INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES MARS, INCORPORATED, } IPC No. 14-2015-00171 Opposer, } Opposition to: } Appln. Ser. No. 4-2013-00002847 -versus- } Date Filed: 15 March 2013 } DELFI CHOCOLATE MANUFACTURING S.A., } TM: DELFI MALTITOS Respondent-Applicant. } NOTICE OF DECISION BARANDA & ASSOCIATES Counsel for Opposer Suite 1002-B Fort Legend Towers, 3rd Avenue corner 31st Street, Bonifacio Global City, Taguig City POBLADOR BAUTISTA & REYES Counsel for Respondent-Applicant 5th Floor, SEDCCO I Building 120 Rada corner Legaspi Streets, Legaspi Village, Makati City GREETINGS: Please be informed that Decision No. 2017 - 4^2. dated 22 December 2017 (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, 03 January 2018. MARILYN F. RETUTAL IPRS IV Bureau of Legal Affairs @ www.ipophil.gov.ph q Intellectual Property Conlef Q [email protected] "?B uPPor McKintey Road McKinley Hill lown Center O +632-2386300 Fo,. B««aoo. Tagu,g C,y j# +632-5539480 1634 Philippines INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES MARS, INCORPORATED, }IPC NO. 14-2015-00171 Opposer, } }Opposition to: }Appln. Ser. No. 4-2013-00002847 -versus- } Date Filed: 15 March 2013 } Trademark: "DELFI DELFI CHOCOLATE MANUFACTURING } MALTITOS" S.A., } Respondent-Applicant. } x x} Decision No. 2017 - DECISION MARS INCORPORATED, (Opposer)1 filed an opposition to Trademark Application Serial No. 4-2013-00002847. The application, filed by DELFI CHOCOLATE MANUFACTURING (Respondent-Applicant)2, covers the mark "DELFI MALTITOS", for use on "confectionery, biscuits, chocolate, cocoa, products made from or including chocolate and/or cocoa" under Class 30 of the International Classification of Goods3. The Opposer alleges that it will be damaged by the registration for the reasons set forth: "3. The Opposer is entitled to the benefits granted to foreign nationals under Section 3 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines ('IP Code'): xxx "5. The Opposer is the registered owner of MALTESERS marks in class 30 in the Philippines, and is therefore entitled to the exclusive "6. The registration of the Application violates Sections 123.1 (d), ( e ) and (f) of the IP Code which expressly prohibit the registration of the mark if it is: "6.1. 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 ) 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 confusion; 1 A corporation duly organized and existing under the laws of the United States of America, with address at 6885 Elm Street, McLean 22101-3883, Virginia U.S.A. 2 A corporation organized under the laws of Switzerland with address at 6 Route De Berne, 1700 Fribourg, Switzerland. The 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. 1 @ www.ipophil.gov.ph q Intellectual Property Center 0 mail@>pophil.gov.ph tt?8 uPPor McKink-y Road © +632-2386300 ^McKinluy^^Hill lown^^Center, |i +632 5539480 1634 HiHippinoK "6.2. Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well- known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; "6.3. Is identical with or confusingly similar to, or constitutes a translation of a mark, considered well known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods and services which are not similar to those with respect to which registration is applied for: Provided, that the use of the mark in relation to the goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, that the interests of the owner of the registered mark are likely to be damaged by such use. "7. In addition, both the Philippines and the U.S.A., where the Opposer was organized and registered, are members of the Paris Convention for the Protection of Industrial Property and the WTO TRIPS Agreement. The Paris Convention provides: x x x "8. The WTO TRIPS Agreement widens the scope of protection of well-known marks by enjoining unauthorized use of these marks on dissimilar goods/services, x x x The Opposer relies, among other things, on the following facts: "10. The Opposer is a large privately held company and is a leading global manufacturer of popular brands that started in 1911, with six (6) business segments, namely Mars Chocolate, Mars Petcare, mars Food, Mars Symbioscience, mars Drinks, and Wrigley. x x x "11. The Opposer traces its roots more than a century ago when a 19- year old Frank C. Mars sold molasses chips in 1902. Almost a decade later, Frank started making and selling butter cream candy from his kitchen in Tacoma, Washington, U.S.A. Frank then moved to larger quarters in 1920 and introduced MILKY WAY in 1923, which boosted sales to USD 793,000. Forrest E. Mars, Sr., the only son of Frank and Ethel, entered the family business in 1929 and launched the crowd favorite MALTESERS brand for chocolate balls in 1936. "12. From humble beginnings, the Opposer now owns some of the world's most populacr brands. These brands brings pleasure and satisfaction to hundreds of millions of people and pets around the world, some of which are shown below: xxx "13. Today, the Opposer is an internationally recognized company with over USD33billion in net sales in 2014. More than 100 years of passionately coming up with innovative products have definitely earned the Opposer the distinction and esteemed reputation it enjoys today. "14. With significant international presence in more than 74 countries, Mars, Incorporated has been recognized by Forbes as the 6th largest privately held companies in America, "15. Mars, Incorporated takes pride in the numerous distinctions worldwide that it has achieved throughout the years. It has in fact been repeatedly been named as one of the best workplaces in different countries. xxx History of MALTESERS chocolate "16. The Opposer's Chocolate segment, mars Chocolate, is one of the world's leading chocolate manufacturers and employs more than 16,000 Associates across 21 countries. The Opposer has a total of 29 chocolate brands, including five-billion dollar brands - M&M'S®, SNICKERS®, DOVE^GALAXY®, MARS®/MILKY WAY®, and TWIX® . Other leading brands include: 3 MUSKETEERS®, BALISTO®, BOUNTY®, REVELS® and MALTESERS®. "17. MALTESERS chocolate balls were introduced in 1936 in the United Kingdom by the Opposer. MALTESERS chocolates are crisp honeycombed centres covered in delicious milk chocolate. "18. MALTESERS chocolate was introduced as a chocolate for weight conscious women as MALTESERS chocolate is low in calories and therefore has fattening, xxx "20. Almost 80 years today, MALTESERS chocolate have become one of the most popular confectionary brands through innovative developments. It is now known for its tagline 'MALTESERS - THE LIGHTER WAY TO ENJOY CHOCOLATE' worldwide. Reputation of MALTESERS chocolate "21. Since its introduction in 1936, MATESERS chocolate is extensively advertised and promoted worldwide. Because of this, MALTESERS chocolate has attained substantial goodwill and esteemed reputation worldwide through advertisements, promotions and publications, xxx "22. Today, MALTESERS chocolates are advertised in various media. The Opposer also maintains several websites and social networking sites dedicated for MALTESERS chocolates, such as: • https://www.maltesers. co.uk/ • http://www.maltesres.de/ • https://www.facebook.com/Maltesers • https://www.facebook.com/maltesersaustralia "23. As a result of the extensive promotions conducted globally, sales of MALTESERS chocolates continue to grow. MALTESERS chocolates are now being sold in 38 countries worldwide, x x x "24. Because of its quality and taste, extensive promotions and marketing strategies, MALTESERS chocolate is a name in the confectionery industry. The Opposer takes pride in the numerous distinctions that MALTESERS chocolates achieved throughout the years. Some of the awards given to the reputable brand are set forth below: x x x "25. According to Superbrands Annual 2012, in the UK, the chocolate market is valued at £3.344 billion and is growing at 3.3 percent year-on- year. MALTESERS chocolate also plays a key role in the substantial bite size category which is valued at £515 million and is growing at 4.1 percent. 27. Because of the fame and the great taste of MALTESERS chocolate and its market share in the UK, some facts capturing its reputation and market share, x x x "28. Today, MALTESERS is the 20th biggest global brand despite its absence in key marks, x x x "29. Because MALTESERS chocolate has significant brand equity, the Opposer has extended the brand through brand extensions. One type of brand extension is called 'line extension' where new sizes, models, flavours or other variants of an existing product in the same category are launched.