iPINTELLECTUAL PROPERTYPHILIPPINES

-versus-

JUICY COUTURE,INC. and L.C.LICENSING, INC.,

Opposers,

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PRIVATE JOYCE INTIMATE }COLLECTION, INC., }

Respondent-Applicant, }

)(--------------------------------------------------){

IPC NO. 14-2007-00076Case Filed: 03-23-07Opposition to:App. Ser. No. 4-2004-001255Date Filed: 11 February 1004-TM: "JUICE JEANS AND DEVICE"

Decision No. o'? -q::r

DECISION

For consideration is the Verified Notice of Opposition filed on March 23,2007 against the application for registration of the mark "JUICE JEANS ANDDEVICE" for use on ready to wear pants under class 25 of the internationalclassification of goods bearing Application Serial No. 4-2004-001255 which waspublished for opposition in the Intellectual Property Office Electronic Gazetteofficially released for circulation on 20 November 2006.

Opposer, JUICY COUTURE, INC. (JCI), is a corporation duly organizedand existing under the laws of the United States, with principal office at 12970Branford Street, Arleta, CA 91331 U.S.A. JCI is a subsidiary company of LIZCLAIBORNE, INC. Opposer L.C. LICENSING, INC. (LCI) is also a subsidiary ofLIZ CLAIBORNE, INC., with address at 1441 Broadway, New York, NY 10018,U.S.A. LCI is the sister company and assignee of some of JCI's registeredtrademarks.

Respondent-Applicant is PRIVATE JOYCE INTIMATE COLLECTION,INC., a domestic corporation with address at 24 Mariposa Street, BarangayBagong Lipunan, Quezon City.

The grounds for Opposition to the registration of the mark are as follows:

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"1 . Opposer JCI is the exclusive owner, by prior trademarkregistration and considerable prior adoption and use, of thetrademarks "JUICY" under Philippine Certificate of Registration No. ;'~f!J.

2000-003536 issued on December 14, 2003 and "JUICY JEANS;, ( !

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines • www.ipophil.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

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under Philippine Certificate of Registration No. 4-2000-003534 issuedon October 30, 2004. Both trademark registrations cover Class 25goods, specifically, "clothing namely, shirts, dresses, pants, skirts,jackets, hats and caps".

2. JCI assigned its trademark Registration Nos . 4-2000-003536and 4-2000-003534 to LCI via a Deed of Assignment dated 10September 2004, which was filed with this Honorable Office on 27October 2004. However, JCI remains to be the registrant on record onthe Certificates of Registration issued by this Honorable Office for thetrademarks "JUICY" and "JUICY JEANS" in the Philippines;

3. The trademark JUICY is also registered in several foreignjurisdictions, for Class 25 goods, in the name of LCI. Among saidforeign jurisdictions are: Australia, China, Hong Kong, Indonesia,Malaysia, New Zealand, Singapore and the United States;

4. Similarly, the trademark "JUICY JEANS" is registered infavor of JCI's assignee and sister company, LCI, in several foreignjurisdictions for Class 25 goods, among which are, Australia,Indonesia, Hong Kong, Malaysia, Mexico, New Zealand and the UnitedStates;

5.The trademarks "JUICY" and "JUICY JEANS" are originalcoined word marks created and first used by Opposer JCI. It isunique to the Opposers and no other clothing and accessoriescompany has legitimately used this mark before;

6 . After the issuance of its Philippine Certificates ofRegistration for JUICY and JUICY JEANS on 14 December 2003 and30 October 2004, respectively, Opposer JCI used the JUICY andJUICY JEANS trademarks to promote and sell its products andaccessories. In December 2005, the sale of goods, specificallyhandbags. jewelry, wallets, elts and scarves, bearing the trademarkJUICY and JUICY JEANS was formally launched in the Philippines.This prior and exclusive use by Opposers in the Philippines of JUICYand JUICY JEANS for at least two (2) years has resulted in the marksbecoming associated by the relevant consuming public almostexclusively with the clothing goods and accessories of the Opposer;

7. Respondent-Applicant's JUICE JEANS AND DEVICE markclosely resembles Opposer's JUICY and JUICY JEANS trademarks,which have already been registered on 14 December 2003 and 30October 2004. Not only does Respondent-Applicant seek to register itsJUICE JEANS AND DEVICE mark for the same class as Opposer'sJUICY and JUICY JEANS (both Class 25), its spelling and use of theword "JUICE" also closely resembles that of the Opposer's registeredtrademarks. In addition, Opposer's and Respondent's trademarks,when pronounced, are likewise substantially similar. Thus, the use ofOpposer's JUICY and JUICY JEANS on any Class 25 gOOdS'!f ~specifically clothing, is likely to deceive or cause confusion on the part

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of the relevant consuming public;

8. The use by Respondent-Applicant of the word JUICE in itstrademark, JUICE JEANS AND DEVICE, closely resembles and, infact, colorably imitates the dominant features of Opposers' JUICY andJUICY JEANS registered trademarks. Furthermore, Respondent­Applicant seeks the registration of its trademark for Class 25 goods,which is the same class covered by Opposers' JUICY and JUICYJEANS trademark registrations. AS such, Respondent-Applicant's useof the dominant feature of Opposer's JUICY and JUICY JEANSregistered trademarks is likely to confuse and deceive the relevantconsuming public;

9. Applying the dominancy test, Respondent-Applicant's JUICEJEANS AND DEVICE mark results in likelihood of confusion. First,Respondent-Applicant's use of JUICE in its mark renders the samephonetically similar to the Opposer's use of JUICY. Second, the firstfour (4) letters in Opposer's JUICY. This is compounded byRespondent-Applicant's use of JEANS which make Respondent­Applicant's mark almost identical to Opposer's JUICY JEANS. Third,both Opposer's registered trademarks and Respondent-Applicant'smark cover Class 25 goods;

10. Altogether, Opposer's are known, both locally and abroad,for the manufacture and distribution of quality and dependableclothing goods and accessories, including pants, covered by theregistered trademarks JUICY and JUICY JEANS. Opposers haveendeavored to protect and is, in fact, entitled to protection of suchreputation. Opposers' trademarks, particularly JUICY JEANS isalmost identical to Respondent-Applicant's JUICE JEANS ANDDEVICE. The registration of Respondent's JUICE JEANS ANDDEVICE is thus likely to mislead the public into believing that theready-to-wear pants on which it is used is manufactured and sold bythe Opposers. Thus, the trademark application for JUICE JEANSAND DEVICE should be rejected as it falls under the prohibitionunder Sec. 123.1 (d) of the IP Code, apart from infringing theregistered trademarks JUICY and JUICY JEANS."

In support of the opposition, Opposer submitted the following evidence:

Exhibits Description of Documents"A" Certified true copy of Certificate of

Registration No. 4-2000-003536 of themark JUICY issued by the IPO onDecember 14, 2003

"B" Certified true copy of Certificate ofRegistration No. 4-2000-003534 of themark JUICY JEANS issued by the IPOon October 30, 2004

lie" Certified copy of the Assignment ofTrademarks between Juicv Couture,

Inc. and L.C. Licensing, Inc. datedSeptember 10, 2004

"0" to "0 -3" Certified copies of Foreign Certificatesof Registrations of the mark JUICY inAustralia , Japan, New Zealand andMalavsia on Class 25

"E" to "E-3" Certified copies of Foreign Certificatesof Registrations of the mark JUICYJeans in Australia, Hong Kong Malaysiaand the OHIM on Class 25

On March 30, 2007, a Notice to Answer the Verified Notice of Oppositionwas issued by the Bureau and personally served to the herein Respondent­Applicant on April 11, 2007 . Respondent-Applicant filed its Answer on June 12,2007 stating among others, the following defenses:

" 1. The Opposer lacks the legal capacity to sue;

1.1 . It is alleged that the opposer is a foreign corporation but theVerified Opposition suffers from a fatal defect as it does not establishthe legal capacity to sue on the part of said corporation under RepublicAct No. 8293 . From that ground alone, the Verified Opposition musttherefore fail and be dismissed;

2. The Opposer does not have a valid cause of action

2 .1. There is no colorable imitation of the opposer's trademarksby that of the Respondent-Applicant. The appearance , spelling andpronunciation of the Respondent-Applicant's trademark do not closelyor similarly resemble the dominant features of Opposer's trademarksJUICY and JUICY JEANS that would likely confuse or deceive theconsuming public.

3. There is no proof of actual use by the Opposer's trademark forthe product jeans in the market, which is solely intended by theRespondent-Applicant to be introduced and covered by its trademark inthe future. Thus, there can be no infringement on the Opposer'strademark to speak of."

On June 26, 2007, this Bureau issued a Notice of PreliminaryConference. During the preliminary conference, the parties moved that thecase be referred to Mediation. On 26 July 2007, Order No. 2007-1359 wasissued by the Bureau referring the case for mediation. On October 12, 2007, theMediator Atty. Louie Andrew C. Calvario issued Order No. 2007-1946 declareda failure of mediation and referred the case back to this Bureau. On February12, 2008 , Opposer submitted a Certification from the Bureau of Trademarks thatRespondent-Applicant failed to file the required Declaration of Actual Use (DAU)within three (3) years from the filing date. During the continuation of the:reliminary conference on February 26,2008, only Opposer's counsel appearedr

who moved that Respondent-Applicant's right to file Position Paper be waivedfor failure to appear. Acting on the said motion, Respondent-Applicant's right tofile its Position Paper was waived while Opposer was directed to file its PositionPaper within ten (10) days. On March 7, 2008, Opposer filed its Position Paper.Hence, this case is now ripe for decision.

The issues to be resolved in this case are:

1. Whether or not Opposer has the legal capacity to sue.

2.Whether or not Respondent's application for registration of themark "JUICE JEANS AND DEVICE" should be denied for beingconfusingly similar to Opposer's marks "JUICY" and "JUICY JEANS".

On the issue of legal capacity to sue, Opposer in its Position Paperaverred that it has legal capacity to sue under the IP Code. According toOpposer, Under Section 134 of the IP Code, any person who may be damagedby the registration of a mark may file an opposition thereto and that the opposerneed not obtain a license to do business in the Philippines before he may file anopposition. Opposer further contended that they are domiciled in the UnitedStates of America, which like the Philippines, is a party to the Paris Conventionon the Protection of Intellectual Property Rights ("The Paris Convention").Being domiciled in the country which is a party to the Paris Convention,Opposer's are entitled to the benefits which the owner of a Philippine registeredmark may have under the IP Code in addition to the rights provided under theParis Convention.'

Contrary to Respondent-Applicant's contention that the Opposers haveno legal capacity to sue, Opposers' right to sue is defined in Section 160 ofRepublic Act 8293:

"SECTION 160. Right ofForeign Corptration to Sue in Trademark orService mark Enforcement Action.- Any foreign national or juridicalperson who meets the requirements of Section 3 of this act and does notengage in business in the Philippines may bring a civil or administrativeaction hereunder for opposition, cancellation, infringement, unfaircompetition, or false designation of origin and false description, whetheror not it is licensed to do business in the Philippines under existing laws ."

In relation thereto, the right of a foreign corporation to sue under Sectio~160 must meet the qualifications stated in Section 3, of Republic Act 8293which states :

I Opposer's Position Paper, pp. 7-8.

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"SECfION 3.Intemational Conventions and Reciprocity. - Any personwho is a national or who is domiciled or has a real and cllcctivcindustrial establi shment in a country which is a party to any convention,treaty or agreement relating to intellectual property rights or therepression of unfair competition, to which the Philippines is also a part y,or extends reciprocal rights to nationals of the Philippines by law, shallbe entitled to benefits to the extent necessary to give cllcct to anyprovision of such convention , treaty or reciprocal law, in addition to therights to which any owner of an intellectual property right is otherwiseentitled by this Act."

Opposer has adequately alleged that its country of origin or domicile isa member of and signatory to the Convention of Paris on Protection ofIndustrial Property. In the case of PUMA SPORTSCHUHFABRIKEN RUDOLFDASSLER, K.G., vs. THE INTERMEDIATE APPELLATE COURT2

, the SupremeCourt held:

"In th e leading case of La Chemise Lacoste, S.A. v. Fernandez,(129 SCRA 373), we ruled:

"But even assuming th e truth of th e private respondent'sallegation that the petitioner failed to allege material fact s in itspetition relative to capacity to sue, the petitioner may st ill maintain th epr esent suit against respondent Hemandas. As early as 1927, thisCourt was, and it still is, of the view that a foreign corporation notdoing busin ess in the Philippines needs no license to sue beforePhilippine cour ts for infringement of trademark and unfaircompe tit ion. Thus, in Western Equipment and Supply Co. v. Reyes (5 1Phil. 115), thi s Court held that a foreign corporation whi ch has neverdone any business in the Philippines and which is unli cens ed andunregister ed to do business here, but is widely and favorably known inth e Philippines through the use therein of its products bearing itscorporate and trade name, has a legal right to maintain an action in thePhilippines to restrain the resid ents and inhabitants th er eof fromorganizing a corporation therein bearing the same name as th e foreigncorporation , wh en it appears that th ey have personal knowledge of th eexiste nce of such a foreign corporation, and it is apparent that th epurpose of th e proposed domestic corporation is to deal and trade inth e sam e goods as those of th e foreign corporation."

Quoting th e Paris Con vention and the case of Vanity FairMills, In c. v. T. Eaton, Co. (234< F .2d 633), this Court further sa id:

______"_B_y_tl_1e same token , the petitioner should be g iven th e same~

2 G.R. No. 75067. February 26,1988 I I6

treatment in th e Philippines as we make available to our own cit izens .We are obligated to assure to nationals of ' countries of th e Union' aneffective protecti on against unfair competit ion in th e same way th atth ey are obliga ted to similarly protect Filipino cit izens and firms."

Prescinding therefrom, this Bureau holds that Opposer has legal capacity tosue.

Anent the issue of confusing similarity, Section 123. 1 (d) of RepublicAct No. 8293, is applicable:

"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 ora mark with an earlier filing or priority date, in respect of:

i. The same goods or services, orii. Closely related goods or services, oriii. If it nearly resembles such a mark as to be likely to deceive or cause

confusion;

The determinative factor in a contest involving registration of trademarkis not whether the challenged mark would actually cause confusion or deceptionof the purchasers but whether the use of the mark would likely cause confusionor mistake on the part of the buying public. The law does not require that thecompeting marks must be so identical as to produce actual error or mistake. Itwould be sufficient that the similarity between the two marks is such that thereis possibility of the older brand mistaking the newer brand for it.

Colorable imitation does not mean such similitude as amounts to identity.Nor does it require that all the details be literally copied. Colorable imitationrefers to such similarity in form, content, words, sound , meaning , specialarrangement, or general appearance of the trademark or trade name with thatof the other mark or trade name in their over-all presentation or in theiressential , substantive and distinctive parts as would likely mislead or confusepersons in the ordinary course of purchasing the genuine article. "

Emerald Garments Manufacturing Corporation vs. COUlt of Appeal s, G.R. No. 100098 . December ;f.,~29, 1995. / !

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For comparison, the marks of the parties are herein reproduced:

,------------- ----- --,--- ----------_.,

Opposers' Marks

JUICY

JUICY COUTURE

Respondent-Applicant's Mark

.----- - _ .-

jUiCe JU-fYt

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In a long line of cases , the Supreme Court held that in cases involvinginfringement of trademark brought before the Court, it has been consistentlyheld that there is infringement of trademark when the use of the mark involvedwould be likely to cause confusion or mistake in the mind of the public or todeceive purchasers as to the origin or source of the commodity; whether or nottrademark causes confusion and is likely to deceive the public is a question offact which is to be resolved by applying the TEST OF DOMINANCY, meaning ifthe competing trademarks contain the main or essential or dominant featuresof another by reason of which confusion and deception are likely to result, theninfringement takes place. The duplication or imitation is not necessary . Asimilarity in the dominant features of the trademark would be sufficient.'

Undoubtedly, the herein subject mark is almost identical to the Opposer 'smark JUICY in the sense that the letter "Y" in the mark JUICY was merelyreplaced with letter "E" to form the mark "JUICE", the word "jeans" having been

Philippine Nut Inc. VS. Standard Brands Incorporated et al., 65 SCRA 575; Co Tiong SO VS.

Director of Patents, 94 Phil 1 citing Viz Clarke VS. Manila Candy Co. 36 Phil 100; Alhambr~arCigar & Cigarette Co., VS. Jao Oge, 47 Phil 75; Etepha A.G. VS. Director of Patents andWestmont Pharmaceuticals Inc. No. L-20635, 16 SCRA 495.

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disclaimed, all other letters are the same such that when the competing marksare pronounced, both marks sound the same that you cannot distinguish onefrom the other, thus is confusingly similar.

Moreover, jurisprudence has not disregarded the fact that differences incontending marks still exist. But these differences appear insignificant byreason of evident similarity in the dominant feature and the overall appearanceof the marks. In this regard, the Supreme Court said:

"It is not necessary, to constitute trademark 'infringement', thatevery word of a trade-mark should be appropriated, but it issufficient that enough be taken to deceive the public in thepurchase of a protected article." (Bunte Bros. vs StandardChocolates, D.C. Mass, 45 F. Supp. 478, 481)."Infringement' of trade-mark does not depend on the use of

identical words, not on the question whether they are so similarthat a person looking at one would be deceived into the beliefthat it was the other, it being sufficient if one mark is so likeanother in form, spelling, or sound that one with not a verydefinite or clear recollection as to the real mark is likely to beconfused or misled," (Northam Warren Corporation vsUniversal Cosmetic C., C.C.A III, 18 F.2d 714, 775)(Philippine Nut Industry, Inc. vs Standard BrandsIncorporated, 65 SCra 575)

In addition, both trademarks cover the same class of goods, that is,class 25 as both parties use their marks on pants. As such, both products flowthrough the same channels of trade, therefore, confusion between the twotrademarks would likely result to prospective buyers. Thus, Respondent­applicant's mark clearly contains the main or essential or dominant featuresof Opposer's mark and confusion and deception is likely to result. An unfaircompetitor need not copy the entire mark to accomplish its fraudulentpurposes. It is enough if he takes the one feature which the average buyer islikely to remember."

WHEREFORE, premises considered, the Notice of Verified Oppositionfiled by Opposers, JUICY COUTURE, INC. and L.C. LICENSING, INC. againstrespondent-applicant PRIVATE JOYCE INTIMATE COLLECTION, INC. subjectapplication is, as it is hereby SUSTAINED. Consequently, the trademarkapplication for the registration of the mark "JUICE JEANS AND DEVICE"bearing Application Serial No. 4-2004-001256 filed by respondent-applicantPrivate Joyce Intimate Collection, Inc. on 11 February 2004 for use on readytYrwear pants under Class 25 of the International Classification of goods is, as it

~ Nims, The Law of Unfair Competition and Trademarks, 4'" ed. Vo. 2, pp. 671>-679~

is hereby , REJECTED.

Let the filewrapper of JUICE JEANS AND DEVICE be transmitted to theBureau of Trademarks (BOT) for appropriate action in accordance with thisDECISION.

50 ORDERED.

Makati City, 22 May 2008.

Esirector, Bureau of Legal Affairs

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