INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

MARS, INCORPORATED, } IPC No. 14-2015-00171 Opposer, } Opposition to: } Appln. Ser. No. 4-2013-00002847 -versus- } Date Filed: 15 March 2013

} DELFI MANUFACTURING S.A., } TM: DELFI MALTITOS Respondent-Applicant. }

NOTICE OF DECISION

BARANDA & ASSOCIATES Counsel for Opposer Suite 1002-B Fort Legend Towers, 3rd Avenue corner 31st Street, Bonifacio Global City, Taguig City

POBLADOR BAUTISTA & REYES Counsel for Respondent-Applicant 5th Floor, SEDCCO I Building 120 Rada corner Legaspi Streets, Legaspi Village, Makati City

GREETINGS:

Please be informed that Decision No. 2017 - 4^2. dated 22 December 2017 (copy enclosed) was promulgated in the above entitled case.

Pursuant to Section 2, Rule9 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, 03 January 2018.

MARILYN F. RETUTAL IPRS IV Bureau of Legal Affairs

@ www.ipophil.gov.ph q Intellectual Property Conlef Q [email protected] "?B uPPor McKintey Road McKinley Hill lown Center O +632-2386300 Fo,. B««aoo. Tagu,g C,y j# +632-5539480 1634 Philippines INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

MARS, INCORPORATED, }IPC NO. 14-2015-00171 Opposer, } }Opposition to: }Appln. Ser. No. 4-2013-00002847 -versus- } Date Filed: 15 March 2013 } Trademark: "DELFI DELFI CHOCOLATE MANUFACTURING } MALTITOS" S.A., } Respondent-Applicant. } x x}Decision No. 2017 -

DECISION

MARS INCORPORATED, (Opposer)1 filed an opposition to Trademark Application Serial No. 4-2013-00002847. The application, filed by DELFI CHOCOLATE MANUFACTURING (Respondent-Applicant)2, covers the mark "DELFI MALTITOS", for use on "confectionery, biscuits, chocolate, cocoa, products made from or including chocolate and/or cocoa" under Class 30 of the International Classification of Goods3.

The Opposer alleges that it will be damaged by the registration for the reasons set forth:

"3. The Opposer is entitledto the benefits granted to foreign nationals under Section 3 of Republic ActNo. 8293, otherwise known as the Intellectual Property Code of the Philippines ('IP Code'): xxx

"5. The Opposer is the registered owner of marks in class 30 in the Philippines, and is therefore entitled to the exclusive

"6. The registration of the Application violates Sections 123.1 (d), ( e ) and (f) of the IP Code which expressly prohibit the registration of the mark if it is:

"6.1. is identical with a registered mark belonging to a different proprietoror a mark with an earlier filing or priority date, in respect of: ( i ) the same goods or services; or ( ii ) closely related goods or services; or ( iii) if it nearly resembles such a mark as to be likely to deceive or cause confusion;

1 A corporation duly organized and existing under the laws of the United States of America, with address at 6885 Elm Street, McLean 22101-3883, Virginia U.S.A. 2 A corporation organized under the lawsof with address at 6 Route De Berne, 1700 Fribourg, Switzerland. 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 of Goods and Services for Registration of Marks concluded in 1957. 1

@ www.ipophil.gov.ph q Intellectual Property Center 0 mail@>pophil.gov.ph tt?8 uPPor McKink-y Road © +632-2386300 ^McKinluy^^Hill lown^^Center,

|i +632 5539480 1634 HiHippinoK "6.2. Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used foridentical or similar goods or services: Provided, That in determining whether a mark is well- known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

"6.3. Is identical with or confusingly similar to, or constitutes a translation of a mark, considered well known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods and services which are not similar to those with respect to which registration is applied for: Provided, that the use of the mark in relation to the goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, that the interests of the owner of the registered mark are likely to be damaged by such use.

"7. In addition, both the Philippines and the U.S.A., where the Opposer was organized and registered, are members of the Paris Convention for the Protection of Industrial Property and the WTO TRIPS Agreement. The Paris Convention provides: x x x

"8. The WTO TRIPS Agreement widens the scope of protection of well-known marks by enjoining unauthorizeduse of these marks on dissimilar goods/services, x x x

The Opposer relies, among other things, on the following facts:

"10. The Opposer is a large privately held company and is a leading global manufacturer of popular brands that started in 1911, with six (6) business segments, namely Mars Chocolate, Mars Petcare, mars Food, Mars Symbioscience, mars Drinks, and Wrigley. x x x

"11. The Opposer traces its roots more than a century ago when a 19- year old Frank C. Mars sold molasses chips in 1902. Almost a decade later, Frank started making and selling butter cream candyfrom his kitchen in Tacoma, Washington, U.S.A. Frank then moved to larger quarters in 1920 and introduced MILKY WAY in 1923, which boosted sales to USD 793,000. Forrest E. Mars, Sr., the only son of Frank and Ethel, entered the family business in 1929 and launched the crowd favorite MALTESERS brand for chocolate balls in 1936.

"12. From humble beginnings, the Opposer now owns some of the world's most populacr brands. These brands brings pleasure and satisfaction to hundredsof millions of people and pets around the world, some of which are shown below: xxx

"13. Today, the Opposer is an internationally recognized company with over USD33billion in net sales in 2014. More than 100 years of passionately coming up with innovative products have definitely earned the Opposer the distinction and esteemed reputation it enjoys today.

"14. With significant international presence in more than 74 countries, Mars, Incorporated has been recognized by Forbes as the 6th largest privately held companies in America,

"15. Mars, Incorporated takespride in the numerous distinctions worldwide that it has achieved throughout the years. It has in fact been repeatedly been named as one of the best workplaces in different countries. xxx

History of MALTESERS chocolate

"16. The Opposer's Chocolate segment, mars Chocolate, is one of the world's leading chocolate manufacturers and employs more than 16,000 Associates across 21 countries. The Opposer hasa total of 29 chocolate brands, including five-billion dollar brands - M&M'S®, ®, ^®, MARS®/MILKY WAY®, and ® . Other leading brands include: 3 MUSKETEERS®, ®, ®, ® and MALTESERS®.

"17. MALTESERS chocolate balls were introduced in 1936 in the by the Opposer. MALTESERS are crisp honeycombed centres covered in delicious milk chocolate.

"18. MALTESERS chocolate was introduced as a chocolate for weight conscious women as MALTESERS chocolate is low in calories and therefore has fattening, xxx

"20. Almost 80 years today, MALTESERS chocolate have become one of the most popular confectionary brands through innovative developments. It is now known for its tagline 'MALTESERS - THE LIGHTER WAY TO ENJOY CHOCOLATE' worldwide.

Reputation of MALTESERS chocolate

"21. Since its introduction in 1936, MATESERS chocolate is extensively advertised and promoted worldwide. Because of this, MALTESERS chocolatehas attained substantial goodwill and esteemed reputation worldwide through advertisements, promotions and publications, xxx "22. Today, MALTESERS chocolates are advertised in various media. The Opposer also maintains several websites and social networking sites dedicated for MALTESERS chocolates, such as:

• https://www.maltesers. co.uk/ • http://www.maltesres.de/ • https://www.facebook.com/Maltesers • https://www.facebook.com/maltesersaustralia

"23. As a result of the extensive promotions conducted globally, sales of MALTESERS chocolates continue to grow. MALTESERS chocolates are now being sold in 38 countries worldwide, x x x

"24. Because of its quality and taste, extensive promotions and marketing strategies, MALTESERS chocolate is a name in the confectionery industry. The Opposer takespride in the numerous distinctions that MALTESERS chocolates achieved throughout the years. Some of the awards given to the reputable brand are set forth below: x x x

"25. According to Superbrands Annual 2012, in the UK, the chocolate market is valued at £3.344 billion and is growing at 3.3 percent year-on- year. MALTESERS chocolate also plays a key role in the substantial bite size category which is valued at £515 million and is growing at 4.1 percent.

27. Because of the fame and the great taste of MALTESERS chocolate and its market share in the UK, some facts capturing its reputation and market share, x x x

"28. Today, MALTESERS is the 20th biggest global brand despite its absence in key marks, x x x

"29. Because MALTESERS chocolate has significant brand equity, the Opposer has extended the brand through brand extensions. One type of brand extension is called 'line extension' where new sizes, models, flavours orother variants of an existing product in the same category are launched. For MALTESERS chocolate, the Opposer has extended the brand in the form of seasonal variants as shown below: x x x

"30. Consumers readily perceive the connection between these brand extensions to MALTESERS chocolate because of the strong reputation and brand recall for the mark MALTESERS for chocolate.

"31. In the Philippines, MALTESERS chocolates were first introduced in 2000. The goods were used in the Philippines for 15 years now.

"32. MALTESERS chocolates arealso extensively advertised and promoted in the Philippines in various media.

4 "33. MALTESERS chocolates are available nationwide in groceries and department stores, such as the following:

1. Gaisano Grand Mall 2. Mercury Drugstore 3. Puregold Price Club 4. Robinson's Supermarket 5. Rustan's Supermarket 6. Shopwise 7. Waltermark Supermarket 8. Watson Personal Care

Rights to the MALTESERS mark

"34. The mark MALTESERS was first registered in INDIA on 20 November 1945. Details of the registration areas follows:

Mark MALTESERS Registration No. 115366 Registration Date 20 November 1945 Goods/services Confectionary, sweets and sweetmeats

"35. Today, there are about 430 registrations and applications for the mark MALTESERS in 174 jurisdictions worldwide.

"36. In the Philippines, the Opposer owns the following registrations for the MALTESERS marks:

Trademark Registration No. Application Date. MALTESERS 4-1977-27881 MALTESERS 4/2013/00012292 BRANDFLAG DEVICE MALTESERS 25-Oct-13 INNOMINATE DEVICE MALTESERS WITH 28-Jan-14 FLOATING CHOCOLATE BALLS COLOUR DEVICE THE LIGHTER WAY TO 4-2012-006399 ENJOY CHOCOLATE & MALTESERS DEVICE (IN COLOUR)

u To support its opposition, the Opposer submitted as evidence the following: Original legalized Verified Notice of Opposition; Legalized Power of Attorney; and Legalized authority of Kim Degnan; and Affidavit of Sophie Anger.4

The Respondent-Applicant filed its Verified Answer on 11 November 2015 wherein it raised, among other things, the following affirmative defenses:

"A. The Opposition should be dismissed outright for Opposer's failureto comply with Inter Partes Rules requiring the authentication of the Verification and Certification of Non-Forum Shopping of the Opposition as well as its supporting affidavit.

"38. At the outset, the instant Opposition suffers from fatal procedural defects that warrant its dismissal.

"39. Rule 2, Sections 7 (a) and (b) of the Inter Partes Rules require that an Opposition must be verified and accompanied with a certification against non-forum shopping and that the supporting affidavits, if any, must be attached thereto.

"40. If the aforesaid documents are executed abroad, Section 7(b) of the Inter Partes Rules mandates that they be duly authenticated before the Philippine diplomatic or consular office prior to the filing of the opposition, x x x

"41. Pursuant to Rule 2, Section 8 (c ) of the Inter Partes Rules, non- compliance with the foregoing requirements warrants the outright dismissal of the opposition, xxx

"43. In addition thereto, according to Rule 7, Section 4 of the Rules of Court (which is of suppletory application) a pleading required to be verified that lacks a proper verification is an unsigned pleading. Section 3 of Rule 7 further states that 'an unsigned pleadinghas no legal effect'. Thus, on this ground alone, the Opposition is effectively a mere scrap of paper which should merit an outrightdismissal.

"44. Moreover, under Rule 7, Section 5 of the Rules of Court, failure to comply with the Certification requirements is cause for dismissal of the complaint or other initiatory pleading. Thus, the Opposition must likewise be dismissed based on the defective Certification which is a fatal omission.

"45. Through its Compliance dated 21 July 2015, Opposer submitted the 'Original legalized Affidavit of Kim Degnan' (this should be the Affidavit of Sophie B. Anger). Kim Degnan or Kimberly LynnDegnan appears to be the Notary Public of New Jersey who notarized the

4 Exhibits "A" to "PPP" inclsuive of submarkings. Affidavit of Ms. Anger. Since Ms. Anger's Affidavit was executed abroad, it is required to be authenticated by the appropriate Philippine diplomatic or consular office and the authentication must be completed before the filing of the opposition. However, the Opposer had Ms. Anger's Affidavit authenticated by the U.S. Department of State and by the Philippine Embassy only on 23 June 2015 or four days after the filing of the Opposition.

"46. Notably, the Opposer committed a similar violation in Inter Partes Case No. 14-2015-00170. Saidcase relates to the opposition filed by the Opposer against Respondent-Applicant's application for registration of its 'MALTITOS' mark. This Honorable Office, through the Director of the Bureau of Legal Affairs, dismissed said case outright because the Opposer's verification, certification of non-forum shopping and the power of attorney were authenticated 6 days after filing of the Opposition. The instant Opposition deserves the same treatment and should likewise be dismissed.

"B. The Opposition should be dismissed as the Opposer does not have the capacity to sue in the Philippines.

"C. Respondent-Applicant's 'DELFI' and derivative 'DELFI MALTITOS' marks are well-known in the Philippines and internationally. These marks are registered or have pending applications for registration in the Philippines as well as in other Paris Convention signatory countries.

"D. There is no confusing similarity between 'DELFI MALTITOS' mark and 'MALTESERS' marks."

The Respondent-Applicant submitted the following as evidence: Affidavit of Atty. Gibert Raymund T. Reyes; Annual Report of Petra Foods for 2014 and 2006; History of Petra Foods; Trademark registration no. 051157 for "DELFI"; Summary of "DELFI" trademarks in other jurisdictions; Certified true copies of the Securities and Exchange Commission Articles of Incorporation and General Information Sheet of DELFI FOODS and DELFI MARKETING; Print-out of application details of "Delfi" marks from the IPO trademark database; summary of "MALTITOS" trademarks registered in other jurisdictions and copies of registration records of "MALTITOS" marks in various countries; copy of trademark application and certificate of registration of the mark "GOYA MALTITOS".5

During the Preliminary Conference held on 29 June 2016, the parties were required to submit their respectiveposition papers. Both parties filed their position papers on 11 July 2016.

5 Exhibits "1" to "14" inclusive of submarkings. Should the Respondent-Applicant be allowed to register the trademark DELFI MALTITOS ?

As regard to the procedural issue raised by the Respondent-Applicant, Section 7(b) of the Inter Partes Rules provide, to wit:

...The verification and certification of non-forum shopping as well as the documents showing the authority of the signatory or signatories thereto, affidavits and other supporting documents, if executed and notarized abroad, must have been authenticated by the appropriate Philippine diplomatic or consular office. The execution and authentication of these documents must havebeen done before the filing of the opposition or petition.

Records show that the Opposer submitted in its Compliance dated 16July 2015 the following: Legalized Power of Attorney dated 14 May 2015 signed by Kim Degnan and Power of Attorney dated 15 January 2015 signed by Scott E. Thompson, that was authenticated on 9 June 2015; and Legalized authority of Kim Degnan dated 14 May 2015; Original legalized Verification and Certification of Non-Forum Shopping of the Notice ofOpposition dated 14 May 2015 signed by Kim Degnan and authenticated on 9 June 2015. These documents were executed, notarized and authenticated before or at the time of the filing of the Opposition on 16 July 2015. The Affidavit of Sophie Anger was executed on 3 June 2015, legalized on 15 June 2015and authenticated on 25 June 2015. The Bureau considers the same as substantial compliance with the rules.

The competing marks, depicted below:

Opposer's marks

MALTESERS

Respondent-Applicant's mark

DELFI MALTITOS

An assessment of the marks show that both consist of three syllables and contain the prefix, comprised of the letters "MALT". The last letter of both marks is "S". This similarity does not automatically result to a finding of confusing similarity between the two marks. When pronounced, the suffixes "TITOS" and "TESERS" are aurally different and distinct. In addition, the Respondent-Applicant's mark is composed of two words, "DELFI" and "MALTITOS". Visually, the marks are dissimilar. The Opposer's mark is also presented in distinctive white stylized letters surrounded by brown, round chocolates. In contrast, Respondent-Applicant's "DELFI" mark appears in it various

8 products6 in unique presentations. The evidence shows that other trademark applications/registrations of the Respondent-Applicant contain the word "DELFI" appended to other words such as "DELFI CHITATOS"7; DELFI TOPCHEESE8; DELFI CHACHA9; DELFI TREASURES10. Therefore, when the imagesof the marks are juxtaposed beside each other, on account of the difference in commercial presentation of the marks, mistake, confusion as to source or even deception is not likely.

In the case of Taiwan Kolin Corporation, Ltd. v. Kolin Electronics, Co., Inc.11, the Supreme Court held:

While both marks refer to the word 'KOLIN' written in upper case letters and in bold font, the Court at once notes the distinct visual and aural differences between them: Kolin Electronics' mark is italicized and colored black while that of Taiwan Kolin is white in pantone red color background. The differing features between the two, though they may appear minimal, are sufficient to distinguish one brand from the other.

It cannot be stressed enough that the products involved in the case at bar are, generally speaking, various kinds of electronic products. These are not ordinary household items, catsup, soy sauce or soap which are of minimal cost. The products of the contending parties are relatively luxury items not easily considered affordable. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mullover his purchase. Confusion and deception, then, is less likely, xxx"

In the instant case, a customer intending to buy Respondent-Applicant's goods, bearing the mark "DELFI MALTITOS" would not immediately form a connection that the goods are that of the Opposer's, simply because the marks have the prefixes "MALTI" and "MALTE".

WHEREFORE, premises considered, the instant Opposition to Trademark Application No. 4-2013-00002847 is hereby DISMISSED. Let the filewrapper of the subject trademark be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action.

SO ORDERED. TaguigCity, 11 DEC 2017 ■

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

6 Page 9 of the Verified Answer. 7 Exhibit "10-A" 8 Exhibit "10-B" 9 Exhibit "10-D" 10 Exhibit "10-E" 11 G.R. No. 209843, March 25, 2015