SKY CABLE CORPORATION, BRITISH SKY BROADCASTING } GROUP PLC, } Decision No. ,Em DECISION Before This Bureau Is a VERIFIED N

,., INTELLECTUAL PROPERTY PHILIPPINES SKY CABLE CORPORATION, } IPC No. 14-2008-00158 Opposer, } Case Filed: 14 June 2008 } } Opposition to: -versus } App. Ser. No.: 4-2007-606499 } Date Filed: 22 June 2007 } } Trademark: SKY } BRITISH SKY BROADCASTING } GROUP PLC, } Respondent-Applicant, } Decision No. ,em )(-----------------------------------------------)( DECISION Before this Bureau is a VERIFIED NOTICE OF OPPOSITION filed on July 14, 2008 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. 4-2007-606499 for registration of the mark "SKY" for Class 38 services, namely: "TELECOMMUNICATIONS SERVICES; MOBILE AND FD<ED TELECOMMUNICATIONS SERVICES; COMMUNICATIONS SERVICES; SATELLITE, CELLULAR AND RADIO COMMUNICATION SERVICES; TELEVISION AND RADIO BROADCASTING; TRANSMISSION AND COMMUNICATION SERVICES; BROADCASTING AND/OR TRANSMISSION OF RADIO AND/OR TELEVISION PROGRAMMES AND/OR ALMS; SATELLITE, DTf, CABLE, DSL AND BROADBAND BRAODCASTING AND/OR TRANSMISSION OF AUDIO AND/OR AUDIO VISUAL PROGRAMMING; TRANSMISSION OF AUDIO, VIDEO AND/OR AUDIO VISUAL PROGRAMMING (BY ANY MEANS); TRANSMISSION OF VIDEO FILMS; BROADCASTlNG AND TRANSMISSION OF TELEVISION PROGRAMMES AND FILMS TO PERSONAL COMPlHERS; BROADCASTING AND COMMUNICATIONS BY MEANS OF OR AIDED BY COMPUTER; TRANSMISSION OF AUDIO, VIDEO AND/OR AUDIO VISUAL PROGRAMMING BY INTERNET PROTOCOL (IPTV); TELECOMMUNICATIONS SERVICES OVER THE INTERNET INCLUDING BUT NOT LIMITED TO SERVICES JY PROVIDED USING VOICE OVER INTERNET PROTOCOL (VOIP); PROVISION OF 1"/ ~ Republic of the Philippines T~T'T"I;'T T Vr"TTT'" T nnnnvnT" AVVT'-'V ACCESS AND/OR CONNECTIVITY TO BROADBAND NETWORKS WHETHER FIXED, PORTABLE OR WIRELESS; TRANSMISSION OF TEXT, MESSAGES, SOUND AND/OR PICTURES; PROVISION OF AUDIO VISUAL CONTENT; COMMUNICATION OF INFORMATION (INCLUDING WEB PAGES), DATA BY RADIO, TELECOIVIMUNICATIONS AND BY SATELLITE; TELEPHONE, MOBILE TELEPHONE, MESSAGE COLLECTION AND TRANSMISSION, RADIO-PAGING, CALL DIVERSION, ANSWERPHONE AND DIRECTORY ENQUIRY SERVICES; PERSONAL NUMBERING SERVICES; LOAN OF REPLACEMENT , TELECOMMUNICATIONS AND COIVIIVlUNICATIONS APPARATUS AND INSTRUMENTS IN CASE OF BREAKDOWN, LOSS OR THEFT; COMPUTER AIDED TRANSMISSION OF MESSAGES AND IIVlAGES; MESSAGING SERVICES NAMELY, SENDING, RECEIVING AND FORWARDING MESSAGES IN THE FORM OF TEXT, AUDIO, GRAPHIC IMAGES OR VIDEO OR A COMBINATION OF THESE FORMATS; INSTANT MESSAGING; SHORT MESSAGE SERVICES (SMS); MULTIMEDIA MESSAGING SERVICES (MMS); UNIFIED MESSAGING SERVICES; VOICEMAIL SERVICES; VIDEO CONFERENCING SERVICES; VIDEO TELEPHONE SERVICES; OPERATION OF SEARCH ENGINES; PROVISING ACCESS TO TELECOMMUNICATIONS INFRASTRUCTURES FOR OTHER OPERATORS; PROVISION AND OPERATION OF ELECTRONIC CONFERENCING, DISCUSSION GROUPS AND CHAT ROOMS; HIRE, LEASING OR RENTAL OF APPARATUS, INSTRUMENTS, INSTALLATIONS OR COIVIPONENTS FOR USE IN THE PROVISION OF THE AFOREMENTIONED SERVICES; ADVISORY, INFORMATION AND CONSULTANCY SERVICES RELATlNG TO ALL THE AFOREMENTIONED; COMMUNICATIONS SERVICES BY SATELLITE, TELEVISION AND/OR RADIO; NEWS AGENCY SERVICES; PROVISION OF NEWS, CURRENT AFFAIRS AND SPORTS INFORMATION; HIRING, RENTAL AND LEASING OF COMMUNICATIONS APPARATUS ELECrRONIC MAIL SERVICES; TELECOMMUNICATION SERVICES RELATING TO THE INTERNET; TELECOMMUNICATION OF INFORMATION (INCLUDING WEB PAGES); PROVISION OF LOCATION BASED SERVICES FOR TELECOMMUNICATIONS AND COMMUNICATIONS APPARATUS AND INSTRUMENTS; PROVISION OF WIRELESS APPLICATION PROTOCOL SERVICES INCLUDING THOSE UTILIZING A SECURE COMMUNICATIONS CHANNEL; PROVISION OF INFORMATION RELATING TO OR IDENTIFYING TELECOMMUNICATIONS AND COMMUNICATIONS APPARATUS AND INSTRUMENTS; PROVISION OF TELECOMMUNICATIONS LINKS TO COMPUTER DATABASES AND WEBSrrES ON THE INTERNET; TELECOMMUNICATIONS SERVICES DEDICATED TO RETAILING GOODS AND SERVICES THROUGH INTERACTIVE COIVIMUNICATIONS WITH CUSTOMERS; INTERACTIVE TELEVISION SERVICES; INTERACTIVE SERVICES FOR TELEVISION VIEWERS INCLUDING THOSE WATCHING ON MOBILE TELEPHONES AND PCS; TELEVISION BROADCASTING AND SERVICES INCORPORATING INTERACTIVjW SERVICES FOR VIEWING GUIDES AND INTELUGENT AUTOMATED SELECTION1lif--tc., 2 FOR PROGRAMME RECORDAL; INTERACTIVE SERVICES FOR TELEVISION VIEWERS FACILITATING THE RECORDAL OF PROGRAMMES AUTOMATICALLY INmATED ON THE BASIS OF CUSTOMER VIEWING HABITS/PREFERENCES; PROVIDING INTERACTIVE TELEVISION VIEWERS (INCLUDING THOSE WATCHING ON THEIR MOBILE TELEPHONES OR PCS) WITH ACCESS TO INFORMATION, DATA, GRAPHICS, AUDIO AND/OR AUDIO-VISUAL CONTENT FROM A RESTRICTED GROUP OF INTERNET WEBSITES OR PORTALS; BROADCASTING AND TRANSMISSION OF INTERACTIVE TELEVISION, INTERACTIVE GArv'IES, INTERACTIVE NEWS, INTERACTIVE SPORT, INTERACTIVE ENTERTAINMENT AND INTERACTIVE COMPETITIONS; VIDEO ON DEMAND AND NEAR ON DEMAND SERVICES; STREAMING DELNERY OF VIDEO ON DEMAND STREAMS TO VIEWERS; PROVISING MOVIES, VIDEOS AND TELEVISION PROGRAIVIMES TO VIEWERS ON DEMAND AND NEAR ON DEMAND, PROFESSIONAL CONSULTANCY SERVICES RELATING TO BROADCASTING; PROVIDING ACCESS TO A DATABASE STORING INFORMATION RELATING TO A VARIETY OF GOODS AND SERVICES; ENABLING ACCESS TO THE INTERNET; PROVISION OF A CONNECTION BETWEEN WEBSITES AND TELEVISION VIEWERS VIA AN INTERACTIVE TELEVISION PORTAL; INTERNET WALLED GARDEN SERVICES; INTERNET PORTAL SERVICES; WEB PORTAL SERVICES; PROVISION OF BROADBAND SERVICES; INTERAITIVE TELEVISION PORTAL SERVICES PROVIDING ACCESS TO INTERNET WEBSrrES FOR TELEVISION VIEWERS VIA THEIR TELEVISION RECEIVING EQUIPMENT INCLUDING DIGITAL TELEVISION RECEIVING EQUIPMENT; PROVIDING ACCESS TO INTERNET WEBSITES TO MOBILE TELEPHONE USERS; PROFESSIONAL CONSULTANCY AND INFORMATION AND ADVISORY SERVICES RELATING TO ALL THE AFORESAID SERVICES; LEASING ACCESS TIME TO AN INFORMATION DATABASE; PROVIDING ACCESS TO A DATABASE STORING INFORMATION RELATING TO A VARIETY OF GOODS; TELECOMMUNICATIONS INFORMATION; FACrUAL INFORMATION SERVICES RELATING TO TELEVISION BROADCATING; AUDIO VISUAL COIVlMUNICATION SERVICES; DATA COMMUNICATION SERVICES; DATA BROADCASTING SERVICES; DELNERY OF MESSAGES; DELIVERY OF RADIO PROGRAMMES, TELEVISION PROGRAMMES, FILMS PRE-RECORDED VIDEO TAPES, AUDIO AND/OR VISUAL MATERIAL OR MOTION PICTURES; RENTAL, LEASING OR HIRE OF COMMUNICATIONS EQUIPMENT; MESSAGE SENDING; TELEPHONIC OR TELEPHONE COMMUNICATIONS SERVICES; WIRELESS COMMUNICATION SERVICES; CONSULTANCY, ADVISING OR PROVIDING INFORMATION 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 busines~ address at Grant Way, Isleworth, Middlesex TW7 SQD, United Kingdom. I"{ ~ 3 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. 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 CABLE" and its variations under Sec. 147.1 of the Intellectual Property Code (or "IP Code''). 1. "SKY" is confusingly similar to "SKY CABLE" and its variations. Thus, its registration must be denied under Sec. 123.1(d)2of the IP Code. 2. 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". 3. "SKY CABLE" is also the corporate name of Opposer and must be protected as against "SKY" under Sec. 165 of the IP Code. 4. 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 Rules and Regulations on Trademarks. 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, approximately 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 approximatel1k 200,000 nationwide for the postpaid service alone. I r ~ 4 2. Opposer offers quality information and entertainment programs best suited for the Filipino families. Aside from the regular cable channels, 3. Opposer provides exclusive Filipino channels such as Cinema One, ANC, DZtJlIVl 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. 4. 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. 5. 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

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