Download - Tokyo Tokyo vs. Lao
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7/31/2019 Tokyo Tokyo vs. Lao
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Note: Classmates, dont expect this to be a very good nor a good position paper.
Hehe! Thank you. Please bear with me if there are some flaws in my grammar.
TOKYO TOKYO, INC.
Opposer,
-versus-
BRYANT JAMES LAO
Applicant.
Tokyo Tokyo has been using the mark SHOGUN since 1992 to promote andmarket their Japanese fast food, restaurants and products. They extensively promote
the use of said mark and subsequently associated the mark SHOGUN with Tokyo
Tokyos restaurants and products. Moreover, Tokyo Tokyo has sustained considerable
amounts to build substantial goodwill in the SHOGUN mark.
The application of the respondent applicant of the mark SHOGUN FRY AND
DEVICE will undoubtedly be prejudicial to the mark of the Tokyo Tokyo. While it is true
that the mark of the former is being used on Japanese Fast Foods Take out Counter
and the mark of the latter is being used on sales promotion and discount cards, these
two marks could still be reasonably considered as similar, related, and competitive with
each other. Both marks pertain to Japanese fast foods restaurants and products, it just
so happened that Tokyo Tokyo used the said mark to the promotion of their goods and
services and respondent applicant used their applied mark as a business name.
Undeniably, the respondent-applicant mark is identical and confusingly similar with the
oppositor SHOGUN word mark. The word SHOGUN is the very registered word of
Tokyo Tokyos mark. In addition to this, they are both in connection with Japanese food
that made these two marks more confusingly similar.
A mark cannot be registered if it: xxx[I]s
identical with a registered mark belonging to
a different proprietor or a mark with an
earlier filing or priority date, in respect ofx x
x [C]losely related goods or services [Sec.123(d)(iii), Intellectual Property Code]
The continuous use of Shogun Fry and Device mark by the applicant will tend
to mislead the purchasing public that may cause injury of both the oppositor and the
public. The applicant Laos Shogun Fry and Device mark will mislead the public into
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believing that the products marketed and sold by opposer or originate from the same
source. Considering the connotation of the two trademarks, it is clear and unmistakable
that there is likelihood of confusion on the part of ordinary customers. They are not only
similar but they also refer to goods sold within the same channels of trade and industry.
Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft,
the Court distinguished the two types of confusion:
The first is the confusion of goods IN WHICH
EVENT THE ORDINARILY PRUDENT
PURCHASER WOULD BE INDUCED TO
PURCHASE ONE PRODUCT IN THE BELIEF
THAT HE WAS PURCHASING THE OTHER.In which case, DEFENDANTS GOODS ARE
THEN BOUGHT AS THE PLAINTIFFS, AND
THE POORER QUALITY OF THE FORMER
REFLECTS ADVERSELY ON THE
PLAINTIFFS REPUTATION. The other is the
confusion of business: Here though the goods
of the parties are different, the defendants
product is such as might reasonably be
assumed to originate with the plaintiff, and the
public would then be deceived either into that
belief or into the belief that there is some
connection between the plaintiff and defendant
which, in fact, does not exist.
Tokyo Tokyo has been considerately recognized here in the Philippines with their
promotion using SHOGUN by employing advertisements in all kinds of media. Tokyo
Tokyo has gained more popularity because of their usage of SHOGUN mark and their
customers continually patronized promos contained in the said mark. In short, we can
aptly say that SHOGUN mark CARRIED the name of TOKYO TOKYO and vice versa.
The subject mark of Opposer is used to promote and REPRESENT TOKYO TOKYO.
Applicants mark also covers Japanese fast foods and directly competes with the
products/restaurants promoted and represented by opposers SHOGUN mark. Hence,
the application of the respondent applicant invades the good reputation that Tokyo
Tokyo built for over two decades simply because of mere confusion among the two
marks of both parties.
In using dominancy in this case, the dominant feature of the two trademarks is
the word Shogun.
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The Dominancy Test focuses on the
SIMILARITY OF THE PREVALENT
FEATURES OF THE COMPETING
TRADEMARKS THAT MIGHT CAUSE
CONFUSION OR DECEPTION. It is
APPLIED WHEN THE TRADEMARK
SOUGHT TO BE REGISTERED CONTAINS
THE MAIN, ESSENTIAL AND DOMINANT
FEATURES OF THE EARLIER REGISTERED
TRADEMARK, AND CONFUSION OR
DECEPTION IS LIKELY TO RESULT.
Duplication or imitation is not even required;
neither is it necessary that the label of the
applied mark for registration should suggest an
effort to imitate. THE IMPORTANT ISSUE IS
WHETHER THE USE OF THE MARKS
INVOLVED WOULD LIKELY CAUSE
CONFUSION OR MISTAKE IN THE MIND OF
OR DECEIVE THE ORDINARY PURCHASER,
OR ONE WHO IS ACCUSTOMED TO BUY,
AND THEREFORE TO SOME EXTENT
FAMILIAR WITH, THE GOODS IN
QUESTION. GIVEN GREATER
CONSIDERATION ARE THE AURAL AND
VISUAL IMPRESSIONS CREATED BY THE
MARKS IN THE PUBLIC MIND, giving little
weight to factors like prices, quality, sales
outlets, and market segments. [The test of
dominancy is now explicitly incorporated into
law in Section 155.1 of R.A. No. 8293]
Furthermore, we condone the contention of respondent applicant that
SHOGUN and SHOGUN FRY deal with different customers or clients because
customers of SHOGUN FRYs are those people who would like to buy/eat being served
by the restaurant while the customers of SHOGUN are the people who would like TO
BUY AND EAT THE PRODUCTS INCLUDED IN THE PROMO BEING SERVED BY
TOKYO TOKYO.