iPINTELLECTUAL PROPERTYPHILIPPINES

-versus-

JAGDESH N. GAGOOMAL,

APOLLO INTERNATIONAL LTD,Opposer

}}}}}}}

Respondent-Applicant }x---------------------------------------------------------x

DECISION

IPC NO. 14-2007-00027Case Filed : January 17, 2007Opposition to:Appln.Ser.No.4-2006-002354Date Filed: March 2, 2006

Trademark: "ORNET"

Decision No. 0 '6 - /S8

This pertains to the VERIFIED NOTICE OF OPPOSITION filed by ApolloInternational Limited on January 17, 2007 to Application Serial No. 4-2006­002354 for the registration of the mark "ORNET" for tires under Class 12 filed byG. Assanmal & Co. on March 02, 2006, and published for opposition in theelectronic gazette of the IP Philippines (lP Phil.) on September 22, 2006.

Opposer Apollo International Limited is a corporation organized andexisting under the laws of India with business address at M-4, Surya Mansion,Kaushalya Park, Hauz Khas , New Delhi, 11016 India . Respondent-applicant hashis business address at 3270 Gasanco Compound, Merville Annex Road,Merville, Pasay City .

The grounds for opposition are as follows:

1. Opposer was incorporated in 1994 to lead the diversification efforts ofApollo Tyres Limited (ATL) into the international market;

2. Among the products of ATL sold and distributed by opposer are the"ORNET" tires;

3. On March 02, 2006, respondent-applicant filed with this Office anapplication for registration of the mark "ORNET" for tires under Class 12 whichwas assigned Application Serial No. 4-2006-002354 and published foropposition on September 22, 2006, while opposer filed an application for theregistration 01 its mark "ORNET" on October 31, 2006 lor automobile tires , Ilap~

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

and batteries likewise under Class 12 which was assigned as Application SerialNo. 4-2006-011882;

4. Although the "ORNET" mark is not yet registered in opposer's name inthe Philippines, opposer has been selling its products in the Philippines bearingthe mark "ORNET" as early as 2001 , and has been shipping "ORNET" productsto different consignees in various points in the Philippines such as Cebu City;

5. Respondent-applicant is an agent of opposer, having entered into a"Volume Incentive " arrangement or plan with opposer to sell opposer's goodsbearing the mark "ORNET" in the Philippines, and as agent knows that the mark"ORNET" belongs to and is being used by opposer;

6. Pursuant to the aforesaid plan , opposer would provide respondent­applicant with 1.00% to 1.50% of the Cost , Insurance, and Freight (CIF) value ofthe purchases depending on the amount purchased ;

7. Despite the agency arrangement between opposer and respondent­applicant, respondent-applicant fraudulently filed an application for theregistration of the "ORNET" mark in the Philippines;

8. Opposer is entitled to oppose respondent-applicant's application underSection 160 of the Intellectual Property (IP) Code and Section 4, Rule 2 of theRules on Inter Partes Proceedings;

9. Oposer is entitled to ask that the application for registration be refused:The mark "ORNET" is well-known in India and other Asian countries to be ownedby opposer, and a registration of the mark in respondent-applicant's favor willresult in prejudice and injury to opposer's business;

10. Respondent-applicant has no right to appropriate the mark "ORNET" forhimself when he knew fully well that the same is owned by opposer whichincurred great expense in producing and developing the products bearing themark "ORNET", and he was not authorized to file the subject appl ication ;

11. Respondent-applicant's mark "ORNET" is exactly identical to opposer'smark 'ORNET" as to be likely, when applied to or used in connection withopposer's goods, to cause confusion , mistake, and deception on the part of thepurchasing public by misleading them into thinking that respondent-applicant'sgoods either come from opposer or are sponsored or licensed by it butrespondent-applicant is no longer authorized to sell opposer's "ORNET" productsin the Philippines or to use the mark for his own tire products;

12. Respondent-applicant's application for the registration of the mark"ORNET", which respondent-applicant is presumably using on his own goods, i~

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with the obvious intention of appropriating the mark and misleading the publicinto believing that his goods bearing said mark originate from, or are sponsoredor licensed by opposer which has become identified in the trade and byconsumers as the source of goods bearing the mark 'ORNET";

13. Respondent-applicant copied the mark "ORNET": The fact thatrespondent-applicant was opposer's former agent authorized to distributeopposer's products in the Philippines clearly indicates that respondent-applicantdid not coin the term or come up with the mark himself, and is merely claimingownership of the mark through fraudulent means;

14. Respondent-applicant had before him a boundless choice of wordsphrases, colors, and symbols sufficient to distinguish his marked product fromothers and yet he chose an identical mark which leads to the conclusion that thiswas done deliberately to deceive; and

17. If this Office were to allow respondent-applicant to register his mark , itwould cause damage to opposer, the real owner of the mark "ORNET": Opposerwill be deprived of the royalty payments it rightfully deserves as trademark ownerwhile respondent-applicant would unjustly benefit from the use of the subjectmark, and the mark "ORNET" would be totally beyond opposer's control whereinopposer will have no means of ensuring the quality of the products respondent­applicant manufactures and no way of preserving the reputation, popularity, anddistinctiveness of the mark "ORNET", all of which are clearly prejudicial toopposer and justifies the rejection of respondent-applicant's application.

On April 02, 2007, respondent-applicant filed an ANSWER and makesthe following admissions: 1) Paragraph 1.4 of the VERIFIED NOTICE OFOPPOSITION; 2) opposer's existence; 3) that opposer does not do business inthe Philippines; 4) the filing of an application for registration of the mark "ORNET"on March 02, 2006 by respondent-applicant for and in behalf of G. Assanmal &Co. as said G. Assanmal & Co.'s authorized representative; 5) the consequentdenomination of the application as Application Serial No. 4-2006-002354; 6) theapplication's publication for opposition in the IP Phil. Gazette on September 22,2006; 7) opposer's having no trademark registration in the Philippines for themark "ORNET" ; and 8) the laws cited in Paragraphs 2.3 and 2.7 of the VERIFIEDNOTICE OF OPPOSITION. Opposer specifically denies the rest of theallegations in the VERIFIED NOTICE OF OPPOSITION, and alleges thefollowing affirmative defenses which respondent-applicant also alleges in thealternative as grounds for dismissal:

1. The person who filed the subject application is not respondent-apPlica~~~

but the company he represents and on whose behalf he filed such appl ication- G

i/&J

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Assanmal & Co.- a partnership duly organized and existing under Philippinelaws;

2. G. Assanmal & Co. has been registered and doing business in thePhilippines since 1985, more or less ten (10) years prior to the existence ofopposer and as such, opposer does not have any cause of action againstrespondent-applicant and for which reason respondent-applicant is an improperparty who should not have been included in the opposition;

3. Opposer miserably failed to establish whatever right it may have in Indiaor in the Philippines that supersedes the right of G. Assanmal & Co. to apply forand be given the registration for the mark "ORNET" notwithstanding opposer'sresort to Section 160 in relation to Section 3 of the IP Code and Section 4, Rule 2of the Rules on Inter Partes Proceedings to establish its personality;

4. Opposer having stated that it has a pending application in India for themark "ORNET" but having deliberately excluded the application date and itspendency, and its having an application for the registration of the same mark onOctober 31, 2006 which is a much later date than the subject application herein­a deliberate omission followed by an act that was spurred by an afterthought­indicates that opposer has no rights at all or that it had neglected, abandoned,and slept on its rights over the mark "ORNET";

5. G. Assanmal & Co. is a partner of opposer;

6. The mark "ORNET" for tires was not known in the Philippines, let alonethe world, and no goodwill or name recall was established until opposer'sPhilippine counterparts came into the picture;

7. It was only through the business acumen, best efforts, and selflessdedication of respondent-applicant and the whole team of Sonite Limited and G.Assanmal & Co. that "ORNET" tires breached the Philippine market;

8. Respondent-applicant, Sonite Limited , and G. Assanmal & Co. weresolely responsible for the development of the mark "ORNET" for tires whichturned into a solid reputation and established goodwill with the general public andthe Philippine tire industry, spending substantial sums for marketing promotionsand advertising campaigns which they crafted with their own hands;

9. Accordingly, respondent-applicant, Sonite Limited, and G. Assanmal &Co. have necessarily acquired vested rights thereon and their investmentsshould be protected as pioneers in the development and introduction of th~~"ORNET" mark in the Philippines; I Iv?

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10. Opposer had no participation or say so in such an endeavor;

11. Respondent-applicant, Sonite Limited, and G. Assanmal & Co. has neverrepresented opposer in the Philippines and never will;

12. The mark "ORNET" came to be known in the Philippines as the brand oftires from G. Assanmal & Co.;

13. Respondent-applicant and G. Assanmal & Co. are not mere agents ofopposer but partners as can be seen from the documents presented by opposerconsisting primarily of the "Volume Incentive" arrangement as well as the natureof the relationship itself, and if respondent-applicant is merely an agent, thenopposer is just a supplier;

14. Only after the mark "ORNET" for tires has been established and thebusiness relations between opposer and respondent-applicant, Sonite Limited ,and G. Assanmal & Co. has soured that opposer craved to appropriate the mark"ORNET" as its own but it so happened that G. Assanmal & Co. was able toprotect its rights over the mark "ORNET" for tires by applying for registrationearlier than anyone else;

15. G. Assanmal & Co. had every right to apply for and register the mark"ORNET" for tires: It has been established that any sign or any combination ofsigns capable of distinguishing the goods or services of one undertaking fromthose of other undertakings shall be capable of constituting a trademark, and themark "ORNET" does not fall into any of the categories enumerated by law thatcannot be registered ;

16. Opposer had not established with certainty how it would be damaged bythe registration of the mark "ORNET" for tires in favor of G. Assanmal & Co. ;

17. G. Assanmal & Co. has no intention of misleading or deceiving the public,and it will use the mark "ORNET" for tires to produce affordable, high quality, andworld standard tires without any reference to India , opposer, or any other entitywhich produces, distributes, and owns the mark "ORNET" to assuage opposer;

18. Under the law, a pioneer developer of the mark "ORNET" in the countryshould be entitled to protection as G. Assanmal & Co. made substantialinvestments in the country and introduced in the Philippine market affordable,high quality, and world standard tires that will benefit the Filipino consumer; and

19. G. Assanmal & Co. has readily subjected itself to the ju risdiction ofPhilippine laws by voluntarily organizing itself domestically, made investments ~~~ ~

and significant contributions to the Philippines, and paid taxes unlike opposei /~

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and, thus , to sustain the opposition would be detrimental to the national economyand eventually to the Filipino consumers and/or general public.

On April 29, 2007, opposer filed a REPLY (To Respondent-Applicant'sAnswer Dated 28 March 2007) alleging the following:

1. Respondent-applicant misleads this Office in his admission in Paragraph3 of his Answer in regard to the filing of the subject application for registration forand in behalf of G. Assanmal & Co. as its authorized representative: TheVERIFIED NOTICE OF OPPOSITION made no mention that the application wasfiled by respondent-applicant for and in behalf of any other entity whatsoever;

2. Opposer had every right to implead respondent-applicant himself: Theelectronic gazette of the IP Philippines (IP Phil.) with release date on September22, 2006 clearly shows respondent-applicant himself as the applicant for thesubject application; the electronic gazette made no mention that the applicationwas filed by respondent-applicant for any other entity; and opposer had everyright to place full reliance on the contents of the electronic gazette and name onlyrespondent-applicant in the opposition;

3. No documents were presented to show that the subject application wasfiled for any entity other than respondent-applicant himself, and the same holdstrue for all the other allegations in the ANSWER;

4. Opposer has clearly established its right to bring the instant opposition :The mark "ORNET" is well-known in India and other Asian countries to be ownedby opposer as evidenced by its trademark registration in China and its applicationfor registration in India;

5. Opposer had no intention to conceal anything by not mentioning the dateof the India application ;

6. To satisfy respondent-applicant's curiosity , opposer's Application forRegistration No. 01075903 for the mark "ORNET" filed with the India TrademarksOffice was filed as early as January 24, 2002 and approved with renewal date ofJanuary 24, 2012, a certificate therefor having been issued though still beingtransmitted to opposer;

7. The trademark applications in India and China show that opposer had not"neglected, abandoned, and slept" on its rights, and opposer had promptly actedin filing the opposition as soon as it learned that an application for the mark~

"ORNET" was being filed by respondent-applicant without any authoritywhatsoever; 'a>:

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8. By his own admission, respondent-applicant has not yet used the mark"ORNEr for any of its goods though the alleged entity he represents will do so inthe future;

9. Respondent-applicant never denied that the mark "ORNEr was beingused for tires manufactured by opposer in India but merely stated that as"partner", he has effectively made the same known in the Philippines and that as"partner" and through his "business acumen, best efforts and selfless dedication" ,the mark "ORNEr breached the Philippine market;

1O. Respondent-applicant failed to establish that any partnership agreementbetween him and opposer existed : No partnership agreement or document waspresented ;

11. Respondent-applicant misleads this Office by alleging that thedocuments presented by opposer establishes a partnership between opposerand "the company" respondent-applicant represents: Per the "Volume Incentive"plan, opposer would be giving respondent-applicant a commission on thepurchases made by the latter signifying a principal-agent agreement, not adistribution of profit as what a partnership contemplates;

12. Respondent-applicant had absolutely no participation in the design,manufacture, quality control, and packaging of tires bearing the mark "ORNEras these solely involved opposer: Respondent-applicant simply bought theproduct ready to be delivered to the end user while opposer bore all the risksinvolved from the conception of the product to delivery of the tires at thedestination port in the Philippines; and even after the tires were sold, opposerwarranted complete responsibility of quality and in times of failure or damageoffered to compensate user for loss;

13. The invoices and bills of lading annexed to the VERIFIED NOTICE OFOPPOSITION clearly show Sonite Ltd. to be the "buyer" of the "ORNEr brandtires being shipped by opposer, showing that such arrangement cannot beconsidered a partnership and that respondent-applicant is estopped from allegingthat the mark "ORNEr is owned by any other entity other than opposer;

14. Said invoices and bills of lading annexed to the VERIFIED NOTICE OFOPPOSITION show that the mark "ORNEr has been used by opposer in thePhilippines for its products through its agents and dealers, one of whom isrespondent-applicant;

15. Respondent-applicant could not have pioneered the mark "ORNEr in thePhilippines: Products bearing the mark "ORNEr coming from opposer hav~

been sold in the Philippines by other tire dealers even before respondent- .._ _0 /applicant entered into an agreement with opposer; and ~

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16. Opposer is clearly the owner of the mark "ORNET' and has neverauthorized respondent-applicant or any other of the entities he claims torepresent to file the subject application for registration of the mark "ORNET'.

Order No. 07-889 dated May 18, 2007 was issued, requiring the partiesto file their respective position papers and/or draft decisions, if desired , within anon-extendible period of ten (10) days from receipt thereof. Opposer receivedOrder No. 07-889 on May 25, 2007 while respondent-applicant was sent a copyon the same date thru registered mail. Opposer filed its position paper and draftdecision on June 12, 2007 and, thus, out of time. Respondent-applicant,meanwhile, filed his position paper on June 14, 2007 and likewise , was filed outof time .

One issue posed by respondent-applicant that must be resolved at theoutset is that Jagdesh N. Gagoomal is not a proper party to the instant case as itshould have been G. Assanmal & Co. which should have been named asrespondent-applicant, it being the applicant for the registration of the subjectmark.

It appears from the IP Phil.'s e-gazette that the applicant for the mark"ORNET' under Application Serial No. 4-2006-002354 are "Jagdesh N.Gagoomal and Rajesh N. Gagoomal." A perusal of the particulars indicated onthe paper issued by the Bureau of Trademarks (BOT) pasted on the file wrapper(brown envelope) shows likewise that the applicant are both Jagdesh N.Gagoomal and Rajesh N. Gagoomal. However, the Trademark Application Formshows that the information given as applicant is G. Assanmal & Co., and suchTrademark Application Form is signed by Jagdesh Gagoomal who is indicated asa Managing Partner. Likewise, the Registrability Report/Paper NO.2 as well asthe reply thereto show that the applicant is G. Assanmal & Co., said replyexplicitly stating that "applicant is a partnership firm" and the partners are "RajeshN. Gagoomal and Jagdesh N. Gagoomal". Said reply is signed by Jagdesh N.Gagoomal. It appears from the evidence on record, thus, that the applicant in theinstant case is G. Assanmal & Co. which appears to be a partnership separateand distinct from the partners , Jagdesh N. Gagoomal and Rajesh N. Gagoomal ,who constitute it.

Notwithstanding the fact that opposer filed this opposition case againstJagdesh N. Gagoomal though the applicant for the registration of the mark"ORNET' is G. Assanmal & Co. as borne by the evidence on record , this Officeis inclined to accord a liberal construction to opposer's having filed the instantopposition against Jagdesh N. Gagoomal instead of against G. Assanmal &Co:Opposer had to rely on the IP Phil.'s e-gazette , which indicates the applicant as~

Jagdesh N. Gagoomal and Rajesh N. Gagoomal, in filing the opposition. Withi~ I~

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the reglementary period for filing the opposition, there could not have been anindication to opposer that respondent in the instant case should be G. Assanmal& Co., the real party in interest who stands to be benefitted or injured by thejudgment, as the contents of the file wrapper are not open to opposer for perusal.

Section 1, Rule 10 of the Rules of Court which has a suppletory effect tothe inter partes rules and regulations as amended by Office Order No. 79, Series2005 provides :

"Pleadings may be amended . .. by correcting a mistake in thename of a party or a mistaken or inadequate allegation ordescription in any other respect, so that the actual merits of thecontroversy may speedily be determined , without regard totechnicalities, and in the most expeditious and inexpensivemanner." (Underscoring supplied .)

Further, Section 4 of the same Rule provides:

"When issues not raised by the pleadings are tried with the... consent of the parties they shall be treated in all respects as ifthey had been raised in the pleading. Such amendment of thepleadings as may be necessary to cause them to conform to theevidence and to raise these issues may be made upon motion ofany party at any time, even after judgment; but failure to amenddoes not affect the result of the trial of these issues."(Underscoring supplied.)

The issue of whether or not respondent Jagdesh N. Gagoomal is a properparty or a real party in interest has in fact been raised as an affirmative defenseby Jagdesh N. Gagoomal in the ANSWER, and this issue has been addressedby opposer in its REPLY. Though no amendment has been made at this point intime notwithstanding the allowance for amendment provided by Section 4, Rule10 of the Rules of Court, this Office shall consider G. Assanmal & Co. asrespondent-applicant in view of the circumstances above explained at the timeopposer filed the VERIFIED NOTICE OF OPPOSITION; and considering that theallowance for amendment provided in Section 4, Rule 10 of the Rules of Court isdirectory, not mandatory, and that the failure to amend does not affect the trial ofthe issue at hand, this Office reiterates that respondent-applicant is G. Assanmal& Co. to conform to the evidence on record.

The main issue that must be resolved now is, whether respondent~

applicant G. Assanmal & Co. is entitled to the registration of the mark "ORNErfor tires under Class 12.

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To address the main issue, a determination of the merits of the opposingallegations presented respectively by opposer and respondent-applicant G.Assanmal & Co. is material: Opposer essentially alleges that being the owner oftires it manufactures as well as of the mark "ORNET' which are borne by saidtires , it entered into an agency relationship with Jagdesh N. Gagoomal for thelatter to sell and/or distribute its tires bearing said mark "ORNET' under a"Volume Incentive " arrangement/plan , while Jagdesh N. Gagoomal alleges thatthe relationship created between opposer and G. Assanmal & Co. is apartnership, not an agency, pursuant to the tenor of the "Volume Incentive"arrangement/plan.

Bearing in mind the ruling herein by this Office that respondent-applicantis G. Assanmal & Co. , the following question arises: Is there an agencyrelationship between opposer and respondent-applicant G. Assanmal & Co.? Ifthere is an agreement between opposer and respondent-applicant G. Assanmal& Co. for the latter to sell the former's tires bearing the mark "ORNET', in effectmaking respondent-applicant G. Assanmal & Co. a distributor of opposer's tiresbearing the mark "ORNET', respondent-applicant G. Assanmal & Co. is notentitled to the reg istration of said mark : A distributor of goods on which a markor trade name owned by another is used does not acquire ownership over saidmark unless the owner has ceded or transferred it to him as use by thedistributor of the mark is deemed use by the owner of the mark. The importeror distributor is an agent of the trademark owner. As such, the agent is estoppedfrom acquiring or asserting a title adverse to that of the principal (MarvexCommercial Co., Inc. vs. Petra Hawpia & Company, 18 SCRA 1178(1966); Unno Commercial Enterprises, Inc. v. General Milling Corp. etal., 205 Phil 707 [1983J; Gabriel v. Perez et al., 55 SCRA 406 [1974J,citing Operators, Inc. vs. Director of Patents, 15 SCRA 147 [19 J;Thomas v. Pineda, 89 Phil. 312[1951]).

A circumspect perusal of the evidence presented by opposer does notshow that an agency relationship exists between opposer and respondent­applicant G. Assanmal & Co.

Opposer presented invoices showing the exportation of tires from OrnetIndia to RSOYPICO Marketing and Sonite Ltd., and from opposer ApolloInternational Limited to Ornet GB FZE (Exhibits "0" to "0 -11"). It appears, thus ,that there are two separate and distinct entities- Ornet India and Apollointernational Limited- exporting "ORNET' tires to different entities. There is noevidence showing that Ornet India and opposer are one and the same entity, orthat either is at the least a subsidiary or affiliate of the other. In view hereof, thisOffice can neither presume nor come to a conclusion, in the absence of clear and j,,~convincing evidence, that opposer and Ornet India are one and the same entity,1"1~

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or that one is a subsidiary or affiliate of the other. To do so would be atransgression of elementary evidentiary rules .

Moreover, Invo ice Nos . B/ONT/012 , P/EXP/ONT/002 , B/ONT/016 andP/ONT/037 reveal that the exportations made by opposer were made to oneOrnet GB FZE , not to G. Assanmal & Co. or any other person or entity (Exhibits"O-T, "0 -8", "0 -10", and "0 -11"). On the other hand, Invoice Nos. P/OI/EXP/088 ,P/01/EXP/129 , P/01/EXP/091 , and P/OI/EXP/087 show that exportations madeby Ornet India were to Sonite Ltd. which , as it appears on the record , isrepresented by Rajesh N. Gagoomal (Exhibits "0 -1", "0-2", "0 -3", "0 -9", "0-10","0 -11" and "E"). But then, Sonite Ltd. is not G. Assanmal & Co., and there is noevidence showing that one is an affiliate or subsidiary of the other ,notwithstanding that a partner of respondent-applicant G. Assanmal & Co.­Rajesh N. Gagoomal- is a representative of Sonite Ltd. There is nothing on therecord that would prompt this Office to conclude that respondent-applicant G.Assanmal & Co and Sonite Ltd. are one and the same entity or that one is at theleast an affiliate or subsidiary of the other. Again, to do so would be atransgression of elementary evidentiary rules . Moreover, respondent-applicantG. Assanmal & Co. and Sonite Ltd. each unto its own are entities separate anddistinct from the natural persons that represent them or constitute them aspartners or otherwise.

Thus, there is no evidence at all in the records showing a relationshipbetween opposer and G. Assanmal & Co., much less an agency arrangement.Nowhere does it appear in any of the evidence submitted by opposer that thepartnership of G. Assanmal & Co. is a distributor of opposer's "ORNET" tires .

There being no relationship at all between them , not even an agencyrelationship per the evidence on record, opposer does not have a cause of actionagainst respondent-applicant G. Assanmal & Co.

Moreover, while such is the case that there is no vinculum at all betweenopposer and respondent-applicant G. Assanmal & Co., wherein rights andobligations legally spring from , there is nevertheless no clear and convincingevidence that opposer is indeed an owner of the mark "ORNET" such that itcould prosecute respondent-applicant G. Assanmal & Co. in an opposition case:The evidence on record shows that there is another entity- Ornet India- whichalso makes and exports "ORNET" tires and, thus, acts as principal to otherentities. Exhibit "E" shows that Ornet India, not opposer, has a distributorshiparrangement with Sonite Ltd. which is represented by Rajesh N. Gagoomal who,as earlier mentioned , is a partner of respondent-applicant G. Assanmal & Co.(Exhib it "E"). Ornet India's letter to Sonite Ltd. points to the imperative tenor ofthe following , indicating a distributorship agreement between the two entities:Sonite Ltd. placed orders of "ORNET" tires from Ornet India under a "vo l um~~

Incentive" scheme, specifying the prices of the tires and the terms of paymeni V

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thereof; the volume of the tires that Sonite Ltd. should order from Ornet India andthe time frames within which the orders should be made and shall be delivered;the extent of support Ornet India shall give to Sonite in regard to advertisement,and the area in the Philippines Sonite Ltd. is supposed to sell Ornet India's"ORNET" tires. But it is interesting to note in this letter Ornet India's proscriptionto Sonite Ltd. that Sonite Ltd. should "try to avoid disturbing the Apollo dealer andother distribution network." This term/condition could be subject to discreteinterpretations which are at best equivocal , and casts doubt to opposer's positionthat it is the owner of the mark "ORNET". Opposer is not a proper party to file anopposition case against respondent-applicant G. Assanmal & Co.

Records show that respondent-applicant G. Assanmal & Co. filed itsapplication for registration , Application Serial No. 4-2006-002354, of the mark"ORNET" for tires under Class 12 on March 02, 2006 while opposer filed itsapplication for registration, Application Serial No. 4-2006-011882, of the samemark "ORNET" for automobile tires, flaps, and batteries likewise under Class 12on October 31, 2006 . Respondent-applicant is, thus , the first to file its applicationfor registration of the mark "ORNET" for Class 12 goods.

Section 123.1 (d) of the IP Code provides, among others:

"A mark cannot be registered if it:

(d) Is identical with a mark with an earlier filing or priority date ,in respect of:

(i) The same goods . . . or(ii) Closely related goods ... or(iii) If it nearly resembles such a mark as to be likely to

deceive or cause confusion ..."

Hence , pursuant to the First-To-File Principle enunciated in Section 123.1 (d) ofthe IP Code , respondent-applicant is entitled to the registration of the mark"ORNET" for tires under Class 12.

WHEREFORE, premises considered , the VERIFIED NOTICE OFOPPOSITION is, as it is, hereby DENIED . Consequently, Application Serial No.4-2006-002354 for the registration of the mark "ORNET" for tires under Class 12~

filed by G. Assanmal & Co. on March 02, 2006 is, as it is hereby, GIVEN DUECOURSE. ~

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Let the filewrapper of this case be forwarded to the Bureau of Trademarkswith a copy of this Decision forwarded to said Bureau of Trademarks forappropriate action .

SO ORDERED.

Makati City I July 15, 2008.

UTA-BELTRAN ABELARDO 0/tor- Bureau of Legal Affairs cJ-/

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