iPINTELLECTUAL PROPERTYPHILIPPINES

LEON MAX, INC.,Opposer

TM "MAXSTUDIO COMAND DEVICE"

Decision No. 2008- /51

Appln . Ser. No. 4-2003-007120Date Filed: 08 August 2003

Opposition to :

IPC NO. 14-2007-00137Case Filed: 21 May 2007

versus

CP OPTICS INC.

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Respondent-Applicant}}

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DECISION

This is a verified NOTICE OF OPPOSITION filed by Leon Max, Inc. tothe application for registration of the mark "MAXSTUDIO COM AND DEVICE"bearing Application Serial No. 4-2003-007120 filed on August 08, 2003 byrespondent-applicant CP Optics Inc. for goods under Class 09, namely: "eyewearconsists of sunglasses, reading glasses, frames, protective glasses andspectacles", which application was published in the Trademark ElectronicGazette of the IP Philippines (IP Phil.) that was officially released for circulationon January 19, 2007 .

Opposer is a corporation organized and existing under the laws of theUnited States of America with principal office at 3100 New York Drive PasadenaCalifornia , U.S.A. Respondent-applicant is a corporation organized and existingunder the laws of the Philippines with business address at 26th Floor , 2609Cityland Pasong Tamo Tower, Makati , Philippines .

The grounds for opposition are as follows:

1. The trademark "MAXSTUDIO COM AND DEVICE " of theRespondent-Applicant so resembles the trademark"MAXSTUDIO.COM" of the Opposer that the use of "MAXSTUDIOCOM AND DEVICE " on goods in Class 09 would indicate aconnection between said goods and those of the Opposer to thedamage and prejudice of the latter's goodwill and interests. Inother words , the use of Respondent-Applicant's "MAXSTUDIOCOM AND DEVICE" will cause confusion or mistake upon , o~ u(deceive purchasers in that purchasers will tend to believe that th; I~

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

Respondent-Applicant's goods are those of, or coming fromOpposer. Hence, under Section 123 (e) and (f) and Section 147of Republic Act No. 8293 [Intellectual Property Code of thePhilippines] , the trademark "MAXSTUDIO COM AND DEVICE"cannot be registered in favor of the Respondent-Applicant.

2. Opposer has registered/applied for the registration of thetrademark "MAXSTUDIO.COM" and its variations in differentcountries of the world including the Philippines and has alreadyspent much for the advertisements and promotion of thetrademark "MAXSTUDIO.COM" and its variations. Hence,opposer's business and goodwill will clearly be damaged and willsuffer irreparable injury by the registration and use of aconfusingly similar mark "MAXSTUDIO COM AND DEVICE" bythe Respondent-Applicant.

3. The Respondent-Applicant acted in bad faith when it filed itsapplication for the registration of the mark "MAXSTUDIO COMAND DEVICE" having been aware of the prior existence of theOpposer's mark and tradename "MAXSTUDIO.COM". Of all thewords in the dictionary, why did Respondent-Applicant chose"MAXSTUDIO COM AND DEVICE" unless it tends to ride on thepopularity of the Opposer's mark or to pass to the buying public itsproducts as that of the Opposer?

4. The United States of America, the country where Opposer is amember of the Convention of Paris for the Protection of IndustrialProperty (Paris Convention) and the World Trade Organization(WTO). It is also a signatory to the Trade Related Aspects ofIntellectual Property Rights Agreement (TRIPS) . If respondent­applicant's trademark application Serial No. 4-2003-007120 isallowed to proceed to registration, the provisions of the Intellectualproperty (IP) Code of the Philippines will not only be violated butalso the commitment of the Philippines to the internationalcommunity through its accession to the Paris Convention andmembership with the World Trade Organization (WTO) and assignatory tot he trade Related Aspects of Intellectual PropertyRights Agreements (TRIPS). "

Opposer shall rely on the following facts to support its opposition:

"a. The trademark "MAXSTUDIO COM AND DEVICE" of theRespondent-Applicant is confusingly similar with the"MAXSTUDIO" of the Opposer in terms of their gener~JI!!appearance, overall impression , sound and pronunciation . II~

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b. The use by Respondent-Applicant of the confusingly similarmark "MAXSTUDIO COM AND DEVICE" on its goods wouldindicate a connection between those goods and the Opposer,thereby damaging the interests of the latter since the goods areclosely related and sold on the same channels of distribution.

c. The Opposer's trademark "MAXSTUDIO.COM" is likewiseregistered/applied for in different countries of the world .

d. The Opposer's trademark "MAXSTUDIO.COM" has beenpopularized and promoted internationally in different media ofadvertisement at the great expense of the Opposer.

e. "MAXSTUDIO.COM" is a recognized well-known mark of theOpposer not only in the United States of America but also in mostcountries of the world that are members of the Paris Convention .Hence , the Opposer is entitled to the mantle of protection affordedunder the Paris Convention provisions .

f. Considering the opposer's trademark "MAXSTUDIO.COM" isknown both locally and internationally, the Opposer deservesprotection under the Intellectual Property (IP) Code of thePhilippines , particularly Sections 123, 134, 147 and relevantSections thereof.

g. The IP Code of the Philippines mandates the rejection ofRespondent-Applicant's Trademark Application Serial No. 4-2003­007120 under the above circumstances.

h. The respondent-applicant is a known trademark poacher havingfiled similar trademark applications for registration of some well­known marks like Tag Heur, Celine Dion, New Balance, Ballybelong ing to other entities as per summary listing of Respondent­Appl icant's registrations/applications before the Intellectual PropertyOffice (IPO)."

Opposer prayed, thus , that the applicat ion for registration filed byrespondent-applicant of the mark "MAXSTUDIO COM AND DEVICE"be deniedand rejected .

On June 14, 2007, a Notice To Answer was furnished to respondent­applicant which was received by its representative , JM Medina , on said date. OnJuly 16, 2007, respondent-applicant filed a MOTION FOR EXTENSION OF TIME~

To File the Answer to the Opposition which was granted per Order No. 2007-

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1310 wherein respondent-applicant was given thirty (30) days from July 14, 2007or until August 13, 2007 within which to file a verified Answer. On August 14,2007, respondent-applicant filed a VERIFIED ANSWER TO THE OPPOSITIONwith Motion for Leave to File Certified True Copies of Exhibits. On August23, 2007, opposer filed a REPLY.

On August 31, 2007, Order No. 2007-1593 was issued declaringrespondent-applicant in default for having failed to file its verified Answer withinthe reglementary period , and the case was deemed submitted for decision.

On September 26, 2007, respondent-applicant filed a MOTION FORRECONSIDERATION OF THE ORDER OF DEFAULT essentially alleging thatthe verified Answer was given to Gerald Ocampo for filing with this Office beforelunch on August 13, 2007 but that said Gerald Ocampo's cash was not enoughfor the filing fee for which reason he called up Ivy Grace Zamora who receivedthe call but failed to send the money on time. Respondent-applicant furtheralleges that consideration should be given to the fact that it filed its trademarkapplication as early as August 08, 2003 and has complied with all therequirements pertaining to the application while the NOTICE OF OPPOSITIONwas filed on May 21, 2007 which is more than three (3) years from the date ofrespondent-applicant's application for registration of the subject mark.Respondent-applicant prays, citing jurisprudence, for a liberal application of theprocedural rules as its verified Answer but its merit will show that the oppositionshould be denied.

On October 10, 2007, opposer filed an OPPOSITION (to Respondent­Applicant's Motion for Reconsideration of the Order of Default) essentialyalleging that respondent-applicant's failure to comply with the mandatoryrequirements of Section 4, Rule 15 of the Revised Rules of Civil Procedure; thatrespondent-applicant was afforded more than enough time such that whateverdelay was caused by the legal staff of respondent-applicant's counsel wasentirely their fault ; and that Rule 2, Section 8 of the Rules On Inter PartesProceedings provides that additional period may be granted for the filing of averified Answer but that any extension shall not exceed one hundred twenty (120)days from receipt of the Notice To Answer.

On January 28, 2008 , Order no. 2008-188 was issued which deniedrespondent-applicant's MOTION FOR RECONSIDERATION OF THE ORDEROF DEFAULT and ruled that Order No. 207-1593 dated August 31, 2007declaring the case submitted for decision stands.

It should be clarified herein that though opposer filed a REPLY, suchREPLY shall not be considered in the discussion of this decision considering tha~

respondent-applicant was declared in default: Technically, there is no verified ~Answer to which a Reply may be filed .

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The issues to be resolved herein are as follows:

1. Whether respondent-applicant's mark "MAXSTUDIO COM AND DEVICE"is confusingly similar to opposer's mark "MAXSTUDIO.COM" ; AND

2. Whether respondent-applicant is entitled to the registration of the mark"MAXSTUDIO COM AND DEVICE".

Opposer's mark is depicted below as follows:

MAXSTU D IO~CO M

25 FOR CLOTHING, NAMELY, PANTS, DRESSES, JACKETS, COATS, SHIRTS, SKIRTS,BLOUSES, SOCKS AND SHOES.

Registration No. Date of Registration:(mm/dd/yyyy) 6/4/2007

Meanwhile , respondent-applicant's mark is depicted below as follows:

Application Serial No. 42003007120 filed on August 8,200309 EYEWEAR CONSISTS OF SUNGLASSES, READING GLASSES, FRAMES,

PROTECTIVE GLASSES AND SPECTACLES.

A careful perusal of both marks shows that they are confusingly similar :The mark consists of the single word "MAXSTUDIO" spelled similarly inuppercase letters, and in almost similar fonts; a meshed circular device enclose~

in semi-circular figures is drawn after the word "MAXSTUDIO"; and the word

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"COM" is written after said meshed circular device . Both marks are similarlypronounced. Visually and aurally , thus, both marks evoke the same connotationsthough they belong to different owners .

Whether by the Dominancy Test or the Holistic Test , both marks areconfusingly similar as they are pronounced in exactly the same manner and aredepicted in almost exactly the same manner.

The Dominancy Test considers the dominant features of the competingmarks or it gives greater weight to the similarity of the appearance of the productarising from the dominant features of the mark attached to said product indetermining whether such mark is confusingly similar with another mark. In theinstant case, the dominant features of both marks are the word "MAXSTUDIO"and the meshed circular device which give the same visual and aural impressionsto the public's mind in the light of the goods to which they are used respect ivelyby opposer and respondent-applicant (McDonald's Corporation v. MacJoyFastfood Corporation, G. R. No. G.R. No. 166115. February 2, 2007;McDonalds Corporation v. L. C. Big Mak, Inc., G. R. No. 143993, August 18,2004). Similarity in size, form and color, while relevant , is not conclusive. Neitherduplication/imitation, or the fact that the infringing label suggests an effort toemulate, is necessary. The competing marks need only contain the main,essential or dominant features of another; and that confusion and deception arelikely (Sterling Products International, Inc. v. Farbenfabriken BayerAktiengesselschaft, G.R. No. L-19906, April 30,1969; Lim Hoa v. Director ofPatents, G. R. No. L-8072, October 31, 1956; Co Tiong Sa v. Director ofPatents, et aI., G. R. No. L-5378, May 24, 1954).

The Holistic Test mandates that the entirety of the marks beingcompared as they appear in the respective labels must be cons idered in relationto the goods to which they are attached in determining confusing similarity. Thefocus must not only be on the predominant words but also on the other featuresappearing on both labels (Mead Johnson & Company v. N. V. J. Van Dorp,Ltd., et aI., G.R. No. L-17501. April 27, 1963). It relies on visual comparisonbetween two trademarks (Societe Des Produits Nestle, S. A. et al. v. Court ofAppeals et aI., G.R. No. 112012. April 4, 2001) . In the case at bench , the twomarks in their entirety are almost identical.

As to the first issue, thus , this Bureau rules in the affirmative.

Before this Bureau decides on the merits of the second issue, adetermination of whether or not the respective goods of opposer and respondent­applicant are closely related is in order considering that opposer has aregistration for the mark "MAXSTUDIO.COM" for "clothing, namely, pants ,dresses, jackets , coats, shirts , skirts , blouses , socks and shoes " under Class ~~iP'while respondent-applicant is applying for registration of the mark "MAX STUD/

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COM AND DEVICE" for "eyewear consists of sunglasses, reading glasses,frames , protective glasses and spectacles" under Class 09.

Though they fall under different classes, opposer's and respondent­applicant's respective goods are closely related: 1) They essentially serve thesame or complementary purpose; and 2) It might be reasonably assumed thatthey originate from one manufacturer (ESSO Standard Eastern, Inc. v. Court ofAppeals, et aI., G.R. No. L-29971, August 31, 1982). Moreover, althoughgoods may be non-competing because they have different descriptive properties,they may still be considered as related if the simultaneous use on them ofidentical or closely similar trademarks would be likely to cause confusion as tothe origin, or personal source , of the second user's goods (Ang. V. Teodoro,G.R. No. 48226, December 14, 1942).

In the instant case , opposer's and respondent-applicants' respective goodsare articles for use on the body worn to complement each other. Using certaineyewear with particular clothing apparel is often done out of necessity, practicalconsiderations, or aesthetic values . For instance , the use of protective glasseswith cloth ing apparel of specific material for certain jobs or lines of work iscommon in these modern times. Sunglasses are worn during outdoor activitiesand the clothing apparel to match therewith depends on the occasion : Forinstance , watching a tennis game would necessitate the wearing of sunglasses.Certain kinds of glasses are simply worn with certain clothing apparel not out ofnecessity or practical considerations but simply out of personal aestheticreasons : For instance, it is not uncommon for some people to wear certaindesigns of eyewear simply to match their clothing for specific occasions, such asparties or specially designated events. Opposer's and respondent-applicant'sgoods , thus , have the same descriptive characteristics or physical attributes, andthey essentially serve the same or complementary purpose.

Section 123.1 (d) of the IP Code provides :

"A mark cannot be registered if it:

(d) Is identical with a registered mark belonging to a differentproprietor . . . in respect of:

i. The same goods . . . or

ii. Closely related goods . . . or

iii. If it nearly resembles such a mark as to likely to deceive orcause confusion . . ."

In the case at bench, opposer was issued Registration No.42004002872 on June 04,2007 for the mark "MAXSTUDIO.COM" with which , asearlier ruled , respondent-applicant's mark is confusingly similar for goods under A4!

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Class 25, namely , "clothing, namely, pants, dresses, jackets, coats , shirts , skirts ,blouses, socks and shoes", to which, as discussed, respondent-applicant'sgoods , namely, "eyewear consists of sunglasses, reading glasses , frames,protective glasses and spectacles" under Class 09 are closely related. In view ofSection 123.1 (d) of the IP Code, respondent-applicant's application forregistration of the mark "MAXSTUDIO COM AND DEVICE" may not be granted .Further, Section 138 of the IP Code provides that a certificate of registration of amark shall be prima facie evidence of the validity of the registration , theregistrant's ownership of the mark, and the registrant's exclusive right to use thesame in connection with the goods or services and those that are related theretospecified in the certificate. The prima facie presumption in this case has not beenoverturned by respondent-applicant.

As to the second issue, thus, this Bureau rules in the negative .

WHEREFORE, premises considered, the verified NOTICE OFOPPOSITION is hereby SUSTAINED. Accordingly, Application Serial No.4-2003-007120 filed on August 08, 2003 by respondent-applicant CP Optics Inc.for goods under Class 09, namely: "eyewear consists of sunglasses, readingglasses, frames, protective glasses and spectacles ", is, as it is, herebyREJECTED.

Let the filewrapper of this case be forwarded to the Bureau ofTrademarks (BOT) for appropriate action in accordance with this Decision .

SO ORDERED.

Makati City, August 21, 2008.

UJ--EST L1TA BELTRAN-ABELARDO

ir ctor, Bureau of Legal Affairs

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