INTELLECTUAL PROPERTYPHILIPPINES

Santa Barbara Polo & Racket Club, } Inter Partes Case No., 14-2007-00129Opposer, } Opposition to:

} Application Serial No. 4-2004-003258-versus- } Date Filed: 6 April 2004

} Trademark: "SANTA BARBARAAlexander Uy, } & DEVICE"

Respondent-Applicant. } Decision No. 2008 -- 1t.Px------------------------------------------------x

DECISION

For decision is the Notice of Opposition filed by Santa Barbara Polo & Racket Cluba corporation organized and existing under the laws of the United States, with principaloffice at 3375 Foothill Road, Carpinteria, California 93103 , United States , hereinafterreferred to as opposer, against Application Serial No. 4-2004-003258 for trademark "SantaBarbara and Device" for goods under Classes 3, 18, 32 filed by Alexander Uy, Filipinocitizen, with address at 1093 General San Miguel, Sangandaan, Caloocan, Metro Manila ,hereinafter referred to as respondent-applicant.

The grounds for the opposition are as follows :

"1. At the outset, Opposer SANTA BARBARA invokes that themark "SANTA BARBARA POLO & RACQUET CLUB is the housemark of said Club, which was established in the United States ofAmerica ("U.S.A.") in 1911 as "the third oldest continuouslyoperating club in the United States, with space for more than 350horses, an arena for teaching and intercollegiate games, and world­class fields ", Applicant-Club is "a force in the polo world. " Attachedhereto and marked as Exhibit "A" is a copy of the 2006 SantaBarbara Polo Magazine with an article on the history of theApplicant-Club.

2. Opposer SANTA BARBARA is also the exclusive owner, byprior trademark registration and considerable prior adoption anduse, of the following trademark:

Mark SANTA BARBARA &DEVICEPOLO & RACQUET CLUB

Registration No. 4-1997-124286Date Registered 4 July 2002

Registrant D14avid

CUmming~ ~'A;/

Class , I j"Y" 0

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines • www.ipophil.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

A Certified true copy of Philippine Certificate of Registration No. 4­1997-124286 is attached hereto and marked as Exhibit "B" .

2.1 Mr. David Cummings, the registrant of the above-cited markis the former General Manager of Opposer SANTA BARBARA. Mr.Cummings filed the application for registration of the above mark onbehalf of the Company.

2.2 The aforesaid facts are confirmed by Mr. Louis Lee, owner ofInterasia & Associates (Holdings) Company, Ltd. ("InterasiaHoldings"). Interasia Holdings has been granted exclusive rights torepresent Opposer SANTA BARBARA and to conduct relatedtrademark licensing and merchandising business in the Asianregion.

Attached hereto and marked as Exhibit "C" is the Certificationfrom Mr. Louis Lee relative to the mark "SANTA BARBARA &DEVICE POLO AND RACQUET CLUB" registered by its formerGeneral Manager, Mr. Cummings, for goods under Class 14.

3. Opposer SANTA BARBARA is also the assignee of thefollowing trademark application :

Mark

Application No.Date FiledApplicant

Class

SANTA BARBARA POLO& RACQUET CLUB

4-1997-11716322 January 1997Interasia & Associates(Taiwan)

25

3.1 Attached and marked as Exhibit "0" is a copy of theAssignment of Application for Registration of Trademark("Assignment") executed by Interasia & Associates (Holdings)Company, Ltd. On 5 March 2007 in favor of the General Managerof the Applicant-Club, Mr. Thomas Narozonick, duly received andstamped by this Honorable Office on 28 March 2007.

4. Interasia & Associates (Taiwan), the applicant of the above­cited mark, is a branch office of Interasia Holdings. The exclusiverights of Interasia Holdings to represent Opposer SANTABARBARA in the Asian Region were granted by Interasia &Associates (U.S.A) Inc. The latter company has a master licenseagreement for the trademark interests of SANTA BARBARA, whichwas granted by Omni Licensing Network, Ltd., the representative ofthe worldwide trademark licensing interests of SANTA BARBARA.

Attached and marked as Exhibit "E" is a copy of the Certificationh~'tY'Letter on the aforesaid corporate relationships, /", /'"

2

5. The trademark "SANTA BARBARA POLO & RACQUETCLUB" is well-known internationally and is also registered inseveral foreign jurisdictions, for Class 9, 14, 18, 25 goods, in thename of SANTA BARBARA. Among said foreign jurisdictions are:Hongkong, Singapore, Thailand, Taiwan and the U.S.A.

5.1 A representative sampling of legalized/certified copies offoreign Certificates of Registration for the trademark "SANTABARBARA POLO & RACQUET CLUB" (and their accompanyingEnglish translations, where applicable), are attached hereto andmarked as Exhibits "F-series".

6. The trademark "SANTA BARBARA POLO & RACQUETCLUB" is an original coined word mark created and first used byOpposer SANTA BARBARA. It is unique to the Opposer as itrelates to the club it operates and no other company haslegitimately used this mark before.

7. As shown, among others, by the documents attached hereto,Opposer SANTA BARBARA is the owner by prior adoption andwidespread international use of the subject trademark. Thus ,Respondent-Applicant's copycat "SANTA BARBARA & DEVICE"mark which is being applied for registration for goods unrelated tothe sport of polo, e.g. cosmetics, bags, beverages, should bedenied registration.

8. Republic Act No. 8293 , otherwise known as the IntellectualProperty Code of the Philippines ("IP Code"), provides:

"Sec. 123. Registrability -123.1. A mark cannot be registered if it:

(d) Is identical with a registered mark belonging to a differentproprietor or a mark with an earlier filing or priority date, in respectof:

(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 likelyto deceive or cause confusion; [Underscoring supplied.]

9. Respondent-Applicant's "SANTA BARBARA & DEVICE"mark closely resembles Opposer's "SANTA BARBARA &DEVICE POLO & RACQUET CLUB" trademark, which hasalready been registered on 4 July 2002. Respondent-Applicant's spelling and use of the word "SANTA BARBARAo/" ~is exactly the same as that of the Opposer's registeredtrademark. In addition, Opposer's and Respondent's

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trademarks, when pronounced, are likewise substantially similar.Thus, even if the use of Respondent-Applicant's "SANTABARBARA & DEVICE" is on a different class of goods (specificallyClasses 3, 18, and 22), still, it will deceive or cause confusion onthe part of the relevant consuming public who may be led to believethat the source of goods sold by Respondent-Applicant came from,are connected with or were manufactured by Opposer SANTABARBARA. A comparison of Opposer's and Respondent­Applicant's trademark appears below:

(\iBAR8~ '-1- ' , ~

'-1' . '7

POLO ~, R.ACOUETCLUB '

(Respondent-Applicant's(Opposer's trademark)trademark)

10. The use by Respondent-Applicant of the words "SANTABARBARA & DEVICE" in its trademark, as well as its use of theillustration of a man riding a horse with the head of the rider's polomallet position in between the words SANTA-BARBARA, closelyresembles and, in fact, appears to be a slavish copy and imitationof the dominant feature of Opposer's "SANTA BARBARA &DEVICE POLO & RACQUET CLUB" registered trademark. Assuch, Respondent-Applicant's use of the dominant feature ofOpposer's "SANTA BARBARA & DEVICE POLO & RACQUETCLUB" registered trademark is likely to confuse and deceive therelevant consuming public.

11. Pertinently, Section 155.1 of the Intellectual Property Codeprovides that any person who shall, without the consent of theowner of the registered mark:

"155.1. Use in commerce any reproduction, counterfeit, copy,or colorable imitation of a registered mark or the samecontainer or a dominant feature thereof in connection with thesale, offering for sale, distribution, advertising of any goods orservices including other preparatory steps necessary to carry outthe sale of any goods or services on or in connection with whichsuch use is likely to cause confusion, or to cause mistake, or todeceive ;

155.2. xxx shall be liable in a civil action for infringement by theregistrant for the remedies hereinafter set forth: Provided, that theinfringement takes place at the moment any or the acts stated inSubsection 155.1 . or this subsection are committed regardless o~/ .lwhether there is actual sale of goods or services using the ~' \

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infringing material."

12. In McDonald's Corporation, et aI., vs. L.C. Big MakBurger, Inc., et aI., G.R. No. 143993, August 18, 2004, theSupreme Court held that:

"In determining the likelihood of confusion, jurisprudence hasdeveloped two tests, the dominancy test and the holistic test. Thedominancy test focuses on the similarity of the prevalentfeatures of the competing trademarks that might causeconfusion. In contrast, the holistic test requires the court toconsider the entirety of the marks as applied to the products,including the labels and packaging, in determining confusingsimilarity.

This Court, however, has relied on the dominancy test ratherthan the holistic test. The dominancy test considers thedominant features in the competing trademarks in determiningwhether they are confusingly similar. Under the dominancytest, courts give greater weight to the similarity of theappearance of the product arising from the adoption of thedominant features of the registered mark, disregarding minordifferences. Courts will consider more the aural and visualimpressions created by the marks in the public mind, givinglittle weight to factors like prices, quality, sales outlets andmarket seqrnents,

The test of dominancy is now explicitly incorporated into law inSection 155.1. of the Intellectual Property Code which definesinfringement as the 'colorable imitation of a registered mark xxx or adominant feature thereof.'" [Underscoring supplied.]

13. Applying the dominancy test here, Respondent-Applicant's"SANTA BARBARA & DEVICE" mark results in likelihood ofconfusion . First, Respondent-Applicant's "SANTA BARBARA &DEVICE" is exactly the same as Opposer's "SANTA BARBARADEVICE POLO & RACQUET CLUB", except for the omission of thewords "POLO & RACQUET CLUB". Second, Respondent­Applicant's use of an illustration of a man riding a horse whileplaying polo with the polo mallet arched in such a way as to havethe mallet head positioned right between the words SANTA &BARBARA is identical with the illustration used by the Opposer inits registered trademark . In fact, except for a few minor detailswhich are not visibly noticeable , the illustration used by theRespondent-Applicant in its mark "SANTA BARBARA & DEVICE" isvisually the same as that of Opposer's.

14. Moreover, Section 123 of the Intellectual Property Code ofthe Philippines (Republic Act No. 8293, hereafter "'P Code")~~

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also provides:

"Sec. 123. Registrability. - 123.1 A mark cannot be registered if it:

x x x

(e) Is identical with , or confusingly similar to, or constitutes atranslation of a mark which is considered by the competentauthority of the Philippines to be well-known internationally andin the Philippines, whether or not it is registered here, as beingalready the mark of a person other than the applicant forregistration, 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 ofthe public, rather than of the public at large, including knowledge inthe Philippines which has been obtained as a result of thepromotion of the mark; x x x"[Underscoring supplied .]

15. Meanwhile, Rule 102 of the Rules and Regulations onTrademarks, Service Marks, Trade Names and Marked or StampedContainers provides:

"Rule 102. Criteria for determining whether a mark is well -known. Indetermining whether a mark is well-known, the following criteria orany combination thereof may be taken into account:

(a) the duration, extent and geographical area of any use of themark, in part icular, the duration, extent and geographical area ofany promotion of the mark, including advertising or publicity and thepresentation, at fairs or exhibitions, of the goods andlor services towhich the mark applies;

(b) the market share, in the Philippines and in other countries, ofthe goods andlor 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 theworld;

(f) the exclusivity of registration attained by the mark in theworld;

(g)

(h)

(i)

the extent to which the mark has been used in the world ;

the exclusivity of use attained by the mark in the world;

the commercial value attributed to the mark in the-:~

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U) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the issue of whetherthe mark is a well-known mark; and

(I) the presence or absence of identical or similar marks validlyregistered for or used on identical or similar goods or services andowned by persons other than the person claiming that his mark iswell-known mark."

16. Based on the foregoing criteria, Opposer SANTA BARBARAsubmits that its subject trademark is indeed well-known bothinternationally and in the Philippines.

16.1 To establish the duration, extent and geographical area ofthe promotion of Opposer's subject trademark, as well as reputationand commercial value thereof, attached hereto and marked asExhibits "G" to "G-13" are copies of: (a) magazine ads forOpposer's mark in foreign magazines such as Gateway (InflightMagazine), GQ (Taiwan), ETC (Malaysia), Men and Women(Malaysia), and Look (Philippines); (b) newspaper ads forOpposer's mark in Gulf News ( a Dubai periodical), and ThePhilippine Star ( a Philippine periodical) ; and © other promotionalmaterials such as brochures and catalogues .

16.2 To establish Opposer's successful protection of itsintellectual property rights over the subject trademark, attached andmarked as Exhibits "G-14" to "G-18" are photocopies ofjudgments in the Opposer's favor from infringement actionsinstituted by it, specifically in Indonesia and Korea.

16.3 To establish the worldwide prior adoption and use of thesubject trademark, attached and marked as Exhibit "H" is theaffidavit of Gilbert Raymund T. Reyes, an account partner inPoblador Bautista & Reyes, the trademark agent of SANTABARBARA in the Philippines.

17. Altogether, Opposer is known, both locally and abroad, forthe prior adoption and widespread international use of the mark"SANTA BARBARA POLO & RACQUET CLUB" which consists of apolo player mounded on a horse with the words "SANTABARBARA" above and "RACQUET CLUB" below. Opposer hasendeavored to protect and is, in fact, entitled to the protection ofsuch reputation . Opposer's trademarks, particularly 'SANTABARBARA & DEVICE POLO & RACQUET CLUB" and "SANTABARBARA POLO & RACQUET CLUB" is almost identical toRespondent-Applicant's "SANTA BARBARA & DEVICE". Theregistration of Respondent-Applicant's "SANTA BARBARA &DEVICE" is thus likely to mislead the public into believing that theproducts sold by the Respondent-Applicant on which it is used 1(;.sv ..J~also manufactured and sold by the Opposer. As a consequence, r \

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Respondent-Application's trademark application for "SANTABARBARA & DEVICE" should be rejected pursuant to Sec. 123.1(d)and (e) of the IP Code ."

Opposer submitted the following evidence:

Exhibit

"A"

"B"

"e"

ltD"

liE"

"F JJ

"G"

UH"

DESCRIPTION

Application 4-2005-009932 filing date October 7,2005

Cert of Reg. 4-1997-124286 David Cummings dated July 4,2002 (class 14) filing date Sept. 2, 1997

Authentication

Assignment of TM Application

Certification letter

Certificates of foreign registration of opposer's mark

Magazine advertisements; foreign judgments

Affidavit of Gilbert Reyes

A Notice to Answer dated 30 May 2007 was received by the respondent­applicant's on 13 June 2007 to which he filed his Answer raising the followingaffirmative and special allegations/defenses, to wit:

"1. Respondent-applicant is the registered owner and authorizeduser in the Philippines of the trademark SANTA BARBARA &Representation of a Man Riding a Horse as used on t-shirts, polo shirts,pants, jackets, socks, jeans, sando and brief in International Class 25under Certificate of Registration No. 060659 issued on 19 May 1995 whichis still valid and effective to date ;

2. Respondent-applicant is also the first user in the Philippinesof the trademark SANTA BARBARA & Representation of a Man Riding aHorse as used on goods falling in International Classes 3, 18, and 32;

3. Respondent-applicant filed on 06 April 2004 an application toregister the trademark SANTA BARBARA & Device for InternationalClasses 3, 18, and 32 goods, which is the application subject of the instantopposition action ;

4. Respondent-applicant has built a substantial business on itsSANTA BARBARA products and has spent and will continue to spendconsiderable sums of money and effort in advertising and promoting itsSANTA BARBARA products without having made the least attempt topalm-off its goods as emanating or associated in any way with the

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opposer;

5. The foregoing allegations are reproduced and repleadedherein by way of reference;

6. Opposer has no cause of action against the respondent-applicant and has no valid and justifiable legal ground to oppose theregistration of respondent-applicant's trademark SANTA BARBARA &Device;

7. Opposer's trademark has not been declared by a competentauthority of the Philippines to be "well-known" internationally and in thePhilippines;

8. It is crystal clear that the institution of the present VerifiedOpposition is downright premature in the absence of an expressedacknowledgment from a competent Philippine government agency thatopposer's trademark has attained worldwide fame and recognition;

9. More importantly, the registration of the mark SANTABARBARA & Device in the name of the respondent-applicant will not likelymislead the buying public on the nature and origin of the goods becauseopposer has not used the said mark in the Philippines for InternationalClasses 3, 18, and 32 goods. Opposer's conspicuous absence in thePhilippine cosmetics, leather goods and beverage markets precludes anyclaim of confusion to the consumer;

10. The truth is, respondent-applicant has every right to registerthe trademark SANTA BARBARA & Device in the Philippines because itsuse and ownership of the said trademark in this country predates that ofthe opposer;

11. Respondent-applicant is the true and rightful owner of themark SANTA BARBARA & Device in the Philippines by reason of his prior,actual and absolute use of the mark in the concept of owner and his beingthe first to file for the registration of the same in the Philippines for class 3,18 and 32 goods;

12. The application for registration of the trademark SANTABARBARA & Device was allowed by the Bureau of Trademarks inaccordance with the provisions of Republic Act No. 8293 andimplementing rules with respondent-applicant complying and completingall the pertinent requirements for registration and after the closest scrutinyand examination conducted by the Trademark Examiner and the Directorof that Bureau;

13. Respondent-applicant adopted and started the use of thetrademark SANTA BARBARA & Device in good faith;

14. Opposer is barred by equitable principles of acquiescence(~

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estoppel and laches from opposing the registration of the trademarkSANTA BARBARA & Device."

Respondent-applicant submitted the following evidence:

EXHIBIT

"1 ""2"

DESCRIPTION

Affidavit of Alexander UyCertificate of Registration

A preliminary conference was set on 14 August 2007 but no amicable settlementwas obtained between the parties. The issue is whether the contested mark SANTABARBARA & DEVICE and opposer's SANTA BARBARA POLO & RACQUET CLUBMARK are confusingly similar. Another issue is whether opposer's mark is a well-knownmark. The marks of the parties are reproduced hereunder as follows:

+,r~,A·R8--1~ ~~'-c~~_'7

POLO (" Rfi(OUETCLUB'

Opposer's mark Respondent-applicant's mark

Evidence show that the respondent-applicant's mark SANTA BARBARA &REPRESENTATION OF A MAN RIDING A HORSE has been registered in thePhilippines under Certificate No. 60659 as early as 19 May 1995 for goods under class25 namely "t-shirts, polo shirts, pants, jackets , socks, jeans , sando and briefs". Thesame certification show that affidavits of use has been recorded. In this regard , thecertificate stands as evidence of the validity of registration and ownership of the mark.Under Republic Act 166, the law under which the certificate was issued. Section 20provides:

"Section 20. Certificate of registration prima facie evidence of validity. - Acertificate of registration of a mark or trade-name shall be prima facieevidence of the validity of the registration, the registrant's ownership of themark or trade-name, and of the registrant's exclusive right to use the same inconnection with the goods, business or services specified in the certificate,subject to any conditions and limitations stated therein."

On the other hand, Opposer submits that it has prior adoption and use of themark SANTA BARBARA & DEVICE POLO & RACQUET CLUB in the Philippines asevidenced by Certificate of Trademark Registration No. 4-1997-124286 for goodsunder class 14 namely: "watches, clocks, watch bands, watch chains, and watchcases" registered in the name of David Cummings (Exhibit "B") dated 4 July 2002.Opposer also claims to have a pending application for the same mark unde~~A~

Application No. 4-1997-117163 by applicant Interasia & Associates (Taiwan) tOj ~ (0"- \

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Application No. 4-1997-117163 by applicant Interasia & Associates (Taiwan) forgoods under Class 25 and assigned to opposer as evidenced by a certificate(Exhibit "D").

Comparing the marks of both parties , it appears that both the representationof a man on horse and the word component of the mark "SANTA BARBARA" areidentical or at least almost similar to each other. However , the words "POLO &RACQUET CLUB" also prominently displayed at the bottom of the device consistingof a man on a horse is absent in respondent-applicant's mark.

With this factual scenario , respondent-applicant now filed an application for its markSANTA BARBARA & DEVICE for goods under Class 3, 18 and 32. The goods for whichrespondent-applicant's mark is being applied for are the following:

"Cosmetics, namely, adhesives for attaching artificial fingernails andlor eyelashes,aftershave lotions, antiperspirants, artificial eyelashes , artificial fingernails, baby oil, babypowder, baby shampoo , bath gel, bath oil, bath powder, non-medicated bath salts, beautymasks, blusher, body cream, body oil, body powder , breath freshener, bubble bath, skincleansing lotion, cold creams, cologne , compacts, hair conditioners, cosmetic pencils ,cotton for cosmetic purposes, cotton puffs for cosmetic purposes, cotton sticks forcosmetic purposes, cotton swabs for cosmetic purposes , body cream, eye cream, hairremoving cream, hand cream, night cream, shaving cream, skin cleansing cream, skincream, vanishing cream, cuticle removing preparations, deodorant soap, deodorants andantiperspirants, depilatory creams, enamel for nails, essential oils for personal use,essential oils for use in manufacturing of cosmetics , eye cream, eye makeup, eye makeupremover , eye pencils, eye shadow, eyeliners , face powder, facial scrubs, non-medicatedfoot powder, foundation makeup, hair gel, shaving gel, shower gel, tooth gel, lip gloss, hairbleaching preparations, hair care preparations [non-medicated], hair cleaningpreparations, hair color removers , hair conditioners , hair dressings for men, hair dye, hairlighteners, hair relaxing preparations, hair rinses, hair shampoos, hair spray, hairstraightening preparations, hair styling preparations, hair waving lotion, hydrogen peroxidefor use on the hair, incense, non-medicated lip balm, lipstick, lotions for skin, hair, facial orbody makeup, facial makeup, mascara, massage oil, skin moisturizer, mouthwash,mustache wax, nail buffing preparations, nail care preparations, nail enamel, nail groomingproducts (namely , tips, glue, lacquer and glitter), nail hardeners, nail polish, nail polishbase coat, nail polish remover, nail polish top coat, nail strengtheners, false nails, nightcream, perfume , hair pomades, pre-moistened cosmetic tissues , pre-moistened cosmetictowelettes, pre-moistened cosmetic wipes, rouge, baby shampoo, skin clarifiers, skincleansing cream, skin cleansing lotion, skin moisturizer, skin soap, skin toners , liquidsoaps for hands, face and body, sunblock preparations, sun screen preparations, talcumpowder, tooth gel, tooth paste, and wrinkle removing skin care preparations in internationalclass 3; bags, game bags, bags for campers , bags for climbers, bags for packaging, beachbags, belts, briefcases, leather cases, pocket wallets, purses, chain metal purses (not ofprecious metal), collars for animals , covers for animals, sport bags, waist bags, pouches,pouches toiletries bags, shoe bags, racket bags, laundry bags, handbags, haversacks,music cases, shoulder bags, rucksacks , school satchels , school bags, shopping bags,sling bags for carrying infants, traveling bags, traveling trunks, umbrellas, beach parasols,umbrella covers in international class 18; and, aerated water; beverages (nOn-aICOhOliC)~lbeverages (preparations for making); fruit flavoured beverages (non-alcoholic); fruit juiceI I;d"0~

11

beverages (non-alcoholic); oxygenated water; oxygenated flavoured water; water fordrinking; water purified by reverse osmosis in international class 32."

Respondent-applicant has in his favor the priority of use of the mark inrelation to goods under class 25. Opposer on the other hand's SANTA BARBARA& DEVICE POLO & RACQUET CLUB has a registration obtained for goods underclass 14. The goods for which the marks are used are for dissimilar or unrelatedgoods. The Supreme Court defined related goods in Esso Standard Eastern v. CA(116 SCRA 336) It held:

"Goods are related when they belong to the same class or have the samedescriptive properties; when they possess the same physical attributes oressential characteristics with reference to their form composition, texture, orquality. They may also be related because they serve the same purpose xxx"

The High Court further elucidates this theory in Mighty Corporation and LaCampana Fabrica de Tabaco, Inc. v. E. & J. Gallo Winery and the Andresons Group, Inc.(GR. No. 154342. July 14, 2004.]. It ruled:

"In resolving whether goods are related, several factors come into play:(a) the business (and its location) to which the goods belong(b) the class of product to which the goods belong(c) the product's quality, quantity, or size, including the nature of the package, wrapper

or container(d) the nature and cost of the articles(e) the descriptive properties , physical attributes or essential characteristics with

reference to their form, composition, texture or quality(f) the purpose of the goods(g) whether the article is bought for immediate consumption, 100 that is, day-to-day

household items(h) the fields of manufacture(i) the conditions under which the article is usually purchased andU) the channels of trade through which the goods flow, how they are distributed,

marketed, displayed and sold."

Moreover, assuming the marks are identical, the mere fact that a mark hasbeen adopted by the one person does not prevent the adoption of the same markfor dissimilar goods.

In Philippine Refining Co., Inc. v. Ng Sam GR. No. 1-26676. 30 July 1982., theSupreme Court explained:

"A rudimentary precept in trademark protection is that "the right to atrademark is a limited one, in the sense that others may use the samemark on unrelated goods (Sec. 221 J Nims, Unfair Competition and TradeMark, Vol. 1, p. 657). Thus, as pronounced by the United States SupremeCourt in the case of American Foundries v. Robertson (269 US 372, 381,70 Led 317,46 Set. 160), "the mere faetthat one person has adopted an1~

12

used a trademark on his goods does not prevent the adoption and use ofthe same trademark by others on articles of a different description ." Suchrestricted right over a trademark is likewise reflected in our TrademarkLaw. Under Section 4(d) of the law, registration of a trademark which soresembles another already registered or in use should be denied, whereto allow such registration could likely result in confusion , mistake ordeception to the consumers. Conversely, where no confusion is likely toarise, registration of a similar or even identical mark may be allowed."

As earlier noted, the goods for which the marks are to be applied are not the same.Respondent-applicant adopted his mark for goods under Class 25 since 1990 and isapplying for the same mark for goods under Classes 3, 18 and 32 while Opposer hasregistration for goods under class 14. The goods for both parties use their marks varyfrom clothes, t-shirts , to watches, cosmetics , bags and beverages.

However, the Bureau also observed that opposer submitted in evidence itspending application registration of its SANTA BARBARA mark for goods underClass 25, the same as the class of goods for which the respondent-applicant hasshown evidence of his registration . Be that as it may, the instant proceedingconcern application for goods under class 3, 18 and 32. Opposer argues that it isowner of the "SANTA BARBARA" mark by prior registration and that it is well-knownand therefore, there is a likelihood of confusion by the respondent-applicant's use ofthe mark. The Supreme Court developed two tests in determining confusingsimilarity, the holistic test and the dominancy test. In Mighty Corporation and LaCampana Fabrica de Tabaco, Inc. vs. E. & J. Gallo Winery and the AndresonsGroup, Inc., G.R. No. 154342. July 14, 2004, the Supreme Court explains:

"Jurisprudence has developed two tests in determining similarity andlikelihood of confusion in trademark resemblance :

(a) the Dominancy Test applied in Asia Brewery, Inc. vs. Court of Appealsand other cases and(b) the Holistic or Totality Test used in Del Monte Corporation vs. Court ofAppeals and its preceding cases.

The Dominancy Test focuses on the similarity of the prevalent features of thecompeting trademarks which might cause confusion or deception , and thusinfringement. If the competing trademark contains the main, essential ordominant features of another, and confusion or deception is likely to result,infringement takes place. Duplication or imitation is not necessary; nor is itnecessary that the infringing label should suggest an effort to imitate. Thequestion is whether the use of the marks involved is likely to cause confusionor mistake in the mind of the public or deceive purchasers ."

Applying these tests, we believe that the dominant portion of the opposer's mark isthe whole word mark, SANTA BARBARA and devise of a man riding the horse, not theseunits taken separately. Notwithstanding the lack of the words POLO RACQUET CLUBunderneath the representation of a horse, both marks are strikingly similar and their usefor identical goods will lead to a probability of confusion. Yet, we have earlier declaredtha~

13

the goods upon which these similar marks are used are totally unrelated which dispels theprobability of confusion given their contemporaneous use.

As regard to opposer's assertion that its mark is well known , this Bureau finds thesame devoid of merit. The law states:

"Sec. 123, Registrability. 123.1 A mark cannot be registered if it:

x x x

(e) Is identical with, or confusing similar to, or constitute atranslation of a mark which is considered by the competentauthority of the Philippines to be well-known internationally and inthe Philippines, whether or not it is registered here, as beingalready the mark of a person other than the applicant forregistration, and used for identical or similar goods or services:Provided, That in determining whether a mark is well-known, accountshall be taken of the knowledge of the relevant sector of the public,rather than of the public at large, including knowledge in thePhilippines which has been obtained as a result of the promotion ofthe mark;

"RULE 102. Criteria for determining whether a mark is well-known,- Indetermining whether a mark is well known, the following criteria or anycombination thereof may be taken into account:

a) the duration, extent and geographical area of any use of the mark, inparticular, the duration, extent and geographical area of anypromotion of the mark, including advertising or publicity and thepresentation, at fairs or exhibitions, of the goods and/or services tpwhich the mark applies;

b) the market share, in the Philippines and in other countries, of thegoods, 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; andI) the presence or absence of identical or similar marks validly

registered for or used on identical or similar goods or services ownedby persons other than the person claiming that his mark is a well~.jknown mark." I I /" ~

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Opposer claims that the Santa Barbara Polo Club was formed in California USA asearly as 1911. It has since then continued to operate the club successfully. (Exhibit "A").the mark was devised in 1972 and used by the polo club in 1982. It claimed to have beenintroduced in Asia in 1990. (Exhibit "H") It has advertised the mark abroad and (Exhibit G")and obtained registrations in various countries (Exhibit "F").

Inspite of this, the fact remains that since 1995, when respondent-applicantregistered his mark, opposer has not made an impact on the Philippine market. Its historycannot compensate for its lack of distinction and fame for the use of its mark in thePhilippines or in other countries that shall sustain a finding of its well-known status as amark for goods under class 3, 18, 32 or 25, internationally and in the Philippines incompliance with the requirements of Philippine law. Therefore, it cannot be consideredinternationally well-known.

WHEREFORE, premises considered the OPPOSITION filed by Santa Barbara Polo& Racquet Club, opposer is hereby DENIED. Accordingly, Application Serial No. 4-2004­003258 filed by Respondent- Applicant, Alexander Uy on 6 April 2004 for registration ofthe mark "SANTA BARBARA & DEVICE" used on goods under Classes 3, 18, 32, is as itis, hereby GIVEN DUE COURSE.

Let the filewrapper of "Santa Barbara Polo & Racquet Club", subject matter of thiscase together with this Decision be forwarded to the Bureau of Trademarks (BOT) forappropriate action .

SO ORDERED.

Makati City, 18 March 2008.

ES LLITA BELTRAN -ABELARDO .1AD· ector, Bureau of Legal Affairs !y ~

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