7/31/2019 Tokyo Tokyo vs. Lao

1/3

Note: Classmates, dont expect this to be a very good nor a good position paper.

Hehe! Thank you. Please bear with me if there are some flaws in my grammar.

TOKYO TOKYO, INC.

Opposer,

-versus-

BRYANT JAMES LAO

Applicant.

Tokyo Tokyo has been using the mark SHOGUN since 1992 to promote andmarket their Japanese fast food, restaurants and products. They extensively promote

the use of said mark and subsequently associated the mark SHOGUN with Tokyo

Tokyos restaurants and products. Moreover, Tokyo Tokyo has sustained considerable

amounts to build substantial goodwill in the SHOGUN mark.

The application of the respondent applicant of the mark SHOGUN FRY AND

DEVICE will undoubtedly be prejudicial to the mark of the Tokyo Tokyo. While it is true

that the mark of the former is being used on Japanese Fast Foods Take out Counter

and the mark of the latter is being used on sales promotion and discount cards, these

two marks could still be reasonably considered as similar, related, and competitive with

each other. Both marks pertain to Japanese fast foods restaurants and products, it just

so happened that Tokyo Tokyo used the said mark to the promotion of their goods and

services and respondent applicant used their applied mark as a business name.

Undeniably, the respondent-applicant mark is identical and confusingly similar with the

oppositor SHOGUN word mark. The word SHOGUN is the very registered word of

Tokyo Tokyos mark. In addition to this, they are both in connection with Japanese food

that made these two marks more confusingly similar.

A mark cannot be registered if it: xxx[I]s

identical with a registered mark belonging to

a different proprietor or a mark with an

earlier filing or priority date, in respect ofx x

x [C]losely related goods or services [Sec.123(d)(iii), Intellectual Property Code]

The continuous use of Shogun Fry and Device mark by the applicant will tend

to mislead the purchasing public that may cause injury of both the oppositor and the

public. The applicant Laos Shogun Fry and Device mark will mislead the public into

7/31/2019 Tokyo Tokyo vs. Lao

2/3

believing that the products marketed and sold by opposer or originate from the same

source. Considering the connotation of the two trademarks, it is clear and unmistakable

that there is likelihood of confusion on the part of ordinary customers. They are not only

similar but they also refer to goods sold within the same channels of trade and industry.

Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft,

the Court distinguished the two types of confusion:

The first is the confusion of goods IN WHICH

EVENT THE ORDINARILY PRUDENT

PURCHASER WOULD BE INDUCED TO

PURCHASE ONE PRODUCT IN THE BELIEF

THAT HE WAS PURCHASING THE OTHER.In which case, DEFENDANTS GOODS ARE

THEN BOUGHT AS THE PLAINTIFFS, AND

THE POORER QUALITY OF THE FORMER

REFLECTS ADVERSELY ON THE

PLAINTIFFS REPUTATION. The other is the

confusion of business: Here though the goods

of the parties are different, the defendants

product is such as might reasonably be

assumed to originate with the plaintiff, and the

public would then be deceived either into that

belief or into the belief that there is some

connection between the plaintiff and defendant

which, in fact, does not exist.

Tokyo Tokyo has been considerately recognized here in the Philippines with their

promotion using SHOGUN by employing advertisements in all kinds of media. Tokyo

Tokyo has gained more popularity because of their usage of SHOGUN mark and their

customers continually patronized promos contained in the said mark. In short, we can

aptly say that SHOGUN mark CARRIED the name of TOKYO TOKYO and vice versa.

The subject mark of Opposer is used to promote and REPRESENT TOKYO TOKYO.

Applicants mark also covers Japanese fast foods and directly competes with the

products/restaurants promoted and represented by opposers SHOGUN mark. Hence,

the application of the respondent applicant invades the good reputation that Tokyo

Tokyo built for over two decades simply because of mere confusion among the two

marks of both parties.

In using dominancy in this case, the dominant feature of the two trademarks is

the word Shogun.

7/31/2019 Tokyo Tokyo vs. Lao

3/3

The Dominancy Test focuses on the

SIMILARITY OF THE PREVALENT

FEATURES OF THE COMPETING

TRADEMARKS THAT MIGHT CAUSE

CONFUSION OR DECEPTION. It is

APPLIED WHEN THE TRADEMARK

SOUGHT TO BE REGISTERED CONTAINS

THE MAIN, ESSENTIAL AND DOMINANT

FEATURES OF THE EARLIER REGISTERED

TRADEMARK, AND CONFUSION OR

DECEPTION IS LIKELY TO RESULT.

Duplication or imitation is not even required;

neither is it necessary that the label of the

applied mark for registration should suggest an

effort to imitate. THE IMPORTANT ISSUE IS

WHETHER THE USE OF THE MARKS

INVOLVED WOULD LIKELY CAUSE

CONFUSION OR MISTAKE IN THE MIND OF

OR DECEIVE THE ORDINARY PURCHASER,

OR ONE WHO IS ACCUSTOMED TO BUY,

AND THEREFORE TO SOME EXTENT

FAMILIAR WITH, THE GOODS IN

QUESTION. GIVEN GREATER

CONSIDERATION ARE THE AURAL AND

VISUAL IMPRESSIONS CREATED BY THE

MARKS IN THE PUBLIC MIND, giving little

weight to factors like prices, quality, sales

outlets, and market segments. [The test of

dominancy is now explicitly incorporated into

law in Section 155.1 of R.A. No. 8293]

Furthermore, we condone the contention of respondent applicant that

SHOGUN and SHOGUN FRY deal with different customers or clients because

customers of SHOGUN FRYs are those people who would like to buy/eat being served

by the restaurant while the customers of SHOGUN are the people who would like TO

BUY AND EAT THE PRODUCTS INCLUDED IN THE PROMO BEING SERVED BY

TOKYO TOKYO.