1 IJFFU~F COP" ~iP INTELLECTUAL PROPERTY PHILIPPINES OFFICE OF THE DIRECTOR GENERAL GREEN CAB PIZZA HAUS and/or Appeal No.1 0-07-08 CHRISTOPHER DE LEON BAULA, Appellant, IPV No. 10-2005-00025 For: Trademark Infringement Unfair Competition & Damages with Application for TRO and Preliminary Injunction - versus ­ El(I:L~j::':~l~;;~ Received by: Mc..f}0 l.-.-t\-t'Jl'Y... x On: {lib Time: Office of the Director , ~~ ~t:) '0 Go NOTICE OF DECISION Bureau of Leg" Aft.l" , ~\..~ ~"". ~ i {j\ ~~ON LAYNO LAW OFFICES ESTRELUTAB.ABELARDO U~ 'l,: ~\\" (j\:ct>unsel for Appellant Director ~~ q~~\ Suite 208 Cityland Condominium 8 Bureau of Legal Affairs ~ No. 98 Sen. Gil Puyat Ave., Makati City Intellectual Property Office, Makati City r/t~y TECERO LAW OFFICES - ~A qll(,/~ IP PHILIPPINES LIBRARY (jj)/) Co-Counsel for Appellee Documentation, Information ffechnology CTC Bldg., No. 2232 Roxas Blvd. Transfer Bureau Pasay City, Metro Manila Intellectual Property Office, Makati City BENGZON NEGRE UNTALAN LAW FIRM BENGZON PCEGRE ~TALAM Counsel for Appellee IHIELLECTUAL 'ROPERTY ATTlRN9S 2nd Floor, SEDDCO Building Rada corner Legaspi Streets SEP 1 6 2008 Legaspi Village Makati City ~EC£IV(D BY: (('fA.- VP1 " t~- FAX/MAIL~ I GREETINGS, Please be informed that on 15 September 2008, the Office of the Director General rendered a DECISION in the above-titled case (copy attached). Makati City, 15 September 2008. Very truly yours, I I 1 j 1 ~ ROBERT NEREO B. SAMSON !j Attorney IV ;ERTIFIED TRUE COpy tI ] l YA~JOR/~JN M. PESCASIO Republic of the Philippines J RECORDS OFFICER' 1 INTELLECTUAL PROPERTY OFFICE I.1 j ~ ~iP INTELLECTUAL PROPERTY I PHILIPPINES ! ~ I l OFFICE OF THE DIRECTOR GENERAL -j j GREEN CAB PIZZA HAUS and/or Appeal No. 10-07-08 I CHRISTOPHER DE LEON BAULA, I Appellant, IPV No. 10-2005-00025 For: Trademark Infringement Unfair I Competition & Damages with Application for TRO and Preliminary Injunction - versus ­ YELLOW CAB FOOD CORP., Appellee. Il I X--------------------------------------------------X 1 NOTICE OF DECISION .1 1 AMON LAYNO LAW OFFICES ESTRELLITA B. ABELARDO j Counsel for Appellant Director 1 j Suite 208 Cityland Condominium 8 Bureau of Legal Affairs j No. 98 Sen. Gil Puyat Ave., Makati City Intellectual Property Office, Makati City 1 1 TECERO LAW OFFICES IP PHILIPPINES LIBRARY Co-Counsel for Appellee Documentation, Information & Technology CTC Bldg., No. 2232 Roxas Blvd. Transfer Bureau I Pasay City, Metro Manila Intellectual Property Office, Makati City I BENGZON NEGRE UNTALAN LAW FIRM Counsel for Appellee 2nd Floor, SEDDCO Building Rada corner Legaspi Streets 1 Legaspi Village Makati City GREETINGS: Please be informed that on 15 September 2008, the Office of the Director General rendered a DECISION in the above-titled case (copy attached). 1I J Makati City, 15 September 2008. 1 Very truly yours, ~ ROBERT NEREO B. SAMSON Attorney IV Republic of the Philippines INTELLECTUAL PROPERTY OFFICE - 1 I ~ 1 ~iP INTELLECTUAL PROPERTY 1 PHILIPPINES ~ ! OFFICE OF THE DIRECTOR GENERAL 1j GREEN CAB PIZZA HAUS and/or Appeal No. 10-07-08 1 CRISTOPHER DE LEON BAULA, ~ t Appellant, IPV No. 10-2005-00025 j For: Trademark Infringement -versus- Unfair Competition & Damages with Application for TRO and I YELLOW CAB FOOD CORP., Preliminary Injunction Appellee. 1 x-------------------------------------------x t i 1 1 DECISION I 1 GREEN CAB PIZZA HAUS and/or CRISTOPHER DE LEON BAULA ("Appellant") appeals the Decision No. 2007-07, dated 25 May 2007, of the Director of the Bureau of Legal Affairs ("Director"). The Director held the Appellants liable for infringement and unfair competition for using the mark "GREEN CAB" in their I 1 j pizza business. J Records show that the Appellee filed on 19 July 2005 a "COMPLAINT"· ~ i against the Appellants alleging the following: j 1. It is the owner of the famous service mark "YELLOW CAB PIZZA -~ CO.", registered under Cert. of Reg. No. 4-2001-0073012, and operates I j a chain of pizza restaurants by itself and through the granting of franchises; 'iI ! i, 2. Sometime in April 2005, it came to its attention that the Appellant is operating a pizza restaurant under the service mark "GREEN CAB PIZZA HAUS" - a colorable imitation of YELLOW CAB PIZZA CO.; 3. There is substantial likelihood that Appellant's colorable imitation of the Appellee's mark on identical goods and its use of the "checkerboard" design in its flyers and advertisements will cause confusion, or mistake or deceive the consuming public into believing that the Appellant's goods are those of the Appellee; 4. The Appellant's use of its mark is likely to cause confusion and mistake, and to deceive the public as to the affiliation, connection, or For trademark infringement, unfair competition and damages with Application for Temporary Restraining Order and Preliminary Injunction, 2 Issued on 21 May 2004. Republic of tbe Pbilippines INTELLECTUAL PROPERTY OFFICE association of the Appellant to the Appellee, especially as regards the origin, sponsorship or approval of the Appellant's goods by the Appellee, to the latter's damage; 5. Not only is there a likelihood of confusion as to the association of the Appellant and the Appellee; there has been several instances of actual confusion where the Appellee has received telephone inquiries on franchising where the callers were obviously confusing the Appellant with Appellee; 6. The Appellee is engaged in franchising and the apparent confusion of the public as regards the relationship of the Appellee and the Appellant not only dilutes the goodwill of the Appellee's mark but shows the Appellant's malicious intent to ride in on the established goodwill of the Appellee for its own benefit; 7. The Appellant's representatives have been misrepresenting to the public that it is a "sister company" of the Appellee; 8. The Appellant infringed the intellectual property rights of the Appellee, when it used the mark GREEN CAB PIZZA HAUS without the Appellee's consent and authority and advertised, sold and offered for sale products identical to those of the Appellee; 9. Due to considerable losses incurred by the Appellee in terms of lost revenue and dilution of its service mark since at least 17 May 2002 or for a period of more than three (3) years, it suffered actual damages in the form of lost income, among others, that although incapable of exact pecuniary estimation, may nevertheless be offset by a reasonable amount of damages, aggregating in the amount of at least PhP4,000,000; 10. Because of the Appellant's continuous use of its mark even during the pendency of this case, the Appellee stands to suffer further damages in the form of lost income of at least Php 100,000 a month unless the Appellant is enjoined from using its mark; 11. Due to the considerable dilution of and the fact that the Appellee's service mark has been and continues to be tarnished, the Appellee has suffered moral damages that although incapable of exact pecuniary estimation, may nevertheless be offset by a reasonable amount of damages aggregating in the amount of at least PhP4,000,000; .oJ 12. The Appellant's contumacious refusal to desist from his infringing activities, despite due notice and warning from the Appellee is causing immense losses and distress to the Appellee, exemplary damages of at least Phpi.ooo.ooo must be levied against the Appellant as a deterrence; and 13. As the Appellee was compelled to seek the instant administrative relief, necessitating the retention of the services of counsel, attorney's fees ofat least Phl'i.ooo.ooo are likewise prayed for. The Appellant filed on IS August 2005 an "ANSWERWITH COMPULSORY COUNTERCLAIM" alleging the following in defense: 1. The Appellant did not in any way infringe the rights of the Appellee and did not engage in any unfair competition; 2. The Appellant registered on 17 May 2002 his single proprietor business with the Department of Trade and Industry under the name and style GREEN CAB PIZZA HAUS and had used this business name since then up to the present; 3. The Appellant engaged his new and very small business in good faith and personally processes his pizza products and personally deliver the orders of his customers to their houses and has no other personnel to help him except his wife; 4. The Appellant has no intention to engage in unfair competition with the Appellee nor to infringe the rights of the Appellee because he was just very new to the business and a very small entrepreneur, and at the time, Yellow Cab Pizza is not yet heard in the Cavite area and c what was established then were the Dominos Pizza and the Little Ceasars Pizza; 5. There is no basis in fact and in law of the Appellee's prayer for Temporary Restraining Order and Preliminary Injunction as the Appellee has no existing rights to be protected; and 6. There could be no great and irreparable damage and injury to the Appellee even if the Appellant will continue to use the business name GREEN CAB PIZZA HAUS. The Appellee submitted the following as its evidence: I t ani I 1. Affidavit of Henry Lee III, dated 20 March 2006;3 2. Certificate of Incorporation ofthe Appellee;4 3. Copy of Lease Contract between RS Queensland and Development Corporation and the Appellee, executed on 31 May 2000;5 4. Copies of various certificates of trademark registration and trademark applications for the mark YELLOW CAB;6 5. Copies of flyers, bookmarks, and advertising materials and documents and the corresponding invoices and receipts of the costs of advertisement of the Appellee's pizza products under the name/mark YELLOW CAB;7 6.