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Please Be Informed That Decision No IP PHL ROCKWELL CORPORATION, } IPC No. 14-2012-00192 Petitioner, } Petition for Cancellation of: } } Reg. No. 4-2010-006090 ■versus- } Date Issued: 24 March 2011 } MICHAEL LLOYD L DINO, } TM: EDADES Respondent-Registrant. } NOTICE OF DECISION QUIASON MAKALINTAL BAROT TORRES IBARRA & SISON Counsel for Petitioner 21st Floor, Robinsons-Equitable Tower 4 ADB Avenue corner Poveda Street, 1605 Ortigas Center, Pasig City ALVAREZ NUEZ GALANG ESPINA & LOPEZ Counsel for Respondent- Registrant Suite 904, 9th Floor, Cebu Holdings Center Cebu Business Park-Ayala, 6000 Cebu City GREETINGS: Please be informed that Decision No. 2016 - Slip dated 23 December 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 the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees. Taguig City, 06 January 2017. 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.qov.ph T: +632-2386300 • F: +632-5539480 »[email protected] OFFICE OF THE PHILIPPINE! ROCKWELL CORPORATION, } IPC No. 14-2012-00192 Petitioner,} Cancellation of: Registration No. 4-2010-006090 -versus- j Issued On: 24 March 2011 } Trademark: "EDADES" MICHAEL LLOYD L. DINO, } Respondent-Registrant. } x x Decision No. 2016- DECISION ROCKWELL CORPORATION1 ("Petitioner") filed a petition to cancel Trademark Registration No. 4-2010-006090. The registration, issued in favor of Michael Lloyd L. Dino2 ("Respondent-Registrant"), covers the mark "EDADES" for use as or to "engaged in the business of realty, namely, toxunhouses, townhomes, subdivisions, condominiums" under Class 36 of the International Classification of Goods and Services.3 The Petitioner alleges: XXX "3. The petition seeks to cancel respondent's Registration No. 4-2010-006090 for EDADES, pursuant to Section 151 of Republic Act 8293, otherwise known as the Intellectual Property Code of the Philippines (the 'IP Code'), which accords to the aggrieved party, like the petitioner, the right to cancel a trademark registration that impairs ones IP rights over the disputed trademark, or was obtained 'fraudulently' or 'contrary to the provisions of Act\ "4. To further substantiate petitioner's claim against respondent, petitioner encloses herewith the: Affidavit of Julius A. Marzona, Vice President for Project Development, as Exhibit 'A'; Affidavit of Patricia T. Rufino, Design Manager, as Exhibit 'B', Affidavit of Vienn C. Tionglico, Marketing Manager, as Exhibit 'C; and Affidavit of Nemesio O. Rodriguez, the IP investigator engaged by petitioner in connection with respondent's illegal appropriation of petitioner's EDADES trademark, as Exhibit 'D'. "5. Petitioner also encloses herewith the Secretary's Certificate to attest to the authority of the signatories hereof. A corporation organized and existing under the laws of the Republic of the Philippines, with principal place of business at the Rockwell Information Center, Rockwell Drive, Makati City, Philippines. 2With address at No. 41 Paseo Annabelle, Maria Luisa Estate Park, Banilad Cebu City 6000. The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957. 1 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] "Petitioner will prove and rely upon the following facts in support of the Petition: That - "6. Being the rightful owner and prior user of the EDADES trademark in the real estate development of condominiums, real estate management, leasing and related business in the Philippines; having adopted and used the EDADES trademark in its posh residential condominium project, called 'EDADES TOWER AND GARDEN VILLAS' (hereinafter referred to as the 'EDADES Tower') since December 2007, and continuously up to the present, petitioner filed an Application No. 4-2010-011100 to register its 'EDADES TOWER AND GARDEN VILLAS & Device' (hereinafter referred to as the 'EDADES trademark') in real estates services (viz., rental of residential and business spaces, real estate management, real estate leasing in class 36, and real estate development of condominium in class 37), with the Intellectual Property Philippines- Bureau of Trademarks on October 8, 2010. x x x "7. Petitioner learned of respondent's illegal appropriation of the EDADES trademark when respondent's Registration No. 4-2010-006090 was cited against petitioner's Application No. 4-2010-011100, in which the examiner, Ms. Jennifer Lou Dinopol, issued office actions Paper Number 4 and 6, rejecting the registration of the EDADES trademark, x x x "8. Petitioner did not that respondent jumped on it the registration of the EDADES trademark until it received the said office actions. Respondent filed Application No. 4-2010-006090 to register the EDADES trademark, also in real estate services (viz., 'engaged in the business of realty, namely, townhouses, townhomes, subdivisions, condominiums in class 36') in June 2010, even if petitioner has been using long before the date the EDADES trademark in its EDADES Tower. "9. The EDADES in Registration No. 4-2010-006090 is an exact copy of the EDADES in petitioner's Application No. 4-2010-011100 and EDADES Tower. Please observe the disputed trademarks; viz., xxx "10. Petitioner is a premier real estate development company in the Philippines that pioneered in 1995 the construction of luxury residential condominiums, using groundbreaking construction innovations: viz., the lofts, the Z-Iofts, the garden Z- lofts, and the garden villas, in a master-planned self contained, high-end living environment - the residential condominiums are called the Amorsolo Square, the Luna Gardens, the Rizal Tower, the Hidalgo Place, The Manansala, the Joya Lofts and Towers, the One Rockwell, and The Grove by Rockwell (hereinafter referred to as the 'signature condominiums'). "11. These signature condominiums were created with a vision that they were masterpieces (works of art in every detail), and made synonymous with luxury and exclusivity in residential condominium way of living, in which petitioner became known in the real estate development industry as the more preferred provider of dwelling places for the high-end and upper-mid markets. "12. Following the successes of its signature condominiums, petitioner created the EDADES Tower, another upmarket 50-storey residential condominium that incorporated some of petitioner's innovative construction designs (the lofts, the garden Z-lofts, and the garden villas) and petitioner's signature of luxury and exclusivity in residential condominiums, in December 2007. "13. Petitioner, not the respondent, is the prior user and rightful owner of the EDADES trademark in the real estate development of condominiums, real estate management, real estate leasing and related services or business in classes 36 and 37, in the Philippines. "14. Petitioner started actual use of the EDADES trademark particularly in the architectural and/or construction design preparation, obtaining licenses and clearances, pre-construction and construction of the EDADES Tower, in December 2007, and continuously up to the present. "15. Petitioner invested heavily in construction cost of the EDADES Tower. The EDADES Tower is a PHP 5 Billion business venture, and petitioner is committed to spend this remarkable amount to keep the EDADES Tower on a par not only with its signature condominiums, but also with the most sought after residential condominiums in the world, and to establish and maintain the goodwill and reputation of the EDADES trademark. "16. Petitioner also invested substantial amount of money in the promotion and marketing of the EDADES trademark in the real estate development of condominiums, real estate management and real estate leasing in the Philippines. "17. In fact, as against respondent, petitioner was the first to promote and market the EDADES trademark in the real estate development of condominiums and related real estate services, in many forms of print and broadcast media and other forms of marketing campaigns. "18. Petitioner has earmarked more than two percent (2%) of the total project cost, or close to PHP 150 Million, for the promotion and advertisement of the EDADES trademark and the EDADES Tower in the Philippines and other parts of the globe, in all forms of print and broadcast media and other forms of marketing campaigns, in order to make known to the public its ownership of the EDADES trademark in the real estate development of condominiums and related real estate services or business, and the amenities and quality of lifestyle to expect from the EDADES Tower. "19. Petitioner posted and conspicuously displayed the EDADES trademark and the EDADES Tower in the World Wide Web, located at http://www.e- rockwell.com/edades/, and this website is accessible to all people in
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