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INTELLECTUAL PROPERTY PHILIPPINES
SKY CABLE CORPORATION, } IPC No. 14-2008-00159 Opposer, } Case Filed: 14 July 2008 } } Opposition to: -versus } App. Ser. No.: 4-2007-606500 } Date Filed: 22 June 2007 } } Trademark: SKY } } BRITISH SKY BROADCASTING } GROUP PLC, } Decision No. 2009 I DECISION Before this Bureau is a VERIFIED NOTICE OF OPPOSITION filed by Sky cable Corporation, a corporation organized and existing under the laws of Republic of the Philippines, with principal office at 33rd Floor, East Tower, Philippine Stock Exchange Centre, Exchange Road, Ortigas Center, Pasig City, against Application Serial No. 4-2007-606500 for registration of the mark "SKY" for Class 41 services, namely: "EDUCATION AND ENTERTAINMENT SERVICES; PROVISION OF TRAINING; PROVISION OF AUDIO VISUAL CONTEI\IT; EDUCATION AND ENTERTAINMENT SERVICES BY MEANS OF RADIO, AND TELEVISION, TELEPHONY, THE INTERNET AND ON-LINE DATABASES; HIRING, RENTAL AND LEASING OF CINE-FILMS, VIDEOS, DVDS, SOUND RECORDINGS, SOUND RECORDING APPARATUS, SPORTS APPARATUS, TELEVISION SETS AND VIDEO RECORDERS, DVD RECORDERS AND RADIO RECORDERS; PRODUCTION OF FILMS FOR TELEVISION AND CINEMA; PROVIDING ON-LINE ELECTRONIC PUBLICATIONS (NOT DOWNLOADABLE); PUBLICATION OF MAGAZINES, BOOKS, TE>CTS AND PRINTED MATTER; PUBLICATION OF ELECTRONIC BOOKS OR JOURNALS ON-LINE; PROVISION OF RECORDING STUDIO FACILmES; LIVE SHOW PRODUCTION SERVICES; ORGANIZING OF SPORTING ACTIVmES AND COMPETmONS; BO)( OFACE SERVICES; PRODUCTION AND PRESENTATION OF PROGRAMMES TRANSMffiED BY TELEVISION, THE INTERNET OR OTHER TELECOMMUNICATION CHANNELS~ FOR THE CONDUCT OF THE INTERACTIVE VIEWING, SELECTION AND /1~ Republic of the Philippines 'NTL"' , L" rTJI A' DDADL"DTV AVV.,.,V PURCHASE OF GOODS; TICKET RESERVATION SERVICES RELATING TO ENTERTAINMENT; PRODUCTION PRESENTATIOI\I AI\ID DISTRIBUTION OF RADIO AND TELEVISION PROGRAIVIIV1ES, INTERACTIVE TELEVISION, INTERACTIVE GAIVIES, INTERACTIVE ENTERTAINMEI\IT AI\ID INTERACTIVE COMPETITIONS; PRODUCTIOI\I PRESENTATION AND DISTRIBUTION OF COMPETITIONS, CONTESTS, GAMES QUIZZES, STUDIO EI\lTERTAII\IMENT AND AUDIENCE PARTICIPATION EVEI\ITS; INTERACTIVE TELEVISIOI\I PROGRAIVIME SELECTION SERVICES FOR VIEWERS; PROVISION OF INTERACTIVE ENTERTAINMENT, 1\1 EWS, CULTURAL ACTIvrnES AND SPORT FOR TELEVISIOI\I VIEWERS; INTERACTIVE SERVICES FOR TELEVISIOI\I VIEWERS; VIEWII\IG GUIDE SERVICES; VIEWII\IG GUIDE SERVICES FACILITATING THE RECORDAL AND FIXED TERM REI\ITAL OF PROGRAMMES AND MOVIES; TELEVISIOI\I PROGRAIVIME RECORDING SERVICES AUTOMATICALLY II\IITIATED ON THE BASIS OF CUSTOMER VIEWING HABITS/PREFERENCES; VIDEO 01\1 DEMAI\ID AND NEAR VIDEO ON DEMAND SERVICES; PROVIDING MOVIES, VIDEOS AND TELEVISION PROGRAMMES TO VIEWERS ON DEMAND AND NEAR VIDEO ON DEMAND; SPORTING AND CULTURAL ACTIVrnES; BETTING, GAMING AND GAMBLING SERVICES; CREDIT BETTING, GAMING, GAMBLING, LOTTERY OR BOOKMAKING SERVICES; CREDIT CARD BETTING, GAMING, GAMBLING, LOTTERY OR BOOKMAKING SERVICES; ORGANIZING AND CONDUCnNG LOTTERlES; ELEcrRONIC BETTING, GAMING, GAMBLING, LOTTERY OR BOOKMAKING SERVICES PROVIDED BY MEANS OF THE INTERNET, OR VIA GLOBAL COMPUTER NETWORK, OR ON-LINE FROM A COMPUTER NETWORK DATABASE, OR VIA TELEPHONY INCLUDING TO MOBILE TELEPHONES, OR VIA A TELEVISION CHANNEL INCLUDING A TELEVISION CHANNEL DISTRlBUTED BY SATELLITE, TERRESTRlAL OR CABLE TELEVISION BROADCAST; PAY TO PLAY GAMES SERVICES; PEER TO PEER INTERACTIVE GAMES AND GAMING SERVICES; INTERACTIVE POKER GAMES AND GAMING INCLUDING SINGLE AND MULTI PLAYER GAMING FORMATS; PRESENTATION AND PRODUCTION OF POKER COMPETITIOI\IS, TOURNAMENTS, GAMES AND GAMING; ELECTRONIC PUBLISHING SERVICES; VIDEO TAPING AND FILMING SERVICES; II\IFORMATION AI\ID ADVISORY SERVICES RELATING TO THE AFORESAID SERVICES; NEWS, CURRENT AFFAIRS AND EDUCATIOI\IAL INFORMATIOJN SERVICES; II\IFORMATION AND ADVISORY SERVICES RELATII\IG TO TELEVISION AND RADIO PROGRAMMES, TO EDUCATION, RECREATION, ENTERTAII\IMENT, MUSIC AI\ID TO SPORT; INFORMATION AND ADVISORY SERVICES RELATII\IG TO TELEVISION AND RADIO PROGRAMMES, TO EDUCATION, RECREATION, ENTERTAII\IMEI\IT, MUSIC AND TO SPORT, PROVIDED OI\l-LII\lE FROM A COIVIPUTER DATABASE OR THE INTERNET OR TO 1V10BILE TELEPHONES; FACTUAL INFORMATION SERVICES RELATII\IG TO TELEVISION AND RADIO PROGRAMMES, NEWS AND SPORT; INSTRUCTION SERVICES; TRAINING SERVICES; LEISURE SERVICES~ 2 ADVISORY SERVICES RELATING TO ENTERTAINIVIENT; ARRANGING CONFERENCES, SEMINARS, SYIVIPOSIUMS OR WORKSHOPS; ARRANGING EXHIBmONS OR FESTIVALS; BOOKING AGENCY SERVICES; CINEMA SERVICES; CINEMA STUDIO SERVICES; DISTRIBUTION OF RADIO PROGRAMIVIES, TELEVISION PROGRAMMES, FILMS, MOTION PICTURES, PRE RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; PRODUCTION OF RADIO PROGRAMIVIES, TELEVISION PROGRAIVII"1ES, FILMS, MOTION PIcrURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; EDITlNG OF RADIO PROGRAMMES, TELEVISION PROGRAMMES, FILMS, MOTION PICTURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; HIRE; UCENSING; LEASING OR RENTAL OF RADIO PROGRAMMES, TELEVISION PROGRAMMES, FILMS, MOTION PIcrURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; MARKETING OF RADIO PROGRAMMES, TELEVISION PROGRAMES, FILMS, MOTION PICTURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; EXHIBmON OF RADIO PROGRAMMES, TELEVISION PROGRAMMES, FILMS, MOTION PICTURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; TRANSMISSION OF RADIO PROGRAMMES, TELEVISION PROGRAMMES, FILMS, MOTION PICTURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; AMUSEMENT PARK SERVICES wrn- A THEME OF FILMS, RADIO OR TELEVISION PRODUCTIONS; AMUSEIVIENT PARK SERVICES WITH A THEIVIE OF FILM, RADIO OR TELEVISION PRODUCTIONS; ORGAI\lIZATION AND MANAGEI"1EI\lT OF AMUSEIVIENT PARKS AND THEME PARKS; ORGANIZATION OF ENTERTAINIVIENT; PREPARATION OF RADIO PROGRAMIVIES; TELEVISION PROGRAIVIIVIES, FILI"1S, PRE-RECORDED VIDEO TAPES, DVDS, AUDIO AND/OR VISUAL l"1ATERIAL, PRE-RECORDED VIDEO CASETTES, PRE-RECORDED VIDEO DISCS OR MOTION PICTURES FOR DISTRIBUTION FOR TRANSMISSION OR BROADCAST BY ANY IVIEANS; PROVISION OF RADIO PROGRAIVIMES, TELEVISION PROGRAIVIIVIES, FILI"1S, AUDIO AND/OR VISUAL MATERIAL OR MOTION PICTURES ONLINE (NOT DOWNLOADABLE); PUBUCATION AND DISTR[BUTION OF PRINTED IVIEDIA AND RECORDINGS; DIGITAL IMAGING SERVICES; DUBBING; VIDEO TAPE EDmNGW ENTERTAINIVIENT; FILI"1 PRODUCTION; RENTAL OF MOTION PIcrURES; 1/ ~ 3 MOVIE STUDIOS; PROVIDING MOVIE THEATRES FACILmES; PRODUCTION OF SHOWS; VIDEO FILM TAPE PRODUCTION; RENTAL OF AUDIO EQUIPMENT; RENTAL OF LIGHTING APPARATUS FOR THEATRICAL SETS OR TELEVISION STUDIO; RENTAL OF MOTION PICTURES; RENTAL OF MOVIE PROTECTORS AND ACCESSORIES; RENTAL OF RADIO EQUIPMENT; RENTAL OF TELEVISIONS AND TELEVISION EQUIPMENT; RENTAL OF SPORTS EQUIPMENT; RENTAL OF VIDEO CAfIIIERAS; RENTAL OF VIDEO TAPES; RENTAL OF VIDEO RECORDERS; THEATRE PRODUCTIONS; MOVIE STUDIO SERVICES; ORGANIZING OR HOSTING AWARDS CEREMONIES; PRESENTATION OF FILMS; PRODUCTION OF SPECIAL EFFECTS FOR FILI"IS; RECORDING STUDIO SERVICES; ADVISING OR PROVIDING INFORMATION IN RELATION TO THE FOREGOING", which application was filed on June 22, 2007 by respondent-applicant British Sky Broadcasting PLC, a corporation organized under the laws of the United Kingdom with business address at Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom. The grounds for opposition are as follows: 1. Opposer is the first entity to use and register "SKY CABLE" and its variations in the Philippines. 2. As the registered owner of the trademark "SKY CABLE" and its variations, Opposer has exclusive right to prevent others from using a mark identical or confusingly similar to "SKY" and its variations under Sec. 147.1 of the Intellectual Property Code (or "IP Code''). 3. "SKY" is confusingly similar to "SKY CABLE" and its variations. Thus, its registration must be denied under Sec. 123.1(d)2 of the IP Code. 4. Opposer's "SKY CABLE" and its variations are already identified in the public mind as the mark of Opposer. Therefore, whether it is registered or not, "SKY CABLE" and its variations are entitled to protection under Sec. 168.13 of the IP Code as against the confusingly similar mark "SKY". 5. "SKY CABLE" is also the corporate name of Opposer and must be protected as against "SKY" under Sec.165 of the IP Code. 6. The "SKY" trademark is not an internationally well-known mark under Sec.123.1(e)5 of the IP Code and under Rule 102 of the Rulesfr and Regulations on Trademarks." ( / ~ 4 Opposer relies on the following facts in support of its opposition: Nature and history of Opposer's business; famous status of its trademark ''SKY CABLE" and its variations. "1. Opposer is one of the major player in the Philippine cable industry. It commenced its commercial operations in Metro Manila on 26 January 1992. By the end of the same year, approxtrnatelv 8,500 miles of cables were used to service 20,000 subscribers. Thereafter, Opposer expanded its operations with the acquisition of provincial cable operators. Currently, Opposer has a subscriber base of approximately 200,000 nationwide for the postpaid service alone. 2. Opposer offers quality information and entertainment programs best suited for the Filipino families. Aside from the regular cable channels, Opposer provides exclusive Filipino channels such as Cinema One, AI\JC, DZrvllVl Teledyaryo, to name a few. By the start of 2008, Opposer introduced several brand new channels that offer premium programming, namely, Balls, AXN Beyond, KidsCo, Maxxx Channel, Velvet, and Asian Food Channel. 3. In view of the increasing demand for high-speed internet service, Opposer decided to offer an instant internet connection to its subscribers by using the same cable lines. Opposer's internet service delivers faster access than the ordinary dial-up connections. 4. In 2007, after fifteen (15) years of pioneering the local cable industry, Opposer introduced another big innovation known as DigiBox to transform the television viewing habits of Filipinos. The DigiBox is a device that gives subscribers expanded control over their television watching experience. The device lets audiences sign up for more channels and allows the Opposer to send customized subscriber announcements. Another interesting feature of this gadget is the password guarded channel-lock feature which gives the parents the opportunity to control the programs that their children can watch. The DigiBox likewise addresses the problem of cable theft by encrypting the cable signal, thereby preventing illegal tapping into the opposer's~ 5 network. Opposer plans to rollout 40,000 units of DigiBox in 2008. To date, Opposer has issued approximately 65,000 units in Metro Manila and Cebu, 5. Opposer, in its earnest desire to offer cable to every Filipino home, launched the prepaid cable service. Subscribers can access the channels provided by the Opposer simply by reloading their account using prepaid cards. In view of the considerable growth in the number of subscribers when the prepaid service was offered in the market, Opposer aims to increase the coverage of the prepaid service to about 50% of its franchise area in Metro Manila over the next two (2) years. 6. Today, all consumers are used to seeing the name "SKY CABLE" in bold capital letters. It may appear in different sizes but the basic shape of the eight capitalized letters is easily recognizable whenever we encounter it. Fame and notoriety of ''SKY CABLE" trademark and its variations arising from extensive use and advertising and from its overwhelming patronage. 7. Opposer has invested enormous resources in advertising and popularizing in the Philippines the "SKY CABLE" trademark, its variations such as "SKYCABLE FUN CLUB", "SKYCABLE SEASON PASS", "I.WOMAN SKYCABLE'S EXCLUSIVE WOMEN'S CLUB AND DEVICE", "SKYCABLE GOLD & TRIANGLE DESIGN", "SKYCABLE PLATINUM & TRIANGLE DESIGN", "SKYCABLE PREPAID & TRIANGLE DESIGN", "SKYCABLE SILVER & TRIANGLE DESIGN", "SKYBROADBAI\lD & DEVICE", "SKYPHONE & DEVICE" and "SKYVOICE & DEVICE". On an average basis, Opposer spends approximately PhP 27,429,113.60 (U.S. $ 609,535) in promotion and advertising costs annually. The following are representative samples of promotional materials published in Philippine newspapers, posted on websites, and distributed to subscribers: Title/Description of Evidence of Use of Document "Top-rating suspense thrillers on Sky Cable", Philippine Star, 30 June 2008 issue "Learning through Sky Cable", Philippine Star, 29 June 2008 6 • "Pushing the boundaries of learning", l"1anila Standard Today, 28 June 2008 issue "All In, All Sava on Sky Cable", Manila Standard Today, 27 June 2008 issue "Sky Cable is Action-Packed This July", Click the City Publication, 30 June 2008, htto://auides.c1ickthecitv.com/tv170=3244 "Sky Cable packs more new shows this year", Malaya Online, 07 January 2008. www.malava.com.ohlian07/ente2.htm "Refer a friend to Sky Cable and shop for free" leaflet "Loyal Advantage x 3" leaflet 'Open your eyes to Sky cable" flyer "Sky Cable the Biggest Show on Air"19yer "Happy Cable Holiday Weekly Gift Giveaway" flyer "Sky Cable Pick-a-Card, Get-a-Gift Pack" flyer "The Best Cable Programs flyer" "Araw-araw Pasko" flyer "Holiday Cash Bash" flyer "Sky Cable's Biqqest Shopping Spree on Air" flyer "Sky Cable's Absolute freebies" flyer "Sky Cable's Exclusive Kiddie Club" flyer "The Biggest Treat 'n Trips on Air" flyer "Sky Cable Pay on Time, Win Biq Time" leaflet "Going in Circle" payment center flyer "Learning Activity" flyer "Make the Biq Move" flyer 8. More information about the Opposer, its products and promotional activities are available at its main website: http://www.skycable.com. The said website serves as a powerful advertising medium for the trademark "SKY CABLE" and its variations since it is accessible at all times to all current and potential subscribers. 9. Opposer's trademark "SKY CABLE" and its variations are well-known in the Philippines because of Opposer's aggressive sales, promotions and advertisements, and practically unchallenged use. 10. In fact, Opposer's prepaid cards are being sold at www.ebay.ph. a Philippine-based auction sale, which functions as additional advertising venue for Opposer's trademarks. At www.ebay.ph. individuals list item for sale on the site, as well as initial purchase price. Thereafter, the purchasing public posts bids on the items, and at the end of the bidding period the highest bidder is awarded the item subject to the payment of the bid. Some items sell for over the original retail value. Review of search results of a search for SKYCABLE on www.ebay.ph on 11 JUI~ 2008 revealed 2 listings. # / ~ 7 • • Opposer is first to use and register ''SKYCABLE'' and its variations in the Philippines 11.0pposer owns a family of trademarks built around the well-known "SKYCABLE" trademark in the Philippines. The details of these trademark registrations are set forth below. Opposer can trace its ownership and its right to use the said trademarks several years prior to the filing by Respondent-applicant of its subject application on 22 June 2007. Trademark Class Registration No. Registration Date SKY CABLE 9 4-1991-078983 21 May 2004 SKY CABLE FUN 9 4-2007-002070 22 October 2007 CLUB SKY CABLE 9 4-2007-002069 22 October 2007 SEASON PASS 1. WOMAN SKY 38 4-2001-003067 25 December 2005 CABLE'S EXCLUSIVE WOMAN'S CLUB AND DEVICE 12.Opposer has filed several trademark applications which are variations of the trademark "SKYCABLE". The details of these applications are set forth below. Trademark Class Application No. Application Date SKYCABLE GOLD 9 4-2006-012861 28 November 2006 &TRIANGLE DESIGN SKYCABLE 9 4-2006-012859 28 November 2006 PLATINUM & TRIANGLE DESIGN SKYCABLE 9 4-2006-012858 28 November 2006 PREPAID & TRIANGLE 11. 7~ 8 DESIGN SKYCABLE SILVER 9 4-2006-12860 28 November 2006 &TRIANGLE DESIGN SKYBROADBAI\lD 38 4-2008-004046 09 ApriI 2008 & DEVICE SKYPHONE & 38 4-2008-004045 09 April 2008 DEVICE SKYVOICE & 38 4-2008-004044 09 April 2008 DEVICE Legal protection for Opposer's trademarks ''SKYCABLE'' and its variations. 13. Opposer has been using "SKYCABLE" as a trademark and trade name or company name from the inception of its business. To date, it is continuously using the same as its company name in all its business dealings not only in the Philippines, but also in all countries around the world where it has business dealings or transactions. As a trade name, "SKY CABLE" is protected under Section 165 of the IP Code. Hence, the registration and use of "SKY" in the name of Respondent-Applicant will necessarily violate Opposer's legal rights to its trade name with the Respondent-Applicant unfairly profiting from the high reputation and goodwill generated by the overwhelming popularity of "SKY CABLE" in the Philippines. 14. The subject trademark "SKY" is confusingly similar to Opposer's trademarks "SKY CABLE" and its variations such as "SKYCABLE FUN CLUB", "SKYCABLE SEASON PASS", "I.WOMAN SKYCABLE'S EXCLUSNE WOMEN'S CLUB AND DEVICE", "SKYCABLE GOLD & TRIANGLE DESIGN", "SKYCABLE PLAT[NUM & TRIANGLE DESIGN", "SKYCABLE PREPAID & TRIANGLE DESIGN", "SKYCABLE SILVER & TRIANGLE DESIGN", "SKYBROADBAND & DEVICE", "SKYPHONE & DEVICE" and "SKYVOICE & DEVICE" since the former is used in connection with goods closely related and/or goods falling under the same category in which Opposer uses and licenses its "SKY CABLE" trademark and its variations such that if allowed to proceed registration, "SKY" will likely deceive or cause confusion, in contraventio~ of Sec.123.1(d) of the IP Code. , / ~ 9 15. Opposer's "SKY CABLE" trademark and its variations are well-known in the Philippines and the registration and use of "SKY" by Respondent Applicant will falsely indicate a connection between the Opposer's and 16. Respondent-Applicant's goods thereby causing damage to Opposer in terms of, among others, the whittling away of Opposer's goodwill, the dilution of the rights of Opposer to its trademarks, and dilution of the distinctiveness of Opposer's trademarks -all in contravention of Sec.123.1(g) of the IP Code. Opposer prays, thus, that Respondent-applicant's application be denied. On December 19, 2008, respondent-applicant filed its VERIFIED ANSWER. It preliminarily made the following allegations: "1. Respondent-Applicant is the operator of the leading pay television, satellite, and web broadcasting in the United Kingdom and Republic of Ireland. It provides its satellite and web broadcasting services worldwide. 2. On 22 June 2007, Respondent-Applicant filed an application for the registration of its "SKY" trademark with the Bureau of Trademarks. 3. Respondent-Applicant has been using the "SKY" trademark to designate anyone or more of its companies as well as its digital satellite and web services and channels since 1984 in the United Kingdom and worldwide. A copy of the Assignment Certificate issued by the Trademark Registry of the United Kingdom Patent Office showlnq Respondent-Applicant's registration of the trademark "SKY" and its variations is attached as Annex "2". 4. Respondent-Applicant owns at least 245 trademark and community trademark applications/registrations in various countries such as United Kingdom, Republic of Ireland, European Union Members: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden; and the Philippines. Attached as Annex "3-1" is a copy of the relevant Notice of Transfer of listed Community trademarks belonging to Respondent-Applicant with th~~ Office for Harmonization in the Internal Market for the European Uni0l} I ~ 10 Annex "3-2" is a listing of tile marks being referred to in Annexes "2" and "3-1". Likewise attached as Annex "4" is a copy of a certified trademark search conducted by Jennifer L. Ortiz on 04 December 2008, showing Respondent-Applicant's issuance of a Certificate of Registration under the Supplemental Register of the defunct Bureau of patent, Trademark and Technology Transfer (BPTTT) on 06 March 1991. Annex "4" shows that Respondent-Applicant's predecessor, Sky Television Public Limited Company, first applied for registration of the "SKY" mark on 03 March 1988, the date which can be considered as proof of its first use in the Philippines in the absence of testimonial evidence as put forth by the Supreme Court ruling in Chung Te vs. Ng Kin Kian Giab. Respondent-applicant then makes the following denials: 6. Respondent-Applicant denies paragraphs a to d of the Opposition. Opposer's registration of "SKY CABLE" and its variation cannot ripen into ownership or grant Opposer the right to enjoy its protection as such registration was obtained contrary to the provisions of RA 166 and RA 8293, e.g., obtained in bad faith, neither can such registration be the basis for the denial of Respondent-Applicant's application as Respondent-Applicant is in fact the prior adopter, user, and owner of the internationally well-known trademark "SKY" worldwide, including the Philippines. 7. Respondent-Applicant denies paraqraphs 1, 2, and 6 to 10 of the Opposition for lack of sufficient knowledge to form a belief as to the truth thereof. 8. Respondent-Applicant denies paragraph 11 of the Opposition for being an unsubstantiated generalization by the Opposer. 9. Respondent-Applicant denies paragraphs 12 to 15 of the Opposition for lack of sufficient knowledge to form a belief as to the truth thereof. 10. Respondent-Applicant denies paragraphs 16 to 17 of the Opposition as Respondent-Applicant has used the trademark "SKY" in the Philippines as early as its registration of the trademark with the BPTTI~ on 1 March 1988. / / ~ 11 11. Respondent-Applicant denies paragraph 18 to 20 of the Opposition. Opposer is not entitle to legal protection of the trademark "SKY CABLE" as it had registered contrary to law, e.g., in bad faith. Thus, Opposer's registration of "SKY CABLE" should not be a bar to Respondent Applicant's registration of its internationally well-known trademark "SKY" and its variations. Respondent-applicant thereafter makes the following defenses: Respondent-Applicant is the prior adopter, user, and owner of the trademark "SKY" world-wide, including the Philippines. 12. Respondent-Applicant is the prior adopter, user, and owner of the trademark "SKY" world-wide, including the Philippines. Attached as Annex "5" is the Witness Statement of Simon Robert Maclennan, the Solicitor of Respondent-Applicant in charge of its Intellectual Property, which extensively discusses, with exhibits, Respondent-Applicant's world-wide adoption, use, and ownership of the "SKY" trademark and its variations. It details, among others, how Respondent-Applicant has been using its "SKY" logo since 1984 for external communications, its use of the word "SKY" as the distinctive element of its corporate identities, as discussed below, and its ownership of at least 245 trademark applications and registrations in various countries around the world. 13. Respondent-Applicant first started broadcasting a commercial television service called "SKY TELEVISION" on 26 April 1982.2 The "SKY" mark was thereafter used as part of Respondent-Applicant's company name on 19 August 1988 when it changed its corporate name to its predecessor company, Sky Television Public Limited Company. Attached as Annex "6" is a copy of the Certificate of Incorporation on Change of Name of Sky Television Public Limited Company, which may be found at page 5 of Exhibit 1 of Annex "5". Since then, Respondent Applicant has been consistently using the "SKY" mark as part of its corporate identity and trade name, which is accorded protection in all signatory countries under Article 8 of the Paris Convention for the~ 2 Annex "5", par.3.8. / I O--v 12 Protection of Industrial Property (the Paris Convention), without need for filing or reqlstration.' 14. On 05 February 1989, Respondent-Applicant's "SKY" Television Channel began broadcasting over the Astra 1-A Satellite, the first of the Astra series of geostationary communication satellites, which transmit approximately 2,300 analogue and digital television and radio channels via 242 transponders to 109 million households across Europe. These signals, particularly in their digital form as introduced in 1997 with the launch of the Astra 2 series of satellites, can be received anywhere around the world through the earth's globally connected satellite systems. 4 15. The word "SKY" is the distinctive element of the corporate identities of Respondent-Applicant's companies, such as British Sky Broadcasting Ltd., British Sky Broadcasting Group PLC, and Sky Television Ltd., and is used by many people in the different countries where Respondent Applicant provides its services to designate anyone or more of such companies, as well as Respondent-Applicant's digital satellite services and its channels that are branded "SKY.'tS 16. Respondent-Applicant launched its premium movie and sports channels, "SKY MOVIES GOLD" and "SKY SPORTS GOLD", in 1991 and 1995, respectively." "SKY PREMIER," "SKY MOVIEMAX" "SKY CINEMA", and "SKY BOX OFRCE" were introduced and used in the UK in 1997.7 17.The first "SKY" website, www.sky.co.uk was launched in February 1996.8 A screenshot of the website as it was during launch is attached as part of Annex "5," Exhibit 28. Respondent-Applicant's website has since expanded to include its current primary commercial domains: www.sky.com, www.skysports.com, www.skynews.co.uk, www.sky.com/skynews/home www.skyone.co.uk, www.skymovies.com, and www.sky.com/showbiz, which have been live and available world-wide since March 2000, December 1998, June 2001, July 2001, August 2002, and August 2004, respectlve'y." Respondent~i~ ~ ~ 3 Article 8 of the Paris ConvenJion, as amended on 28 September 1979, states: "A trade name shal tl protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark." 4 Wikipedia.Org Article on Astra Satellites, located at http://en.wikipedia.orglwiki/S _ Astra. Last visited on 10 December 2008 . 5 Annex "5", Exhibit 1. 6 Annex "5", par 3.14. 7 Id. s Annex "5", par.5.1.1. 9 Annex "5," par.5.2.1 . 13 Applicant unveiled www.sky.com/hd. for its High Definition digital television service, on 14 July 2005.10 18. Since its initial launch, Respondent-Applicant's website has provided internet viewers anywhere in the world with web broadcasting services, including, among others, streaming news and features, articles, games, and e-commerce activities. Screenshots of the current website are attached as Annex "7". 19. On 12 October 1999, Respondent-Applicant launched and offered shopping services via its "SKY DIGIBOX" product, which offers subscribers satellite television transmissions in digital format, eight years before Opposer allegedly introduced its "DigiBox" product. Household subscribers of Respondent-Applicant's "SKY DIGIBOX" product reached up to 5,498,000 in the UK and Ireland on 30 September 2001.11 20. Respondent-Applicant has invested billions of British pounds in its "SKY" trademark since 1984. From 2005 to 2006, alone, Respondent Applicant spent £622 million, roughly PhP44.27 billion in current exchange rate, in marketing, advertising in the press, television, radio, cinema, posters and outdoor media, and promoting its business under the "SKY" trademark." Opposer registered the trademark ''SKY CABLE" contrary to law, e.g., in bad faith, and is not entitled to any protection thereof. Thus, registration of ''SKY CABLE" should not be a bar to registration of Respondent-Applicant's ''SKY'' trademark. 21. Opposer registered the trademark "SKY CABLE" contrary to the provisions of RA 166 and RA 8293, e.g., in bad faith, and is therefore not entitled to any protection thereof. Because of this, Opposer's registration of "SKY CABLE" should not be a bar to Respondent Applicant's registration of its trademark "SKY". 22. By itself, registration is not a mode of acquiring ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for registration of the same. Registration merely creates a prima facie presumption of the validity of the registration, of the registrant's ownership of the trademark and the exclusive right to the use thereof. Such presumption, just like the presumptive regularity in thlftl'" A1 .. 10 Ann ex "5 , " par. 7 ...'"'- 4 . (/\ft--- II Annex "5," par.3.26. 12 Annex "5," parA.7.l and 4.7.2. 14 performance of official functions, is rebuttable and must give way to evidence to the contrary." 23. In cases decided by the Bureau of Legal Affairs of the Intellectual Property Office (BLA-IPO) and upheld by the Supreme Court and Court of Appeals, evidence found to sufficiently rebut this presumption include prior use in trade or commerce," prior reqlstratlon," and extensive advertisement," even when done outside the Philippines. All of these factors can be found in Respondent-Applicant's case. 24. As earlier discussed, Respondent-Applicant has been using the "SKY" mark, "SKY LOGO" mark, and its variations for its corporate names, external communications, and broadcasting business since 1984, which is much earlier than Opposer's alleged first use of the "SKY CABLE" mark and its variations in 1991. Likewise, Respondent-Applicant has had a presence in the Philippines since at least 01 March 1988, when its earliest predecessor filed an application for registration of "SKY CHANNEL & DESIGN" with the BPTTT, and when Respondent-Applicant's website went live world-wide in 1996. In addition, Respondent-Applicant has heavily invested in the international marketing and promotion of its "SKY" trademark since its first use of this mark in 1984. 25. Opposer's registration and use of the "SKY CABLE" mark and its variations was obtained illegally and cannot ripen into ownership as Respondent-Applicant had already been the legal and beneficial owner of the "SKY" mark since 1984 for all its corporate names and affairs at the time Opposer sought its registration. The Supreme Court, in applying the pertinent provisions of RA 166, which were in effect at the time Opposer registered the "SKY CABLE" mark, stated in the Shangri-la case: UnderSection 2/ in order to register a trademark/ one must be the owner thereof and must have actually used the mark in commerce in the Philippines for 2 months prior to the application for registration. Since "ownership" of the trademark is required for registration, Section 2-A ofthe same law sets out to define how ~ /3 Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaji, G.R. No. L-19906, April 30, 1969, 27SCRA 1214; ChungTe v.NgKianGiab,G.R.No.L-23791 ,November23, 1966, 18 SCRA 747 14 Shangri-La International Hotel Management, Ltd. v. Developers Group ofCompanies. Inc., G.R. No. 159938, 31 March 2006. 15 Fredco Manufacturing Corporation v, Harvard University, CA-GR SP No. ]03394,24 October 2008. 16 Sehwani, Inc. vs. In-N-Out Burger, lnc., G.R. No. ]71053, ]5 October 2007. 15 one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of ownership but the provision went further by saying that the mark must not have been so appropriated by another. Additionally, it is significant to note that Section 2-A does not require that the actual use of a trademark must be within the Philippines. [emphasis supplied} 26. Clearly, Opposer's registrations of the "SKY CABLE" mark and its variations were illegally and fraudulently obtained and appropriated for broadcasting. This is particularly illustrated by its 2006 registration of the "SKY CABLE GOLD &TRIANGLE DESIGN" mark, which is very similar to Respondent-Applicant's "SKY MOVIES GOLD" and "SKY SPORTS GOLD" trademarks for its international broadcasting business, which Respondent Applicant has been using in the industry since 1991 and 1995. 27. Opposer's bad faith can further be illustrated by its use of the "Digibox" gadget and mark, which is very much similar to that of Respondent-Applicant's "SKY DIGIBOX" trademark, which Respondent Applicant has adopted and used since 1999, eight years before the introduction of the "Digibox" mark and product used by Opposer." Opposer's use of very similar or the same marks as Respondent-Applicant for the very same products in the very same service industry manifests Opposer's intent to take advantage of the goodwill already established by Respondent-Applicant for such products in the industry. 28. The Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the World Intellectual Property Organization (WIPO), provides criteria on determining the bad faith registration of an internationally well-known mark. It states:18 In determining bad faith for the purposes of this paragraph, the competent authority shall take into consideration whether the person who obtained the registration of or used the mark which is in conflict with a well-known mark had, at the time when the mark was used or registered, or the application for its registration was filed, knowledge of, or reason to know of, th~ well-known mark. [emphasis supplied} ~ 17 Annex "5", Exhibit 19. 18 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, 7 October 1999, Article 4 (5) (c). 16 • 29. It is quite clear from the foregoing that the marks "SKY", "GOLD", and "Digibox" were illegally adopted by Opposer from Respondent-Applicant's internationally well-known marks for Opposer's cable television broadcasting goods and services. Opposer cannot claim to be unaware of the existence of Respondent-Applicant's "SKY" mark and its variations due to their extensive use, advertising , promotions, and registrations for over twenty (20) years, as seen in Annex "5" and its 69 exhibits. Likewise, Opposer cannot claim to be ignorant of Respondent-Applicant's mark, given the fact that they are in exactly the same business, and given the advancements in communication technology, which would make obscurity of Respondent-Applicant's "SKY" mark impossible. 30. Thus, Opposer's prior registration of the mark "SKY CABLE" cannot be a bar to Respondent-Applicant's registration of its "SKY" trademark, as the former did not gain an absolute right to the mark, having registered such in bad faith. As stated in the Shangri-La case: One who has imitated the trademark of another cannot bring an action for infringement, particularly against the true owner of the mark, because he would be coming to court with unclean hands. Priority is of no avail to the bad faith plaintiff. Goodfaith is required in order to ensure that a second user may not merely take advantage ofthe goodwill establishedby the true owner. Respondent-Applicant's "SKY" trademark is an internationally well-known mark and is subject to protection under the Paris Convention, to which the Philippines is a signatory. 31. Opposer's claim of an exclusive right to prevent others from using a mark identical or confusingly similar to "SKY CABLE" and its variations is also contradicted by the fact that Respondent-Applicant's "SKY" trademark is an internationally well-known mark. 32. Rule 102 of the Rules and Regulations on Trademarks'? provides for guidelines in determining whether or not a mark is well-known. The fOIiOWin~{/-t'-" criteria or any combination thereof may be taken into account: 19 Rules and Regulations on Trademarks, Service marks, Trade Names and Marked or Stamped Containers, Intellectual Property Office, 29 October 1998, as amended by Office Order No. 39 (2002), 17 • • (a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; (b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies; (c) the degree of the inherent or acquired distinction of the mark; (d) the quality-image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world; (f) the exclusivity of registration attained by the mark in the world; (g) the extent to which the mark has been used in the world; (h) the exclusivity of use attained by the mark in the world; (i) the commercial value attributed to the mark in the world; (j) the record of successful protection of the rights in the mark; (k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and, (I) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his mark is1fr-" a well-known mark. / I ~ ' Order No. 40 (2002) , Office Order No. 20 (2001), Office Order No. 08 (2000), and Office Order No. 17 (1998) . 18 .. .. 33. The "SKY" marks owned by Respondent-Applicant are internationally well-known trademarks as evidenced by its over 245 trademark applications and registrations in various countries, including the Philippines; its extensive advertising and promotion in such countries; as well as its numerous websites which are globally accessible through the internet. 20 34. As an internationally well-known trademark, Respondent-Applicant's "SKY" mark is entitled to protection under Article 6bis of the Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, to which the Philippines is a signatory. Member-countries of the Paris Convention covenant" x x x to refuse or to cancel the registration of a trademark which constitutes a reproduction, imitation or translation, liable to create confusion, of a mark considered by competent authority of the country of registration or use to be well-known in that country as being already the mark of a person entitled to the benefits of the present convention and used for identical or similar goods." 35. Under a Memorandum dated 25 October 1983, issued by then Minister of Trade Roberto V. Ongpin, the Director of Patents was directed to implement measures necessary to effect compliance with the Philippines' obligations under the Paris Convention. These measures tndude:" All pending applications for Philippine registration of signature and other world famous trademarks filed by applicants other than their original owners or users shall be rejected forthwith. Where such applicants have already obtained registration contrary to the above-mentioned Paris Convention and/or Philippine law, they shall be directed to surrender their Certificates of Registration to the Philippine Patent Office for immediate cancellation proceedings 36. In Sehwani, Inc. vs. In-N-Out Burger, Inc.,22 it has been discussed how the scope of protection afforded by Article 6bis of the Paris Convention has also been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, wherein the World Intellectual Property Organization (WIPO) General Assembly and the Paris Union agreed to a nonbinding recommendation that a well-known mark should be protected in a country even if the mark is neither registered nor used in~ that country. FI ~ 20 See Annex "5" and Exhibits 1 to 69. 2 1 Par. 5. 22 G .R . No. 171053, 15 October 2007. 19 37. In the same case, the Supreme Court declared that the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks forms part of the law of the land and thus declared that IN-N-OUT Burger Inc., a foreign corporation not doing business in the Philippines had the right to protect its trade name and trademarks registered in the United States, even if such had not been registered in the Philippines. Likewise, in the case of Fredco Manufacturing Corp. v. Harvard." which was upheld by the Court of Appeals, the BLA-IPO found that Fredco could not appropriate the Harvard name or insignia for its denim products in the Philippines as Harvard had established its brand globally, even if it had not formally staked its claim in Southeast Asia. Thus, even assuming Respondent-Applicant had no prior use or registration of its well-known marks in the Philippines, such would not preclude the protections granted to its well-known marks by the Paris Convention. 38. Under the 1999 Joint Recommendation, among the factors to be considered in determining whether a mark is a "well-known" mark in a Member State is the duration, extent, and geographical area of any use of the mark." 39. Respondent-Applicant's mark "SKY" thus falls under the category of a well-known mark under this criterion. Firstly, the extensive promotion of its "SKY" mark is considered to constitute extensive use, which is a separate criterion for determining whether a mark is well-known. In the Sehwani case, the BLA-IPO found exhibits of IN-N-OUT Burger Inc.'s product promotions in foreign magazines, newspapers, and screenshots of its internet website (www.innout.com). similar to what Respondent-Applicant has attached to this verified Answer, substantial evidence to support the foreign corporation's mark status as a well-known mark. 40. Secondly, also in the Sehwani case, the BLA-IPO considered IN-I\I-OUT Burger Inc.'s United States trademark registrations as substantial evidence to support its mark's well-known status, even though it had not registered the "IN-N-OUT" mark in the Philippines. As shown above, Respondent-Applicant has at least 245 trademark and community trademark applications and registrations in various countries around the world, in addition to its registration of the "SKY" mark in the Philippines with the BPTIT prior tft Opponent's registration of the "SKY CABLE" mark. ~ 23 CA-GR SP No. 103394, 24 October 2008 . 24 Joint recommendation, Article 2.1. (b) (2). 20 ... 41. The 1999 Joint Recommendation also considers as well-known, marks that are determined to be known in at least one relevant sector of the public in a Member State.25 Thus, it is possible for Member States to protect marks which are known only by a relevant sector of the public in a single Member State. The Joint Recommendation considers such relevant sectors of the public for this purpose to include persons involved in channels of distribution of the type of goods and/or services to which the mark appliesr" and business circles dealing with the type of goods and/or services to which the mark applies." The mere fact that Respondent Applicant is well-known in the satellite, cable, and internet broadcasting industry, just as IN-N-OLIT Inc. is well-known in the international fast-food industry, makes it subject to all the protections of an internationally well-known mark. 42. As Respondent-Applicant's marks enjoy all the protections of an internationally well-known mark, Opposer cannot rightfully prevent Respondent-Applicant from seeking the registration of its internationally well known mark "SKY" and its variations in the Philippines. This is particularly so as Opposer's registration of the "SKY CABLE" mark and its variations, contrary to law, e.g., in bad faith, prevents it from obtaining any right to claim exclusivity in such marks, as previously discussed. 43. The 1999 Joint Recommendation provides that the owner of a well known mark shall be entitled to request the prohibition, by decision of competent authority, of the use of a mark which is in conflict with the well known mark." It prescribes no time limit for requesting the prohibition of the use of a mark which is in conflict with an internationally well-known mark if the conflicting mark as registered in bad faith. 29 As the Philippines is bound by this Joint Recommendation and the Paris Convention, this Honorable Office is duty bound to protect Respondent-Applicant's internationally well-known mark "SKY" and its variations, by canceling and invalidating Opposer's registration of its "SKY CABLE" mark and its variations, which have been registered in bad faith and contrary to law. On January 05,2009, opposer filed a REPLY alleging the following:f'()-t<./ 25 Joint Recommendation, Article 2(2) (c ). 26 Joint Recommendation, Article 2(2) (a) (ii). 27 Joint Recommendation, Article 2(2) (a) (iii) 28 Joint Recommendation, Article 4(4). 29 Joint Recommendation , Article 4. 21 .. "1. On 19 December 2008, Opposer received a copy of the Verified Answer filed by Respondent-Applicant British Sky Broadcasting Group PLC C'Respondent- Applicant'') dated 16 December 2008. 2. In its Verified Answer, Respondent-Applicant argued that it is the prior adopter, user, and owner of the trademark "SKY" world-wide, including the Philippines. It cited its trademark registrations and applications in various countries as well as the registration of the "SKY" mark in the Philippines. 3. Respondent-Applicant averred that it has applied for registration in the Philippines of the "SKY" mark on 01 March 1988, the date which it claims must be considered as proof of its first use in the Philippines, citing the Supreme Court ruling in Chung Te v. Ng Kian Giab (G.R. No. L-23791, 23 November 1966). 4. However, a careful reading of the above-identified case reveals that the Supreme Court relied on other substantial evidence (paper labels, box containers, certificate of membership, sample labels, among others) to establish that the applicant was the prior user of the subject trademark, and not on the date of the filing of the application for registration. Hence, Respondent-Applicant failed to establish commercial use in the Philippines. 5. Moreover, in the case of Shangri-La International Hotel Management, Ltd V. Developers Group of Companies, Inc. (486 SCRA 405), the Supreme Court held that the applicant must prove actual use in the Philippines of the trademark sought to be registered under Republic Act No. 166. Thus: While the present law on trademarks has dispensed with the reaulrement ofprior actual use at the time ofregistration, the law in force at the time of registration must be applied, and thereunder it was held that as a condition precedent to registration oftrademark, trade name or service mark, the same must have been in actual use in the Philippines before the filing of the application for registration. Trademark is a creation of use and therefore actual use is a pre-requisite to exclusive ownership and its registration with the Philippine Patent Office is a mere administrative confirmation ofthe existence ofsuch right By itself, registration is not a mode of acquiring ownership. When the applicant is not the owner ofthe trademark being applied for, he has no right to apply for registration of the same. Registration merely creates a prima facie presumption of the validity of the registration, of the registrant's ownership of the trademark and o~ the exclusive right to the use thereof. Suchpresumption, just like (I ~ 22 the presumptive regularity in the performance ofofficial functions, is rebuttable and must give way to evidence to the contrary. Here, respondent's own witness, Ramon Syhunliong, testified that a jeepney signboard artist allegedly commissioned to create the mark and logo submitted his designs only in December 1982. This was two-and-a-halfmonths after the filing ofthe respondent's trademark application on October 18, 1982 with the BPTTT. It was also only in December 1982 when the respondent's restaurant was opened for business. Respondent cannot now claim before the Court that the certificate of registration itself is proof that the two-month prior use requirement was complied with, what with the fact that its very own witness testified otherwise in the trial court. And because at the time (October 18, 1982) the respondent filed its application for trademark registration ofthe ''Shangri-La'' mark and ''S''logo, respondent was not using these in the Philippines commercially, the registration is void. 6. Furthermore, even assuming arguendo that Respondent-Applicant actually used the "SKY" mark in the Philippines commercially, it nevertheless cannot claim any right over the registration of the said mark on 03 June 1991 per Annex 4 of its Answer in as much as the status of the registered mark is reported as cancelled as appearing on the face of the said document. 7. Respondent-Applicant also pointed out that its "SKY" trademark is an internationally well-known mark which makes it is subject to protection under The Convention of Paris for the Protection of Industrial Property C'Paris Convention''). It cited Article 6bis of Paris Convention in support of this argument. 8. Article 6bis of the Paris Convention provides: The countries of the Union undertake, ex officio legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits ofthis Convention and used for identical or similar gOOd~ These provisions shallalso apply when the essential partofthe , I~ 23 mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. 9. In interpreting the above-mentioned provision, the Supreme Court held in Sehwani, Incorporated and/or Benita's Frites, Inc. v. In-N-Out Burger, Inc. (G.R. No. 171053, 15 October 2007) that a competent authority of the country of registration must determine whether a trademark is well-known, to wit: Article 6bis which governs the protection of well-known trademarks, is a self-executing provision and does not require legislative enactment to give it effed in the member country. It may be applied diredly by the tribunals and officials of each member country by the mere publication or proclamation ofthe Convention, after its ratification according to the public law of each state and the order for its execution. The essential requirement under this Article is that the trademark to be protected must be "well-known" in the country where proteaion is sought. The power to determine whether a trademark is well-known lies in the "competent authority of the country of registration or use." This competent authority would be either the registering authority if it has the power to decide this, or the courts of the country in question if the issue comes before a court. The question of whether or not respondent's trademarks are considered "well-known" is tectus! in nature, involving as it does the appreciation of evidence adduced before the BLA-IPO. The settled rule is that the tectue! findings of quasi-judicial agencies, like the IPO, which have acquired expertise because their jurisdidion is confined to specific matters, are generally accorded not only respect, but, at times, even finality ifsuch findings are supported bysubstantial evidence. 10. In its Verified Answer, Respondent-Applicant has not presented any finding by a competent authority in the Philippines that the mark "SKY" is well known internationally and in the Philippines. 11. Moreover, the Respondent-Applicant miserably fell short in complying with the quldellnes set in Rule 102 of the Rules and Regulations on Trademarks in determining whether or not a mark is well known. Contrary to the allegations made by the Respondent-Applicant, its two hundred forty five (245) trademark registrations and applications cannot be an indication of its well known status since a review of its Exhibit 68 reveals that the registered trademarks "SKY"and its variations are mostly in the United Kingdom therelf'{,u.L/ 24 limiting the duration, extent, and geographical area of the use and promotion of the mark. 12. Finally, Respondent-Applicant argued that the registration of Opposer's "SKY CABLE" is contrary to law, i.e., in bad faith, which consequently does not entitle it to any protection. 13. However, the use and registration of the marks "SKY CABLE" and its variations were done by Opposer in good faith since it had no notice of the existence of the Respondent-Applicant and its trademarks. Said good faith can be attributed to the fact that the use and promotions of Respondent Applicant's trademarks are mostly confined in the United Kingdom. Also, as previously mentioned, the registration of the "SKY" mark in the Philippines cannot be given any value in view of the fact that it has already been cancelled; accordingly, Respondent-Applicant cannot claim any right over the same. 14. Opposer reserves its right to file a Supplemental Reply in view of the long holiday vacation. On January 06, 2009, respondent-applicant filed a SUPPLEMENT TO VERIFIED ANSWER. Considering that this is not allowed under Office Order No. 79 Series Of 2005, this Bureau shall consider this as a superfluity that shall not be considered in the disposition of this case. Preliminary conference ensued on February 12, 2009. Thereafter, respondent-applicant filed its POSITION PAPER on March 20, 2009 while opposer filed its POSITION PAPER on March 30, 2009. The issues to be resolved are as follows: 1. Whether respondent-applicant's mark SKY is confusingly similar to opposer's marks SKY CABLE; and 2. Whether respondent-applicant is entitled to the registration of the mark "SKY ", and 3. Whether respondent-applicant's SKY is an internationallY~ J / well-known mark. IJ c-» 25 Respondent-applicant's mark is depicted below: SKY "SKY" Meanwhile, opposer's marks are depicted below: "SKYCABLE" SKYCABLE FUNCLUS "SKYCABLE FUN CLUB" • "!.WOMAN SKYCABLE'S EXCLUSIVE WOMEN'S CLUB AND DEVICE"r~ 26 SKYCABLE SEASON PASS "SKYCABLE SEASON PASS" "SKYCABLE GOLD AND TRIANGLE DESIGN" CABLE {fjJ1t. tina11/ "SKYCABLE PLATINUM AND TRIANGLE DESIGN" SltYCABLE PREPAID 'SKYCABLE PREPAID AND TRIANGLE DCSIGN'ft,NfV 27 "SKYCABLE SILVER AND TRIANGLE DESIGN" SKYBROADBAND "SKYBROADBAND" SKYPHONE "SKYPHONE AND DEVICE" SKYVOICE "SKYVOICE" Respondent-applicant's mark is "SKY" while the dominant feature of opposer's marks is the word "SKY". The subject mark "SKY", and the dominant word of opposer's marks, "SKY", are aurally and visually the same: The spellings are the same; the letters are written in uppercase; the fonts are Arial like; and the parties' respective marks are pronounced exactly the same. The competing marks, thus, are confusingly similar, considering that the dominantfeature in opposer's marks is the word "SKY". Similarity in size, fO~~ 28 and color, while relevant, is not conclusive. Neither duplication/imitation, or the fact that the infringing label suggests an effort to emulate, is necessary. The competing marks need only contain the main, essential or dominant features of another; and that confusion and deception are likely (Sterling Products International, Inc. Y. Farbenfabriken Bayer Aktiengesselschaft, supra; Lim Hoa Y. Director of Patents, G. R. No. L 8072, October 31, 1956; Co Tiong Sa Y. Director of Patents, et al., G. R. No. L-5378, May 24, 1954). The confusing similarity of said marks are such that they are likely to create a confusion of goods as well as confusion of business to the purchasing public, especially as the competing marks are applied to similar and/or related services: Education and entertainment services by means of programmes and films on television which essentially are delivered, among other media, through cable tv broadcasting. Notwithstanding the fact that opposer secured registrations for the marks "SKYCABLE", "SKYCABLE FUN CLUB", and "SKYCABLE SEASON PASS" for its cable TV broadcasting services under Class 09 while respondent-applicant is applying for its education and entertainment services through various media among which include cable tv broadcasting under Class 41, these services are identical and/ or related. In the case of Continental Connector Corp. vs. Continental Specialties Corp., 207 USPQ 60, it was ruled that the conclusion created by use of the same word as the primary element in a trademark is not counteracted by the addition of another term. By analogy, confusion cannot be avoided by words in addition to the word "SKYCABLE" in opposer's marks (aside from opposer's mark "SKYCABLE") when such marks are put side-by-side with respondent-applicant's mark "SKY CABLE". Still, confusion exists because respondent-applicant engages in the same lines of services as that by opposer. In the case of Societe Des Produits Nestle, S.A. vs, court of Appeals, G.R. No. 112012, Apl'il 4, 2001), confusingly similarity exists when there is such a close or ingenuous imitation as to be calculated to deceive ordinary persons, or such resemblance to the original as to deceive ordinary purchaser as to cause him to purchase one supposing it to be the other. In sum, thus, the likelihood of confusing opposer's and respondent applicant's respective marks as marks that are applied interchangeably to the services of either party, and of confusing that there is a connection betwee~ the two parties in the sense that one party may likely be confused by the ~ 29 • purchasing public to have allowed, consented, or licensed the use of its mark or a colorable imitation thereof to the other party, when there is none, is made likelier by the fact that both parties apply and use their respective marks on the same kinds of servcies (McDonald's Corporation et al. v. L.C. Big Mak Burger, Inc., et al., G.R. No. 143993, August 18, 2004; Converse Rubber Corporation v. Universal Rubber Products, inc. et al., G.R. No. L-27906, January 8, 1987; Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesselschaft, G.R. No. L-19906, April 30, 1969). As to the first issue, thus, this Bureau rules in the affirmative. It is to be noted that opposer has obtained registrations for the following marks with which this Bureau made a finding herein that respondent registrant's mark "SKY CABLE" is confusingly similar: 1) "SKYCABLE" registered on May 21, 2004 under Registration No. 4-1991-078983; 2) "SKYCABLE SEASON PASS" registered on October 22, 2007 under Registration No. 4-2007 002069; and 3) "SKYCABLE FUN CLUB" registered on October 22, 2007 under Registration No. 4-2007-002070 for cable TV broadcasting, all under Class 09. Meanwhile, opposer secured registration for the mark "I.WOMAN SKYCABLE'S EXCLUSIVE WOMAN'S CLUB AND DEVICE" on December 25, 2005 under Registration No. 4-2001-003067 also for cable TV broadcasting services but under Class 38. Section 138 of the IP Code provides: "A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate." Thus, by virtue of opposer's certificates of registration, a presumption arises that opposer is the owner of the marks "SKYCABLE", "SKYCABLE SEASON PASS", "SKYCABLE FUN CLUB", "I.WOMAN SKYCABLE'S EXCLUSIVE WOMAN'S CLUB AND DEVICE" the confusing slmilarltv to which the mark "SKY CABLE" has been ruled herein and, thus, precludes respondent-applicant from being allowed registration of such a confusingly similar mark for goods that arety- identical and / or related to opposer's goods. I I~ 30 \' Moreover, opposer has applied for registration on November 28, 2006 for the following marks to which respondent-applicant's mark "SKY" is also confusingly similar: 1) "SKYCABLE GOLD AND TRIANGLE DESIGN" under Application Serial No. 4-2006-012861; 2) "SKYCABLE PLAT[NUM AND TRIANGLE DESIGN" under Application Serial No. 4-2006-012859; and 3) "SKYCABLE PREPAID AND TRIANGLE DESIGN" under Application Serial No. 4 2006-012858. Section 123.1 (d) of the IP Code provides among others: "A mark cannot be registered ifit: (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing orpriority date, in respect of: i. The samegoods . . . or ii. Closely related goods . . . or III. Ifit nearly resembles such a mark as to be likely to deceive or cause confusion (Underscoring supplied) To reiterate, four of opposer's "SKYCABLE" marks to which the mark "SKY CABLE" is confusingly similar are already registered for which reason opposer is presumed to be the owner thereof and, per Section 123.1 (d) of the IP Code, precludes registration of the mark "SKY". Per Section 123.1 (d) of the IP Code, too, the application for registration of three of opposer's "SKYCABLE" marks prior to the subject application for respondent-applicant's mark "SKY" which is confusingly similar to said opposer's marks precludes registration of respondent-applicant's mark "SKY CABLE". Finally, respondent-applicant argues that its trademark SKY is an internationally well-known mark. This Bureau does not agree. Respondent-Applicant failed to present sufficient evidence to support its contention that its mark has actually gained and enjoyed a worldwide reputation internationally and in the Philippines. The Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers, particularly Rule 102i~ provide the following: , f ~ . 31 .. "Rule 102. Criteria for determining whether a mark is well-known. - In determining whether a mark is well-known, the following criteria or any combination thereof may be taken into account: (a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; (b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies; (c) the degree of the inherent or acquired distinction of the mark; (d) the quality-image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world; x x X x" In the case at bar, Respondent-applicant did not meet the enumerated criteria or any combination thereof of a well-known mark. Respondent applicant failed to proffer evidence to show the duration, extent and geographical area of the registration of the mark, actual use or sales and its promotion or advertisement in relation to the relevant sector of the consumers in foreign countries and in the Philippines. The fact of being well-known has to be established not only in foreign land but also in the Philippines. WHEREFORE, premises considered, the VERIFIED NOTICE OF OPPOSITION is, as it is, hereby SUSTAINED. Consequently, Application Serial No. 4-2007-606500 filed on June 22, 2007 by respondent-applicant British Broadcasting Sky Group PLC for Class 41 services, namely, "EDUCATION AND ENTERTAINMENT SERVICES; PROVISION OF TRAINING; PROVISION OF AUDIO VISUAL CONTENT; EDUCATION AND ENTERTAINMENT SERVICES BY tJlEANS OF RADIO, AND TELEVISION, TELEPHONY, THE INTERNET AND ON LINE DATABASES; HIRING, RENTAL AND LEASING OF CINE-FILMS, VIDEOS, DVDS, SOUND RECORDINGS, SOUND RECORDING APPARATUS, SPORTS APPARATUS, TELEVISION SETS AND VIDEO RECORDERS, DVD RECORDERS AND RADIO RECORDERS; PRODUCTION OF FILMS FOR TELEVISION AND CINEMA; PROVIDING ON-LINE ELECTRONIC PUBLICATIONS (NO~~ 32 . .. DOWNLOADABLE); PUBLICATION OF MAGAZINES, BOOKS, TEXTS AND PRINTED MATTER; PUBLICATION OF ELECTRONIC BOOKS OR JOURNALS ON LINE; PROVISION OF RECORDING STUDIO FACILrnES; LNE SHOW PRODUCTION SERVICES; ORGANIZING OF SPORTING ACTIvrnES AND COIVIPETITIONS; BOX OFFICE SERVICES; PRODUCTION AND PRESENTATION OF PROGRAMMES TRANSMmED BY TELEVISION, THE INTERNET OR OTHER TELECOMIVlUNICATION CHANNELS FOR THE CONDUCT OF THE INTERACTIVE VIEWING, SELECTION AND PURCHASE OF GOODS; TICKET RESERVATION SERVICES RELATING TO ENTERTAII\lIVlENT; PRODUCTION PRESENTATION AND DISTRmUTION OF RADIO AND TELEVISION PROGRAIVlMES, INTERACTIVE TELEVISION, INTERACTIVE GAMES, INTERACTIVE ENTERTAINMENT AND INTERACTIVE COMPETITIONS; PRODUCTION PRESENTATION AND DISTRIBUTION OF COMPETITIONS, CONTESTS, GAMES QUIZZES, STUDIO ENTERTAINMENT AND AUDIENCE PARTICIPATION EVENTS; INTERACTIVE TELEVISION PROGRAMME SELECTION SERVICES FOR VIEWERS; PROVISION OF INTERACTIVE ENTERTAINMENT, NEWS, CULTURAL ACTIvrnES AND SPORT FOR TELEVISION VIEWERS; INTERACTIVE SERVICES FOR TELEVISION VIEWERS; VIEWING GUIDE SERVICES; VIEWING GUIDE SERVICES FACILITATING THE RECORDAL AND FIXED TERM RENTAL OF PROGRAMMES AND MOVIES; TELEVISION PROGRAMME RECORDING SERVICES AUTOMATICALLY INrnATED ON THE BASIS OF CUSTOMER VIEWING HABITS/PREFERENCES; VIDEO ON DEMAND AND NEAR VIDEO ON DEMAND SERVICES; PROVIDING MOVIES, VIDEOS AND TELEVISION PROGRAMMES TO VIEWERS ON DEMAND AND NEAR VIDEO ON DEMAND; SPORTING AND CULTURAL ACTIvrnES; BETTING, GAMING AND GAMBLING SERVICES; CREDIT BETTING, GAMING, GAMBLING, LOTTERY OR BOOKMAKING SERVICES; CREDIT CARD BETTING, GAMING, GAMBLING, LOTTERY OR BOOKMAKING SERVICES; ORGANIZING AND CONDUCTING LOTTERIES; ELECTRONIC BETTING, GAMING, GAMBLING, LOTTERY OR BOOKMAKING SERVICES PROVIDED BY IVIEANS OF THE INTERNET, OR VIA GLOBAL COMPUTER NETWORK, OR ON-LINE FROM A COIVIPUTER NETWORK DATABASE, OR VIA TELEPHONY INCLUDING TO MOBILE TELEPHONES, OR VIA A TELEVISION CHANNEL INCLUDING A TELEVISION CHANNEL DISTRIBUTED BY SATELLITE, TERRESTRIAL OR CABLE TELEVISION BROADCAST; PAY TO PLAY GAIVIES SERVICES; PEER TO PEER INTERACTIVE GAMES AND GAMING SERVICES; INTERACTIVE POKER GAMES AND GAMING INCLUDING SINGLE AND IVIULTI PLAYER GAMING FORMATS; PRESENTATION AND PRODUCTION OF POKER COMPETITIONS, TOURNAMENTS, GAIVlES AND GAMING; ELEcrRONIC PUBLISHING SERVICES; VIDEO TAPING AND FILMING SERVICES; INFORMATION AND ADVISORY SERVICES RELATING TO THE AFORESAID SERVICES; NEWS, CURRENT AFFAIRS AND EDUCATIONAL IN FORMATIOJN SERVICES; INFORIVlATION AND ADVISORY SERVICES RELATING TO TELEVISION AND RADIO PROGRAMMES, TO EDUCATION, RECREATION, ENTERTAINMENT, MUSIC AND TO SPORT; INFORMATION AN~~ 33 • • ADVISORY SERVICES RELATING TO TELEVISION AND RADIO PROGRAMMES, TO EDUCATION, RECREATION, ENTERTAINIVIENT, IVIUSIC AND TO SPORT, PROVIDED ON-LINE FROIVl A COMPUTER DATABASE OR THE INTERNET OR TO MOBILE TELEPHONES; FACTUAL INFORMATION SERVICES RELATING TO TELEVISION AND RADIO PROGRAMMES, NEWS AND SPORT; INSTRUCTION SERVICES; TRAINING SERVICES; LEISURE SERVICES; ADVISORY SERVICES RELATING TO ENTERTAINIVI EI\lT; ARRANGING CONFERENCES, SEMINARS, SYMPOSIUMS OR WORKSHOPS; ARRANGING EXHIBmONS OR FESTIVALS; BOOKING AGENCY SERVICES; CINEMA SERVICES; CINEMA STUDIO SERVICES; DISTRlBUTION OF RADIO PROGRAIVIMES, TELEVISION PROGRAM IVIES, FILlVlS, MOTION PICTURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; PRODUCTION OF RADIO PROGRAIVIMES, TELEVISION PROGRAMMES, FILMS, MOTION PIcrURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; EDmNG OF RADIO PROGRAMMES, TELEVISION PROGRAMMES, FILMS, MOTION PICTURES, PRE RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; HIRE; LICENSING; LEASING OR RENTAL OF RADIO PROGRAMMES, TELEVISION PROGRAMMES, FILMS, MOTION PICTURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; MARKETING OF RADIO PROGRAMMES, TELEVISION PROGRAMES, FILMS, MOTION PICTURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; EXHIBmON OF RADIO PROGRAMMES, TELEVISION PROGRAMMES, FILMS, MOTION PICTURES, PRE RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; TRANSMISSION OF RADIO PROGRAMMES, TELEVISION PROGRAMMES, FILMS, MOTION PICTURES, PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, DVDS OR PRE-RECORDED VIDEO DISCS; AMUSEIVIENT PARK SERVICES WITH A THEME OF FILMS, RADIO OR TELEVISION PRODUCTIONS; AIVlUSEIVlEI\lT PARK SERVICES WITH A THEIVIE OF FILM, RADIO OR TELEVISION PRODUCTIONS; ORGANIZATION AND MANAGEMENT OF AMUSEMENT PARKS AND THEME PARKS; ORGANIZATION OF ENTERTAINIVlEI\lT; PREPARATION OF RADIO PROGRAMIVIES; TELEVISION PROGRAIVIIVIES, FILMS, PRE-RECORDED VIDEO TAPES, DVDS, AUDIO AND/OR VISUAL MATERIAL, PRE-RECORDED VIDEO CASETTES, PRE-RECORDED VIDEO DISCS OR MOTION PICTURES FOR DISTRIBUTION FOR TRANSMISSION OR BROADCAST BY ANY IVlEAI\lS; PROVISION OF RADIO PROGRAMMES, TELEVISION PROGRAM IVIES, FILlVlS, AUDIO AND/OR VISUAL IVIATERIAL OR MOTION PICTURES ONLINE (NOT DOWNLOADABLE); PUBLICATION AND DISTRIBlITION OF PRINTED t'IED'f~ 34 .. ' .. AND RECORDINGS; DIGITAL IMAGING SERVICES; DUBBING; VIDEO TAPE EDmNG; ENTERTAINMENT; FILM PRODUCTION; RENTAL OF MOTION PICTURES; MOVIE STUDIOS; PROVIDING MOVIE THEATRES FACILmES; PRODUCTION OF SHOWS; VIDEO FILM TAPE PRODUCTION; RENTAL OF AUDIO EQUIPrvIENT; RENTAL OF LIGHTING APPARATUS FOR THEATRICAL SETS OR TELEVISION STUDIO; RENTAL OF MOTION PICTURES; RENTAL OF MOVIE PROTECTORS AND ACCESSORIES; RENTAL OF RADIO EQUIPIVIENT; RENTAL OF TELEVISIONS AND TELEVISION EQUIPMENT; RENTAL OF SPORTS EQUIPMENT; RENTAL OF VIDEO CAMERAS; RENTAL OF VIDEO TAPES; RENTAL OF VIDEO RECORDERS; THEATRE PRODUCTIONS; MOVIE STUDIO SERVICES; ORGANIZING OR HOSTING AWARDS CEREMONIES; PRESENTATION OF FILMS; PRODUCTION OF SPECIAL EFFECTS FOR FILMS; RECORDING STUDIO SERVICES; ADVISING OR PROVIDING INFORMATION IN RELATION TO THE FOREGOING" is, as it is hereby, REJECTED. Let the filewrapper of SKY subject matter of this case be forwarded to the Bureau of Trademarks with a copy of this Decision forwarded to said Bureau of Trademarks for appropriate action. SO ORDERED. Makati City, December 22, E L ITA BELTRAN-ABELARDO D" ector, Bureau of Legal Affairs ~ 35