OFFICE OF THE DIRECTOR GENERAL JOLLIBEE FOODS CORPORATION, Appeal No. 04-2018-0005 Appellant, - versus - DIRECTOR OF BUREAU OF TRADEMARKS, Appellee. x x DECISION Jollibee Foods Corporation ("Appellant") appeals the decision’ of the Director of Bureau of Trademarks ("Director") sustaining the decision of the Examiner-in- Charge (“Examiner”) requiring the Appellant to disclaim “BURGER STEAK" before allowing the registration of the Appellant's mark “ULTIMATE BURGER STEAK”. ‘The Antecedent Facts The Appellant filed on 24 May 2013 Trademark Application No. 4-2013-006004 for ULTIMATE BURGER STEAK for use on “meat and hamburger patties’. Subsequently, the Examiner issued a “Registrability Report” stating that the Appeliant must disclaim the words “BURGER STEAK’ for being generic. The Appellant argued against the disclaimer of BURGER STEAK” on the ground that itis distinctive, ‘The Examiner issued a “Subsequent Action®” reiterating the requirement to disclaim “BURGER STEAK’ and cited the definition of ‘STEAK BURGER” in support of her position. Consequently, the Appellant appealed to the Director the requirement to disclaim “BURGER STEAK" in its trademark application. + Dated 19 December 2017. 2 Document No. 2016/55574, 3 Document No. 2016/126685, @ wernipophigoush — @ Intasectat Property Center S maverponngovgn #26Up0er Nekimey Rose Mekiney Hl Town Conter © 1632-2386300 Fort Bonifacio, Taguig City mB +602-5590000 {634 PhuppinesBuling of the Director The Director sustained the refusal of the Examiner to register the Appellant's mark unless the Appellant disclaims the words “BURGER STEAK" and held that although the Appellant has proven long and continuous use in commerce of the words “BURGER STEAK" as early as 1995, the Appellant failed to prove thal the use of “BURGER STEAK’ is exclusive for those goods covered by the mark. The Director held that “BURGER STEAK’ is also used by several entities and websites other than the Appellant all referring to the same beef dish or recipe. Hence, according to the Director, “BURGER STEAK" is customarily used to refer to or identify the dish consisting of beef patties grilled or pan-gilled or pan-fried, steak style with mushroom gravy sauce. The Director explained that even if ‘BURGER STEAK’ is descriptive, stil it cannot be registered in the name of the Appellant due to non-exclusive use of the same. Lastly, the Director ruled that "BURGER STEAK’, be it generic, descriptive or customary, it must be disclaimed pursuant to Rule 604* of the Trademark Regulations. ‘The Instant Appeal Not satisfied with the decision of the Director, the Appellant appealed® to this Office contending that it established substantial evidence that it has commercially used the "BURGER STEAK” mark exclusively since 1995. The Appellant submitted the Affidavit of Ms. Cathleen Capati, Marketing Director of the Appellant attesting to the fact that the Appeliant exclusively used the "BURGER STEAK” mark as early as 1995 and continues to do so up to the present. It also submitted copies of the result of an independent study/survey conducted by TNS Philippines and Kantar showing that “BURGER STEAK" is one of the most identified brands of the Appellant and that the “BURGER STEAK” product is the market leader in the beef dish category in the National Capital Region of the Philippines. The Appeliant argues that the third party websites cited by the Director ail relate to “BURGER STEAK’ recipes created only recently, the earliest being in 2015, and, hence, much later than when the Appellant started using “BURGER STEAK" in 1995. The Appellant maintains that the articles in the cited website links point to Appellant's "BURGER STEAK" product as the source or inspiration of the “BURGER STEAK" recipes. Hence, the Appellant argues that the “ Rule 604. Disclaimers. - The basic purpose of disclalmers is to make of record, that a significant element of a composite mark is not being exclusively appropriated apart from the composite. The following postions of a mark, when forming part of the composite mark, must be disclaimed to permit registration, namely: (a) a generic term; (b) a descriptive matter in the composite mark; (6) a customary term, sign or indication; or (d) a matter which does not funcian as a trademark, or service mark or a trade name. ‘Such disclaimer shail not prejudice or affect he applicant's rights then existing under some other law or thereatter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant's rights to registration on another application of later date, where the disclaimed matter has become distinctive of the applicant's goods, business or services. Where the Examiner has determined inat any portion of a mark contains unregistrable matter which ‘must be disclaimed, the Examiner shall communicate the findings to the applicant in the office action. if the applicant fails to comply with the Examiner's requirement fora disclaimer, the Examiner must make the requirement final the application Is in condition for a final action. Partial discialmer may be allowed with respect to some classes or some goods and/ or services. 5 Appeal Memorandum dated 07 February 2018. nr Utimate burger steak page 2recent use of “BURGER STEAK" recipes coupled with attribution to Appellant's “BURGER STEAK" product, as shown in the cited third-party website links, and confirm the Appellant's claim of exclusivity of use of “BURGER STEAI 1995. The Appellant maintains that “BURGER STEAK’ is a distinctive mark and not generic and customary. The Appellant explains that "BURGER STEAK" is not generic ‘because it is not a common designation of the covered goods in Class 29 of the Nice Classification®. The Appellant esserts that “BURGER STEAK" cannot be considered generic, as it does not constitute the actual or common name for meat and hamburger Patties covered in Class 29 and that the combination of “BURGER” and “STEAK” arguably produces a unique term having no direct relation to the covered goods. The Appellant avers that “BURGER STEAK” is a term of art used by the Appellant to refer to its dish offering consisting of beef patty prepared as if it were a steak dish and is served, in all instances, with a cup of rice. In her comment to the appeal, the Director avers that the Affidavit of Ms. Cathleen Capati did not state that the Appellant exclusively used "BURGER STEAK” as early as 1995 or at least since the time she worked in Jollibee in 2007. Therefore, according to the Director, the Affidavit of Ms. Capati is immaterial and irrelevant to support the claim of exclusivity of use. The Director also points out that the independent studies/surveys conducted by TNS Philippines and Kantar do not show exclusivity of use of "BURGER STEAK" by the Appellant. The Director argues that being a market leader in beef dish as a result of the surveys does not mean that the Appellant is exclusively using "BURGER STEAK’ as a mark. The Director explains that the survey does not even mean that “BURGER STEAK" can stand alone as a trademark because as a matter of fact, “BURGER STEAK" is always preceded by "JOLLIBEE” as shown in the pieces of evidence presented by the Appellant. Hence, the Director avers that the proof submitted by the Appellant including the rest of the advertising materials presented are irrelevant and immaterial for the purpose of showing exclusivity of use by the Appellant of "BURGER STEAK". The Director also points out that by Appellant's own admission, prior to the Appellant's claim of distinctiveness, there was at least one entityAvebsite in 2016 using "BURGER STEAK" to refer to the dish as such. According to the Director, this is proof against the claim of exclusivity of use as a trademark by Appellant. Also, the Director argues that no proof was presented to show that the Appellant enforced its rights over the use of "BURGER STEAK" by others without its consent. Whether or not “BURGER STEAK” must be disclaimed. Our Ruling The appeal is not meritorious 6 The Nice Classification is a classification of goods and services forthe purpose of registering trademarks and service marks, based on a multlateral treaty administered by the World Intellectual Property Organization. This treaty is called the Nioe Agreement Concerning the International Classification of Goods and Services for the Purpases of the Registration of Marks concluded in 1957. —— ultimate burger steak page 3“BURGER STEAK” is a term composed of two words "BURGER" and "STEAK" Section 123.1 (j) of the Intellectual Property Code of the Philippines ("IP Code") provides that a mark cannot be registered if it: () Consists exclusively of signs cr 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: The reason for this is that inasmuch as all persons have an equal right to produce and vend similar articles, they also have the right to describe them properly and to use any appropriate language or words for that purpose, and no person can appropriate exclusively any word or expression, properly descriptive of the article, its gualities, ingredients, or characteristics, and thus limit other persons in the use of language appropriate to the description of their manufactures, the right to the use of such language being common to alll. As to whether words employed are within this prohibition, it is said that the true test is not whether they are exhaustively deseriptive of the article designated, but whether in themselves, and as they are commonly used by those who understand their meaning, they are reasonably indicative and descriptive of the thing intended. If they are, thus descriptive, and not arbitrary, they cannot be appropriated from general use and become the exclusive property of anyone.’ It cannot be registered for to do so would exclude others who are also engage in producing similar products and using the same words in their similar trade or services. Descriptive terms, which may be used to describe the product adequately, cannot be monopolized by a single user and are available to all.® In this case, “BURGER STEAK’ must be disclaimed because it is a descriptive mark wich indicates the characteristics of the goods of the Appellant. "BURGER STEAK" is used on burger patties with gravy similar to the dish steak, thus describing the kind of goods offered by the Appellant. In the case of Societe des Produits Nestle S.A.and Nestle Philippines vs. Court of Appeals and CFC Corporation®, the Supreme Court of the Philippines held that a term is descriptive and therefore invalid as trademark if, as understood in its normal and natural sense, it conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what itis or if it conveys an immediate idea of the ingredients, qualities or characteristics of the goods, or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination In this instance, the term BURGER STEAK is a descriptive mark because it immediately conveys the characteristics and qualities of the Appellant's goods as referring to beef patties grilled or pan-grilled or pan-fried, steak style with mushroom gravy sauce. The term "BURGER STEAK’ is also descriptive of the principal ingredient of the Appellant's product. There is no need for the purchasing public to imagine the 7 See Ong Ai Gui Alias Tan Ai Gul vs. Director of the Philippines Patent Office, G.R. No.\-6235,28 March 1955 citing 52 Am Jur. 542-543. ® See Vicente B. Amador, Trademarks Under The Intellectual Property Cade, 1990, page 22. 9G, R. No. 112012, 0 Apri 2001 ee ultimate burger steak page 4products of the Appellant for the term itself illustrates and gives the idea of the Appellant's goods. ‘The Appellant, however, argues that it has exclusive use of “BURGER STEAK" since 1995. This boils down to the question on whether the tem "BURGER STEAK" can still be registered under the doctrine of secondary meaning. The Supreme Court explained the doctrine of secondary meaning in Ang Tibay vs. Teodoro, as follows: "This doctrine is to the effect that 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 purchasing public, the word or phrase has come to mean that the article was his product."0 The doctrine of secondary meaning was incorporated in the IP Code. Section 128 of the IP Code states in part the following: "SEC. 128. Registrabilly.- 128.1. A mark cannot be registered if it: 700 9000 () Consists exclusively ot 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:" 128.2. As regards signs or devices mentioned in paragraphs (i), (K), and (|), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use tat have been made of itin commerce in the Philippines. The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (6) years before the date on which the claim of distinctiveness is made In this case, this Office is not convinced that the Appellant has proven that “BURGER STEAK" has attained a secondary meaning. The pieces of evidence adduced by the Appellant refers not EXCLUSIVELY to “BURGER STEAK’. For instance, the affidavit of Ms. Cathleen Capati and the survey results presented by the Appellant indicate the use of “JOLLIBEE” together with “BURGER STEAK". Thus, these pieces of evidence did not prove continuous and "9G, A. No. 48226, 14 Dec. 1942. ———— utimate burger steak page 5exclusive use of BURGER STEAK which are requisites for a descriptive mark to attain a secondary meaning. Accordingly, there is nothing in the affidavits and independent study/survey conducted by TNS Philippines and Kantar presented by the Appellant which shows. that “BURGER STEAK" has become the Appellant's distinctive mark in relation to meat and hamburger patties. To reiterate, the mark “BURGER STEAK" is not in itself capable of distinguishing the goods of the Appeliant. It only points out the characteristics of the goods which should be allowed to be used by anyone. The intellectual property system was established to recognize creativity and give incentives to innovations. Similarly, the trademark registration system seeks to reward entrepreneurs and individuals who through their own innovations were able to distinguish their goods or services by a visible sign that distinctly points out the origin and ownership of such goods or services. Such registration system must, however, not be used to prevent the use by the public of words, terms or language common to all. WHEREFORE, premises considered, the decision of the Director is hereby AFFIRMED and this appeal is hereby DISMISSED. 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. 15 DEC 2020 —. Taguig city ROWEL S. BARB, Director General SS ultimate burger steak page 6