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INTELLECTUAL PROPERTY

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OFFICE OF THE PHIUPPINES

OFFICE OF THE DIRECTOR GENERAL

JOlLlBEE FOODS CORPORATION, Appeal No. 14-2015-0032 Opposer-Appellant,

IPC No. 14-2013-00279 -versus- Opposition to:

Application No. 4-2012-012601 HUHTAMAKI FINANCE B.V., Date Filed: 12 October 2012

Respondent-Appellee. Trademark: JOllY RANCHER CRUNCH 'N CHEW

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DECISION

JOLLIBEE FOODS CORPORATION ("Appellant") appeals the decision' of the Director of Bureau of Legal Affairs ("Director") dismissing the opposition to the registration of the mark "JOLLY RANCHER CRUNCH IN CHEW".

The Parties and the Marks

The Appellant has been in existence for nearly four (4) decades and operates the chain of quick-service restaurants called "JOLLlBEE", that are found all over the Philippines and abroad. The Appellant is the owner and first user of the JOLLIBEE trademarks. It has secured 77 certificates of registration and has nine (9) pending trademark applications for JOLLIBEE trademarks covering a wide range of food products and services in various international classes. Meanwhile, HUHTAMAKI FINANCE B.V. (Appellee) filed on 12 October 2012 Trademark Application No. 4­2012-012601 for JOLLY RANCHER CRUNCH 'N CHEW for use on candy. Below are illustrations of the marks of the Appellant and Appellee:

Appel/ant's marks Appel/ee 's mark

JOLLY RANCHER JOL IBEE CRUNCH 'N CHEW

Jolly Hotdog JOLLY KR CHYTWIRL

1 Decision No. 2015-91 dated 18 May 2015.

@ www.ipophil.qov.pf In ellec tual Propert y Cente r 1128 Upper Mc Kin ley Road e mil il@ipophll.gov.Ph MCKinley Hi!! Town Center o +632-2386300 Fort Bonifacio. Taguig City

g . ·632-5539480 1634 Philippines

The Notice of Opposition

The Appellant opposed the registration of JOLLY RANCHER CRUNCH 'N CHEW claiming that this mark is confusingly similar with the Appellant's registered marks. The Appellant maintained that its trademarks are well-known and that the first two syllables of the Appellee's mark are identical to the Appellant's marks. The Appellant argued that JOLLY RANCHER CRUNCH 'N CHEW are confusingly similar to the sound and appearance of the Appellant's prior and subsisting registered marks.

In answer to the opposition, the Appellee maintained that its mark is not confusingly similar to the registered marks of the Appellant. The Appellee claimed that the word "JOLLY" is registered to several other entities and that its mark is to be used on retail stores while the Appellant is using its marks on quick service restaurants. The Appellee asserted that it has previously registered the mark "JOLLY RANCHER".

Ruling of the Director

The Director dismissed the opposition and held that JOLLY RANCHER CRUNCH 'N CHEW is not confusingly similar with the registered marks of the Appellant. The Director held that the word "JOLLY" is registered to different entities and that the Appellee's mark can be distinguished from the marks of the Appellant.

The Instant Appeal

Not satisfied with the ruling of the Director, the Appellant appealed to this Office citing the following grounds:

GROUNDS FOR THE APPEAL

I.

THE BLA DIRECTOR ERRED IN RULING THAT THE APPELLEE'S TRADEMARK JOLLY RANCHER CRUNCH 'N CHEW IS NOT CONFUSINGLY SIMILAR TO THE APPELLANT'S JOLLIBEE TRADEMARKS.

II.

THE BLA DIRECTOR ERRED IN RULING THAT CONFUSION OR MISTAKE IS UNLIKELY SINCE THE GOODS AND SERVICES COVERED BY THE APPELLANT'S MARKS AND THE APPELLEE'S MARK FLOW THROUGH DIFFERENT CHANNELS OF TRADE.

III.

THE BLA DIRECTOR ERRED IN FAILING TO DECLARE THE JOLLIBEE TRADEMARK AS INTERNATIONALLY WELL-KNOWN.

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This Office issued an Order on 21 December 2015 giving the Appellee thirty (30) days from receipt of the Order to submit comment on the appeal. The Appellee did not file its comment and this case was deemed submitted for decision.

On 09 January 2017, this Office received a "IVIAI\lIFESTATION" from the Appellant claiming that the records of the Bureau of Trademarks ("BOT") show that the Appellee failed to file the mandatory declaration of actual use (DAU) for JOLLY RANCHER CRUNCH 'N CHEW. The Appellant maintained that this Office may take judicial notice of the fact that no DAU was filed and as such the Appellee's trademark application should be deemed abandoned and considered as refused for registration.

Our Ruling

This Office requested information from the BOT on whether the Appellee filed a DAU for JOLLY RANCHER CRUNCH 'N CHEW.2 On 21 January 2019, the BOT issued a "CERTIFICATION" that no DAU has been filed for JOLLY RANCHER CRUNCH 'N CHEW and that the application for registration is deemed "REFUSED".

In this regard, the Appellee's trademark application for JOLLY RANCHER CRUNCH 'N CHEW is considered abandoned or withdrawn because of the Appellee's failure to file the required DAU. Sec. 124.2 of the Intellectual Property Code of the Philippines (IP Code) states that:

124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application . Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

In view of the failure of Appellee to file the requisite DAU within the prescribed period while an opposition case is pending, this omission shall be deemed a voluntary and final abandonment by the Appellee of the pending application. As the application is deemed finally abandoned, the application is necessarily refused.

Consequently, this appeal is now deemed moot and academic and the Office need not decide this case on the merits. The Appellant in filing the opposition to the registration of JOLLY RANCHER 'N CHEW seeks to prevent the registration of this mark in favor of the Appellee. However , in view of the Appellee's failure to file the required DAU, the Appellant's plea for the refusal of the Appellee's trademark application was practically granted.

In one case, the Supreme Court of the Philippines has ruled that:

For a court to exercise its power of adjudication, there must be an actual case or controversy - one which involves a conflict of legal rights, an assertion of opposite legal claims susceptible of judicial resolution; the case must not be moot or academic or based on extra-legal or other similar considerations not cognizable by a court of justice. A case becomes moot and academic when its purpose has become stale, such as the case before us."

2 MEMORANDUM dated 17 January 2019. , Dee' JO'e Joye, v. Pre"de'';e' Comml"lo' 0' Good Governme" , G. R. No. 96541, 24 Aug", 199~

jollyranchercrunchchew page 3 o¥4

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In this instance, no practical or useful purpose would be served by resolving the issues and merits in this case when the Appellee's trademark application is now considered refused. It is unnecessary to indulge in academic discussion of a case presenting a moot question as a judgment thereon cannot have any practical legal effect or, in the nature of things, cannot be entorced."

Wherefore, premises considered, the appeal is hereby dismissed for the reasons discussed above. Let a copy of this Decision as well as the trademark application and records be furnished and returned to the Director of Bureau of Legal Affairs and the Bureau of Trademarks for their appropriate action and consideration of the Appellee's failure to file the required DAU. Further, let also the library of the Documentation, Information and Technology Transfer Bureau be furnished a copy of this decision for information, guidance, and records purposes.

SO ORDERED.

~ 1"2 FEB 2019 Taguig City.

JOSEPHIN~~M. Director General

4 Gerardo O. Lanuza, Jr. v. Ma. Vivian Yuchengco, G.R. No. 157033,28 March 2005.

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