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14-2020-00192 Opposer, Opposition To

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INTEUECTUAl PROPERTY OFFICE OF THE PHILIPPINES GALLAHER LIMITED, IPC No. 14-2020-00192 Opposer, Opposition to: Appln. No. 4-2018-500650 Date Filed: 14 February 2018 -versus- Trademark: "MAYFAIR" JIANZHONG FU, Respondent-Applicant. Decision No. 2021 - L x-------------------------------x DECISION GALLAHER LIMITED ("Opposer")I filed an opposition to Trademark Application Serial No. 4-2018-00500650. The application filed by JIANZHONG FU ("Respondent-Applicant")2, covers the mark "MAYFAIR" covering Class 34 goods namely, "tobacco, raw or manufactured; tobacco products; cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (nor for medical purposes); electronic cigarettes, tobacco products for the purpose of being heated; electronic devices and their part for the purpose ofheating cigarettes or tobacco in order to release nicotine-containing aerosolfor inhalation,' liquid nicotine solutions for use in electronic cigarettes,' smokers' articles, cigarette paper, cigarette tubes, cigarette jilters, tobacco tins, cigarette cases; ashtrays, pipe, pocket apparatus for rolling cigarette s, lighters, matches" of the International Classification of Goods and Services. ' The Opposer alleges that it is the trading company of Japan Tobacco International (JTI) in United Kingdom which produces and/or distributes several brands of ready-made cigarettes, cigars , hand rolling tobacco and vaping products. Among the brands of cigarettes in its portfolio include the following: Mayfair, Benson & Hedges, .Sterling, Kensitas Club, American Spirit, Winston, Sovereign, Silk Cut, Camel and Berkeley. According to Opposer, it has been and continuous to be very aggressive in building and maintaining a diverse intellectual property portfolio involving the MAYFAIR trademark. It continues to apply for trademark registrations in the market where it operates. It owns trademark registrations and applications worldwide, including the Philippines, for the MA YFAIR marks and A corporation duly organized and existing under and by virtue ofthe laws ofthe United Kingdom . Resident of China The Nice Classification of goods and services is for registering trademark and service marks, based on a multilateral treaty administered by the WIPO, called the Nice Agreement Concerning the Intemational Classification of Goods and Services for Registration of Marks concluded in 1957. 1 • www.ipophil.gov.ph Intellectuaeenter e [email protected] # 28 Upp er McKinley Road McKinley Hill Town Center o +632 -2 386300 Fort Bonifa cio. Taguig City +632 -55 39480 1634 Philippines its variations. In fact, Opposer presented several applications for its MAYFAIR mark with the Intellectual Property Office as early as 12 March 1999 and has obtained registration as early as 20 October 2008. Thus, the Opposer avers that in view of its ownership of MAYFAIR mark as a result of its prior registration, and Respondent-Applicant's blatant copying of its MAYFAIR mark, Respondent-Applicant's application for the identical MAYFAIR mark should be denied registration. The Opposer submitted the following evidence: 1. Sworn Statement duly executed by Mr. Ronald van Tuijil; 2. Power of Attorney duly executed by Paul Hennessy and Charles Cunningham-Reid; 3. IPO e-Gazette published on 16 March 2020; 4. Recommended Retail Price List - March 2010; 5. Portion displaying the mark MAYFAIR; 6. Portion displaying the mark DORCHESTER; 7. Portion displaying the mark BENSON & HEDGES; 8. Portion displaying the mark CONDOR; 9. Recommended Retail Price List - March 2012; 10. Portion displaying the mark MAYFAIR; 11. Portion displaying the mark BENSON & HEDGES; 12. Portion displaying the mark CONDOR; 13. Recommended Retail Price List - September 2011; 14. Portion displaying the mark MAYFAIR; 15. Portion displaying the mark BENSON & HEDGES; 16. Portion displaying the mark CONDOR; 17. Recommended Retail Price List - September 2013; 18. Portion displaying the mark MAYFAIR; 19. Portion displaying the mark BENSON & HEDGES; 20. Portion displaying the mark CONDOR; 21. Recommended Retail Price List - June 2014; 22. Portion displaying the mark MAYFAIR; 23. Portion displaying the mark BENSON & HEDGES; 24. Portion displaying the mark CONDOR; 25. Recommended Retail Price List - March 2015; 26. Portion displaying the mark MAYFAIR; 27. Portion displaying the mark BENSON & HEDGES; 28. Portion displaying the mark CONDOR; 29. Recommended Retail Price List (Plain Pack) - March 2017; 30. Portion displaying the mark MAYFAIR; 31. Portion displaying the mark BENSON & HEDGES; 32. Portion displaying the mark CONDOR; 33. Full Price List - March 2019; 34. Portion displaying the mark MAYFAIR; 35. Portion displaying the mark BENSON & HEDGES; 2 36. Portion displaying the mark CONDOR; 37. Print-out of the WIPO Database showing Opposer Gallaher's registrations for a total of 46 marks in several jurisdictions around the world; 38. Certified true copy ofPhilippine Trademark Registration No. 4-2018-017883; 39. Certified true copy ofPhilippine Trademark Registration No. 4-2007-013741; 40. Print-out of the WIPO Database bearing the list of the marks registered under or being registered by Respondent-Applicant Fu; 41. Print-out of Godfrey Phillips India Ltd.'s website; 42. Print-out ofOpposer's website; 43. Print-out of British American Tobacco Italia's website; 44. Portion displaying the mark MS; 45. Print-out of British American Tobacco Ita1ia's website; 46. Portion displaying the mark SAX; 47. Print-out ofSPS Cigarorme's website; 48. WIPO Trademark Registration Information ofthe mark MS; and, 49. WIPO Trademark Registration Information of the mark SAX. This Bureau issued a Notice to Answer" and served a copy upon Respondent-Applicant on 07 September 2020. The latter, however, did not file an Answer. Thus, this Bureau issued an Order declaring Respondent-Applicant in default' This case is submitted for decision. Should Respondent-Applicant's trademark MAYFAIR be allowed? It is emphasized that the essence oftrademark registration is to give protection to the owners oftrademarks. The function ofa trademark is to point out distinctly the origin or ownership ofthe goods to which it is affixed; to secure to him, who has been instrumental in bringing out into the market a superior genuine article ; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale ofan inferior and different article as his product.! The records and evidence show that the Opposer was issued Certificate of Registration No. 4-2018-017883 for the trademark MAYFAIR in the Philippines on 02 May 2019 covering goods under Class 34 for tobacco or cigarettes and related iterns.? The Opposer has also shown prior application and registration for the trademark MAYFAIR, which were either removed from registry for non-use or have expired.! On the other hand, Respondent-Applicant's instant application for registration of the trademark MAYFAIR dated 14 February 2018 covers similar goods under Class 34 goods as mentioned in the above paragraph. Dated 29 July 2020. Order No. 2020-2151 dated 07 December 2020. Pribhdas 1. Mirpuri v. Court ofAppeals, G.R. No . 114508, 19 Nov . 1999. See also Article 15, par. (I ), Art . 16, par. 91. ofthe Trade-related Aspect of Intellectu al Property (TRIPS Agreement). Exhibit " M" of Opposer. Exhibit "N" ofOpposer. Intellectu al Property Office Trademark Database, available at hIlPS://\\'\\'\\"J .\\"ino.inl/hranddh/phh:n/# (last acc essed 30 March 202 1). 3 The contending marks consist of the identical word mark MAYFAIR. This dominant and striking resemblance cannot negate the likelihood of confusion in terms of visual and aural similarities of the trademarks to the public. Taking into account the goods and/or services covered by the contending trademarks, it appears that they belong to the same classification. Both marks cover Class 34 which refers to tobacco, cigarettes, tobacco substitutes, and other related devices or accessories. Thus, the co­ existence of identical trademarks to goods which are similar and/or related to each other would alarmingly mixed-up the nature and distinct personality of the contending parties' business operation. This may also possibly lead to the confusion ofconsumers who will have the impression that the goods of both trademarks originate from a single source or the origin thereof and are connected or associated with one another. Thus, the likelihood of confusion would subsist not only on the purchaser's perception ofgoods but on the origin thereof as held by the Supreme Court, to wit:? Call man notes two types of confu sion. The first is the confusion of goods in which event the ordinarily 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 plaintiffs and the poorer quality of the former reflects adversely on the plaintiffs reputation. The other is the confusion of business. Hence, 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 belief or into belief that there is some connection between the plaintiff and defendant which, in fact does not exist. Section 138 R.A. No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code") provides: Sec. 138. Certificate of Reg istration. - A Certificate of Registration of a mark should be prima facie
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