INTELLECTUAL PROPERTYPHILIPPINES

- versus -

XINXING DUTILEIRON PIPES,

Opposer,

}}}}}}

FONTSY SIAO, }Respondent-Applicant. }x ---------------------------------------x

IPC No. 14-2007-00287Case filed: October 3, 2007Opposition to:

Serial No. 4-2006-011458Date Filed: 19 October 2006

Trademark: "XINGXING"Decision No. 2008 - &'4

DECISION

This pertains to a Verified Opposition filed on 03 October 2007 by hereinopposer, XINXING Dutile Iron Pipes, a corporation duly organized and existingunder the laws of the People's Republic of China, with address at North ShangLuoyang Village, Wu An City, Habei Province, People's Republic of China, againstthe application filed on 19 October 2006 bearing Serial No. 4-2006-011458 forthe registration of the trademark "XINGXING" used for goods in ClassificationNo. 6 for jambs of metal, and 19 for wooden doors and jambs not of metal,which application was published in the Intellectual Property Office's OfficialGazette, officially released for circulation on 06 July 2007.

The Respondent-applicant in this instant opposition is Fontsy Siao withregistered office address at 149 Santa Monica Compound I, Valenzuela City.

The grounds for the opposition are as follows:

"2.1 The mark sought to be registered is identical with ornearly resembles Opposer's mark which has an earlier filingdate."

"2.2 The Applicant is not the true owner and first user incommerce of the said trademark when it applied for th¥registration of the said mark in its name." / I,

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines· www.ipophil.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

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"2.3 The registration of the trademark "XING XING" in thename of the Applicant constitutes an unlawful appropriation ofa mark that is already the subject of a prior trademarkapplication. Consequently, the registration of the trademark"XING XING" in the name of the Applicant will violate Sections123.1 (d), (e) and (f) of Republic Act No. 8293 (IP Code),Article 6bis of the Paris Convention for the Protection ofIntellectual Property ("Paris Convention") and Article 16 of theAgreement on Trade Related Aspects of Intellectual PropertyRights ("TRIPS Agreement") that give protection to marks thatare registered and internationally well-known marks within thedefinition of the aforementioned laws and conventions onIntellectual Property Rights."

"2.4 The registration and use of the trademark "XING XING"will falsely tend to suggest a connection with the Opposer."

"2.5 The registration and use of the trademark "XING XING"by the Applicant will diminish the distinctiveness and dilute thegoodwill associated with the Opposer's internationally well­known trademark "XINXING", which has become distinctive for,and practically synonymous with, the goods and productsmanufactured and sold by the Opposer allover the world."

"2.6 The registration of the trademark "XING XING" in thename of the Applicant, which closely resembles the trademark"XINXING" of the Opposer, will cause the latter incalculabledamage to its reputation and general business standing."

The allegations of facts are as follows:

"3.1 Opposer is the owner and rightful proprietor of theinternationally well-known trademark "XINXING & CHINESECHARACTERS & X DEVICE" which is the subject of trademarkApplication No. 4-2005-006201 filed this Honorable Office on 5July 2005.

A certified true copy of the Acknowledgment Receipt forTrademark Application No. 4-2005-006201 dated 5 July 20T

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issued to the Opposer by the IPO is made part hereof as Annex"A"."

"3.2 Applicant's trademark is confusingly and deceptivelysimilar to the trademark "XINXING & CHINESE CHARACTERS &X DEVICE" of the Opposer."

"3.3 Opposer's trademark "XINXING" is internationally well­known within the definition of the Paris Convention and theTRIPS Agreement; thus the Opposer's trademark is protectedagainst appropriation and use by parties without the Opposer'sconsent. Opposer's trademark is registered in the EuropeanUnion (OHIM), USA, African IPO, Jamaica, Australia, Cambodia,Singapore, South Korea, Taiwan, Kuwait, Saudi Arabia, Jordan,Lebanon, Mongolia, Iran and Turkey.

Certified true copies of the Opposer's foreign TrademarkRegistration Certificates are made part hereof as Annexes "B","C", "D", "Elf, "F", "Gil, "H", "1", "J", "K", "L", "M", "N", "0", "P"and "Q"."

"3.4 Opposer maintains a worldwide and extensiveadvertising and promotional campaign for its goods. For thisreason and because of Opposer's worldwide prior andcontinuous registration and use of the trademark "XINXING",the same have acquired a meaning exclusively identified withthe Opposer and the Opposer's goods."

"3.5 On October 19, 2006, the Applicant applied for theregistration of the trademark "XING XING" undoubtedly to takeadvantage of the popularity generated by, and goodwillassociated with, the trademark "XINXING" registered in thename of the Opposer. There are unlimited trademarksavailable to the Applicant, but it ventured to adopt thetrademark "XING XING" undoubtedly to confuse or deceive thepublic into believing that the goods offered by the Applicant arethose of, or are sponsored by, the Opposer."

Subsequently, this Bureau issued a Notice to Answer dated 09 October2007 to Respondent-applicant's counsel on record, Atty. Jorge Cesar M.Sandiego, directing the filing of Answer within thirty (30) days from receipt. sair

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Notice was duly received on 28 May 2007. Thence, respondent-applicant'scounsel filed Motions for Extension of Time to File Pleading dated 08 November2007 and 10 December 2007 and 10 January 2008. These were granted inOrder Nos. 2007-2064, 2008-139 and 2008-316, dated 23 November 2007, 21January 2008, 27 February 2008, respectively. Despite such, Respondent­applicant did not file an Answer to the Verified Opposition. Thus, pursuant toSection 11 of Office Order No. 79, series of 2005, this instant opposition case isdeemed submitted for decision on the basis of the opposition, the affidavits ofwitnesses and the documentary evidence submitted by herein opposer,consisting of Exhibits "A" and "U". The other documentary evidence of opposerare not admitted for being mere photocopies of the original (Section 7, OfficeOrder No. 79, series of 2005 or the Amendments to the Rules on InterPartes Proceedings), and/or written in an unofficial language (Sec. 33, Rule132, Revised Rules of Court).

The issue -

Whether or not respondent-applicant's application for trademark "Xing Xing" covering goods under classes 6 and 9 forjambs of metal and wooden doors and jambs not of metal,respectively may be allowed registration pursuant to Section123.1 (d), (e) and (f), IP Code.

Opposer cited sub paragraphs (d), (e), and (f), Section 123.1 of R.A.8293, or the New Intellectual Property Code, as grounds to reject the registrationof respondent-applicant's "Xing Xing" trademark.

After careful perusal of the arguments and evidence presented by bothparties, this Bureau finds merit to the instant opposition case under the pertinentprovision enunciated in Section 123.1 (d), supra. which reads:

"Sec. 123. Registrability. - 123.1. A mark cannot beregistered if it:xxx

(d) Is identical with a registered mark belonging to adifferent proprietor or a mark with an earlier filing orpriority date, in respect of: I /

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(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;(Emphasis Supplied)

In a contest involving registration of trademark, the determinative factoris not whether the challenged mark would actually cause confusion or deceptionof the purchasers but whether the use of the mark would likely cause confusionor mistake on the part of the buying public.

The existence of confusion of trademark or the possibility of deception tothe public hinges on "colorable imitation', which has been defined as "suchsimilarity in form, content, words, sound, meaning, special arrangement orgeneral appearance of the trademark or trade name in their overall presentationor in their essential and substantive and distinctive parts as would likely tomislead or confuse persons in the ordinary course of purchasing the genuinearticle." (Emerald Garment Mfg. Corp. vs Court of Appeals, 251 SCRA600)

Thus, in determining confusion of goods or of origin, it does not requirethat the competing trademarks must be so identical as to produce actual error ormistake. It is rather sufficient that the similarity between the two trademarks issuch that there is a possibility or likelihood of the older brand mistaking thenewer brand for it.

In resolving the issue of confusing similarity, the law and jurisprudencehas developed two kinds of tests - the Dominancy Test as applied in a litany ofSupreme Court decisions including Asia Brewery, Inc. vs Court of Appeals,224 SCRA 437; Co Tiong vs Director of Patents, 95 Phil. 1; Lim Hoa vsDirector of Patents, 100 Phil. 214; American Wire & Cable Co. vsDirector of Patents, 31 SCRA 544; Philippine Nut Industry, Inc. vsStandard Brands, Inc., 65 SCRA 575; Converse Rubber Corp. vsUniversal Rubber Products, Inc., 147 SCRA 154; and the Holistic Testdeveloped in Del Monte Corporation vs Court of Appeals, 181 SCRA 410;Mead Johnson & Co. vs N.V.J. Van Dorp, Ltd., 7 SCRA 771; Fruit of theLoom, Inc. vs Court of Appeals, 133 SCRA 405.

The Test of Dominancy has been consistently relied upon by theHonorable Supreme Court in cases relating to infringement of marks. It is in factincorporated in Section 155 of R.A. 8293 which focuses on the similarity of th~jft/

prevalent features, or the main, essential and dominant features of theI, 5

competing trademarks which might cause confusion or deception. As to whatconstitutes a dominant feature of a label, no set of rules can be deduced.Usually, these are signs, color, design, peculiar shape or name, or some special,easily remembered earmarks of the brand that easily attracts and catches theeye of the ordinary consumer.

The Holistic Test, in the case of Mighty Corporation vs E & J GalloWinery, 434 SCRA 473, held that, "the discerning eye of the observer mustfocus not only on the predominant words but also on the other featuresappearing in both labels in order that he may draw his conclusion whether one isconfusingly similar to the other.

Under the foregoing, this Bureau finds opposer to have presented factualevidence of confusing similarity between the contending marks, depicted asfollows:

XING XING

Respondent-Applicant's mark

AIr XI NXING~

Opposer's mark

Opposer's pending Philippine application for the mark "XINXING & ChineseCharacters & X Device" covering class 6 (Annex "A"), vis-a-vis respondent­applicant's subject mark application for "XING XING" (file wrapper records)covering classes 6 and 19, reveal a virtually identical and dominant feature in theword mark. While the font of the contending marks are not photographicallysimilar, it failed to create a substantial distinction to outweigh the simple fontsadopted by the respective marks.

The contending marks are visually and aurally similar. Both marks arespelled almost the same, except that opposer's mark "XINXING" is without letter"G" after the first syllable; and, respondent-applicant's "XING XING" has letter"G" on its first word. They are pronounced in the same way, havinq the samecadence when spoken. The existence of the Chinese characters and the "X" markfailed to write-off the apparent similarity, both visualiy and aurally. Similarity ir

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size, form and color, while relevant, is not conclusive. Neitherduplication/imitation, or the fact that the infringing label suggests an effort toemulate, is necessary. The competing marks need only contain the main,essential or dominant features of another; and that confusion and deception arelikely. (Sterling Products International, Inc. v. Farbenfabriken BayerAktiengesselschaft, G.R. No. L-19906, April 30, 1969; Lim Hoa v,Director of Patents, G.R. No. L-8072, October 31, 1956; Co Tiong Sa v.Director of Patents, et al., G.R. No. L-5378, May 24, 1954).

With respect to goods covered by the competing trademarks, opposer'sgoods include class 6, namely aluminum-plastics compound pipes (mainly ofaluminum); steel plastics compound pipes (mainly of steel); ductile iron pipes;unwrought iron; billet; round steel; angel steel; screw threads-steel; steel plate;cast iron pipes; fittings of cast iron steel. Respondent-applicant's goods includeclass 6, namely jambs of metal; and class 19, namely wooden doors and jambsnot of metal.

The above-enumeration shows the relatedness of the goods. "Goods arerelated when they belong to the same class or have the same class or descriptiveproperties; when they possess the same physical attributes or essentialcharacters with reference to their form, composition, texture or quality. Theymay also be related because they serve the same purpose or sold in grocerystore. Thus biscuits were held related to milk because they are both foodproducts." (American Foundries vs Robertson, 269 USPO 372, 381)

In the instant case, the goods belong to the same classification no. 6 ofgoods. They are both hardware supplies used as joints, fittings, and linings.Jambs form the sides of a door, window and frame, whereas, ductile iron pipesform water pipes and the like. They have the same class of consumers and aremade available in the same store or hardware store. Thus, the belief of somebusiness association between the parties which, in fact, is absent is likely to exist.

This legal assemblage affirms the better right of opposer in accordance tothe above-quoted provision otherwise known as the "prior filer" rule. Recordsshow that opposer has filed its application for the registrations of the mark"XINXING & Chinese Characters & X Device" on 04 July 2005. On the otherhand, respondent-applicant filed its application for the registration of the subjectmark "XING XING" on 19 October 2006. Opposer's trademark application wasfiled more than one year earlier than that of respondent-applicant. Thus,opposer personifies sufficient legal basis under Section 123.1 (d), being the PriO~

filer of a confusingly similar mark over related goods. 1 I /

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Finally, opposer seeks the declaration of well-known over its mark"XINXING & Chinese Characters & X Device". This Bureau cannot agree.Opposer failed to submit sufficient and eloquent proof to prove that its mark hasactually gained and enjoyed a worldwide reputation internationally and in thePhilippines, in accordance to The Rules and Regulations on Trademarks,Service Marks, Trade Names and Marked or Stamped Containers,particularly Rule 102, which enshrines the criteria of a well-known mark, to wit:

"Rule 102. Criteria for determining whether a mark is well­known. - In determining whether a mark is well-known, thefollowing criteria or any combination thereof may be taken intoaccount:

(a) the duration, extent and geographical area of any use ofthe mark, in particular, the duration, extent and geographical areaof any promotion of the mark, including advertising or publicityand the presentation, at fairs or exhibitions, of the goods and/orservices to which the mark applies;

(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 themark;

(d) the quality-image or reputation acquired by the mark;

(e) the extent to which the mark has been registered in theworld;

(f) the exclusivity of registration attained by the mark in theworld;

(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 whethe~the mark is a well-known mark; and I !

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(I) the presence or absence of identical or similar marks validlyregistered for or used on identical or similar goods or services andowned by persons other than the person claiming that his mark isa well-known mark."

Opposer did not produce sufficient evidence to meet the enumeratedcriteria or a majority combination thereof of a well-known mark. The allegationsof world wide registrations, promotions and advertisement and sales of opposer'sgoods bearing its mark were mere allegation nudus, unsupported by anyevidentiary fact. It is again worth mentioning that some of opposer's evidencewere not admitted by this Bureau, as they are mere photocopies of the originaldocuments and/or written in unofficial language, pursuant to Section 7, OfficeOrder No. 79, supra and Section 33 of Rule 132 of the Rules of Court.

Be that as it may, following the cited laws and jurisprudence, this Bureaufinds merit in this instant opposition to respondent-applicant's application for theregistration of the mark "XING XING" covering classes 6 and 19, for beingconfusingly similar to opposer's mark "XINXING & Chinese Characters & XDevice" covering class 6, without however declaring opposer's mark as a well­known mark. Hence, the Verified Notice of Opposition is, as it is, herebySUSTAINED. Consequently, Application Serial No. 4-2006-011458 for the mark"XING XING" filed by Fontsy Siao, covering classes 6 and 19 for jambs ofmetal; and wooden doors and jambs not of metal, respectively, on 19 October2006 must perforce be REJECTED.

Let the file wrapper of "XING XING" subject matter in this case beforwarded to the Bureau of Trademarks (BOT) for appropriate action inaccordance with this Decision.

SO ORDERED.

Makati City, 06 May 2008.

LLITA BELTRAN-ABELARDOctor, Bureau of Legal Affairs

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