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INTELLECTUALPROPERTY OFFICE OF THE•

NASILON PTE LTD., } IPC No. 14-2019-00001 Petitioner, } Cancellation of: } Registration No. 18430 } Date Issued: 22 February 2018 } TM : MEDITERRANEO YOLE } -versus­ } } } } LLAOLLAO ASIA SL, } Respondent-Registrant. } )C------)C

NOTICE OF DECISION

COCHINGYAN & PERALTA LAW OFFICES Counsel for the Petitioner Unit 1202, 139 Corporate Center 139 Valero St., Salcedo Village Makati City

LOZADA BALDEMOR-5ANCHEZ & CO. Representative of Respondent-Registrant No. 56 St. Matthew Street Sacred Heart Village, Brgy. Pasong Putik Greater Fairview, Quezon City

GREETINGS:

Please be informed that Decision No. 2019 - ~ dated 07 October 2019 (copy enclosed) was promulgated in the above entitled case.

Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of 2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees.

Taguig City, 08 October 2019.

('yt~J\M Atty. M$ ANNE A. IS~DRA IPRS IV, Bureau of Legal Affairs

www.ipophil.gov.ph Intellectual Propert y Center e [email protected] #28 Upper Mc Kinley Road Mckinley Hill Town Center G) +632-2386300 Fort Bonifacio. Taguig City +632-5539480 1634 Philippines ; . : ' .: . .0 .:

INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

NASILON PTE LTD., }IPC NO. 14-2019~OOOOl Petitioner, }Cancellation of : . }Registration No. 18430 · }Date of Registration: 22 February 2018 ) , '~~.' '" -versus- } ' } Trademark: MEDITERRANEO YOLE . ~ o:. } LLAOLLAO ASIA SL, } Respondent-Registrant. } } x------x }Decision No. 2019­ 1.%

DECISION

NASILON PTE LTD. (Petitioner)' filed on 4 January 2019 a Petition for Cancellation of Registration No . 18430. The registration, in the name of LLAOLLAO

ASLA SL (Respondent-Registrantr', covers the mark "MEDITERRANEO YOLE", for j t use on "Coffee; tea; cocoa and artificial coffee; rice; tapioca and sago; Flour and i. preparations made from cereal; bread; pastry confectionery.ices, sugar; honey; treacle; yeast, baking powder; salt; mustard; vinegar; sauces (condiments); spices; ice; ice cream; frozen yogurts and frozen yogurts with fruit and nuts all included in class 30" under Class 30 and "Ice cream parlour services, cafeterias, restaurants", all included in Class 430fthe International Classification of Goods'.

The Petitioner relies on the following grounds tosuppcirt the petition for cancellation:

"2.1. First, the Respondent registered the mark in bad faith, with full knowledge that the mark belongs to and has been used earlier by the Petitioner, who is their main business competitor. xxx

"2.2. Second, the Petitioner is the true owner of the well-known trademarks 'Mediterraneo Yole' and 'Yole' having used it extensively.in other countries prior to the Respondent's registration in the Philippines and may petition the cancellation of such registration. x x x

"3.3 Third, the registered trademark is identical and confusingly similar with Petitioner's marks 'Mediterraneo Yole' and 'Yole'. xxx"

I A corporation duly organized at Waldstrasse 27, 13403 Berlin , Germany 2 A corporation with address at Paraje EI Olmico sin 30530 Cieza-Murcia, . J The Nice Classification of Goods and Services is for registering trademarks and service marks based on multilateral treaty administered by the WIPO, called the Nice Agreement Concerning the International Classification ofGoods and Services for Registration of Marks concluded in 1957. Intellect~al pro~ ..' www.ipophiLgov.ph M ~~e~l~y Center e [email protected] #28 Uppe r Road Mckinley Hill Town Cente r, +632:238.6300 9 'Fort Bohifacio, Taguig City . ~ ,+ 63 2 - ~ 5.3 9 ~ 8 0 .. ' 1634 Philippines ." The Petitioner alleges, among other things, the fact that Respondent acted in bad faith when it registered the mark 'Mediterraneo Yole', with full knowledge that the mark belongs to the Petitioner, their direct business competitor, that used the trademark earlier in Taiwan and . According to the Petitioner, by Respondent's own admission, it acknowledged the existence of the Petitioner's ' Yole' trademark iri their post on their official Facebook page on 12 December 2017, where Respondent emphasized that 'we have absolutely nothing to do with Yole Frozen Yogurt'. The Petitioner alleged that it registered the mark in other countries and has operated five yogurt stores in major shopping malls in Taiwan. According to the Petitioner, it is also popular in Singapore where it has also used the mark 'Mediterraneo Yole'.

To support its petition, the Petitioner submitted as evidence. the following: Authenticated and legalized Certificate of Board of Directors' Resolutions; Special Power of Attorney; Photocopy of Certificates of Registration of the mark "Mediterraneo Yo le" from ; Hongkong; Singapore; European Union; Chile; Photocopy of Certificates of Registration of the mark "Yole" from Singapore and Peru; Photocopy of Respondent's registration; Copies of news articles; blog review articles; photocopy.of sales receipts; signages and designs; packaging materials; and marketing materials." .

This Bureau served upon the Respondent-Registrant a "Notice to Answer" on 14 February 2019. The Respondent-Registrant, however did not file an Answer. Thus, the Adjudication Officer issued on 17 May 2019 Order No. 2019-884 declaring the Respondent-Registrant in default.

Records show that the Respondent-Registrant filed its application for the mark "iVIEDITERRANEO YOLE" on 16 November 2017 for use on "Coffee; tea; cocoa and artificial coffee; rice; tapioca and sago; Flour and preparations made from cereal; bread ; pastry confectionery; ices ; sugar; honey; treacle; yeast, baking powder; .salt; mustard; vinegar; sauces (condiments); spices; ice; ice cream; frozen yogurts and , frozen yogurts with fruit and nuts" under Class 30 and "Ice cream parlour services, cafeterias, restaurants" under Class 43. It was granted Certificate of Registration No.-184300n 22 February 2018.

Should the Respondent-Registrant's trademark registration ' ~ MED I TERRANEO YOLE" be cancelled?

Section 151 ofthe IP Code provides:

Section 151. Cancellation - 151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows :

(a) Within five (5) years from the date ofregistration of the mark under this Act. (b) At any time if the registered mark becomes the generic name forthe goods or services or a portion thereof, for which it is registered or-has been abandoned, or its registration obtained fraudulently; ' or "contrary to the '

4 Exhibit "A" to "QQQ". 2 provisions of this Act, or if the registered mark is used by, or with the permission of the registrant so as to misrepresent the source of the goods or services or in connection with which the mark is used.

The competing marks, depicted below, are identical: Meoiterraneo Yole

Petitioner's mark Respondent-Registrant's mark

The marks are identical in its literal component, and bear exactly the same accents on top of the letters 'a' and 'e'. Petitioner's registrations abroad, invariably include the marks, 'Yole' and 'Mediterraneo Yole'. Visually and aurallythey are the same giving the impression that goods bearing the marks are affiliated or originate from one and the same owner, especially that they are applied on goods/services under classes 43 and 30. In the Philippines, the Bureau takes note of the Petitioner's registration of the mark YOLE under Classes 30 and 43 on 14 February 2018 and 14 October 2018, respectively. It is also considered that the Petitioner has marketed its products online and has an internet presence. Thus, applied on same class of goods or products, the likelihood that the buying public would be confused on the origin and sponsorship of the goods is likely.

The Petitioner also asserts that the Respondent-Registrant obtained the registration of its mark in bad faith and is confusingly similar to Petitioner's well-known mark. The Petitioner submitted/presented evidence that it uses the mark MEDITERRANEO YOLE in Singapore and Taiwan. It submitted receipts" to prove sales. It also registered the mark? in jurisdictions abroad.

In this regard, This Bureau emphasizes that it is not the . application or the registration that confers ownership of a mark , but it is ownership ofthe mark that confers the right to registration. The Philippines implemented the World .Trade Organization Agreement "TRPS Agreement" when the IP Code took into force and effect on 1 January 1998.8

Succinctly, because the Respondent-Registrant uses its mark on goods that are similar or closely related to the Petitioner's it is likely that the consumers will have the impression that these goods originate from a single source or origin. The confusion or mistake would subsist not only the purchaser's perception of goods but on the origin thereof as held by the Supreme Court, to wit:

5 Exhibits "Y" to "EE". 6 Exhibits "FF" to"IDlli". 7 Exhibits "C" to "I". S See Sec. 2: Trademarks, Art. 15 (Protectable Subject Matter) 3 ~ Callman notes two types of confusion. The first is the confusion of goods in which event the ordinary prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. In which case, defendant's goods are then bought as the plaintiff's and the poorer quality of the former reflects adversely on the plaintiff's reputation. The other is the confusion of business. Here, though the goods of the parties are different, the defendant's product is such as might reasonably be assumed to originate with the plaintiff and the public would then be deceived either into that beliefor into belief that there is some connection between the plaintiff and defendant which, in fact does not exist."

The public interest, therefore, requires that two marks, identical to or closely resembling each other and used on the same and closely related goods, but utilized by different proprietors should not be allowed to co-exist. Confusion,' mistake, deception, and even fraud, should be prevented. It is emphasized that the function ofa trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public' that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product. 10

In this regard, This Bureau emphasizes that it is not the application or the registration that confers ownership of a mark, but it is ownership of the mark that confers the right to registration. The Philippines implemented the World Trade.Organization Agreement "TRPS Agreement" when the IP Code took into force and effect on 1 January 1998. 11

The owner of a registered trademark shall have the exclusive right .to. prevent all third parties not having the owner's consent from using in the course.of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. · ·T he' rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.

Significantly, Sec. 121.1 of the IP Code adopted the definition of the mark under the old law on Trademarks (Rep. Act. No. 166), to wit:

121.1 "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include 'a stamped or marked container of goods; (Sec. 38, R.A. No. 166a) .

9Converse Rubber Corp. v. Universal Rubber Products, Inc., et. al., G. R. No. L-27906,08 January 1987. : IO Pribhdas J. Mirpuri v. Court ofAppeals, G. R. No. 114508, 19 November 1999, citingEtepha v. Director ofPatents, supra, Gabriel v. Perez, 55 SeRA 406 (1974). See also Article 15, par. (1), Art. 16, par. (1), of the Trade Related Aspects of Intellectual Property (TRIPS Agreement). I I See Sec. 2: Trademarks, Art. 15 (Protectable Subject Matter)

" I . 4 ~ Sec. 122 of the IP Code also states:

Sec.122. How Marks Are acquired.- The rights in a mark shall be acquired through registration made validly in accordance with the provisionofthislaw.

There is nothing in Sec.122 which says that registration confersownership of the mark. What the provision speaks of is that the rights in the mark shall be acquired through registration, which must be made validly in accordance with the provision of the law.

Corollarily, Sec. 138 of the IP Code states:

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 of 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.

Aptly, even if a mark is already registered, the registration may still be cancelled pursuant to Sec. 151 of the IP Code.

The Supreme Court in the case of Birkenstock Orthopaedia Gmbhand Co. KG v. Philippine Shoe Expo Marketing Corporation 12 ruled: '

'BIRKENSTOCK, obviously of German origin, is highly distinct and arbitrary mark. It is very remote that two persons did coin the same or identical marks. To come up with a highly distinct and uncommon mark previously appropriated by another, for use in the same line of business, and without any plausible explanation, is incredible.'

The same ruling may be applied in the present case, wherein Respondent registered the Petitioner's Yole mark which is a fancy, arbitrary mark, coined from the combination of the words 'yogurt' and 'ole'. 'Ole' is a Spanish exclamation of approval and the origin of the word yogurt is Spain. It is highly unlikely that the Respondent­ Registrant would come up with exactly the same combination of the words Mediterraneo and Yole. Moreover, it is remote that the Respondent coined exactly the fancy word "Yole", The Respondent-Registrant did not submit an Answer to clarify the origin or creation of its mark.

In contrast, the Respondent-Registrant despite the opportunity given, did not file an Answer to defend its trademark registration and to explain how he arrived at using the mark MEDITERRANEO YOLE which is the same as the Petitioner'sc.-The Petitioner's mark is unique and highly distinctive. It is incredible for the Respondent-Registrant to have come up with exactly the same mark for use on similar goods by pure coincidence.

Succinctly, the field from which a person may select a trademark is practically unlimited. As in all other cases of colorable imitations, the unanswered riddle is why of the millions of terms and combinations of letters and designs available, the Respondent­

12 G.R. No. 194307,20 November 2013. 5 Applicant had to come up with a mark identical or so closely similar to another's mark if there was no intent to take advantage ofthe goodwill generated by the other mark.13

WHEREFORE, premises considered, the instant Petition for Cancellation of Trademark Registration No. 18430 is hereby GRANTED. Let the filewrapper of the subject trademark registration be returned, together with a copy of this Decision, to the Bureau ofTrademarks for information and appropriate action.

SO ORDERED.

TaguigCity, 0-7 OCT 2019

~~ ATTY. ADORACION U. ZARE, LL.M. Adjudication Officer, Bureau of Legal Affairs

13 American Wire & Cable Company v. Director ofPatents, G. R. No. L-26557, 18 February 1970. 6