INTELLECTUAL PROPERTY OFFICE OF THE

TENCENT HOLDINGS LIMITED, IPCNo. 14-2015-00250 Opposer, Opposition to: Appln. Serial No. 4-2015-002940

-versus- TM: } 1 JOHNSON SALES CU, Respondent- Applicant. --X

NOTICE OF DECISION

FEDERIS & ASSOCIATES LAW OFFICES Counsel for Opposer Suite 2005 88 Corporate Center 141 Valero Street, Salcedo Village City

JOHNSON SALES CU Respondent-Applicant #2-A Pearl Island Compound Malinis Street, Lawang Bato Valenzuela City, Metro

GREETINGS:

Please be informed that Decision No. 2018 - _& . dated April 16, 2018 (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 the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees.

Taguig City, April 16, 2018.

MARILYN F. RETUTAL IPRS IV Bureau of Legal Affairs

® www.ipophil.gov.ph 0 Intellectual Property Center © [email protected] #28 Upper McKinley Road McKinley Hill Town Center 0 +632-2386300 Fort Bonifacio, City li +632-5539480 1634 Philippines INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

TENCENT HOLDINGS LIMITED, IPC N0-14 - 2015 ~ 00250 Opposer,

Opposition to- Application No. 4-2015-002940 - versus - TM:

JOHNSON SALES CU Respondent. DECISION NO. 2018 -JO

DECISION

TENCENT HOLDINGS LIMITED (Opposer), » filed an Opposition to Trademark Application Serial No. 4 - 2015 - 002940. The trademark application filed by MR. JOHNSON SALES CU (Respondent-Applicant)2, covers the mark ^^ or a "two penguin logo," for goods under Class 16 of the International Classification of Goods and Services3 particularly, "Toilet paper, tissue paper, table napkin."

The Opposition is based on the following grounds:

1. The subject mark was filed in bad faith and should therefore not be registered. 2. The subject mark is an exact copy of Opposer's registered trademark, PENGUIN LOGO, which is well known internationally and in the Philippines. 3. The registration of the mark is proscribed by Section 123.1 (e) ofthelPCode. 4. Opposer has already identified its products and services in the mind of the public through its PENGUIN LOGO

1 A foreign corporation with business address at Tencent Building, Kejizhongyi Road, Hi- tech Park, Shenzhen, China. 2 A natural person with address located at #2-A Pear Island Compound, Malinis Street, Lawang Bato, Valenzuela City, , Philippines. 3The 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.

@ www.ipophil.gov.ph Intellectual Property Center

© [email protected] Upper McKinlcy Road cKinUjy Hill lown Center 0 +632-2386300 ri Bonifacio, Pnguiq '. iy A +632-5539480 1634 Philippines trademark and hence, it is entitled to protection under Section 168.1. 5. The subject mark violates Opposer's copyright over the PENGUIN LOGO. The use and registration of the subject mark violates Section 177 of the IP Code.

The Opposer alleges that the parties' contending marks are nearly identical and both are used in connection with the same goods. It claims that it is the true owner of the Penguin Logo having created the same as early as 15 August 2000. Opposer also asserts that it has registrations and pending applications of the similar mark in numerous jurisdiction, and the said Penguin Logo mark is prominently displayed and consistently used in all of the Opposer's services and virtual products. The Opposer further avers that its Penguin Logo mark is a well-known mark pursuant to Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers.

In support of its Opposition, the Opposer submitted the following evidence:

Exhibit "A" - Affidavit of Wang Juan, IP Legal Consultant of Tencent Holdings Limited; Exhibit "B" - Database listing of all Opposer's trademark registrations and applications for the Penguin Logo and variation thereof; Exhibit "C" - Affidavit of Jan Abigail Ponce; Exhibit "D" - Special Power of Attorney and Certification of Authority; Exhibit "E" - Letter of Authorization of Mr. Wang Juan! Exhibit "F' - Affidavit of Xude Zhang, IP Legal Counsel of Tencent Holdings Limited; Exhibit "G-a" - Certified True Copy of Certificate of Trademark Registration No. 300638974 for Penguin Logo issued in Hong Kong; Exhibit "G-b" - Certified True Copy of Certificate of Trademark Registration No. 4764522 for Penguin Logo issued in China; Exhibit "G-c" - Certified True Copy of Certificate of Trademark Registration No. 1770827 for Penguin Logo issued in China; Exhibit"G-d" - Certified True Copy of Certificate of Trademark Registration No. 012237459 for Penguin Logo issued in China; Exhibit "G-e" - Certified True Copy of Certificate of Trademark Registration No. 2003/10234 for Penguin Logo issued in South Africa; Exhibit "G-f' - Certified True Copy of Certificate of Trademark Registration No. 01099184 for Penguin Logo issued in Taiwan; Exhibit "G-g" - Certified True Copy of Certificate of Trademark Registration No. 40-0785851 for Penguin Logo issued in South Korea; Exhibit "G-h" - Certified True Copy of Certificate of Trademark Registration No. KOR199211 for Penguin Logo issued in Thailand; Exhibit "G-i" - Certified True Copy of Certificate of Trademark Registration No. 1925086 for Penguin Logo issued in China; Exhibit "G-j" - Certified True Copy of Certificate of Trademark Registration No. 301038861 for QQ issued in Hong Kong! Exhibit "G-k" - Certified True Copy of Certificate of Trademark Application No. 1648774 for Penguin Logo filed in Canada; Exhibit "G-l" - Certified True Copy of Certificate of Trademark Application No. 1425487 for Penguin Logo filed in Mexico; Exhibit "G-m" - Certified True Copy of Certificate of Trademark Application No. 3286849 for Penguin Logo filed in Argentina; Exhibit "H-a" to "H-c" - Certified True Copy of Official database records from Hong Kong, United States andEuropeanUnion listing all Opposer's trademark registrations and applications including Penguin Logo! Exhibit "I" - Certified true copy of the copyright certificate of Registration No. 19-2001-F485 issued by National Copyright Administration of People's Republic of China, the Guandong Province Copyright Bureau; Exhibit "J-a" to "J-b" - Copies materials discussing popularity and well- known status of Opposer and its Penguin Logo mark; Exhibit "K" - Copies of promotional materials used by the Opposer in promoting and advertising the Penguin Logo; Exhibit "L" - Affidavit of Jan Abigail L. Ponce; Exhibit "M" - Affidavit executed by Xu Yan; Exhibit "N" - Opposer's Certificate of Incorporation on Change of Name; Exhibit "O" - Certificate of Good Standing! Exhibit "P" - Opposer's Company Brochure ; Exhibit "Q" to "Q-2" - Accolades and prestigious awards given to Opposer; Exhibit "R" - Promotional Materials used for the 2012 London Olympics; Exhibit "S" - Certified True Copy of the Certificate of Trademark Registration No. 1962826 issued in China; Exhibit "T" - Certified True Copy of the Certificate of Trademark Registration No. 5101973 issued in China; Exhibit "U" - Certified True Copy of the Certificate of Trademark Registration No. 1583970 issued in India; Exhibit "V" - Affidavit of Jan Abigail Ponce; Exhibit "W"- Printout ofwww.qq.com website; Exhibit "X" - Printout of http7/www.tencent.com/en-us/index.shtml website; Exhibit "Y* - printout of http 7/www.te ncent.com/en- us/ir/factsheet.shtml website; Exhibit "Z" to "Z-4" - printouts of various website about the Opposer; Exhibit "AA" to "AA-6" - Annual reports of Opposer from 2006 to 2012; and Exhibit "BB" - Press release regarding Opposer's final result for the first quarter of 2012.

A Notice to Answer was issued on 15 July 2015 and served a copy to the Respondent-Applicant on 2 October 2015. However, the Respondent-Applicant did not file an Answer to the Opposition. This Office issued anOrder dated 6 May 2016 declaring the Respondent- Applicant in default. Accordingly, this case was submitted for Decision.

The issue to be resolved in this case is whether the Respondent ■ Applicant should be allowed to register the trademark ^3O covered by Trademark Application No. 4-2015-002940.

The trademarks subject of the herein case are reproduced below for comparison:

Opposer's Trademark Respondent's - Applicant's Trademark

From theabove, it is clear that both parties uses a penguin device as their trademark. While the Respondent-Applicant uses two penguins, it is apparent that the illustration of both penguins are very similar to each other. Comparing the picture of the Respondent- Applicant's two penguins with the single penguin device mark of the Opposer, it is evident that the over all presentation of the Respondent- Applicant's penguins, from the head to the body and the feet, including the scarf rolled on the neck of the penguin, are identical to the mark of the Opposer. The sole difference is the presence of a ribbon on the head of the second penguin on Respondent-Applicant's mark, which at best is negligible to eyes of the consumers.

Morever, the similarities are not limited to the illustration alone, records also show that Opposer's products include those in the Class 16 of the Nice Classification, which is the same group of goods subject of the Respondent-Applicants trademark. In fact, Opposer's mark is also used for toilet papers, table napkins and paper towels.4

With the trademarks being virtually identicalin appearance and used on similar and related products, there is nodoubt that they are confusingly similar. It is not implausible to conclude that the consuming public would be mistaken and even associate the products of one party with the other. This results to deception of the consuming public.

Verily, the function of 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.5 Moreover, the protection of trademarks as intellectual property is intended notonly to preserve the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time, but also to safeguard the public as consumers against confusion on these goods.6 In view of the confusing similarity of the mark and since the Opposer is claiming the ownership of the device mark, there is a necessity to determine who between the contending parties has the right over the subject device mark.

From the records of the instant case, the Opposer has sufficiently shown that it has a copyright registrationof the illustration of the identical penguin logo from People's Republic of China with the date of registration as early as 20 June 2001 or almost 14 years prior to the date of the trademark application of herein Respondent.7 The Opposer presented trademark registration from various jurisdictions which dates of application and registrations are from 2002 to 2014.8 Opposer

4 Exhibit "G-a" to "G-m" sPribhdasJ. Mirpuriv. Court ofAppeals, G.R. No. 114508 19 Nov. 1999 6 McDonald's Corporation v. Macjoy Fastfood Corporation 215 SCRA 316, 320 (1992); and Chuanchow Soy & Canning Co. v. Dir. of Patents and Villapania, 108 Phil. 833, 836 (1960). 7 Exhibit "I" 8 Exhibit "G-a" to "G-m" t also presented promotional materials of international events that was conducted earlier than the date of application of the Respondent- Applicant's mark.9

In contrast, the herein Respondent-Applicant first applied for the registration of the virtually identical penguin device mark only on 18 March 2015. The Respondent-Applicant did not present any evidence showing other registration or commercial use prior to its application or before the creation or adoption of penguin device mark by the Opposer. Also, the Respondent did not rebut the evidence submitted by the Opposer and he failed to give any proof that he is the actual originator of the penguin illustration.

Based on the foregoing, the Opposer has sufficiently proven that it is the first user and appropriator of the penguin device trademark which is confusingly similar and virtuallyidentical to the applied Respondent-Applicant's mark. This Bureau finds it very improbable that two different and unrelated parties could create an identical penguin illustration to be used as a trademark for similar and related goods without one copying it from another.

The Supreme Court has consistently held that "a trademark, being a special property, is afforded protection by law. But for one to enjoy this legal protection, ownership of the trademark should rightly be established."10 Corollarily, it is not the application or the registration that vests ownership, but it is the ownership of the mark that confers the right to register the same.11

Definitely, the field from which a person may select a trademark is practically unlimited. As in all other cases of colorable imitation, the unanswered riddle is why, of the millions of terms and combination of design available, the Respondent-Applicant had to come up with a mark identical or so closely similar to another's mark if there was no intent to take advantage of the goodwill generated by the other mark.12 Thus, for having failed to prove his right to register the contested identical trademark, Respondent-Applicant's application for registration of the trademark "4!3^" must not be allowed.

WHEREFORE, premises considered, the instant Opposition to Trademark Application Serial No. 42015002940 is hereby SUSTAINED. Let the filewrapper of Trademark Application Serial No.

9 Exhibit "K" and "R" i° Berris Agricultural Co. Inc. vs. Norvy Abyadang G.R. 183404,13 October 2010 11 Birkenstock Orthopaedie GMBH and Co. KG vs. Philippine Shoe Expo Marketing Corporation, G. R. No. 194307, November 20,2013 u American Wire & Cable Company vs. Dir. Of Patent, G.R. No. L-26557, February 18,1970. 42015002940 be returned together with a copy of this DECISION to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED. P APR 2018

Iver limbo Adjudication Officer Bureau of Legal Affairs