REPUBLIC OF THE PHILIPPINES i oa COURT OF APPEALS QOFES -7 PH us t0 MANILA ROCKWELL LAND CORPORATION, - versus - PRIMARY STRUCTURES CORPORATION, Respondent. Seasocsaceante PETITION FOR REVIEW Petitioner ROCKWELL LAND CORPORATION (“Rockwell”), by counsel, respectfiully states: L NATURE OF THE PETITION 1. This is a Petition for Review under Rule 43 of the 1997 Rules of Civil Procedure (the “Rules of Civil Procedure”) to annul, reverse, and set aside the Decision of the agency a quo, the Director-General of the Intellectual Property Office (“IPO”), dated 19 December 2017," in Appeal No. 14-2014- 0023 (the “Assailed Decision”), entitled “Rockwell Land Corporation vs. Primary Structures Corporation”, which dismissed Petitioner’s Appeal Memorandum dated 21 May 2014. Rule 43 allows a person aggrieved by a decision of a quasi-judicial agency, such as the IPO, to appeal the said decision through a Petition for Review before the Court of Appeals, whether the appeal involves question of law, of fact, or both. 2. This appeal is also the proper remedy provided in the IPO’s Office Order No. 12, series of 2002, as amended by Office Order No. 12, series of 2009, otherwise known as the IPO’s “Uniform Rules of Appeal”. 1 A certified tue copy of the Director-General’s Decision dated 19 December 2017 is attached hereto as Annex “A” and made an integral part hereof.3. The IPO Director-General’s Assailed Decision incorrectly upheld the Bureau of Legal Affairs’ (the “BLA”) Decision dated 8 April 2014 (the “BLA’s Decision”)? in IPC No. 14-2013-00174, entitled “Primary Structures Corporation v. Rockwell Land Corporation, ” ruling in favor of the Respondent, and against the Petitioner. 3.1. The Assailed Decision upheld the decision of the BLA sustaining Respondent’s opposition to Petitioner Rockwell’s application for the registration of the mark “PRIMARIES” with the TPO. 4. The Appealed Decision is now being assailed on questions of law, which shall be hereafter discussed, for being contrary to existing laws and established jurisprudence, and rendered on a misapprehension of facts. As shall be shown below, the IPO Director-General should bave granted Rockwell's appeal and allowed the registration of the mark “PRIMARIES” in its favor. i. THE PARTIES 5. Petitioner ROCKWELL LAND CORPORATION (also referred to in this Petition as “Rockwel!”) is a corporation duly organized and existing under and by virtue of the laws of the Republic of the Philippines with principal address at 3rd floor, 8 Rockwell, Hidalgo Drive, Rockwell Center, Makati City. Petitioner may be served with notices, pleadings, orders, and other legal processes through undersigned counsel at the given address below. 6. Respondent PRIMARY STRUCTURES CORPORATION (also referred to in this Petition as “PSC”) is a corporation duly organized and existing under and by virtue of the laws of the Republic of the Philippines with principal address at PSC Building, 333 V. Rama Avenue, Cebu City. It may be served with notices, pleadings, orders, and other legal processes at said principal address and through its counsel of record Bagay-Villamor and Fabiosa at Unit 205, Business Center B, Oakridge Business Center, 880 AS. Fortuna Street, Mandaue City, Cebu. 2 A certified true copy of the BLAYs Decision dated 8 April 2014 is attached hereto as Annex “B”, 2STATEMENT OF MATERIAL DATES ae On 19 December 2017, the IPO Director General issued the Assailed Decision dismissing Petitioner’s appeal and upholding the Decision ofthe BLA dated 8 April 2014. 8. On 23 January 2018, Rockwell received a Notice of Decision with a copy of the Assailed Decision attached thereto, 9. Rockwell did not file a motion for reconsideration of the Assailed Decision with the IPO Director General, as the filing of the same is prohibited under the IPO’s Uniform Rules on Appeal.® 10. Under Section 3 Rule 43 of the Rules of Court and Section 9 of the Intellectual Property Office Uniform Rules on Appeal,’ Rockwell has fifteen (15) days from receipt of the decision, or until 7 February 2018, to file a Verified Petition for Review with the Court of Appeals. 11. Hence, this Petition for Review (“Petition”) is timely filed. qv. PAYMENT OF DOCKET AND OTHER LAWFUL FEES AND DEPOSIT FOR COSTS 12. Simultaneous with the filing of this Petition, Rockwell paid the necessary docket and other lawful fees, and deposit for costs. ve MATERIAL FACTS AND PROCEDURAL ANTECEDENTS 13. Rockwell is one of the premier real estate companies in the Philippines distinguished for its luxury development projects. It started making a mark in the real estate industry in 1995 when it developed an unused thermal power plant into a prime real estate consisting of a thriving self- sustained community, now known as “Rockwell Center”. Rockwell is also responsible for the development of other high-end commercial and residential 3 See Section 9 thereof. ‘ IPO Office Order No. 12, Series of 2002, as amended. 3real estate such as, “The Grove” in Pasig, “The Proscenium” in Makati, and “The Arton” in Quezon City, among others. 14, In the last quarter of 2012, Rockwell decided to venture into the more affordable sector in real estate development by setting up a subsidiary called Primaries Development Corporation. 15. On 12 October 2012, Rockwell filed for its subsidiary an application for the registration of the mark “PRIMARIES” with the IPO under Class 35, for use on sales and marketing condominium and town house projects, and Class 37, for construction and development of condominium and town house projects. The application was assigned as Application No. 4-2012- 14880. 16. Rockwell’s Application No. 4-2012-14880 was allowed — without citing the PSC’s mark in the office action ~, and published in the IPOPHL eGazette for purposes of opposition on April 15, 2013.6 17. Rockwell has been using the “PRIMARIES” since June 2013 in its real estate business. “PRIMARIES” is used and marketed with the word “Rockwell” in order to identify and associate it with the Rockwell group. 18. Rockwell maintains a website at www.rockwellprimaries.com.ph’ where the “PRIMARIES” mark is used. 19. Rockwell maintains an office for its subsidiary Primaries Development Corporation’ at the 3% Floor, 8 Rockwell, Hidalgo Drive, Rockwell Center, Makati City. 20. Rockwell has advertised the “PRIMARIES” mark in various media of general circulation on various dates. 21, Rockwell’s “PRIMARIES” was the subject of a news article in the business section of the Inquirer on 30 May 2013.1" ‘A-copy of trademark Application No. 4-2012-14880 is attached as Annex “C”. © Copies of the Notice of Allowance and the eGazette publication are attached as Annexes “D” and D-1” respectively. ‘of the Verified Answer attached and the Affidavit of Atty. Paolo E, Abarquez ai ‘See Annes (Annex “E” hereo, - ‘Now known as Rockwell Primaries Development Corporation. ® See Annaxes “3” and “B-1” ofthe Verified Answer and the Affidavit of Aty, Paolo E, Abarquez (Annex “E” hereof). © See Annex “C” of the Verified Answer and the Affidavit of Atty, Paolo E, Abarquez (Annex “E” hereo). 422. Respondent PSC filed a Verified Opposition dated 24 April 2013"! to Rockwell’s trademark application for the mark “PRIMARIES” on the ground that it is allegedly confusingly similar to PSC’s “PRIMARY” trademark. 23. On 27 May 2013, Rockwell received a Notice to Answer dated 21 May 2013"? from the IPO requiring it to file a Verified Answer to PSC’s Verified Opposition within thirty (30) days from receipt of the Notice. 24, On 26 June 2013, Rockwell filed its Verified Answer! on even date. 25. On 7 February 2014, Rockwell received a Notice of Preliminary Conference! from the BLA informing the parties about the Preliminary Conference scheduled on 11 March 2014. 26. During the Preliminary Conference, Rockwell and PSC were then required by the BLA to file their respective Position Papers. 27. Rockwell filed its Position Paper on 21 March 2014,'* while PSC filed its Position Paper on 21 March 2014.'6 28. On 21 April 2014, Rockwell received the BLA’s Decision No. 2014-102 dated 8 April 2014” ruling in favor of PSC. 29. According to the Decision of the BLA, Rockwell's “PRIMARIES” mark is “practically” identical with PSC’s “PRIMARY” trademark, and that public interest requires that marks resembling each other, which are used for the same or closely related goods, should not be allowed to co-exist. fied true copy of the Verified Opposition dated 24 April 2013 is attached as Annex “F*. fied true copy of the Notice to Answer is attached as Annex “G”, 8 ‘A cenlfied true copy of Rockwell's Verified Answer is attached as Annex “E”, % A certified te copy ofthe Notice of Preliminary Conference is attached here as Annex “H”. ‘A certified true copy of Rockwell’s Position Paper is attached as Annex “I”. % ‘A certified true copy of PSC’s Position Paper is attached as Annex “J”. Annex “B” hereof. 530. The dispositive portion of the Decision of the IPO-BLA is reproduced below: “WHEREFORE, premises considered, the instant opposition is hereby SUSTAINED, Let the filewrapper of Trademark Application Serial No. 4- 2012-01480 be returned together with a copy of this Decision, to the Bureau of Trademark for information and appropriate action.” 31. Agerieved, on 21 May 2014, Rockwell filed its Appeal Memorandum on even date'® with the Office of the Director-General of the IPO. PSC filed its Comment on the Appeal Memorandum dated 18 June 2014. 32. On 9 October 2014, Rockwell received the Order dated 8 October 2014”° requiring the parties to submit their respective memoranda. 33. Rockwell filed its Appellant’s Memorandum”! on 24 October 2014, while PSC filed its Appellee’s Memorandum’ on 6 November 2014. 34. Unfortunately, on 19 December 2017, the IPO Office of the Director-General issued the Assailed Decision in favor of PSC. 34.1. The Decision of the IPO Office of the Director-General dated 19 December 2017 has already been attached here as Annex “A”. 35. Hence, Rockwell is submitting this Petition for Review to correct the erroneous decision of the IPO Director-General. A certified true copy of the Appeal Memorandum dated 21 May 2014 is attached as Annex “K”. % ‘A certified true copy of PSC’s Comment on the Appeal Memorandum is attached here as Annex oo, 2% A certified tre copy of the Order dated 8 October 2014 is atfached here as Annex “MI”. 2% {A certified true copy of Appellant's Memorandum dated 24 October 2014 is attached as Annex ay, A cenified true copy of Appellee’s Memorandum dated 6 November 2014 is attached as Annex for. 6VI. ISSUES A. WHETHER ROCKWELL’S “PRIMARIES” MARK IS A REGISTRABLE TRADEMARK UNDER REPUBLIC ACT NO 8293. (@) WHETHER THE COMPETING MARKS ARE IDENTICAL OR CONFUSINGLY SIMILAR. (ij) WHETHER PSC’S PRIMARY MARK IS INCAPABLE OF EXCLUSIVE APPROPRIATION. B. WHETHER EVIDENCE ON RECORD ESTABLISH PSC’S RIGHT TO BE PROTECTED UNDER THE LAW. Vil. ARGUMENTS IN SUPPORT OF THE PETITIO! 36. It is respectfully submitted that the IPO Director General’s Assailed Decision should be reversed and set aside because: A. The Honorable IPO Director-General’s ruling that Rockwell’s “PRIMARIES” is not a registrable mark was based on a misapplication of law and jurisprudence. i.) Applying the Dominancy and Holistic tests, the IPO Director-General erred in ruling that the competing matks are “practically identical” and confusingly similar.ii.) Rockwell’s PIMARIES mark and PSC’s PRIMARY mark cannot be considered confusingly similar due to the nature of the product involved, iii.) PSC’s PRIMARY mark consists solely of one generic word incapable of exclusive appropriation. B. ‘The Honorable IPO Director General’s finding that PSC’s “PRIMARY” mark is entitled to protection is not supported by the evidence on record. VIL. DISCUSSION A. The IPO Director-General committed grave misapplication of law and jurisprudence in ruling that Rockwell’s “PRIMARIES” mark is not registrable under Republie Act No. 8293, 37. Rockwell should be allowed to register “PRIMARIES” as its trademark. 38. Section 123.1 of Part III of Republic Act No. 82937 or the Intellectual Property Code of the Philippines states: Section 123. Registrability. - 123.1, A mark cannot be registered if it: (a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; ‘An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for other Purposes [INTELLECTUAL PROPERTY Cobe oF THE PraLappines] Republic Act No. 8293 (1997). 8(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof (c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow; (q) 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 Gi) Closely related goods or services, or ii) 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; (® 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 9interests of the owner of the registered mark are likely to be damaged by such use; (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify; (@ Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; (i) 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; (K) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (D) Consists of color alone, unless defined by a given form; or (m) Is contrary to public order or morality. 39. Rockwell’s PRIMARIES does not fall under any of the marks ‘that cannot be registered under the Intellectual Property Code. Thus, it is registrable. Applying the Dominancy and Holistic tests, the IPO Director-General erred in ruling that the competing marks are “practically identical” and. confusingly similar. 40. In the Assailed Decision, the IPO Director-General ruled:“At a glance, one can see the similarity of these marks which have identical first six (6) letters “P”, «R”, “I, “M", “A”,"R” and are pronounced similarly. Their similarity is very obvious that it gives the impression that both marks are owned by the same person and that one is just a variation of the other. As correctly pointed out by the Director: ‘The marks are practically identical. The Respondent- Applicant’s mark “PRIMARIES” is merely the plural form of the word “PRIMARY”. The consumers therefore may likely assume that the Respondent-Applicant’s mark is just a variation of or related to the Opposer’s and/or the goods or services originate from the same source. In this regard, confusion cannot be avoided by merely adding, removing or changing some letters of a registered mark. 41. With all due respect, the finding of the Honorable IPO Director- General in the Assailed Decision that the competing marks are “practically” identical or resembles each other as to likely cause confusion to the public is erroneous. 42. At the outset, that the marks are “practically” identical is not a ground under the Intellectual Property Code for refusing registration. Under Section 123. 1 (d)(iii) of the Intellectual Property Code, a mark cannot be registered if: 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; xxx 43. In this case, the competing marks are neither identical nor nearly resembles each other to likely deceive or cause confusion.44. The word identical in Section 123.1 (d) should be construed in its ordinary meaning. It is a basic statutory construction precept that words and phrases, in the absence of legislative intent to the contrary, should be given their plain, ordinary, and common meaning. Merriam Webster Dictionary defines the word identical as exactly same or exactly alike. On the other hand, the word identical is defined in Black’s Law Dictionary as exactly the same for all practical purposes.25 45. In this case, the competing marks are spelled differently. PSC’s mark has seven letters, whereas Rockwell’s mark has nine letters. It is noteworthy that the last three letters are different, which constitute thirty percent of the elements of the mark. Further, the appearance of the marks is different. Clearly, the competing marks are not exactly the same or alike. As such they cannot be considered as identical marks. 46. Moreover, contrary to the findings of the Honorable IPO Director-General, the competing marks are not likely to cause confusion. 47. In determining whether likelihood of confusion exists, two tests are being used: the dominancy test and the holistic test. In Diaz ». People, (Diaz?) the Supreme Court explained how the dominancy test and holistic test can be used to determine if the marks are identical as to cause likelihood of confusion: xxx There are two tests to determine likelihood of confusion, namely: the dominancy test, and the holistic test. The contrasting concept of these tests was explained in Societes Des Produits Nestle, S.A. y. Dy, Jr., thus: xxx The dominancy test focuses on the similarity of the main, prevalent or essential features of the competing trademarks that might cause confusion. Infringement takes place when the competing trademark contains the essential features of another. Imitation or an effort to imitate is unnecessary. The question is whether the use of the marks is likely to cause confusion or deceive purchasers. Retrieved at http:/vww.merriam-webster.comi/dictionary/identical, 2% Black's Law Dictionary (6 ed,, West, 1990), % —GRNo. 180677, 18 February 2013. 12The holistic test considers the entirety of the marks, including labels and packaging, in determining confusing similarity. The focus is not only on the predominant words but also on the other features appearing on the labels. (Emphasis supplied.) 48. The dominancy and holistic tests show that the competing marks are not confusingly similar. 49. Applying the dominancy test, which focuses on the similarity of the main, prevalent, or essential features of the competing trademarks that might cause confusion,2” the competing marks are not confusingly similar due to the following: 49.1. As mentioned above, the competing marks are spelled differently. PSC’s mark has seven letters, whereas Rockwell’s mark has nine letters. 49.2. PSC uses the word “PRIMARY?” in conjunction with other words (ie. Primary Structures Corporation, Primary Properties Corporation, Primary Homes, Primary Skills). While “PRIMARIES” is used with “Rockwell”, to associate it with the Rockwell Brand and identify it as a Rockwell subsidiary. 49.3. The word “PRIMARIES” can easily be distinguished and can be considered as a different word or expression altogether against the word “PRIMARY”. 50. Applying the holistic test, which considers the entirety of the marks including labels and packaging in determining confusing similarity, the competing marks are not confusingly similar due to the following: 50.1. PSC uses its mark in conjunction with other words, ie. “Primary Structures Corporation”. On the other hand, Rockwell’s “PRIMARIES” mark is used alone. Diaz v. People, Supra note 1 ‘See www.rockwellprimaties.com.ph.Rockwell's PIMARIES mark and PSC’s PRIMARY mark cannot be considered confusingly similar due to the nature of the product involved. 51. There is also no basis for the ruling of the IPO Director-General that Rockwell’s use of the mark “PRIMARIES” would lead to a likelihood of confusion to the general public as to the origin or the owner of the mark. 52. While Rockwell uses “PRIMARIES” as a stand-alone mark, it is currently being used and marketed with the word “Rockwell” and is clearly being identified and associated with the Rockwell group, negating any connection with the PSC mark or any origin or source from the PSC. Thus, Rockwell is clearly not associating itself or in any way suggesting to be connected with PSC, which uses its marks as PRIMARY STRUCTURES CORPORATION, | PRIMARY INDUSTRIAL _ PROPERTIES CORPORATION, PRIMARYHOMES, INC. (PHI), PRIMARYENERGY CORPORATION, PRIMARY STRUCTURES —_ EDUCATIONAL FOUNDATION, INC., and PRIMARY PROPERTIES CORPORATION. 53. Also, the competing marks cannot in any way deceive or cause confusion among real estate buyers who exercise the utmost caution when making such a large and substantial purchase of real estate developments. Thus, assuming for arguments sake that the marks are similar, the element of deception or likelihood of confusion required under Section 123(d) (ii) cannot result even with the supposed similarity of the competing marks. 54, The Director-General erroneously applied in this case the case of McDonalds Corporation v. Big Mak Burger, Inc. (“McDonald’s Case”)? because the circumstances therein are totally different from the facts of this case. The McDonald’s case involves the marks Big Mac and Big Mak. Both marks are used on the same goods, i.e. hamburger sandwiches. In the said case, an average person who is hungry may easily be confused or deceived into thinking that the Big Mak hamburger sandwich he bought is a food- product of McDonalds. The Rockwell “PRIMARIES” and PSC’s “PRIMARY” marks are used in real estate business where it is known that real estate brokers pay a lot of attention to the developers of the property to be sold and which involve substantial amounts of money. Unlike the McDonald’s case, the product involved in this case is not a low-priced common commodity but real properties costing millions of pesos. Buyers of real estate study the properties thoroughly and for a considerable amount of GAR, 143993, 18 August 2004, 14time before actually making any purchase. This alone should bar any possible likelihood of confusion. Clearly, the McDonald’s case is inapplicable here. 55. On the other hand, the Supreme Court, in a long line of cases, has ruled that there is no confusion of competing marks where the goods involved require the circumspection and contemplation of the buyer when purchasing these goods. 56. In Emerald Garment Manufacturing Corporation vs. Court of Appeals (“Emerald”), which was reiterated in Diaz," the Supreme Court explained that buyers are generally cautious when it comes to goods that are expensive, hence, it ruled that competing marks used in jeans cannot be confusingly similar to the discerning purchaser given that jeans are not inexpensive. Thus: Applying the foregoing tenets to the present controversy and taking into account the factual circumstances of this case, we considered the trademarks involved as a whole and rule that petitioner’s “STYLISTIC MR. LEE” is not confusingly similar to private respondent’s “LEE” trademark. Petitioner's trademark is the whole “STYLISTIC MR. LEE.” Although on its label the word “LEE” is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in. First, the products involved in the case at bar are, in the main, various kinds of jeans. These are not your ordinary household items like catsup, soy ‘sauce or soap which are of minimal cost. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely. In Del Monte Corporation v. Court of Appeals, we noted that: 37 G.R.No, 100098, 29 December 1995, Supra,xxx Among these, what essentially determines the attitudes of the purchaser, specifically his inclination to be cautious, is the cost of the goods. To be sure, a person who buys a box of candies will not exercise as much care as one who buys an expensive watch. As a general rule, an ordinary buyer does not exercise as much prudence in buying an article for which he pays a few centavos as he does in purchasing a more valuable thing. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care xxx (Emphasis supplied.) Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted. Finally, in line with the foregoing discussions, more credit should be given to the “ordinary purchaser.” Cast in this particular controversy, the ordinary purchaser is not the “completely unwary consume:” but is the “ordinarily intelligent buyer” considering the type of product involved. (Emphasis supplied.) 57. With all due respect, if the Supreme Court found that there can be no confusion among buyers of jeans, which were already deemed expensive, how much more in this case where real estate properties that cost millions of pesos are involved. 58. Like purchasers of medicine, real estate buyers are very cautious. Thus, the Supreme Court’s ruling in Etepha vs. Director of Patents,” is very instructive in this case: 8% G.R.No. L-20635, 31 March 1966.In the solution of a trademark infringement problem, regard too should be given to the class of persons who buy the particular product and the circumstances ordinarily attendant to its acquisition. The medicinal preparation clothed with the trademarks in question, are unlike articles of everyday use such as candies, ice cream, milk, soft drinks and the like which may be freely obtained by anyone, anytime, anywhere. Petitioner and respondent’s products are to be dispensed upon. medical prescription. The respective labels say so. An intending buyer must have to go first to a licensed doctor of medicine; he receives instructions as to what to purchase; he reads the doctor’s prescription; he knows what he is to buy. He is not of the incautious, unwary, unobservant or unsuspecting type; he examines the product sold to him; he checks to find out whether it conforms to the medical prescription. The common trade channel is the pharmacy or the drugstore. Similarly, the pharmacist or druggist verifies the medicine sold. The margin of error in the acquisition of one for the other is quite remote, (Emphasis supplied.) 59. In fact, a real estate buyer is not unsuspecting or unobservant ~ he conducts his own due diligence before purchasing real property. This would normally involve a background check on the seller as well as on the land titles of the property. On occasion, a purchaser would even involve a real estate broker who will provide the buyer with all the specifics and details he will need to buy the property. 60. The Supreme Court has consistently ruled that the likelihood of deception in the case of valuable and expensive articles is remote due to the fact that the same are purchased only after a thorough, deliberate, comparative and analytical investigation? Unlike buyers of low-priced commodities who do not exercise the same degree of caution and care, real estate purchasers belong to a different class of buyers whose purchasing decisions are generally well-informed. 61. Clearly, competing marks cannot in any way deceive or cause confusion amongst real estate buyers who exercise the utmost caution when making their purchases. Li Hoa v. Director of Patents (1956] 100 Phil. 215, 217; Del Monte Corporation v. Court of Appeals [1995] 181 SCRA 410, 419. 762. Hence, the ruling of the IPO Director-General is contrary to established jurisprudence because the competing marks cannot be considered confusingly similar because the nature of the products in this case eliminates the chances of customers confusing the competing marks. iii. -PSC’s. PRIMARY mark consists solely of one generic word incapable of exclusive appropriation. 63. With all due respect, the IPO Director-General erred in ruling that Rockwell’s PRIMARIES mark is not registrable pursuant to the protection afforded to registered trademark owners. 64. PSC’s status as prior registrant of the PRIMARY mark does not preclude Rockwell from registering and using PRIMARIES as its trademark. 65. PSC does not enjoy status as first registrant as against Rockwell’s PRIMARIES mark, because these two (2) competing marks may co-exist peacefully. 66. The word “PRIMARY” is not a peculiar word. “Primary” is in fact a common word, which signifies being “first or highest in rank or importance; chief principal.” Such common word, while in this case is technically not descriptive or generic of the covered goods and services, is nevertheless incapable of exclusive appropriation by any one entity. The only exception to this rule is if the prior registrant has already acquired a secondary meaning™ with respect to the mark covering his goods and services. In Lyceum of the Philippines, Inc. v. Court of Appeals, the Supreme Court explained: The doctrine of secondary meaning was elaborated in the following terms: ‘xxx a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the M ‘Tanduay Distillers, Ine. v. Ginebra San Miguel, Inc, G.R.No. 16432, 14 August 2009, 3% G.R.No. 101897, 5 March 1993. 18purchasing public, the word or phrase has come to mean that the article was his product.” 67. In this case, there is absolutely no evidence on record that PSC’s mark has acquired a secondary meaning that would allow it to appropriate the term “PRIMARY” to the exclusion of all others. There is no evidence that PSC has been using the PRIMARY mark for a long period and to the exclusion of others. Thus, there is no legal basis from precluding Rockwell from registering the mark “PRIMARIES”. 68. “PRIMARIES” on the other hand, is strictly speaking not a common word; it is a fanciful and novel word, in the context of real estate development that should be subject of appropriation. The word PRIMARY is common word listed in the Merriam-Webster dictionary as an adjective.*° It is not listed as a noun, There is no question that adjective words do not have a singular or plural form. Therefore, “PRIMARIES” cannot correctly be deemed as the plural form of the adjective word “PRIMARY”. 69. Rockwell’s “PRIMARIES” mark was coined by Rockwell by dropping the letter Y in “PRIMARY” and adding the letters “IES” as replacement. Rockwell coined the mark “PRIMARIES” to refer to its real estate development product. The word “PRIMARIES” is not a common word. B. The Honorable IPO Director General’s finding that PSC’s “PRIMARY” mark is entitled protection is not supported by evidence on record. PSC failed to show proof of actual use of their mark, 70. Assuming for argument’s sake that the competing marks are confusingly similar, the IPO Director-General still erred in raling that PSC is entitled to the protection of its “PRIMARY” mark. 71, Trademark is a creation of use, and, therefore, actual use is a prerequisite to exclusive ownership; registration is only an administrative confirmation of the existence of the right of ownership of the mark, but this does not perfect such right; actual use thereof is the perfecting ingredient.” In 3% Retrieved at http://www merriam-webster.com/dictionary/primary. "Philip Morris, Inc. v. Fortune Tobacco Company, G.R. No. 158589, 27 Jone 2006. 19Berris Agricultural Co., Inc. v. Norvy Abyadang (“Berris”),* the Supreme Court ruled: A trademark, being a special property, is afforded protection by law. But for one to enjoy this legal protection, legal protection ownership of the trademark should rightly be established. The ownership of a trademark is acquired by its registration and its actual use by the manufacturer or distributor of the goods made available to the purchasing public. Section 122 of R.A. No. 8293 provides that the rights in a mark shall be acquired by means of its valid registration with the IPO. A certificate of registration of a mark, once issued, constitutes prima facie evidence of the validity of the registration, of the registrants ownership of the mark, and of the registrants exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. R.A. No. 8293, however, requires the applicant for registration or the registrant to file a declaration of actual use (DAU) of the mark, with evidence to that effect, within three (3) years from the filing of the application for registration; otherwise, the application shall be refused or the mark shall be removed from the register. 72. While we adopt the first-to-file system, protection of a registered trademark is still dependent on actual use. In fact, failure to use a mark or to cause it to be used within the Philippines is a ground for cancellation of a mark under Section 151.1(c) of the Intellectual Property Code. It is not enough that PSC’s trademark is registered. It must also prove actual commercial use of its trademark. Thus, the absence of proof of actual use by PSC presupposes that their trademarks are not in actual commercial use. 73. In Emerald, the Supreme Court held that proof of actual use must be clear, definite and free from inconsistencies, viz.: The Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration. There is no dispute that respondent GR.No, 183404, 13 October 2010. Emerald Garment Manufacturing Corporation ». Court of Appeats, Supra 20corporation was the first registrant, yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject mark; it did not present proof to invest it with exclusive, continuous adoption of the trademark which should consist among others, of considerable sales since its first use. xxx The evidence for the respondent must be clear, definite and free from inconsistencies. (Emphasis supplied). 74, In Berris, the Supreme Court discussed the kind of evidence required to establish actual use: Adoption of the mark alone does not suffice. One may make advertisements, issue circulars, distribute price lists on certain goods, but these alone will not inure to the claim of ownership of the mark until the ‘goods bearing the mark are sold to the public in the market. Accordingly, receipts, sales invoices, and testimonies of witnesses as customers, or orders of buyers, best prove the actual use of a mark in trade and commerce during a certain period of time. (Emphasis supplied.) 75. PSC has merely alleged that it has adopted and used its marks; but it never alleged the circumstances, much less, provided proof of such actual use. 76. PSC’s failure to provide the circumstance and proof of actual use of its trademark simply means that its “PRIMARY” mark has not been used in Philippine commerce. As such, PSC has no right to claim ownership over its mark, much less damage arising from infringement, or to prevent Rockwell from registering its “PRIMARIES” mark. 77. The records of the case are replete with proof of actual use that Rockwell has been: i) using the “PRIMARIES” mark since June 2013; ii) maintaining a website for “PRIMARIES” at www.primaries.com.ph®, iii) maintaining an office for its subsidiary Primaries Development Corporation along Estrella Street, Makati City with its mark placed on the roof of the building in order that it is visible to the public in general; and iv) promoting and advertising the “PRIMARIES” mark in various media of general “© See Annex “A” of Rockwell’s Verified Answer and the Affidavit of Atty. Paolo E. Abarquez, (Annex “E” hereof). 2.circulation on various dates*', and in the business section of the Inquirer on 30 May 2013. 78. In fact, between PSC’s mark, which has not been proven (by PSC, no less) to be in actual commercial use, and Rockwell’s “PRIMARIES”, which has been extensively used in commerce, it is the latter’s mark that deserves recognition and protection under our Trademark laws. PRAYER WHEREFORE, premises considered, it is respectfully prayed that this Honorable Court: (1) GRANT Petitioner Rockwell Land Corporation’s Petition for Review, and consequently REVERSE and SET ASIDE the Decision of the IPO Director-General dated 19 December 2017 for being erroneous; (2) DISMISS the Verified Opposition in the principal case before the Intellectual Property Office; (3) ORDER the Bureau of Trademarks to GRANT the Trademark Application No. 4-2012-014880 for “PRIMARIES” of Petitioner Rockwell Land Corporation. Other reliefs, just and equitable under the premises, are likewise prayed for. Pasig City for Manila City, 07 February 2018. “ ‘See Anner and “B-1” of Rockwell’s Verified Answer and the Affidavit of Atty. Paolo E. Abarguez (Annex “E™hereo). © See Annex “C" ofthe Verified Answer andthe Affidavit of Aty, Paolo B. Abarquez (Annex “E" hereof). 22PUNO AND PUNO Counsel for Petitioner Rockwell Land Corporation 12" Floor, East Tower Philippine Stock Exchange Centre Exchange Road, Ortigas Center, Pasig City, Philippines Telephone Nos. 631-1261 to 64 Fax No. 631-2517 By: ‘VINCENT PATRICK A. BAYHON: Roll of Attorneys No. 46310 PTR No. 3955511/1.23.2018/Pasig City IBP No. 020807/1.4.2018/ Makati MCLE Compliance No. V-0013254; 1.25.16 E-mail address: vpabayhon@punolaw.com JOSE A. LINSANGAN IIL Roll of Attorneys No. 55963 PTR No. 3955541/1.23.2018/Pasig City IBP No. 020823/1.4.2018/Quezon City MCLE Compliance No. V-0025016; 3.21.17 E-mail address: jalinsangan@punolaw.com REGINE, ‘SS P. MAGPANTAY Roll of Attorneys No. 64915 PTR No. 3955543/1.23.2018/Pasig City IBP No. 020825/1.4.2018/PPLM MCLE Compliance No. V-0020247;4.20.16 E-mail address: epmagpantay@punolaw.com 23 QUIASON MAKALINTAL BAROT TORRES IBARRA SISON & DAMASO Counsel for Petitioner Rockwell Land Corporation 21st Floor, Robinsons-Equitable Tower 4 ADB Avenue comer Poveda Street 1605 Ortigas Center, Pasig City Telephone: (632) 631-0981 Email: qmbti i By: JOEL L. ESPINUEVA ROLL OF ATTORNEYS NO. 35248 MCLE COMPLIANCE NO. V-0012238 from April 15, 2016 to April 14, 2019 PTR NO. 3897168; 1/10/2018 PASIG CITY IBP NO. 020847; 1/4/2018 PPLM ChapterCOPY FURNISHED: ROBINSDO RITA HEF tC, MAAS, Primary Structures Corporation (registered mail) Respondent rc (9) 094 22 PSC Building, 333 V. Rama Avenue ww v & f Bt Cebu City, Cebu feb. 0%, 251 Office of Bagay-Villamor and Fabiosa (registered mail) Counsel for Respondent Primary Structures Corporation peu. ay QSL }Q 985 22 Unit 205, Business Center B, Oakridge Business Center 880 A.S. Fortuna Street, Mandaue City Cebu INTELLECTUAL PROPERTY OFFICE (registered mail) ATIN: Office of the Director General oS ‘ATIN: Director of Bureau of Legal Affairs NUE RY 83413! 1 28 Upper McKinley Road McKinley Hill Town Center Fort Bonifacio, Taguig City EXPLANATION Pursuant to Section 11 of Rule 13 of the 1997 Rules of Civil Procedure, the service to the other parties of the foregoing pleading was resorted to by registered mail due to constraints of time, distance, and manpower. REGINI ‘SS P. MAGPANTAY 24VERIFICATION AND CERTIFICATION OF NON-FORUM SHOPPING I, MA. LOURDES L. PINEDA, of legal age, Filipino, with address at 5" Floor, 8 Rockwell, Hidalgo Drive, Rockwell Center, Makati City, after having been duly sworn to in accordance with law, do hereby depose and state that: ae I am the Senior Vice President of Rockwell Land Corporation (“Rockwell”), the Petitioner in this case; 2. I was authorized by the Board of Directors of Rockwell as shown by the Secretary’s Certificate dated 29 January 2016, a copy of which is attached hereto as Annex “A,” to cause the preparation and filing of the foregoing Petition for Review on its behalf, to execute the Verification and Certification against Forum Shopping, and to do all things as may be necessary or appropriate in connection with the preparation and filing of the Petition for Review; 3. Thave caused the preparation of, and read, the Petition for Review, the contents of which are true and correct based on personal knowledge and/or authentic records. 4. Rockwell has not commenced any action or proceeding involving the issues raised in the foregoing Petition for Review in any court tribunal or quasi- judicial agency, Regional Trial Court, or any branches thereof, Court of Appeals, ‘and Supreme Court, and, to the best of my knowledge, no such other action or claim. is pending in any of these tribunals/agencies, except for the following: a. “Primary Structures Corporation v. Rockwell Land Corporation” docketed as IPV No. 10-2013-00018 and pending before the Intellectual Property Office — Bureau of Legal Affairs. Rockwell Land Corporation and Primary Structures Corporation filed their respective Memoranda dated 1 June 2015 and 25 May 2015, respectively. The case is pending resolution as of date. b. “Primary Structures Corporation v. Primaries Development Corporation” docketed as IPC No. 14-2014-00370 and pending before the Intellectual Property Office — Bureau of Legal Affairs. Primaries Development Corporation filed its Appeal Memorandum dated 22 January 2018 with the Intellectual Property Office — Office of the Director of the Bureau of Legal Affairs. et Should I hereafter learn that a similar action or proceeding has been filed or is pending, I undertake to report the fact to this Court within five (5) days from notice thereof, ee MA. LOI JES L. PINEDA.SUBSCRIBED AND SWORN to before me this 6 February 2018 by affiant, who exhibited to competent evidence of her identity in the form of her Passport No. C0287357, issued on 14 February 2014 at DFA NCR Central, who voluntarily signed the said instrument in my presence, and affirmed that all the contents thereof are true and correct. Doe. No. 1; Page No. 40 Book No. 1 : UR Sweet Series of 2018. MOLE Gomptence lo, .o0oves8 osteo Dive, oct Stn tat lyANNEX “ A. ” REPUBLIC OF THE PHILIPPINES) PASIG CITY )ss. SECRETARY’S CERTIFICATE 1, ESMERALDO C. AMISTAD, a duly elected and qualified Assistant Corporate Secretary of ROCKWELL LAND CORPORATION, a corporation duly organized and sxisting under and by virtue of the laws of the Republic of the Philippines (the ‘Corporation’ DO HEREBY CERTIFY, That: Jam farnitiar with the facts herein certified and duly authorized to certify the same; At the regular meeting of the Board of Directors of the Corporation duly held and convened on November 16, 2015, the following resolutions were approved, and the same have not been annulled, revoked and amended in any way whatsoever and the same are in full force and effect on the date hereof “RESOLVED, That the Board of Directors of ROCKWELL LAND CORPORATION (the “Corporation”), hereby names, constitutes and appoinis PUNO AND PUNO LAW OFRICES and any of its partners and associates, 10 be its true and leowfil attorneys-infact to represent the Corporation, and is hereby authorized to do and perform the following acts: 2, To institute/ clefend! intervene! participate! mediate/ arbitrate/ enter into a compromise or amicable settlement and/or represent the Corporation in any and all legal actions or proceedings, mediation, arbitration , whether civil, criminal, ‘special proceedings, labor, adiministrative or otherwise before any court, tribunal, agency, or office, domestic or international; b. To verify, certify, sign, and file or authorize the verification, certification, signing and filing by tts duly designated officers or employees andor cowisel of complaints/ answers/ petitions! other initiatory pleadings andlor responsive pleadings and other responsive pleadings or documents as may be necessary in the prosecution, defense, andlor termination of such legal actions or proceedings and/or pursuit of remedies before any court, tribunal, agency, or office, domestic or international; ©. To be present ai and aitend all hearings, proceedings, and/or pre-trial conferences, court-annexed mediation, judicial dispute resolution, or any other alternative modes of dispute resolution before the court or any tribunal or agency, on stich date or dates as may be agreed by the parties or directed by the court, tribunal or agency;d, £ h a o consider the possibility of an amicable settlement or of a submission to arbitration or alternative modes. of dispute resolution; Zo onter into a compromise or eanicable setttement under such terms and conditions as said attorney-in-fact may deem proper and beneftctal; To determine the necessity or desirability of amendments 10 the pleadings; To simplify the issues; To agree on the availaent of discovery procedures or referral of the issues to arbitrators; To consider the possibility of obtaining stipulations or admission of facts and of documents to avoid wmecessary proof. To limit the number of witnesses; To prosecute andlor defend on behalf of the Corporation any ‘appeals to higher tribunals, any other administrative, criminal and civil cases as may arise in relation to all the foregoing: To negotiate, enforce, levy and collect all fees, awards, damages, rentals and all other monetary amounts due to the Corporation in relation 10 the subject matter of the above To do and perform all acts ane things which may be requisite, necessary and proper, sign such quittances, pleadings, and documents necessary 10 carry out the above purposes, stipulations, agreements and/or compromise settlement that they may enter into for and on behalf of the Corporation, until the termination of the case. Such other matters as may aid in the prompt disposition of any actions; RESOLVED FURTHER, that NESTOR J. PADILLA, MIGUEL ERNESTO LOPEZ VALERIE JANE 1. SOLIVEN, Md. LOURDES L. PINEDA, and/or ELLEN V, ALMODIBL, the Corporation's President and Senior Vice Presidents, be authorized and empowered, as they are hereby ‘authorized and empowered, to cause, for and on behalf of the Corporation, the preparation and filing before any court, tribunal, and/or agency, of any Complaint/ Petition, and/or such other pleadings a ng ou of the cases described above, io sign the Verifications and Certifications of Now-ForunShopping in relation thereto, and to sign and execute stich other instruments, documents and certifications as may be necessary in connection thereto.” ‘The foregoing resolutions are in accordance with the records of the Corporation as of the dale hereof JAN 29 2016 IN WITNESS WHEREOF, [ hereunto affix mny signature this ‘day of January 2016 in Pasig City. ESMERALDO @ AMISTAD Assistant Conporghe Secretary 016 SUBSCRIBED AND SWORN to before ae AN 2 9,2 of January 2016 at Pasig City, affiant exhibiting to me his Competent Evidence of Identity (‘CEI”) and Community ‘Tax Certificate as follows: Name Details of CEE Issued at Assued on Esmeraldo C, Amistad SSS#03-8972691-1 ‘CTC#O0027561 Quezon City Jan, 28, 2016 Doc. No. 5 _; Page No. D5 Mena Book No. 3 LORRAINE N. DYCHL Series of 2016. atany PUBL oneness FORAND IY THE CITIES OF PASE, TAGUIG IDSA 389 "BND DVTHE RISUCIPSLEY Ce PREROS, METRO MASA oe once ie Prana, Wessel Passa ory Itoio, 744; Riza. QUUSTER: DrETIME Meee, ROLL NG, $5224) POOIRTNEDT HO. 169 (20152030) arbres Su eA ED, PARIS CITYREPUBLIC OF THE PHILIPPINES ) Pasig City )ss. FIDAVIT OF SERVICE, 1 sll as office messenger of PUNO AND PUNO LAW OFFICES with office address at the 12* Floor, East Tower, Philippine Stock Exchange Center, Exchange Road, Ortigas Center, Pasig City, after being duly sworn, depose and say: ‘That on 07 February 2018, I served a copy of the following pleading/paper. PETITION FOR REVIEW In “CA GR SP No. (Appeal No. 14-2014-0023) entitled Rockwell Land Corporation vs. Primary Structures Corporation before the COURT OF APPEALS”, pursuant to Sections 3, 4, 5 and 10, Rule 13 of the Rules of Court, as follows: By Personal Delivery to: ‘THE CLERK OF COURT COURT OF APPEALS MANILA CITY By Registered M: Primary Structures Corporation PSC Building, 333 V. Rama Avenue Cebu City, Cebu Office of Bagay-Villamor and Fabiosa Unit 205, Business Center B Oakridge Business Center 880 AS, Fortuna Street, Mandaue City Cebu INTELLECTUAL PROPERTY OFFICE ATIN: Office of the Director General ATTN: Director of Bureau of Legal Affairs 28 Upper McKinley Road McKinley Hill Town Center Fort Bonifacio, Taguig City City of Pasig City, 07 February 2018 By delivering personally a copy to the party or his/her attomey on as shown on this page. By leaving a copy in his/her office with hissher clerk or with a person having charge thereof on 2017, as shown onp. By depositing a copy on fOR.UR bin the post at hereio attached and indicated affer the name(s) of the addressee(s) with instructions to postmaster to return the mail to sender after ten (10) days if undelivered Affiant SUBSCRIBED AND SWORN to before me this 7” day of February 2018, affiant 3 exhibited to me his Social Security System No. 63+! Tes Page No. 7 Book No. 7 Series of 2018. Piel Foty tenants ‘a ees 2a refine cer ees oP Beato Saosin nissan \siapinon ores Saoannexs_A_> OFFICE OF THE DIRECTOR GENERAL TO ALL. WHOM THESE PRESENT SHALL COME: a THIS IS TO CERTIFY that the annexed document is a faithful reproduction of the notice of the “DECISION” of the Director General, dated 19 December.2017, on the case entitled ROCKWELL LAND CORPORATION vs. PRIMARY STRUCTURES CORPORATION, docketed as Appeal No. 14-2014- 0028 (IPC No. 14-2013-00174). i | : invetreruaL mower ofnce OF Tic Ler IN WITNESS WHEREOF, | have hereunto affixed my hand and the seal of the INTELLECTUAL PROPERTY OFFICE at Taguig City, Metro Manila, Philippines, today, 31 January 2018. ROBERT NEREO B. SAMSON Aitorney V Requested by FUND 8 FORO flay Receipt Ho Sota amount 5 ip s80.00 one 5 Selon ate @ wwsipophigovph gq Itallectuat roperty Cant tmal@ioorhitgouen #28 Upper McKinley Roe ee Mekialay Hil Town Conte ® Fort Borfeco, Taguig Cit ti +652-5599400 ‘eas Prappines eyfeisecruss roreare ee ie PALE OFFICE OF THE DIRECTOR GENERAL ROCKWELL LAND CORPORATION, Appellant, -versus- PRIMARY STRUCTURES CORP., Appellee. PUNO AND PUNO Counsel for Appellant 12" Floor, East Tower Philippine Stock Exchange Center Exchange Road, Ortigas Center, Pasig City QUAISON MAKALINTAL BAROT TORRES IBARRA & SISON Counsel for Appellant 21% Floor, Robinsons-Equitable Tower ADB Avenué comer Poveda Street Ortigas Center, Pasig City OFFICE OF BAGAY-VILLAMOR & FABIOSA Counsel for Appellee Unit 107, Building A, Oakridge Business Center A.S. Fortuna Street, Mandaue City, Cebu GREETINGS: APPEAL NO, 14-2014-0023 IPC No. 14-2013-00174 Opposition to: Application No. 4-2012-014880 Date Filed: 20 November 2012 Trademark: PRIMARIES NOTICE LENY B. RAZ Director, Bureau of Trademarks Intellectual Property Office Taguig City IPOPHL LIBRARY Documentation, Information and Technology Transfer Bureau Intellectual Property Office Taguig City NATHANIEL S. AREVALO Director, Bureau of Legal Affairs Intellectual Property Office Taguig City Please be informed that on 19 December 2017, the Oifice of the Director General issued a Decision on this case (copy attached). Taguig City, 03 January 2018, Very truly yours, ROBERT NEREO B. SAMSON Attorney V © mwaipeptitgoveh @ hnelectiel Property Center @ mate@lpopnitgoxon ~ #28 Upper © +622-2596300 si +592-s520400 ‘Mekiney Hit Townkecruas psoverty ‘Se vie rakes OFFICE OF THE DIRECTOR GENERAL ROCKWELL LAND CORPORATION, Appeal No. 14-2014-0028 Applicant-Appellant, IPC No, 14-2013-00174 -versus- Opposition to: : Application No, 4-2012-014880 PRIMARY STRUCTURES Date Filed: 20 November 2012 CORPORATION, Opposer-Appellos. Trademark: PRIMARIES eee neers DECISION ROCKWELL LAND CORPORATION ("Appetiant’) appeals the decision’ jesued by the Director of Buroau of Legal Affairs (‘Director’) sustaining the opposition to the registration of the mark "PRIMARIES". Records show that on 20 November 2012, the Appelant filed Trademark Application No. 4-2012-014880 for PRIMARIES for use on sales and marketing of Berominium and townhouse projects (Class 35) and construction and development or tondominium and townhouse projects (Class 37). The trademark application was published on 16 April 2018 in the Intellectual Property Office Electronics Gazette for poedemarks, consequently, PRIMARY STRUCTURES CORPORATION (“Appellee”) Tee "VERIFIED OPPOSITION” dated 24 April 2013 alleging that it will be damaged by the registration of PRIMARIES. ‘The Appellee claimed that PRIMARIES is confusingly silat to and almost exactly sounds the same as its registered “PRIMARY” marks and that ‘the Appellant's oxacily Sepplied to the same class of goods covered. by. te ‘Appellees mark TOIMIARY. “The Appellee maintained that PRIMARIES will dite the strength of its PRIMARY marks as unique indicators of the source of its services According to the ‘appellee, it has priority over the Appeliant because is Use and dates of registrations MePSRIMARY precede the date of fling of the Appellant's trademark application for PRIMARIES. The Appellant filed on 26 June 2013 a “VERIFIED ANSWER TO 1 OPPOSITION” claiming ‘that the Appellee failed to show actual use ‘of PRIMARY. On the other hand, the Appellant asserted that it has used PRIMARIES since dune 2013 re Grown by its website wwrw.primarias.com,ph and that it maintains an office foy its pa fsedanegoePEEre ESS Decision No, 2014-102 dated 08 April 2014, @ weipopniigoxeh —@IntectvalPropety wvok@pephtgowgn 120 Upper Netley etary Hi Town eee Fert Gonfaco, Tash i 6592-5859400 Sestmnmpphes eesubsidiary Primaries Development Corporation along Estrella Street, Makati City with its mark placed on the roof of the building which is visible to the public in general. The Appeliant alleged that it has advertised PRIMARIES in various media of circulation. The Appellant maintained that PRIMARIES is not a colorable imitation of PRIMARY and that the idem sonans rule per se is not the final test of similarity. The ‘Appellant contended that PRIMARY is neither fanciful nor arbitrary but is merely a {generig word. Tho Appellant averred that the very nature of the goods and services on real estate ensures that the type of purchasers who deal with the Appellant and Appellee will be very intelligent and cautious such that ‘the likelihood of deception will be small if not non-existent. According to the Appellant, there is no dilution of PRIMARY as this mark and PRIMARIES may co-exist peacefully. ‘Aiter the appropriate proceedings, the Director rendered the decision sustaining the opposition to the registration of PRIMARIES. The Director held that PRIMARY and PRIMARIES are practically identical and that consumers may likely assume that the Appellant's mark is just a variation of or related to the Appellee’s mark and that the goods or services originate from the same source. The Director ruled that public interest requires that two marks identical to or closely resembling each other and used on the same and closely related goods but utilized by different proprietors should not be allowed to ‘co-exist to prevent mistake, deception or fraud. The Appellant filed on 21 May 2014 an “APPEAL MEMORANDUM" contending that PRIMARY and PRIMARIES are not ‘practically” identical. The Appellant claims that applying the dominancy and holistic tests would show that these marks are not confusingly similar. The Appellant maintains that the marks are spelled differently and that its mark is used alone while the Appellee is using PRIMARY jn conjunction with other words like Primary Structures Corporation. ‘According to the Appellant, it has established its own and actually has better goodwill that it is incredulous that it will try to take advantage of the Appellee’s alleged goodwill, The Appellant argues thet the marks cannot in any way deceive or cause confusion among real estate buyers who exercise utmost caution when making theit purchases. The Appellant reiterates the claim that the Appellee failed to show proof of actual use of the mark, The Appellee filed a “COMMENT ON APPEAL MEMORANDUM” dated 18 June 2014 stating that the rejection of the Appellant's trademark application should be affirmed. The Appellee maintains that PRIMARIES is confusingly similar to and sounds almost exactly the same as PRIMARY and that PRIMARIES is applied to the same classes of services where PRIMARY is registered. The Appellee argues that it is absolutely untrue that there is no proof of its actual use of PRIMARY as it is using and is maintaining the registrations of this mark. On 27 June 2014, this case was referred to the IPOPHL Alternative Dispute Resolution (ADA) Services pursuant to Office Order No. 154, Series of 2010, Rules of Procedure for IPO Mediation Proceedings. Subsequently, on 23 September 2014, this Office received a copy of the "MEDIATOR’S REPORT’ stating the termination of the mediation proceedings because the parties refused to settle the case. ‘The issue in this appeal is whether the Director was correct in sustaining the opposition to the registration of PRIMARIES. ai primaries page 2 of 5Sec, 123.1 (d) of the IP Code provides that a mark cannot be registered if It: (@) Is identical with a registered mark belonging to a different proprietor or a ‘mark with an earlier filing or priority date, in respect of: () The same goods or services, or (i) Closely related goods ot services, or (i) {fit nearly resembles such a mark as to be likely to deceive or cause . contusion; In this regard, there is no dispute that the Appellee has trademark registrations for PRIMARY covering the class of services similar to those covered by PRIMARIES. The Appellant, however, maintains that PRIMARY and PRIMARIES are different and not confusingly similar. The relevant question to answer in this case is, therefore, whether PRIMARIES resembles PRIMARY as to be likely to deceive or cause confusion, Below are the illustrations of the marks of the Appellant and Appellee. PRIMARIES PRIMARY Appellant's mark Appellea’s mark ‘At a glance, one can see the similarity of these marks which have identical first six (6) letters "P", "R’, "I", "M", “A’, “R” and are pronounced similarly. Their similarity is very obvious that it gives the impression that both marks are owned by the same person and that one is just a variation of the other. As correctly pointed out by the Director: The marks are practically identical. The Respondent-Applicant’s mark “PRIMARIES” is merely the plural form of the word “PRIMARY”. The consumers therefore may likely assume that the Respondent-Applicant’s mark is just a variation of or related to the Opposer’s and/or the goods or services originate from the same source. In this regard, confusion cannot be avoided by merely adding, removing or changing some letters of a registered mark.” It is emphasized that 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? In this case, to allow the registration of the Appellant's mark would defeat the rationale for trademark registration. It is not farfetched that the relevant public would ? Decision No. 2014 dated 08 April 2014, page 3. > Pribhdas J. Mirpuri vs, Court of Appeals, G.R. No. 114508, 19 November 1999. primaries page 3 of 5associate these marks as originating from the same source or owned by the same person, In the case of McDonalds Corporation v. L.C. Big Mak Burger, Inc.‘, the Supreme Court of the Philippines discussed 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 inthe belief that he was purchasing the other." . . . The other is the confusion of business: \ "Here though the goods of the parties are different, the defendant's 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 come connection between the plaintiff and defendant which, in fact, does not exist. Thus, in this case, the Appellant's use of a confusingly similar mark would lead to a likelihood of confusion. The goods and the services rendered by the Appellant would be mistaken by the purchasing public as coming from the Appellee or vice versa. When the Appellee instituted the opposition proceedings against the registration of the Appellant's mark, the Appellant should have explained how it arrived in using its mark and that its use would not damage the interesis of the Appellee. The Appellant claims that PRIMARIES cannot in any way deceive or cause confusion among real estate buyers who exercise the utmost caution when making their purchases. Hence, according to the Appellant, the essence of trademark registration will not be violated by the registration of PRIMARIES. This Office finds this contention not meritorious. The determinative facior in ascertaining whether or not marks are confusingly similar to each other is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the party of the buying public.® As correctly pointed out by the Appeliee in its comment on the appeal: 46. The Appellee was incorporated and started doing business as | early as 1986. It has bullt considerable goodwill in its almost 30 years of being in the real estate business. When one heats the word “PRIMARY” in Telation to teal estate, it is the Appellee which comes to the consumers’ minds. ‘Thus, when the Appellant started using "PRIMARIES", consumers ‘are misled into thinking that the real estate projects bearing the word “PRIMARIES” emanate from the Appellee or that the "PRIMARIES" business is owned or is a subsidiary or sister corporation of the Appellee. 47. It must be pointed out that the test is only likelihood of contusion, and not actual confusion. Again, because of the Appellee's well-eamed reputation in the real. estate industry, consumers will likely confuse “PRIMARY” and “PRIMARIES” to be the same. Moreover, the scope of protection afforded to registered trademark owners is, not limited to protection from infringers with identical goods. The scope of protection “GAR. No. 143993, 18 August 2004. * Converse Rubber Corporation v. Universal Rubber Products, Inc. G.R. No. L-27906, 08 January 1987. COMMENT ON APPEAL- MEMORANDUM date 18 June 214, page 12. a primaries page 4 of 5extends to protection from infringers with related goods, and to market areas that are the normal expansion of business of the registered trademark owners.” In this case, the scope of protection given to the Appellee as the registered owner of PRIMARY extends to protection with the related goods and services of the Appellant that are within the normal expansion of business of the Appellee. Thus, in one case, the Supreme Court of the Philippines held that: : ‘Moder law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties, but extends to all cases in whch the use by @ junior appropriator of a trade mark of trade name is likely to Ioad to a confusion of source, as where prospective purchasers would be misled into thinking that the complaining party has Extended his business into the field (see 148 ALR 56 et seq; 52 Am Jur. 576) or is In any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his business (v. 148 ALR., 77, & ‘52m, Jur. 876, 877) ‘The Appellee is, thus, entitled to the protection of its registered marks for PRIMARY. The protection of trademarks is the law's recognition of the psychological funetion of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trademark is a merchandising short-cut which induces @ purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exp! ‘this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same -—- to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this Is attained, the trademark owner has, something of value. If another poaches upon the commercial magnetism of the symbol he has created, the ownef can obtain legal redress.° WHEREFORE, premises considered, the appeal is hereby DISMISSED. Let a copy of this Decision as well as the trademark application and records be furnished and retumed to the Director of the Bureau of Legal Affairs for appropriate action. Further, let also the Director of the Bureau of Trademarks and the library of the Documentation, information and Technology Transfer Bureau be furnished a copy of this decision for information, guidance, and records purposes. SO ORDERED. ‘TS DEC 2917 Teavia city JOSEPHINE R. SANTIAGO, LL. M. Director General 7 Societe Des Produits Nestle, S. A. v. Matin Dy, Jr, G.R. No. 172276, 09 August 2010. * Sta, Ana v. Malivat, G-R. No. L-23023, 31 August 1968. ® Societe Des Produits Nestle, S. A. v. Court of Appeals, G. R. No. 112012, 04 April 2001. primaries page 5 of 5INTELLECTUAL PROPERTY OFFICE GF THE PHEIPPRES OFFICE OF THE DIRECTOR GENERAL. TO ALL WHOM THESE PRESENT SHALL COME: THIS IS TO CERTIFY that the annexed document is a faithful reproduction of a copy of “DECISION NO. 2014-102", dated 08 April 2014, issued by the Bureau of Legal Affairs which forms part of the records of the case entitled ROCKWELL LAND CORPORATION vs. PRIMARY STRUCTURES CORPORATION, docketed as Appeal No. 14-2014-0023 (IPC No. 14-2013- 00174), IN WITNESS WHEREOF, | have hereunto affixed my hand and the seal of the INTELLECTUAL PROPERTY OFFICE at Taguig City, Metro Manila, Philippines, today, 31 January 2018. AV bm ROBERT NEREO B. SAMSON Attorney V Requested by: PUNO & PUNO offeatnecape ne. 248799 ‘rst ame Pip 7875.09 bate | Sohan zoe @ wenwoopnteoven @ otal rope Cntr ulQbophigorgh © #20Upper Netiniy Roe © meiopenniaoeh —ekieley Hl Town Center © 1632.2386300 Foc Bonitaco, Tau City 1h +622-5530400 1634 Patpones| IPG | PHL": | PRIMARY STRUCTURES CORPORATION, IPC No. 14-2013-00174 Opposer, Opposition to: | | Appin. Serial No. 4-2012-014880 Date Filed: 20 November 2012 -versus- ‘TM: “PRIMARIES” ROCKWELL LAND CORPORATION, Respondent Applicant. NOTICE OF DECISION OFFICE OF BAGAY-VILLAMORANDFABIOSA yyy = pyc ten ae BH Counsel for the Opposer salt Unit 107, Building A, Oakridge Business Centre glee b5 Serne Bete 380 AS. Fortuna Steet, Mandaue Gy Cebu | bap,PUNO & PUNO PUNO AND PUNO faa tied Counsel for the Respondent-Applicant 42" Floor, East Tower Philippine Stock Exchange Centre Exchange Road, Ortigas Center Pasig City TORRES IBARRA & SISON ‘Counsel for Respondent-Applicant 21° Floor, Robinsons-Equitable Tower 4 ADB Avenue conrer Poveda Tower 11608 Ortigas Center, Pasig City i | QUAISON MAKALINTAL BAROT GREETINGS: Please be informed that Decision No. 2014 - [82 dated April 08, 2014 (copy enclosed) was promulgated in the above entitled case. Taguig City, April 08, 2014. For the Director: \ eects, 2 Atty. EDWIN DANILO A, Director tlh Bureau of Legal Affairs Republic of the Philippines INTELLECTUAL PROPERTY OFFICE Intellectuel Property Genter, 28 Upper McKinley Road, McKinley Hil Town Center Fort Bonifacio, Taguig City 1834 Philippines “T; +632-2386300 ® F: +632-5530480 © wwwipophi.gov.phPRIMARY STRUCTURES CORPORATION, } IPCNo, 14-2013-00174 | ‘Opposer, } Opposition to: } -versus- } Appin. Serial No. 4-2012-014880 } Date Filed: 20 November 2012 } ROCKWELL LAND CORPORATION, }) TM: PRIMARIES Respondent-Applicant. — } x Decision No. 2014-_[O2, DECISION PRIMARY STRUCTURES CORPORATION ("Opposer")' filed an opposition to Trademark Application Serial No. 4-2012-014880. the application, filed by ROCKWELL LAND CORPORATION [""Respondent-Applicant")2, covers the mark "PRIMARIES" for use ‘on “construction and development of condominium and townhouse projects and sales ‘and marketing of condominium townhouse projects" under Classes 35 and 37 of the Intemational Classification of Goods and Services? The Opposer anchors its opposition on the ground that the Respondent Applicant's trademark application for the mark "PRIMARIES" is confusingly similar with Opposer's mark "PRIMARY" hence registration is proscribed under Section 123.1 poragraph (d) of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code") which provides: (d) is identical with a registered mark belonging to a different proprietor or a mark with an eater fling or priority date in respect of: (i) the same goods or services, or: (i) closely related goods or services, or; (ii) if it nearly resembles such a mark as to be likely 10 deceive or cause confusion; To support its opposition, Opposer submitted in evidence the following: 1 Exhibit “A' - Trademark Certificate of Reg. No. 4-2008-014150 for the "PRIMARY" mark for Class 35 for ‘real estate marketing services namely " A corporation organized and existing under the laws of the Philippines with address at the PSC Building, 333 V. Rama Avenue, Cebu City 24 corporation organized and existing under the laws of the Philippines with principal address at Rockwell Center, Makati City. "The Nice Classification is a classification of goods and services for the purpose of registering trademark. and services marks, based on the multilateral treaty administered by the World Intellectual Property Organization, The treaty is called the Nice Agreement Conceming the International Classification of Goods and Services for the Purpose of the Registration of Marks concluded in 1957. Republic of the Philippines INTELLECTUAL PROPERTY OFFICE Intellectual Property Genter, 28 Upper McKinley Road, McKinley Hill Town Center Fort Bonifacio, Taguig City 1634 Philippines “T, #682-2386300 © F: +632-5539480 ® waww.ipophilgovphonline services featuring the promotion of residential soles real estate management, real estate advertising services": 2. Exhibit "8" ~ Trademark Cerlificate of Reg. No. 4-2008-014151 for the "PRIMARY" mark for Class 36 for “leasing of recl estate, financing real estate development projects, real estate development consulting, real estate management"; 3, Exhibit “C"" ~ Trademark Cerificate of Reg. No. 42008-014152 for the “PRIMARY” mark for Class 37 for “plumbing ond other ulilty services namely carpentry, drywall, painting, electrical, building and framing contractor services, repair and’ ‘installation. particularly heating, cooling nd environmental control systems"; 4 Exhibit "D" ~ Trademark Certificate of Reg. No. 4-2008-014153 for the "PRIMARY" mark for Class 42 for “architectural and engineering services, engineering services for building and property condition assessment, facility management, repair and restoration, building insirumentation and moritoring, structural engineering design services, graphic ilustration and drawing services to commercial, industrial building designs to cad rawings preparation of residential building and factory designs services": ond 5. Exhibit “E" - Trademark Cerificate of Reg. No. 4-2009-006709 for the "PRIMARY" mark for Class 41 for “educational services namely, training, developing and conducting workouts, workshops, presentation and on- line training in the field of architectural and engineering services. The Respondent-Applicant filed ils Verified Answer on 26 June 2013, wherein it admitted some of the allegations of the opposition but denied all the material allegations thereof. According fo the Respondent-Applicant, its trademark "PRIMARIES" Is not a colorable imitation or confusingly similar to the Opposer's "PRIMARY". In support of ifs trademark application, Respondent-Applicant submitted in evidence the following: 1 Annex "A" — ihe main page of "PRIMARIES" website at + tho: Awww.orimaries.com.ph; and 2. Annex "B-1" ~ Primaries advertisement. Should the Respondent-Applicant trademark application be allowed? Itis emphasized that the essence of trademark registration is fo give protection to the owner of the frademarks. The function of a trademark is to point out distinctly the ‘origin or ownership of the goods to which It is affixed; to secure fo him, who has been instrumental in bringing info the market a superior article of merchandise, the fruit of his, industry and skil; to assure the public that they are procuring the genuine article: to prevent fraud and imposition; and to protect the manufacturer against subslituion and sole of an inferior and different article as his products. Thus, Sec. 123.1 (a) R.A. No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code"), provides that a mark cannot be registered ifit is identical with @ registered mark belonging to a different proprietor or a mark with an earlier filing oF “ Pribhdas J. Mirpuri v. Court of Appeals, G.R, No. 114509, 19 November 1999. Apriority date in respect of the same goods or services or closely related goods or services, orifit nearly resembles such a mark as fo be likely to deceive or cause contusion. Records show that at the time the Respondent-Appicant filed its trademark application on 20 November 2012, the Opposer has the following existing trademark registrations for the mark "PRIMARY". 1, Reg. No. 4-2008-014150, date of registration 04 May 2009 under Class 35; 2. Reg. No. 4-2008-014151, date of registration 04 May 2009 under Class 36; 3. Reg, No, 4-2008-014152, date of registration 0? October 2009 under Class 37; 4. Reg. No, 4-2008-014153, date of registration 04 May 2009 under Class 42; and 5. Reg. No, 4-2009-006709, date of registration 26 November 2009 under Class 41 The goods and services covered by the Opposer's trademark registration are similar and/or closely related to those indicated in the Respondent-Applicant’s trademark application The competing marks are reproduced below for comparison and scrutiny: PRIMARY PRIMARIES Opposer's Mark Respondent-Applicant's Mark The marks are practically identical. The Respondent-Applicant's mark “PRIMARIES” is merely the plural form of the word "PRIMARY". The consumers therefore may likely assume that the Respondent-Applicant's mark is just a variation of or related to the Opposer's and/or the goods or services originate from the same source. In this regard, contusion cannot be avoided by merely adding, removing or changing some letiers of @ registered mark. Confusing similarity exists when there is such a close or ingenuous imitation os to be calculated to deceive ordinary persons, or such resemblance to the original as 10 deceive ordinary purchaser as to cause him to purchase the one supposing it to be the others The field from which a person may select a trademark is practically unlimited. As in ol cases of colorable imitation, the unanswered riddle is why, of the millions of terms ‘and combination of letters are available, the Respondent-Applicant had come up with ‘a mark identical of so closely similar to another's mark if there was no intent to take advantage of the goodwill generated by the other marké, 5 Societe Des Produits Nestle, S.A. v. Court of Appeals, G.R. No. 112012, 4 April 2001, 356 SCRA 207, 217. © american Wire and Cable Co. v. Director of Patents et.al. SCRA 544 G.R, No. L-26557, 18 Feb. 1970,The public interest, therefore, requires that two marks, identical to or closely fesembling each other and used on the same and closely related goods, but utlized by different proprietors should not be allowed to co-exist. Confusion, mistake, deception jand even fraud should be prevented. a Accordingly, the Respondent-Applicant's trademark application is proscribed by [section 123.1 (d) of the IP Code, WHEREFORE, premises considered the instant opposition is hereby SUSTAINED. Let ihe fllewrapper of Trademark Application Serial No, 4-2012-014880 be retuned, together |with a copy of this Decision, to the Bureau of Iracemarks for information and appropriate jection. SO ORDERED. Toguig City, 08 April 2014, a apa Aity. NATHANIEL S, AREVALO Director V,siyeau of Legal Affatsannex«_C » IP PHL’ Infelectuel Property Centor, 28 Uppor McKinlay Rd. Mokiniey Hii Town Cente, Fort Bonfeci, Taguig City 1634, Philipines Tel. No. 288-8200 Website: hini/wweJoophi.gov.ph e-mel: mai@inaphil. nov oh Publication Date Api 15, 2013, \ Application No: | rzniai0yaee0 Disclaimer: | rion oats): ; Qlass 37: CONSTRUCTION AND DEVELOPMENT OF CONDOMINIUNT AND TOWNHOUSE PROJECTS _IR) PHL ® UREAU OP TRADEMARKS (nllacal Property Contar eo 8098 ernst money rsa age = Tan onan 1PO BOXNO. 16 7 DOCUIRENT NO, : ag QUIASON MAKALINTAL BAROT TORRES Coane: Mesa AND IBARRA, 21ST FLOOR, ROBINSONS - EQUITABLE TOWER, 4 ADB AVENUE COR. PEDRO. POVEDA ROAD, ORTIGAS CENTER, PASIG. CITY 4608, Metro Manila, Philippines ‘Application No: 4720121014860 Aplicant ROCKWELL LAND CORPORATION (PH Mak: PRIMARIES Dhisions ‘NED I Examiner: NORMA, BALMAS Notice of Allowance Please be informed thet the abovernentoned trademark application has been alowed and its publleaton in ‘he Offclal Gazette pursuant io Sec, 198.2 of Republe Act No, 8208 has been approved. je facitate the publication of the mark, the applicant is required to pay the publication fee tn the amount of Php 08.00. Failure to pay the foe within two (2) months from the mating date of this notice Wil wecol trike ‘abandonment ofthis application. ‘The epplicant may also pay the Issuance Fee and 2nd Publication Fee (for the Corticate of Regisvation) In the amount of Php 1.68.00. Paying the issuance Fee and 2nd Publealion Fee together with the Publlaalon Poo will expedite the release of the Certificate of Registration f no opposition to the registation ofthe mark ls flea Within tity (20) days from publication ofthe mark in tho E-Gazet, Please nole that fan opposilon ja fied, the Issuance Fee will not be retunded. 7018 Please bring this nolice when making payment iq “This fs a oyster generated notice, No signature fs necessary. Document No: 2019/61687 one Bot IP PHL’ Intellectual Property Center, 28 Upper Mokinley Ra. Motcinley Hill Town Center, Fort Bonifacio, Taguig City 1634, Philippines Tel, No. 238-6200 Website: hiby/wnioophiLaoy.gh e-mail: mall@isopbil aov.ph Publication Date April 15, 2013 1 ALLOWED MARKS PUBLISHED FOR OPPOSITION. 11 ALLOWED NATIONAL MARKS.IP PHE Inieloctual Property Center,28 Upper McKinley Re. Mokinley Hi Town Contr, Fort Bonifacio, Tagulg Cy 1694: Phillprines Tel. No. 238-6300 Website: hile pophi.aov.on e-mail: mei@ipophiltov.oh Publication Date Api 15, 2013 SainTaseS arate | ~~ EPOGEN AMGEN TNG_[US] a aamraieiao | tartiaete | — “Tour NOVARTIS AST — azotaoia70~| aarvanig-|~——Tewix | Too Tense oe aamareianie| aiiaots | —Rive GAuGHE —| Wee aan AGAENG Sipotaotaais|-guriaoig- | —“eGtan ESTATES aiantoiaa10-|-Z1Do12-| CORAL SOOTWEAR” | —VOSTEN WEA Sippiao sais SH aoe SOAR ST HONORE FR azaraniser? | zoniaor | _arenrines | CAVRNE CABELLO 3 czoaroases | zariaote a FONDAWOTONCO-U7D. | a ‘aoiaass7 | aarciaoiz | acura | HONDAWOTORTO,TID| aos ay | a 204 | 4/2012/014638 | 29/11/2012 NSX HONDA MOTOR CO,, LTD. | cos | wnoratsse | aaron wwox FORERWEF ORC, a ane | azoraorasn | zoniaor2 ax FONDAWOFORTO. 110. a [tar [ azoroocasso | zaniaora | sizcxTaunen | YPARISONPESTONERY zorianra | GOMNoN Tinea” | NODRPAGIGAPTE LTO 2oriteors | ‘CLOZALOS NOVARTIS AG [CH] sigbtisra_|-suieo1e + —— SARL NOVARTIS.AS 6H — “apotabiasrs|-aariaois-|— Sena ROVARTIS AGI aparpiasre|-zarrvzois-|—croueneo NOVARTIS AO aporabiasrs_|-sartizols-| —— beonvun | —Novarne- aa cg Seto | —— Deans NOVARTIS AG Hh ievtabiis/[-aarriaeis-|—eenGns Nevannis As enh “anoiantesre aoa | — SoD NE NOVARTIS-AG [out Sipoorotarah-og"2018-| "Were SH YAN YAN SE eof taro01>- ("SOUND FRIEND —| satan vant ped — 7 HERSHEY CHOCOLATE & 219 | 4/2012/014770 ened nee CONFECTIONERY fn eer oe | reaee mess? | _contonanion val _| 220 | aorziotaraT oriiarera | wootcare | ABOTKAYATTIPINO, INC. i ROCKWELL CAND | 2a | waorowaso | tonanoe | prewar eer ALAS a2 | azaraneast | sonoeore | oma conaarAM ALAS 22 | wanraowane | roramore | OREENAND | gg ALASHAMIE. t REGEGSORES TADS E | SOTTO aronanvers | rarano | secue Soavencs spain. | 26 2 dyer mi meme | OE | hostase spain s aso | sens —— Tap ate eea CALL —a asa BROTiENS MENRGEMENT 22s | anotaosents | tanaavia TESS MANA ft 221 | saotanicees [renazow | acrecranor | WPTONTE GROUP 3IP PHL Intellectual Properly Contr, 28 Upper Meiney Re ‘Mekintey Hil Town Center, Fort Bonifacio, Taglig Cty 1894, Philipines Tel. No. 238-6900 Website: higyfvwnvipophllaov.oh malt mail@ipephi,aov.oh Pubiation Dale Api 15, 2013 Mark: Filing dat ‘Applicant(sy: 1 Glass 38: SALES AND MARKETING OF CONGORINTUM AND TOWNHOUSE PROJECTS” | | Goode Series: | cise a7; CONSTRUCTION AND DEVELOPMENT OF CONDOMINIUM AND TOWNHOUSE ROJECTSnwexs E> OFFICE OF THE DIRECTOR GENERAL TO ALL WHOM THESE PRESENT SHALL COME: THIS 1S TO CERTIFY that the annexed document is a faithful reproduction of the "VERIFIED ANSWER TO OPPOSITION" dated 26 June 2013, which forms part of the records of the case entitled ROCKWELL LAND CORPORATION vs. PRIMARY STRUCTURES CORPORATION, docketed as Appeal No. 14-2014-0023 (IPC No. 14-2013-00174) IN WITNESS WHEREOF, | have hereunto affixed my hand and the. seal of the INTELLECTUAL PROPERTY OFFICE at Taguig City, Metro Manila, Philippines, today, 31 January 2018. ROBERT NEREO B. SAMSON Attorney V Requests by: PUMO FUND ‘tal amaune op 7575.00, | Bae aoe @ eweenisoeh @ histone Comer wccinoonn © tiatnoa nck fod © melgechiowen ity To at 9 2 fecerince nic i e622-s520400 1634Philppines‘ Ne {Cees soy 3 Copin$ REPUBLIC OF THE PHILIPPINES 5 INTELLECTUAL PROPERTY OFFICE : Bureau of Legal Affairs Intellectual property Center i 28 Upper McKinley Road, McKinley Hill Town Center Fort Bonifacio t Taguig City a PRIMARY STRUCTURES CORPORATION, : Opposer, ae IPC No. 14-2013-00174 Opposition To: Appl. Ser. No. 4-2012-014880 ~versus- Date Filed: 20 Nov. 2012 a ROCKWELL LAND CORPORATION, Respondent-Applicant. X on 2Hi8 vinty VERIFIED ANSWER TO OPPOSITION Respondent-Applicant, ROCKWELL LAND CORPORATION Rockwell”), by undersigned counsel, respectfully submits this Verified Answer and states that: L ADMISSIONS AND DENIALS 1. Rockwell denies the allegations in Paragraph 1 of the Verified Notice of Opposition (“VNO”) as to the personal circumstances of the Opposer Primary Structures Corporation (“Opposer”) for lack of knowledge or information sufficient to form a belief as to the truth or falsity thereof. 2. Rockwell admits the allegations in Paragraph 2 of the VNO as to Rockwell's personal circumstances with a qualification that Rockwell's business address is at The Garage, Amapola comer Estrella Street, Maketi City, and that it may now be served with notices, pleadings, and other official processes through undersigned counsel at the address indicated below.3. Rockwell specifically denies the allegations in Paragraph 3 to 6 of the VNO for lack of knowledge or information sufficient to form a belief as to the truth or falsity thereof. 4. Subject to the defenses below, Rockwell specifically denies the allegations in Paragraph 7 to 16 of the VNO for being conclusions of fact and law and erroneous applications of the law. As will be explained in the affitmative defenses below, Rockwell’s mark: is not confusingly similar to the mark of Opposer. mL. AFFIRMATIVE DEFENSES 5. Rockwell re-pleads and incorporates the allegations in the foregoing paragraphs insofar as the same may be relevant to Rockwell's defenses. 6. In addition and by way of affirmative defenses, Rockwell respectfully avers that there can be no “confusing similarity” between the PRIMARIES mark sought to be registered by Rockwell and the PRIMARY mark of Opposer and/or “dilution,” based on the following grounds: A The Opposer failed to show proof of actual use of its PRIMARY mark. B ‘The idem sonans rule per se is not the final test of similarity. c. Rockwell's PRIMARIES mark is not a colorable imitation of Opposer’s PRIMARY mark and as such can stand on its own. D. Opposet’s PRIMARY mark is neither a fanciful nor arbitrary mark but is merely a generic word. BE. Despite being in the same class of goods/services, the very nature of the goods/services involved, ie. real estate, ensures that the type of purchasers who deal with the competing marks will be very intelligent and cautious such that the likelihood of deception will be negligible if not completely non-existent,F ‘There is no dilution of the Opposer’s PRIMARY mark as. the ‘two competing marks may co-exist peacefully. mL. DISCUSSION ‘The Opposer failed to show proof of actual use. 7. Apart from the bare allegations in paragraph 6 of the opposition of Opposer’s “adoption and [continued use in commerce up fo the present day] of its mark, there are no allegations of ultimate facts as required in the Rules of Court which has a suppletory application in the IPOPHL Rules and Regulations on Inter Partes Proceedings. 8. Although we adopt the first-to-file system, trademark registration of application is still based on actual commercial use. In fact, failure to use a mark or to cause it to be used within the Philippines is a ground for cancellation of a mark under Section 151.1(c) of the Intellectual Property Code. Thus, it is not enough that OPPOSER’s trademark is registered; OPPOSER must also prove actual commercial use of its trademark. The absence of proof in the Notice of Opposition presupposes that their trademarks are not in actual commercial use. 9. In the case Emerald Garment Manufacturing Corporation vs. Court of Appeals,’ the Supreme Court held that proof of actual use must be cleat, definite and free from inconsistencies, viz.: ‘The Trademark Law is very clear. It requires actual commercial use_of the mark prior to its registration. ‘There is no dispute that respondent corporation was the first registrant, yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject mark; it did not _present proof to invest it with exclusive, continuous adoption of the trademark which should consist among others, of considerable sales, since its first use. xxx The evidence for the respondent _must be clear, definite and free from s suppl 1951 SCRA 600, 624 (1995).10. Further, in Philip Morris, Inc. vs. Fortune Tabacco Corporation,’ the Supreme Court also said that registration does not convey exclusive ownership over a trademark, without actual use. Thus: ‘Most importantly, we stress that registration in the Philippines of trademarks does _not_ ipso facto_convey_an_absolute_right or ‘exclusive ‘ownership thereof. To borrow from Shangri-La e International Hotel Management, Lid v. Developers Group of Companies, Inc. trademark is creation of use and, therefore, actual use is a pre- requisite to exclusive ownership; registration is only an administrative confirmation of the | existence of the right of ownership of the mark, but i does not perfect such right; actual use thereof is - the perfecting ingredient. (Emphasis supplied.) - 11, _ In addition to all the foregoing arguments, there is no proof of actual use by Opposer of his mark. As such, it has no right to make a claim that it is the owner of its mark and eannot prevent Rockwell irom registering ‘its mark. 12. On the other hand, Rockwell has been using the PRIMARIES mark since June 2013, as shown by the following: 12.1. Rockwell maintains a website for “PRIMARIES” in 1 www primaries.com.ph.? 12.2, Rockwell also maintains an office for its subsidiary Primaries Development Corporation along Estrella Street, Makati City with its mark placed on the roof of the building in order that it is visible to public in general. 123. Rockwell has also advertised its PRIMARIES mark in various media of general circulation on various dates.* B. The idem sonans rule per se is not the final test of similarity. 13. The idem sonans rule, as the sole basis for determining the confusing similarity of competing marks, is no longer the final test of 2 493 SCRA 333, 354 (2006). i 3 A copy of the website printout is attached as Annex “A.” ; * Copies of print advertisements are attached as Annexes “B” and “B-1.” 4similarity. In determining whether goods are: confusingly similar, the dominancy test should be applied. 14, Confusing similarity is a matter of evidence and would normially entail proving the customer’s recollection of the product or the trademark. Consumer recall is achieved through advertising, promotion, sales, and the like. Since the Opposer failed to show proof of use of its trademark, no one car rightly say about the consumer recall of the Opposer’s trademarks or business, if any, and thus, it cannot be said that Rockwell's PRIMARIES will deceive the Opposer’s customers as to the origin of the ‘trademark or product. 15. In MeDonald’s Corporation vs. L.C. Big Mak Burger, Inc.‘ the same case cited by Opposer, the Supreme Court categorically stated that the tests to determine likelihood of confusion is the dominancy test. Thus: In_determining likelihood _of _confusion, jurisprudence has developed two_tests, the dominaney test and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks ‘that_might cause confusion, In contrast, the holistic test requires the court to consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. XXX XXX Xxk This Court, however, has_relied _on_the dominancy_test rather than the holistic test. The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar, Under the dominancy test, courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences. Courts will consider more the eural and visual impressions created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets and market segments, XXX XxX XXX 5 437 SCRA 10, 31-33 (2004)The Court reiterated the dominancy.test in Lim Hoa v. Director of Patents, Phil. Nut Industry, Inc, y, Standard Brands Inc. Converse Rubber Corporation v. Universal Rubber Products, Inc. and Asia Brewery, Inc. v, Court of Appeals. In the 2001 case of Societe Des Produits Nestlé, S.A. v. Court of Appeals, the Court explicitly rejected the holistic test... XXX XXX Xxx ‘The_test_of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines inffingement as the “colorable imitation of a registered mark x x x or a dominant feature thereof.” (Emphasis supplied.) 16. The dominancy test has also been applied by the Supreme Court recently in Societe Des Produits Nestle, S.A. vs. Dy,“ thus: In the light of the facts of the present case, the Court holds that the dominaney test is applicable. In recent cases with similar factual milieus, the Court has consistently applied the dominancy test... 17. Here, applying the dominaney test, the competing marks are not confusingly similar. An ordinary purchaser cannot conclude that these ‘marks are associated with each other. 18, First, the competing marks are spelled differently. Opposer’s mark has seven letters, whereas Rockwell’s mark has nine letters. 19. Second, Opposer uses its mark in conjunction with other words, ie. “Primary Structures Corporation”. On the other hand, Rockwell's PRIMARIES mark is used alone. 20. Third, despite the alleged similarity in the way the competing marks sound, purchasers of real estate are more intelligent. Hence, deception or likelihood of confusion cannot result even with the alleged similarity in sound, © 627 SCRA 223, 236 (2010).21. 22. the Supreme Court said: As early as the case of Etepha vs. Director of Patents,’ the Supreme Court has ruled that: In the solution of a trademerk infringement problem, regard too should be given to the class of persons who buy the particular produet and the_cireumstances ordinarily attendant to_its acquisition. The medicinal preparation clothed with the trademarks in question, are unlike articles of everyday use such as candies, ice cream, milk, soft drinks and the like which may be freely obtained by anyone, anytime, anywhere. Petitioner’s and respondent's products are to be dispensed upon medical prescription. The respective labels say so. An intending buyer must have to go first to a licensed doctor of medicine; he receives instructions as to what to purchase; he. reads the doctor's prescription; he knows what he is to buy. He is not of the incautious, unwary, unobservant or unsuspecting type; he examines the product sold to him; he checks to find out whether it conforms to the medical prescription. ‘The common trade channel is the pharmacy or the drugstore, Similarly, the pharmacist or druggist verifies the medicine sold. The margin of error in the acquisition of one for the other is quite remote. (Emphasis supplied). Similarly in American Cyanamid Co. vs. Director In this case of SULMET and SULMETINE, the product is for medicinal veterinary use and consequently, the purchaser will be more wary of the nature of the product he is buying. Contrary to the allegation of petitioner herein, the source Or manufacturer of the article will be a most important factor in the mind of the purchaser in selecting the article he will_buy, and a preparation manufactured by a well-known foreign company such as the ‘American Cyanamid Company, New York’, enjoys a decided advantage over one which is locally produced and manufactured by an unknown entity such as, ‘Henry's Laboratories” (Emphasis supplied). 7 16 SCRA 493, 501-502 (1966). °76 SCRA 568, 575-576 (1977). of Patents,®23, The prospective buyers of the real estate will be more disceming in their purchases considering that the transactions usually involve millions of pesos. The buyer in this case will surely conduct his due diligence before any purchase involving the marks and will not rely merely on the alleged similarly sounding marks in making his conclusion. The buyer will also necessarily conduct his inspection of the product and a background check of the company who built the condominium—thus, the likelihood of deceiving the purchaser is unlikely, if at all, remote. 23.1, Rockwell Land Corporation is a premiere real estate deyeloper of upscale residential projects in the high-end market. Roclowell created the PRIMARIES to cater to the middle class market, Rockwell’s PRIMARIES is marketed and promoted as the “affordable” version of Rockwell’s upscale, mater-planed, exclusive residential projects, and this is clear in the news report that came out in the May 30, 2013 issue of Inquirer (Business Section)”, 23.2. Clearly, the customers who are familiar with Rockwell’s projects, and even the newcomers, will not be deceived into believing or confuused that PRIMARY and PRIMARIES are the same or associated with one another. 24, Hence, the competing marks cannot be considered confusingly similar by the alleged similarity of sound alone or the idem sonans rule. C. — Rockwell’s PRIMARIES mark is not a colorable imitation of Opposer’s PRIMARY mark and as such can stand on its own. 25. As discussed, Rockwell’s PRIMARIES mark is not a colorable imitation of Opposer’s PRIMARY mark considering the physical differences between the competing marks, i., Rockwell’s mark contains nine letters as opposed to seven letters of Opposer’s mark, Rockwell's mark is not used in conjunction with other words, Rockwell’s mark is not paired with logos. 26. Rockwell's PRIMARIES mark is heavily used as a stand-alone ‘mark and operates to distinguish Rockwell’s upcoming mid-level residential property development from other residential property developers while Opposer’s PRIMARY mark is always used in conjunction with other words such as “STRUCTURES CORPORATION” in “PRIMARY STRUCTURES CORPORATION”. ? A copy of the news report is attached as Aimex “C.” 827. In Mighty Corporation vs. E & J Gallo Winery," the Supreme Court ruled: Whether a trademark causes confusion and is likely to deceive the public hinges on ‘colorable imitation’ which has been defined as ‘such similarity _in_form, content, words, sound meaning, special arrangement or general appearance of the trademark or trade name in their overall presentation or in their essential and_ substantive and di tive parts as would likely mislead _or confuse persons _jn the ordinary course of purchasing the genuine article’, (Emphasis supplied.) 28. Based on this definition, Rockwell’s mark cannst be considered a “colorable imitation” of Opposer’s mark. Rockwell's PRIMARIES is not in similar form as that of Opposer’s PRIMARY. A visual review of the marks as used by Rockwell and Opposer above also shows that the special arrangement or general appearance and overall presentation of the competing marks are totally different, such that there is no likelihood of confusion in the competing marks. 29. Hence, the claim of “colorable imitation” is unfounded. Rockwell’s PRIMARIES can therefore stand on its own. D. Opposer’s PRIMARY mark is neither a fanciful nor arbitrary mark but merely a generic word. 30. Opposer’s mark is neither a fanciful nor arbitrary mark-but a generic word that does not enjoy the degree of protection as fanciful or arbitrary marks. 31. Given that the word “PRIMARY” is generic, Opposer cannot claim to be its owner unless the doctrine of “secondary meaning” applies to it. In Lyceum of the Philippines, Inc. vs. Court of Appeals, 7? the Supreme Court defined “secondary meaning:” 1 434 SCRA 473, 506 (2004. "See Paragraph 19. 2919 SCRA 610, 617 (1993).‘The doctrine of secondary meaning originated in the field of trademark law. Its application has, however, been extended to corporate names since the right to use a corporate name to the exclusion of others is based upon the same principle which underlies the right to use a particular trademark or tradename. In Philippine Nut Industry, Inc. . Standard Brands, Inc. the doctrine of secondary meaning wes elaborated in the following terms: ‘a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been sed so long and so exclusively by one producer with reference to his article that, in that trade and to that_branch of the purchasing public, the word or phrase _has come to mean that the article was his product’, (Emphasis supplied). 32, The doctrine of “secondary meaning” cannot be applied to Opposer’s mark beoause it has not been used so long and so exclusively such that it has come to mean that any article bearing such word is Opposer’s. 33. Given that Opposer’s mark is a generic word, Opposer has no claim over it as in fanciful and arbitrary marks. gE Despite being in the same class of goods/services, the very nature of the goods/services involved, i.e, real estate, ensures that the type of purchasers who deal with the competing marks will be very intelligent and cautious such that the likelihood of deception will be sniall if not non-existent. 34, As preliminarily discussed above, the fact that the goods / services for which the competing marks will be used allegedly belong to the same class is not conclusive as to the likelihood of confusion between the two. 1035. Thus, in Emerald Garment Manufacturing Corporation vs. Court of Appeals,” the Supreme Court explained why there was no confusing similarity between two competing marks taking into account the profile of the potential customers: Petitioner's trademark is the whole “STYLISTIC MR. LEE.” Although on its label the word “LEE” is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in. First, the produets involved in the ease at bar are, in the main, various kinds of jeans. These are mot your ordinary household items like catsup, soy sauce or soap which are of minimal cost. Maong pants or jeans are not inexpensive, Accordingly, the casua} buyer is predisposed to ‘be more cautious and discriminating in_and would prefer_{o mull_over_his_purchase. ‘Confusion and deception, then, is less likely. In Del Monte Corporation v. Court of Appeals, we noted that: ‘...Among, these, what_essentially determines the attitudes of the purchaser, specifically __his inclination to be cautious, is the cost of the goods, To be sure, a person who buys a box of candies will not exercise as much care as one who buys an expensive watch, As a general rule, an ordinary buyer does not exercise as much prudence in buying an article for which he pays & few centavos as he does in purchasing a more valuable thing. Expensive and_valuable items are normally ought only _ after deliberate, comparative and _analvtical investigation, But mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are 3 Supra note 1. p. 616-617. nbought by the casual consumer without great care...” Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani, He_is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted. Finally, in line with the foregoing discussions, more credit should be given to the “ordinary purchaser.” Cast in this particular coitroversy, the ordinary purchaser is not the “completely unwary consumer” but_is_the “ordinarily intelligent_buyer” considering _the type _of product involved. ‘The definition laid down in Dy Buncio v. Tan Tiao Bok is better suited to the present case. There, the “ordinary pricchaser” was defined as one “accustomed to buy, and therefore to some extent familiar with, the goods in question. ‘The test of fraudulent simulation is to_be found in_the likelihood of the. deception of some persons in some measure acquainted with an established design and desirous _of purchasing _the associated, The test is not found in the deception, or the possibility of deception, of the person who knows nothing about the design which has been counterfeited, and who must be indifferent between that and the other. The simulation, in order to be objectionable, must_be such as appears likely to mislead _the _ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase. (Emphasis supplied.) ‘Under the premises, the likelihood of confusion in the competing marks of Opposer and Rockwell, will be negligible or non- existent since the potential buyers will be obviously intelligent, careful and ‘Additionally, given that real properties are more expensive than pair of jeans, it goes without saying that the above precedent should, all the more, apply herein, 237. Moreover, the fact that Opposer’s mark is used in Central and Southern Philippines as opposed to Rockwell's mark, which is used in Metro Manila, the dissimilarities between the marks are highlighted even more. 38. From the above, confusion of the competing marks,-cannot be claimed by the Opposer, considering that its customers will be discerning enough and not be deceived by the competing marks. There is no dilution of the Opposer’s PRIMARY mark as the two competing marks may co-exist peacefully. 39, ‘The competing marks may co-exist peacefully. Clearly, Opposer’s claim of dilution ofits mark is unfounded. 40... For trademark dilution to apply, the following elements should be present: (a) Trademark is sought to be prevented is famous & distinctive; (b) Use of another began after the owner's mark became famous; and (c) such subsequent use defames the owners. None of the above elements are existing in this case. 41. In Levi Strauss & Co. vs. Clifton Apparelle, Inc.,/“ the Supreme Court ruled that: Trademark dilution _is_the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of: (1) competition between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception, Subject to the principles of equity, the owner of a famous mark is entitled to en injunction “against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark.” This _is intended to _protect_famous_marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage it. Based on the foregoing, {o_be eligible for rotection from tion, there has_to_be a finding that: (1) the trademark sought to _be 4 470 SCRA236, 255-256 (2005).protected is famous and distinctive; (2) the use by respondent of “Paddocks and Design” began after the petitioners’ mark became famous; and (3) such subsequent use defames_ petitioners’ mark. Id the case at bar, petitioners have yet to establish whether “Dockers and Design” has acquired a strong degree of distinctiveness and whether the other two elements are present for their cause to fall within the ambit of the invoked protection. The Trends MBL Survey Report which petitioners presented in a bid to establish that there ‘was confusing similarity between two marks is not sufficient proof of any dilution that the trial court must enjoin. (Emphasis supplied.) 42. None of these elements for trademark dilution were alleged and established by Opposer. Thus, due to this alone, the argument of trademark dilution should be disregarded for being a mere erroneous conclusion of law. 43. Besides, Opposer’s mark, at present, cannot satisfy the elements of trademark dilution because Opposer’s mark is not famous and distinctive, and there is nothing to show that itis famous and distinctive. 44.” In addition, the concept of first registration does not apply here since the two marks are dissimilar physically and there can be no confusing similarity due to the reasons discussed. 45, Thus, the two competing marks may peacefully co-exist with each other. 46. With all the foregoing, the application for registration of Rockwell’s PRIMARIES mark should be allowed by this Honorable Office. RELIEF WHEREFORE, Respondent-Applicant Rockwell Land Corporation, respectfully prays that its application for the registration of the trademaric “PRIMARIES? under Application Serial No. 4-2012-014880, be ALLOWED. All other relief just or equitable under the premises, are also respectiully prayed for. Pasig City for Taguig City, 26 June 2013. “4PUNO AND PUNO QUIASON MAKALINTAL BAROT 12" Floor, East Tower TORRES IBARRA & SISON « Philippine Stock Exchange Centre 21st Floor, Robinsons-Equitable Tower t ‘Exchange Road, Ortigas Center, 4 ADB Avenue comer Poveda Street Pasig City, Philippines 1605 Ortigas Center, Pasig City ‘Telophone Nos. 631-1261 to 64 ‘Telephone: (632)631-0981 Fax No. 631-2517 Facsimile: By: By: ‘VINCHAT PATRICK A. BAYHON MesbinuEVA Roll of Attomeys No. 46310 Rol of Attorneys No. 35248 2 PTR No, 8412062,/01.04.13 Pasig City MCLE Compliance No.1V-0011681 IBP No. 913566 / 01.02.13 / Makati January 23,2013 MCLE Compliance No. I-0015188 PIRNo, 8411228; January 3,2013 0430.10 PASIGCITY TBPNo, 913908; January 2, 2013 PPLM Chapter FREDERICK R. TAMAYO Roll of Attorneys No. 46115 PTRNo, 8412065/ 01.04.13 /Pasig City CARAMARTHA/R. DE GUZMAN IBP No, 913568 / 01.02.13 / Bulacan Roll of Attonieys No. 58821 am, ines ans Cale si PAOLO E. ABAD Roll of Attorneys NY PTRNo. 8412076 / 01.04.13 PPdsig City DBP No. 913578 / 01.02.13 / Quezon City ‘MCLE Compliance No, TV-0011369// 01.10.13, Copy Furnished: Office of Bagay-Villamor and Fabiosa Counsel for Opposer Primary Structures ¢ ‘Unit 107, Building A, Oakridge Business 880 A.S, Fortuna Street, Mandaue City “ee Cebu RiGigimeee Pc ane Pri i } onraresgee 5% 10, Primary Structures Corporation weRinas 25 Opposer Posfbiics —p— PSC Building, 333 V. Rama Avenue Cebu City, CebuEXPLANATION ‘The service of the foregoing Verified Answer was served upon the Opposer and their counsel by registered miail due to the distance of their office and that of the undersigned counsel. This explanation is submitted in compliance with Section 11 of Rule 13 of the Revised Rules of Court. ule PAOLO E. AB: ZVERIFICATION and CERTIFICATION AGAINST NON-FORUM SHOPPING I, MA. LOURDES L. PINEDA, of legal age, Filipino, with office address at The Garage at Rockwell, Estrella Street, Makati City, after having been duly sworn to in accordance with law, do hereby depose and state that: 1. Tam the Senior Vice-President for New Business, and duly authorized representative of ROCKWELL LAND CORPORATION, as proved by the attached Secretary's Certificate. 2. _ [have caused the preparation and authorized the filing of the foregoing Verified Answer (to Primary Structures Corporation’s Verified Notice of Opposition), in my capacity as duly authorized representative of ROCKWELL LAND CORPORATION. 3. [have read the Verified Answer and the allegations therein are ‘rue and correct based on my own personal knowledge and/or on authentic records. 4, 1 certify that ROCKWELL LAND CORPORATION has not commenced any other action or proceeding involving the same parties and issues in the Supreme Court, Court of Appeals, or other divisions thereof, or any other tribunal or agency. 5. [certify that to the best of my knowledge, no such action or proceeding is pending before the Supreme Court, Court of Appeals, or other divisions théreof, or any other tribunal or agency, and that should I come to know of such other cases, I shall inform this Honorable Office within five (5) days therefrom. SUBSCRIBED AND SWORN to before me this 5a in Makati City, affiant exhibiting to me competent evidence of his identity in the form of her Passport No. XX4234341, valid until 27 July 2014. wl Doo. No. 2 ; mea A huts Page No. [i FOR AND In MAKATI UATIL DEC, 32, 2024 Book No.A#t; otc'on krvonneys Ho. 96148, PR No. 3674434/02-04.13/MAKAT ieeiaeis ian wo, a8028/01-03-23/L4 UNION Mele COMPLIANCE NO. N7-0007598REPUBLIC OF THE PHILIPPINES) CITY OF PASIG WSS. SECRETARY'S CERTIFICATE, 1, RODOLFO R, WAGA, JR,, of legal age, Filipino, the incumbent Assistant Corporate Secretary of Rockwell Land Corporation (the “Corporation”, a corporation duly organized and existing under Philippine lave, with address at The Garage, 1011 J.P. Rizal Street, Rockwell Center, Makati City, after having been sworn in accordance with law, do hereby certify that at the meeting of the Board of Directors of the Corporation held on May 29, 2013 at wich mecting a quorum wes present, the following resolutions ‘were adopted and approved: RESOLVED, That the Board of Directors of the Corporation ‘authorizes, as it hereby authorizes, PUNO AND PUNO LAW OFFICES and/or THE LAW FIRM OF QUIASON MAKALINTAL BAROT TORRES IBARRA & SISON (“QMBTI") or any of itsthoir lawyers, with address at 12" Floor, East Tower, Philippine Stock Exchange Center, Exchange Road, Ortiges Center, Pasig City, and 21/F Robinsons Equitable Tower, 4 ADB Ave. cor. Poveda Road, Ortigas Center, Pasig City, respectively, acting singly or jointly, to represent the Conporation in the case entitled Primary Structures Corporation vs. Rockwell Land Corporation, TPC No, 14-2013-00174 pending before the Intellectual Property Office, to act for and on bebalf of the Corporation, to appear, prepare andlor sign all pleadings or papers or documents tobe filed arising out of or in connection ‘with the case, and to do and perform the following: i. To represent the Corporation in the hearing, pre-trial and preliminary conferences, mediation hearings, arbitration and all other stages of the proceedings, and fi, To prosecute, defend, submit to alternative modes of dispute resolutions, make stipulations and admissions, accep! and approve compromise proposals, enter into amicable settlements, and. sign compromise agreements; RESOLVED FURTHER, that in connection with the above- ‘entitled case, the Corporation authorize, as it hereby authorizes, its President, Nestor J. Padilla, or Senior Vice President for New Business, Ma. Lourdes L. Pineda, or sueh other officer designated by the President or by the Senior Vice President for New Business in writing, to act for and in behalf of the Corporation and its directors or officers, to sign, execute and deliver any and. all documents, affidavits, pleadings, authorizations, and to perform such other legal acts necessary (0, or related to the above-entitled case, including, ‘appearing in court or quasi-judicial agencies, verifying allegations therein, executing affidavits or swor statements, giving testimonies, and executing, verifications and certifications against foram-shopping, and other similar acts required or necessary in connection with the judicial relief required by the Corporation. Po +IN WITNESS WHEREOF, | hereunto set my hand this 24" day of June 2013 in Pasig City. WAGA, JR. stant Corporate Secretary SUBSCRIBED AND SWORN to before me thJUN 2 5 201% Pasig City, affiant exhibiting to me his Community Tax Certificate No. 01720222 issued on January 14, 2015 at Pasig City with SSS#08-0546516-7 as his competent evidence of identity, i LIANNE M. BACORRO- enn Doc. No. ag 5 Sea nutri OFPRERom PENRO AA BenNe So Rec Book No. ter nov ego fat Clara rene rw Series of 2013. [ROLL NO, $5914) APPOINTMENT NO, 208 (2013-2014)[REPUBLIC OF THE PHILIPPINES) Pasig City 385. AreDaY 1, Colley PUK PITH, as the office messcoger af PUNO AND PUNO LAW OFFICES With office addess athe 12h Flor, East Tower, Philippine Stock Exchange Centre, Exchange ‘Road, Ontiges Cee, Pasig City, ft bing dy swom, depose and sy: ‘That on 26 June 2013, [fled and served copy of the following pleading/paper, VERIFIED ANSWER TO OPPOSITION 14-2013.00174 entited “Primary. Structures Corporation vs. Rockvell Land Pursuant to Sections 3, 4, 5 and 10, Rule 13 of the Rules of Court, as follows: BY PERSONAL SERVICE T Intellectual Property Office Bureau of Legal Affairs Intellectual Property Center 28 Upper McKinley Road, ‘MoKinley Hill Town Center, Fort Bonifecio ‘Taguig City BYRgGIsTERED MAIL/CounrEn: Office of Bagay-Villamor and Fabiosa Counsel for Opposer Primary Struetures Corporation Unit 107, Building A, Oakridge Business Center By depositing a copy on 2013, inthe post office a 3 evidenced by Regisiy Receipi@) No) ereto attached ind indicated afer the name(s) of the addcessee(s) ‘with insrvetions to pastasier co return the mall 10 sender ater ten (10) days i undelivered, By deporting a copy on b= 24, 2013, in the post ols at Aah PAeA. as cel by Raptey Mea) MOO) hereto sachet {880 AS. Fortuna Street, Mandaue City ee eS atin cenoen Cebu ‘with instructions to postmaster to return the mall 10 ender aren (10) days i undelivered. Primary Structures Corporation oe Opposer PSC Building, 333 V. Rama Avenue, Cebu City City of Pasig: 26 June 2013 SUBSCRIBED ANI ‘me this 26" day of June 2013 at Pasig City, Affiant exhibited to me his SSS No. Doe. No, i if Y f % Paseo Fann of vo hte Yo q Roary Pubic for Sener of 2572 Se agpensen tl i ats So00) (Qe rune Lol Sat neon Ho e0108 ere’ yan nn oenzbesynion 2085 /Psig Cy COR SY Tr amassennr gorse oS, 112th Poor fast Tower, Pili Sse Stock xchange Contre ‘Brohange Hong Orgs Ceou Pasty CymNEX' BL ali OFAREAY HP UAL APRAIRS eCeIVED BY ch AECEIVED OM: REPUBLIC OF THE PHILIPPINES ) PASIG CITY )ss. AFFIDAVIT 1, PAOLO E, ABARQUEZ, Filipino, of legal age, with office address at Puno and Puno, 12 Floor East Tower, Philippine Stock Exchange Center, Exchange Road, Ortigas Center, Pasig City, after having been duly sworn in accordance with law, do hereby depose and state that: 1. aman Associate Attorney at Puno and Puno. 2. Lam one of the lawyers handling the case entitled Prittacy ‘Structures Corporation vs. Rockwell Land Corporation, IPC No, 14-2013- 00174, now pending before the Honorable Bureau of Legal Affairs of the Intellectual Property Office. 3. I helped prepare the Verified Answer to Opposition as well as the various attachments thereto. On June 26, 2013, I downloaded and caused the printing of the following: 3.1 Annex “A” - The main page of Primaries website at ttpv/Awww primaries.com.ph. 3.2 Annex “B" - Primaries advertisement at hexpd/Awww-sulit.com.ph/index.php/view'+classifieds/id/11883579/P roperty+Specialist+forsPRIMARIES+a+Rockwell+Company?referra IKeywords=primaries+rockwell&event=Search+Ranking,Position,1- 1 l#advertisementDetails 3.3 Annex “B-1” —- Primaries advertisement at hups/wwwgoogle.com/imgres?q=primaries+by+rockwell&els=com microsoftien-usIE- Address&biw=18438bih=9338cbm=isch&tbnid=pBg6_xlricEDM: &imgrefurl=http://www skyscrapercity.com/showthtead. php%3Fp %3D1041414658&docid=tzPetSFZGMpRFM&imgurl-http://www.pr imaries.com.ph/upload/fles/ WEB png8w-9408h=3808ei=hlvKUa 6jG—tiQe9- ACoBw&czoom=18ved=1t:3588,1:74 s:0 j:3098iact=re&page=38etbn h=1438ctbnw=3538start~738endsp=43&ctx-307&ty=7434 Annexes ~ Online’news article on Primaries from +hetp://business.inquirer.net/124425/rockwell-land-to-enter- affordable-property-sector 4, — I compared the printouts with thé websites and confirm that these are the exact copies thereof. 5. I certify that I did not cause any alteration or modification of the printouts and that our office server and network employs appropriate security procedures to ensure reliable authentication of electronic documents. 6. Tam executing this Affidavit to attest to the truth of the foregoing. PAOLO E. ABARQUEZ, Affiant SUBSCRIBED AND SWORN to before me, this 10 of March 2014, affiant showing to me competent evidence of his identity in the form of his Philippine Passport No, EB0168222 valid until 28 April 2015, » eee 17" Noreen, Os Notary Fubtte tor Praie Gi 7 Page No.: 20/8" note SO, Commission No St eat Boe, 2or6 12 ROLHD. coe Holler Atoraeyahi. 38 Book No: L\ nau") Frene tehndoa/ iboats ae chy IBP No. 948779 f0n.ba-1a jae sees GUE. Weodest aes i. 1201.12 Floor, Eat Toney SE Cente Bchange Road, Orieseroolen Caeee ANNEX “ E » @es Shree ee Tit FHSS OFFICE OF THE DIRECTOR GENERAL TO ALL WHOM THESE PRESENT SHALL COME: 2 THIS IS TO CERTIFY that the annexed document is a faithful reproduction of the “VERIFIED OPPOSITION” dated 24 April 2013, which forms part of the records of the case entitled ROCKWELL LAND CORPORATION vs. PRIMARY STRUCTURES CORPORATION, docketed as Appeal No. 14-2014- 0023 (IPC No. 14-2013-00174). IN WITNESS WHEREOF, | have hereunto affixed my hand and the seal of the INTELLECTUAL PROPERTY OFFICE at Taguig City, Metro Manila, Philippines, today, 31 January 2018. ROBERT NEREO B. SAMSON Attomey V © wevwipophigovoh g@ ttetecual Property Center moiginonhigough © #26 Unper Mexiniey Rone 2 manner ekiniay Hil Town Conte © +892.2326300 Fort Boniaco, Tagg Ct) 1 s6s2-ss0200 1634 Pritppines“ORIGINAL COPY 3 corgi y Intellectual Property Office ofthe Sil. Bureau of tegat fats Fe. TAM De) REPUBLIC OF THE PHILIPPINES INTELLECTUAL PROPERTY OFFICE BUREAU OF LEGAL AFFAIRS TAGUIG CITY BY: PRIMARY STRUCTURES CORPORATION, } IPC No. 14= 2019 - DOI fi Opposer, } Opposition to: ~versus- } Appin No. 4/2012/14880 } Date Filed: Oct. 12, 2012 ROCKWELL LAND CORPORATION, Trademark: “PRIMARIES” : Respondent. PD: 1 APRIL 2014, VERIFIED OPPOSITION Date ‘The Opposer, by counsel, respectfully states: at, 2 Cai: Repo ‘The Opposer will be damaged by the registration of the subject trademark and hereby files this Opposition, GROUND FOR THE OPPOSITION THE SUBJECT MARK “PRIMARIES” IS CONFUSINGLY SIMILAR TO AND SOUNDS ALMOST EXACTLY THE SAME AS THE OPPOSER'S REGISTERED “PRIMARY” MARKS, MOREOVER, THE SUBJECT MARK IS APPLIED FOR CLASSES 35 AND 37, THE SAME CLASSES, AMONG OTHERS, WHERE THE OPPOSER’S “PRIMARY” MARKS ARE ALSO REGISTERED. THUS, THE “PRIMARIES” APPLICATION SHOULD BE REJECTED. THE PARTIES 1. The Opposer is a corporation organized and existing under the laws of the Philippines with principal address at the PSC Building, 333 V. Rama Avenue, Cebu City, Cebu. 2. The Respondent is a corporation organized and existing under the laws of the Philippines with principal address at Rockwell Center, Makati City, STATEMENT OF FACTS 3. The Opposer PRIMARY STRUCTURES CORPORATION was incorporated on July 15, 1986. It has been engaged in the real estate business - constructing and developing residential, commercial, and industrial buildings in Cebu, Bohol, Ilo-ilo, Davao City, Argao, Cebu, Leyte, and Laguna, among others. The word "PRIMARY" is part, and is the first word, of the Opposer's corporate name.k 4, As early as November 19, 2008, the Opposer filed four applications for registration of “PRIMARY” as a trademark for Classes 35, 36, 37, and 42 which were subsequently granted registrations. Attached herewith are the following trademark registrations in ‘the name of the Opposer: a) Trademark Certificate of Registration No. 4-2008-014150 for the “PRIMARY” mark for Class 35 for “Real estate marketing services namely on-line services featuring the promotion of residential sales, real estate sales management, real estate . advertising services,” is attached herewith as Exhibit "A;” b) Trademark Certificate of Registration No. 4-2008-014151 for the “PRIMARY” mark for Class 36 for “Leasing of real estate, financing real estate development projects, real estate development consultancy, real estate management,” is attached herewith as Exhibit "B;” c) Trademark Certificate of Registration No. 4-2008-014152 for the “PRIMARY” mark for Class 37 for “Piumbing and other utility services namely carpentry, drywall, painting, electrical, building and framing contractor service; repair and installation particularly heating, cooling and environmental control systems,” is attached herewith as Exhibit "C;”and 4) Trademark Certificate of Registration No. 4-2008-014153 for the “PRIMARY” mark for Class 42 for “Educational services namely training, developing and conducting workouts, workshops, presentations and online training in the field of architectural and engineering services,” is attached herewith as Exhibit "D.” 5. On July 7, 2009, the Opposer also filed an application for registration of “PRIMARY” as a trademark for Class 41 for “architectural and engineering services, engineering services for building and property condition assessment, facility management, repair and restoration, building instrumentation and monitoring, structural engineering design services, graphis illustration and drawing services to commercial, industrial building designs to cad drawings, preparation of residential, building and factory designs services,” and was subsequently granted registration. A copy of Trademark Certificate of Registration No, 4-2009- 006709 for the “PRIMARY” mark in favor of the Opposer is attached herewith as Exhibit “E.” 6. Since its adoption and its continued use in commerce up to the present day, the “PRIMARY” mark has been developed and has