iPINTEllECTUAL PROPERTYPHiliPPINES

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WILLIAM TIENG, }Respondent-Registrant. }

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SUNNEX PRODUCTS LIMITED,Petitioner,

IPC No. 14-2006-00197Petition for Cancellation:

Registration No. 064708Date Issued: 16 June 1997

Trademark: "Sunnex andTriangle Device with Spoonand Fork Device"Decision No. 200'1 - Ub

This pertains to a Verified Petition for Cancellation filed on December 22,2006 by herein Petitioner, SUNNEX PRODUCTS LIMITED, docketed as InterPartes Case No. 14-2006-00197 of the registration of the trademark "SUNNEXAND TRIANGLE DEVICE WITH SPOON & FORK DEVICE" bearing RegistrationNo. 064708 and issued on June 16, 1997 for knives under Class 08 and spoons,forks, pots, pans, can openers, cups, ladle, glasses, pitchers, kettle, platesunder Class 21 of the Nice Classification of Goods to Respondent-RegistrantWILLIAM TIENG.

Petitioner is a company of Hong Kong with business address at 20jFSunbeam Plaza, 1155 Canton Road, Kowloon, Hong Kong. Respondent-Registrant, on the other hand, has a given address at 2740 F. B. Harrison,Pasay City, Metro Manila, Philippines.

Petitioner petitions the cancellation of the trademark "SUNNEX ANDTRIANGLE DEVICE WITH SPOON & FORK DEVICE" on the basis of thefollowing:

The trademark "SUNNEX & TRIANGLE DEVICE WITH A SPOON &FORK DEVICE" is confusingly similar to Petitioner's well-knowntrademark "SUNNEX & DEVICE", which enjoys priority of use inthe Philippines and in the international market for goods fallingunder International Classes 08 and 21. The mark has beenregistered in Hong Kong, Petitioner's domicile as well as in theUnited Kingdom, the rest of Europe, the USA and in othe~

Republic of the Philippines ~ I ~INTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines • www.ipophil.gov.ph 1Telephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

countries in the world and not abandoned, as to likely causedeception, confusion and mistake on the part of the purchasingpublic, when applied to or used in connection with the goods ofthe Respondent-Registrant.

The Respondent-Registrant intentionally and fraudulently usedand registered the trademark "SUNNEX & TRIANGLE DEVICEWITH A SPOON & FORK DEVICE" knowing fully well that themark is confusingly similar to herein Petitioner's internationally-known trademark and equally well-known in the Philippines totake advantage of the popularity and goodwill generated andconnected with the Petitioner's "SUNNEX & DEVICE" trademarkundoubtedly to confuse, mislead, or deceive purchasers intobelieving that the goods of Respondent-Registrant are those ofthe Petitioner.

Section 151.1 (b) of Republic Act 8293 allows the cancellation ofa trademark registration by "any person who believes that he isor will be damaged by the registration of the mark:

"At any time, xxx if the registered mark xxx was obtainedfraudulently or contrary to the provisions of this Act xxx"

Respondent-Registrant had prior knowledge of the ownership ofthe trademark "SUNNEX & DEVICE" by herein Petitioner byreason of the prior and continuous use thereof by Petitioner inthe Philippine market as well as in several countries abroad, notto mention the continuous advertisement and promotionconducted by Petitioner for the mark in the Philippines and inmagazines and other promotional materials in the internationalmarket and likewise made available to the local market. The useand adoption in bad faith by Respondent-Registrant of the mark"SUNNEX & TRIANGLE DEVICE WITH A SPOON & FORK DEVICE"would falsely tend to suggest a connection with the Petitioner andwould, therefore, constitute fraud on the general public andfurther, cause dilution of the distinctiveness of the Petitioner's ~mark to the prejudice and irreparable damage of the Petitioner. / I

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Respondent-Registrant has no bonafide commercial use in thePhilippines of the mark "SUNNEX & TRIANGLE DEVICE WITH ASPOON & FORK DEVICE"

The trademark "SUNNEX & DEVICE" is and ever since its adoption,has been continuously applied to the products of Petitioner. Thetrademark "SUNNEX & DEVICE" has come to be and is nowpopularly known throughout the world including the Philippinessuch that Petitioner's products bearing said mark has becomeidentified as coming from Petitioner herein. Hence, thetremendous goodwill established by the said mark nurturedthrough its long use, the superior quality of its products andpublic acceptance is an invaluable asset of the Petitioner thatmust be protected from trademark infringement, unfaircompetition and dilution.

The registration of the mark "SUNNEX & TRIANGLE DEVICEWITH A SPOON & FORK DEVICE" in favor of Respondent-Registrant is contrary to the provisions of Republic Act 8293otherwise known as the Intellectual Property Code of thePhilippines which provides:

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

"(e) Is identical with, or confusingly similar to, orconstitutes a translation of a mark which is considered bythe competent authority in the Philippines to be well-known internationally and in the Philippines, whether ornot it is registered here as being already the mark of aperson other than the applicant for registration, and usedfor identical or similar goods or services xxx."

The registration of the said mark in favor of the Respondent~~Registrant is contrary to the commitments of the PhiliPPine;I

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under the Paris Convention for the Protection of IndustrialProperty, as amended, providing amongst others that:

"Article 6bis (1) The countries of the Union undertake, exofficio if their legislation so permits, or at the request of aninterested party, to refuse or cancel the registration, and toprohibit the use, of a trademark which constitutes areproduction, an imitation, or a translation, liable to createconfusion, of a mark considered by the competent authorityof the country of registration or use to be well-known in thatcountry as being already the mark of a person entitled tothe benefits of this Convention and used for identical orsimilar goods. These provisions shall also apply when theessential part of the mark constitutes a reproduction of anysuch well-known mark or an imitation liable to createconfusion therewith."

Herein Petitioner's "SUNNEX & DEVICE" trademark specifically forgoods falling in Classes 08 and 21 is well-known internationallyand in the Philippines as the same has been continuously used bythe Petitioner in commerce and has invested tremendous amountof resources in the promotion thereof. The registration of theconfusingly similar mark in the name of the Respondent-Registrant covering the same, similar and identical goods hascaused grave and irreparable damage and injury to the Petitioner.

The registration of the trademark "SUNNEX & TRIANGLE DEVICEWITH A SPOON & FORK DEVICE" in the name of the Respondent-Registrant is contrary to other provisions of Republic Act 8293."

In support of the instant Petition for Cancellation, the Petitioner reliedon the following facts:

"1. Petitioner is the registered owner of the trademark"SUNNEX & DEVICE" specifically for goods falling in Classes 08and 21 in various jurisdictions as evidenced by various Certificatesof Registrationissuedin its nameworldwide. TheseworldWidr

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registrations of Petitioner for the said mark have not beenabandoned and are currently in force.

"2. In the Philippines, Petitioner is the applicant for theregistration of "SUNNEX & DEVICE" in Classes 08 and 21respectively under Application Nos. 4-1995-098764 filed on 07March 1995 and 4-1995-099140 filed 20 March 1995. The saidtrademark applications filed by the Petitioner are prosecuted inaccordance with Republic Act 166 as per election of the Petitionerand accordingly, the said trademark applications should beaccorded preference as Petitioner has "priority of use" of themark "SUNNEX & DEVICE" in the Philippines as well as ininternational commerce.

"3. Petitioner has adopted and has been in continuous useof the trademark "SUNNEX & DEVICE" in the Philippines and ininternational trade and commerce long before Respondent-Registrant filed its application for the registration of its trademark"SUNNEX & TRIANGLE DEVICE WITH SPOON & FORK DEVICE"subject of the instant petition for cancellation. Petitioner's goodsbearing the "SUNNEX AND DEVICE" mark are widely known in thePhilippines and has gained tremendous popularity amongst localconsumers.

"4. The trademark of Respondent-Registrant causesconfusion, mistake and deception to the public as to the source ororigin of Respondent-Registrants goods.

"5. Petitioner has invested tremendous amount ofresources in the promotion of its "SUNNEX & DEVICE" trademarkas a result of which said mark has gained local as well asinternational popularity and repute.

"6. In view of the prior adoption, use and worldwidetrademark registrations for the "SUNNEX & DEVICE" trademark ofthe Petitioner, Respondent-Registrant is clearly not entitled toregister the trademark "SUNNEX & TRIANGLE DEVICE WITHSPOON & FORK DEVICE" in its favor.

"7. The continued registration of the trademark subject ofthe instant Petition for Cancellation will undoubtedly violat~~Petitioner's rights and interests in its trademark "SUNNEX ~ /

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DEVICE" and will most assuredly result in the dilution and loss ofdistinctiveness of Petitioner's "SUNNEX & DEVICE" trademark."

Petitioner submitted the following documentary exhibits in compliancewith Office Order No. 79, to wit:

Annex "A" of the Affidavit of Mr. LauChi consisting of a list of countriesaround the world where "SUNNEX &Device" products of Petitioner aredistributed

Annex "6" of the Affidavit of Mr. LauChi consisting of copies ofadvertisements for "SUNNEX &Device" appearing worldwide includingthe Philippines

Annex "c" of the Affidavit of Mr. LauChi identified as the first page fromthe Petitioner's websitewww.sunnex.com.hk

Annex "D" of Mr. Lau Chi's Affidavitconsisting of a list of Petitioner's validand existing trademark registrationsand pending applications for the mark"SUNNEX & Device" worldwide

Annex "E" of the Affidavit of Mr. LauChi consisting of legalized copies oftrade mark registrations for the mark"SUNNEX & Device" issued in theUnited Kingdom, Hong Kong, USA andFrance

Legalized certified copy of the entry inthe United Kingdom Patent Officepertaining to Petitioner's trademarkregistration for "SUNNEX & DeVicer

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"E-2" Legalized certified copy of the entry inthe United Kingdom Patent Officepertaining to Petitioner's trademarkregistration for "SUNNEX & Device"covering Class 8

"E-3" Legalized certified copy of the entry inthe Trademarks Registry of HongKong pertaining to Petitioner'strademark Reg. No. 199600745covering Class 8 for the mark"SUNNEX & Device"

"E-4" Legalized certified copy of the entry inthe Trademarks Registry of HongKong pertaining to Petitioner'strademark Reg. No. 19710350covering Class 21 for the mark"SUNNEX & Device"

"E-5" Legalized certified copy of Petitioner'sCertificate of Trademark RegistrationNo. 2,056,573 issued in the UnitedStates of America covering Class 8

"E-6" Legalized certified copy of Petitioner'sCertificate of Trademark RegistrationNo. 2077971 issued in Francecovering Classes 8 and 21

On June 7, 2007, Respondent-Registrant timely filed his Verified Answerwith specific denials of several allegations stated in the petition for cancellationon the ground of lack of knowledge or information sufficient to form a belief asto the truth thereof. Special and affirmative defenses are likewise set forth, to~wit: { I

1. Respondent-Registrant is the first user and adopter of themark "SUNNEX & TRIANGLE DEVICE WITH SPOON & FORKDEVICE".

3. Respondent-Registrant is not guilty of bad faith in using andregistering the mark "SUNNEX & TRIANGLE DEVICE WITHSPOON & FORK DEVICE".

4. Estoppel by laches, waiver and abandonment bar Petitionerfrom cancelling the trademark registration for the mark"SUNNEX & TRIANGLE DEVICE WITH SPOON & FORKDEVICE".

Respondent-Registrant attached in his Verified Answer the followingdocumentary exhibits:

KLG International, Inc.'s Article ofIncorporation

General Information Sheet for theyear 2006

Entry in the United Kingdom Registerof Trademarks showing that saidalleged registration gives "no right tothe exclusive use of a letter "s"

Entry in the United Kingdom Registerof Trademarks showing that saidalleged registration gives "no right tothe exclusive use of the devices of aspoon and a knife and a letter "s"

Entry in the Hong Kong Trade MarksRegister for Trade Mark No.199600745 showing that said allegedregistration gives "no right to therexclusive use of the devices of a knife

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"6" Entry in the Hong Kong Trade MarksRegister for Trade Mark No. 19710350showing that its alleged registrationshows "no right to the exclusive useof the letter "s"

"7" U. S. Trademark Registration No.2,056,573 showing that its registrationhas been cancelled for Class 8,namely "knives, forks, spoons, electriccan openers, non-electric choppers,hand operated choppers, paringknives, scissors, tongs, and snailforks"

"8" Print-out of registration gathered fromWestlaw showing Reg. No.TMA569010 in Canada for the mark"SUNNEX" registered in the name ofSunstar Suisse SA

"9" Print-out of registration gathered fromWestlaw showing Reg. No. 1296318for the mark "SUNNEX" in variousjurisdictions registered in the name ofSunstar Suisse SA

"10" Print-out of registration gathered fromWestlaw showing Reg. No. 459537 forthe mark "SUNNEX SUNNEX" invarious jurisdictions registered in thename of Sunnex Equipment AS

"11" Print-out of registration gathered fromWestlaw showing Reg. No. 1387665 inFrance for the mark "SUNNEX" in thename of Nolato Sunnex Equipment AS

"12" Print-out of registration gathered fromWestlaw showing Reg. No. 963850issuedin Germanyfor the markr

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"SUNNEX" registered in the name ofNolato Sunnex Equipment AB

Print-out of registration gathered fromWestlaw showing Reg. No. 159063issued in Sweden for the mark"SUNNEX" registered in the name ofNolato Sunnex Equipment AB

Print-out of registration gathered fromWestlaw showing Reg. No. 159582issued in Sweden for the mark"SUNNEX" registered in the name ofNolato Sunnex Equipment AB

Print-out of registration gathered fromWestlaw showing Reg. No. 470641issued in Switzerland for the mark"SUNNEX" registered in the name ofSunstar Suisse SA

Print-out of registration gathered fromWestlaw showing Reg. No. 1092213issued in the United Kingdom for themark "SUNNEX" registered in thename of Sunnex Equipment AB

Print-out of registration gathered fromWestlaw showing Reg. No. 2203125issued in the United Kingdom for themark "SUNNEX" registered in thename of Sunnex Equipment AB

Print-out of registration gathered fromWestlaw showing Reg. No. 2766974 inU.S.A. for the mark "SUNNEX"registered in the name of Uni-SunstarB. V.

Representative samples of salesinvoices issued by KLG International,Inc. to several department storeswhere Respondent-Registrant's 900d1t

bearing the mark "SUNNEX &TRIANGLE DEVICE WITH SPOON &FORK DEVICE" were being distributed

On June 14, 2007, Respondent-Registrant filed with this Bureau an Ex-Parte Request for the Issuance of a Subpoena Duces Tecum addressed to theDirector of the Bureau of Trademarks of this Office or her authorizedrepresentative to appear before this Bureau and to bring the respectivefilewrappers or all documents issued and received by the Bureau ofTrademarks in the course of Petitioner's prosecution of Trademark ApplicationNos. 4-1995-098764 and 4-1995-099140 for the mark "SUNNEX & DEVICE". Incompliance with the said subpoena, an authorized representative from theBureau of Trademarks furnished this Bureau with the filewrappers ofPetitioner's Trademark Application Nos. 4-1995-098764 and 4-1995-099140 forthe mark "SUNNEX & DEVICE".

There being no Reply or Rejoinder filed by Petitioner or Respondent-Registrant, respectively, the case was thereafter set for preliminary conferenceon July 30, 2007. Subsequently, a Motion to Admit Additional DocumentaryEvidence was filed by the Petitioner praying that the additional documentaryevidence consisting of the Affidavit of James Sy with Annexes be considered asadditional evidence in favor of the Petitioner. Respondent-Registrant filed hisopposition on the said motion on July 2, 2007.

Resolving the motion filed by Petitioner, this Bureau, by virtue of OrderNo. 2007-1882 dated October 11, 2007, denied said motion and set thecontinuation of the preliminary conference on November 28, 2007. Afterseveral attempts to settle the case amicably had failed, the preliminaryconference was finally terminated on January 9, 2008 wherein the parties weredirected to file their respective position papers and, if desired, draft decisionswithin a non-extendible period of ten (10) days from receipt of the Order ofthis Bureau.

Both parties timely filed their respective position paper hence, this casefor decision.

WHETHER ORESTABLISHED BY

NOT PETITIONER HAS SUFFICIENTLYSUBSTANTIALEVIDENCE THAT IT IS THE!:,

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AGUAL PRIOR USER OF THE MARK "SUNNEX & DEVICE" IN THEPHILIPPINES AS TO WARRANT THE CANCELLATION OFRESPONDENT-REGISTRANTS "SUNNEX AND TRIANGLE DEVICEWITH SPOON & FORK DEVICE" MARK

WHETHER OR NOT PETITIONER'S "SUNNEX & DEVICE" MARK ISA WELL-KNOWN MARK

Prefatorily, this Bureau will not delve on the issue of confusing similarityconsidering the glaring similarity of the marks and the relatedness of the goodsthey respectively carry both falling under Classes 8 and 21. Corollary, since thecrux of the controversy hinges on the alleged prior adoption, use andworldwide registrations of the Petitioner's mark "SUNNEX & DEVICE", it isproper for this Bureau to delve on the sufficiency of the evidence presented bythe Petitioner to prove its allegations as to warrant the cancellation ofRespondent-Registrant's "SUNNEX & TRIANGLE DEVICE WITH SPOON ANDFORK DEVICE" mark.

Considering that the trademark subject of the instant petition forcancellation was filed on February 17, 1993 or during the effectivity of the oldTrademark Law CR. A. 166, as amended), this Bureau shall resolve the caseunder said law so as not to adversely affect rights already acquired prior to theeffectiVity of the new Intellectual Property Code CR.A. 8293).

"Section 2. What are registrable. - Trademarks, tradenames and service marks owned by persons, corporations,partnership or associations domiciled in the Philippines andby persons, corporations, partnerships or associationsdomiciled in any foreign country may be registered inaccordance with the provisions of this Act: Provided, Thatsaid trademarks, trade names, or service marks areactually used in commerce and services not less thantwo months in the Philippines before the time theapplications for registration are filed: And provide~furthe0 That the country of which the applicant for ~registration is a citizen grants by law substantially simila!f

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privileges to citizens of the Philippines, and such fact isofficially certified, with a certified true copy of the foreignlaw translated into the English language, by the governmentof the foreign country to the Government of the Republic ofthe Philippines."

"Section 2-A. Ownership of trademarks/ trade namesand service marks/ how acquired. - Anyone who lawfullyproduces or deals in merchandise of any kind or whoengages in any lawful business, or who renders any lawfulservice in commerce, by actual use thereof in manufactureor trade, in business, and in the service rendered, mayappropriate to his exclusive use a trademark, a trade name,or a service mark not so appropriated by another, todistinguish his merchandise, business or service from themerchandise, business, or service of others. The ownershipor possession of a trademark, trade name, service mark,heretofore or hereafter appropriated, as in this sectionprovided, shall be recognized and protected in the samemanner and to the same extent as are other property rightsknown to the laws."

The same law also provided that an owner has the right to register themark in its name unless his mark resembles a mark registered in thePhilippines or one which is previously used in the Philippines by another andnot abandoned. Thus, Section 4 of Republic Act No. 166, as amended,provides that:

"Section 4. Registration of trademarks/ trade namesand service marks on the principal register. - There ishereby established a register of trademarks, trade namesand service marks which shall be known as the principalregister. The owner of a trademark, trade name or servicemark used to distinguish his goods, business or servicesfrom the goods, business, or services of others shall havethe right to register the same on the principal register,unless it:

(d) Consists of or comprises a mark or trade namewhich so resembles a mark or trade name registered, ~in the Philippines or a mark or trade name previously II,

used in the Philippines by another and notabandoned, as to be likely, when applied to or used inconnection with the goods, business or services of theapplicant, to cause confusion or mistake or to deceivepurchasers.

It is the Petitioner's allegation that being the prior adopter, user andholder of worldwide registrations for the mark "SUNNEX & DEVICE", it isentitled to protection under the Philippine law and that Respondent-Registrantis not entitled to the registration of the trademark "SUNNEX & TRIANGLEDEVICE WITH SPOON AND FORK DEVICE" in its favor. Now, the next questionhinges as to whether the Petitioner has sufficiently established by substantialevidence its allegations of prior actual commercial use of the mark in thePhilippines as to warrant the cancellation of Respondent-Registrant's trademarkregistration?

This Bureau believes that the Petitioner's allegations are bereft ofconvincing evidence to prove the same.

To start with, the Petitioner presented various Certificates ofRegistrations (Exhibits "E-1" to "E-6") issued in its name in various jurisdictionsand list of Petitioner's valid and existing trademark registrations and pendingapplications worldwide (Exhibit "D") to bolster its claim of ownership andpriority of use over the trademark "SUNNEX & DEVICE" specifically for goodsfalling under Classes 8 and 21 in the Philippines as well as in internationalcommerce.

In this regard, it is worthy to note that the law on trademarks adheresto the doctrine of nationality or territoriality. Thus, the law requires that theadoption and use of a trademark, trade name or service mark must be incommerce in the Philippines and not abroad. The goods, business or servicesin connection with which the mark or trade name is being used must be sold orcarried on in trade in the Philippines. Moreover, the mere presentation ofvarious certificates of registrations abroad is not sufficient to establish a claimof prior use over a trademark in the Philippines as the adoption of the markmust be in the Philippines and not abroad.

It is a fundamental principle in Philippine Trademarks Law that actualuse in commerce in the Philippines is a pre-requisite to the acquisition ofownership over a trademark or a trade name. (Kabushi Kaisha Isetan v.Intermediate AppellateCourt,et. al., G. R. No.75420, November15~

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1991) Moreover, the use required as a foundation of the trademark rightsrefers to local use at home and not abroad. (2 Callman, UnfairCompetition and Trademarks, par. 76.4, p. 1006)

The scope of protection is determined by the law of the country in whichprotection is sought, and international agreements for the protection ofindustrial property are predicated upon the same principle. x x x The userequired as the foundation of the trademark rights refers to local useat home and not abroad. x x x (2 Callman, Unfair Competition andTrademarks, par. 76.4, p. 1006).

Therefore, Petitioner's claim of priority of use over the mark "SUNNEX &DEVICE" in 1973 in Great Britain (Exhibit "F") will not automatically vest thePetitioner of prior use over said mark in the Philippines as the trademarks lawrequires prior commercia! use in the Philippines and not abroad.

In the case of Bata Industries, Ltd. v. Court of Appeals, 114 SCRA318, the Supreme Court categorically ruled that:

"The use of the mark must be in the country. Foreignuse creates no trademark right in the Philippines, followingthe nationality principle upon which the trademark lawrests."

It will also be noted that Petitioner submitted in evidence a legalizedcertified copy of the entry in the Trademarks Registry of Hong Kong pertainingto Trademark Registration No. 19710350 for the mark "SUNNEX & DEVICE" inClass 21 (Exhibit "E-4") showing that the mark has been registered in HongKong as early as 1971 in the name of its original owner SunbeamManufacturing Company Limited and later assigned to Sunnex Products Limitedby virtue of a Deed of Assignment.

In this regard, suffice it to say that the registration of the mark in HongKong is not registration in the Philippines. Thus, even if the mark "SUNNEX &DEVICE" had been registered as early as 1971 in Hong Kong which is earlierthan the registration date of Respondent-Registrant's mark in the Philippines,the same is not tantamount to prior use or registration also in the Philippinesadhering to the principle of nationality or territoriality in trademarks law.

As held in Sterling Products International, Inc. v. Farbenfabrike~A. G., 44 SeRA 1226-1227: ~

"The United States is not the Philippines. Registration inthe United States is not registration in the Philippines. x x xPlaintiff itself concedes that the principle of territoriality ortrademark law has been recognized in the Philippines.Accordingly, the registration in the United States of the"BAYER" trademark would not of itself afford Plaintiffprotection for use by the Defendants in the Philippines of thesame trademark for the same or different goods."

Further, assuming arguendo that Petitioner's Exhibits "G", "G-1" to "G-23" were admitted by this Bureau, still, the same are not sufficient to showprior use of the mark in the Philippines since the said exhibits consisting ofdelivery receipts only show use of the mark in 2007.

On the final analysis, Petitioner stated by way of affirmative allegationsthat it is the applicant for the registration of "SUNNEX & DEVICE" in Classes 8and 21 respectively under Application Nos. 4-1995-098764 filed on 7 March1995 and 4-1995-099140 filed on 20 March 1995 to prove that it has priority ofuse in the Philippines. However, it will be noted that these trademarkapplications which were initially rejected by the Bureau of Trademarks will notsuffice to prove prior commercial use of Petitioner's mark in the Philippines.

Moreover, this Bureau cannot give credence to the statement given byPetitioner's witness, Mr. Lau Chi, in his Affidavit (Exhibit "F") that thetrademark "SUNNEX & DEVICE" was first used in the Philippines in the year1993. Such statement may be properly considered as self-serving in theabsence of proof to that effect. Petitioner, which made such allegation, hasthe burden of proving by substantial evidence that indeed the mark "SUNNEX &DEVICE" was really first used by the Petitioner in the Philippines in 1993. Inthe absence of such proof, this Bureau will not be convinced that the Petitionerhas priority of use over the mark "SUNNEX & DEVICE" in the Philippines thanthat of Respondent-Registrant as to warrant the cancellation of the latter'strademark.

Assuming arguendo that the mark "SUNNEX & DEVICE" was really firstused by the Petitioner in the Philippines in the year 1993, still, this will notripen into the claim of prior use of the mark in the Philippines as theRespondent-Registrant had clearly established that it has actual priorcommercial use of the mark "SUNNEX & TRIANGLE DEVICE WITH SPOON &FORK DEVICE" in the Philippines than that of the Petitioner. Indeed,Petitioner's allegation of actual prior use of the mark in the Philippines wasnegated by the statement given by its own witness Mr. Lau Chi. petitione~ J..V'claimed that the mark "SUNNEX & DEVICE" was first used in the Philippines in! I

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1993 (Exhibit "F") but the Respondent-Registrant was able to show that indeedits mark was first used in the Philippines as early as October 16, 1992 asshown in its Certificate of Registration for the mark "SUNNEX & TRIANGLEDEVICE WITH SPOON & FORK DEVICE" bearing Registration No. 64708.Clearly, Petitioner fell short of evidence to prove that it has prior actualcommercial use of the mark "SUNNEX & DEVICE" in the Philippines than that ofRespondent-Registrant. Therefore, its allegation of priority of use over saidmark must fail.

As to the second issue of whether the mark "SUNNEX & DEVICE" is aninternationally well-known mark, this Bureau likewise rules in the negative asherein Petitioner failed to establish and prove such fact in the case at hand.

It has been settled that the onus probandi in establishing and provingthat the mark is well-known internationally and in the Philippines lies on thePetitioner. However, with all the pieces of evidence presented by the latter, itfailed to substantiate by substantial evidence that its mark "SUNNEX &DEVICE" falls under the category of a well-known mark.

The Rules and Regulations on Trademark, Service Marks, Trade Namesand Marked or Stamped Container of Goods, particularly Rule 102 thereofprovides for the Criteria for Determining whether a mark is well-known:

"Rule 102. Criteria for determining whether a mark iswell-known. - In determining whether a mark is well-known, the following criteria or any combination thereofmay be taken into account:

(a) the duration, extent and geographical area of any useof the mark, in particular, the duration, extent andgeographical area of any promotion of the mark,including advertising or publicity and the presentation, atfairs or exhibitions, of the goods and/or services to whichthe mark applies;

(b) the market share, in the Philippines and in othercountries, of the goods and/or services to which themark applies;

(c) the degree of the inherent or acquired distinction ofthe mark;

Cd) the quality-image or reputation acqUired by the mark; ~,

(e) the extent to which the mark has been registered inthe world;

(f) the exclusivity of registration attained by the mark inthe world;

(g) the extent to which the mark has been used in theworld;

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

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

(j) the record of successful protection of the rights in themark;

(k) the outcome of litigations dealing with the issue ofwhether the mark is a well-known mark; and

(I) the presence or absence of identical or similar marksvalidly registered for or used on identical or similar goodsor services and owned by persons other than the personclaiming that his mark is a well-known mark."

In fine, the foregoing provision is clear that the protection accorded to awell-known mark should comply with the criteria mentioned above. Petitionerin the case at bar failed to meet neither the criteria nor any of thecombinations of the cited criteria.

Indeed, Petitioner failed to adduce evidence showing the duration andextent of promotion of the mark "SUNNEX & DEVICE". On the contrary,Petitioner's claim of extensive advertisement for its products was notsubstantiated by substantial evidence. This Bureau cannot give credence tothe copies of advertisements (Exhibit "B") for the mark "SUNNEX & DEVICE" toprove that the mark have been circulated worldwide, much less in thePhilippines, in the absence of competent proof showing its date of publicationand worldwide circulation. As correctly observed by the Respondent-Registrant,the dates when the supposed advertisements were published were even notdiscernible from the publication, which discredits Petitioner's claim of extensiv7fI'Vpromotion of its goods bearing the mark "SUNNEX & DEVICE". ( ~

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Petitioner also presented a table of its annual turnover for its goodsbearing the mark "SUNNEX & DEVICE". However, this piece of document isnot sufficient to prove its market share in the Philippines and in other countriesmuch more to establish a well-known status in the absence of any supportingevidence showing the sale in each jurisdiction and that the sale was indeedmade in any of the list of countries submitted by the Petitioner. These aremere self-serving claims which cannot stand to prove that the mark is well-known in the Philippines and internationally.

Petitioner also invoked the protective mantle of the Paris Convention towhich the Philippines is a signatory. This Bureau views the said argument ofPetitioner as likewise self-serving. As shown, there is nothing which we candiscern to persuade us to believe that the Petitioner is entitled to the protectionof the law. Petitioner has not shown and proven its allegation of prior actualuse of its mark so to speak here in the Philippines.

In this petition for cancellation, it is clear that it is the Petitioner whichhas the burden of proving its claim that the mark "SUNNEX & DEVICE" is well-known and that it has priority of use over said mark in the Philippines.However, applying the law and jurisprudence and considering the pieces ofevidence submitted by the Petitioner, it is evident that the latter failed to provethe same.

WHEREFORE, premises considered, the Verified Petition for Cancellationfiled by Petitioner SUNNEX PRODUCTS LIMITED is, as it is hereby DENIED.Consequently, Registration No. 064708 for the mark "SUNNEX & TRIANGLEDEVICE WITH SPOON & FORK DEVICE" issued on June 16, 1997 in the nameof Respondent-Registrant WILLIAM TIENG for goods falling under Classes 8and 21 REMAINS VALID UNTIL CANCELLED BY OPERATION OF LAW.

Let the filewrapper of "SUNNEX & TRIANGLE DEVICE WITH SPOON &FORK DEVICE", subject matter of this case together with a copy of thisdecision be forwarded to the Bureau of Trademarks (BOT) for appropriateaction.

E ELLITA BELTRAN-ABELARDOIrector, Bureau of Legal Affairs