INTELLECTUAL PROPERTYPHILIPPINES

PIZZA HUT INTERNATIONAL }Oppose~ }

}- versus - }

}INTERNATIONAL FAMILY }FOOD SERVICES, INC. }

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

IPC No. 14-2006-00130Opposition to:Serial No. 4-2002-007433Date Filed: 03 September 2002

Trademark: "SUPER PAN PIZZA"

Decision No. 2007 - qtf

DECISION

This pertains to an Opposition filed on 16 October 2006 by herein Opposer,PIZZA HUT INTERNATIONAL, a limited liability company organized and existingunder the laws of the State of Delaware, U.S.A., with principal office located at14841 N. Dallas Parkway, Dallas, Texas, 75254, U.S.A., against the application forregistration of the trademark "SUPER PAN PIZZA" bearing Application Serial No.4-2002-007433 filed on 03 September 2002 for goods falling in Class 30 of theNice Classification of Goods, namely for "pizza", by INTERNATIONAL FAMILYFOOD SERVICES, INC., Respondent-Applicant, with address on record at AFP-RSBS Industrial Park, Km. 12 East Service Road corner C-5, South SuperhighwayTaguig, Metro-Manila.

The subject trademark application was published for opposition in theIntellectual Property Office Official Gazette which was officially released forcirculation on 16 May 2006.

The grounds for opposition are stated, in sum, to wit:

1. Opposer is the registered owner of the trademark PAN PIZZAin the United States of America and other countries worldwidecovering goods in International Class 30. Opposer is the first andprior user of the trademark PAN PIZZA in the United States ofAmerica and in many other countries long before Respondentappropriated the mark SUPER PAN PIZZA for its own products.

2. Respondent's mark SUPER PAN PIZZA is identical to or soresembles Opposer's trademark PAN PIZZA and PAN PIZZA andDesign, as to cause confusion, mistake and deception to thepurchasing public by misleading them into thinking thatRespondent's goods either come from Opposer or are sponsored orlicensed by it. 1

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

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

3. Respondent's registration and use of the subject mark willdiminish the distinctiveness and dilute the goodwill of Opposer'smark PAN PIZZA, an arbitrary mark when used on Opposer'sproducts.

4. Respondent 's appropriation and use of the identical andconfusingly simi lar trademark SUPER PAN PIZZA on its own goodshas the intent ion of misleading the public to believe that its goodsbearing the trademark originate from, or licensed or sponsored byOpposer, ident if ied in the trade and by consumers as themanufacturer of goods bearing the trademark PAN PIZZA. Itinfringed upon Opposer 's exclusive right to the well-knowntradema rk PAN PIZZA, which is protected under Section 37 of theold Tradema rk Law, Section 147 and 165(2)(a) of the I P Code,Arti cle 6bis of the Paris Convention and Article 16 of theAgreement of Trade Related Aspects of Intellectual Property Rightsto which the Philippines and United States of America adhere.

5. The approval of the subject mark is based on Respondent'sfalse representation as the originator, true owner and fi rst userthereof, which was merely copied/derived from Opposer 's PANPIZZA mark.

Opposer relied on the antecedent relevant facts, to wit:

1. Since 1980, Opposer has been extensively using andmarket ing the PAN PIZZA products throughout the world in eightyfour (84 ) countries. PAN PIZZA has accordingly become aninternat ionally well-known trademark, wh ich consumers haveassociated with Opposer as the product source. The list ofcountries where the PAN PIZZA trademarks are used is attached asAnnex "A" of the Opposition.

2. Opposer has registered the trademarks PAN PIZZA and PANPIZZA Design for goods in Classes 29 and 30 in the Philippines,Bangladesh, Greece, New Zealand, Pakistan, Sri Lanka, Tunisia andthe United Arab Emirates attached as Annex " B" of the Opposit ion.It has also regist rat ions and/or pending applications for registra tionin more than eighty (80) countries worldwide attached as Annex"C" of the Opposition.

3. Opposer's arbitrary trademark PAN PIZZA is enti tled tobroad legal protection against unauthorized users like Respond~tr

4. Respondent has appropriated the identical or confusinglysimilar trademark SUPER PAN PIZZA in bad-faith for the obviouspurpose of capitaliz ing upon the renown of Opposer's self-promoting trademark by misleading the public into believing thatits goods originate from, or are licensed or sponsored by Opposer.

5. The registration and use of the subject mark by theRespondent wil l deceive and/or confuse purchasers into believingthat its products emanate from or are under the sponsorship ofOpposer, damage its interests for the following reasons: (a) thetrademarks are identical or confusingly similar; (b) the goodwi lland reputation of Opposer's trademark PAN PIZZA amongconsumers will be diluted; (c) Respondent used SUPER PANPIZZA on its products as a self-promoting trademark to gain publicacceptabil ity through their association with Opposer's populart rademark PAN PIZZA; (d) the goods bearing identical t rademarksare sold and advertised to consumers through the same channelsof trade; and, (e) Respondent intends to trade on Opposer'sgoodwill.

In Respondent-Applicant 's Answer dated 07 December 2006 and receivedby the Inte llectual Property Office on 19 December 2006, it denied theintroducto ry paragraph of the instant Opposition except that part pertaining to theapplication of Respondent for registration of the subject mark. It likewise deniedparagraphs 2, 3, 4, 5, 7 and 8 of the said Opposition.

I n furtherance, special and affirmative defenses are set forth , to wit:

1. Respondent-Applicant' s subject mark is ent irely differentfrom the Opposer 's trademark.

2. Respondent-Applicant's trademark is coined word being theproduct of the creative imagination in considerat ion of and asdictated by its clientele and the logical upward development interms of the increasing features added to its products and thesame was not patterned after any trademark in existence exceptthose that its predecessor had used in the United States of Americanor has th ere been the least intent to ride on any tradem ark'sgoodwill of any party .

3. The regist rat ion of Respondent-Applicant's mark will notdiminish nor dilute the alleged strength of Opposer's markconsideri ng that there exist no basis at all for the principle of"dilution" of mark to apply as the mark under application anihr

mark of Opposer are very much different in terms of presentation,in the manner by which the goods represented respectively by thepart ies are sold or disposed of or passed to the buying public, andby the specialized and exclusive counters over which the goodsrepresented by each of the marks are sold or offered for sale.

In compl iance to Office Order No.79, series of 2005 (Amendments to theRegulations of I nter Partes Proceedings), prescribing the summary rules, listedhereunder are the pieces of evidence submitted in support of the Opposit ion, andadmitted by thi s Office , to wit:

Exhibit

"A"

"B"

"C

Description

List of countries where trad emark PAN PIZZAis used

Philippine Registration Cert ificate of thetrademark PAN PIZZA & Design

List of other count ries where PIZZA HUT LLChas registrations or pending application forregistrations of its trad emarks

Respondent- Applicant 's compliance, has the following pieces ofdocumentary evidence submitted and admitted herein, to wit:

Exhibit

"1", "l-A"

"2", "2-A"

Description

USPTO Internet printouts of TrademarkElectronic Search System for word markSuper Pan Pizza

Application for tradema rk and service markof Shakey's Incorporated Corporation

This instant case was set for Preliminary Conference. Parties however,failed to settle into mutua l te rms and conditions which caused the termination ofthe Conference and submitting this instant case into resolut ion of the issueposed, to wit:

WHETHER OR NOT RESPONDENT-APPLICANT'SMARK "SUPER PAN PIZZA" MAY BE ALLOWE~REGISTRATION. i .f

After consideration and review of the records, this Bureau findsRespondent -Applicant's mark "Super Pan Pizza" not allowable for registrat ion.

It has been always emphasized that in tradema rk cases questioningregist ration of the mark, it is apropos to ascertain whether one trademark isconfusingly similar to or is a colorable imitation of another. Actually, no set ofrules can be deduced, as each case is decided on its own merit s.

The likelihood of confusion of goods or business is a relative concept. Itsdetermination must be in accordance to the particula r, and sometimes peculiarfacts of each case. In fact, "the complexities attend ant to an accurateassessment of likelihood of such confusion requires that the entire panoply ofelements constituting the relevant factual landscape be comprehen sivelyexamined." (Societe Des Produits Nestle, S.A., et. al vs CA, et. ai, GR No.112012, 04 April 2001)

Jurisprudence has developed two kinds of test to determine whether marksare confusingly or deceptively similar - the Dominancy and the Holistic Tests.Confusing similarity is to be determined on the basis of visual, aural, connotati vecomparisons and overall impressions engendered by the marks in controversy asthey are encounte red in the realities of the marketplace. The test of dominancyfocuses on the similarity of the prevalent features of the competi ng trademarks,which might cause confusion or deception and thus constitutes infringement. Thistest relies not only on visual but also on connotative compar isons and overallimpre ssion between the marks. The holistic test, on the other hand, mandatesthat the entirety of the marks in question must be considered in determiningwhether or not confusing similarity exists. (Societes Des Produits Nestle, S.A.,et.al vs CA, et. aI., supra)

Opposer's alleged that Respondent-Applicant's "SUPER PAN PIZZA" isident ical or so resembles its mark " PAN PIZZA" and " PAN PIZZA and DESIGN", asto cause confusion, deception and mistake to the purchasing public. This wasrefuted by Respondent-Applicant, stating that its subject mark is entirel y differentas it is a coined word being the product of creative imagination of its client andnot patterned from any exist ing trademark except that it was used by itspredecessor in the United States of America.

This Bureau shares the view of the Opposer. In fact, whether this Bureauapplies the dominancy or holist ic test, the conclusion arrived would be a finding ofconfusing simi larity between the contending marks.

Admittedly, the contending marks have no exact visual similarities.Obviously however, said marks have the same connotations and overa~yimpressions that the viewing public would likely be confused or a ssociation~I

mark from another. Fir50 the last two composite words are exactly the same," PAN PIZZA", and the word "PAN" is a registered mark of the Opposer. Second.the marks cover the same kind of goods, pizza, cooked and served in a pan.Thir~ they are catered to the same kind, level and class of consumers andflowing through the same channels of trade. Fourth the only word which setsapart Respondent-Applicant's mark is "SUPER", which do not produce aremarkable difference and effect, because it is merely a superlative description ofthe composite words " PAN PIZZA", to which the consumer's purchasing memory isfocused to.

Grant ing in arguendo that the contending goods are sold or disposed of orpassed to the buying public in different manners by the specialized and exclusivecounters of the Opposer and the Respondent-Applicant, does not necessarilynegate the fact of the likelihood of confusion . It has to bear in mind that at rademark is a distinctive mark of authenticity through which the merchandise ofa particu lar producer or manufacturer may be distinguished from that of othe rs.(Arce Sons & Co. vs Selecta Biscuit Co., 110 Phil. 858) Thus, a registeredmark is a special property of the registrant which is exclusively owned and notsubject to use or appropriation of another, especially if it involves similar orrelated products of a competitor in the market. What posed as danger is theconfusion of association of marks and its products.

Verily, records show that Opposer has Philippine Trademark Registrat ionNo. 4-1999-06 547 for the mark PAN PIZZA and Design, (Exhibit "A")disclaiming the word " Pizza." Respondent-Applicant's application for registrationis for the mark SUPER PAN PIZZA, disclaiming the words " Pan Pizza."

The word " Pizza" in both the contending marks is not an issue of mark-appropr iat ion. It is a "common or generic name of an art icle or a word of phrasewhich is merely descriptive of the character, qualities or composit ion of an articlecannot be monopolized as a trademark or trade name." (East Pacifi cMerchandising Corp. vs Director of Patents, 110 Phil. 443; MassoHermanos, S.A. vs Director of Patents, 94 Phils 136) It cannot beregistered although it may be made a part of a composite mark. The use of ageneric word forming part of a trademark or trade name is always subject to thelimitation that the regist ration does not acquire the exclusive right to thedescriptive or generic term or word.

On a different vista , the word " Pan" which is present in the contendingmarks is already of exclusive ownership and use of herein Opposer, evidenced byOpposer's aforementioned Exhibit "A".

The registration of Opposer's mark " PAN PIZZA and Design" is a " primafacie evidence of the validity of the registration, the registrant's ownership ofth~

i()

mar k, and of the registrant's exclusive right to use the same in connect ion withthe goods or services and those that are related thereto specif ied in thecert if icate." (Sect ion 138, R.A. 8293)

Again, this Bureau is mindful that the word " Pan" is actually disclaimed byRespondent-Applicant. It holds no water however as the word " Pan" is owned bythe Opposer. It cannot be appropriated or used without the consent of theowner . Th e fact that it was disclaimed does not mean that it will not be used. Todisclaim means not to seek protection for. To disclaim is to use with out exclusiveownership th ereof. Disclaimer therefore, in this instant case, is not necessary. Infact, it is improper.

However, as Opposer further asserted its right over the t rademark bysecuring the protective mantle of a well-known mark, this Bureau is not convincedth at mere mark registrations and use in other fore ign countries and in thePhilipp ines (Exhib its "A", "B" and "("), have sufficed the requ irements of a well-known mark.

As a requirement of the law, Opposer has to establish and prove that itsmark is well -known internationally and in the Philippines in accordance to theRules and Regulations on Trademarks, Service Marks, Trade Names andMarked or Stamped Containers, particularly Rule 102 thereof whichenshrines th e criteria to determine a well-known mark, to wit:

"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 the mark,in particular, 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 towhich 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;

7

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

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

(k) the outcome of litigations dealing with the issue of whether themark 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 is awell-known mark." (Underscoring Ours.)

Opposer who has the onus probandi in establishing and proving that hismark is well- known internationally and in the Ph ilippines has failed to submiteloquent proof to prove that the mark has gained a wor ldwide and local fame andreputat ion, exclusivity of use, successful outcome of well- known mark litigationsand the like.

Finally, as this Bureau finds Respondent-Applicant's subject mark "SUPERPAN PIZZA" not entitled to registration, both foreign authority and our mostHonorable Supreme Court in several occasions ruled, thus :

"Those who desire to distinguish their goods from thegoods of another have a broad field from which toselect a trademark for their wares and there is nosuch poverty in the English language or paucity ofsigns, symbols, numerals etc., as to justify one whoreally wishes to distinguish his products from those ofall others entering the twilight zone of a field alreadyappropriated by another." (WECO PRODUCTS CO.VS MILTON RAY CO., 143 F. 2d 985, 32 C.C.P.A.Patents 1214.)

"Why, of the million of terms and combinations ofletters and designs available, the appellee had tochoose those closely similar to another's trademark ifthere was no intent to take advantage of the goodwillgenerated by the other mark. " (AMERICAN WIRE~& CABLE CO. VS DIRECTOR OF PATENTS, 31

SeRA S44) ~

Furthermore, "a boundless choice of words, phrases and symbols isavailable to one who wishes a trademark sufficient unto itself 0 dist ingu ish hisproducts from those of others. When, however, the re is no reasonableexplanation for the defendant's choice of such a mark though the field for hisselection was so broad, the inference is inevitable that it was chosen deliberatelyto deceive," ( III, Callman, Unfair competition, 2nd Ed., pp. 1527-1528 )The trademark applied for by the Respondent-Applicant appears confusingl ysimila r with that of Opposer's mark over the same goods. The reason of choiceand adoption of which does not convince this Bureau.

WHEREFORE, the Opposition is hereby SUSTAINED. Consequent ly,t rademark application serial no. 4-2002-007433 for the t rademark "SUPER PANPIZZA" under Class 30 filed on 03 September 2002 is hereby REJECTED.

Let the filewrapper of "SUPER PAN PIZZA" subject matter of th is casetogether with a copy of this Decision be forwarded to the Bureau of Trademarks(BOT) for appropriate action.

SO ORDERED.

Makati City, 16 July 2007.

ES LLITA BELTRAN-ABELARDODi ector, Bureau of Legal Affairs 1

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