INTELLECTUAL PROPERTYPHILIPPINES

WINTRADE INDUSTRIAL SALESCORPORATION,

Opposer,- versus -

VICENTE LO,Respondent-Applicant

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IPC Case No. 14-2007-00321Case Filed: 05 November 2007Opposition to:Appl. Serial No.: 4-2007-002196Date Filed: March 1, 2007Trademark: "DEVICE" (The Markis represented by a Seahorse... )

Dec. No. 2008- /S-t

DECISION

For consideration is the Opposition filed by Wintrade Industrial SalesCorporation (the "Opposer") against Application No. 4-2007-002196 filed byVicente Lo (the "Respondent-Applicant") on 01 March 2007 for the registration ofthe mark DEVICE covering goods under Class 11 specifically for kerosene stovesand parts thereof, burners and regulators/ gas lamps/ mantles and wicks, uponthe ground that the mark DEVICE as described below:

The mark is represented by a seahorse profile defined by a flatheadand flat nose with circular eyes; a corrugation on the bodywith adjoining button-like figures; an s-shaped body extendingdownwardly to form a coiled tail against a concentric circle.

is identical with and/or confusingly similar with its trademarks HIPOLITO &SEAHORSE DEVICE; HIPOLITO & SEAHORSE DEVICE; SEAHORSE ANDREPRESENTATION OF A SEAHORSE BETWEEN THE WORDS SEA AND HORSE.

Opposer, WINTRADE INDUSTRIAL SALES CORPORATION (hereafter, the"Opposer") is a corporation duly organized and existing under the laws of theRepublic of the Philippines, with principal place of business at 2366 Leon GuintoStreet, Malate, Manila.

Respondent-Applicant, on the other hand is VICENTE LO with address on~record at Lot 7, Champaca Road UPS-IV, Parafiaque City, Metro Manila,y 'Philippines. II

Republic ofthe 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

On 05 November 2007, Opposer filed the instant Opposition againstRespondent-Applicant's Application for registration of the trademark DEVICE forgoods under Class 11 namely kerosene stoves and parts thereof, burners andregulators, gas lamps, mantles and wicks.

CLAIMS AND EVIDENCE PRESENTED

Opposer filed the instant Opposition based on the following grounds:

"1. The approval of the application in question is contraryto Sections 123.1(d) and 138 of Republic Act No. 8293;

"2. As registered owner of the trademarks HIPOLITO &SEAHORSE DEVICE and SEAHORSE AND REPRESENTATION OF ASEAHORSE, the approval of the application in question will violateOpposer's right to the exclusive use of its registered trademarksand cause great and irreparable damage and injury to it.

In support of the above opposition, Opposer relied on the followingfacts and circumstances:

"3. Opposer is a corporation duly organized and existingunder Philippine laws, with principal place of business and postaladdress at 2366 Leon Guinto Street, Malate, Manila.

A certified copy of Opposer's Certificate of Incorporation ismarked as Exhibit "A" and made an integral part hereof;

"4. The trademark HIPOLITO & SEAHORSE DEVICE isduly registered in favor of Opposer under Registration No. SR-2929issued on August 18, 1977 and renewed last August 18, 1977, foruse on heating and lighting fixtures and parts, flashlights, batteries,flat-irons, lamps, lanterns, water heater and cooler, refrigeratorsand parts thereof, either fueled by LP gas, kerosene or electricity,fishing line, net, twine, float and hook, falling under Classes 9, 11and 22;

Registration No. SR-2929 continues to be in full force andeffect; ~

A certified copy of Certificate of Registration No. SR-2929 isrmarked as Exhibit "B" and made an integral part thereof; / I

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"5. The trademark HIPOLITO & SEA HORSE &TRIANGULAR DEVICE is duly registered in favor of Opposer underRegistration No. 27964 on December 20, 1979 and renewed lastDecember 20, 1999, for use on coolers, flashlights, batteries, flat­irons, lamp and water heaters, fishing line, net twine, float andhook; refrigerators, rangers, stoves, burners, gas regulators,mantles and wicks; and lanterns, falling under Classes 9, 11 and28;

Registration No. 27964 continues to be in full force andeffect;

A certified copy of Certificate of Registration No. 27964 ismarked as Exhibit "C" and made an integral part thereof;

"6. The trademark HIPOLITO & SEAHORSE DEVICE isduly registered in favor of Opposer under Registration No. 4-2003­000776 issued on July 8, 2004 for use on lockset, padlock, drawer,lock; electric motor, diesel engine, generator, paper shredder, copymachines; scales, transformer, communication equipment,telephone apparatus, calculator, computer, monitor; bulbs,fluorescent tube, starter, ballast, insulating materials i.e. tube, plateand rod, socket, lampholder, lighting fixture, and electric wiringdevices, falling under Classes 6, 7, 9, 11, 12 and 17;

Registration No. 4-2003-000776 continues to be in full forceand effect;

A certified copy of Certificate of Registration No. 4-2003­000776 is marked as Exhibit "D" and made an integral partthereof;

"7. The trademark SEAHORSE AND REPRESENTATION OFA SEAHORSE BETWEEN THE WORDS SEA AND HORSE is dulyregistered in favor of Opposer under Registration No. 4-2003­006567 issued on March 20, 2005 for use on telephone apparatus,calculator, computer, monitor, starter, socket, flat-irons, ranges,ballast, lampholder, lamps, water heaters, refrigerators and lanters,falling under Classes 9 and 11; ~

Registration No. 4-2003-006567 continues to be in full force j/t1/and effect; / /

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A certified copy of Certificate of Registration No. 4-2003-006567 is marked as Exhibit "E" and made an integral partthereof;

"8. Opposer has also extended the use of the trademarkSEA HORSE AND REPRESENTATION OF A SEAHORSE BETWEENTHE WORDS SEA AND HORSE on sprayer; burner; fishing lines,fishing twine, plastic netter; and plastic reels, falling under Classes8, 11, 22 and 28, now covered by Application Serial No. 4-2007­002038. The duplicate originals of the Acknowledgement of Filing,Trademark Application Form, and Drawing is marked as Exhibit "F"and made an integral part hereof;

"9. Opposer has used and continues to use itsaforementioned registered trademarks. Submitted herewith asExhibits "G" "H" "I" and "J" are Declarations of Actual Use, ,submitted by Opposer last March 20, 2003; February 4, 2005;January 26, 2006 and May 31, 2006, respectively, and madeintegral parts hereof;

The original certified copies of Exhibits "A" "B" "C" "D" "E", , , ,and "F", and the duplicate originals of Exhibits "G", "H", "I" and "J"will be presented for comparison during the preliminary conference.

"10. Respondent-Applicant's trademark DEVICE (The markis represented by a Seahorse profile defined by a flat head and flatnose with circular eyes; a corrugation on the body with adjoiningbutton-like figures; an S-shaped body extending downwardly toform a coiled tail against a concentric circle) is confusingly similarto Opposer's registered trademarks HIPOLITO & SEAHORSEDEVICE, HIPOLITO & SEAHORSE & TRIANGULAR DEVICE, andSEAHORSE AND REPRESENTATION OF A SEAHORSE;

A print-out of Respondent-Applicant's mark DEVICE (Themark is represented by a Seahorse profile defined by a flat headand flat nose with circular eyes; a corrugation on the body withadjoining button-like figures; an S-shaped body extendingdownwardly to form a coiled tail against a concentric circle) aspublished in the e-Gazette is marked as Exhibit "K" and made anintegral part hereof;

"11. The goods covered by Respondent-Applicant's~application falling under Class 11, are identical to, and/or relate~J~

to, the goods covered by Opposer's Registration No. SR-292~ !

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(Exhibit "6"); Registration No. 27964 (Exhibit "C"); Registration No.4-2003-000776 (Exhibit "D"); and Registration No. 4-2003-006567(Exhibit "E"), as well as Application Serial No. 4-2003-002038(Exhibit "F"), particularly those falling under Class 11;

Accordingly, the approval of the application in question iscontrary to Section 123.1 (d) of Republic Act No. 8293, whichprovides:

'Section 123. Registrability. - 123.1. A mark cannot beregistered if it:

(d) Is identical with a registered mark belonging to adifferent proprietor or a mark with an earlier filing or prioritydate, in respect of:(i) The same goods or services, or(ii) Closely related goods or services, oriii) If it nearly resembles such a mark as to be likely todeceive or cause confusion;

"12. The approval of the application in question violatesthe right of Opposer to the exclusive use of its registeredtrademarks HIPOLITO & SEAHORSE DEVICE, HIPOLITO &SEAHORSE & TRIANGULAR DEVICE and SEAHORSE ANDREPRESENTATION OF A SEAHORSE on goods listed in theregistration certificates issued to it;

Section 138 of the IP Code, which is a reiteration of Section120 of Republic Act No. 166, as amended, provides:

"Section 138. Certificates of Registration. - Acertificate of registration of a mark shall be primafacie evidence of the validity of the registration, theregistrant's ownership of the mark, and of theregistrant's exclusive right to use the same inconnection with the goods or services and those thatare related thereto specified in the certificate."(Emphasis supplied)

"13. The approval of the application in question has~caused and will continue to cause great and irreparable damag~~and injury to Opposer; (I

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Attached herewith are four (4) labels showing how thetrademarks HIPOLITO & SEAHORSE DEVICE, HIPOLITO &SEAHORSE & TRIANGULAR DEVICE, and SEAHORSE ANDREPRESENTATION OF A SEAHORSE are actually being used byOpposer and a check for P8,686.00 for filing fee, legal research,and processing and hearing fees.

The Notice to Answer dated 14 November 2007 was addressed toRespondent-Applicant's Counsel, Sapalo & Velez Law Offices with address at 11th

Floor, Security Bank Centre, 6776 Ayala Avenue, Makati City. Respondent­Applicant filed their Answer on 01 March 2007. To defeat the Opposition andsupport their Application, Respondent-Applicant in their Answer interposed thefollowing:

ADMISSION

"1. The opening paragraph but only in so far as the particularsof the above-identified trademark application by the hereinrespondent-applicant and the fact of the publication thereof in theE-gazette of the Intellectual Property Office (IPO) which wasreleased on September 7, 2007 and made available to the publicthrough the IPO website;

DENIALS

"2. In the opening paragraph, the allegation on the legalexistence and corporate identity of the opposer as well as theallegations that it will be extremely damaged and prejudiced by theregistration of the subject trademark application;

"3. The entire paragraph 1 of the grounds for opposition statingthat approval of the application in question is contrary to Sections123.1 and 138 of Republic Act 8293;

"4 . The entire paragraph 2 of the ground for opposition statingthat the approval of the application of respondent-registrant willviolate Opposer's right to the exclusive use of its registeredtrademarks and cause great and irreparable damage and injury toit. This is presumptuous and an expression of unfounded opiniondevoid of any factual basis;

"5. The allegation in paragraph 8 which states that Respondent-~Applicant's trademark is confusingly similar to Opposer's registere~ptrademarks HIPOLITO & SEAHORSE DEVICE, HIPOLITO &( I

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SEAHORSE & TRIANGULAR DEVICE and SEAHORSE andREPRESENTATION OF A SEAHORSE;

"6. The allegations in paragraph 9, the truth of the matter andthe correct conclusion being those set forth in the special andaffirmative defenses;

"7. The allegations in paragraphs 10, the truth of the matterand the correct legal conclusions being those set forth in thespecial and affirmative defenses;

"8. The allegations in paragraphs 11, the truth of the matterand the correct legal conclusions being those set forth in thespecial and affirmative defenses.

SPECIFIC DENIALS

"9. The allegations in paragraph 11 are specifically denied, therebeing no supporting evidence to prove that the approval of theapplication in question has caused and will continue to cause greatand irreparable damage and injury to opposer.

Furthermore, the submitted four (4) labels showing how thetrademarks HIPOLITO & SEAHORSE DEVICE, HIPOLITO & SEAHORSE AND TRIANGULAR DEVICE and SEAHORSE ANDREPRESENTATION OF A SEAHORSE, are improper andunacceptable for being violative of the Consumer Act of thePhilippines which requires that labels should indicate the name andaddress of the manufacturer and/or distributor.

And by way of

SPECIAL and AFFIRMATIVE DEFENSES

"10. There is neither legal nor factual basis for opposer's claimthat it will be damaged by the registration of the trademark"DEVICE" hereby designated as D1 in favor of respondent­applicant;

10.1 "The registration and use by the respondent-applicantof the trademark D1 for kerosene stoves and parts-gthereof, burners and regulators; gas lamps, mantles~and wicks falling under class 11 will not causeconfusion or mistake on the part of the consumingr

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public, it being distinct and not confusingly similarwith the trademarks of the opposer;

10.2 "Insofar as the opposition is concerned, the marksregistered by the opposer is distinctively differentfrom that being applied for by herein respondent­applicant and an ordinary purchaser can easilydistinguish one from the other;

10.3 "Likewise, between the four marks of the opposer andD1 applied for by respondent-applicant, there areglaring and vast dissimilarities as to appearance,form, style, shape and size format;

lOA "All of the four marks of opposer bear either the word"HIPOLITO" or "SEAHORSE" on the device itself. Inthe case of respondent-applicant's DEVICE, no wordis written on any part of the device;

10.5 "Pointedly, three our of the four marks of theopposer, namely HIPOLITO & SEAHORSE DEVICEunder Registration No. SR-2929 hereby designated asM1; HIPOLITO & SEAHORSE & TRIANGULAR DEVICEunder Registration No. 27964 hereby designated asM2; and HIPOLITO & SEAHORSE DEVICE underRegistration No. 4-2003-000776 hereby designated asM3, bear the word "HIPOLITO" and is distinctivelywritten on the device itself, while in M2 the wordHIPOLITO is written on the upper portion of theinverted triangle. The representation of the seahorseis between the words "HIPO" and "LITO" in M1 andM3. On the other hand, there is no such word thatappears on D1 of respondent-applicant;

10.6 "The trademark SEAHORSE AND REPRESENTATIONOF A SEAHORSE BETWEEN THE WORDS SEA ANDHORSE under Registration No. 4-2003-006567,hereby designated as M4 distinctively bears the word"SEAHORSE", and is written in bold and capitalizedletters on the device itself. The representation of the~seahorse is between the words "SEA" and "HORSE'r"However, such word clearly does not appear on D1 ofrespondent-applicant;

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10.7 "To further refute the allegations that 01 isconfusingly similar with M1, shown side by side beloware the representation so of the two devices.

01 M1

Aside from what is mentioned in paragraph 4.4, thatthe word HIPOLITO appears in M1 and none in 01, the otherglaring differences between them are:

A. On the configuration of the seahorse - Although itis stated in the trademark application form ofrespondent-applicant that the mark is representedby a seahorse, a quick glance on 01 will revealthat it hardly looks a regular seahorse but afanciful representation of a seahorse unlike M1where the illustration no doubt suggests aseahorse.

The upper portion of the two marks iscompletely different, 01 looks like a profile of theface of a toy horse of a human, which is notsuggested in Ml. The entire upper portions of 01shows a side view of the face of a human beingdistinctively with a f lat head and circular eyeswhile the upper portion of M1 shows a spiked andslimmer body of a seahorse. ~

The lower portion of the two marks is alsocompletely different because Dl it shows a0

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protruded body with three buttons - like figureswith corresponding smooth corrugations and aspiral object at the bottom, while the entire lowerportion of M1 shows an uncoiled tail of aseahorse.

B. On the background or enclosure of the mark - 01is against concentric circles while M1 appears tobe enclosed in a broken circle.

Based on the above-enumerated differenceson the dominant features between 01 and M1, itis evident that two marks are uniquely differentfrom each other, hence rule out any similarity insaid marks. Consequently, confusion or deceptionin the public is hardly conceivable.

10.8 "To further refute the allegation that 01 is alsoconfusingly similar with M2 shown side by side beloware the representations of the two devices. Withoutany going into details between the two marks,visually, they are completely two different marks;

01

/\. ~. -0~2

- -- - - ~

,f r9&y

M2

Any ordinary purchaser cannot be deceived that M2 isconfusingly similar with 01 because obviously there is not asingle detail that they are similar with each other.

10.9 "To further refute the allegation that 01 is also~confusingly similar with M3 shown side by side below AVare the representations of the two devices; / f

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01 M3

Note that M3 is closely similar with M1, the minordifferences between them are the size of the seahorse, fontstyle of the word HIPOLITO and the size of the circleenclosing them.

Since, M3 is closely similar to M1, the detailedexplanations raised in paragraph 4.7 are hereby adopted toshow that 01 is also not confusingly similar witn M3.

10.10 "Finally, to further refute the allegation that 01 is alsoconfusingly similar with M4 shown side by side beloware the representations of the two devices;

M401

~Aside from what is mentioned in paragraph 4.5, that

Jrthe word SEAHORSE appears in M4 and none in 01, theother glaring differences between them are:

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C. On the configuration of the seahorse - As statedin paragraph 4.7.A that trademark of respondent­applicant is represented by a seahorse, again, aquick glance on D1 will reveal that it hardly looksa regular seahorse unlike in M4 in the aboveillustration which no doubt looks a representationof a seahorse.

The entire bodies of the two illustrations arecompletely different in that D1 is solid black incolor while M4 shows a skeletal seahorse. Thereis no single similarity on the upper and lowerportions of the illustrations.

D. On the background or enclosure of the mark - D1is against concentric circles while M4 does nothave any enclosure and it not against background.

Based on the above-enumerated differenceson the dominant features between D1 and M4, itis evident that two marks are uniquely differentfrom each other, hence rule out any similarity insaid marks. Consequently, confusion or deceptionin the public is hardly conceivable. Obviously, theoverall visual dissimilarities are so distinctconfusion is not likely.

"11. The approval of the application for trademark registration ofthe herein applicant would not in any way create confusion to thepublic as to misinterpret that the goods of the applicant emanatedfrom the opposer. It is but proper for the Honorable Office to denythe instant petition and the application for the registration of therespondent-applicant's DEVICE be approved;

"12 . Respondent-Applicant is a law abiding citizen with integrityand goodwill of his own, and known for his fair and justundertaking of his businesses;

12.1

12.2

Respondent-Applicant adopted and used the subjectmark in good faith without any intention to confusethe consuming public; ~

To perfect its claim of ownership over the DEVICE,the corresponding application for registration war

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filed in good faith before the Intellectual PropertyOffice (IPO). It was only after a thoroughexamination by the trademark examiner and hissupervisor in accordance the existing laws andregulations governing the IPO that the DEVICE wasfound registrable over other marks, was allowed toproceed to publication. If the DEVICE of therespondent-applicant is confusingly similar with othermarks as alleged by the opposer, the examiner wouldhave out rightly rejected the subject applicationinstead of recommending it for allowance. This beingso, opposer has the burden of proof to show that theBureau of Trademarks was wrong in its decisionfinding the DEVICE registrable.

From receipt of the Answer, a preliminary conference of the instant suitwas held on 11 June 2008. In view of the termination of the preliminaryconference on same date and considering that the case was mandatorily coveredby the Summary Rules under Office Order No. 79, the parties through theirCounsels were directed to file their respective position paper. From receiptthereof, th is Bureau resolved to submit the case for decision.

Filed as evidence for the Opposer, based on the records, are thefollowing:

1.

2.

3.

4.

5.

6.

Opposer's Certificate ofIncorporation

Certificate of Registration No.SR-2929

Certificate of Registration No.27964

Certificate of Registration No.4-2003-000776

Certificate of Registration No.4-2003-006567

Duplicate originals of the Acknow­ledgement of Filing, TrademarkApplication Form and Drawingof Application NoA-2007-002038 -

Exhibit 'f1 //

Exhibit ''8''

Exhibit "C"

Exhibit ''D''

Exhibit ''E''

~Exhibit ''F''~

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7.

8.

Dau submitted on 3/20/2003; on2/4/2005; on 1/26/2006 and5/31/2006

Print-out of Respondent-Applicant'sSEAHORSE AND SEAHORSEDEVICE as published in thee-Gazette

ISSUES

Exhibits re-r

Exhibit ''/(//

The issues to be resolved in the instant case are:

(a) Whether or not Respondent-Applicant's trademark DEVICE (TheMark is represented by a Seahorse profile defined by a flat head and flat nosewith circular eyes; a corrugation on the body with adjoining button-like figures;an s-shaped body extending downwardly to form a coiled tail against aconcentric circle) is confusingly similar to Opposer's trademarks HIPOLITO &SEAHORSE DEVICE; HIPOLITO & SEAHORSE DEVICE; SEAHORSE ANDREPRESENTATION OF A SEAHORSE BETWEEN THE WORDS SEA AND HORSE,and

(b) Whether or not Respondent-Applicant's trademark application forDEVICE (The Mark is represented by a Seahorse profile defined by a flat headand flat nose with circular eyes; a corrugation on the body with adjoining button­like figures; an s-shaped body extending downwardly to form a coiled tail againsta concentric circle) should be granted registration.

DISCUSSION

Evidence on record showed that Opposer, Wintrade Industrial SalesCorporation, is the prior user and registered owner of the mark with SEAHORSEDEVICE for goods under Class 11 specifically for heating and lighting fixturesand parts/ flashlights/ batteries/ flat-irons temps, teatems, water heater andcooter. refrigerators and parts thereot, either fueled by LP gas, kerosene or Jelectricity, fishing line/ net twine float and hook. Opposer's first registered ~trademark with SEAHORSE DEVICE was adopted in 1977 with the markA~described as HIPOLITO & SEAHORSE DEVICE and appearing as: (f

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( I~tIII~O I 0W

Registration No. : SR-2929Date of Registration: August 18, 1977

The goods during this time already covered products identical and/or similar toRespondent-Applicant's stoves, burners and lamps namely kerosene stoves andparts thereof, burners and regulators/ gas lamps/ mantles and wicks which aresubject of this instant suit; Opposer's goods included under Registration No.SR-2929 which was issued on 18 August 1977 (Exhibit "8'; Opposen wereenumerated as: heating and lighting fixtures and ports, flashlights/ batteries/flat-irons/ lamps/ lanterns/ water heater and cooler; refrigerators and partsthereof, either fueled by LP gas/ kerosene or etectridty, fishing line/ net twine/float and hook. In 2003, Opposer applied to register another variation of amark with SEAHORSE DEVICE described as SEAHORSE AND REPRESENTATIONOF A SEAHORSE BETWEEN THE WORDS SEA AND HORSE to cover goods underClass 11 specifically for ballast tempholder. lamps/ water heaters/ refrigeratorsand lanterns under class 11, which mark matured into registration bearingRegistration No. 4-2003-006567 (Exhibit "E". Opposers which was issued on 20March 2005 and appeared as :

Subsequently, another variation of a SEAHORSE DEVICE was applied by Opposerin 2007, few days before Respondent-Applicant's trademark application, sUbje~

of this suit and this matured into registration with particular description ~~ ~

SEAHORSE AND REPRESENTATION OF A SEAHORSE BETWEEN THE WORDS SEF

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AND HORSE to cover goods under Class 11 specifically for burner (Exhibit "r;Opposer).

Thus , Opposer carries or incorporates the SEAHORSE DEVICE in almost allor majority of its t rademark registrations whatever goods it cover, be it lamps,burner, f ishing, electronics or electrical products. As the owner of registeredmarks carrying the SEAHORSE DEVICE, Opposer obta ined the followingregistrations and its var iations from the Intellectual Property Office:

Trademark Description of the Filing Goods Class Date ofmark Date covered Reqistration

Heating and 9,11& August 1~lighting fixtures

~HIPOLITO & and parts, 22 1977

SEAHORSEflashlights,batteries, flat -

DEVICE irons, lamps,lanterns, waterheater and cooler,refrigerators andparts thereof,either fueled by LPgas, kerosene orelectricity, fishingline, net, twine,float and hookLockset, padlock, 6, 7, 9, Ju/y ~drawer lock

HIPOLITO & 29 ; electric motor, 11, 12 & 2004

'~ib SEAHORSE Januarydiesel engine, 17generator, paper

DEVICE 2003 shredder, copy

W machines, scales,transformer,communicationequipment,telephoneapparatus,calculator,computer,monitor, bulbs,fluorescent tube,starter, ballast,insulatingmaterials i.e. tube,plate and rod,socket,lampholder,lighting fixture,electric wiringdevices

SEAHORSE AND Telephone 9 & 11 March 20,apparatus,

REPRESENTATION 24 July calculator, 2005

rut OF A SEAHORSE 2003computer,monitor, starter,

BETWEEN THE socket, flat irons,ranges under

WORDS SEA AND Class 9, ballast,lampholder,

HORSE lamps, water

~heaters,refrigerators andlanterns underClass 11

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Opposer can trace its ownership and its right to use the SEAHORSE DEVICE formore than thirty (30) years, more or less, prior to the filing by Respondent­Applicant of its subject application on March 1, 2007. As owner and prior userof the SEAHORSE DEVICE for use on lamps, heating fixtures burners etc.,Opposer has proprietary rights which include the right to exclude third partiessuch as herein Respondent-Applicant from registering the mark DEVICE ongoods under Class 11, particularly the following:

Kerosene stoves and parts thereof, burners and regulators/ gaslamps/ mantles and wicks

A comparison of Opposer's and Respondent-Applicant's marks with SEAHORSEDEVICE will show that Respondent's DEVICE is confusingly similar to any ofOpposer's registered trademarks with SEAHORSE DEVICE.

This Bureau reproduced Opposer's as well as Respondent-Applicant's marks forpurposes of comparison:

Ooooser's registered trademarks with SEAHORSE DEVICE Respondent 'smark DEVICE

As held in the case of Unno Commercial Enterprises, Inc. vs. General MillingCorporation ''prior use by one will controvert a claim of legal appropriation bysubsequent users ". Hence, it may be concluded inevitably that Respondent­Applicant's use of substantially the same mark on the same goods will result inan unlawful appropriation of mark previously used by Opposer and notabandoned.

Opposer was the first to use the mark with SEAHORSE DEVICE. Asproof of its use, Opposer presented the Declaration of Actual Use in connectionwith Registration No. SR-2929 for the trademark HIPOLITO & SEAHORSE DEVICE(Exhibit "G/; Opposery; likewise, the Declaration of Actual Use in connection withRegistration No. 4-2003-000776 for the trademark HIPOLITO & SEAHORSSDEVICE (Exhibit 'T; Opposery; and, the Declaration of Actual Use in connectio~~

with Registration No. 4-2003-006567 for the trademark SEAHORSE ANDY(REPRESENTATION OF A SEAHORSE BETWEEN THE WORDS SEA AND HORSE(Exhibit "J'; Opposers .

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From a consideration of the foregoing factual findings, it is clear that theappropriation and subsequent registration of the mark SEAHORSE ANDSEAHORSE DEVICE in the name of herein Respondent violates and contravenesthe provision of Sections 123.1 of Republic Act 8293 (the "IP Code") becausesaid mark is confusingly similar to Opposer's registered marks with SEAHORSEDEVICE owned, used and not abandoned by Opposer as to be likely whenapplied to or used in connection with the goods of Respondent-Applicant tocause confusion or mistake, or deceive the purchasers thereof as to the originsof the goods. The continued registration of the mark SEAHORSE ANDSEAHORSE DEVICE for lamps, heating fixtures, burners under Class 11 in thename of Respondent will cause grave and irreparable injury and damage toOpposer.

Sections 123.1 (d) of the Intellectual Property Code (the "IP Code") whichprovides:

''SEC 123. Registrability

123.1. A mark cannot be registered if it: x x x

(d) Is identical with a registered mark belonging to adifferent proprietor or a mark with an earlier filing or prioritydate, in respect of:(i) The same goods or services, or(ii) Closely related goods or services, oriii) If it nearly resembles such a mark as to be likely todeceive or cause confusion; x x x

Hence, to allow herein Respondent-Applicant to use a SEAHORSE DEVICE willresult in confusion as to goods produced by both parties considering that theproducts involved belong to the same class, which makes the confusion evenmore inevitable. The confusing similarity between Respondent's DEVICE andOpposer's registered marks with SEAHORSE DEVICE for use on lamps, burners,heating fixtures is very likely to deceive the purchasers on which mark is beingused.

The right to register trademarks, trade names and service marks is basedon ownership. Only the owner of the mark may apply for its registration (Bert R.Bagano v. Director ofPatents, et. al., G.R. No. L-20170, August 10, 1965). Being~the prior user of the mark with SEAHORSE DEVICE, Opposer is the actua~

owner thereof. Thus, Respondent has no right to register the subject mark in itsown name, to the detriment of herein Opposer.

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Opposer is the registered owner, originator, prior applicant of the trademarkwith SEAHORSE DEVICE. The use and adoption by Applicant of substantially thesame mark as subsequent user can only mean that Applicant wishes to reap onthe goodwill, benefit from the advertising value and reputation of Opposer'strademark with SEAHORSE DEVICE.

In the case of American Wire & Cable Co. vs. Director of Patents, 31SCRA 544, it was observed that:

"Why of the million of terms and combination of letters and designsavailable the appellee had to choose a mark so closely similar toanother's trademark if there was no intent to take advantage of thegoodwill generated by the other mark"

WHEREFORE, premises considered, the Notice of Opposition is, as it ishereby SUSTAINED. Consequently, application bearing Serial No. 4-2007­002196 filed by Vicente Lo on 01 March 2007 for the registration of the markDEVICE (The Mark is represented by a Seahorse profile defined by a flat head andflat nose with circular eyes; a corrugation on the body with adjoining button-likefigures; an s-shaped body extending downwardly to form a coiled tail against aconcentric circle) for use on goods namely kerosene stoves and parts thereof,burners and regulators; gas lamps, mantles and wicks under Class 11 is, as it ishereby, REJECTED.

Let the filewrapper of DEVICE subject matter of this case together withthis Decision be forwarded to the Bureau of Trademarks for appropriate action.

SO ORDERED

Makati City, 27 August 2008.

EST E LITA BELTRAN-ABELARDO~Direct 0 Bureau ofLegal Affairs

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