IP INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES PARFUMS CHRISTIAN DIOR, } IPCNo. 14-2011-00054 Opposer, } Opposition to: } Appln. Serial No. 4-2010-002858 } Date Filed: March 15,2010 TM: "ADORED" -versus- } } } } SUYEN CORPORATION, Respondent- Applicant. } —x NOTICE OF DECISION HECHANOVA BUGAY-VILCHEZ Counsel for Opposer Ground Floor, Salustina D. Ty Tower 104 Paseo de Roxas, Makati City MIGALLOS & LUNA LAW OFFICES Counsel for Respondent- Applicant 7th Floor, The Phinma Plaza 39 Plaza Drive, Rockwell Center Makati City GREETINGS: Please be informed that Decision No. 2016 - 4U dated November 15, 2016 (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 Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees. Taguig City, November 16, 2016. 43mT« MARILYN F. RETUTAL IPRS IV Bureau of Legal Affairs Republic of the Philippines INTELLECTUAL PROPERTY OFFICE Intellectual Property Center # 28 Upper McKinley Road, McKinley Hill Town Center, Fort Bonifacio, Taguig City 1634 Philippines •www.ipophil.aov.ph T: +632-2386300 • F: +632-5539480 •[email protected] IP PHL INTELLECTUAL PROPERERTY OFFICE OF T PHILIPPIN es PARFUMS CHRISTIAN DIOR, IPC N0- 14 - 2011 ' 00054 Opposer, Opposition to: - versus - Appln Serial No. 42010002858 Date filed: 15 March 2010 TM: "ADORED" SUYEN CORPORATION, Respondent-Applicant. ,.„ DECISION NO. 2016 -4// x x DECISION PARFUMS CHRISTIAN DIOR (Opposer)1, filed an Opposition to Trademark Application Serial No. 4-2011-00054. The application filed, by SUYEN CORPORATION (Respondent-Applicant)2, covers the mark "ADORED" for "body spray, cologne, eau de toilette" under Class 3 of the International Classification of Goods.3 The Opposer's based its Opposition on the following grounds: 1.) Opposer is the prior adopter, user and owner of the internationally well known trademark "J'ADORE"; 2.) Respondent-Applicant's mark being confusingly similar to that of the Opposer's, Respondent-Applicant's Application should be denied; and 3.) Opposer's J'ADORE trademark is internationally well-known and thus entitled to protection. The pertinent portions of the Opposition are quoted, to wit: "9. Opposer is the owner of internationally well-known trademark 'J'ADORE' registered in the Philippines with the Intellectual Property Office (IPO) since October 30, 2004, under Certificate of Registration No. 41999002399 for goods under class 03 specifically perfumery products, perfumes, essential oils, cosmetic, hair lotion soaps, dentifrices, x x x "10. Opposer, a world leader in fashion, fragrance and jewellery is the prior adopter, user and true owner of the mark 'J'ADORE' in the Philippines and 1 A corporation organized under the laws of France with business address at 33 Avenue Hoche 75008 Paris, France. 2 A corporation organized under Philippine law with address at 2214 Tolentino Street, Pasay City 3 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. Republic of the Philippines INTELLECTUAL PROPERTY OFFICE Intellectual Property Center # 28 Upper McKinley Road, McKinley Hill Town Center, Fort Boniffccio, Taguig City 1634 Philippines •www.ipophil.aov.ph T: +632-2386300 • F: +632-5539480 •[email protected] elsewhere around the world. It commenced using the said name in 1999 when it launched as one of its perfume brands the 'J'ADORE' perfume by Dior, xxx "11. 'J'ADORE' is a French word which literally means 'I adore.' It is pronounced as 'zha door', hence, phonetically and aurally similar to the mark ADORED of Respondent-Applicant which mark is a translation and therefore, has a similar meaning of the J'ADORE mark. "12. Opposer's mark has acquired immense and valuable goodwill as a result of enormous sums of money spent in advertising, promotions and sales worldwide. The total annual worldwide sales of Opposer for products bearing the mark J'ADORE exceeds Euro 20 million xxx "13. Opposer maintains a website www.dior.com where information about its products, including "J'ADORE" can be viewed and easily accessed worldwide, xxx "14. Opposer's mark being so well-known, that by simply surfing and clicking the Opposer's well-known mark in the internet, several web pages carrying Opposer's product bearing the mark "J'ADORE" would be shown. xxx "15. Respondent-Applicant's trademark is technical and confusingly similar with Opposer's trademark and 'J'ADORE', for which Opposer has already obtained an earlier registration with the IPO, as earlier stated. "16. The pronunciation of 'J'ADORE' is [zha-door], which sounds like Respondent-Applicant's trademark 'ADORED'. In the case of Prosource International Inc. vs. Horphrag Research Managemnet S.A., the Supreme Court ruled that "nevertheless when two words are pronounced, the sound effects are confusingly similar not to mention that they are both described by their manufacturers as a food supplement and thus, identified as such by their public consumers. And although there were dissimilarities in the trademark due to the type of letters used as well as the size, color and design employed on their individual packages/bottles, still the close relationship of the competing products' name in sounds as they were pronounced, clearly indicates that purchaser could be misled into believing that they are the same and/or originates from a common source and manufacturer. "17. Respondent-Applicant's mark is a word mark composed of six (6) letters: A, D, O, R, E, D. It is readily apparent that Respondent-Applicant's mark has incorporated nearly the entirety of Opposer's registered 'J'ADORE', with the exception of the J. Undoubtedly the portion "ADORE" of the Respondent-Applicant's mark comprising five (5) out of six (6) letters of its mark, is IDENTICAL with Opposer's registered 'J'ADORE' mark, in spelling and in sound. "18. The dominant feature of Respondent-Applicant's mark is obviously the word "ADORE" since its mark "ADORED" is the past tense of this word- verb. The confusing similarity between Respondent-Applicant's ADORED and Opposer's well known 'J'ADORE' trademarks is highly likely to deceive the purchasers of goods on which the mark is being used as to the origin or source of said goods and as to the nature, character, quality and characteristics of the goods to which it is affixed. Furthermore, the unauthorized use by the others of a trademark similar or identical to Opposer's 'J'ADORE' trademarks will certainly dilute the distinctiveness of the latter, and adversely affect the function of said trademarks as an indicator of origin, and/or the quality of the product. "19. Section 123. l(d) of the IP Code is clear in prohibiting the registration of trademark that nearly resemble an already registered mark or a mark with an earlier filing or priority date if it nearly resembles such a mark as to be likely to deceive or cause confusion x x x "20. The registration of the mark ADORED in the name of the Respondent* Applicant will mislead the public into thinking that the Respondent* Applicant's goods are manufactured and/or distributed by the Opposer, or at the very least, affiliated with the Opposer and/or the Opposer's goods. "21. The Supreme Court has also ruled in Mirpuri vs. Court of Appeals, Director of Patents and Barbizon Corp. that the 'function of a 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." "22. Opposer is engaged in the business of selling fragrances, perfumery, cosmetics and the like. Meanwhile, the goods covered by Respondent- Registrant's registration in Class 03 covering identical or similar goods. "23. Not only does Respondent-Applicant's trademark sounds identical to that of Opposer, but the classes of goods it sells is also similar, and due to the nature of its products, it is reasonably expected that this would be sold in the same channels of trade, such as department stores, hence, confusion on the mind of the public is certain. xxx "26. Opposer's "J'ADORE" trademark is registered all over the world in over one hundred (100) countries and Opposer has over one hundred fifty (150) trademark registrations in said countries, making the same intentionally well-known xxx "28. The registration of the mark 'ADORED' in the name of Respondent- Applicant violates the exclusive proprietary rights of the Opposer over its own mark and irreparably injures or damages the interest, business reputation and goodwill of the aid mar. The registration of the Respondent- Applicant's mark dilutes the distinctiveness of Petitioner's mark, thereby reducing the economic value. It cannot be denied that Respondent- Applicant's intention is to ride on the popularity of the Opposer's mark, particularly in the perfume business. "29. Clearly, the registration of the Respondent-Applicant's mark which is confusingly similar to Opposer's mark, not only prejudices the Opposer, but also allows the Respondent-Applicant to unfairly benefit from and get a free ride on the goodwill of Opposer's internationally well known mark 'J'ADORE.'" To support its Opposition, the Opposer submitted the following: 1. Exhibit "A" - Special Power of Attorney; 2.