•·~ .L . " . , ' INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES HANSA ARMATUREN GmbH, IPC No. 14-2018-00143

Opposer, Opposition to: Appl. No. 4-2017-015766

-versus- Date Filed: 29 September 2017 Trademark: JJHANVA"

ZHENPENG WU, Respondent-Applicant.

Decision No. 2019- :J.q()x------------------------------------------------------x

DECISION

HANSA ARMATUREN GMBHl ("Opposer") filed an opposition to Trademark Application Serial No. 4-2017-015766. The application, filed by Zhenpeng Wu2

("Respondent-Applicant"), covers the mark "HANVA" for use on "faucets, shower head, angle valve as bath plumbingfixtures, shower valve, kitchen sink heating and lavatories" under Class 11 of the International Classification of Goods and Services.f

The Opposer alleges: x x x

"23 . In the Philippines, opposer is the owner-registrant of the mark HANSA under International Class 11, the particulars of which are as follows: x x x

"24. The foregoing shows that opposer's mark HANSA was applied for regi stration as earl y as May 4, 2012 and was in fact registered as early as August 30,2012. It bears to emphasize that this was long before respondent-applicant filed his application for the registration of his nearly identical and at the very least, confusingly similar mark HANVA on September 29, 2017.

"25. Under Section 123.1, subparagraph (d) of the IP Code, it is explicitly provided that a mark which is identical with a registered mark or nearly resembles such a mark cannot be registered, thus: x x x

"26. Here, by virtue of opposer's prior application, registration and use of the trademark HANSA in the Philippines, which predate the filing of respondent-applicant's trademark application for HANVA by at least five (5) years, the trademark HANSA has become distinctive of opposer's goods and business. Clearly, opposer has superior and exclusive rights over the registered mark HANSA and other marks that nearly resembles such a mark as to be likely to deceive or cause confusion. Evidently,respondentapplicant's HANVA nearly resembles opposer's registered mark HANSA.

I A fore ign co rporation o rganized under the laws of Germ an y. . ' A natural person with address on record at Metro Manila , Philipp ines. . ~ 3The Nice Class ifica tio n is a classi fication of goods and ser vices for the purp ose of registering trademark and se rvice marks, based on multilater al treaty adm inistered by the World Intellectual Property Or ganization. The treaty is called the Nice Agreement Concern ing th International Classificatio n of Goods and Services for the Purposes ofthc Registrat ion of Marks concluded in 1957 .

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www.ipophil.gov.ph Intellectual Property Center #28 Upp er McKinley Roade ma il@ipophil.gov.ph Mckinley HillTown Centere +632-2386300 Fort Bon ifac io. Taguig City

.+632-5539480 1634 Philippines

x

"27. To be sure, under Section 147 of the IP Code, the opposer as the registered owner of the mark HANSA, has the exclusive right to prevent all third parties not having its consent from using in the course of trade, any identical or similar signs to those in respect of which the trademark is registered where such use would result in a likelihood of confusion, thus: x x x

"28. In view thereof, opposer's registration for HANSA bars the registration of respondent-applicant's nearly identical and at the very least confusingly similar mark HANVA.

"29. The mark HANVA of respondent-applicant is confusingly similar with opposer's mark HANSA. For purposes of comparison, the two marks are as follows: x x

1/30. In American Wire & Cable Co ., vs. Director of Patents, the Supreme Court ruled that it is not required that the marks should be exactly or absolutely alike or identical. It is enough that under certain conditions, confusion as to the goods themselves or the source of the goods may give rise to a reasonable chance of confusion, thus: x x x

1/31. It is settled jurisprudence that identity or similarity in the dominant features of two (2) competing marks will cause mistake or confusion in the minds of the purchasing public. In fact in the case of Co Tiong Sa vs. Director of Patents, the Supreme Court categorically held that: x x x

"32. In Phil. Nut Industry, Inc. vs. Standard Brands, Inc., the Supreme Court likewise ruled that: x x x

1/33 . In the case of McDonald's Corporation, et al. vs. L.c. Big Mak Burger, et al. the Supreme Court applied the test of dominancy in determining that the mark BIG MAC of McDonald's Corporation and the mark BIG MAK of L'C, Big Mak Burger are confusingly similar. This was later affirmed in the 2007 case of McDonald's Corporation vs. Macjoy Fastfood Corporation where the Supreme Court again applied the test of dominancy and ruled that there is con.fusing similarity between the ' McDonald's marks and the mark MACJOY & Device, thus: x x x

1/34. Evidently, opposer's mark HANSA and respondent-applicant's mark HANVA are nearly identical both visually and phonetically. Respondent-Applicant's mark HANVA nearly resembles opposer's mark HANSA. Hence, theyareconfusingly similar.

1/35. It bears to stress also that both marks are wordmarks in plain lettering with no stylized letterings or device to distinguish one from the other. Thus, the overall appearance of respondent-applicant's mark HANVA is easily mistaken to be that of opposer's mark HANSA. Hence, the use and registration of the mark HANVA will create confusion, mistake and deception in the minds of the purchasing public.

1/36. Respondent-applicant's confusingly similar mark HAN\!A covers, 'faucets, shower head, angle valve as bath plumbing fixtures, shower valve,' kitchen sink heating and lavatories,' while opposer's mark HANSA covers, 'water installations, h~ water production installations; contro~led mi x.ers; mixing tape; :regulatin~ valves and stop valves; showers, shower mounting devices, shower hoses; water inlets, wate

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outlets; temperature mlxmg cartridges, being parts of valves; pressure relief valves; pressure relief apparatus for use with water heaters forming part of water supply systems, parts and fittings for all the aforesaid goods'.

"37. From the foregoing, it is evident that the goods covered byboth marks are closely-related, if not similar with each other. x x x

"38 . Here, the goods covered by the marks not only belong to the same class, but have the same descriptive properties, physical attributes and characteristics as they are product relating to water and/or bathing installations and utilities. Evidently, the goods covered by both marks serve the same purpose.

"39. Consequently, said goods are sold and marketed in the same channels of business and trade as they cater to the same clientele. These goods are found, distributed and sold in home depots, bath and kitchen centers, plumbing stores, household fixtures and appliances stores and the like. Hence, there is a real probability that these similar or closely related goods marked HANVA and HANSA respectively can be found in the same stores, worse in the same aisle of the same stores bearing these confusingly similar marks but belonging to different proprietors. Hence, the confusion between the goods bearing nearly identical marks is not only present and actual, but is in fact imminent.

"40 . In view of the similarity of the covered goods, the purchasing public will mostly likely be deceived into purchasing faucets, shower head, angle. valve as bath plumbing fixtures, shower valve, kitchen sink heating and lavatories manufactured by respondent-applicant and labelled HANVA in the belief that they are purchasing water and/ or bathing installations labelled HANSA manufactured by opposer. This will thus result to damage to the public and to the opposer's business and goodwill over its products bearing the mark HANSA.

"41 . Opposer is the owner-registrant of the mark HANSA around the world, including but not limited to countries such as the United States of America, Korea, Thailand, Canada, Denmark, Great Britain, Greece, India, Jordan, Kuwait, New Zealand, Saudi Arabia, Taiwan, Singapore, Hong Kong, Israel, Malta, Turkey, Mexico, China, Indonesia, Finland, Poland, Iran, Oman, and Bahrain, Qatar, Pakistan, Yemen, Malaysia, Cyprus, Bulgaria, Belarus, Lithuania, Estland, Lettland, Ireland, Venezuela, Colombia, Brazil, Paraguay, Ecuador, Bolivia, Chile, Argentina, Uruguay, South Africa, Algeria, Kenya, Libya, Sri Lanka, Sweden, and United Arab Emirates. x x x

"42 . Over the years, opposer has successfully established itself and gained market share in the Philippines. It has sold and continues to briskly'sell its various products marked HANSA to customers in the Philippines.

"43 . Opposer has also caused extensive promotion and advertising of its products under Classes 11, bearing the trademark HANSA and variations thereof in various countries all over the world, including the Philippines. x x x

"44. In view of opposer's prior registration and ownership, wide use ~ extensive promotion of the trademark HANSA around the world; said trademarks hay therefore become distinctive of the goods and business of opposer.

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"45. As early as in the leading case of Ana L. Ang vs. Toribio Teodoro, the Supreme Court had already recognized the rights of an owner 'of a well-known mark when it pronounced that: x x x

"46. In the landmark case of La Chemiste Lacoste, S.A. vs . Fernandez, et al., the Supreme Court upheld the Philippines' adherence to the Paris Convention of 1883 and its recognition of internationally well-known marks, to wit: x x x

"47. Furthermore, in the case of Mirpuri vs. Court of Appeals, et al., the Supreme Court made the following judicious pronouncement: x x x

"48. Under Rule 103 of the Rules and Regulations on Trademarks, Servicemarks, Tradenames and Marked or Stamped Containers of the Intellectual Property of the Philippines further sets forth the criteria for determining whether a mark is 'well-known', to wit: x x x

"49. The Supreme Court in Sehwani, Inc. and Benita's Frites, Inc. vs . In-N-Out Burger, Inc. applied the above criteria in holding that the disputed mark therein IN-NOUT Burger & Arrow Design is an internationally ' well-kn own' mark on the basis of 'registrations in various countries around the world and its comprehensive advertisements therein'

"50 . It must be noted that in the Sehwani case , the Supreme Court extended to the mark the mantle of ' notorie ty' or 'well-knowness' due to registration of the subject mark in the United States, notwithstanding the absence of even a single IN-N-OUT BURGER restaurant in the Philippines; nor of any marketing, promotion or advertisement thereof in the Philippines. '

"51. A similar decision was also made in the more recent case of Fredco Manufacturing Corporation vs. President and Fellows of Harvard CoIIege wherein the Supreme Court, in ruling that Harvard is a 'well-know n' mark, has taken into consideration the sa id mark's various international registrations; promotions and usage in numerous publications worldwide; and being one of the leading educational institutions in the world for 350 years.

"52. In the case at bar, opposer has earned its reputation w orldw ide as a renowned manufacturer of high quality water and/ or bath installations and-uti lities,

"53. In view of the foregoing, and in accordance with the explicit provisions of law and international convention, and pursuant to the foregoing jurisprudential pronouncements, opposer's mark HANSA clearly qualifies as internationally weIIknown mark in accordance with the IP Code of the Philippines and must be duly accorded protection under Philippine law .

"54. A boundless of choice of words, phrases and symbols is, available to a person who wishes to have a trademark sufficient into itself to distinguish its products from those of others. There is no reasonable explanation therefore fot respondentapplicant to use the mark HANVA for identical, similar and/ or related goods such as 'faucets, shower head, angle valve as bath plumbing fixtures, shower valve; kitchen S~ heating and lavatories,' under Class 11 when the field for its selection is so broad Respondent-applicant obviously intends to pass off its products as those of opposer.

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"55. In the case of American Wire & Cable Co. vs. Director of Patents, the Supreme Court held that: x x x

"56 . Moreover, it has been held in the cases of Clarke vs. Manila Candy Co. and Weco Products Co vs . Milton Ray Co., that the array of choices from which respondent-applicant may derive his mark is so limitless that the only explanation for using a mark similar to that of the opposer's is his intention to pass off its products as those of opposer, to wit: x x x

"57. Indubitably, the registration and use of the trademark HANVA by respondent-applicant will deceive and/or confuse purchasers into believing that respondent-applicant's goods bearing the trademark HANVA emanate from or are under the sponsorship of opposer, the rightful owner of the internationally well-known trademark HANSA in the Philippines.

"58 . In view of the foregoing, opposer's mark HANSA which is legally protected under Philippine law bars the registration in the Philippines of the confusingly similar mark HANVA of respondent-applicant.

The Opposer's evidence consists of a copy of the Petition for Recordal of Change of Name of Opposer from Hansa Metalwerke AG to Hansa Armaturen GmbH dated May 30, 2018; the list of registrations of the mark HANSA in.Jh.~ name of opposer worldwide, with their corresponding registration numbers and dates; copy of Opposer's certificates of registration and renewal registrations for the mark HANSA in the European Union, Canada, Cyprus, United Kingdom, Qatar, Malaysia, and Lithuania; sample invoices made out by opposer to customers in the Philippines with regard to HANSA products; sample of opposer's promo of its package deals bearing the mark HANSA; pictures of the newest showroom of opposer's distribution partner Dexterton Corporation in Bonifacio Global City, Taguig City, Philippines; and the copy of the Power of Attorney dated June 12, 2018 executed in favor of the Law Firm of E.B. Astudillo & Associates.!

This Bureau issued a Notice to Answer and served a copy thereof upon Respondent-Applicant on 26 July 2018. Said Respondent-Applicant, however, did not file an Answer.

Should the Respondent-Applicant be allowed to - register...-the trademark HANVA?

The Opposer its opposition on Sections 123.1, paragraphs (d) and ~anchors ' and 147.1 of Republic Act No. 8293, also known as the Intellectual Property Code of e Philippines ("IP Code"), to wit: .

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

' Marked as Exhibits " A" to "0", inclusive.

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, .,..... . .\

" " . '

(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 wellknown 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;

Sec. 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 form 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.

Records show that at the time the Respondent-Applicant filed its trademark application on 29 September 2017, the Opposer already owns trademark registration for the mark HANSA in the Philippines under Trademark Reg. No. 4-2012-005405 issued on 30 August 2012. This registration covers "water installations, hot.water production installations, bathing installations, shower installations and washing installations; controlled mixers; mixing tape; regulating valves and stop valves; showers, shower mounting devices, shower hoses; water inlets, water outlets; temperature mixing cartridges, being parts of valves; pressure relief valves; pressure relief apparatus for use with water heaters forming part of water supply systems; parts and fittings for all the aforesaid goods" under Class 11. This Bureau noticed that the good indicated in Respondent-Applicant's trademark application, i.e., faucets, showerhead, angle valve as bath plumbing fixtures, shower valve, kitchen sink heating and lavatories, are similar and/ or closely-related to the Opposer's.

But, are the competing marks reproduced below, resemble each other such tha~ confusion, or even deception is likely to occur? . ~

, ."

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AHANSA Opposer's trademark Respondent-Applicant's mark

Confusion is likely in this instance because of the close resemblance between the marks and that the goods covered by the competing marks are similar and/ or closelyrelated as they are products relating to water and/or bathing installations and utilities. Respondent-Applicant's mark HANVA adopted the dominant features of Opposer's mark HANSA. HANVA appears and sounds almost the same as Opposer's trademark HANSA. Both HANSA and HANVA are word marks. Both consist of the first syllable "HAN". Respondent-Applicant merely changed the fourth letter "S" in Opposer's HANSA mark with the letter "V" to come up with the mark HANVA. It could result to mistake with respect to perception because the marks sound so similar. Under the idem sonans rule, the following trademarks were held confusingly similar in sound: "BIG MAC" and "BIG MAK"s, "SAPOLIN" and LUSOLIN"6, "CELDURA" and "CORDURA"7, "GOLD DUST" and "GOLD DROP" . The Supreme Court ruled that similarity of sound is sufficient ground to rule that two marks are confusingly similar, to wit:

Two letters of "SALONPAS" are miss ing in "LIONPAS": the first letter a and the letter s. Be that as it may, when the two words are pronounced, the sound effects are confusingly similar. And where goods ar e advertised over the radio, similarity in sound is of especial significance. ..."SALONPAS" and "LION PAS", when spoken, sound ver y .much alike. Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties.f

Public interest therefore requires, that two marks, identical to or closely resembling each other and used on the same and closely related goods; but utilized by different proprietors should not be allowed to co-exist. Confusion, mistake, deception, and even fraud, should be prevented. 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

:" .,

Macisonalds Corp, et, al v, L. C. Big Mak Burger ,G.R. No. L-143993 ,18 Au gust 2004. 5 '. ~ 6 Sapolin Co. v. Balmaceda and Germann & Co,m 67 Phil, 705. .

7Co Tiong SA v. Director 0/Patents. G.R No. L· 5378 , 24 May 1954; Celanes Corporation 0/ America vs. E. I. Du Pont de Nemours & Co. ~ 194 6 ) , 154 f. 2d 146 148.) .

Marvex Commerical Co.. Inc. v.Petra Hawpia & Co.. et. aI., G.R. No. L-I9297,22 Dec. 1966.

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manufacturer against substitution and sale of an inferior and different article as his product."

Succinctly, 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 RespondentApplicant 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.l'' Also, the Respondent-Applicant despite the opportunity given, did not file an Answer to defend his trademark application and to explain how he arrived at using the mark "HANVA" which is confusingly similar to the Opposer's. It is incredible for the Respondent-Applicant to have come up with a mark closely similar to Opposer's mark for use on similar and/ or closely related goods by pure coincidence.

The intellectual property system was established to recognize 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 by a visible sign that distinctly points out the origin and ownership of such goods or services.

In conclusion, the subject trademark application is covered by the proscription under Sec. 123.1(d) (iii) of the IP Code. ' ..

WHEREFORE, premises considered, the instant Opposition to Trademark Application No. 4-2017-015766 is hereby SUSTAINED. Let the filewrapper of the subject trademark application be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

9 Pribhdas 1. Mirpuri v. Court a/Appeals, G.R. No. 114508, 19 Nove mber 1999, citing Ethepa v. Director 0/ Patents, supra , Gabriel v. Perez, 55 SCRA 406 (1974) . See also Article 15, par. (1), Art. 16, par. ( I), of the Trade Related Aspe cts of Intellectual Property (TRIPS Agreement).

10American Wire & Cable Company v. Director a/Patents, G.R. No. L-26557, 18 Feb. 1970.

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