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OFFICE OF THE DIRECTOR GENERAL

DONALD J. TRUMP, Appellant,

- versus ­

Appeal No. 14-08-19

Inter Partes Case No. 14-2007-00176 Application No. 4-2006-00420 Date Filed: 13 January 2006 Trademark: "THE TRUMPS"

MEGAWORLD CORPORATION, Appellee.

X·-----------------------······--------------·-X ~ )AHORA SOMUA.••• t••,

LAW,,~t:F.g NOTICE OF DECISION 1/ CARAG, CA~OMERA LA-=CES-r!J! .; Co . • nt, :La.£. Y" 2ndoor,n,~ •• ...41 120 L.P. Leviste St. Salcedo Village, Makati City

MANLANGIT, MAQUINTO, SOLOMON tlAV \I~ ~ & DE GUZMAN r' Counsel for Appellee 28th Floor, The World Centre Building 330 Sen. Gil J. Puyat Ave. Makati City

ESTRELLITA B. ABELARDO Director Bureau of Legal Affairs Intellectual Property Office, Makati City

GREETINGS:

LENY B. RAZ ()r /}fI1 Director qerBureau of Trademarks Intellectual Property Office, Makati City

IP PHILIPPINES LIBRARY ) Documentation, Information & ff,1{'J\J ,q Technology Transfer Bureau '6' Intellectual Property Office, Makati City ~ ~

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.

CERTIFIED TRUE COPY:

wL:Robert Nereo B. Samson

Attorney IV Office of the Director General

Very truly yours,

~NIEL S. AREVALO Attorn VI/ ead, Office of the Legal Counsel Offic of the Director General

Republic of the Philippines

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f .f j j INTELLECTUAL PROPERTY j PHILIPPINES i

OFFICE OF THE DIRECTOR GENERAL

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1 DONALD J. TRUMP,

Appellant,

- versus ­

MEGAWORLD CORPORATION, Appellee.

X--------------------------------------------------X

Appeal No. 14-08-19

Inter Partes Case No. 14-2007-00176 Application No. 4-2006-00420 Date Filed: 13 January 2006 Trademark: "THE TRUMPS"

NOTICE OF DECISION

CARAG, CABALLES, JAMORA & SOMERA LAW OFFICES Counsel for Appellant 2nd Floor, The Plaza Royale 120 L.P. Leviste St. Salcedo Village, Makati City

MANLANGIT, MAQUINTO, SOLOMON & DEGUZMAN Counsel for Appellee t 28th Floor, The World Centre Building 330 Sen. Gil J. Puyat Ave. Makati City f

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ESTRELLITA B. ABELARDO Director

1 Bureau of Legal Affairs Intellectual Property Office, Makati City

GREETINGS:j

LENY B. RAZ Director Bureau of Trademarks Intellectual Property Office, Makati City

IP PHILIPPINES LIBRARY Documentation, Information & Technology Transfer Bureau Intellectual Property Office, Makati City

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Please be informed that on 01 June 2009, the Office of the Director General rendered a DECISION in the above-titled case (copy attached).

Makati City, 01 June 2009.

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Very truly yours,

I ~NIEL S. AREVALO

Attorn VII ead, Office of the Legal Counsel ~

Offic of the Director General t

Republic of the Philippines

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INTELLECTUAL PROPERTY PHILIPPINES I

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DONALD J. TRUMP, Appeal No. 14-08-19 Appellant, Inter Partes Case No. 14-2007-00176

Application No. 4-2006-00420 ~,

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-versus- Date Filed: 13 January 2006 J Trademark: THE TRUMPS ~

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, Appellee. !

MEGAWORLD CORPORATION, J ..~

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DECISION

DONALD J. TRUMP ("Appellant") appeals Decision No. 2008-17 of the Director of the

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Bureau of Legal Affairs ("Director"), dated 23 January 2008, denying his opposition to the application for the registration of the mark "THE TRUMPS" filed by MEGAWORLD CORPORATION ("Appellee").

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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 in the "IPO Gazette" on 16 February 2007. On 15 June 2007, the Appellant filed his opposition.

The Appellant alleged in his opposition that he is the owner of the name and mark TRUMP which is used on services in Class 36, 37 and 432

• 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 falsely indicate a connection to him, hence, damaging his interests as owner of the name and

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mark TRUMP and diminishing the distinctiveness and dilute the goodwill thereof. The Appellant 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 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").

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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 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

1 The Nice Classification is a classification of goods and services for the purpose of registering trademarks and service marks,

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based on a multilateral treaty administered by the World Intellectual Property Organization. This treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957.

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2 Classes 36, 37 and 43 cover the following services: Class 36 for insurance, financial affairs, monetary affairs, and real estate f affairs; Class 37 for building construction, repair, and installation services; and Class 43 for services for providing food and drink, and temporary accommodation. i

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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.'

c 5. Autographs, brochures and other descriptive materials referring to various properties bearing the TRUMP trademark."

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The Appellee's evidence, on the other hand consists of the following:

1. Affidavit of Andrew 1. Tan, undated but notarized on 05 October 2007;9 2. Copy of the Finance Asia issue of June 2007;10

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". RExhibit "C". 9 Annex "1" to the Appellee's Answer. 10 Annex "2" to the Appellee's Answer.

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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. He also assails the Director's decision denying his opposition simply because the Appellee's trademark application was filed ahead of his and that he is not entitled to protection over his mark even as it is his surname.

In its comment to the appeal, the Appellee alleges the same arguments in its Answer to the opposition.

This Office resolves first the issue of whether the Appellant had attached to his opposition a proper verification. The Director held:

In the case at bar, Opposer stated in his verification that he caused the preparation of the above notice of opposition, the allegation (sic) of which are true and correct to the best of my knowledge and belief. Evidently, said verification is not in compliance with the requirement of Rule 7, Section 4 of the Rules of Civil Procedure and jurisprudence on verification cited herein. Consequently, on this ground alone the opposition should be dismissed. 16

The extent of the applicability of the Rules of Court in Inter Partes cases is laid down in Sec. 5, Rule 2 of the Regulations on Inter Partes Proceedings:

Section 5. Rules of Procedure to be followed in the conduct of hearing of Inter Panes cases.

The rules of procedure herein contained primarily apply in the conduct of hearing of Inter Partes cases. The Rules of Court may be applied suppletorily. The Bureau shall not

11 Annexes "3" to "5" to the Appellee's Answer. 12 Annex "6" to the Appellee's Answer. 13 Annex "7" to the Appellee's Answer. u Annexes "8" and "9" to the Appellee's Answer. ISAnnex "10" to the Appellee's Answer.

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be bound by strict technical rules of procedure and evidence, but may adopt, in the absence of any applicable rule herein, such mode of proceedings, which is consistent with the requirement of fair play and conducive to the just, speedy and inexpensive disposition of cases, which shall give the Bureau the greatest possibility to focus on the contentious issues before it.

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,Assuming in arguendo that the Rules of Court may be applied in this instance and the

Director believed that the verification attached to the opposition was defective, she could have simply required the Appellant to make and submit the necessary corrections as held by the Supreme Court in Valdeeantos v. People, et al.,17 thus:

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The requirement regarding verification of a pleading is formal, not jurisdictional.t :1 Such requirement is simply a condition affecting the form of pleading, the non-compliance

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of which does not necessarily render the pleading fatally defective. Verification is simply intended to secure an assurance that the allegations in the pleading are true and correct and t

! not the product of the imagination or a matter of speculation, and that the pleading is flied in good faith. The court may order the correction of the pleading if verification is lacking or act on the pleading although it is not verified, if the attending circumstances are such that strict compliance with the rules may be dispensed with in order that the ends of justice may thereby be served.

But more than that, a scrutiny of the questioned verification reveals that the contents "

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thereof, in fact, substantially comply with Sec. 4, Rule 7 of the Rules of Court. The Appellant correctly argued that what is proscribed are allegations made on the basis of mere information,

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knowledge and belief and that the cases cited by the Appellee are not applicable"; What is relevant to this case is the En Bane decision of the Supreme Court in ACORD, et al. v. Zamora, et el.", to wit:

Respondents assail as improperly executed petitioners' verifications and certifications against forum-shopping as they merely state that the allegations of the Petition are "true of our knowledge and belief' instead of "true and correct of our personal knowledge or based on authentic records" as required under Rule 7, Section 4 of the Rules of Court.

Jurisprudence is on petitioners' side. In Decano v. Edu, this Court held:

Respondents finally raise a technical point referring to the allegedly defective verification of the petition flied in the trial court, contending that the clause in the verification statement "that I have read the contents of the said petition; and that [to] the best of my knowledge are true and correct" is insufficient since under section 6 of Rule 7, it is required that the person

J7 G.R. No. 148852, 27 Sept. 2006 citing Uy v. Land Bank of the Philippines, 391 Phil. 303, 312 (2000 citing Sy v. Habacon­Garayblas, Adm. Matter No. MTJ-93-860, 21 Dec. 1993, 228 SCRA 644, 646; Buenaventura v. Halili-Uy, No. L-28156, 31 Mar. 1987,149 SCRA 22, 26; Quimpo v. Victoria, 150-B Phil. 124, 131[1972]; Valino v. Munoz, 146 Phil. 412, 418 [1970]; Republic v. Lee Wai Lam, 139 Phil. 265, 269 [1969]; Republic v. Lee Wai Lam at 276; Buenaventura v. Uy at 26; Republic v. Lee Wai Lam at 269; Sy v. Habacon-Garayblas at 646; and Republic v. Lee Wai Lam at 269-270). I" See Appellant's Memorandum of Appeal, filed on 27 Mar. 2008, pp. 11-12; and Memorandum for the Appellant, filed on 23 May 2008, pp. 10-11. (Appellee cited the case of Clavecilla v. Quitain, et al., G.R. No. 147989, 20 Feb. 2006 and Hun Yung Park v. Eung Won Choi, G.R. No. 165496, 12 Feb. 2007.)

19 G.R. No. 144256, 08 Jun. 2005 citing Decano v. Edu, G.R. No. L-30070 29 Aug. 1980.

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verifying must have read the pleading and that the allegations thereof are true of his own knowledge. We do not see any reason for rendering the said verification void. The statement "to the best of my knowledge are true and correct" referring to the allegations in the petition does not mean mere "knowledge, information and belief." It constitutes substantial compliance with the requirement of section 6 of Rule 7, as held in Madrigal vs. Rodas (80 Phil. 252.). At any rate, this petty technicality deserves scant consideration where the question at issue is one purely of law and there is no need of delving into the veracity of the allegations in the petition, which are not disputed at all by respondents. As we have held time and again, imperfections of form and technicalities of procedure are to be disregarded except where substantial rights would otherwise be prejudiced.

(Emphasis and underscoring supplied)

Going now to the main issue, it is not disputed the fact that the marks are identical or confusingly similar and used or to be used on real estate development services. This Office noticed that the Director also based her decision on Sec. 123.1(d) of the IP Code, which states that a mark cannot be registered if it:

(d) 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;

The provision, however, is not applicable to this case.

A careful reading of Sec. 123.l(d) of the IP Code shows that it is a ground for the refusal or rejection by the examiner of the trademark application or for filing an opposition to an application or a petition for the cancellation of a trademark registration. It is invoked or applied against the trademark application or registration subject of the examination, opposition. or petition for cancellation.

In this regard, it is emphasized that an opposition is basically a review of the trademark i ~ application in question, succinctly, whether the requirements for registration under the law are

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met. It is not necessarily a contest between the opposer and the applicant as to who, between them, has the better right to register the mark. In fact, anybody who believes he will be damaged by the registration of the mark may oppose the application, even if the opposer himself does not apply for the registration of the identical or confusingly similar mark in the Philippines. Sec. 131.320 of the IP Code, Sec. 134 states:

Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. Such

20 131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That. notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law.

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opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language. For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs. who shall notify the applicant of such extension. The Regulations shall fix the maximum period of time within

which to file the opposition. (Sec. 8, RA. No. 165a)" (Emphasis supplied)

An opposition may be a contest as to who filed first only if the opposer claims an earlier

priority date as a ground for the opposition.

In this instance, the trademark application that is opposed is the Appellee's. Since the Appellant is not invoking Sec. 123.1(d) of the IP Code as his ground for opposition, this is not a contest as to who between the parties filed first a trademark application.

The Appellant anchors his opposition on the following grounds:

1. That the mark TRUMP is his name; 2. That he was the first to use the name or mark in real estate business; 3. That the mark TRUMP and its variations are well-known marks internationally and

thus protected; and 4. That to allow the Appellee to register the mark THE TRUMPS will damage his

interest and will preclude him from engaging in the real estate business in the Philippines using his name and mark.

j In sum, what the Appellant has raised is the issue of ownership of the mark TRUMP. His

opposition points out that the Appellee, a business competitor, has appropriated a mark that already belongs to him who has been using it in the real estate business for so long. The Appellant

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mentioned his trademark application filed in the Philippines not because he claims an earlier filing date but to support his claim or ownership of the mark TRUMP.

The Appellant cites Sec. 123.1(c) of the IP Code, which states that a mark shall not be registered if it

Consists of a name, portrait or signature identifying a particular living individual except by his written consent x xx.

The question is: Does the mark THE TRUMPS identify a particular living individual, specifically, the Appellant?

While TRUMP is the surname of the Appellant, the THE TRUMPS still falls short of the requirement that the mark must identify a particular living individual to avail of the protection under Sec. 123.1(c) of the IP Code. To identify the Appellant, in particular, the first name Donald should appear beside the mark THE TRUMPS.

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i The record and evidence, however, clearly shows that the Appellant was the first to use ~

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the mark on real estate development services. The Appellant's following statements in his affidavit are undisputed, to wit:"

Since 1968, he has been engaged in the development of real estate, operating a world renowned international business of real estate development, which is responsible for the construction an maintenance of numerous hotels. commercial complexes and condominium projects around the world.

United States Existing structures:

In the United States, my name is on some of the most prestigious residences, hotels, resorts, 1 and golf clubs in the country, including:

Trump Tower in New York, NY - a 58 storey skycraper with retail. offices, and a residential condominium component located at the comer of Fifth Avenue and 56th

~ Street in Manhattan. Trump Tower was completed in 1983. Trump Tower is famously featured on the television show The Apprentice (discussed below) as it contains my personal residence and my offices. The famous "Boardroom" on the Apprentice is located in Trump Tower.

Trump Park Avenue, New York, NY-located at the corner of Park Avenue and 59th

Street, this is one of Manhattan's most prestigious addresses filled with high-end luxury residential condominiums.

Trump World Tower in New York, NY- overlooking the United Nations and Manhattan's East River, this is a $300 million, 72-floor skycraper filled with luxury residential condominiums. The Trump World Tower was completed in 2001 and was designed by Costas Kondylis Architects. It is currently the tallest building constructed in the Western Hemisphere in the last 15 years. Some apartments in the building sell for over $28 million. Many high profile celebrities, such as Derek Jeter, [ay-Z, Bill Gates, Hideki Matsui, Sophia Loren, and Harrison Ford live and/or own property in the building, as well as many foreign dignitaries. {

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Trump International Hotel & tower. One Central Park West in New York. NY­This is a 52 storey skycraper located right on Central Park West. The building contains a luxury 5-star Hotel and residential condominiums and is home to the world famous Jean George restaurant.

t Trump Place, New York, NY - a $3 billion complex conatining 92 acres along Manhattan's Hudson River that extends from West 72nd Street to West 59th Street and contains luxury residential towers and a 25-acre public park.

The Trump Building, 40 Wall Street, New York, NY- a 70-storey skycraper on Manhattan's famous Wall Street. An historic building that was built in 1930, it is a designated landmark by the New York City Landmark Preservation Commission. It is the tallest mid-block building in New York City.

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Trump Tower, White Plains, NY- a 35 storey high-rise condominium apartment building just outside Manhattan. It includes 450,000 square feet of retail, restaurant,

and entertainment space.

Trump Pare & Trump Pare East, New York NY-adjacent luxury residential condominium buildings located on Central Park South. !

Trump Palace, New York, NY-a luxury residential condominium located on the Upper East Side of Manhattan.

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Trump National Golf Club in Los Angeles, CA and The Estates at Trump National Golf Club, Los Angeles, CA- a collection of estate homes surrounding the Trump National Golf Club along the Pacific Ocean in southern California.

Trump Towers, Sunny Isles, FL-three residential condominium towers in South

Florida.

Trump Grande Ocean Resort & Residences, Sunny Isles, FL-a complex consisting of a hotel condominium and two residential condominiums towers along north

Miami Beach.

Trump National Golf Club in Briarcliff, NY

Trump National Golf Club in Bedminster, NJ

Trump International Golf Club, Palm Beach, FL

Projects in Development in the United States

Trump International Hotel & Tower Chicago- a $650 million, 92 storey building currently being built and scheduled to be completed in 2009. It will be the fourth tallest building in Chicago, standing 1,362 feet (415) meters high. The building will contain 486 super-luxury residential condominiums, 339 Five-star luxury hotel condominium guest rooms, and retail space.

Trump Soho Hotel, New York, NY- a $370 million, 45 storey, 400+ unit hotel condominium in one of Manhattan's hippest neighborhoods. The project is estimated to be completed in 2009.

Trump International Hotel & Tower, Waikiki HI- a $600 million 40 storey hotel condominium scheduled to be completed in 2009.

Trump International Hotel &Tower, New Orleans LA- a $400 million, 70 storey building with retail space, luxury hotel rooms, and luxury condominiums. It is scheduled for completion in 2009 and will be the tallest building in the City of New Orleans and in the State of Louisiana.

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Trumps International Hotel & Tower, Fort Lauderdale FL-a $200 million hotel condominium on Fort Lauderdale's oceanfront. Currently being built, it is scheduled to be completed in 2008.

Trump International Hotel & Tower (Tower I), Las Vegas, NV- a $600 million 64­storey hotel-condominium on Las Vegas Boulevard. It will contain 1,200 condominium hotel units. It will be Las Vegas' tallest residential building. Currently being built, it is scheduled to be completed in early 2008.

Trump International Hotel & Tower (Tower II), Las Vegas, NV - the mirror image

of Tower 1.

Trump Plaza, New Rochelle, NY - a $180 million, 40 storey building containing luxury condominiums, scheduled to be completed at the end of 2007.

Trump Hollywood, Hollywood Beach, FL-a luxury residential beach front condominium currently under construction.

Trump Plaza, Jersey City NJ - a $650 million development consisting of one 55 storey tower and one 50 storey tower with luxury condominium hotels.

Trump Las Olas Beach Resort, Fort Lauderdale, FL- a boutique hotel condominium building currently in development along the Fort Lauderdale oceanfront.

Trump Towers Atlanta, Atlanta GA- a $320 million, 48 storey luxury residential condominium.

International Projects:

Outside the United States, my name is on the following real estate projects:

Trump International Golf Club in Canouan Islands, Grenadines-an 18-hole Jim Fazio designed course with views of the Caribbean Sea from nearly every hole.

Trump International Golf Links, Scotland-a 1400+ acre development containing a golf course,S star hotel, holiday homes, and a golf academy. It is scheduled to be completed in 2010.

Trump World, South Korea- luxury high-rise residential condominium towers. There are seven separate projects located in Seoul and Bursan, several of which contain multiple towers.

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Trump Ocean Resort, Baha, Mexico-located on 17 acres of Mexican coastline, it will offer luxury hotel condominiums, a spa, tennis courts, and restaurants.

Trump Tower-a 70 floor skycraper in Tel Aviv, Israel. It will be the tallest building in Israel.

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I Trump International Hotel & Tower Toronto, Ontario- a $500 million, 70 storey

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building with luxury hotel rooms and residential condominiums. It will be the tallest residential building in Canada. It is scheduled to be completed in 2010.

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Trump Ocean Club International Hotel & Tower, Panama- a $220 million, 65 -~

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storey waterfront condominium tower that will include 300 hotel condominiums, 500 residential condominium units, retail shops, a casino, a private beach, yacht club. and spa.

Trump International Hotel & Tower, Palm [umeirah, Dubai, United Arab Emirates- a $600 million, 48 storey luxury hotel located on the world famous Palm Island.

Trump Plaza Istanbul-A 50 storey luxury residential and hotel condominium consisting of 350 residential condominiums and 450 hotel condominium units and

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approximately 50 stories.

6. The TRUMP name has gained such a level of prominence in real estate development that real estate developers pay me for the privilege of using the TRUMP name for their projects, even though my involvement in such project is limited to lending my name and/or my development and management expertise to the same.

7. The association of the TRUMP name with real estate development extends even to

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the academic arena, through Trump University. a business education company launched by me in 2005, where students acquire the skills and the strategies they need to make wise and profitable decisions in real estate investment, among other business-related disciplines. In addition, The Trump Institute. a company that provides live in-person training and seminars in the fields of real estate and business, was launched by me in January of 2006.

8. The Trump name has gained Widespread international acclaim, not only in the filed of real estate, but also through other ventures. In particular, my hosting of the

e popular reality television show The Apprentice. in which a group of competitors battle for high-level management job in one of my commercial enterprises, has catapulted the TRUMP name into households all over the world. The reality television show The Apprentice is broadcast by cable TV providers in the Philippines and as a result the TRUMP name is associated with me by Philippine viewers and with my business as a real estate developer.

9. The TRUMP name has also been successfully marketed on a large number of products, a few examples of which include the Donal J. Trump Signature Collection (a clothing line and collection of men's accessories. luggage, small leather goods. belts, and eyewear), Trump Vodka, Trump Mortgage, Trump Magazine, Trump Ice (bottled water), TRUMP The Game (a board game), Trump Home (a furniture line), Trump Model Management (a modeling agency), Trump Steaks (fine meats), and GoTrump, an online travel website. As my various commercial enterprises grow in number, scope and diversity, it can be expected that the TRUMP name will only continue to grow in global popularity as a name synonymous with business savvy and product excellence.

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10. By virtue of such longstanding use and promotion, the TRUMP name is a trademark that is internationally well known and registered throughout the world. I have zealously protected the TRUMP name trademark worldwide, applying for its registration in more than forty-two countries, as reflected in the Country List Report attached hereto as Annex A. I am also attaching some representative samples of these trademark registration certificates duly certified by the industrial property offices that issued them as [Annex B-1.]

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11. I have, by myself and through my various licensees, continuously used the TRUMP name trademark worldwide for over twenty-five (25) years in the business of real estate development and in many other ventures.

These statements are corroborated by the other pieces of evidence submitted by the Appellant which show that his marks are well known internationally. Even prior to the filing of his trademark application, the Appellant had registered or applied for registration his marks for services under Class 36, in the following countries:

1. Brazil, for the marks TRUMP and VILLATRUMP; Canada, for the marks TRUMP and 1 TRUMP INfERNATIONAL HOTEL & TOWER;

2. Member countries of the European Union, for the mark TRUMP; 3. Russian Federation, for the mark TRUMP TOWER; 4. Mexico, for the marks TRUMP and TRUMP ELEGANCE; 5. Panama, for the marks TRUMP and TRUMP OCEAN CLUB; 6. South Korea, for the marks TRUMP and TRUMP WORLD; 7. St. Vincent (Grenadines), for the marks TRUMP ISLAND VILLAS and and TRUMP

ISLAND VILLAS AT CANOUAN ISLAND; 8. the United Kingdom, for the marks TRUMP ISLAND VILLAS and TRUMP ISLAND

VILLAS AT CANOUAN ISLAND; and 9. the United States, for the marks THE RESIDENCES AT TRUMP NATIONAL GOLF

CLUB, THE TRUMP WORLD TOWER, THE TRUMP WORLD TOWER AT UNITED NATIONS PLAZA & Design, TRUMP INTERNATIONAL HOTEL & TOWER, TRUMP INTERNATIONAL PLAZA, TRUMP INTERNATIONAL PLAZA DESIGN, TRUMP LAS OLAS BEACH RESORT, TRUMP OCEAN CLUB, TRUMP PALACE, TRUMP PARK AVENUE, TRUMP PARK AVENUE, TRUMP ROYALE, TRUMP TOWER, TRUMP TOWER TAMPA & Design.

The European Union is composed of almost all of the countries in Western Europe and some countries in the Eastern part of the same continent. There were also registrations and/or applications filed in 2006 and 2007 for goods and services under Class 36 and other classes not only in the above-mentioned countries but also in the Philippines, Argentina, Australia, Bahamas, Barbados, Bermuda, Chile, China, Colombia, Costa Rica, Croatia, Dominican Republic, Egypt, Iceland, India, Indonesia, Israel, Jamaica, Japan, Kazakhstan, Macau, Malaysia, Morocco, New Zealand, South Africa, Switzerland, Taiwan, Thailand, Turkey, Ukraine, United Arab Emirates, and Vietnam. These pieces of evidence would consist of a combination of the criteria laid down l

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by Rule 102 of the Trademark Regulations for the purpose of determining whether a mark is well known."

The Appellant also hosts the television show "The Apprentice" which is shown in many countries including the Philippines. The show is set in his TRUMP properties. The Appellee's argument that there is another television show with the same name is of no moment. What is in issue is the name TRUMP and not the name or phrase "The Apprentice".

Significantly, it is not required that the mark is well known by the public at large. It is sufficient that the mark is well known in the relevant segment or sector of the public. Thus, the name or mark TRUMP while may be of no importance to many Filipinos, is known in the real estate world. In Sehwani, Inc. vs. In-N-Out Burger", the Supreme Court held:

The fact that respondent's marks are neither registered nor used in the Philippines is of no moment. The scope of protection initially afforded by Article 6bis of the Paris

Convention has been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, wherein the W orld Intellectual Property

Organization (WIPO) General Assembly and the Paris Union agreed to a nonbinding recommendation that a well-known mark should be protected in a country even if the mark is neither registered nor used in that country. Part I, Article 2(3) thereof provides:

(3) [Factors Which Shall Not Be Required] (a) A Member State shall not require, as a condition for determining whether a mark is a well-known mark:

(i) that the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, the Member State;

I (ii) that the mark is well known in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, any jurisdiction other than the Member State; or

(iii) that the mark is well known by the public at large in the Member State. (Underscoring supplied)\ xxx

22 RULE 102. Criteriafor determining whether a mark is well-known. - In determining whether a mark is well-known, the followingcriteria or any combination thereof may be taken into account:

(a) the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

(b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;

(c) the degree of the inherent or acquired distinction of the mark; (d) the quality-image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world; (f) the exclusivity of registration attained by the mark in the world; (g) the extent to which the mark has been used in the world; (h) the exclusivity of use attained by the mark in the world; (i) the commercial value attributed to the mark in the world; G) the record of successful protection of the rights in the mark; (k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and, (I) the presence or absence of identical or similar marks validly registered for or used on identical or

similar goods or services and owned by persons other than the person claiming that his mark is a well-known mark.

23 G. R. No. 171053, 15 Oct. 2007.

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Aside from the specific provisions of RA. No. 8293, the Paris Convention and the WIPO Joint Recommendation have the force and effect oflaw, for under Section 2, Article II of the Constitution, the Philippines adopts the generally accepted principles of international law as part of the law of the land. To rule otherwise would be to defeat the equitable consideration that no one other than the owner of the well-known mark shall reap the fruits of an honestly established goodwill.

Having said, this Office therefore agrees with the Appellant's assertion in his Affidavit that allowing the registration of the Appellee's mark will result in him and his interests incurring damage, to wit:"

12. xxx 13. . .. Megaworld may be inclined to argue that I have not actually used my name and

mark TRUMP in the Philippines but this is possible argument does not detract from the fact that TRUMP is an internationally well-known mark in the Philippines and the TRUMP mark is associated with me exclusively by those in the "relevant sector" of the public. In addition, I have a period of three years to commence actual use of the TRUMP trademark in the Philippines, and my daughter Ivana Trump has in fact commenced serious negotiations with local real estate developers for the use of the TRUMP name and trademark for their projects. In brief under Section 123.1(e) of the IP Code, it is clear 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 the public at large, including knowledge obtained as a result of the promotion of the mark." This "promotion" is evidenced by the broadcast in the Philippines of

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the Apprentice and by the availability of my business books among Philippine bookstores, among others.

14. Respondent's choice of THE TRUMPS as a trademark is an attempt to capitalize on the worldwide reputation of my name, TRUMP, and the TRUMP name and trademark that I have established through the worldwide use of the trademark for over twenty-five (25) years. Given the international renown of the TRUMP name and trademark, respondent-applicant's choice of THE TRUMPS as a trademark for its real estate development and related services will dilute the distinctiveness of the TRUMP name trademark and allow it to reap the benefits and popularity of my name without any expense to the respondent-applicant.

15. The real estate development projects bearing the THE TRUMPS trademark will be ascribed to me and my enterprises due to the iconic status of TRUMP as an international developer of high-end real estate. Any real estate development project of respondent-applicant bearing the THE TRUMPS trademark would lead to the public to mistakenly assume that the project was authorized by or emanated from, or was somehow endorsed by me.

16. xxx

17. With such Widespread acclaim encompassing numerous international enterprises and ventures worth billions of dollars, the TRUMP name trademark is a well­known trademark within the meaning of Article 6bis of the Paris Convention and Article 16(2) of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).

24 pp. 6-10.

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18. The aforementioned facts show that as originator and prior user of the TRUMP name trademark. moreso because the mark is my name, I have developed the goodwill and reputation of the trademark. which is easily associated with real estate development ventures, as well as business enterprises. I have the right to the exclusive use of the trademark TRUMP as a symbol of goodwill that I have fostered and developed at substantial expense for over twenty-five (25 years.

19. xxx

20. Respondent-applicant's application for THE TRUMPS is intended to take advantage of the association the public will inevitably make with my name, the TRUMP

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trademark. A real estate development project bearing the THE TRUMPS trademark will be "self-promoting" in the commercial sense because of that association. Prospective customers of respondent-applicant who are familiar with me and my various commercial enterprises will easily be deceived into thinking that respondent-applicant's development project is endorsed by or otherwise connected to me and my own business, and will thus be encouraged to invest mainly due to that fact. This scenario is all the more plausible considering that, as I have briefly discussed earlier, many real estate development projects around the world that carry the Trump name are not projects of mine, but have availed of my name and my business expertise with my permission for a certain fee. In this sense, granting the application will give respondent-applicant an unfair advantage because it will reap the benefits of my extensive advertising, and promotional efforts for the trademark, not to mention the fame I have garnered as a media personality, without bearing any share of the expense and without any form of royalty to me for the exploitation of the value of my name. Respondent-applicant's THE TRUMPS trademark is an imitation of my own ubiquitous TRUMP trademark.

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21. Given the fact that my TRUMP name and trademark is a well-known trademark for real estate development and many other business ventures, its adoption by respondent-applicant as a self-promoting trademark for real estate development ventures will enhance the commercial appeal of respondent-applicant's projects among Filipinos who have associated the TRUMP trademark with me and my various enterprises. The public will likely be misled into believing that respondent­applicant's projects are sponsored by or under license from me. when the truth is that this is an unlicensed and unlawful use of my name and trademark TRUMP since I have not given my "written consent" to its use by Megaworld Corporation.

22. The respondent-applicant's use of the THE TRUMPS trademark for real estate development project will damage my reputation, and that of my businesses. As the originator and first user of the TRUMP trademark, I have the exclusive right to exploit its reputation and popularity either by using it on other products and services, or by licensing its use on such other products or services by other parties. By seeking the use and registration of the THE TRUMPS trademark on a real estate development venture, which project is easily associated with me and my own international real estate business, respondent-applicant seeks to curtail my right to exploit the value and popularity of the TRUMP name trademark.

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23. If this Office were to allow respondent-applicant to register the trademark THE TRUMPS for its real estate development services, it would practically make it a compulsory licensee of the trademark without any obligation to pay a royalty. It would deprive of the right to expand the use of the TRUMP trademark. While thus benefiting from the use of the TRUMP trademark, respondent-applicant would be totally beyond my control, giving me no means of ensuring the quality of the products produced by respondent-applicant and, consequently, would have no way of preserving the reputation, popularity and distinctiveness of my TRUMP trademark. The unlicensed use by respondent-applicant of my name and mark TRUMP for its competing real estate development services will undoubtedly damage and diminish my reputation in that regard. It will also deceive the Philippine public into thinking that respondent-applicant's use of my name and mark has been authorized, licensed or sponsored by me. This is a clear damage and prejudice to me that justifies the rejection of the respondent-applicant's trademark application.

24. The trade channels for my TRUMP name and mark and the prospective customers of respondent-applicant's real estate development services are identical. It is, therefore, inevitable that respondent-applicant's use of my name and mark for its real estate development services will engender among purchasers the false impression that is services are sponsored or under license from me.

Assuming In arguendo that the Appellant's mark IS considered well-known internationally but not in the Philippines, this does not mean that the Appellant's right to the mark is inferior to the Appellee's. In opposing the Appellee's trademark application, the Appellant has raised the issue of ownership of the mark and is seeking to prevent damage to his interests the parties being direct and actual business competitors.

In this regard, the Appellant submitted undisputed evidence that it has owned and used the mark TRUMP for real estate since 1968 and has obtained and continues to obtain registrations for the mark for in several countries. In the Philippines, he has a pending application for the

1 registration of the trademark covering real estate. Thus, if the Appellee is allowed to register that !~

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~ trademark for real estate, it would gain exclusive rights to use it in the Philippines to the prejudice of the Appellant. It would in effect, bar the Appellant from entering into the Philippine real estate business using the mark TRUMP. The Appellant argues":

The requirement under Section 123.1(d), i.e, That the prohibition against the registration of a mark that is identical to another that has been registered in the name of another, or is the subject of an application with an earlier filing or priority date, should be placed in proper context. This provision of law presupposes that the proprietor of either a registered mark or a mark with an earlier filing date is the true owner of a mark. In other words, the mere fact that one filed an application for registration of a mark ahead of another, does not automatically vest in the former, trademark rights. x x x

In this regard, the Philippines implemented the TRIPS Agreement when the IP Code took into force and effect on 01 January 1998. Art. 15 of TRIPS Agreement reads:

25 Appellant's Memorandum, pp. 14-15.

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Section 2: Trademarks

Article 15

Protectable Subject Matter

1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967).

3. Members may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. An application shall not be refused solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application.

4. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to registration of the trademark.

J 5. Members shall publish each trademark either before it is registered or promptly after it is registered and shall afford a reasonable opportunity for petitions to cancel the registration. In addition, Members may afford an opportunity for the registration of a trademark to be opposed.

I Art. 16 (1) of the TRIPS Agreement states:

( Article 16

Rights Conferred

1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.

Significantly, the IP Code adopted the definition of the mark under RA 166, to wit:

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121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods; (Sec. 38, RA. No. 166a).

Sec. 122 of the IP Code states:

Sec. 122. How Marks are Acquired.- The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Sec. 2-A, RA. No. 166a)

There is nothing in Sec. 122 which says that registration confers ownership of the mark. J What the provision speaks of is that the rights in a mark shall be acquired through registration,

which must be made validly in accordance with the provisions of the law. Significantly, Sec. 122

makes reference to Sec. 2-A of R.A. 166, as amended, the old Law on Trademarks, which states:

Sec. 2-A. Ownership of trademarks, tradenames and service marks; how acquired. ­

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Anyone who lawfully produces or deals in merchandise of any kind or who engages in any ~ lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive use a trade-mark, a trade-name, or a service-mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or services of others. The ownership or possession of a trade-mark, trade-name, service-mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law."

In Shangri-La International Hotel Management, Ltd., et. a1 v. Developers Group of Companies, Inc.}6 the Supreme Court defined the import and scope of Sec. 2-A of RA 166, thus: ~

x x x For, while Section 2 provides for what is registrable, Section 2-A, on the other hand,

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sets out how ownership is acquired. These are two distinct concepts. ,i~ l

Under Section 2, in order to register a trademark, one must be the owner thereof J

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and must have actually used the mark in commerce in the Philippines for 2 months prior to the application for registration. Since "ownership" of the trademark is required for registration, Section 2-A of the same law sets out to define how one goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce is also the test of ownership but the provision went further by saying that the mark must not have been so appropriated by another. Additionally, it is significant to note that Section 2-A does not require that the actual use of a trademark must be within the Philippines. Hence, under RA. No. 166, as amended, one may be an owner of a mark due to actual use thereof but not yet have the right to register such ownership here due to failure to use it within

the Philippines for two months. (Underscoring supplied)

Further, Sec. 138 ofthe IP Code, provides:

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26 G. R. No. 159938, 31 March 2006.

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SEC. 138. Certificates of Registration.-A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. (Emphasis supplied) t

From this legal backdrop it is plain that it is not simply the registration that confers ownership of trademark; rather, it is ownership of the trademark that gives rise to the right to cause its registration and if registered to enjoy exclusive use thereof for the goods associated with it.

Accordingly, it is important to clarify the so-called "first-to-file rule". The "rule" with

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respect to trademarks is not found in the IP Code. What the law provides is Sec. 123.1(d) ofthe IP Code.

I' While the trademark application with an earlier filing date or the earlier registration may

be invoked as a ground for opposition or petition for cancellation, this does not necessarily mean that the application with the earlier filing date would be allowed. The application would still have to be examined to be determined whether the mark complies with the requirements of registrability under the law. Likewise, a previous or earlier trademark registration cited as a ground for opposition may by itself be canceled.

Corollarily, even if the opposer or the petitioner is the one invoking the so-called "first­1 to-file rule", it would not apply in their favor if it is determined that the alleged "first-filer" is not 1

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the owner of the trademark, or merely a distributor or agent of the owner, or is not authorized by the owner to procure registration of the trademark in his, her, or its favor; or that the adoption and/or use by the "first-filer" of the trademark, even in good faith, is preceded by an actual use by

1 i another, also in good faith, prior to the taking into force and effect of RA 8293. 1 l,

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Wherein it may be possible for two or more persons or entities to claim ownership and use of identical trademarks on identical or similar goods, the claim must be in good faith, that is, the basis of ownership is independent from or is not derived from the other and absolutely, there was no copying. In this ideal situation, whoever files the application first will benefit under

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Section 123.1(d) of the IP Code. The claim of ownership if contested must be able to stand ground.

The so-called "first-to-file rule" could not have been intended to justify the approval of an application simply because it was the first application to be filed regardless of another's better or superior right to the mark applied for. The rule cannot be used to commit or perpetrate an unjust and unfair claim. A trademark is an industrial property and the owner thereof has property rights over it. The privilege of being issued a registration for its exclusive use is based on the concept of ownership. The IP Code implements the TRIPS Agreement and therefore, the idea of "registered owner" does not mean that ownership is established by mere registration but that registration establishes merely a presumptive right of ownership. That presumption of ownership yields to superior evidence of actual and real ownership of the trademark and to the TRIPS Agreement requirement that no existing prior rights shall be prejudiced.

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I In this instance, the mark TRUMP as used by the parties on real estate is distinctive. It

does not define or describe the goods or services. Thus, it is remote that the parties came up with the same mark coincidentally. That it was mere coincidence that the parties, business competitors at that, came up with the same mark for use on the same goods is a story too good to be true, especially when the Appellant had used the mark way ahead of the other, and the Appellee, well aware of the prior conduct of business by the Appellant involving the mark TRUMP has offered no plausible explanation on how it was able to coin the same trademark. Its claim that its mark is derived from "triumph" is lame. The fair inference that can be drawn, is that the Appellee merely copied the mark from the Appellant. That the Appellee beat the Appellant in the filing of the trademark application in the Philippines is of no moment. Because it is merely copied from another, it cannot claim ownership of the mark. Since it is not the owner of the mark, it cannot be registered in its favor for its exclusive use.

Moreover, Sec. 236 of the IP Code provides:

Sec. 236. Preservation of Existing Rights.-Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act.

In this regard, Sec. 236 of the IP Code guarantees that the change in the legal system shall not prejudice existing rights acquired before the IP Code took effect on 01 January 1998. To this Office's view, Sec. 236 is not only intended as a defense against suits for infringement nor its application pertains to enforcing existing trademark registrations issued under the Old Law on Trademarks (Rep. Act No. 166). To limit the application of Sec. 236 as a defense against trademark infringement would not resolve the issue as to who has the superior right over the trademark. On the other hand, the recognition of the trademarks rights by virtue of existing registrations under Rep. Act No. 166 is entombed under a separate provision in the IP Code, particularly, Sec. 239.227

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Sec. 236 of the IP Code manifests due process and observance of justice, fairness or equity. The change in the legal system has necessitated the adoption of the provision to protect the rights of those who have already invested into and established goodwill on their trademarks. To give meaning to Sec. 236 of the IP Code, a conclusion is drawn that the rights referred thereto include those exercised or may be exercised by owners and prior users of unregistered trademarks that were acquired in good faith before the IP Code took effect. Among these rights is the protection of the owner of a mark against registration of the same mark by another person.

The Appellee should be reminded that the intellectual property system was established to recognize creativity and give incentives to innovations. The essence of trademark registration is to give protection to the owners of trademarks. The function of a trademark is to identify distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent

27 Sec. 239.2 reads, "Marks registered under Republic Act No. 166 shall remain in force but shall be deemed to have been granted under this Act and shall be due for renewal within the period provided for under this Act and, upon renewal, shall be reclassified in accordance with the International Classification. Trade names and marks registered in the Supplemental Register under Republic Act No. 166 shall remain in force but shall no longer be subject to renewal."

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fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product."

The trademark registration system seeks to reward entrepreneurs and individuals who through their own innovations were able to distinguish their goods or services by a visible sign that distinctly points out the origin and ownership of such goods or services. The IP system should not serve as a haven for people or entities who would take advantage of the intellectual creation of others, whether a local resident or a foreigner.

WHEREFORE, premises considered, the appeal is hereby GRANTED. The appealed decision of the Director of the Bureau of Legal Affairs is REVERSED and SET ASIDE. Let a copy of this Decision as well as the records be furnished and returned to the Director of Bureau of Legal Affairs for appropriate action. Further, let also the Director of the Bureau of Trademarks and the library of the Documentation, Information and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance, and records purposes.

SO ORDERED.

.JUN 0 1 2009 Makati City.

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28 Pribhdas J. Mirpuri v. CA, G.R. No. 114508, 19 Nov. 1999, citing Etepha v. Director of Patents, 16 SCRA 495 (1966), Gabriel v. Perez, 55 SCRA406 (1974).