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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<i?q Respondent-Applicant, } )(------------------------------------------------)( 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

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