IP~ PHL'-:.1 1 T OFFICE of the DIRECTOR GENERAL .~ 1 I International Foodstuffs Co., Appeal No

o o II IP~ PHL'-:.1 1 t OFFICE OF THE DIRECTOR GENERAL .~ 1 I International Foodstuffs Co., Appeal No. 04-09-06 Appellant, Application No. 4-2006-012492 I -versus- Date Filed: 30 November 2006 I Director of the Bureau of Trademark: PICCADELI Trademarks, Appellee. x----------------------------------x DECISION International Foodstuffs Co. ("Appellant") appeals the decision of the Director of the Bureau of Trademarks ("Director") sustaining the final rejection of the Appellant's application for the registration of the mark "PICCADELI". Records show that the Appellant flied on 30 November 2006 the trademark application for PIC CADELl for use on goods' falling under Class 30 of the Nice ClassifIcation.2 The Examiner-in-Charge ("Examiner") issued an official action" which states that the mark cannot be registered because it nearly resembles a registered mark belonging to a different proprietor and the resemblance is likely to deceive or cause confusion. The Appellant flied on 08 February 2007 a "RESPONSIVE ACTION" claiming that its mark and the mark cited by the Examiner have significant differences preventing the likelihood of confusion among the consumers. Subsequendy, the Examiner issued a "FINAL REJECTION,,4 of the trademark application. On 02 July 2007, the Appellant flied in the Bureau of Trademarks a "NOTICE OF APPEAL". After the appropriate proceedings, the Director denied the appeal and sustained the final rejection of the Appellant's trademark application for PICCADELI. On 11 December 2009, the Appellant flied a "MEMORANDUM ON APPEAL" contending that its mark is spelled and presented in block letter format which is different from the mark cited by the Examiner which is a composite one with a word I Class 30 - coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; chocolates and chocolate products, candies, biscuits, pasta, macaroni, noodles, spaghetti and other products made from cereals. 2 The Nice Classification is a classification of goods and services for the purpose of registering trademarks and service marks, based on a multilateral treaty administered by the World Intellectual Property Organization. This treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957. 3 Paper No.3 mailed on 11 December 2006. 4 Paper No. 05 mailed on 01 March 2007. Republic of the Philippines INTELLECTUAL PROPERTY OFFICE Intellectual Property Center # 28 Upper McKinley Road. McKinley HIli Town Center.Fort Bonifacio, Taguig City 1634 Philippines www.ipophil.gov.ph T· +A~')_')~A'1()() F' +A~?-."i."i~94RO [email protected] j f o o II part accompanied by a device. According to the Appellant, in determining whether one ! ! .~ mark resembles or is confusingly similar to another, a number of factors, other than phonetic similarity should be taken into consideration. The Appellant claims that the factors that should be considered are sound, appearance, form, style, shape, size, format, color, ideas connoted by marks, the meaning, spelling and pronunciation of words used, I ! the setting in which the words appear, the class of persons who buy the particular product and the circumstances ordinarily attendant to its acquisition, and the class and I kind of goods covered by the marks. The Appellant maintains that the resort to the ! I "idem sonans" argument is not applicable and that the visual presentation of a mark j should be upheld. The Director filed on 20 January 2010 her "COMMENT" asserting that I PICCADELI and the cited mark "Piccadilly & Device" are pronounced similarly that the likelihood that one would be confused with the other is almost certain. The Director claims that the differences in spelling or the visual presentations of the marks would hardly matter if both marks are pronounced the same way or almost, similarly, such that 1 a consumer will not be able to distinguish one from the other. The issue in this appeal is whether the Director was correct in sustaining the final rejection of the Appellant's application to register PICCADELI. i , Sec. 123.1(d) of the IP Code, states that a mark cannot be registered ifit: (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: I (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 I confusion; 1 In this case, the Appellant's trademark application was filed on 30 November 2006 while the trademark application that was cited by the Examiner to reject the j registration of PICCADELI was filed on 20 November 2001 and which was, subsequently, registered on 26 July 2002.5 In this regard, both marks are used on related goods which fall under the same Class 30. The relevant question, therefore, is whether 1 PICCADELI resembles Piccadilly & Device as to likely deceive or cause confusion. Below are the illustrations of these marks: IJ 5 For goods on Class 30 namely - pizza crust, lenguas de gato, brownies, ensaymada, sansviral, pizza pie, caramel tarts, pineapple tarts, cashew tarts, napoleons, panaditas, food for the gods, crema de fruta, caramel rote, chocolate cake, butter cake, fruit cake, taisan, cinnamon roll, chocolate roll, yema roll, mocha roll, mango cake, banana crunch, chocolate chips cookies, paciencia, french cookies, adobo roll, tuna roll, meat roll, cannellones, baked macaroni, paella a la valenciana, lasagna, ravioli, pastel de pollo, pastel de lengua. 1. \, I, o e I PICCADELI I Appellant'smark Citedmark theExaminer I by ! i A scrutiny of these marks indicates their substantial similarity, visually and aurally. The marks are composed of the letters "p", "i", 'c", "c", "a", "d" and "1" and are I pronounced similarly. These similarities can create a likelihood of confusion to the purchasing public. As correctly pointed out by the Director: 1 A consumer would ordinarily communicate what he intends to purchase by the i words that appear on a mark and not through a description of its design element. Verily, 1 the differences in spelling or the visual presentations of marks would hardly matter if i both marks are nevertheless pronounced the same way or at least, closely enough such ~ that a consumer will still not be able to distinguish one from the other." I The similarity in the sound of PICCADELI and Piccadilly & Device and their 1 visual presentations are sufficient grounds to conclude that these marks are confusingly i similar when applied to their respective goods. The presence of a design in Piccadilly & Device and the differences in some letters in the words "PICCADELI" and "Piccadilly" I are not substantial enough to bar a finding of confusing similarity and allow the registration of PICCADELI. It should be emphasized that these marks are to be used on the same line and class of goods i.e., pasta, pastry, macaroni and chocolate products which increases the likelihood of confusion. In the related case of Maroex Commercial I Co., Inc. us. Petra Hawpia & Co., et af the Supreme Court of the Philippines held that: i "SALONPAS" and "LIONPAS", when spoken, sound very much alike. I Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties. 1 j The essence of trademark registration is to give protection to the owners of J trademarks. 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 I instrumental in bringing into the market a superior article of merchandise, the fruit of i 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 8 1 sale of an inferior and different article as his product. The confusing similarity of the contending marks may create a likelihood of confusion as to the source or origin of the goods to which the marks are affixed. The 1 purchasing public may be misled to believe that the products of the Appellant are those I of the owner of the mark Piccadily & Device. In addition, in instances where a person 6 See Decision, dated 16 November 2009, page 4. 7 G. R. No. L-19297, 22 December 1966. 8 PribhdasJ. Mirpuri us. Court ofAppeals, G.R. No. 114508,19 November 1999. I, , ] 1 1 o o ! may not necessarily see the goods being sold and would only mention to the seller the words "PICCADELI" or "Piccadilly", the similarity in the pronunciation and the class of goods increases the likelihood of confusion that PICCADELI may be mistaken as J I Piccadily or vice versa. Therefore, to allow the Appellant to register PICCADELI would go against the I provision of Sec. 123.1 (d) of the IP Code. The rights in a mark shall be acquired t through registration made validly in accordance with the provisions of the law.9 I 1 Accordingly, the Director was correct in sustaining the final rejection ofPICCAD ELI. I I 1 WHEREFORE, premises considered, the appeal is hereby DISMISSED. Let a i copy of this Decision as well as the trademark application and records be furnished and returned to the Director of the Bureau of Trademarks. Let a copy of this Decision be 1 furnished also the library of the Documentation, Information and Technology Transfer j Bureau for its information and records purposes.

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