs to have no interest indefending its appl icatio n, wh ich is the subject of this Notice o f Oppos ition.

"IN VIEW THEREOF, Appli cat ion Seria l No . 4-1996.1056 18 for the mark' VOGUE' used for cost ume jewelry filed on January 31, 1996 by Respondent -Applicant,COSWA Y (M) SDN. BHD . is hereby considered ABANDON EDIWln mRAWN forRespondent-Applicant's lack of interest to prosecute subject applicat ion. x x x"

Obviously not satisfied. Appellant filed the instant appea l on 05 September 2005raisi ng the following issues:

I. Whether or not Appe llant's trademark is an internationally well -knownmark unde r Art. 6bis of the Paris Convention, Art. 16(2) of the GAIT­TRIPS Agreement' and See. 123.I(e) and (I) of the IP Code;

2. Whether or not the appealed Decision correctly applied RA 166 andArt. 6bis of the Paris Convention to the extent that it limits protection

' Agrttrncn t on TIMe-Re lated Aspectsoflntellectual Property Righu (Annex Ie o f tbe' WTO Agreement ).

OecisiooAdvance: V. Ccsway

Page 2 of7

of well-known marks only against unauthorized use on "identical andsimilar goods"; and

3. Whether or not the appealed decision correctly declared thatAppellant' s trademark is entitled to protection only againstunauthorized use on identical or similar goods when under Sec.123.1(1) of the IP Code. which the BLA is bound to implement, theprotect ion granted to a well-known mark registered in the Philippines .extends even to goods and services which are nol similar to those withrespect to which registration is applied for.

Appellant contends that Sec. 239.1 ' of the IP Code has expressly repealed RA 166and that the legislature intended that only one sta tute should govern intellectual propertyrights beginning 0 1 January 1998. According to the Appellant. under Sec. 239.2' of theIP Code. marks registered under RA 166 rema in in force but deemed to have beengranted under the new law. Appellant posits that its registration for the mark VOGUEshould be deemed to have been granted under the IP Code and be entitled to protectionagainst goods and services. which are not similar to those in respect of which the mark isregistered. Appellant argues that being internationall y well known. its mark should begiven expanded protecti on as provided for in the IP Code . Appellant further contends thatthe IP Code is a curative statute that seeks to implement the TRIPS Agreement, whichhas expanded the protection accorded to well-known marks even against goods that aredissimilar to the goods of the registered owner. Citin~ the case of Manuel L. QuezonUniversity v , NL RC9 and 246 Corporation vs. Dewey 0. Appellant advances its theorythat while the genera l rule is that laws are applied prospectively, new laws should applyretroact ively when they were enacted to address the inadequacies of previous laws.

Despit e an Order from this Office on 03 Nove mber 2005 . Appellee failed tosubmit its comment to the appeal. Accordin gly, on 08 Febru ary 2006, this Office orderedthat the appea l is deemed submitted for decision.

This Office's Ruling:

This Office resolves first the issue of whether or not the provisions of the IP Codeapply retroactively to all trademark applications filed befo re the IP Code took into effect.

f Sec. 239.1 ohhe IP Code states that: " All Aeu andparts of Acu inconsi sten t herewith, more panicularlyRerublic Act No. 16S. as amended: Repub lic Act no. 166, as amended; and Articles 188 and 189 of theRevised Penal Code; Presidential Decree No. 49, including Presidcn lial Decree No. 28S. as amended. arehacby repealed"I Sec . 239 .2 of 1M IP Code states that; .. Marks registered URlkrRepublic Act No. 166 shall remain in forcebuI shall be deemed 10 have been granted under Ihis Act and shall be ~ for renewal withi n the periodprovided for under Ihis Act and, upon rene-waI. shall be m:lusified in accordantt with the IntcmationalClassification. Trade names and marts registered in the SupplcmcntaJ RcgISkt undcr Republic Act No. 166shall rmwn in force but shall no longer besubject to renewaI.-' G.R. '0. 141673, 17 Oct. 2001.I· G.R. No . IS12 I6. 20 S ov. 2003.

DecisionAdvance v. Ccsw..y

Page 3 of7

In this regard. the general rule is that in an amendatory act. every case of doubtmust be resolved against its retroactive effect. Since the retroactive application of a lawusually diverts rights that have already become vested. the rule in statutory constructionis that all statutes are to be construed as having only a prospective operation unless thepurpose and intention of the legislature to give them a retrospective effect is expresslydeclared or is necessarily implied from the language used.11 In the case of Shangri-LaInternational Hotel Management. Ltd. versus Developers Group of Companies. Inc.".the Supreme Court held that:

.." x x • • hile the Philippines 'A-as alre.dy a SIgn&lOl'y 10 the Paris Convention.,the (PC only took effect on January I. 19S8 (sic ). and in tht abseece o f a mro.ctivityclause. R. A. • '0. 166 still applies.~

Thus. the case of 246 Corporation \'S. Daway cited by the Appellant is irrelevantbecause it does not involve and does not even discuss the issue on whether a trademarkapplication filed under RA 166 should be governed by the IP Code . While indeed theSupreme Coon stated that RA 166 has been to some extent modified by Sec. 123.1(1)" ofthe IP Code, there is nothing in that case that says that the If Code. more particularly Sec.123.1(0. should retroactively apply to applications filed under RA 166. What theSupreme Court has passed upon in the 2~6 Corporation vs. Daway case was a proceduralissue on (he conduct of preliminary hearing. The Supreme Court even deferred on themerits of the case. to wit:

"However. the Court cannot yet resolve the merits of the present controversyconsidering that the requis ites for the application of Section 123.1(0. which constitute the:kernel issue at bar, clea rly requi re deterrninarion of facts of which need 10 be resolved atthe trial court. The existence or absence of these requis ites shoul d be: addressed in a fullblown hearing and not on a mere preliminary heari ng."

Appellant claims that the IP Code is a curative statute. Assuming it is, retroactiveapplicat ion, however, is nevertheless restricted. The Supreme Court in the case of ManuelL. Quezon University v. NLRC held chat, "By their nature. curative statutes may be givenretroactive effect, unless it will impair vested rights. .. Accordingly, Sec. 236 of the IPCode provides that:

"SEC. 236. Preservation of Existing Rights .•Noth ing herein shall ad...erselyaffect the rights on the enforcement of rights in patents, ulility models. industrial designs.marb andworks. acquired in good faith prior to the effecnve date of the Act."

II Paloma \'S . Mora. ct aI.• G.R. SO. 157783,23 Sept. 2005 .U G. R. No. 159938 ,31 Mu.2006.u Sec . 12.3.ltOoftht IP Code: states that:

( C. IZJ . Rrgutrabil'l),.• 123.1. A mark. cannoI be registered if It: .... x (0 is identical with. orconfusingly similar to. or constilutes a translation of a mark considered wcll--known in accordance with thepreceding paragnph. which is registered in the Philippines with n:spcct to goods or services 'A·htcb are not

similu to those 'A·ith respect to which registration is applied for: Ppy,,;dhJ. That use or tbe mad in relation10 thoK' goods or services would indicate. comection between thole goods or servlccs, and tht (Nil'1tt oftbe registered mark : Pro\.;JnJfur11tn, That the interests of die owner of the: registered mark are lilt.l~ly to bedamaged by .uch use;

DecisionAdvance v, Cosway

Page40f7

.1

The repeal of a statute does not operate to impair or otherwise affect rights, whichhave been ..tested or accrued while the statute was in force.I" Significantly, Sec. 235.2 ofthe IP Code provides:

"23S.2. All appIieattons for registnll ion of mads or trade names pendi ng in theBureau of Patents. Trademarks and Technology Trans fer II the effect Ive date of this Actmay be; amended. if mcticablc to bo ng them under the J!IOvjsjoos of this Act . Theproseculion of RJCh appl ications so amended and the grant of regi traltons thereon shallbe procttdcd with in accordance with the provisions of this Act. If SUCh amendments areDOl D'IIIk. lbe [!IWttUtion of said appli cations shall be proceeded with and rtgJstrJtionstbmon granled in accordance wlth the Acts under whjch Hi d . rolicttjons wm filed. andH id Acts hereby cceuneed in force to this g t rnJ for this [l!JJl'lQK only. not!itbstandinglhe fOW!Oinc gmml rmeaJ tbeTeof." (Underlining supplied)

Under Sec. 235.2 of the IP Code.jhe provisions ofRA 166, as amended. continueto govern the prosecution and registration of trademark applications that were filed beforethe IP Code took into effect. The scope of Sec. 236 of the IP Code, therefore , coversthese trademark applica tions and registrations . The only instance where the provisions ofthe IP Code shall govern the prosecution and registrat ion of trademark appl ications thatwere filed before the IP Code took into effect is when the appl icant amends theapplication to conform to the requirements under the IP Code.

Appellant's reliance on Sec. 239. I and Sec . 239.2 of the IP Code is, therefore,misplaced. While it is true that the Appellant's mark VOGUE registered under RA 166remains (0 be protected as if have been registered under the IP Code, it is not thetrademark under scrutiny in this case. This case is abou t the Appellee's trademarkapp lication. which was filed under RA 166 and still pending when the IP Code tookeffect. Thus, the app licab le provision is Sec. 235 .2 and not Sec . 239.1 and Sec . 239.2.Since records show that no amendments were made to bring the applica tion under theprovisions of the IP Code, the issue whether it should be registered or not is to begoverned by the criter ia under RA 166. Accordingly, Sec. 4 (d) of RA 166, as amended,states that:

"Sec . 4. Registration of trade-marks. trade-names and servi ce-mark s on theprincipal register-There is hereby established a register of trade -marks. trade-names andservice marks, which shall be known as the principal regisler . The owner of a trade­mark. trade-name or service -mark used to distinguish his goods. business or serv icesfrom Ihe goods. business. or services of others shall have the right to register the same onthe principal register, unless it:, , ,

(dl Consists of or comprises a mark or tradc-name which 10 resembles a mark ortrade-namc regist ered in the Philippines Of a mark or trade-rwne pre vious ly used in thePhilippines by another and not abandoned. as 10 be likely, when applied to or used inconnection " 'ith the goods, business or sen·ices of lhe applicant. 10 cause confusion ormistake or to deceive purchases: or x x x".

14 Sec Fehxberto Villones vs, Empklyccs' Compensation, G. R. No. L-Ui200, 30 July 1979.

DecisionAdvan« v. Cosway

Page S of7

In this regard. this Office finds the Director correct in holding that:

"There is no denying thai the compet ing marks are identical but this will notautomatically preclude the junior user from using Ihe mark. This is reflected in Section4(d) of R. A. 166, as amended. '

x x xwhich the Supreme Court in Philippine Refining Co. Inc. vs. Ng Sam ( l i S SCRA 476)interpreted to mean:

'Such restricted righl over a trademark is likewise reflected in ourTrademark Law. Under Section 4{d) of the law, registration of a trademarkwhich so resembles another already registered or in use should be denied. whereto allow such registration could likely result in confusion, mistake or deception10 Ihe consumers. Conversely. where no confusion is likely 10 arise. as in thisease, registration of a similar or ('''en identical mark may be aIl9we'<I. ' " 's(Underlining is supplied)

Appellant holds that its trademark is internationally well-known and therefore,entitled for protection. Protection to well-known marks in the context of preventingothers from registering identical or confusingly similar marks in their favor shall be inaccordance with the existing and applicable legal regime. It is reiterated that thetrademark application under scrutiny is the Appellee's and not the Appellant's. Since,that application is governed by the provisions of RA 166, as amended, then thedetermination of the issue of whether it should be rejected because the trademark is awell-known mark that belongs to another, shall also be within the bounds of that law. RA166, as amended, however, is silent on the matter. What applies then is par. (I ) of An.6bis of the Paris Convention, which reads:

"( I) The countries of the Union undertake. ex officio if the ir legislation sopermits, or at the request of an interested party, to refuse or to cancel the registration , and10 prohibit the usc, of a trademark which consnunes a reproduc tion, an imitat ion, or atranslation , liable to create confusion. of a mark considered by the competent authority ofthe country of registration or use 10 be well known in that country as being a lready themark of a person entitled to the benefits of this Convention and used for identical orsimilar goods . These provisions shall also apply when the essential part of the markconstitutes a reproduction of any such well-known mark or an imitation liable to createconfus ion therewith."

Assuming en arguendo that the Appellant ' s mark is an internationally well­known mark, Appellee' s trademark application should still be given due course becausethe mark is being used on goods that are dissimilar, non-competing and unrelated to thegoods of the Appellant, and thus, will not cause confusion, or mistake or shall deceivepurchasers. Jurisprudence is already established on the point that there can be nolikelihood of confusion on goods that are non-competing and unrelated.16 As held by theDirector in her Decision:

IS DECISiON. pp. 2-3.I . Sec Faberge, Inc. v. lAC. et al., G.R. No. 71189, 04 Nov. 1992; Esso Standard Eastern, Inc. v, CA, 116SeRA 336 (1982).

DecisionAdvance v. Coswa y

Page60f7

" From the goods indicated in the certificates of regi tration ubrnitted, theOpp r [ ppcllant] failed to comply with th third requirement of the aid memorandumth t th mark mu t be used for the me or imil g ods. The Oppo er [ ppcllant] isu in th mark OGUE for the goods: prin • publi tio nd bo k und r CI 16

hile Re pendent- pplicant [Appellee] i using the m rk for c tum je elry. one ofth g indi ted in the certificates of regi trnti n ubmin d i rei t to the goodco red by the trademark of Respo ndent- pplic nt [ ppell ]. the put in 01 ed arco unrel t d that th public ill not be mi led in th us of identi al m r ."

Finally. \ hil thi Office u tain the Direct r findin on the i ue ofre i trability of the opp sed tradem ark appl ication. thi Office find her declaration thatthe applica tion icon idered abandone withdrawn due to the ppellee' non-filing of anan er t the opp ition. legally flawed. Rule 602 17 of the Trademark Regulation citedby the Dire tor applie to trademark application , \ hi h ha e not yet been publi hed.

nd in th e in tanc . it i the Director of Trademar that h th authority to declare atrademark application abandoned. Since the trademar appli arion ha already beenpubli hed for purp of oppo ition, the Regulation on Inter Parte C e apply. Therei nothing in the Regulation on Inter Parte a that auth riz the Dire tor to declarean applic tion to have been abandone \ ithdra n for f ilure to an \ er a otice ofOppo ition.

WHEREFORE, the Decision of the Director denying th otice of Oppo itionfiled by the pp l1 ant i hereby AFFIRMED WITH ODIFIC TIO . The declarationby the Director that Trademark Appl ication rial o. 4-19 - 10561 deeme dabandoned/wi thdrawn i NULL and VOID.

Let a copy of thi Decision be furni hed the Director of the Bureau of LegalAffair f r appropriate action and let the records of thi ca e be returned to her for properdi po al. Furth r, let the Directors of the Bureau of Trademarks and the Admini strati ve,Financial and Human Resources Deve lopment ervice Bureau and the library of theDo umentation, Information and Technology Transfer Bureau be furnished copies hereoffor their appropriate action and/or information and guidance.

o ORDERED.

FEB 23 2007 , Makati City Philippine .

'1Rule 602 of the Trademark Regulations tate that: "The Office. p nted by th Examiner, is notuppo ed to look nft r the interest of an applicant. Th la impo th t dut upon the applicant himself.

The E aminer i charg d -ith the protection of the int t of th publi nnd henc must be igilant to seeth t n regi tration i u for a mark contrary to In nd these Regulation ."

Deci iondvan e v. Co ay

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