CANON KABUSHIKI KAISHA vs. CA and NSR RUBBER CORPORATION

FACTS:

NSR Rubber Corporation filed an application for registration of the mark CANON for sandals inthe BPTTT. Petitioner a !apanese corporation opposed.

Petitioner presented evidence consisting of its certificates of registration for the mark CANONin various countries covering goods belonging to class " #paints chemical products toner andd$e stuff%. Petitioner also submitted in evidence its trademark registration sho&ing itso&nership over the trademark CANON also under class ".

BPTTT gave due course to private respondent's application for the registration of thetrademark CANON. CA affirmed the decision of BPTTT.

DECISION:

(e find the arguments of petitioner to be unmeritorious. Ordinaril$ the o&nership of atrademark or tradename is a propert$ right that the o&ner is entitled to protect as mandatedb$ the Trademark )a&. *o&ever &hen a trademark is used b$ a part$ for a product in &hichthe other part$ does not deal the use of the same trademark on the latter's product cannot bevalidl$ ob+ected to.

A revie& of the records sho&s petitioner had ever$ opportunit$ to present ex-parte all of itsevidence to prove that its certificates of registration for the trademark CANON also coverfoot&ear. BPTTT correctl$ ruled that since the certificate of registration of petitioner for thetrademark CANON covers class " #paints chemical products toner d$estuff% privaterespondent can use the trademark CANON for its goods classified as class ", #sandals%.

Petitioner counters that not&ithstanding the dissimilarit$ of the products of the parties thetrademark o&ner is entitled to protection &hen the use of b$ the +unior user -forestalls thenormal epansion of his business-.

/n Trademark Principal Register the products of the said petitioner had been clearl$ andspecificall$ described as -Chemical products d$estuffs pigments toner developingpreparation shoe polisher polishing agent-. /t &ould be taing one's credibilit$ to aver thatthe production of sandals could be considered as a possible -natural or normal epansion- of its business operation-.

Petitioner further argues that the alleged diversit$ of its products all over the &orld makes itplausible that the public might be misled into thinking that there is some supposed connectionbet&een private respondent's goods and petitioner.

The likelihood of confusion of goods or business is to be determined onl$ according to theparticular and sometimes peculiar circumstances of each case. *ere the products involvedare so unrelated that the public &ill not be misled that there is the slightest neus bet&eenpetitioner and the goods of private respondent.

0oods are related &hen the$ belong to the same class or have the same descriptiveproperties1 &hen the$ possess the same ph$sical attributes or essential characteristics &ithreference to their form composition teture or 2ualit$. The$ ma$ also be related becausethe$ serve the same purpose or are sold in grocer$ stores.

3ollo&ing the 4sso doctrine the t&o classes of products in this case flo& through differenttrade channels. The products of petitioner are sold through special chemical stores or

 

distributors &hile the products of private respondent are sold in grocer$ stores sari5sari storesand department stores. Thus the evident disparit$ of the products of the parties in the case atbar renders unfounded the apprehension of petitioner that confusion of business or originmight occur if private respondent is allo&ed to use the mark CANON.

Petitioner invokes Article 6 of the Paris Convention to &it7

-A tradename shall be protected in all the countries of the 8nion &ithout the obligationof filing or registration &hether or not it forms part of a trademark.-

Petitioner 2uestions the applicabilit$ of guidelines in the 9emorandum of then 9inister of Tradeand /ndustr$ Roberto Ongpin7

-a% the mark must be internationall$ kno&n1

b% the sub+ect of the right must be a trademark not a patent or cop$right or an$thingelse1

c% the mark must be for use in the same or similar class of goods1

d% the person claiming must be the o&ner of the mark.-

According to petitioner it should not be re2uired to prove that its trademark is &ell5kno&n andthat the products are not similar as re2uired b$ the 2uoted memorandum. Petitioneremphasi:es that the Ongpin memorandum implement Article ;bis of the Paris Convention theprovision for the protection of trademarks not tradenames.

Petitioner insists that &hat it seeks is the protection of Article 6 of the Paris Convention theprovision that pertains to the protection of tradenames. Petitioner believes that theappropriate memorandum to consider is that issued b$ the then 9inister of Trade and/ndustr$ )uis <illafuerte directing the =irector of Patents to7

-re+ect all pending applications for Philippine registration of signature and other &orldfamous trademarks b$ applicants other than the original o&ners or users.-

(e cannot uphold petitioner's position.

The term -trademark- is defined b$ RA >;; the Trademark )a& as including -an$ &ord

name s$mbol emblem sign or device or an$ combination thereof adopted and used b$ amanufacturer or merchant to identif$ his goods and distinguish them for those manufacturedsold or dealt in b$ others.- Tradename is defined b$ the same la& as including -individualnames and surnames firm names tradenames devices or &ords used b$ manufacturersindustrialists merchants agriculturists and others to identif$ their business vocations oroccupations1 the names or titles la&full$ adopted and used b$ natural or +uridical personsunions and an$ manufacturing industrial commercial agricultural or other organi:ationsengaged in trade or commerce.- Simpl$ put a trade name refers to the business and itsgood&ill1 a trademark refers to the goods.

The Paris Convention of &hich both the Philippines and !apan the countr$ of petitioner aresignatories is a multilateral treat$ that seeks to protect industrial propert$ consisting of patents utilit$ models industrial designs trademarks service marks trade names andindications of source or appellations of origin and at the same time aims to repress unfaircompetition. (e agree &ith public respondents that the controlling doctrine &ith respect to theapplicabilit$ of Article 6 of the Paris Convention is that established in Kabushi Kaisha Isetan

vs. IAC. As pointed out b$ the BPTTT7

 

-Regarding the applicabilit$ of Article 6 of the Paris Convention this Office believesthat there is no automatic protection afforded an entit$ &hose tradename is alleged tohave been infringed through the use of that name as a trademark b$ a local entit$.

Petitioner failed to compl$ &ith the third re2uirement of Ongpin?s memorandum that is themark must be for use in the same or similar kinds of goods. *ence Petitioner's contention thatits mark is &ell5kno&n at the time the Respondent filed its application for the same markshould fail. -

WHEREFORE, petition for revie& on certiorari is =4N/4= for lack of merit.