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INTELLECTUAL PROPERTY
OFFICE OF THE PHILIPPINES
TRB ACQUISITIONS, LLC,
Opposer,
-versus-
REEBOK INTERNATIONAL, LTD.,
Respondent- Applicant.
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IPCNo. 14-2016-00151
Opposition to:
Appln. No. 4-2015-505998
Date Filed: 16 October 2015
TM: "RBK"
NOTICE OF DECISION
POBLADOR BAUTISTA & REYES
Counsel for Opposer
5th Floor, SEDCCO I Bldg.
120 Rada corner Legaspi Street
Legaspi Village, Makati City
BETITA CABILAO CASUELA SARMIENTO
Counsel for Respondent-Applicant
Suite 1104, Page One Bldg., 1215 Acacia Avenue
Madrigal Business Park, Ayala Alabang
Muntinlupa City
GREETINGS:
Please be informed that Decision No. 2018 -
enclosed) was promulgated in the above entitled case.
dated June 22, 2018 (copy
Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of
2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten
(10) days after receipt of the decision together with the payment of applicable fees.
Taguig City, June 25, 2018.
MARILYN F. RETUTAL
IPRS IV
Bureau of Legal Affairs
@ www.ipophil.gov.ph
© +632-2386300
tf +632-5539480
Intellectual Property Cemei
tt?8 Upper McKinky Road
McKinloy Hill lown Center
FoM Bonifacio, Kicjijkj fJ;*/
Hi'JA Philippines
INTELLECTUAL PROPERTY
OFFICE OF THE PHILIPPINES
TRB ACQUISITIONS, LLC,
Opposer,
versus-
REEBOK INTERNATIONAL, LTD.,
Respondent-Applican t.
IPC NO. 14-2016-00151
Opposition to:
Appln. Ser. No. 4-2015-505998
Date Filed: 16 October 2015
Trademark: RBK
Decision No. 2018 - l!Jo
DECISION
TRB ACQUISITIONS, LLC.1 ("Opposer"), filed an Opposition to Trademark
Application Serial No. 4-2015-505998.2 The application filed by REEBOK
INTERNATIONAL, LTD.3 ("Respondent-Applicant"), covers the mark "RBK" for use on
"luggage, all-purpose sports bags, duffel bags, tote bags, knapsacks, shoulder bags" under Class 18;
and "footwear namely, shoes, boots, slippers and sandals; headwear namely, hats, caps, bandanas,
headbands; and clothing namely, sportsiuear, sweatpants, sweatshirts, shirts, shorts, sweaters,
slacks, socks, jackets, sxveatsuits, rompers, jumpsuits, warm-up suits, shooting shirts, fleece tops,
tank tops, polo shirts, pants, unitards, leotards, athletic bras, leggings, skirts, rainsuits, turtlenecks,
bathing suits, vests, parkas, bra tops, tights, dresses, athletic uniforms, gloves, thermal underwear,
infantxvear, coveralls, running suits, bibs, pajamas" under Class 25 of the International
Classification of goods4
Opposer alleges that it will be damaged by the registration of the subject mark
because it is prior adopter, user and registrant of the mark RBX in the Philippines. Opposer
also argues that Respondent-Applicant is not entitled to a registration because it has never
used the "RBK" mark in the Philippines; it has abandoned any rights it may have in RBK
mark in other jurisdictions around 2007; and it has no intent to use the RBK mark for its
applied class in the future here in the Philippines. According to Opposer, TRB is the owner
and licensor of the RBX mark and its rights and interests over the mark was acquired
through its predecessor-in-interest, The Rugged Bear Company f/d/b/a RB Acquisition
Corp. (RBC), a company founded in 1980 by Alan McDonough, a co-founder of a highly
successful outdoor adult clothing and gear retailer Eastern Mountain Sports. RBC operated
retail stores throughout New England area of the U.S.A. as well as in New York and New
Jersey selling a wide variety of children's apparel, footwear and accessories. On 09 February
2015, RBX.com LLC was formed to create and run the www.Rbxactive.com website and e-
commerce store, as well as the RBX social media accounts which served as advertising and
' A corporation duly organized and existing under the laws of Japan with address at 2-8-5, Nihonbashi-Horidomecho, Chou-Ku, Tokyo2 Original Verified Opposition was filed on 10 June 2016 but it was amended on 03 September 2016
3 A foreign corporation organized and existing under the laws of the United Kingdom with principal address at 4th Floor, 11/12 Pall Mall, London,
SW1Y 5LU, United Kingdom.
4 The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based on the multilateral
treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning the International
Classification of Goods and Services for the Purpose of the Registration of Marks concluded in 1957
(«) www.ipophil.gov.ph
0 +632-2386300
|A +632-5539480
Q Intellectual Property'
ff?8 Upper McKinlc ,
McKmley Hill lown Cf;'iV;r
Fort Bonifacio, fagutq '.'/
Philippines
marketing functions and help promote the RBX brand and expand its global reach over the
internet and social media. The RBX products are available for sale and is a well-known
brand in the US and its products and services have been made available in the Philippines.
Opposer has also registered the RBX mark in other jurisdictions.
To support its opposition, Opposer submitted the following as evidence:
1. Copy of Amended and Restated Operating Agreement dated 07 March 2011;
2. Copy of the Affidavit of Lindsay Korotkin;
3. Printouts of archived webpages about RBC;
4. A chart showing advertising and marketing expenses of TRB for the RBX brand;
5. A chart showing advertising and marketing expenses of RBX.com LLC for the
RBX brand;
6. Copies of brand books of from 2012-2015 regarding RBX mark and brand;
7. Certified copies of certificates of registration for the RBX mark;
8. Printout of the details of registration of the mark RBX;
9. Certified copy of Certificate of Registration No. 4-2012-012856 for the mark RBK
which was removed from the registry for non-filing of DAU; and
10. Printout of details of the Registration No. 4-2002-008543 of the mark RBK which
was removed from the registry for non-filing of 5th year affidavit of use.
On 14 June 2016, this Bureau issued a Notice to Answer and personally served a
copy thereof to the Respondent-Applicant's representative on 17 June 2016. On 20
September 2016, Respondent-Applicant filed its Verified Answer asseverating the
following:
"I. Respondent-Applicant's RBK mark is an internationally well-known mark
which was adopted, used and registered by Respondent-Applicant long before
Opposer adopted, used and registered its RBX mark. Hence, Respondent-Applicant's
rights over the use and registration of its RBK mark is superior to Opposer's.
"II. The registration of Respondent-Applicant's RBK mark will not impair the
distinctiveness of Opposer's RBX mark and cause damage to the Opposer since as
between the Parties, Opposer is clearly the junior user. Hence, it is not Respondent-
Applicant RBK mark that should be denied registration. Rather, it is Opposer's RBX
mark that should be cancelled."
Respondent-Applicant's evidence consists of the following:
1. Legalized and authenticated Affidavit of Sarah Talbot;
2. Promotional materials for the RBK mark;
3. Table showing the details of applications and registrations for the RBK mark; and
4. Representative copies of certificates of registration for the RBK mark.
Pursuant to Office Order No. 154, s. 2010, the case was referred to the Alternative
Dispute Resolution ("ADR") for mediation on 29 September 2016. However, the parties
refused to undergo mediation. On 30 March 2017, the preliminary conference was
2
terminated and the parties were directed to submit position papers. On 10 April 2017,
Respondent-Applicant filed its Position Paper while Opposer did so on 12 April 2017.
Hence, this decision.
Should the Respondent-Applicant be allowed to register its mark "RBK"?
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.5
Section 123.1 (d) and (e) of Republic Act No. 8293, also known as the Intellectual
Property Code of the Philippines (IP Code), as amended, provides:
Section 123.Registrability. -123.1. A mark cannot be registered if it:
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;
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.
It is clear from the above provisions of the IP Code that whenever a mark subject of an
application for registration, resembles another mark, which has been registered or has an
earlier firing or priority date, or to a well-known mark, said mark cannot be registered.
Records will show that at the time Respondent-Applicant filed its trademark
application for the mark RBK, Opposer has already obtained a registration for its RBX mark
^See Pribhdas j. Mirpuri v. Court ofAppeals, G. R. No. 114508,19 Nov. 1999.
on 22 November 2013. As such, pursuant to Section 1386 of the IP Code, Opposer's
certificate of registration is a prima facie evidence of the its ownership of the mark, and its
exclusive right to use the same in connection with the goods or services specified in the
certificate and those that are related thereto. And further, pursuant to Section 1477 of the IP
Code, it has a right to oppose the herein subject application for registration of Respondent-
Applicant's RBK mark.
A comparison of the marks of Opposer and Respondent-Applicant, as shown below,
shows that they appear to be similar because both marks contain three letters. The first two
letters are the same and they differ only on the last letter, Opposer's mark uses "X" while
Respondent-Applicant uses "K".
RBX
Opposer's Mark
RBKRespondent-Applicant's Mark
Opposer's mark also contain a device which is not present in Respondent-
Applicant's mark. However, these observable differences from the respective marks of the
parties do not make the marks distinct and distinguishable from each other because their
similarity is more apparent than their differences.
In Ethepa A.G. v. Director of Patents8, the High Court enunciated:
A practical approach to the problem of similarity or dissimilarity is to go into the
whole of the two trademark pictured in their manner of display. Inspection should
be undertaken from the viewpoint of the prospective buyer. The trademark
complained of should be compared and contrasted with the purchaser's memory
(not in juxtaposition) of the trademark said to be infringed. Some such factors as
"sound; appearance; form, style, shape, size or format; color; ideas connoted by
6 Section 138. Certificates of Registration - A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the
registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are
related thereto specified in the certificate.
7 Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the
owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in
respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be presumed
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.l(e) which is registered in the Philippines, shall extend to
goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that 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 interests of
the owner of the registered mark are likely to be damaged by such use.
8 G R. No. L-20635, 31 March 1966
marks; the meaning, spelling and pronunciation, of words used; and the setting in
which the words appear" may be considered.
In addition, the goods of the parties are related as they both use their marks in
goods or products belonging to classes 18 and 25 . In view of the similarity of the marks as
well as the goods upon which these marks are used, the consumer will likely believe that
the goods of Respondent-Applicant comes from, sourced or manufactured by Opposer or
that there is some connection or association between them or vice versa, when in fact there
is none. Any information, perception or impression that the public may have on the goods
of Opposer or Respondent-Applicant may be unfairly attributed to the other, that is why,
registration of marks that resembles each other and deals with the same goods are
proscribed in order to protect the public from confusion, mistake or deception.
held:
Thus, in McDonald's Corporation v. Mcjoy Fastfood Corporation,9 the Supreme Court
When one applies for the registration of a trademark or label which is almost the
same or very closely resembles one already used and registered by another, the
application should be rejected and dismissed outright, even without any opposition
on the part of the owner and user of a previously registered label or trademark, this
not only to avoid confusion on the part of the public, but also to protect an already
used and registered trademark and an established goodwill.
But in its bid to counter the opposition of the registration of its RBK mark,
Respondent-Applicant claims that it was the prior user, adopter and registrant of the mark
RBK. Respondent-Applicant points out that the fact that its registration here in the
Philippines was removed for non-filing of the Affidavit of Use for the Fifth Anniversary for
Registration No. 4-2002-008543 and non-filing of Declaration of Actual Use for Registration
No. 4-2012-012856 is not sufficient to deny the registration of its RBK mark because in cases
of well-known marks, actual use of the mark in the jurisdiction is not a conditio sine qua non
for the grant of protection in said jurisdiction.
In this regard, Rule 102 of Trademark Regulation states that:
Rule 102. Criteria for determining whether a mark is well-known. — In determining whether a
mark is well-known, the following criteria or any combination thereof may be taken into
account:
a) the duration, extent and geographical area of any use of the mark, in particular, the
duration, extent and geographical area of any promotion of the mark, including
advertising or publicity and the presentation, at fairs or exhibitions, of the goods
and/or services to which the mark applies;
9 G.R. No. 166115. February 2, 2007, citing Faberge Inc. v. IAC, 35 citing Chuanchow Soy & Canning Co. v. Dir. of Patents and Villapanta
b) the market share, in the Philippines and in other countries, of the goods and/or
services to which the mark applies;
c) the degree of the inherent or acquired distinction of the mark;
d) the quality-image or reputation acquired by the mark;
e) the extent to which the mark has been registered in the world;
f) the exclusivity of registration attained by the mark in the world;
g) the extent to which the mark has been used in the world;
h) the exclusivity of use attained by the mark in the world;
i) the commercial value attributed to the mark in the world;
j) the record of successful protection of the rights in the mark;
k) the outcome of litigations dealing with the issue of whether the mark is a well-known
mark; and
1) the presence or absence of identical or similar marks validly registered for or used on
identical or similar goods or services and owned by persons other than the person
claiming that his mark is a well-known mark.
The rule requires that the party claiming a mark to be well-known satisfies at least a
combination of the above stated criteria. After an evaluation of the evidence submitted by
Respondent-Applicant, this Bureau finds that the mark RBK has not gained the status of a
well-known mark in the Philippines and internationally. Apart from the registration of the
RBK mark here in the Philippines in 2002 and 2013, there is no other evidence to show that
the mark was even used in the Philippines. The promotional materials also do not also
show that the RBK mark was used and advertised in the Philippines. While Respondent-
Applicant listed down the pending applications and existing registrations of the RBK mark
and submitted representative samples of the certificates of registration in other countries,
these evidence are not sufficient enough for the RBK mark to be declared as a well-known
mark in the Philippines and internationally. As such, Respondent-Applicant's claim for a
wider protection as a well-known mark under 6bis of the Paris Convention and the 1999
Recommendation Concerning Provisions on the Protection of Well-Known Marks is not
well-founded.
WHEREFORE, premises considered, the instant opposition is hereby SUSTAINED.
Let the filewrapper of Trademark Application Serial No. 4-2015-505998, together with a
copy of this Decision, be returned to the Bureau of Trademarks for information and
appropriate action.
SO ORDERED.
TaguigCity, ff
Atty.
Bui
TAV.DAGSA
Adjudication Offijner
;au of Legal Affairs
6