INTELLECTUAL PROPERTY

ABOITIZ POWER CO PORATION,H I L I '} P I ~PC No. 14-2009-00062 Opposer , } Opposition to :

} App. Ser. No. 4-2008-003961 ; } Date Filed: 08 April 2008

-versus- } Trademark: "CLEANERGY" } }

R.S. GRACIOUS HIHG THRUST SERVICES} INCORPORATED, }

Respondent-Applicant. } x---------------------------------------------------------x

OTICE OF DECISION

POBLADOR BAUTISTA & REYE3 Counsel for the Opposer 5th Floor SEDC CO I Building 120 Rada corner Legaspi Streets Legaspi Vill age , Makati City

R.S. GRACIOUS HIGH THRUST Respondent-Applicant '-e 1),0 \ \f() l 930 Del Monte Avenue ~ ~A" .\....,.) Damayan, San Francisco Del Monte, JIVV·"~r-Quezon City

GREETINGS:

Plea se be informed that Decision No. 2010 - 2.4 (D) dated 03 June 2010 (copy enclosed) was promulgated in the above entitled case.

Mak 8ti City, 03 Jun e 201C' .

Republic of the Philippines INTELLECTUAL PROPERTY OFFICE

J t

INTELLECTUAL PROPERTY PHILIPPINES

ABOITIZ POWER CORPORATION, } Inter Partes Case No. 14-2009-00062 Opposer, } Case Filed 02 March 2009

} Opposition to: }

-versus- } Appl'n Serial No.. : 04-2008-003961 } Date Filed : 08 April 2008 } Trademark : "CLEANERGY"

R.S. GRACIOUS HIGH THRUST } SERVICES, INC., }

Respondent-Applicant } x----------------------------------------------------x Decision No. 2010-K

DECISION

ABOITIZ POWER CORPORATION ("Opposer"), a corporation duly organized and existing under the laws of the Philippines with office address at Aboitiz Corporate Center, Governor Manuel Cuenco Avenue, Kasambangan, Cebu City, Philippines, filed on 02 March 2009 an opposition to Trademark Application Serial No. 4-2008-003961. The trademark application filed by R.S. GRACIOUS HIGH THRUST SERVICES, INC., ("Respondent­Applicant"), with address at No. 930 Del Monte Avenue, Damayan, San Francisco Del Monte, Quezon City,on 08 April 2008 covers the mark "CLEANERGY" for use on "vacuum cleaners, polishers" under Class 7 of the International Classification of goods.' The application was published in the Intellectual Property Philippines (IPP) E-Gazette on 31 October 2008.

The Opposer alleges the following:

"1. Section 123.1 (d) of the Intellectual Property Code (the IP Code) prohibits the registration of a trademark that is identical with or 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;

"2. Further, Section 123.1 f) in relation to Section 123.1 (a) of the IP Code prohibits the registration of a trademark that is identical with, or confusingly similar to, x x x a mark considered well-known (taking into account 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) which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection

The Nice Classification is a classification of goods and services for the purpose of registering trad emarks and service marks , based on a multilateral treaty administered by the World Intellectual Propert y 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.

Republic of the Philippines Page 1 of 6 " TNTVT I VrTIT A I PTU)PVOTV ()VVlrv

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.

"3. Additionally, following the Supreme Court's ruling in McDonald's Corporation vs. Macjoy Fastfood Corporation, the application for registration of Respondent's CLEANERGY should be rejected and dismissed outright in order to protect the goodwill which Opposer has already generated for its own CLEANERGY mark.

"4. ABOITIZ POWER CORPORATION (ABOITIZ) was incorporated in 13 February 1998. Among its primary purposes is to carryon the general business of manufacture, generation and/or transmission of electric power in accordance with existing laws, rules and regulations.

A copy of its Articles of Incorporation is attached as Exhibit A.

"5. ABOITIZ is the registered owner of the word mark CLEANERGY and the device mark CLEANERGY and Device with registration No. 4-2001-007900 (issued by this office on 13 January 2006) and 4-2002-006293 (issued on 16 July 2007), respectively.

Copies of the Certificates of Registration for the foregoing marks, respectively, are attached as Exhibits Band C.

"6. The mark CLEANERGY and CLEANERGY and Device are registered under classes 40 and 42 for power/energy generation.

"7. Beginning October 2002, ABOITIZ has continuously used the marks CLEANERGY and CLEANERGY and Device in power / energy generation.

"8. On 31 October 2008, Respondent's application for registration of its own Cleanergy mark was published in the E-Gazette of the Intellectual Property Office (IPO), for use on goods under Class 7, specifically for vacuum cleaners and/or polishers.

"9. Respondent's CLEANERGY trademark is identical to ABOITIZ's registered word mark CLEANERGY and to the word CLEANERGY in ABOITIZ's registered CLEANERGY and Device mark.

"10. ABOITIZ has never authorized Respondent to use CLEANERGY on the latter's goods or trademark.

The Opposer's evidence consists of the following:

1. Exhibit "A" - Copy of its Article of Incorporation; 2. Exhibits "B" and "C" - Copies of its Certificate of Registration for the mark

CLEANERGY and CLEANERGY and Device; 3. Exhibit "D" - Affidavit of Darlene Cuison Arguelles 4. Annexes "A Series", "B" and "C" - Photographs of a mug and samples of other

corporate giveaways; 5. Annex "D" - Poster of the 2004 World Environment Day Essay writing;f

Contest co-sponsored by ABOITIZ;

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6. Annex "E-Series" - Banners brought by participants on an Alay Lakad initiated by employee of ABOITIZ Group of Companies;

7. Annex "F" - A DVD copy; 8. Annex "G" - ABOITIZ website; and 9. Annex "H" - Issue of the Daily Mirror.

This Bureau served upon the Respondent-Applicant a Notice to Answer on 26 March 2009. The Respondent-Applicant, however, did not file an answer. Hence, Rule 2, Section 11 of the Regulation on Inter Partes Proceedings as amended, provides:

Section 11. Effect offailure to file an Answer. - In case the Respondent-Applicant fails to file an answer, or if the answer is filed out of time, the case shall be decided on the basis of the Petition or Opposition, the affidavit of the witnesses and documentary evidence submitted by the Petitioner or Opposer.

Should the Respondent-Applicant's be allowed to register the mark CLEANERGY in its favor?

It is emphasized that 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.' Thus, Sec. 123.1 (d] of the Intellectual Property Code provides that a mark cannot be registered if it:

(d) ls identical with a registered mark belonging to a different proprietor or 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) Ifit nearly resembles such a mark as to be likely to deceive or cause confusion;

Records and evidence show that at the time the Respondent-Applicant filed its trademark application on 08 April 2008, the Opposer already has an existing registration for the mark CLEANERGY and another one for CLEANERGY AND DEVICE. These registrations, issued in the years 2006 and 2007, under serial numbers 4-2001-007900 and 4-2002-006293, respectively, are still valid.

The question now are: Are the marks identical and used on the same or closely related goods or services? Or, do they resemble each other that deception or confusion is likely to occur?

2 Pribhdas J. Mirpuri v. Court ofAppeals. G.R. No. 114508. 19 November 1999.

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The competing trademarks are reproduced below for comparison:

~~ Cleane,.gyCLEANEI<GY Cleanergy

-e~

Opposer's marks Respondent-Applicant's mark

There is no doubt that, in the eyes and ears of an observer, the mark the Respondent-Applicant seeks to register is identical to the registered marks of the Opposer. There is no feature in the Respondent-Applicant's mark that effectively distinguishes it from the Opposer's.

This Office noted that the Respondent-Applicant's trademark application covers household appliances, specifically, vacuum cleaners and polishers. On the other hand, the Opposer uses its mark on power energy generation. This notwithstanding, the resemblance of the Respondent-Applicant's mark to the Opposer's will still likely cause confusion, mistake or deception.

Dissecting the mark CLEANERGY, it is obvious that it is a combination of the words "clean" and "energy". The mark connotes the utilization of safe and efficient source or form of energy, and therefore, may be considered as a suggestive mark. But it is nonetheless unique, unusual and thus, distinctive. As such, when confronted with the competing marks, a consumer will likely assume that these marks are one and the same or belonging to a common owner, or are associated with or connected to each other. Corollarily, the law does not require actual confusion, it being sufficient that confusion is likely top occur.'

That the chances of the Respondent-Applicant's mark being mistaken as belonging to or associated with or connected to the Opposer is bolstered by the fact that the Opposer has already advertised and promoted the mark. The Opposer submitted evidence on the extent of its advertisement and promotion of CLEANERGY, which includes prominently displaying its mugs, notepads, envelopes and other corporate giveaways, launching and sponsoring various activities to increase awareness of the brand like the first World Environment Day Essay Writing Contest in June 2004, displaying banners in Alay Lakad festivities, producing and showing infomercials, publications in various newspapers, and postings in websites."

3 See Philips Export BY. . et. 01.. v. Court oj Appeals. et. al.. C.R. No. 96161, 21 February 1992.

4 See Exhibit "D", Affidavit of Darlene Cuison-Arguelles, par. 7 and the Annexes.

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Aptly, the likelihood of confusion would subsist not only in the consumer's perception of goods but also on the origins thereof." In Sterling Products International Inc., v. Farbenfabriken Bayer Aktiengesellschaft, et. al;" the Supreme Court held:

Callrnan notes two types of confusion. The first is the confusion of goods in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. In which case, defendant's goods are then bought as the plaintiffs and the poorer quality of the former reflects adversely on the plaintiffs reputation. The other is the confusion of business. Here, though the goods of the parties are different, the defendant's product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact does not exist.

Accordingly, Sec. 134, IP Code, states in part that:

Section 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. x x x

In this instance, the registration of the Respondent-Applicant's mark would likely cause damage and injury to the Opposer. Not only would there be confusion or deception as to the origin of the goods with the Respondent-Applicant riding on the goodwill generated by the advertisement and promotion of the Opposer's mark. The registration in favor of the Respondent-Applicant could also forestall the Opposer's expansion of its business to goods that could be related both to the Respondent-Applicant's and to its own.

Lastly, there is nothing in the records that indicates how the Respondent-Applicant arrived at using the same mark. The Respondent-Applicant, despite the opportunity given to him, failed to explain why his mark is identical and/or similar to the Opposer's. It is incredible that the Respondent-Applicant came up with a mark that is exactly the same as the Opposer's, which is unique, unusual and distinctive, on pure coincidence and in good faith. The field from which a person may select a trademark is practically unlimited. As in all other cases of colorable imitations, the unanswered riddle is why, of the millions of terms and combinations of letters and designs available, the Appellee had to come up with a mark identical or so closely similar to another's mark if there was no intent to take advantage of the goodwill generated by the other mark.'

The Respondent-Applicant and the public is reminded that the intellectual property system was established to recognized 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.

5 See Converse Rubber Corporation v. Universal Rubber Products, Inc., at. al.,G.R. No. L-27906, 08 Janaury 1987.

6 G.R. No, L-19906, 30 April 1969. 7 American Wire & Cable Company v. Director ofPatents, G.R. No. L-26557, 18 February 1970.

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WHEREFORE, premises considered, the instant Opposition is hereby SUSTAINED. Let the filewrapper of the Trademark Application No. 4-2008-003961, together with a copy of this DECISION be returned to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

Makati City, 03 June 2010.

Director IEL S. AREVALO

Bureau of legal Affairs

PUS//}o}o /22-)an-10

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