INTELLECTUAL PROPERTY

OFFICE OF THE PHILIPPINES

TRB ACQUISITIONS, LLC,

Opposer,

-versus-

REEBOK INTERNATIONAL, LTD.,

Respondent- Applicant.

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IPCNo. 14-2016-00151

Opposition to:

Appln. No. 4-2015-505998

Date Filed: 16 October 2015

TM: "RBK"

NOTICE OF DECISION

POBLADOR BAUTISTA & REYES

Counsel for Opposer

5th Floor, SEDCCO I Bldg.

120 Rada corner Legaspi Street

Legaspi Village, Makati City

BETITA CABILAO CASUELA SARMIENTO

Counsel for Respondent-Applicant

Suite 1104, Page One Bldg., 1215 Acacia Avenue

Madrigal Business Park, Ayala Alabang

Muntinlupa City

GREETINGS:

Please be informed that Decision No. 2018 -

enclosed) was promulgated in the above entitled case.

dated June 22, 2018 (copy

Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of

2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten

(10) days after receipt of the decision together with the payment of applicable fees.

Taguig City, June 25, 2018.

MARILYN F. RETUTAL

IPRS IV

Bureau of Legal Affairs

@ www.ipophil.gov.ph

Q mail@ipophil.gov.ph

© +632-2386300

tf +632-5539480

Intellectual Property Cemei

tt?8 Upper McKinky Road

McKinloy Hill lown Center

FoM Bonifacio, Kicjijkj fJ;*/

Hi'JA Philippines

INTELLECTUAL PROPERTY

OFFICE OF THE PHILIPPINES

TRB ACQUISITIONS, LLC,

Opposer,

versus-

REEBOK INTERNATIONAL, LTD.,

Respondent-Applican t.

IPC NO. 14-2016-00151

Opposition to:

Appln. Ser. No. 4-2015-505998

Date Filed: 16 October 2015

Trademark: RBK

Decision No. 2018 - l!Jo

DECISION

TRB ACQUISITIONS, LLC.1 ("Opposer"), filed an Opposition to Trademark

Application Serial No. 4-2015-505998.2 The application filed by REEBOK

INTERNATIONAL, LTD.3 ("Respondent-Applicant"), covers the mark "RBK" for use on

"luggage, all-purpose sports bags, duffel bags, tote bags, knapsacks, shoulder bags" under Class 18;

and "footwear namely, shoes, boots, slippers and sandals; headwear namely, hats, caps, bandanas,

headbands; and clothing namely, sportsiuear, sweatpants, sweatshirts, shirts, shorts, sweaters,

slacks, socks, jackets, sxveatsuits, rompers, jumpsuits, warm-up suits, shooting shirts, fleece tops,

tank tops, polo shirts, pants, unitards, leotards, athletic bras, leggings, skirts, rainsuits, turtlenecks,

bathing suits, vests, parkas, bra tops, tights, dresses, athletic uniforms, gloves, thermal underwear,

infantxvear, coveralls, running suits, bibs, pajamas" under Class 25 of the International

Classification of goods4

Opposer alleges that it will be damaged by the registration of the subject mark

because it is prior adopter, user and registrant of the mark RBX in the Philippines. Opposer

also argues that Respondent-Applicant is not entitled to a registration because it has never

used the "RBK" mark in the Philippines; it has abandoned any rights it may have in RBK

mark in other jurisdictions around 2007; and it has no intent to use the RBK mark for its

applied class in the future here in the Philippines. According to Opposer, TRB is the owner

and licensor of the RBX mark and its rights and interests over the mark was acquired

through its predecessor-in-interest, The Rugged Bear Company f/d/b/a RB Acquisition

Corp. (RBC), a company founded in 1980 by Alan McDonough, a co-founder of a highly

successful outdoor adult clothing and gear retailer Eastern Mountain Sports. RBC operated

retail stores throughout New England area of the U.S.A. as well as in New York and New

Jersey selling a wide variety of children's apparel, footwear and accessories. On 09 February

2015, RBX.com LLC was formed to create and run the www.Rbxactive.com website and e-

commerce store, as well as the RBX social media accounts which served as advertising and

' A corporation duly organized and existing under the laws of Japan with address at 2-8-5, Nihonbashi-Horidomecho, Chou-Ku, Tokyo2 Original Verified Opposition was filed on 10 June 2016 but it was amended on 03 September 2016

3 A foreign corporation organized and existing under the laws of the United Kingdom with principal address at 4th Floor, 11/12 Pall Mall, London,

SW1Y 5LU, United Kingdom.

4 The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based on the multilateral

treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning the International

Classification of Goods and Services for the Purpose of the Registration of Marks concluded in 1957

(«) www.ipophil.gov.ph

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marketing functions and help promote the RBX brand and expand its global reach over the

internet and social media. The RBX products are available for sale and is a well-known

brand in the US and its products and services have been made available in the Philippines.

Opposer has also registered the RBX mark in other jurisdictions.

To support its opposition, Opposer submitted the following as evidence:

1. Copy of Amended and Restated Operating Agreement dated 07 March 2011;

2. Copy of the Affidavit of Lindsay Korotkin;

3. Printouts of archived webpages about RBC;

4. A chart showing advertising and marketing expenses of TRB for the RBX brand;

5. A chart showing advertising and marketing expenses of RBX.com LLC for the

RBX brand;

6. Copies of brand books of from 2012-2015 regarding RBX mark and brand;

7. Certified copies of certificates of registration for the RBX mark;

8. Printout of the details of registration of the mark RBX;

9. Certified copy of Certificate of Registration No. 4-2012-012856 for the mark RBK

which was removed from the registry for non-filing of DAU; and

10. Printout of details of the Registration No. 4-2002-008543 of the mark RBK which

was removed from the registry for non-filing of 5th year affidavit of use.

On 14 June 2016, this Bureau issued a Notice to Answer and personally served a

copy thereof to the Respondent-Applicant's representative on 17 June 2016. On 20

September 2016, Respondent-Applicant filed its Verified Answer asseverating the

following:

"I. Respondent-Applicant's RBK mark is an internationally well-known mark

which was adopted, used and registered by Respondent-Applicant long before

Opposer adopted, used and registered its RBX mark. Hence, Respondent-Applicant's

rights over the use and registration of its RBK mark is superior to Opposer's.

"II. The registration of Respondent-Applicant's RBK mark will not impair the

distinctiveness of Opposer's RBX mark and cause damage to the Opposer since as

between the Parties, Opposer is clearly the junior user. Hence, it is not Respondent-

Applicant RBK mark that should be denied registration. Rather, it is Opposer's RBX

mark that should be cancelled."

Respondent-Applicant's evidence consists of the following:

1. Legalized and authenticated Affidavit of Sarah Talbot;

2. Promotional materials for the RBK mark;

3. Table showing the details of applications and registrations for the RBK mark; and

4. Representative copies of certificates of registration for the RBK mark.

Pursuant to Office Order No. 154, s. 2010, the case was referred to the Alternative

Dispute Resolution ("ADR") for mediation on 29 September 2016. However, the parties

refused to undergo mediation. On 30 March 2017, the preliminary conference was

2

terminated and the parties were directed to submit position papers. On 10 April 2017,

Respondent-Applicant filed its Position Paper while Opposer did so on 12 April 2017.

Hence, this decision.

Should the Respondent-Applicant be allowed to register its mark "RBK"?

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 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.5

Section 123.1 (d) and (e) of Republic Act No. 8293, also known as the Intellectual

Property Code of the Philippines (IP Code), as amended, provides:

Section 123.Registrability. -123.1. A mark cannot be registered if it:

XXX

(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;

e) Is identical with, or confusingly similar to, or constitutes a translation of a mark

which is considered by the competent authority of the Philippines to be well-known

internationally and in the Philippines, whether or not it is registered here, as being

already the mark of a person other than the applicant for registration, and used for

identical or similar goods or services: Provided, 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 of the public at large, including knowledge in the Philippines

which has been obtained as a result of the promotion of the mark.

It is clear from the above provisions of the IP Code that whenever a mark subject of an

application for registration, resembles another mark, which has been registered or has an

earlier firing or priority date, or to a well-known mark, said mark cannot be registered.

Records will show that at the time Respondent-Applicant filed its trademark

application for the mark RBK, Opposer has already obtained a registration for its RBX mark

^See Pribhdas j. Mirpuri v. Court ofAppeals, G. R. No. 114508,19 Nov. 1999.

on 22 November 2013. As such, pursuant to Section 1386 of the IP Code, Opposer's

certificate of registration is a prima facie evidence of the its ownership of the mark, and its

exclusive right to use the same in connection with the goods or services specified in the

certificate and those that are related thereto. And further, pursuant to Section 1477 of the IP

Code, it has a right to oppose the herein subject application for registration of Respondent-

Applicant's RBK mark.

A comparison of the marks of Opposer and Respondent-Applicant, as shown below,

shows that they appear to be similar because both marks contain three letters. The first two

letters are the same and they differ only on the last letter, Opposer's mark uses "X" while

Respondent-Applicant uses "K".

RBX

Opposer's Mark

RBKRespondent-Applicant's Mark

Opposer's mark also contain a device which is not present in Respondent-

Applicant's mark. However, these observable differences from the respective marks of the

parties do not make the marks distinct and distinguishable from each other because their

similarity is more apparent than their differences.

In Ethepa A.G. v. Director of Patents8, the High Court enunciated:

A practical approach to the problem of similarity or dissimilarity is to go into the

whole of the two trademark pictured in their manner of display. Inspection should

be undertaken from the viewpoint of the prospective buyer. The trademark

complained of should be compared and contrasted with the purchaser's memory

(not in juxtaposition) of the trademark said to be infringed. Some such factors as

"sound; appearance; form, style, shape, size or format; color; ideas connoted by

6 Section 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.

7 Section 147. Rights Conferred. - 147.1. The owner of a registered mark 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 or containers 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

147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.l(e) which is registered in the Philippines, shall extend to

goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods

or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of

the owner of the registered mark are likely to be damaged by such use.

8 G R. No. L-20635, 31 March 1966

marks; the meaning, spelling and pronunciation, of words used; and the setting in

which the words appear" may be considered.

In addition, the goods of the parties are related as they both use their marks in

goods or products belonging to classes 18 and 25 . In view of the similarity of the marks as

well as the goods upon which these marks are used, the consumer will likely believe that

the goods of Respondent-Applicant comes from, sourced or manufactured by Opposer or

that there is some connection or association between them or vice versa, when in fact there

is none. Any information, perception or impression that the public may have on the goods

of Opposer or Respondent-Applicant may be unfairly attributed to the other, that is why,

registration of marks that resembles each other and deals with the same goods are

proscribed in order to protect the public from confusion, mistake or deception.

held:

Thus, in McDonald's Corporation v. Mcjoy Fastfood Corporation,9 the Supreme Court

When one applies for the registration of a trademark or label which is almost the

same or very closely resembles one already used and registered by another, the

application should be rejected and dismissed outright, even without any opposition

on the part of the owner and user of a previously registered label or trademark, this

not only to avoid confusion on the part of the public, but also to protect an already

used and registered trademark and an established goodwill.

But in its bid to counter the opposition of the registration of its RBK mark,

Respondent-Applicant claims that it was the prior user, adopter and registrant of the mark

RBK. Respondent-Applicant points out that the fact that its registration here in the

Philippines was removed for non-filing of the Affidavit of Use for the Fifth Anniversary for

Registration No. 4-2002-008543 and non-filing of Declaration of Actual Use for Registration

No. 4-2012-012856 is not sufficient to deny the registration of its RBK mark because in cases

of well-known marks, actual use of the mark in the jurisdiction is not a conditio sine qua non

for the grant of protection in said jurisdiction.

In this regard, Rule 102 of Trademark Regulation states that:

Rule 102. Criteria for determining whether a mark is well-known. — In determining whether a

mark is well-known, the following criteria 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;

9 G.R. No. 166115. February 2, 2007, citing Faberge Inc. v. IAC, 35 citing Chuanchow Soy & Canning Co. v. Dir. of Patents and Villapanta

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;

j) 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

1) 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.

The rule requires that the party claiming a mark to be well-known satisfies at least a

combination of the above stated criteria. After an evaluation of the evidence submitted by

Respondent-Applicant, this Bureau finds that the mark RBK has not gained the status of a

well-known mark in the Philippines and internationally. Apart from the registration of the

RBK mark here in the Philippines in 2002 and 2013, there is no other evidence to show that

the mark was even used in the Philippines. The promotional materials also do not also

show that the RBK mark was used and advertised in the Philippines. While Respondent-

Applicant listed down the pending applications and existing registrations of the RBK mark

and submitted representative samples of the certificates of registration in other countries,

these evidence are not sufficient enough for the RBK mark to be declared as a well-known

mark in the Philippines and internationally. As such, Respondent-Applicant's claim for a

wider protection as a well-known mark under 6bis of the Paris Convention and the 1999

Recommendation Concerning Provisions on the Protection of Well-Known Marks is not

well-founded.

WHEREFORE, premises considered, the instant opposition is hereby SUSTAINED.

Let the filewrapper of Trademark Application Serial No. 4-2015-505998, together with a

copy of this Decision, be returned to the Bureau of Trademarks for information and

appropriate action.

SO ORDERED.

TaguigCity, ff

Atty.

Bui

TAV.DAGSA

Adjudication Offijner

;au of Legal Affairs

6