I r! ! I ~iP J INTELLECTUAL PROPERTY f PHILIPPINES OFFICE OF THE DIRECTOR GENERAL DONALD J. TRUMP, Appeal No. 14-08-19 I Appellant, I Inter Partes Case No. 14-2007-00176 Application No. 4-2006-00420 - versus ­ Date Filed: 13 January 2006 Trademark: "THE TRUMPS" MEGAWORLD CORPORATION, Appellee. X·-----------------------······--------------·-X ~ )AHORA SOMUA.••• t••, LAW,,~t:F.g NOTICE OF DECISION 1/ CA~OMERA I~ CARAG, LENY B. RAZ ()r /}fI1 LA-=CES Director Co . • nt,-r!J! :La.£. Y" .; Bureau of Trademarksqer 2ndoor,n,~ •• ...41 Intellectual Property Office, Makati City 120 L.P. Leviste St. Salcedo Village, Makati City MANLANGIT, MAQUINTO, SOLOMON tlAV \I~ ~ IP PHILIPPINES LIBRARY ) & DE GUZMAN r' Documentation, Information & ff,1{'J\J ,q Counsel for Appellee Technology Transfer Bureau '6' 28th Floor, The World Centre Building Intellectual Property Office, Makati City ~ ~ 330 Sen. Gil J. Puyat Ave. Makati City ESTRELLITA B. ABELARDO Director Bureau of Legal Affairs ,..,- Intellectual Property Office, Makati City • " GREETINGS: Please be informed that on 01 June 2009, the Office of the Director General rendered a DECISION in the above-titled case (copy attached). l'v1akati City, 01 June 2009. Very truly yours, ~NIEL S. AREVALO CERTIFIED TRUE COPY: Attorn VI/ ead, Office of the Legal Counsel Offic of the Director General RobertwL: Nereo B. Samson Attorney IV Office of the Director General Republic of the Philippines 1 j I f .f j j INTELLECTUALtiiP PROPERTY j PHILIPPINES i OFFICE OF THE DIRECTOR GENERAL 1 ,1 1 DONALD J. TRUMP, Appeal No. 14-08-19 Appellant, Inter Partes Case No. 14-2007-00176 Application No. 4-2006-00420 - versus ­ Date Filed: 13 January 2006 Trademark: "THE TRUMPS" MEGAWORLD CORPORATION, Appellee. X--------------------------------------------------X NOTICE OF DECISION CARAG, CABALLES, JAMORA & SOMERA LENY B. RAZ LAW OFFICES Director Counsel for Appellant Bureau of Trademarks 2nd Floor, The Plaza Royale Intellectual Property Office, Makati City 120 L.P. Leviste St. Salcedo Village, Makati City MANLANGIT, MAQUINTO, SOLOMON IP PHILIPPINES LIBRARY & DEGUZMAN Documentation, Information & t Counsel for Appellee Technology Transfer Bureau 28th Floor, The World Centre Building Intellectual Property Office, Makati City f 330 Sen. Gil J. Puyat Ave. Makati City j ESTRELLITA B. ABELARDO I Director 1 Bureau of Legal Affairs Intellectual Property Office, Makati City GREETINGS: j Please be informed that on 01 June 2009, the Office of the Director General rendered a DECISION in the above-titled case (copy attached). l Makati City, 01 June 2009. 1 I 1 Very truly yours, i1 I ~NIEL S. AREVALO Attorn VII ead, Office of the Legal Counsel I~ t Offic of the Director General Republic of the Philippines I I1 l I 't I a f ~ I ~iP t 1, INTELLECTUAL PROPERTY <'I PHILIPPINES I 1 r ~ j ( I OFFICE OF THE DIRECTOR GENERAL I I DONALD J. TRUMP, Appeal No. 14-08-19 Appellant, Inter Partes Case No. 14-2007-00176 II Application No. 4-2006-00420 l !~, ! J -versus- Date Filed: 13 January 2006 ~ Trademark: THE TRUMPS i I I MEGAWORLD CORPORATION, , J ..~ Appellee. ! I I J x-------------------------------------x I I I j DECISION i I I j DONALD J. TRUMP ("Appellant") appeals Decision No. 2008-17 of the Director of the ! l Bureau of Legal Affairs ("Director"), dated 23 January 2008, denying his opposition to the 1 I I~ application for the registration of the mark "THE TRUMPS" filed by MEGAWORLD ; t1 :! CORPORATION ("Appellee"). I l 1 Records show that the Appellee filed on 13 January 2006 its trademark application for real estate development under Class 36 of the Nice Classification.' The application was published I in the "IPO Gazette" on 16 February 2007. On 15 June 2007, the Appellant filed his opposition. I The Appellant alleged in his opposition that he is the owner of the name and mark 2 I TRUMP which is used on services in Class 36, 37 and 43 • He claimed that the Appellee's mark so resembles his that when applied to or used in relation to the Appellee's goods will likely create or I r : falsely indicate a connection to him, hence, damaging his interests as owner of the name and i 1, mark TRUMP and diminishing the distinctiveness and dilute the goodwill thereof. The Appellant I ! 1 contended that the Appellee did not obtain written consent from him to use the name TRUMP, thus. the registration of the Appellee's mark will violate Sec. 123.1(c) and (f) and other provisions I I of the Intellectual Property Code of the Philippines ("IP Code"), Sec. 6bis of the Paris Convention, and Art. 16(3) of the Agreement on Trade Related Aspects of Intellectual Property Rights ("TRIPS"). II I ! The Appellant also claimed that his marks are well known under the IP Code and the aforementioned international treaties, hence, entitled to broad protection against unauthorized I users like the Appellee who has appropriated it for its own services and seeks to trade upon the popularity and renown of his name and mark TRUMP. He contended that the Appellee infringes It t 1 The Nice Classification is a classification of goods and services for the purpose of registering trademarks and service marks, I based on a multilateral treaty administered by the World Intellectual Property Organization. This treaty is called the Nice i I Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks I concluded in 1957. 2 Classes 36, 37 and 43 cover the following services: Class 36 for insurance, financial affairs, monetary affairs, and real estate f II affairs; Class 37 for building construction, repair, and installation services; and Class 43 for services for providing food and , drink, and temporary accommodation. i r! I Republic of the Philippines III !. I t upon his exclusive right to use his name and his internationally well-known mark for real estate development and related services. According to the Appellant he has registered his mark in many countries and applied for its registration in the Philippines for services in Class 36, 37 and 43 under Application Serial No. 4-2007-000188 filed on 05 January 2007, and has been commercially using it prior to the unauthorized appropriation and use by the Appellee of a confusingly identical mark. In its Answer to the opposition, the Appellee alleged that it should be dismissed outright because the verification attached thereto is fatally defective. It also claimed that its application bears an earlier filing date than the Appellant's and that the latter's mark is not well-known internationally and in the Philippines. According to the Appellee, it chose the mark THE TRUMPS to exemplify its outstanding performance as one of the leading real estate developers in the Philippines and to characterize its reputation for innovation and quality. There is absolutely no likelihood, said the Appellee, of confusion as to the source of its mark in relation to its project because of the high value of the product and the discriminatory and analytical character of the ordinary prudent purchaser of a high-end residential condominium unit. The Appellee further contended that it is not obligated to obtain the Appellant's written consent under Sec. 123.1(c) of the IP Code because even if "Trump" is the Appellant's surname, the word has a regular meaning! definition. In support of his opposition the Appellant submitted the following pieces of evidence: 1. His affidavit, executed on 31 May 2007;4 2. List of countries, territories and jurisdictions where the Appellant's marks are registered or applied for registrationr' 3. Philippine Trademark Application Serial No. 4-2007-000188, filed by the Appellant on 05 January 2007, for the mark TRUMP for class 36,37 and 43;6 and 4. Representative samples of certified copies of foreign registration certificates of the TRUMP marks issued in the name ofthe Appellant.' 5. Autographs, brochures and other descriptive materials referring to various properties c bearing the TRUMP trademark." I The Appellee's evidence, on the other hand consists of the following: I I 1. Affidavit ofAndrew 1. Tan, undated but notarized on 05 October 2007;9 J 2. Copy of the Finance Asia issue of June 2007;10 t 1 3 Filed on 05 Oct. 2007. 4 Annex "B" to the Manifestation and Motion filed by the Appellant on 15 June 2007 and received by the Bureau of Legal Affairs on 19 June 2007. 5 Exhibit "A". 6 Exhibit "B". 7 Exhibit "B-1". R Exhibit "C". 9 Annex "1" to the Appellee's Answer. 10 Annex "2" to the Appellee's Answer. ./ I f ! t 3. Certificates issued to Megaworld Corporation by Finance Asia and Euromoney, ! Philippines Superbrands Council:" 4. Certified copy of Cert. of Reg. No. 01-010-F with the Philippine Economic Zone Authority:" 5. 2006 Annual Report of Megaworld Corporation:" 6. Print copy of the "Wikipedia" about the Apprentice and the Apprentice US TV Series:" and 7. Print copy of Application for Reg. Serial No. 4-2001-003983 for the mark TRUMP & DESIGN of Trump Sports Co., Ltd. (from the IPO website). 15 In her decision, the Director ruled that the verification attached to the Appellant's opposition is not in accordance with the Rules of Court. She also held that the Appellee filed its trademark application ahead of the Appellant and that the latter's reliance on Sec. 123.1 of the IP Code is misplaced because he did not submit evidence that his mark is well known. On 27 March 2008, the Appellant filed the instant appeal. He alleges that the Director erred in holding that there was no proper verification made and in attaching undue importance to such matter.