INTELLECTUAL provenry OFFICE OF THE DIRECTOR GENERAL HARDY WAY LLC, Appeal No. 04-2018-0004 Appellant, Application No. 4-2013-005134 Filed On: 06 May 2013 - versus - Trademark: ED HARDY DIRECTOR OF BUREAU OF TRADEMARKS Appellee. x. DECISION Hardy Way LLC ("Appellant") appeals the decision’ of the Director of Bureau of Trademarks ("Director") sustaining the refusal of the Examiner-in-charge (‘Examiner’) to allow the registration of the Appellant's mark “ED HARDY”. ‘The Antecedent Facts The Appellant fled on 06 May 2013 Trademark Application No. 4-2013-005134 for ED HARDY for use on “clothing, namely, bottoms, pants, jeans, sweatpants, shorts, tops, shirts, t-shirts, sweatshirts, sweaters, skirts, dresses, sleepwear, swimwear, underwear, jackets and coats, footwear of all types, namely, sport shoes, dress shoes, casual shoes, boots, fip-flops, and sandals, headgear of all types namely, hats, caps and visors treatments, namely, curtains, draperies, sheers, swags and valances’, Subsequently, the Examiner issued a “Registrability Report”? stating that the mark may not be registered because itis identical with another mark used on the same goods or services and belonging to a different individual or entity. The Appellant's mark and the mark cited by the Examiner are illustrated below: 2 Dated 19 December 2017. ® Document No. 2013/69296. Qerctiny @biteusPrpaty Cor Srennener — Mererl te ih +632-8530480 1634 Philippines teas one Le OUDED HARDY Cag Appellant's mark ‘Mark cited by the Examiner ‘The trademark application for the mark cited by the Examiner was filed on 23 February 2006 for use on “ATW pants, jeans and shirts’. The 3'° Year Declaration of Actual Use (‘3 DAU") for the cited mark was filed on 16 June 2006. To date, the mark is still pending application due to the opposition against its registration. The Appellant filed a response? claiming ownership over the mark “ED HARDY’. The Appellant explained that it has used the mark in the United States and other countries since 2005 and that it acquired registration of the mark ED HARDY and Device for goods in Class 25 as early as 12 Septernber 2006. The Appellant pointed out that when the other individual or entity filed the trademark application on the mark cited by the Examiner, the Appellant has already acquired registration over ED HARDY in the United States. The Appellant submitted the written consent given by Mr. Ed Hardy to the Appellant for the use of the former's name as a trademark. Hence, according to the Appellant, it shows that itis the Appellant and not the other individual or entity who filed the mark cited by the Examiner that was given authority by Mr. Ed Hardy, to use his name as a trademark. The Appellant also claimed that it filed an ‘opposition in Uruguay against an application for registration of the mark ED HARDY filed by a different applicant for goods in Class 25. The Appeliant stated that after considering all the arguments for and against the opposition, the National Industrial Office of Uruguay ruled in favor of the Appellant and directed the dismissal of the application. With the foregoing, the Appellant claimed that it is the first to use and protect the mark ED HARDY. On 02 February 2016, the Examiner issued a "REFUSAL" of the Appellant's, trademark application. The Appellant appealed to the Director the refusal of its trademark application f the Dire The Director sustained the refusal of the Examiner to register the Appellant's mark and held that the issue of identity of the marks is settled as admitted by the Appellant. The Director explained that in the Notice of Appeal alone, the Appellant already anchored its appeal on ownership and the alleged internationally well-known Status of the mark. The Director held that the trademark examination proceeding is ex- parte in nature and that the issues of ownership and well-known status of the mark are evidentiary and litigious in nature and must be resolved in inter partes such as trademark cancellation and/or unfair competition case/s before the Bureau of Legal Affairs. Lastly, the Director held that in the absence of a ruling on ownership or a declaration from competent authority that ED HARDY is a well-known mark of the Appellant, the Bureau of Trademarks holds that the subject mark cannot be registered 9 Letter dated 15 January 2014 Page 2 of 4pursuant to Section 128 (d) of the Intellectual Property Code ("IP Code") of the Philippines. The Instant Appeal Not satisfied with the decision of the Director, the Appellant appealed to this Office contending that it owns the internationally well-known mark ED HARDY and that it is within the function of the Bureau of Trademarks to search and examine applications for the registration of marks, geographic indications and other marks of ownership, and thereafter to issue certificates of registrations. The Appellant explains that it is within the mandate of the Bureau of Trademarks to issue a certificate of registration in favor of the Appellant because according to the Appellant, clear evidence has been submitted to prove its ownership over the subject mark especially so since the trademark application on the mark cited by the Examiner is still pending to date. The Appellant reiterated that it has trademark registrations in the United States which were issued even prior to the filing date of the mark cited by the Examiner. In her comment to the appeal, the Director points out that while itis true that the Bureau of Trademarks has the function of searching and examining applications ‘or the registration of marks and other marks of ownership, the certificate of registration is only prima facie evidence of registrant's ownership of the mark which can be cancelled by evidence to the contrary in an appropriate proceeding such as cancellation or unfair competition. The Director reiterates that trademark examination proceeding in the Bureau of Trademarks is ex-parte in nature. Issue Whether or not the Appetiant’s trademark application for “ED HARDY” can be given due course Our Ruling The appeal is meritorious. While it is true that the proceeding for the registration of a mark betore an Examiner in the Bureau of Trademarks is ex-parte prosecuted by the applicant, during the substantive examination of the mark, the Examiner is not prevented from considering pieces of evidence that may determine whether a trademark application can be given due course or be allowed publication pursuant to the provisions of the IP Code. This is consistent to the duties of the Examiner to protect public interest and ensure that trademarks are registered in accordance with the relevant laws, rules and regulations. In this instance, the Appellant has adduced pieces of evidence showing ownership and authority to register ED HARDY. These pieces of evidence should have been considered by the Bureau of Trademarks in examining the Appellant's trademark application. Significantly, the Appellant has an existing registration of the mark “ED HARDY’ in the Philippines under Certificate of Registration No. 11354 for ‘Notice and Memorandum of Appeal Page 3 of 4use on perfume, cologne, after-shave lotions, after-shave balms, skin moisturizer, body lotion, body eream, hand cream, bath gel, body washes, hair shampoo, soaps for personal use, deodorant for personal use, body sprays, eau de parfum, and eau de toilette”. This certificate of registration was issued on 09 February 2012 and, therefore, the Appellant's trademark application for the identical mark ED HARDY for use on other class of goods should have not been denied outright. In addition, to allow the publicaticn of the Appellant's mark instead of an outright refusal would not harm the pending trademark application of the mark cited by the Examiner but would enable all interested parties to oppose the registration of the Appellant's mark. WHEREFORE, premises considered, the appeal is hereby GRANTED and the decision of the Director sustaining the refusal of the registration of "ED HARDY” is hereby set aside. Let a copy of this Decision as well as the trademark application and records be furnished and returned to the Director of Bureau of Trademarks for appropriate action. SO ORDERED. T5 DEC 2020 —, raguig city ‘on s. Banga Director General) / Page 40f4