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San Beda College

Mendiola, Manila

COLLEGE OF LAW

Law on Intellectual Property


(Trademark Law)
MEET YOUR GARDEN

SUBMITTED BY:
Section 3S
GROUP 5 MEMBERS
Macapintal, Hanna Nazria
Maderazo, Cristine Mysel
Mari, Ruel Nico
Mayor, Kerwin Rey
Molina, Maritoni

SUBMITTED TO:
Atty. Barbra Jill Clara Aranilla
Professor

CONTENTS:
1. Application Form
2. Examiners Report Denying the Application for Registration of the
Group 6s Trademark
3. Reply to the Examiners Report Denying Approval of the Application
for Registration of the Group Trademark
4. ANNEX A: Application Form for the Registration of the Group
Trademark
5. ANNEX B: Group 6s Examiners Report Denying the Application for
Registration of the Group5s Trademark

1. Examiners Report Denying the Application for Registration of the


Group 6s Trademark
FINDINGS
The trademark sought to be registered may not be registered for the
following defects:
1. The trademark "POREBER" is geographically misdescriptive under Section
123.1 (g) of R.A. No. 8293.
2. Assuming arguendo that the doctrine of secondary meaning is applicable,
the requirements for the application of the same is yet to be proven under Seciton
123.2 of R.A. No. 8293.
3. "POREBER" is too descriptive as to the quality of the product on which the
trademark is intended to be used under Section 123.1 (j) of R.A. No. 8293.
4. "POREBER" is confusingly similar to the well-known mark FOREVER 21 and
satisfies the requirements for unregistrability under Section 123.1 (f) of R.A. No.
8293.
5. "POREBER" is identical with the trademark "FOREVER," which is also used
on batteries and which, although not being a well-known mark, is a registered
trademark under the Madrid Protocol.
Hanna Nazria Macapintal
IPRS-in-Charge
Date: 8/28/2015
Approved:
Cristine Mysel Maderazo
Supervising IPRS
Date: 09/01/2015

EXAMINERS REPORT
The application for registration of the trademark "POREBER for use on
batteries is
hereby DENIED for the following defects:
1. The trademark "POREBER" is geographically misdescriptive.
POREBER is a name of a municipality in Slovenia, a European country, to
which the applicant has not proven itself to be related in any way.
Section 123.1 of R.A. No. 8293 (The Intellectual Property Code) provides:
Section 123.1 A mark cannot be registered if it:
x
x
x
x
(g) Is likely to mislead the public, particularly as to the nature,
quality, characteristics or GEOGRAPHICAL ORIGIN of the
goods or services;
x
x
x
x
(Emphasis supplied.)

Hence, the purchasing public is likely to be misled as to the geographical


origin of the products on which the trademark is sought to be used.
2. Assuming arguendo that the doctrine of secondary meaning is
applicable, the requirements for the application of the same is yet to be
proven.
As ruled by the Supreme Court in the case of Ong Ai Gui v. Director of PPO
(96 Phil. 623), the doctrine of secondary meaning cannot possibly find application to
a trademark that is misdescriptive to begin with.
Assuming arguendo that the doctrine of secondary meaning is applicable, the
requirements for the application of the same is yet to be proven. Section 123.2 of
R.A. No. 8293 provides:
Section 123.2 As regards signs or devices mentioned in
paragraphs (j), (k), and (l), nothing shall prevent the registration
of any such sign or device which has become distinctive in
relation to the goods for which registration is requested as a
result of the use that have been made of it in commerce in the
Philippines. The Office may accept as prima facie evidence that
the mark has become distinctive, as used in connection with
the applicant's goods or services in commerce, proof of
substantially exclusive and continuous use thereof by
the applicant in commerce in the Philippines for five (5)
years before the date on which the claim of
distinctiveness is made.
(Emphasis supplied.)

3. "POREBER" is too descriptive as to the quality of the product on


which the trademark is intended to be used.
First, it is herein established that the trademark "POREBER," for purposes of
this ground for denial of registration, is taken to mean the English word "forever."
"POREBER" is popularly used as a loose translation in the Filipino language of
the English word "forever."Although not the true translation of the said English term,
"POREBER" is nonetheless highly susceptible of being treated as such especially by
the average Filipino. This is because of the usual practice in the Filipino language
wherein substitutions of the letter "P" for the letter "F" and the letter "B" for the
letter "V," which are letters not found in the Filipino alphabet, are made in order to
"Filipinize" the word. It can therefore be concluded that "POREBER" can reasonably
be treated as a translation of "forever."
At this point, to use "POREBER" then in batteries would be suggestive of their
quality, that is, that they last "forever." Section 123.1 of R.A. No. 8293 provides:
Section 123.1 A mark cannot be registered if it:
x
x
x
x
(j) Consists exclusively of signs or of indications that may serve
in trade to designate the kind, QUALITY, quantity, intended
purpose, value, geographical origin, time or production of the

goods or rendering of the services, or other characteristics of


the goods or services;
x
x
x
x
(Emphasis supplied.)

Disclaimers may not be resorted to by the applicant in its case.


Under R.A. No. 8293, the usual solution to avoid the denial of registration of a
descriptive word is the employment of disclaimers clarifying that no exclusivity is
sought for that particular part of the mark. In the instant case, a disclaimer is
neither available because if such would be allowed, then nothing would remain of
the trademark as it consists solely of the descriptive word "POREBER."
4. "POREBER" is confusingly similar to "FOREVER" in pronunciation
or sound. This fact finds particular relevance in ascertaining the rights of
the trademarks FOREVER 21 and FOREVER, which are to be expounded on
later in Nos. 5 and 6.
Idem sonan means two names having the same or similar pronunciation or
sound. In this jurisdiction, our courts have taken into account the aural effects of the
words and letters contained in the marks in determining the issue of confusing
similarity:
In Marvex Commercial Co., Inc vs. Petra Hawpi, it held that LIONPAS and
SALONPAS are confusingly similar. In Pro Source Int. Inc vs. Horphag Research
Management, the words PYCNOGENOL and PCO-GENOLS sounded confusingly
similar. Here, the words POREBER and FOREVER are both confusingly similar in
sound and pronunciation.
Using the Dominancy test, which focuses on the similarities of the prevalent
features between two marks, the word POREBER contains the main, essential and
dominant feature of the word FOREVER. The only difference are merely two letters,
(1) "P" was used instead of "F," and (2) "B" was used instead of "V." For the
remaining letters, all are the same. Such factor would likely cause confusion,
mistake or deceive the public.
The test of dominancy is explicitly incorporated into law in Sec. 155.1 of R.A.
8293.
5. "POREBER" is confusingly similar to the well-known mark
FOREVER 21 and satisfies the requirements for unregistrability under
Section 123.1 (f) of R.A. No. 8293.
Forever 21 is a company duly registered in the United States of America. It is
likewise registered and allowed to do business in the Philippines. Forever 21 is a
well-known mark within the meaning of Section 123.1 of R.A. No. 8293 and of the
criteria under Rule 102 of the Trademark Regulations.
Sec. 123.1 of R.A. No. 8293 provides:

Section 123.1 A mark cannot be registered if it:


x
x
x
x
(f) Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with
the preceding paragraph, which is registered in the Philippines
with respect to goods or services which are not similar to those
with respect to which registration is applied for: PROVIDED,
That use of the 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;
x
x
x
x
(Emphasis supplied.)

Here, the two requisites are satisfied.


First, the use of the mark in relation to those goods or services would indicate
a connection between those goods and services, and the owner of the registered
mark. The products of the applicant are different kinds of batteries. On the other
hand, Forever 21, although mainly a clothing line, has already recently engaged in
selling "powerbanks" which may be characterized as a battery establishing a
connection. Although said venture by Forever 21 into the sale of battery-like
products is only for a limited season, it nevertheless proves that Forever 21 is
already capable of expanding its business in electronic products, which are
practically very remote from the products for which it is originally known. Second,
the interest of the owner of the registered mark, in this case Forever 21, would likely
to be damaged because of inability to expand business which in fact it had already
done ahead of time.
Using the dominancy test and the principle of idem sonan, as already
previously explained, the marks are confusingly similar.
6. "POREBER" is identical with the trademark "FOREVER," which is
also used on batteries and which, although not being a well-known mark,
is a registered trademark under the Madrid Protocol.
The Madrid Protocol or the Madrid System facilitates the international
registration of trademark by allowing a trademark owner to obtain trademark
protection in any or all member states by filing one application in one jurisdiction
with one set of fees, and make any changes (e.g. changes of name or address) and
renew registration across all applicable jurisdictions through a single administrative
process.
The Philippines is a party to the Madrid System. Hence, it is obligated to
recognize registrations made under the Madrid Protocol and extend thereto the
protection available under its laws.
TelForceOne S.A., an entity duly registered under the laws of Poland, is one of
the largest manufacturers and distributors of consumer electronics in Poland and
Central and Eastern Europe. Poland is a signatory and a member of the

abovementioned protocol. It obtained its membership on March 18, 1991. Hence, it


acquires protection against any form of imitation, unconsented reproduction and
use of its trademark. The trademark FOREVER which is used on batteries on
cellphones and laptops and other electronic devices enumerated below is a
registered mark under the Madrid System. Its date of registration is 07 July 2008,
and the expected date of rennewal thereof is 07 July 2018.

The trademark FOREVER as used on batteries produced by Forever Batteries, Inc.

A screen grab of the registration information of the FOREVER trademark of the


Polish Company TelForceOne showing the list of goods on which the same is used;
SOURCE: WIPO Website

Applying again the dominancy test and the principle of idem sonan,
"POREBER" is confusingly similar in sound with the "FOREVER" trademark of the
said Polish Company. The injury to be caused to the prior registrant is made more
apparent by the fact that the products on which both trademarks are used are
similar.
NOTE:

The applicant is given four (4) months in which to reply or amend its
application which shall then be re-examined.

2. Reply to the Examiners Report Denying Approval of the Application for


Registration of the Group Trademark

REPLY
We respectfully would like to ask your good office for a RE-EXAMINATION of
the application for registration of our trademark Meet Your Garden which was
denied for an alleged substantial defect under the law. The grounds for the reexamination sought are herein set forth.
Contrary to the principal basis of the denial of the application for registration
by the Examiner, Meteor Garden is NOT A REGISTERED TRADEMARK as per
records of the Intellectual Property Office. A diligent preliminary search in the IPO
Trademark Records through its online database would have confirmed this basic
fact.
If any, the IPO database on registered trademarks only reveals that Meteor
Garden has in fact been registered in 2003 for use on mixed snacks, but its
current trade status is already marked as withdrawn. (See image on the next
page.)
Hence, there is currently no existing registered Meteor Garden trademark
which can be the source of any better right against the trademark herein sought to
be registered.
Even assuming arguendo, as claimed by the examiner, that "Meteor Garden"
is a well-known mark, based on the provisions of R.A. No. 8293, it is still subject to
particular requisites in order that it be entitled to protection under our laws. Section
123.1 (f) of R.A. No. 8293 provides:
Section 123.1 A mark cannot be registered if it:
x
x
x
x
(f) Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with
the preceding paragraph, which is registered in the
Philippines with respect to goods or services which are
not similar to those with respect to which registration is
applied for: Provided, That use of the 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;
x
x
x
x
(Emphasis supplied.)

The goods involved in this case are DISSIMILAR and therefore requires that the
well-known mark be registered in the IPO before Section 123.1 (f) finds application.
While the Meteor Garden trademark is used on the electronic copies of the
popular Taiwanese TV drama series and all sorts of merchandise, accessories, and
other collectibles featuring the images related to the said drama series, the
applicants trademark Meet Your Garden on the other hand, is confined solely to
use on flowers, plants, seedlings, and gardening essentials. That the Meteor
Garden trademark is already being used on the same goods as those of the
applicant is yet to be proven.
From the foregoing, there is no need to argue on the rest of the issues raised in the
examiners report.

A screengrab of the withdrawn registration details of the trademark Meteor


Garden for use on mixed snacks.
SOURCE: IPO Trademark Online Search Database