SOLEX INTERNATIONAL (THAILAND) } IPC No. 14-2010-00303 COMPANY LIMITED, } Opposition to:

Opposer, } Appln. Serial No. 4-2007-000528 } Date Filed: 14 January 2007

-versus­ } TM: "FUJITO" } }

SMART MASTER TYCOON CORP., } Respondent-Applicant. }

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NOTICE OF DECISION

QUISUMBING TORRES Counsel for the Opposer 1i h Floor, Net One Center zs" Street corner 3rd Avenue Crescent Park West, Bonifacio Global City Taguig City

ANGEL O. OLANDRES, JR. For Respondent-Applicant 24 Libya Street, Better Living Subdivision Brgy. Don Bosco, Paranaque City

GREETINGS:

Please be informed that Decision No. 2013 - J!2...- dated July 23, 2013 ( copy enclosed) was promulgated in the above entitled case.

Taguig City, July 23, 2013.

For the Director:

. ~ a·~

Atty. EDWIN DANILO A. ~ING Director III

Bureau of Legal Affairs

Republic of the Philippines INTELLECTUAL PROPERTY OFFICE

SOLEX INTERNATIONAL (THAILAND) } IPC NO. 14-2010-00303 COMPANY LIMITED, }

Opposer, } }

-versus­ } Opposition to : } App.Ser. No. 4-2007-000528

SMART MASTER TYCOON CORP., } Date Filed: 14 January 2007 Respondent-Applicant. } TM: "FUJITO"

} x--------------------------------------------------------x Decision No. 2013­ /1:$

DECISION

SOLEX INTERNATIONAL (THAILAND) COMPANY LIMITEDl ("Opposer"), filed an opposition to Trademark Application Serial No. 4-2007-000528.2 The application, filed by SMART MASTER TYCOON CORPORATION3 ("Respondent-Applicant"), covers the mark "FUJ ITO" for use on "carburaior assembly, starter button, camshaft assembly, injection pump diaphragm, ignition coil leak off pipe "under Class 07; "fuse box, fuel float gauges, flasher relay, hom relay, headlight relay, fan motor relay, glow plug relay, back lamp switch, dimmer switch, ignition cable switch, ignition switch, headlight switch, magnetic switch, oil pressure switch, push pull switch, toggle switch, rocket switch, hom switch, startic switch, stop light switch, tum signal switch, thermo switch, relay, fuse holder, thermostat, water temp. send unit, accelerator cable, selector cable, speedometer cable, carburator kit, carburator plunger, clutch cable, handbrake cable, side mirror, clutch disc, wiper blade, wipe motor, cigarette lighter for land vehicles" under Class 09; and "compartment lock, cv jo int assembly, cv joint boots, steerinqboots, coil spring, hom" under Class 12 of the International Classification of Goods . 4

The Opposer alleges the following:

"1. The registration of the mark FUJITO is contrary to the prov isions of Sections 123.1 (d), (e) and (f) of Republic Act No. 8293, as amended , which prohibit the registration of a mark that:

x x x

"2 . The Opposer is the owner of the well-known trademark FUJITO which is registered with the Philippine Intellectual Property Office ("!PO") under the following details:

I A company organized under the laws of Thailand , with add ress at 3 15/1-3 Soi Wat 'Chan-nai Charoenkrung Road , Bangkholaem, Bangk ok 10120, Th ailand. 2 The application was publ ished in the Intellectual Property E-Gazene on 16 August 2010 . J A domestic corporation with address at 85 T. Concepcion St., Marul as, Valenzuel a Ci ty. "The Nice Classification is a classifi cation of good s and services for the purpo se of registerin g trad emarks and service marks based on a multilateral treaty administered by the World Intellectual Property Organi zation . This treaty is called the Nice Agreement Concerning the Internati onal Classification of Goods and Services for the Purposes of Registration of Mark s concluded in 1957.

Republic of the Philippines INTELLECTUAL PROPERTY OFFICE

Intellectual Property Center, 28 Upper McKinley Road. McKinley Hill Town Center

FUJITO

FUJITO

Registration No

4-2006-003352

4-2004-002216

Date Issued

9 July 2007

12 Feb. 2007

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Good s

Electronic security systems, Close Circuit Television Surveillance Systems, Close Circuit Television Mon itors , Close Circuit Television video-cameras, Access controller related components such as card readers, intrusion alarm devices, sirens and security access controllers, Accessories for Close Circuit Television video-cameras, Electric Doors, Electronic and electrical lock systems, Fingerprint Scanners and Iris Scanners. Keys, keys blanks, padlocks, lock-sets (non-electric, of metal), deadlocks (non-electric, of metal), bicycle locks (non-electric, of metal), spare tyre locks (non­electric, of metal), handle locks-sets (non­electric, of metal), car door locks of metal, cylindrical locks (non­electric, of metal), door locks (non-electric, of metal) , door closers (non-electric), safes , gear locks for use In

cars, brake-clutch locks for use in cars , door bolts, steering wheel locks for use in cars, mortise lock-sets for use in doors, motorcycle locks (non-electric, of metal), car locks of metal , locks of metal, vehicle locks, hinge.

"3. Respondent-Applicant's mark FUJITa is exactly identical with the Opposer's trademark FUJITa as to be likely to deceive or cause confusion. The mark FUJITa of Respondent-Applicant has the same spelling, appearance and sound as the Opposer's

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trademark FUJITa. Hence, the registration of the Respondent-Applicant 's mark will be contrary to Section 123.1 (d) of Republic Act No. 8293.

"4.The Opposer is entitled to the benefits granted to foreign nationals under Section 3 of Republic Act No . 8293 , which provides:

x x x

The Opposer is domiciled in Thailand. Both the Philippines and Thailand are members of the Paris Convention for the Protection of Industrial Property. The Paris Convention provides:

x x x

In accordance with the foregoing prOVISIOns of the Paris Convention, the Intellectual Property Code provides for the legal remedies against trademark infringement. Thus:

x x x

"5. The Opposer's trademark FUJITa is well- known and world famous . Hence, the registration of the Respondent-Applicant's mark FUJITa will constitute a violation of Articles 6bis and IObis of the Paris Convention in conjunction with Sections 3,123 .1 (e), and 123.1 (f) of Republic Act No. 8293 .

"6. Opposer has used the trademark FUJITa in the Philippines and elsewhere prior to the filing date of the application subject of this opposition. The Opposer continues to use the trademark FUJITa in the Philippines and in numerous other countries.

"7. The Opposer has also extensively promoted the trademark FUJITa worldwide. Over the years, the Opposer has obtained significant exposure for its locks, car locks, electronic locks and other security system products upon which the trademark FUJITa is used in various media, including television commercials, outdoor advertisements, internationally well-known print publications, and other promotional events.

"8. Opposer has not consented to the Respondent-Applicant's use and registration of the trademark FUJITa, or any other mark identical or similar to the Opposer's trademark FUJITa.

"9 . The use by the Respondent-Applicant of the mark subject of this opposition in connection with "fuse box, fuel float gauges, flasher relay, horn relay , headlight relay , fan motor relay, glow plug relay, back lamp switch, dimmer switch, ignition cable switch, ignition switch, headlight switch, magnetic switch, oil pressure switch, push pull switch, toggle switch, rocket switch, hom switch, startic switch, stop light switch, tum signal switch, thermo switch, relay, fuse holder, thermostat, water temp. send unit. Accelerator cable, selector cable, speedometer cable, carburator kit, carburator plunger, clutch cable hand brake cable side mirror clutch disc wiper blade wipe motor cigarette lighter for land vehicles" in class 9, and "compartment lock, cv joint assembly, cv joint boots, steering boots, coil spring, hom" in class 12, which are the same or closely-related to the Opposer's locks, car locks, electronic locks and other security

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system products using the mark FUJITO, will mislead the purchasing public into believing that the Respondent-Applicant 's goods are produced by, originate from, or are under the sponsorship of the Opposer. Potential damage to the Opposer will also be caused as a result of its inability to control the quality of the products offered or put on the market by Respondent-Applicant under the mark FUJITO.

"10. The use by the Respondent-Applicant of the mark subject of this opposition in relation to its goods, whether or not identical , similar or closely related to the Opposer's goods and services will take unfair advantage of, dilute and diminish the distinctive character or reputation of the Opposer's trademark FUJITO.

" 11. The denial of the application subject of this opposition is authorized under other provisions of republic Act No. 8293."

Opposer's evidence consists of the following:

1. Exhibit "B" - authenticated Affidavit of Ms. Nuntha Pitisethakarn and Mrs. Sirilux Ru engvejvarachai;

2. Exhibit "B-1" - table showing details of trademark registrations for FUJITO worldwide;

3 . Exhibit "B-2" - materials promoting the mark FUJITO used at the Worldbex 2008 Trade Fair;

4 . Exhibit "C" - authenticated Affidavit of Ms. Nuntha Pitisethakarn and Mrs. Sirilux Ruengvejvarachai regarding the trademark registrations for FUJITO worldwide;

5. Exhibits "C-1 " to "C- 17" - annexes to the Affidavit of Ms . Nuntha Pitisethakarn and Mrs. Sirilux Ruengvejvarachai consisting of various certificates of registration of the mark FUJITO issued in Cambodia, China, European Union, Indonesia, Kenya, South Korea, Laos, Malaysia, Myanmar, Poland, Russia, South Africa, Singapore, Tanzania, Ukraine, Zimbabwe and Vietnam;

6. Exhibit" D" - certified copy of Philippine Trademark Registration No. 4-2004­002216;

7 . Exhibit" E" - certified copy of Philippine Trademark Registration No. 4-2006­003352;

8. Exhibit "F" - authenticated Certificate on the authority of Ms . Nuntha Pitisethakarn and Mrs. Sirilux Ruengvejvaracahi to verify the Notice of Opposition and execute the certificate of non-forum shopping and the authority of counsel to represent Opposer.

This Bureau issued on 18 January 2011 a Notice to Answer and served personally a copy thereof to the Respondent-Applicant on 11 February 2011. Despite the notice, the Respondent-Applicant did not file an Answer. Accordingly, pursuant to Rule 2 Section 10 of the Rules and Regulations on Inter Partes Proceedings, as amended, the case is deemed submitted for decision on the basis of the opposition, the affidavits of witnesses, if any, and the documentary evidence submitted by the Opposer.

Should the Respondent-Applicant be allowed to register the mark FUJITO?

The essence of trademark registration is to give protection to the owners of trademarks. The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him who has been

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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 fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product.s Thus, Sec. 123.1 (d) of the IP Code provides that a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services or if it nearly resembles such a mark as to be likely to deceive or cause confusion.

The records show that at the time the Respondent-Applicant filed its application for the mark FUJITO on 14 January 2007, the Opposer has already a pending trademark application for its mark FUJITO filed on 08 March 2004 covering goods falling under Class 06, namely, "keys; keys blanks; padlocks; lock-sets (non-electric of metal);deadlocks (non-electric, of metal); bicycle locks(non-electric,of metal); spare tyre lockstnon-electric, of metal); handle locks-sets (non-electric, of metal); car door locks of metal; cylindrical locks (non-electric, of metal); door locks (non-electric, of metal); door closers (non-electric); safes; gearlocks for use in cars; brake-clutch locks for use in cars; door bolts; steering wheel locks for use in cars; mortise lock-sets for use in doors; motorcycle locks (non-electric, of metal); car locks of metal; locks of metal; vehicle locks; hinge" and on 24 March 2006 covering goods falling under Class 09, namely, "electronic security system, closed circuit television surveillance systems, closed circuit television monitors, closed circuit television video- cameras, access controller related components such as card readers, intrusion alarm devices, sirens and security access controllers, accessories for closed circuit television uideo-cameras, electric doors, electronic and electrical lock systems, fingerprint scanners, iris scanners." The marks were later on registered on 12 February 2007 and 09 July 2007, respectively.

As shown below, the marks of the Opposer and the Respondent-Applicant are identical. Respondent-Applicant copied Opposer's mark making only slight changes by using a different font. But such difference pales into insignificance because of the identicalness or similarity of the marks.

FUJITOFUJ1TD

Opposer's Mark Respondent-Applicant's Mark

But what about the goods upon which Opposer's and Respondent's FUJITO marks are used? Both Opposer's and Respondent's marks are used on goods belonging to Class 09. However, Opposer generally deals with electronic security system including closed circuit surveillance system and Respondent on spare parts for vehicles such as motorcycle and car which are different from each other. Nevertheless, Opposer's evidence also shows that its FUJITO mark is also used on locks for vehicles.> As such, to allow the registration of Respondent-Applicant's

5See Pribhdas J. tvurpuri v. Courtof Appeals, G. R. No. 114508, 19 Nov . 1999.

6 See Exhibit "E" of the Complainant.

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FUJITO mark will likely cause confusion, mistake or deception on the public into believing that Respondent's FUJITO products come from the Opposer or that information, assessment, perception or impression about the Respondent's goods bearing the mark FUJITO may unfairly be cast upon or attributed to the Opposer.

The likelihood of confusion would subsist not only on the purchaser's perception of goods but on the origins thereof. The Court distinguished the two types of confusion:

Callman notes two types of confusion. The first is the confusion of goods "in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other." In which case, /I defendant's goods are then bought as the plaintiff's, and the poorer quality of the former reflects adversely on the plaintiff's reputation." The other is the confusion of business: "Here though the goods of the parties are different, the defendant's product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist.'?

Moreover, nothing in the records of this case particularly the filewrapper would show or explain how Respondent-Applicant came up with an identical mark as that of Opposer's. As such, the unexplained use by Respondent-Applicant of an identical mark lends itself open to the suspicion of fraudulent motive to trade upon Opposer's goodwill and reputation. It has been held time and again that in cases of grave doubt between a newcomer who by the confusion has nothing to lose and everything to gain and one who by honest dealing has already achieved favour with the public, any doubt should be resolved against the newcomer in as much as the field from which he can select a desirable trademark to indicate the origin of his product is obviously a large one.s

Accordingly, this Bureau finds that the Respondent-Applicant's trademark application is proscribed by Sec. 123.1 (d) of the IP Code.

WHEREFORE, premises considered, the instant opposition is hereby SUSTAINED. Let the filewrapper of Trademark Application Serial No. 4-2007-000528, together with a copy of this Decision, be returned to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

Taguig City, 23 July 2013 .

, Societe des Produits Nestle SA v, Martin Dy, G.R. No. 172276. August 8, 20 IO. 8 See DelMonte Corporation et. al. u. Courtof Appeals, GR No. 78325, 25 Jan. 1990.

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