Trademark Infringement Case Study in the Philippines – Local

Jolliville Wins Trademark Case Against Jollibee

Jolliville Holdings Corporation originally incorporated as Jolliville Realty and

Development Co., Inc. (“JRDCI”), a realty company, in September 1986 by the Ting family,
the Company underwent a transformation to that of a holding company in 1999. While,
the Jollibee Foods Corporation was Started by its chairman, Tony Tan Caktiong, as an ice
cream parlor in 1975, Jollibee Foods is now one of Asia's top quick-service restaurant
chains by market value. In 2012, Jolliville filed an application for the same JOLLIVILLE
mark for use on “real estate affairs - leasing of realty”. When the IPO published the mark
on 2013, Jollibee Foods Corporation (Jollibee) opposed the application. Before that, in
2001, the Jolliville Holdings (Jolliville) filed an application with the Intellectual Property
Office (IPO) to register the mark JOLLIVILLE for “leasing, management services, property
development and land banking” and most recently, “a local municipal waterworks system.
Jolliville was able to successfully register the mark in September 2004 when the IPO
issued a Certificate of Registration. However, it failed to file its 5th year Declaration of
Actual Use in 2010, and their mark was removed by the IPO from the register.

In its opposition, Jollibee claims that it is the registered owner and first user of the
internationally-well known JOLLIBEE mark, and other related JOLLIBEE trademarks. It
alleges that JOLLIVILLE is confusingly similar with its marks, claiming that it will be
damaged by the registration of JOLLIVILLE, and being an internationally well-known
trademark which enjoys substantial goodwill and recognition in the Philippines and
worldwide, the unauthorized use of the JOLLIVILLE mark constitutes unfair competition.
The dominant word element in JOLLIVILLE, which is JOLLI, is similar in appearance and
sound with JOLLIBEE’s marks. Jollibee claims that it is already involved in the real estate
industry as a logical consequence of its main restaurant business. Jolliville contends that
JOLLIVILLE is not confusingly similar to “JOLLIBEE” contending that the marks possess
substantial visual differences. First, the Jolliville and Jollibee’s marks deal with unrelated
goods and services, while confusing similarity occurs only when visually similar marks
are used on identical or closely related goods or services. Second, JOLLIBEE cannot
claim exclusive ownership over the term “JOLLI” as there are numerous registered
trademarks that use the term “JOLLY” and Jollibee has failed to prove that JOLLIBEE is
well-known under well-settled jurisprudential standards. Finally, it claims that Jollibee is
guilty of laches and can no longer question the registration of JOLLIVILLE.

The Office of the Director General of the IPO on June 8 2017, upheld the right of
Jolliville to have their mark “JOLLIVILLE” registered on the following grounds: First,
Jolliville’s mark is not confusingly similar to Jollibee’s marks. In determining similarity and
likelihood of confusion, case law has developed the Dominancy and Holistic or Totality
tests. The logo of Jolliville is a stylized small letter “j” framed by a square written above
the center of word elements JOLLIVILLE HOLDINGS CORPORATION. At first glance,
one is easily attracted to the logo more than the words that accompany it. In contrast,
Jollibee’s main mark is “JOLLIBEE” and the ”bee” mascot device. Second, the IPO found
that Jollibee Corporation is barred by laches, due to the reason of that between Jolliville’s
incorporation of JOLLIVILLE Realty & Development Co on September of 1986 and the
time of Jollibee’s filing of opposition in 2013, 27 years had passed. Lastly, The Director
General also found that Jollibee’s evidence was insufficient to prove that JOLLIBEE is an
internationally well-known mark to prevent the registration of JOLLIVILLE. Neither had it
proven and that Jolliville Holdings is guilty of unfair competition. Jollibee is evidently in
the food business and no sufficient evidence was presented to prove that it had its marks
registered under the same class of goods (realty) for which the JOLLIVILLE mark is
sought to be registerd.

References:

Bengzon & Untalan. (n.d.). Jolliville Wins Trademark Case Against Jollibee.
http://iplaw.ph/news-jolliville-wins-trademark-case-against-jollibee.html