INTELLECTUAL PROPERTY PHILIPPINES

LUCKYGLASS ENTERPRISES CORP., } IPC No. 14-2009-00144 represented herein by its Administrative } Opposition to: Manager EULOGIO B. OLMILLO, } Date filed: 16 Jan. 2009

} Serial No. 04-2009-000465 -versus- } Trademark : "LG LUCKYGLASS

} & DEVICE" }

JABIN L1MJUSAYAN a.k.a. } JOHN CHUA or JABIN, }

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

NOTICE OF DECISION

THE LAW OFFICE OF ANTONIO Y. ZULUETA, •.lR. Counsel for Opposer Suite 2207, 22nd Floor" Prestige Tower Emerald Avenue, Ortigas Center, Pasig City

ESCANO SARMIENTO & PARTNERS LAW OFFICES Counsel for Respondent-Applicant Suite 1605, The Taipan Place F. Ortigas Jr. Road, Ortigas Business District Pasig City

,y l~l;/~~m~E~~ GREETINGS:

Please be informed that Decision No. 2010 - OS dated 14 April 2010 (copy enclosed) was promulgated in the above entitled case.

Makati City, 14 April 2010.

1<; 1 C;;:"t1 ni l Pll " "t A" " M "Ir"ti ritv 1? ()n Philinnin p~ • ''' ''''701 ;nAnhil OA" nh

ESCANO SARMIENTO & PARTNERS ~ .\ WOFr-reFS

.~ :.~ \..

APR 2-t~10 -.

Republic of the Philippines INTELLECTUAL PROPERTY OFFICE

_

-----

INTELLECTUAL PROPERTY PHILIPPINES

LUCKY GLASS ENTERPRISES CORP., } Inter Partes Case No. 14-2009- 00144 represented herein by its Administrative} Case Filed : 01 June 2009 Manager EULOGIO B. OLMllLO, } Opposition to :

()pposer } } Appl'n Serial No . : 04-2009-000465 } Date Filed : 16 January 2009

-versus- } Trademark : "LG LUCKYGLASS & } Device"

JABJN LIMJUSAYAN a.k .a. } JOHN CHUA or JABIN, }

Respondent-Applicant . } x------------------- ----------------------------x Decision No. 2010- 05"

DECISION

LUCKY GLASS ENTERPRISES CORPORATION (" Opposer") a corporation duly organized and existing under Philippine Laws with business address at No . 18 Dona Victoria Street , Barangay Tenejeros , Malabon City, represented by its Administrative Manager EULOGIOB. OLMllLOfiled an opposition to Trademark Application No . 4-2009­000465. The application filed by JABIN LIM JUSAYAN ("Respondent- Applicant"). a Filipino and a resident of No. 64 Kapiligan Street, Unit 310 Hanseng Place , Araneta Avenue, Quezon City on 16 January 2009, covers the mark " LUCKY GLASS and Letter L and G Inside a Square Device " for use on "glassware" under class 21 of the International Classification of goods. I

The Opposer alleges the following:

x x x

"The Application of the Respondent- Applicant must be DENIEDregistration pursuant to Section 123 .1 paragraph (d) of the Intellectual Property Code for it is:

(d) Is identical with a registered mark belonging to a different proprietor or mark with an earlier filing or priority date , jn respect of:

(i) The same good s or services, or (ii) Closely related goods or services , or (iii) If it nearly resembles such a mark as to be likely to deceive or cause

confusion;

x x x

1 Published for opposition in the Intellectual Property Philippines (IPP) E-Gazette ( 15 May 2009). Republic or the Philippines

INTELLECTUAL PROPERTY OFFICE p,gelOf6~1<;; 1 <;;: pn nil PlI"M Aup M"Ir" t i ritu 1')()() Ph il inn;np~ u ruru! incmhil 0"" nh

.'

"10. Oppositor has been in actual and prior use of the Mark since October 15, 2003 and starts dealing in 2004. During this period Respondent- Applicant was just a mere employee working as Manager of the Oppositor-Applicant. However, due to his addiction to gambling he incurred huge debts which alarmed the Oppositor but just the same to help Respondent- Applicant pay off some of his debts with the pleas of his girlfriend and parents he was allowed to borrow money to the maximum amount of P 3,000 ,000.00 . Incidentally, after getting this amount from the Oppositor, Respondent­Applicant resigned on October 9, 2008 to the dismay of the Oppositor. However, Respondent- Applicant vowed not to engage in the same business of the Oppositor and even promised not to cause any action that would damage the business of the Oppositor.

" I I . Contrary to Respondent- Applicant promise and undertaking, he has been disseminating disinformation to the clients of the herein Oppositor by contending that he is a shareholder. He even misrepresented that he is the owner of the company-Oppositor but the Articles of Incorporation would immediately reveal that he is not even an incorporator or shareholder . Certified true copy of the Articles of Incorporation is hereto attached as Annex J.

" 12. Since December 2008, or barely two (2) months after Respondent­Applicant resigned as employee of Oppositor, Oppositor through the Board during series of meetings has been discussing the registration of the marks orland products it is selling or about to sell. There were consideration to the registration and the needed papers and documents has to be collated to be proper and in order. Unknown to the Oppositor, Respondent­Applicant had a mole inside the office of the Oppositior that when it is conducting its meeting in its conference table which has no enclosure or partition, matters relative to such registration were overheard by Respondent- Applicant's mole. This is the very reason why the application for registration of the Respondent- Applicant and that of the Oppositor were as close as to the date of filing.

"13. Said mole then resigned from the company of the Oppositor and Oppositor was informed that he is now an employee of the Respondent- Applicant or doing business with the latter .

"14 . Clearly, Respondent- Applicant employed fraud in the application for registration and even made fraudulent representation by applying the mark for registration the mark being used by the Oppositor in its business since 2004 and this is within the knowledge of Respondent- Applicant. Photocopy of the Design submitted in its application before this Honorable Office that it is being used by the Oppositor since 2003 is hereto attached as Annex K

"IS. The mark has been identified and associated with the Oppositor and the same has been a by-name that when you see the mark and the product Lucky Glass it is identified with the Oppositor and had already established goodwill among the clients of the Oppositor and the buying j\;public or relevant sector of the public.

Page 2 of 6 ",

·.

"16. Respondent- Applicant should be held liable for marking fraudulent representation knowing fully well that Oppositor is in actual and prior use of the mark or logo, design and the name Lucky Glass being an employee of the Oppositor since 2004 and until October 2008 and for applying same goods or closely related good wbicb is likely to deceive or cause confusion to tbe relevant sector or tbe buying public.

" 17. To confirm the employment of Respondent- Applicant, attached herewith is the Affidavit of the President of Oppositor-Applicant detailing the nature of employment of the Respondent- Applicant, the different names he is using and his liability. Certified true copy is hereto attached as Annex L

The Opposer's evidence consists of the following :

1. Annex "A" (of the Opposition) - Certified true copy of Opposer's Articles of Incorporation and By-Laws issued by the Securities and Exchange Commission (SEC);

2. Annex "B" - Certificate of Business Name Registration for LUCKY GLASS ENTERPRISES CORPORATION issued by the Department of Trade and Industry (D'Il) dated August 29, 2007;

3. Annex "C" - Certificate of Registration from the Bureau of Internal Revenue (BIR) Revenue Region No. 055 , Revenue District No . 026;

4. Annex "D" - Trademark copy of the application filed by the Opposer for the mark LG and Design , Application No. 4-2009-001587;

5. Annexes "E" to "E-11" - Sales Invoices; 6. Annexes "F" to "F-7" - Certified copies of compensation payment tax withheld

and the name of Oppositor as his employer, SSS contribution and his transactions with different clients some bearing his position;

7. Annex "G" - Copy of case filed before the court of Malabon City ; 8. Annex "H " - Photocopy of the downloaded application of Respondent­

Applicant; and 9. Annexes "I" to "I- I " -Photo of pages I and 6 of the electronic gazette.

The Respondent- Applicant filed on 23 September 2009 his Verified Answer alleging the following, among other things:

" 1. Oppositor was merely a former distributor of products bearing the said trademark and as such , has no right to prevent Respondent- Applicant from having the subject mark registered in his favor.

"2 . Respondent- Application has the right to register the trademark LG Lucky Glass & Device as Respondent- Applicant was the first to file for the registration of the subject mark and as of the time of filing, there was no bar for the reg istration of the subject mark.

Respondent- Applicant submitted the following pieces of evidence:

Pag,30f6 ~

1. Annex "A" (of the Answer) - Certified true copy of the Certificate of Official distributor;

2. Annex "B" - Certified copy of the Certificate of Incorporation for Cussina Elemento, Inc; and

3. Annex "C" - Certified copy of Cussina Elemento, Inc.'s latest filed General Information Sheet.

Should the Respondent- Applicant's application be given due course?

An opposition proceeding against a trademark application is, basically, a review of the application in question to determine if the legal requirements for registration have been satisfied. The entire proceeding is not necessarily a "contest" between the opposer and the applicant as to who or which of them has an earlier trademark application or the better right to register the mark. In fact, any party who believes he will be damaged by the registration of the mark may oppose the application, even if the opposer himself does not own, or apply for the registration of an identical or confusingly similar mark in the Philippines. 2

In this instance, it is not disputed that the competing marks are confusingly similar, as shown below:

Opposer's mark

LUCKY(;LASS

Respondent-Applicant's mark

What is being contested is the ownership, and thus, the Respondent- Applicant's right, or none of it, to register the mark.

In this regard, it is emphasized that the fundamental principle and legal basis of trademark registration is that the owner of the mark has the right to register it. The essence of trademark registration is to give protection to the owners of trademarks. The function of a trademark is to point out distinctly the origin or ownership of the goods to

2 Sees 131.3 and 134 of the IP Code provide:

131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well­known mark as defined in Section 123.1(e)of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the Jaw.

xxx 134. Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee

and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language. For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of such extension . The Regulations shall fixthe maximum period of time within which to file the opposition. (Sec. 8, R.A. No. 16sa) " . yv

, . ..

which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product. 3 Thus, Sections 121 and 122 IP Code provide :

Section 121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterpri se and shall include a stamped or marked container of goods .

x x x

Section 122. How Marks are Acquired. - The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law.

Corollarily, Sec . 138 of the IP Code, to wit:

Section 138. Certificates of Registration. - A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. (Sec. 20 , R.A. No. 165)

Under this jurisdiction, therefore , it is not the registration that confers ownership of trademark. It is the use of the mark that gives rise to ownership, which in turn gives the right to the owner to cause its registration and enjoy exclusive use thereof for the goods or services associated with it.

In this instance , records and evidence show that the Respondent- Applicant is not the owner of the mark. The Opposer submitted as evidence the letter signed by the Respondent- Applicant himself on 04 August 2007, with the letter- head "LUCKY GLASS ENTERPRISES CORPORATION", which is the name of the Opposer , and above which is the LUCKY GLASS Device or logo." While the Opposer submitted evidence that the Respondent- Applicant was its former employee, the Respondent- Applicant on the other hand failed to submit evidence that as an employee of the Opposer, it was him who owned or coined the mark or name LUCKYGLASSand/or the device.

Furthermore, the Respondent- Applicant himself even admitted in his Answer and in his Position Paper that he is not the owner of the mark. He alleged that it was a Thai company , Lucky Glass Thailand 5, who owns the mark and he , through his own company, was merely a distributor. Although he alleged in his Position Paper that the Thai company "permi tted " him to register the mark in his favor", there is no evidence submitted by the Respondent- Applicant to prove it. Aptly, it is well settled that only the

3 Pridhdas J. Mirpuri v. Court ofAppeals , G.R. No. 114508, 19 Nov. 1999, citing Etepha v Dir . OfPatents, supra, Gabriel v. Perez, 55 SeRA 406 (1974). See also Article 15; par . (1), Art. 16 par . (1), of th e Trad e Related Aspect of Intellectual Property (TRIPS Agreement).

4 See Annex "B"of the Respondent-Applicant's Answer.

5 See Respondent-Applicant's Answer pars. 3.01 to 3.07 , and Position Paper, pars. 3.01 to 3.09. 6 Supra, par . 3.09. .V1J

...

owner of a trademark, trade name or service mark may apply for its registration and an importer, broker , indentor or distributor acquires no rights to the trademark of the goods he is dealing with in the absence of a valid transfer of the trademark. 7

The Respondent- Applicant's argument that there is no bar to the registration of the mark in his favor because, as between him and the Opposer it was he who first filed an application for the mark, is untenable. The Respondent-Applicant's statement would have been correct if he is the owner of the mark, or if not, was able to prove that he was given authority by the real owner to register it in his favor.

Accordingly, Sec. 123.1(d) of the IP Code is not to be construed as giving or establishing the right to register the mark. The provision only enumerates the grounds in rejecting or opposing a trademark application or in canceling a trademark registration . There could have been no intention to justify the approval of an application just because it was the first to file the application regardless of somebody else's better or superior right over the mark. The provision cannot be used to perpetuate an unjust and unfair claim. A trademark is an industrial property and the owner thereof has property rights over it. The right of being issued a registration for its exclusive use therefore, should be based on the concept of ownershi p .

WHEREFORE, the instant opposition is hereby SUSTAINED on the grounds and reasons stated above. Let the filewrapper of Trademark Application Serial No. 4-2009­000465, together with a copy of this DEOSION, be returned to the Bureau of Trademarks for appropriate action.

SO ORDERED

Makati City, 14 April 2010.

Bureau

PUS/ /jO) O

7 See Unno Comm ercial Enterprises, Inc., u. General Milling Corporation and Tiburcio S. Eual/e, in his capacity as Director of Patents, G.R. No. L-28SS4, 28 Feb. 1983.

P"OP h "f r..