OFFICE OF THE DIRECTOR GENERAL JOLLIBEE FOODS CORPORATION, Appeal No. 04-2018-0006 Appellant, Application No. 4-2015-506501 Filed On: 11 November 2015 - versus - Trademark: JOLLIBEE BIG BURGER STEAK SUPREME, DIRECTOR OF BUREAU OF TRADEMARKS, Appellee. x DECISION Jollivee 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 "JOLLIBEE BIG BURGER STEAK SUPREME”. ‘The Antecedent Facts The Appellant filed on 11 November 2015 Trademark Application No. 4-2015- 506501 for JOLLIBEE BIG BURGER STEAK SUPREME for use on “meat and hamburger patties; fast food products containing meat and hamburger patties, all included in Class 29”. Subsequently, the Examiner issued a “Registrability Report’? stating that the Appellant must disclaim the words “BIG BURGER STEAK SUPREME” for being descriptive. The Appellant argued against the disclaimer of "BURGER STEAK’ on the ground that it is distinctive. The Appellant also argued against the disclaimer of the word “SUPREME” on the ground that it is not descriptive of the covered goods and at most may be considered suggestive ‘The Examiner issued a “Subsequent Action®” reiterating the requirement to disclaim “BURGER STEAK’ and pointed out that the Appellant previously disclaimed * Dated 19 December 2017. 2 Document No. 2016/2379, 8 Document No. 2016/10918:. @ wwwicophagovoh @ hnelactal Property Center Qrrsigivepnigowen may Town Comer 15 +632-2286200 Fore domain Tagg Cy 1 s632-5530800 1804 Ptppines SEOthese words in its mark "ULTIMATE BURGER STEAK" under Trademark Registration No. 4-2013-006363*. Consequently, the Appellant appealed to the Director the requirement to disclaim “BURGER STEAK’ in its trademark application. Ruling 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 Appeliant failed to prove that 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 identity 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, still 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 Appellant exclusively used the “BURGER STEAK" mark as early as 1995 and continues to do so up to the present. It aiso 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 Appetiant and that the BURGER STEAK” product is the market leader in the beef dish category in the ‘National Capital Region of the Philippines. The Appellant argues that the third party 4 Issued on 23 October 2014. 5 Rule 604, Disclaimers. - The basic putpose of disclaimers is to make of record, that a significant ‘element of a composite mark is not being exclusively appropriated apart from the composite, The following portions of a mark, when forming part of the composite mark, must be disclaimed to permit registration, namely: {a) a generic term; (0) a descriptive matter in the composite mark; {0} acustomary term, sign or indication; or (a) a matter which does not function as @ trademark. or service mark or a trade name. Such disclaimer shall not prejudice of affect the applicants 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 that any portion of a mark contains unregistrable matter which ‘must be disclaimed, the Examiner shall communicate the findings to the applicant inthe office action. It the applicant fails to comply with the Examiner's requirement for a disclaimer, the Examiner must make ‘he requirement final if the application is in condition for a final action. Partial discisimer may be allowed with respect to some classes or some goods and/ or services. 5 Appeal Memorandum dated 07 February 2018. SS jollibee big burger steak page 2websites cited by the Director all 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 recent use of “BURGER STEAK’ recipes coupled with attribution to Appellant's “BURGER STEAK" product, as shown in the cited third-party website links, validate and confirm the Appellant's claim of exclusivity of use of “BURGER STEAK" since 1995. The Appeliant 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 asserts 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 tetm of art used by the Appellant to refer 1o 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 ot 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 16 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 aiways preceded by "JOLLIBEE” as shown in the pieces of evidence presented by the Appeliant. Hence, the Director avers that the proof submitted by the Appellant including the rest ot 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 entity/website in 2015 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. 7 The Nice Classification is a classification of goods and services for the purpose of registering trademarks ‘and service marks, based on a multilateral treaty administered by the World Intelectual Property ‘Organization. This treaty is called the Nice Agreement Concerning the International Classification of ‘Goods and Services for the Purposes of the Registration of Marks concluded in 1957. jpllibee big burger steak page 3