INTELLECTUAL PROPERTYPHILIPPINES

-versus-

PAGODA PHILS. INC.Opposer

}}}}}}}}

UNIVERSAL CANNING, INC. }C/O ANITA L. KAW }

RespondentjApplicant }x-------------------------------------------x

DECISION

IPC NO. 14-2007-00292Case Filed: 11 October 2007

Opposition to:Serial No. 4-2006-003977Date Filed: 11 April 2006TM: "FAMILY'S BRAND"

Decision No. 2008 - fig

This pertains to the Notice of Opposition filed on 16 October 2007 tothe registration of the trademark "Family's Brand" for use on goodsclassified under Class 30, more specifically tomato sauce and catsup productsunder Application Serial No. 4-2006-003977 lodged by Pagoda PhilippinesInc., and published for opposition in the Trademark Electronic Gazetteofficially released for circulation on 13 July 2007.

Opposer Pagoda Philippines, Inc. is a corporation duly organized andexisting under the laws of the Philippines, with business address at 4626Valenzuela Street, Old Sta. Mesa.

RespondentjApplicant is Universal Canning, Inc., a domesticcorporation with principal place of business at Calle San Juan Isidro, Ayala,Zamboanga City.

Herein opposer alleges that it will be damaged by the approval of saidapplication and filed its opposition to said application based on the followinggrounds:

"Respondent-Applicant's trademark FAMILY'S BRAND (BRANDhaving been disclaimed apart from the mark shown) is identicaland/or confusingly similar to Opposer's trademark FAMILY andderivatives thereof: Accordingly:

1. The approval of the application in question is contrary~Section 123.1 (d) and (f) of Republic Act No. 8293; '! C<.Y

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

2. The approval of the application in question will violateOpposer's right to the exclusive use of the trademarkFAMILY and derivatives thereof which are dulyregistered in its favor and the extension of the use ofsaid marks to other goods;

3. The approval of the application in question has causedand will continue to cause great and irreparable damageand injury to herein Opposer;

4. Respondent-Applicant is not entitled to register thetrademark FAMILY'S BRAND in its favor."

The Opposer relied on the following facts to support its opposition:

1. Opposer, through its predecessor-in-interest, VioletaAlday, adopted and started using the trademark FAMILYfor rubbing alcohol on January 5, 1969. Since then,opposer has continued and extended the use of thetrademark FAMILY and derivatives thereof to othergoods, including various food products.

2. The trademarks FAMILY & REPRESENTATION OF ARIBBON was first registered in favor on opposer'spredecessor-in-interest on April 13, 1981 underregistration No. 29065.

3. At present, the trademark FAMILY and derivativesthereof, are duly registered in favor of opposer under thefollowing registrations:

a. Registration No. 51745 for the trademarkFAMILY & REPRESENTATION OF ARIBBON issued on November 5, 1991 foruse on rubbing alcohol (Class 5)

b. Registration No. 65188 for the trademarkFAMILY issued on September 2, 1997 foruse on toothpaste (Class 3)

c. Registration No. 4-1994-96831 for thetrademark FAMILY & REPRESENTATIONOF A FAMILY issued on July 12, 2000 foruse on absorbent cotton (Class 5)

d. Registration No. 4-2000-02713 for thetrademark FAMILY VITAGEL issued onJanuary 20, 2003 for use on hand sanitizer(Class 5)

e. Registration No. 4-1993-085710 for the

trademark FAMILY issued on July 8, 200~~ . . -:for use on liquid detergents (Class 3) ~

2

f. Registration No. 4-1992-080068 for thetrademark FAMILY issued on October 30,2004 for use on mosquito coils andinsecticides (Class 5)

g. Registration No. 4-2004-004128 for thetrademark ALCOLOGNE issued on April 28,2006 for use on alcohol with cologne andgel, alcohol with cologne, vitamins and gel(Class 1)

4. In addition, opposer filed the following applications forthe registration of the trademark FAMILY andderivatives thereof, namely:

a. Application Serial No. 4-1999-09740 for thetrademark FAMILY filed on December 17,1999 for use on various food productsbelonging to classes 29, 30, 31, and 32

b. Application Serial No. 4-2000-02712 for thetrademark FAMILY ALOEGEL filed on April5, 2000 for use on hand sanitizer fallingunder Class 5

5. Over the years, opposer has used the trademark FAMILYand derivatives thereof for various food products:

a. On July 20, 1990, Pagoda Philippines, Inc.started using the trademark FAMILY forvarious food products such as cracker nuts,chicharon, and uraro.

b. On March 20, 1992, Pagoda Philippines,Inc. filed Application Serial No. 4-1992­080068 for the registration of thetrademark FAMILY for use on mosquitocoils, insecticides, cosmetics, and foodproducts. Subsequently, it temporarilystopped the use of the trademark FAMILYon cracker nuts, chicharon, and uraro andrequested for the amendment of saidapplication by limiting it to mosquito coilsand insecticides which amendment wasduly approved

c. In 1998, Pagoda Philippines, Inc. resumedthe use of the trademark FAMILY on foodproducts and on December 17, 1999, itfiled Application Serial No. 4-1999-09740for the registration of the trademar~~

FAMILY for use on chicharon, nuts, po~ I":

corn, cheese curls, candies, chocolate bars,jellies, powdered fruit and juices, cannedgoods such as sardines, mackerel, cornedbeef, green peas, milk, fruit juices,chocolate, fruit cocktail, etc.

6. Opposer has not abandoned the use of its trademarkFAMILY and derivatives thereof but continues its usethereof up to the present

7. Through the years, Pagoda Philippines Inc. has advertisedits products bearing the trademark FAMILY andderivatives thereof in various media. Through extensiveadvertising and promotional campaigns and because ofthe high quality of its products bearing the trademarkFAMILY and derivatives thereof, said marks havebecome distinctive of opposer's products and haveestablished valuable good will in favor of opposer. Theconsuming public has associated products bearing themark FAMILY and derivatives thereof with Pagoda,Philippines.

8. In IPe No. 14-2005-00048 and IPe No. 14-00119, thisOffice rejected the applications of respondent-applicantfor the registration of the trademarks FAMILY'S BRANDfor use on mineral water and fruit juices, and for use ongreen peas, respectively on the ground that respondent­applicant's mark is identical and/or confusingly similar toopposer's trademark FAMILY and derivatives thereof.

Respondent-Applicant on 18 December 2007 filed its answer toopposer's Motion for Opposition after having been granted Motion forExtension to File An Answer. In its verified Answer, Respondent-Applicantspecifically denied opposer's allegations that the mark FAMILY'S BRAND isidentical or confusingly similar to Opposer's trademark.

Respondent-Applicant made the following defenses to support itsapplication:

1. Respondent-Applicant's Trademark Application involves amark which is NOT identical with a registered markbelonging to a different proprietor or with an earlier filingdate with respect to the same or closely related goods orservices as provided by Section 123.1 (d) and (f) of R.A.8293 since:

a. Opposer does not have trademark~registration or application, pending or I I~

4

otherwise, with an earlier filing or prioritydate for "tomato sauce" and "catsup" orfor any closely related or similar foodproduct.

b. Opposer's shotgun TrademarkApplication (with Serial No. 4-1999­09740) under classes 29, 30, 31, and 32has evidence of actual use only for class29.

c. Respondent-Applicant has trademarkapplications (with Serial Nos. 4-1993­87228 and 4-1998-09144) with earlierfiling or priority dates for food productsunder class 29 and which applicationshave already been approved forpublication and negates Opposer's muchlate application with Serial no. 4-1999­09740.

d. Opposer does not have aninternationally well-known mark.

e. Opposer cannot validly and legally claimthat Respondent-Applicant's trademarkapplication for "tomato sauce" and"catsup" under "FAMILY'S BRAND" iscontrary to section 123.1 (d) and (f) ofthe Intellectual Property Code.

2. Respondent-Applicant has goodwill to protect formanufacturing and selling food products.

3. Respondent-Applicant is entitled to the registration of its"FAMILY'S BRAND" trademark for use under class 30for "tomato sauce" and "catsup" since the same is notprohibited by law.

On January 9, 2008, a Notice of Preliminary Conference was issued bythis Bureau setting the preliminary conference on February 4, 2008 pursuantto Rule 2, Section 14 and Subsections 14.2 and 14.3 of Office Order No. 79.Thereafter the parties submitted their respective Position papers. Hence, thiscase is now ripe for decision.

The main issue to be resolved in this case is: Whether or notRespondent's application for registration of mark "FAMILY'~BRAND" should be denied for being confusingly similar to Opposer's

o»>:5

mark "FAMILY".

Opposer claims they have a right to the exclusive use of the trademarkFAMILY and derivatives thereof which are duly registered in its favor and theextension of the use of said marks to other goods. On the other hand,Respondent-Applicant avers that their trademark application involves a markwhich is NOT identical with a registered mark belonging to a differentproprietor or with an earlier filing date with respect to the same or closelyrelated goods or services as provided by Section 123.1 (d) and (f) of RA8293.

Section 123.1. of Republic Act No. 8293 states:

"Sec. 123. Registrability. - 123.1. A mark cannotbe registered if it:

xxx

(d) Is identical with a registered mark belongingto a different proprietor or a mark with anearlier filing or priority date, in respect of:

(i) The same goods orservices, or

(ii) Closely related goods orservices, or

(iii) If it nearly resembles such amark as to be likely todeceive or cause confusion

Cf) Is identical with, or confusingly similar to,or constitutes a translation of a markconsidered well-known in accordance with thepreceding paragraph, which is registered in thePhilippines with respect to goods or serviceswhich are not similar to those with respect towhich registration is applied for: Provided, Thatuse of the mark in relation to those goods orservices would indicate a connection betweenthose goods or services, and the owner of theregistered mark...

It cannot be denied that Opposer has been first to use the mark"FAMILY" and its derivatives. Records show that as early as 1969, Opposerthrough its predecessor-in-interest started using the trademark for rubbingalcohol and has since then become a household name for like Products~ J.~

Opposer was also first to register the trademark "FAMILY &/ 1CctJ6

REPRESENTATION OF A RIBBON" in 1981 and has since then registeredand used the mark "FAMIlV" and derivatives thereof up to the present.Though it is imperative to note that opposer's registration and use of themark has been limited to use in products belonging to Classes 1, 3, and 5 andit was only in 1999 that such registration was expanded to include foodproducts belonging to Classes 29, 30, 31, and 32.

Meanwhile, Respondent-Applicant has trademark applications withearlier filling dates (1993 and 1998) for food products under Class 29 alreadyapproved for publication. This fact, respondent claims, negates Opposer'ssubsequent application for registration and use of the mark in various foodproducts. At this point it is important to note that the cited registration isonly for food products under Class 29. The subject of the present case is forregistration of the mark for food products under Class 30, which applicationwas filed on April 11, 2006.

In sum, Opposer's claim of exclusive use of the mark "FAMIlV" stemsfrom the fact that they were first to register said mark and has thus reservedthe right to use said mark in extension to other products. Therefore toallow the registration of the mark "FAMIlV'S BRAND" will give rise toconfusing similarity between the two marks. On the other hand, Respondent­Applicant adamantly claims that it was first to file application for registrationof said mark "FAMIlV" for food products and thus its application does notinvolve a mark which is confusingly similar to any registered mark withrespect to the same or closely related goods or services.

In ascertaining whether one trademark is confusingly similar to or is acolorable imitation of another, jurisprudence has developed two tests, thedominancy test and the holistic test. The dominancy test focuses on thesimilarity of the prevalent features of the competing trademarks that mightcause confusion. In contrast, the holistic test requires the court to considerthe entirety of the marks as applied to the products, including the labels andpackaging, in determining confusing slrnilarlty.'

In the case of McDonald's Corporation et. al. vs. l.C. Big MakBurger,Inc.2 the Supreme Court ruled:

2

"The dominancy test considers the dominant features inthe competing marks in determining whether they areconfusingly similar. Under the dominancy test, courts givegreater weight to the similarity of the appearance of theproduct arising from the adoption of the dominant features ofthe registered mark, disregarding minor differences. Courtswill consider more the aural and visual impressions created bythe marks in the public mind, giving little weight to factors lik~JiIIr:

Societe des Produits Nest le vs. Court of Appeals , G.R. No. 112012. April 4, 2001 (!~G.R. No. 143993, August 18, 2004

7

prices, quality, sales outlets and market segments.

Thus, in the 1954 case of Co Tiong Sa v. Director ofPatents, the Court ruled:

"It has been consistently held that the question ofinfringement of a trademark is to be determined by the test ofdominancy. Similarity in size, form and color, while relevant,is not conclusive. If the competing trademark contains themain or essential or dominant features of another, andconfusion and deception is likely to result, infringement takesplace. Duplication or imitation is not necessary; nor is itnecessary that the infringing label should suggest an effort toimitate. (G. Heilman Brewing Co. vs. Independent BrewingCo., 191 F., 489, 495, citing Eagle While Lead Co. vs. Pflugh(CC) 180 Fed. 579).

The test of dominancy is now explicitly incorporatedinto law in Section 155.1 of the Intellectual Property Code,which defines infringement as the "colorable imitation of aregistered mark...or a dominant feature thereof.

In earlier cases, the Supreme Court already had opportunity to rulethat "in cases involving infringement of trademarks, it has been held thatthere is infringement when the use of the mark involved would likely causeconfusion or mistake in the mind of the public or to deceive purchasers as tothe origin or source of the commodity; that whether or not a trademarkcauses confusion and likely to deceive the public, is a question of fact whichis to be resolved by applying the "test of dominancy", meaning, if thecompeting trademark contains the main or essential or dominant features ofanother by reason of which confusion and deception are likely to result, theninfringement takes place; and that duplication or imitation is not necessary, asimilarity of the dominant features of the trademark would be sufflclent. :"

In the instant case, the dominant feature in Opposer's mark is theword "FAMILY". A side-by-side comparison of both marks will also showthat the word "FAMILY" is the most prominent feature of both marks aswell. The contending marks are both written in capitalized letters with thesame style of branding and almost similar font and sizing. Respondent­applicant's mark differs with the opposer's mark only with the addition of theword "BRAND" which, incidentally has been disclaimed by respondent­applicant. And although the word "BRAND" is added to the word "FAMILY" itmerely connotes a variation of Opposer's mark but it does not rule out tha~

3 ~Philippine N ut Inc. YS. Standard Brands Incorporated et. al. 65 SC RA 575; Co Tiong SO YS.

Director of Patents, 94 Phil I citing Viz Clarke YS. Manila Candy Co. 36 Phil 100; Alhambra Cigar &Cigarette Co .. YS. Jao Oge, 47 Phil 75; Etepha A.G. YS. Director of Paten ts and West mon tPharmaceu tica ls Inc. 16 SC RA 49 5

8

their similarities would likely cause confusion because of the presence of themain or essential or dominant feature of Opposer's mark. Because of thesimilarity of the visual and aural impressions created by the marks in thepublic mind it would be easy to mistake that said goods is of the same originor source, thus confusion is likely to result.

Additionally, opposer's claim that its brand has become a householdname and has thus gained popularity and valuable good will cannot be deniedas well as the fact that it was first to use and to register said mark.

Respondent-Applicant's claim that it was first to file application forregistration of the mark "Family" for use in food products cannot stand as adefense for its registration. Said registration is limited to food products underClass 29. It should be emphasized that the subject of present controversy isan application for registration of food products under Class 30, specifically forcatsup and tomato sauce. Opposer already has an existing application forregistration for food products under Class 29, 30, 31 and 32 which, was filedin December 17, 1999 under Application Serial No. 4-1999-09740 whilerespondent's application was filed only in April 11, 2006. Clearly, Opposerwas first to file application for registration of food products under Class 30.

On the issue raised by Respondent-Applicant on non-submission byOpposer of its Declaration of Actual Use for goods under Class 30 pursuant toRule 204 of the Rules and Regulations on Trademarks, Service Marks, TradeNames and Marked or Stamped. Same cannot stand. Supposing thatOpposer's application for registration of Trademark "FAMILV" for use onfood products under Class 30 was refused due to non-submission of the DAU,still, opposer has an existing earlier application for registration under Class29 of food products which, though not of the same class are closely relatedgoods. Thus, a mark cannot be registered if it is identical or nearly resemblesa mark covered by a trademark application with an earlier filing or prioritydate in respect of the same goods or services or closely related goods orservices. Significantly, the law does not require that the application with anearlier filing or priority date must, later on, prosper or be allowed.

The Supreme Court in the case of Esso Standard Eastern, Inc. vs.Court of Appeals 4 defined related goods as:

4

"Goods are related when they belong to the sameclass or have the same descriptive properties; when theypossess the same physical attributes or essentialcharacteristics with reference to their form, composition,texture or quality. They may also be related becausethey serve the same purpose or are sold in grocerystores. Thus, biscuits were held related to milk because~./ n/they are both food products. Soap and perfume, lipstick and VG.R. No. L-2997 I, 3 1 August 1982

9

nail polish are similarly related because they are commonhousehold items nowadays. The trademark "Ang Tibay" forshoes and slippers was disallowed to be used for shirts andpants because they belong to the general class of goods.Soap and pomade, although non-competitive, were held tobe similar or to belong to the same class, since both aretoilet articles."

Clearly, based on the ruling of the Supreme Court in the above case,related goods are not limited to those goods which belong to the same classonly but include those products which flow through the same channels oftrade, contrary to Respondent-Applicant's claim. In the present case,Opposer's products and Respondent-Applicant's products flow through thesame channels of trade in that they are both available for purchase insupermarkets or grocery stores. Also, Opposer has goods using thetrademark "FAMILV" for food products, closely related to the qoods, whichRespondent-Applicant seeks to have its registration approved. Consequently,measured against the dominant-feature standard, applicant's mark must bedisallowed for being confusingly similar to Opposer's mark.

WHEREFORE, premises considered, the Notice of Verified Oppositionfiled by Opposer, PAGODA PHILIPPINES, INC. against Respondent-ApplicantUNIVERSAL CANNING, INC. subject application is, as it is herebySUSTAINED. Consequently, the trademark application of Respondent­Applicant for the registration of "FAMILY'S BRAND" bearing Application SerialNo. 4-2006-003977 filed on 11 April 2006 by UNIVERSAL CANNING, INC.under Class 30 for tomato sauce and catsup of the International Classificationof goods is, as it is hereby, REJECTED.

Let the filewrapper of FAMILY'S BRAND be transmitted to the Bureauof Trademarks (BOT) for appropriate action in accordance with thisDECISION.

SO ORDERED.

Makati City, 18 May 2008.

ES LLITA BELTRAN-ABELARDODi ector, Bureau of Legal Affairs

~

Csoe/oj t/md

10