-versus-

Winston UychiyongOpposer,

}}}}}

Primal Enterprises Corp., }Respondent-applicant.}

x-------------------------------------x

INTELLECTUAL PROPERTYP H I LIPP INES

IPC No. 14·2007·00156Opposition to:"TIGER AND TIGER HEAD DEVICE"Application No. 4-2005-007277Filing date: 1 August 2005

Dec IS IOl) No. os? - ItS"

DECISION

For decision is the Notice of Opposition to Application Serial No. 4-2005­007277 for the mark "TIGER AND TIGER HEAD DEVICE" for goods underClass 6: namely: Bicycle locks , metal bicycle locks, metal lock boxes, metallocks, metal slash locks, metal security locks cylinders, high security locks; Class9: namely: Parking Sensor, anti-burglar alarm for house and office, door actuatorbattery, alarm siren , electronic horns, closed circuit TV system and/or web basedsecurity, camera monitoring system, and other parts and components and/oraccessories; and Class 14: namely car and motorcycle alarm filed on 1 August2005 by Primal Enterprises Corporation, hereinafter referred to as therespondent-applicant, a corporation organized under Philippine laws withaddress at 528 Banawe St. corner Calamba St. SMH, Quezon City. The VerifiedNotice of Opposition was filed by Winston Uychiyong, hereinafter referred to asopposer, with address at 2nd Floor, Winhaus Building, 2366 Leon Guinto Street,Malate, Manila.

Opposer based his opposition on the following grounds:

"1. The approval of the application in question is contraryto Section 123.1 (d) of Republic Act. 8293;

2. As registered owner of the trademark TIGER HEADWITH A TIGER HEAD FACING LEFT INSIDE A CIRCLE(hereinafter, TIGER HEAD & DEVICE, for brevity), the approval ofthe application in question will violate his right to the exclusive useof said registered trademark TIGER HEAD & DEVICE;

3. The approval of the application in question ha?fcaused and will continue to cause great and irreparable damage '7"':JAIlIiand injury to herein Opposer; ~- J

1Republic of the Philippines

INTELLECTUAL PROPERTY OFFICE351 Sen. Gil Puyat Ave., Makati City 1200 Philippines· www.ipophil.gov.ph

Telephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email : mail@ipophil.gov.ph

4. Respondent-Applicant is not entitled to register thetrademark TIGER AND TIGER HEAD DEVICE in its favor."

The Opposer relies on the following facts to support itsopposition:

"1. The trademark ''TIGER HEAD & DEVICE" is duly registeredin favor of Opposer under Registration No. 4-1993-91739 issued onJanuary 24, 2000 for use on electrical light, wiring, scales, sockets,plate and rod, and transformer falling under Class 11 ;

A certified copy of the Certificate of Registration No. 4-1993-91739is hereto attached as Exhibit "A" and made an integral part hereof;

"2. On January 24, 1994, Opposer was issued by the NationalLibrary Certificate of Copyright Registration NO. 0-93-1210 for hiscopyright claim entitled: "TIGER HEAD";

The Original copy of the Certificate of Copyright Registration No. 0­93-1210 is hereto attached as Exhibits "B" to "B-3" and made anintegral part hereof;

"3. Opposer has used the trademark "TIGER HEAD & DEVICE"since January 5, 1993 continuously up to the present.

a.) Submitted herewith as Exhibit "C" is duplicate original ofthe accepted Declaration of Actual Use filed on January 18, 2006following the 5th Anniversary of Registration NO. 4-1993-91739,and made an integral part hereof;

b.) Likewise submitted herewith as Exhibits "D" to "D-3" arerepresentative sales invoices of Opposer's company, WintradeIndustrial Sales Corporation, showing current commercial use ofthe trademark "TIGER HEAD & DEVICE".

"4. The trademark "TIGER AND TIGER HEAD DEVICE" beingapplied for registration by Respondent-Applicant is identical to thetrademark "TIGER HEAD & DEVICE" owned by Opposer and dUI~~

registered in its favor. A print-out of the e-Gazette showing th~ I~2

details of Respondent-Applicant's application is hereto attached asExhibit "E" and made an integral part hereof;

"5. The goods covered by Respondent-Applicant's application inquestion is contrary to Section 123.1 (d) of Republic Act No. 8293,which provides:

"Sec. 123. Registrability - 123.1. A mark cannot be registeredif it:

x x x

d) Is identical with a registered mark belonging to a differentproprietor or a mark with an earlier filing or priority date, inrespect 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 todeceive or cause confusion;"

"6. The approval of the application in question is violative of theright of Opposer to the exclusive use of his registered trademark'TIGER HEAD & DEVICE" on goods listed in the registrationcertificates issued to him and those that are related thereto;

Section 138 of the Intellectual Property Code provides:

"Section 138. Certificate of Registration. - A certificate ofregistration of a mark shall be prima facie evidence of the validityof the registration, the registrant's ownership of the mark, and of theregistrant's exclusive right to use the same in connection with the;t;goods or services and those that are related thereto specified in thecertificate."

3

"7. The approval of the application in question has caused andwill continue to cause great and irreparable damage and injury toOpposer. The use and registration by Respondent-Applicant of thetrademark TIGER AND TIGER HEAD DEVICE will likely causeconfusion or mistake or deceive the public as to the source or originof Respondent-Applicant's goods to such an extent that the publicwill likely believe that Respondent-Applicant is affiliated orconnected with Opposer's business and/or that Respondent­Applicant's goods are sourced from or distributed by, or under thesponsorship of Opposer .

"8. Accordingly, Respondent-Applicant is not entitled to registerthe trademark TIGER AND TIGER HEAD DEVICE in its favor;

In support of his opposition, opposer submitted the following exhibits:

EXHIBIT DESCRIPTIONHA" Certified copy of Certificate of Registration No. 4-1993-91739

for the trademark TIGER HEAD & DEVICE issued to opposerWinston Uychiyong on January 24, 2000;

"B" to "B-3" Original copy of Certificate of Copyright Registration No. 0-93-1210 for "TIGER HEAD";

"e" Duplicate original of the Declaration of Actual Use filed onJanuary 18, 2006 following the 5th anniversary of RegistrationNo. 4-1993-91739;

"0" to "0-3" Duplicate originals of representative sales invoices showingpresent use of the trademark TIGER HEAD & DEVICE;

"E" Computer print-out of the e-Gazette showing the publication ofRespondent-Applicant's Application Serial No. 4-2005-007277for the trademark TIGER AND TIGER HEAD DEVICE;

"F" Duly notarized affidavit of opposer WINSTON UYCHIYONG.

The Notice to Answer was received by respondent-applicant on June 27,2007 and it was given until 27 September, 2007 to file its Answer. Records showthat respondent-applicant filed its Answer by registered mail only on 31 October2007 and was considered by this Bureau to be filed out of time.

A Preliminary Conference was set on January 17, 2008 but no amicablesettlement was obtained. The issue is whether the marks are confusingly simil~~The marks of the contending parties are reproduced below as follows: /~

4

Respondent-Applicant's trademark Opposer's trademark

IGE

At the outset, this Bureau notes that even if the respondent-applicant'sanswer was not considered on account of the fact that it was filed out of time, acomparative analysis of the marks was made through the contents of theapplicant's file wrapper and opposer's evidence .

A cursory examination of the marks show that they depict a tiger head.Respondent-applicant's mark is portrayed forward looking with open mouth andfangs while the opposer's mark is the side view of a tiger head. The size isalmost the same and presented in a circular form.

Although there is some similarity between the marks in that they are bothdepiction of tiger heads, the marks are applied for use in goods of differentclasses . The respondent-applicant's use is for goods under Classes 6, 9 and14 such as "bicycle locks, parking sensor, anti-burglar alarm, car andmotorcycle alarm" while the opposer's trademark Certificate of Registration No.4-1993-91739 (Exhibit "A") is used for goods under class 11 namely: "electriclight, wiring, scales, sockets, plate and rod and transformer".

The Supreme Court has ruled that the use of identical marks on differentgoods is allowable. In Philippine Refining Co. v. Ng Sam 118 SCRA 472, theSupreme Court held:

"A rudimentary precept in trademark protection is that "the right to atrademark is a limited one, in the sense that others may use thesame mark on unrelated goods." Thus, as pronounced by theUnited States Supreme Court in the case of American Foundriesvs. Robertson 2, "the mere fact that one person has adoptedand used a trademark on his goods does not prevent theadoption and use of the same trademark by others on articlesof a different description. xxx

Such restricted right over a trademark is likewise reflected in ou~~

Trademark Law. Under Section 4(d) of the law, registration of I I~

5

trademark which so resembles another already registered or in useshould be denied, where to allow such registration could likelyresult in confusion, mistake or deception to the consumers.Conversely, where no confusion is likely to arise, as in this case,registration of a similar or even identical mark may be allowed. xxx

The same principle in trademark law was affirmed by the high court inEsso Standard Eastern v. CA (116 SCRA 336) where it allowed thecontemporaneous use of the mark "ESSO" on unrelated and non-competinggoods, such as, cigarettes and petroleum products.

"Withal , judging from the physical attributes of petitioner's andprivate respondent's products, there can be no doubt that confusionor the likelihood of deception to the average purchaser is unlikelysince the goods are non-competing and unrelated. Xxx"

The Supreme Court also elaborated the concept of related goods, it held:

"Goods are related when they belong to the same class or have thesame descriptive properties; when they possess the same physicalattributes or essential characteristics with reference to their formcomposition, texture, or quality. They may also be related becausethey serve the same purpose xxx"

The High Court further explains this theory in Mighty Corporation and LaCampana Fabrica de Tabaco, Inc. v. E. & J. Gallo Winery and the AndresonsGroup, Inc. (GR. No. 154342. July 14, 2004.]. It held:

(a)(b)(c)

(d)(e)

(f)(g)

(h)(i)U)

"In resolving whether goods are related, several factors come into play:the business (and its location) to which the goods belongthe class of product to which the goods belongthe product's quality, quantity, or size, including the nature of the package,wrapper or containerthe nature and cost of the articlesthe descriptive properties, physical attributes or essential characteristicswith reference to their form, composition, texture or qualitythe purpose of the goodswhether the article is bought for immediate consumption, that is, day-to­day household itemsthe fields of manufacturethe conditions under which the article is usually purchased and~

the channels of trade through which the goods flow, how they aredistributed, marketed, displayed and sold." ~

6

In the instant case, the goods of the parties are unrelated and non­competing. Opposer's evidence of commercial use through his submission ofsales invoices (Exhibit "0") indicate the sales of flashlight bulbs which are not inthe nature of locks, or alarms.

Furthermore, it is worthy of note that opposer's certificate of registration(Exhibit "A") covers "electric light, wiring, scales, sockets, plate and rod andtransformer" and nothing more. In this regard, the law affords limited exclusiveprotection of the use of such mark to goods enumerated in the certificate.

"SECTION 138. Certificate of registration prima facie evidence ofvalidity. - A certificate of registration of a mark shall be prima facieevidence of the validity of the registration , the registrant'sownership of the mark or trade-name, and of the registrant'sexclusive right to use the same in connection with the goodsor services and those that are related thereto specified in thecertificate."

In Sterling Products International Inc. vs. Farbenfabriken Bayer (27 SCRA1214 [1969]), the Supreme Court explained that:

"Really, if the certificate of registration were to be deemed asincluding goods not specified therein, then a situation may arisewhereby an applicant may be tempted to register a trademark onany and all goods which his mind may conceive even if he hadnever intended to use the trademark for the said goods. Webelieve that such omnibus registration is not contemplated by ourTrademark Law."

WHEREFORE, premises considered the OPPOSITION filed by WinstonUychiyong is, as it is hereby, DENIED. Accordingly, Application Serial No. 14­2007-00156 filed by Respondent-Applicant, Primal Enterprises Corporation on 1August 2005 for the mark "TIGER AND TIGER HEAD DEVICE" used on goods,under Class 6, 9 and 14 namely "Class 6: namely: Bicycle locks, metal bicyclelocks, metal lock boxes, metal locks, metal slash locks, metal security lockscylinders, high security locks; Class 9: namely: Parking Sensor, anti-burglaralarm for house and office, door actuator battery, alarm siren, electronic horns,closed circuit TV system and/or web based security, camera monitoring system,and other parts and components and/or accessories; and Class 14: namely caW-­and motorcycle", is as it is hereby, GIVEN DUE COURSE. ,~

7

Let the filewrapper of "TIGER AND TIGER HEAD DEVICE, subject matterof this case together with a copy of this Decision be forwarded to the Bureau ofTrademarks (BOT) for appropriate action.

SO ORDERED.

Makati City, 26 June 200

LUTA BELTRAN- ABELARDO

irector, Bureau of Legal Affairs ~

8