OFFICE OF THE DIRECT R E

pp al o. 14-06-03TI o pOppo er- ppellant

p . 14-2 3-

- er u -0-00530

uoxcnR p nd ent- ppellee. T rademar k:

DECI 10

Thi i an appeal from the Decision 0.2005-27. dated 23 December 2 05,of the Director of the Bureau of Legal ffair Director denying the oppositionfiled by TIFF NY AND CaMPA Y (Appellant to Application Serial o. 2000­

05-30 for the regi tration of the mark TIFFA Y filed by DEWEY CHOACHUY( pp llee .

Records how that on 25 January 2000 th Appellee filed the subjecttrademark application for use on pillow foam, mattres , spring mattress , cushionspring bed , sofa bed , and beddings. The application wa published for opposition in

the Official Gaze tte'.

On 12 February 2003, the Appellant filed a verified Notice of Opposition .The grounds cited by the Appellant in opposing the subject trademark applicat ionare urnrned-up as follows:

1. The subject trademark resembles the Appellant's well-known trademarkTI F Y, which has been previou ly u ed in commerce and regis teredin the United States of America U..) and other part of the worldincluding the Philippines, and not abandoned , a to be likely, whenapplied to or used in connection with the go d of the pp llee , to causec nfu ion. mi take and decep tion on the part of the purchasing public;

The regi tration of the trademark in fa or of the ppellee ill violatee tion 1-3 .1(f) and 147.2 of Republic ct o. _93, kno n as the

Intell ctual Property Code of the Philippine ( IP Code . rticle 6bis ofthe Pari Convention for the Protection of Indu trial Pr p rty and Anicle

Tel h

n O January 2 3.

l 'ipophil -- .kwc:y

p;li,'C ' of

I _

Rightpani

f th greemem on Trade Related p ct of Int 11 ctual Pr perty"TRIP ". for bre ity to .. hi h the Philippine and th .. are

3. The re i tration of the trademark in fa or thethe di tin ti ene and dilute the g ill

pp 11 ru' trademark TIFF ! and TIFFe n re i teredo appro ed andlor applied forla e of .. ith the Bureau of Trademark

The ppellam i the manufacturer,regi tered 0\ ner of the trademar TIFFlu u g and arious cia of g

Id in man c umrie orId ide;

ill dimini hof. and infrin e the

0 .. hich ha eregi tration in ariou

5. Th the fir t u er and 0 n rTIFF and TIFF Y

appro ed applicati ns andl rof go d :

in th Philippine of theO. und r the folio ingnding appli atio for the

Rc ppln. O. 1 rk re C

61 71 TIFFA 22 ug . 19 5 3'3 TIFFA CO . 07 pro 1993 14

114365 TI FFA CO . _7 pt. I 16'114364 TIFFA Y CO . _7 ept . 1996 6

II 36 TIFFA Y & CO. 27 ept . 19 257

114366 TIFFA Y&CO. 27 ept. 1996 I11 367 TIFFA Y & CO. 27 Cpl. 19 2 19

couring and

pt cutlery.

in oth rhip •

m I I. nr c I therewith ): comb andmaterial : instrum n and malerials for

ppellee unauthorized appropnauon and u e of the markgo d in Clas 2010 i likely t damage ppellant'\ ell-known m rk and pre lude it u e of it mark toclass, hich ar ithin the natural e pan ion of its

7. 8 irtue of the ppellant prior and continu d u f TIFF Y inm n untri of the orld, th tr d mark nd tr de name ha e bornep pular and internationalI well-kno n r lu ury d and re gnized

ueh b urt or adrninistrati e bodie in the outh Koreaiv an, Pe pie Republi of China and other untri ; and

ppellee appropriated theand u ed it on hi produe

e t an a iation or eonnecti n

p llant'to ride on i

ith pp llant .

orld-famou markreno nand fal ely

heis u d Orddef ult.

pp lIee did not file hi nr o. _003-391 dated _4

pp ition. Thu . th Director3 declaring the ppellee in

ft r the ppellant had pre ented it e id nee. the Director rendered thea ailed deci ion, the di positive portion of which read a follow:

.. "WHEREFO RE, in view of the foregoing, the Notice of Opposition filed bythe Opposer is, as it is hereby DE lED.

"Consideri ng however that. a shown by the reco rds. Respondent-Applicantdespite due notice failed to file its Answer to the Notice of Opposition nor filed anyIII tion to lift the Order of default , such act of Respondent-Appl icant (sic) is indicativeof hi lack of interest in his applicatim, thus he i deemed to have aba nloned the same.

"Furthermore. under Rule 602 of the Rule and Regulation on Trademarks,crvice marks, Trade ames and marked of tamped ontainer, the law imp es upon

the Re pondem-Applicant the duty to look after hi 0 n int re t in the pro cution ofhi application. On the contrary. the applicant in thi ca e app ar (0 have no interestin d fending hi application. whi h i the ubj t of thi ti of Opp sit' n.

luding I u

) of • cor. rerl, me haurn, cellul oid .

"Let the file wrapper subject matter of this case be forwarded to theAdministrative, Financial, Human Resources Development Services Bureau(AFHRDSB) for appropriate action in accordance with this decision with a copyfurnished the Bureau of Trademarks BOT) for information and to update its record .

"SO ORDERED."

In denying the opposition, the Director held that TIFFANY is not well­known because it is not one of the enumerated world-famous marks under the 20

ovember 1980 memorandum of former Minister Luis. R. Villafuerte. She alsoconcluded that the broader protection of well-known marks can only be invokedwhen the mark is used for identical or similar goods" citing the memorandum offormer Minister of Trade and Industry Roberto Ongpin dated 25 October 1983,which pre cribed the guidelines in implementing Article6bi of the ParisConvention.

Not satisfied with the decision of the Director, the Appellant filed the instantappeal on 22 February 2006 .

In its appeal , the Appellant claims that the Director applied the wrong law,treaty and implementing memorandum. It contends that the contested application ispro cribed under Sections 123.1 (f) and 147.2 of the IP Code. According to theAppellant, this Office should completely reject and overturn the indefensible notionthat the limited protection to well-known marks again t appropriation for identical orimilar goods or the goods specified in the certificate under the old and repealed law

on trademarks" remain valid under the more liberal and protective regime of theTRIPS 13 and the IP Code.

This Office required the Appellee to file its comment to the appeal. TheAppellee, however failed to do SO .14

After due consideration of the foregoing and a careful review of the record ,this Office finds merit in the instant appeal.

The function of a trademark is to point out distinctly the origin or ownershipof the goods to which it is affixed; to secure to him, who has been instrumental inbringing into the market a superior article of merchandi e, the fruit of his indu tryand skill ; to assure the public that they are procuring the genuine article ; to preventfraud and impo ition ; and to protect the manufacturer against sub titution and ale of

II See DECISION, p. 4 .12 Repu blic Ac t 0. 166, as amended .13 Agreement on Tr ade-Related Aspects of Intellectual Property Rights .14 Order dated 26 May 2006, giving the Appellee thirty (30) days from receipt thereof to filecomment to the appeal.

tiffany vs. deweypa,;e -l of tl

an inferior and different article a hi pr duct. J.S The lapre erve thi functi n.

of trademark e i t to

_ Jthat the pp Ilee filed the pp d tr d mark appli ation on

tions 123.1 e, t) and 147. f the IP de pr ide that:

- f) I id nti 31 ith, or onfu in I imil r I • transl ti n of a marid red w 11- no n in a ordance with th pr r ph. whi h i registered

in th 0 Philippin ith re peet 10 good or ervi hich are n I irnilar to th e ithrespe t to hi h regi tration is applied for: Provided. That u of the mark in relati n10 th g or rvi would indi ate a conn ti n ten th gand th own r f the regi tered mark: Provided furth r, That the int rof th reg' t red mark are likel to be damaged b g] h u :

M • • 147. Ri hIS C ferred.- x x x

-I 7. . Th e c1u ive right of th owner of a well-known mark defined in ub tion123.1 c) which i regi tered in the Philippin es. hall tend to d and ervi e whicharc not similar to tho e in re pect of which the mark i regi tered: Provided, That use

f that mark in relation to those g ds or services would indicate a c nnection betweentho e g ds or services and the owner of the registered mark: Provided further, Thatth interests of the owner of the registered mark are likely to be damaged by sich use."

Rule 102 of the Trademark Regulation , on the other hand , tale that:

MR LE 102. Criteria for determining \VII tiler a mark I w ll-known . -In determining\ heth or a m rk i well- mown, th foil ing rit ri r any mbinati n there f mayb ta n into ac aunt:

a the duration. e t nt and g 0 raphical ar

J. lirpuri vr. CA, G.R. '0. 11450 0 19C 495 1966. Gabriel , Per ~ . -5

mar ', intion of thet fairs or

and/or

mar ' :

dd;

or I ,citin Etepha vs. Director of1974).

the exclu ivity of registration attained by the mark in th world ;

the e tent to which the mark has been u en in the world ;

the exclu ivity of use attain d by the mark in th \V rid ;

the commercial value attributed to th mar ' in the rid;

(j) III record of uccessful protection of ih rights in th mar ' ;

k the out me of litigations dealing ith th i u of -h th r th m rk is a li-n mar .; and,

the pr nee or absence of identical or imil r m r ' alidl registered or orused on identical or imilar goods or rvi and 0\\ n b pe oth r thanthe pe n !aiming that h' mar i a 11- n mark ."

ignificantly, the tatus of the mark TIFF a a mark \ ell-knowninternationall and in the Philippines has already b n decided by the Directorher If in Inter Partes Ca e o. OOסס-001_-14 . In her Deci i n o. _003-1 dated07 ar h _ 3, the Director held:

per the evidence presented, th trad m r TI F i Y fir tubharl Le i Tiffany in 1837 when he opened r tail p in or City . He

ther after opened similar tore in Pari (I 50) and in Lond n I 6 ). In I 68, thebu in in orporated under the name TIFF CO . and remains a corporationof the State of ew York to thi day, with variou retail outle around the globe.including the United States, Canada, Latin m ri a, Europe, ia-Pa iflc, Japan andth Philippines. The business of th Oppo er c n i of the d ign, manufacture andal of luxury consumer items for personal and huh Id u e and the provi ion of

related ervices. Opposer's broad range of products in Iud j welry, atche andcl ks, h u ehold wares, vase , trophie and fan y items for per onal u e includingclothing acce ories such as scarves, neckties and belts . In its more than one bundredfifty years of existence, Opposer has long enjoyed a worldwide reputation for producinghigh-quality luxury goods. And to ensure the high quality of good bearing theTIFFANY trademarks, Opposer does not license it mar ' for use by others . Oppo eralso obtained registrations for its trademarks TIFFANY and TIFFANY & CO . fromvarious countries around the world.

"In 1993, two years prior to Respondent-Applicant' alleged fir t u e of thetrademark TIFFANY & CHI ESE CHARACTER on 05 January 1996, Opposertarted commercial sales of its products in the Philippin , through its distributor,

Ru tan's Department Store. For the first nine months of its operations in thePhilippines, Opposer's sales amounted to over 500.000. Thi w becau e . evenbefore the opening of its Manila branch, the name and reputati n of th Oppo er hasbecome t blished in the Philippine through ih ale of TIF merchandisearound the world and the publication of various ani 1 and d erti merus thereon, nott menu n the movie classic 'Breakfast at Tiffany' ' . Far reaching adverti ing andpr m ti nal efforts have also been undertaken by the Oppo r to further establi h itsname and reputation in the Philippine ."

hi Office, there fore i urpri ed that after determining in _003 thatTIFF Y i a ell-known mark internationally and in the Philippine the Directord ided oth rv i e in thi case. oreover, the record clearI ho that the

ppellant ha ubmitted and pro ed by ub tantial e iden e that its mark is well­n wn internationally and in the Philippine. The pp llanr' evidence include:

nfT: <brry6

I. enificate of regi trations for the mar TIFF Y in a broad range ofoct all 0 er the '> orId pro in th lob I e. tent and ge raphical areaered b the u e of the mark; \6 and

Ii ati to pro e theearned internationally

b arinz the mark5 .000 during

rti Ie fr m nev papers. magazin and printed pureputati nand g oct ill hich th mar TIFF Y haand in the Philippines;' and ale of i pr uTIF in the Philippine hich am unted to 0 rthe fir tim nth of its operati n . I

The IP Code. '> hich con olidated and updat d the I \ of th Philippine onintell tual pr p rtv. as promulgated in mplian of the c unt ' obligations orc mmitm nt und r international agre men lik the TRIP . e ti n 1-3.1 . inpanicular, ech the te: t of Anic1e 16 3 of TRIP. hi h e panded the protectionf '> ell-kn n mar ' to dissimilar g or ervice. nder the current legal

r girne, th protection applies e en if it in I e di irnilar g or e ice.pr ided, fir. l. th u e of the mark in relation to th g or ervice ouldindicate a connection bet een tho e g d or r i e • and the 0\ ner of there iter d m rk. and second the intere of the 0 n r of th regi tered mark arelikel t e dam ed b u hue.

In thi in tance, the Appellee' u of a mark that i identical to thepp 11ant. well-known mark would ugge t a conne tion b tween their re pective

g d or bu ine se . The Appellant' go d or bu inc cover a large variety ofc n umer item that are commonly and regularly u ed at home and dwellings thatc nfu ion f urce i likely to occur if Appellee will use the mark TIFFANY on itspr duct consi ting of pillows, foams, rnattresse , spring rnattresse I cushions,spring bed , sofa beds, and beddings. The interests f the Appellant would certainlybe damaged a the public or the purchasers would tend to believe that the Appellantha e panded it bu ine s to product like pillo , foam, and rnaure ses. Thepublic \ ould al 0 a ociate the Appellee' pr duct bearing the mark TIFFA Y

ith th e coming from the Appellant in luding the tate and Ie el of quality.ore v r, the ppellant \ ould likely be pre luded from e panding i bu ine

in I in th trademark TIFFA Y to the pp lie' pr du . Rele ant is theruling f the upreme Coun in the ca e of Sta. na vs. taiiwat, et al,":

rn la recogniz mal m p I Ii n 10 hi h th 0 n r of a trademarkmill i n I limited to guarding hi r bu ine from tual mar .et

m titi n ith identi I or simil r produ th p ni . bUI t nd t 11 in

in lu i e of ubm r ' in s. See al'0 . I -_ 1-0000 . p. .

hi h th u e b a junior appropriat r of a tradern rk or trade name iii ' Iy to I d aconfu i n of urce, a wher me pro pecti e purch ers w uld be mi led imo thinkingthat the c mplaining party has extended his bu iness into the field (see 14 ALR et seq:52 m Jur. 576) or i in any way connected with the activitie of the infring r: or whenit fo tails th norm I potential e. pansion of his busine ( . 14 LR., 77. : S_Am. Jur. 576. 577). ~

Finally, thi Office find the ruling of the Director , that the Appell e'strademark application is c n idered abandoned! ithdra n for th App llee' lack ofiruere l lO pro e ute hi applicati n legally fla ed. Thi Offi ha alread ruled inother Inter Parte a e brought on appeal, that the Director ha no auth rity todeclare an application abandoned for failure to file an an wer to an opposition. hefailure to file an n wer to a otice of Opp siti n can tirute a aiver to file an

n er and, on e uentl , to be de lared in default in the opp ition e. Rule6 _ :!O of the Tradem rk Regulation cited by the Dire tor, applie to trademarkapplicati n , which have not yet been publi hed. In thi a e, the ubject applicati nha already been publi hed for purp ses of opp ition and the provision on theRegulation on Inter Part Ca e hould appl. ccordingly, th re i nothing in theRegulation n Inter Parte a e that authorize the Director to d clare anapplicati n to ha e been abandoned!withdra n for failure of an applicant to an wera otice of Oppo ition or for failure to file any motion to lift an Order of default.

HEREFORE, premi e considered. the appeal i hereby Gccordingly. Deci i n o. _005-27 dated 23 De ember _005 of the Direct

Bureau of Legal Affair i REVER ED and SET ASIDE and the oppTrademark pplication erial . 4-_ 0- 530 i hereby SU TID.

ED.r of theition to

Let a c py of thi Deci ion a ell a the trademark applicati n and re rdbe furni hed and returned to the Director of Bureau of Legal ffairs for appropriateaction. Further, let al a the Dir ctors of the Bureau of Trademark , the

dmini trati e. Financial and Human Re ources De elopment rvi e Bureau. nthe libr ry of the D urnentation, Information and Te hnology Tran fer Bureau efurni hed a c py of this Decision for information, guidance, and record purpo e .

o ORDER D.

akati CitAY 03 2007

: Rule 6O:! of the Trad mar ' Regulati ns states mat:-Rule 60_. ppli ant uppo to I k after hi 0 '0 inte ts .- The Office, repr nted by

me E aminer, i not upposed to look after the inre t of an appli am. The la im that dutyupon th applicam hims If. The Examiner i harged ith the protectim of the inter of me pub!"and hence must be vigilant to see that no registration issues for a mark contrary to law and the e

Regulati ns."

llff,ny vs, U W~'Y

P"' II of H