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INTELLECTUAL PROPERTY OFFICE IPO Building, 3 51 Sen Republic of the Philippines OFFICE OF THE PRESIDENT OAKLEY, INC., APPEAL NO. 14-03-25 Petitioner-Appellee, INTER PARTES CASE NO . 4079 Petition for Cancellation : TM Registration No. 57569 - versus - Issued: 05 April 1994 Trademark: "OAKLEY" For: T-shirts, shorts, pants, sandos, WILLIE A. LAO, jeans, jackets, sweatshirts, Respondent-Registrant-Appellant . socks, polos X----- ---------X DECISIO N This concerns Decision No . 2002-13 rendered by the Director of the Bureau of Legal Affairs (Director) on 13 June 2002 granting the Petition for 10 Cancellation filed by the Appellee OAKLEY, INC . (Appellee)' for the cancellation of Certificate of Registration No . 57569 issued on 05 April 1994 for the trademark OAKLEY of the Appellant WILLIE A . LAO (Appellant) Z used on t-shirts, shorts, pants, sandos, jeans, jackets, sweatshirts, socks and polos under Class 25 of the International Classification of Goods3 . • The controversy involves the determination as to : 1 A corporation organized and existing under the laws of the State of Washington, U .S.A. with principal office at 10 Holland, Irvine, California 92718, U .S.A. (see Decision No. 2002-13 dated 13 June 2002, page 1). 2 Filipino citizen, with office address at 195-H, 8th Avenue Extension, Grace Park, Caloocan City, Philippines (see Decision No . 2002-13 dated 13 June 2002, page 1) . 3 Also known as the Nice Classification . It is based on a multilateral treaty administered by World Intellectual Property Organization, called the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks, which was concluded in 1957 . The Agreement is open to States party to the Paris Convention for the Protection of Industrial Property . OCT INTELLECTUAL PROPERTY OFFICE IPO Building, 3 51 Sen. Gil Puyat Avenue. Makati City, Philippines Trunk Line: 752-5450 to 65 Far: 890-4862 E-mail: [email protected] Website: http://ipophil.govph 1 . Whether or not the Appellant's mark OAKLEY is confusingly similar to that o f the Appellee's mark OAKLEY. 2 . Whether or not the Appellant is the prior user and adopter of the mar k OAKLEY. Records show that on 07 August 1992, Appellant filed with the defunct Bureau of Patents, Trademarks and Technology Transfer (BPTTT) under the Department of Trade and Industry (DTI) an application for registration of the mark OAKLEY used on t-shirts, shorts, pants, sandos, jeans, jackets, sweatshirts, socks and polos under Class 25 of the Nice Classification . On 05 April 1994 the mark was registered with the Principal Register and Certificate of Registration No. 57569 was issued in favor of the Appellant . Consequently, on 25 August 1994, a Petition for Cancellation was filed by the Appellee, alleging that: 4 1 . The registration of the trademark OAKLEY in the name of the Appellant violates and contravene the provisions of Section 4(d) of Republic Act No . 166, as amended because said mark is confusingly similar to the trademark OAKLEY owned and unabandoned by the Appellee, as to be likely, when applied to or used in connection with the goods of the Appellant to cause confusion or mistake or deceive purchasers thereof ; 2. The registration was obtained fraudulently through misrepresentation befor e the BPTTT; 4 Petition for Cancellation dated 12 July 1994, pages 1-2 . Page 2 of 17 OAKLEY 3. The trademark OAKLEY is known all over the world to be exclusively owned by the Appellee. Hence, the registration of the confusingly identical trademark OAKLEY in the name of the Appellant will be a breach of the clear provisions of Article 6bis of the Paris Convention for the Protection of Industrial Property which is enforced in the Philippines since 27 September 1965; 4. The mark OAKLEY is a tradename/company name of herein Appellee and as such is protectable even without registration pursuant to Article 8 of the Paris Convention and Section 37 of the Philippine Trademark Law ; 5. The registration of the mark OAKLEY in the name of the Appellant will cause grave and irreparable injury and damage to the Appellee within the meaning of Section 8 of Republic Act No . 166, as amended. The Appellee also claimed that:5 • 1 . The Appellee is the true and actual owner of the mark OAKLEY and has registered the same in the U .S.A. and in more than 25 countries outside the U.S.A. ; 2 . The mark OAKLEY (stylized) is a copyrighted property of Appellee ; Id, page 2-3. r Page 3 of 17 OAKLEY OCT 2 2iN3 3 . The mark OAKLEY for clothing, headwear and footwear, and also on protective and/or anti-glare eyewear including sunglasses, spectacles, goggles and their parts and accessories including replacement lenses, earstems, frames, nose pieces and foam strips ; cases specially adopted for protective and/or anti-glare eyewear and their parts and accessories has been used by Appellee since 01 August 1976 (Class 9 : goggles) and 01 June 1977 (Class 25); • 4. Appellee has built an immense and valuable goodwill for its OAKLEY mark due mainly to the vastly superior quality of its products and large sums of money that it has spent for advertising and promoting its goods bearing the OAKLEY trademark; 5. In adopting and using a similar mark on his goods, it is obvious that Appellant, is intending to ride-on and cash-in on the international popularity of Appellee's OAKLEY mark and to palm-off his goods as those • of the Appellee ; 6. The use and registration of the mark OAKLEY by the Appellant will likely cause confusion, mistake and deception to the buying public on the origin of the goods and will definitely dilute the value of Appellee's OAKLEY mark because the mark and goods of the Appellant are confusingly similar if not identical to that of the Appellee's ; Page 4 of 17 OAKLEY In his Answer filed on 07 October 1994, the Appellant interposed th e following:6 1 . The petition is fatally defective in that copies of certificates of registrations of marks, trade names and copyright in other countries and other supporting documents mentioned in the petition were not filed therewith . 2. If Appellee is to be believed that the registration of the mark OAKLEY in the name of Appellant violates and contravenes the provisions of Section 4(d) of Republic Act No . 166, as amended, the then Application Serial No . 81941 of Appellant should have been rejected outright . On the contrary, after the usual process of research and examination, the application was given due course and ripened into Certificate of Registration No. 57569. 3. The accusation of Appellee that the registration was obtained fraudulently through misrepresentation is without any legal or factual basis . The 40 discussion of the registrability of the mark duly signed by the Examiners will attest to the fact that the registration was issued in accordance with the Trademark Law and rules . 4. Article 6bis of the Paris Convention applies only when the mark in question is used on similar goods. The labels attached to the petition upon e Answer, dated 07 October 1994, pages 3-4. Page 5 of 17 OAKLEY OCT 22 2W which the Appellee predicated its action shows that its OAKLEY mark is used on "software" only. 5. The protection afforded to tradename under Article 8 of the Paris Convention applies only in countries where there is no specific provision requiring registration of tradenames to be entitled to protection . In the Philippines, the Trademark Law requires registration of tradenames in order that the owner will be entitled to protection . • 6. The alleged OAKLEY mark of the Appellee which is neither used nor registered in the Philippines is not entitled to protection. Thus, the claim of Appellee that the registration of the trademark OAKLEY in the name of Appellant will cause grave or irreparable inju ry and damage to the Appellee or will likely cause confusion, mistake and deception to the buying public utterly lacks any basis. • 7. Goodwill attaches to a trademark only if the same is used in commerce . Logically, a non-user mark like Appellee's OAKLEY can never attain a simple goodwill, much less an immense and valuable goodwill . Incidentally, on 01 January 1998, Republic Act No. 8293 also known as the Intellectual Property Code of the Philippines (IP Code) took effect. It abolished, among other things, the BPTTT and transferred its functions to the Page 6 of 17 OAKLEY newly created Intellectual Property Office. Accordingly, on 13 June 2002, the Director rendered the assailed Decision, the dispositive portion of which reads, as follows: "WHEREFORE, premises considered, the Petition for Cancellation is hereby GRANTED. Consequently, Certificate of Registration No. 57569 for the mark "OAKLEY" issued in the name of WILLIE A. LAO on 05 April 1994 is hereby ordered CANCELLED. "Let the file wrapper of OAKLEY subject matter of this case be forwarded to the Administrative, Financial and Human Resource Development Se rvices Bureau for appropriate action in accordance with this Decision and a copy thereof furnished the Bureau of Trademarks for information and update of its records." On 28 June 2002, Appellant filed a Motion for Reconsideration prompting the Appellee to file an Opposition on 16 July 2002 . The Director denied the motion per Resolution No. 2003-01 (D) dated 18 February 2003. Not satisfied, the Appellant filed the instant appeal . In its Appeal, the Appellant contends that the decision of the Director granting the petition for cancellation and ordering the cancellation of Ce rtificate of Registration No. 57569 is contra ry to law, jurisprudence and not suppo rted by evidence.' The Appellant also claims that the Director erred in finding that the Appellee is the p rior user of the trademark OAKLEY in the Philippines.8 Fu rther, the Appellant argues that the Director erred in finding that the goods of the Appellee and the Appellant are not totally unrelated to each other and tha t "sunglasses" and "clothing" may both be described as wearing apparel.9 7 'Appellant's Appeal Memorandum dated 10 March 2003, page 4 .
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