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INTELLECTUAL PROPERTY
PHILIPPINES
OFFICE OF THE DIRECTOR GENERAL
L.G. ATKIMSON IMPORT-EXPORT,
INC.,
Respondent-Applicant-Appellant,
APPEAL NO. 14-08-17
IPC No. 14-2005-00102
Opposition to:
-versus-
FOOD INDUSTRIES, INC.,
Opposer-Appellee.
Application Serial No. 4-1997-126063
Date Filed: 29 October 1997
Trademark: AQUA-CHLON
x-----------------------------------------------x
NOTICE OF DECISION
HECHANO
DIRECTOR LENY B. RAZ
Counsel for
G/P Chemp
851 Antonio ~wut:::fl~~~~=
Director, Bureau of Trademarks
Intellectual Property Office
Makati City
IP PHILIPPINES
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Documentation, Information
and Technology Transfer Bureau
Intellectual Property Office
Makati City
ESTRELLITA BELTRAN-ABELARDO
Director, Bureau of Legal Affairs
Intellectual Property Office
Makati City
Recell/aa by:
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Office of the Director
~ur=a~_ of Legal Affairs
GREETINGS:
Please be informed that on 07 April 2009, the Office of the Director General rendered a
Decision in the above-titled case (copy attached).
Makati City, 07 April 2009.
Verytrul~yyO~S'< ::»
ATTY. N
Attorney
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Republic of the Philippines
HiNIEL i-AREVALO
I/H~ad, Office of Legal Counsel
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INTELLECTUAL PROPERTY
PHILIPPINES
OFFICE OF THE DIRECTOR GENERAL
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L.G. ATKIMSON IMPORT-EXPORT,
INC.,
Respondent-Applicant-Appellant,
APPEAL NO. 14-08-17
IPC No. 14-2005-00102
Opposition to:
-versus-
FOOD INDUSTRIES, INC.,
Opposer-Appellee.
Application Serial No. 4-1997-126063
Date Filed: 29 October 1997
Trademark: AQUA-CHLON
x-----------------------------------------------x
NOTICE OF DECISION
HECHANOVA BUGAY & VILCHEZ
DIRECTOR LENY B. RAZ
Counsel for Appellant
G /F Chemphil Bldg.
851 Antonio Arnaiz St. Makati City
Director, Bureau of Trademarks
Intellectual Property Office
Makati City
SYCIP SALAZAR HERNANDEZ
&GATMAITAN
IP PHILIPPINES
Documentation, Information
and Technology Transfer Bureau
Intellectual Property Office
Makati City
Counsel for Appellee
5th Floor, SSHG Law Center
105 Paseo De Roxas, Makati City
ESTRELLITA BELTRAN-ABELARDO
Director, Bureau of Legal Affairs
Intellectual Property Office
Makati City
GREETINGS:
Please be informed that on 07 April 2009, the Office of the Director General rendered a
Decision in the above-titled case (copy attached).
Makati City, 07 April 2009.
Very truly yours,
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ATTY. N
H NIELS.AREVALO
Attorney
I/Head, Office of Legal Counsel
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Republic of the Philippines
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INTELLECTUAL PROPERTY
PHILIPPINES
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OFFICE OF THE DIRECTOR GENERAL
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1. G. ATKIMSON IMPORT
EXPORT, INC.,
Respondent-Appellant,
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-versusFOOD INDUSTRIES, INC.,
Opposer-Appellee.
Appeal No. 14-08-17
Inter Partes Case No. 14-2005-00102
Opposition to:
Application No. 4-1997-126063
Date Filed: 29 October 1997
Trademark: AQUA-CHLON
x-----------------------------------------x
DECISION
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1. G. ATKIMSON IMPORT EXPORT, INC. ("Appellant") appeals Decision No.
2006-152, dated 21 December 2006, and Resolution No. 2008-06 (D), dated 15 February 2008,
of the Director of the Bureau of Legal Affairs ("Director"). The Director sustained the
opposition filed by FOOD INDUSTRIES, INC. ("Appellee') to the Appellant's application for
the registration of mark "AQUA-CHLON" for use on calcium hypochlorite.
Records show that the Appellant filed the subject trademark application on 29 October
1997, which was published in the "IPO e-Gazette for Trademarks' on 28 July 2005. On 26
August 2005, the Appellee filed a "NOTICE OF OPPOSITION" alleging the following:
1. It is engaged in the business of manufacturing and distributing a variety of
consumer products one of which bears the mark "AQUACLOR" which it has
commercially used since 03 June 1980 for calcium hypochlorite, and
registered under Reg. 66230 issued on 04 November 1998;
2. The registration of AQUA-CHLON will violate Sec. 123.1 (d) and other
provisions of Rep. Act No. 8293 ("IP Code") and coupled with its use on
identical goods will diminish the distinctiveness and dilute the goodwill of
AQUACLOR and likely create a connection between the Appellant's and the
Appellee's goods, damaging the latter's interests;
3. The Appellant's unauthorized appropriation and use of AQUA-CHLON
infringes upon the Appellee's right to AQUACLOR and the Appellee is
entitled to broad legal protection against unauthorized users.
The Appellant filed a "VERIFIED ANSWER" on 17 February 2006 alleging the
following:
Republic of the Philippines
INTELLECTUAL PROPERTY OFFICE
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Pll,,~t Aup. ~A~Ir~t; r;hl 1 ?OO Ph;l;nn;n~C'
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1. It is an importer/exporter, wholesaler/retailer of raw materials used in
industries, like textile, pulp and paper, sugar, cosmetics, pharmaceuticals,
steel, food and beverage, construction, paints, soap and detergents,
environmental protection, hotels and restaurants, chemicals and others;
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2. It is a member of the American Association of Textile Chemist and Colorist,
Phils. Association of Chemical Suppliers, Inc., Pollution Control Association
of the Phils., Inc. and Screen Imaging and Graphic Association of the Phils.;
3. It was established in 1967 and registered with the Securities and Exchange
Commission on 09 January 1974, with the main objective of providing
industrial companies with quality products at competitive prices;
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4. It filed on 29 October 1997 the subject trademark application for its calcium
hypochlorite which it recommends for use as a germicide, bactericide,
algaecide, deodorant and bleach, for water treatment, laundries, swimming
pool, disinfectant, household and industrial use and sewage disposal;
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5. Calcium hypochlorite is a white powder of articles with slight pungent smell
of chlorine, corrosive with low toxicity, soluble in water and is a strong
oxidizing agent and combustion supporter; it has an available chlorine of 70
percent; and is being packaged in plastic drums with PVC bag in side with
net weight of 40 kilograms;
6. Among the thousands of satisfied customers are Corvi Steam Laundry, JVC
Steam Laundry. Inc., and Vidalistic Steam Laundry. while the big purchasers
are poultry farms, big food processors, water utility concessionaires in Metro
Manila and those in the provinces and many agro-ventures:
7. It had been using AQUA-CHLON on printed labels and had been advertising
it in the DPC Yellow Pages since 1998;
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8. When it filed its mark, no other mark with the same spelling and sound with
was registered; AQUACLOR is of different spelling and sound;
9. AQUA-CHLON already acquired goodwill and customer-following by word
of the mouth and advertisements on the DPC Yellow Pages and maintained
its superior quality, thereby, gaining the trust and loyalty of its customers;
10. During the time of the distribution of AQUA-CHLON, there was no
complaint or opposition from the Appellee or any other entity;
11. AQUA-CHLON is the most widespread brand of calcium hypochlorite in the
market as shown by more or less 400 individual purchases during 2005 alone,
and that its sales is at least 1,000 times as that of AQUACLOR;
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12. For 2005 alone, the sales of AQUA-CHLON amounted to more or less
Php17,305,410.00 which shows that it is the preferred brand in the market
and that AQUACLOR, with sales of just Php430,811.00 is just a nominal
player and a small seller in the calcium hypochlorite market;
13. The competing marks are not confusingly similar, their spelling and phonetic
sound are different and while they are both used on calcium hypochlorite,
AQUACLOR is being marketed as a swimming pool disinfectant only while
AQUA-CHLON is recommended for food industries, water system treatment,
sewerage treatment, personal and household use;
14. The Appellee should have filed opposition or complaint way back in 1998
when AQUACLOR was issued registration;
15. A comparison between the marks indicates that there could be no deception
or confusion to the public; the buyers and the users of the two products are
discerning, deliberate, lettered and educated engineers, chemists and
technologists who would thoroughly examine the goods;;
16. The merchandise or the calcium hypochlorite sold by the parties are not
ordinary commodities and not ordinarily available in just any store; the
marks have distinct packages, 35 kg pails for AQUACLOR while 40 kg drums
for AQUA-CHLON, and thus, AQUA-CHLON is being sold in a least twice
bigger packages than that of AQUACLOR and the pictorial effect and appeal
to the eye of the label and the packaging is so pronounced that the label of
one cannot be mistaken for the other;
17. The Appellee is a dissolved corporation way back on 31 March 1970 as shown
by a certification issued by the SEC and the records would indicate that the
last time the Appellee submitted a General Information Sheet was way back
in 1996; and
18. The certification issued by the SEC shows that the Appellee does not have
legal personality to own rights to AQUACLOR and that the Appellee and its
representatives committed misrepresentation in the registration process and
in filing the opposition.
The Appellee submitted the following evidence to support its opposition:
1. Affidavit of Danilo Calilap executed on 10 November 2005;1
2. Copy of Cert. of Reg. No. 66230 for the mark AQUACLOR issued on 04
November 1998 in favor of the Appellee.'
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Exhibit "A".
Exhibit "B".
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3. Copies of articles and advertisements for AQUACLOR;3
4. Sales invoices:" and
5. Amended Articles of Incorporation of the Appellee and the copies of the
General Information Sheets of the Appellee."
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On the other hand, the evidence of the Appellant consists of the following:
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1. Copy of the Cert. of Filing of the Amended Articles of Incorporation of the
Appellee:"
2. Copy of the Cert. of Corporate Filing/Information issued by the SEC on 15
December 2005;7
3. Trademark Application for AQUA-CHLON;8
4. Acknowledgment of the trademark application and the required fee:"
5. Order of Revival, dated 04 November 2002;10
6. Notice of Allowance and Payment of Publication Fee:"
7. Affidavit of Charlton See executed on 15 February 2006;12
8. Affidavit ofJonathan Lim executed on 15 February 2006;13
9. Affidavit of Iose E. Vidal executed on 15 February 2006;14
10. Printed label of AQUA-CHLON;ls
11. Copies of advertisements for AQUA-CHLON;16
12. Copy of the Cert. of Membership of the Appellant with PACSI;17
13. Sales Invoices:" and
14. Copy of the Cert. of Corporate Filing/Information issued by the SEC on 15
March 2006. 19
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After the appropriate proceedings, the Director sustained the opposition. She ruled that
the competing marks are confusingly similar that when pronounced, sound almost the same,
both cover similar or related goods, and that the Appellee had sufficiently proved prior use and
registration of its mark.
The Appellant filed a motion for reconsideration on 05 February 2007 which the
Director denied in her Resolution No. 2008-06 (D). Consequently, the Appellant filed the
Exhibits "C1"to "C6".
Exhibits "D1"to "D3" (Annexes "C1"to "C3 of Exhibit "A")
5 Exhibits "D4" to "D7" (Attached to the Appellee's "REPLY")
6 Exhibit "1",
7 Exhibit "2",
R Exhibit "3",
9 Exhibit "4",
10 Exhibit "5",
II Exhibit "6".
12 Exhibit "7",
13 Exhibit "S",
14 Exhibit "9",
15 Exhibit "10".
16 Exhibit "11", inclusive of sub-markings.
17 Exhibit "I" (attached to the Appellant's REJOINDER).
IR Exhibits "2" to "24" (attached to the Appellant's REJOINDER),
19 Exhibit "25" (attached to the Appellant's REJOINDER).
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instant appeal on 14 March 2008. In its "APPEAL MEMORANDUM (TO DECISION OF THE
BUREAU OF LEGAL AFFAIRS DATED 15 FEBRUARY 2008), the Appellant reiterated the
arguments it submitted before the Director but further alleges the following:
1. The absence of a notice of hearing - a strictly technical requirement - should
not affect the substantial right of the Appellant to question the errors
committed by the Bureau of Legal Affairs ("BLA") and should not cloud the
eyes of the BLA in properly appreciating the substantial merits of the case;
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2. The BLA erred in finding that the contending marks create a likelihood of
confusion to the relevant buying sector;
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3. It is a common practice in the industrial chemical supply business to
"fabricate" marks by using syllables or words suggestive of the elements of
chemicals for which they contain and adding distinctive prefixes or suffixes:
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4. A search of the database in the Intellectual Property Office will show the
following registered marks for calcium hypoclorite: ACE-CHLON, STAR­
CHLON, SUPERCHLON, and AQUACLOR;
5. The contrast in pictorial effects, the appearance, and appeal to the eye
between the labels are so pronounced that the label of AQUA-CHLON
cannot be mistaken for that of AQUACLOR, not even by persons unfamiliar
with the two marks; and
6. No document or proof was submitted to substantiate the claim that
AQUACLOR was used first than AQUA-CHLON, as early as 1980.
On 25 April 2008, the Appellee filed its comment to the appeal asserting the arguments
it submitted before the Director and in addition alleges the following:
1. The denial of the motion for reconsideration is not only based on technical
grounds but also on substantial grounds and that the BLA considered all the
arguments of both parties and found that the contending marks created a
likelihood of confusion to the relevant buying sector;
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2. AQUACLOR and AQUA-CHLON have the same prefix "AQUA" and the
ordinary customer does not scrutinize the details of the label, forgets or
overlooks this, but retains a general impression or a central figure or a
dominant characteristic;
3. The Appellant did not present any evidence to support its allegation that the
buyers of AQUA-CHLON and AQUACLOR are not impulse or on-the-spot
buyers who will be easily confused by the seeming similarity in the products;
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4. The determinative factor in a contest involving registration of mark is not
whether the challenged mark would actually cause confusion or deception of
the purchasers but whether the use would likely cause confusion or mistake;
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5. The goods on which the competing marks are used are bought by the same
class of purchasers, flowing through the same channels of trade;
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7. The certificate of registration of AQUACLOR states that the Appellee has
commercially used AQUACLOR since 03 June 1980 while the Appellant
admits that it first used AQUA-CHLON only on 02 January 1990; and
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8. As the originator, first user and registered owner of AQUACLOR, the
Appellee has the exclusive right to exploit its reputation and popularity by
using them on other products or by licensing.
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6. The Appellant's "success" in its sales may have been caused by the unlawful
appropriation of AQUACLOR which has already acquired goodwill through
extensive use and promotion;
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The main issue to be resolved in this appeal is whether the Director was correct in
ruling that the competing marks are confusingly similar. The Appellant, however, raised
technical issues which this Office shall likewise resolve.
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On whether the Director focused on technicalities to resolve the Appellant's motion for
reconsideration, the records reveal otherwise. Resolution No. 2008-06 (D) shows that the
Director also resolved the substantive issues raised in the motion for reconsideration.
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With respect to the claim of the Appellant that the Appellee lacks the legal personality
to file the opposition, the Appellee submitted evidence that it is still an existing corporation,
with a term of existence until 2017 2°. But even assuming in arguendo that the corporate
registration of the Appellee was revoked by the SEC on 11 August 2003 on the ground that it
failed to comply with reportorial requirements", it did not mean that it had lost ipso facto its
right to institute appropriate actions to protect its trademark, among other things. The
termination of the life of a juridical entity does not by itself cause the extinction or diminution
of its rights and liabilities. Sec. 145 of the Corporation Code provides that:
Sec. 145. Amendment or repeal. - No right or remedy in favor of or against any
corporation, its stockholders, members, directors, trustees, or officers, nor any liability
incurred by any such corporation, stockholders, members, directors, trustees, or officers,
shall be removed, or impaired either by the subsequent dissolution of said corporation or
by any subsequent amendment or repeal of this Code or of any part thereof.
Corollary to Sec. 145 is Sec. 122 of the Corporation Code, to wit:
20 See
21 See
Exhibits "04" to "Dz".
Exhibit "25" (attached to the Appellant's REJOINDER)
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Sec. 122. Corporate liquidation. Every corporation whose charter expires by its own
limitation or is annulled by forfeiture or otherwise, or whose corporate existence for
other purposes is terminated in any other manner, shall nevertheless be continued as a
body corporate for three (3) years after the time when it would have been so dissolved,
for the purpose of prosecuting and defending suits by or against it and enabling it to settle
and close its affairs, to dispose of an convey its property and to distribute its assets, but
not for purpose of continuing its business for which it was established. x x x.
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Considering that the Appellee filed its opposition to the Appellant's trademark
application on 26 August 2005, the action was still within the 3-year period under Sec. 122 of
the Corporation Code. Thus, the Appellee had the legal personality to file the opposition to the
Appellant's trademark application. In Celano v. Court of'Appeels.", it was held:
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However, a corporation that has a pending action and which cannot be
terminated within the three-year period after its dissolution is authorized under Section
78 to convey all its property to trustees to enable it to prosecute and defend suits by or
against the corporation beyond the three-year period. Although private respondent did
not appoint any trustee, yet the counsel who prosecuted and defended the interest of the
corporation may be considered a trustee of the corporation at least with respect to the
matter of litigation only.
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Going now to the main issue of confusing similarity, it is emphasized that 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 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."
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This Office noticed that the Appellant's trademark application was filed under Rep. Act
No. 166, as amended ("RA 166").24 The application was still pending when the IP Code took
effect on 01 January 1998. Sec. 235.2 of the IP Code provides:
235.2. All applications for registration of marks or trade names pending in the Bureau of
Patents, Trademarks and Technology Transfer at the effective date of this Act may be
amended, if practicable to bring them under the provisions of this Act. The prosecution
of such applications so amended and the grant of registrations thereon shall be proceeded
with in accordance with the provisions of this Act. If such amendments are not made,
the prosecution of said applications shall be proceeded with and registrations thereon
granted in accordance with the Acts under which said applications were filed, and said
Acts hereby continued in force to this extent for this purpose only, notwithstanding the
foregoing general repeal thereof.
22
G.R. No. L-39050, 24 Feb. 1981
2;
Pribhdas J. Mirpuri v. Court ofAppeals, G.R. No. 114508, 19 Nov. 1999.
24 AN ACT TO PROVIDE FOR THE REGISTRATION AND PROTECTION OF TRADEMARKS, TRADE-NAMES AND
SERVICE-MARKS, DEFINING UNFAIR COMPETITION AND FALSE MARKING AND PROVIDING REMEDIES AGAINST
THE SAME, AND FOR OTHER PURPOSES.
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The Appellant filed a letter, dated 22 June 1998, stating that it does not wish to bring its
application under the IP Code. In this regard, R.A. 166, Sec. 4(d) states:
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Sec. 4. Registration of trade-marks, trade-names and service-marks on the principal
register. - There is hereby established a register of trade-marks, trade-names and service­
marks which shall be known as the principal register. The owner of a trade-mark, trade­
name or service-mark used to distinguish his goods, business or services from the goods,
business, or services of others shall have the right to register the same on the principal
register, unless it:
xxx.
(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade­
name registered in the Philippines or a mark or trade-name previously used in the
Philippines by another and not abandoned, as to be likely, when applied to or used in
connection with the goods, business or services of the applicant, to cause confusion or
mistakes or to deceive purchases; or.
It is emphasized that in trademark cases, particularly in ascertammg whether one
trademark is confusingly similar to or is a colorable imitation of another, no set of fixed rules
can be deduced. Each case is decided on its own merits." As the likelihood of confusion of
goods or business is a relative concept to be determined according to the particular, and
sometimes peculiar, circumstances of each case," a fair assessment of whether confusion is
likely to occur requires a comprehensive examination of all relevant facts surrounding each
case."
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The competing marks are reproduced below for comparison:
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Appellant's mark
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AQUA-CHLON
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Appellee's mark
AQUACLOR
Obviously, the marks resemble each other. As correctly observed by the Director:
The determinative factor in a contest involving registration of trademark is not
whether the challenged mark would actually cause confusion or deception of the
purchasers but whether the use of the mark would likely cause confusion or mistake on
the part of the buying public. It does not require that the competing trademarks must be
so identical as to produce actual error or mistake. It would be sufficient that the similarity
between the two trademarks is such that there is a possibility or likelihood of the older
brand mistaking the newer brand for it.
xxx
Applying the Dominancy Test to the instant case, it appears that the word Aqua
is a dominant word in Opposer's trademark. The only difference between the two marks
are the letters Hand N in Respondent-Applicant's Aquachlon, which, as compared to
25 Emerald
Garment Manufacturing Corporation v. Court ofAppeals, 251 SCRA 600 (1995).
Esso Standard Eastern, Inc. v. Court ofAppeals, 116 SCRA 336 (1982).
n Societe Des Produits Nestle, SA., et. al v. Court ofAppeals, et. ai, G.R. No. 112012, 04 April 2001.
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Opposer's mark Aquaclor, the letter H is not present and the letter N is replaced with
letter R. The hyphen in the mark Aqua-chlon cannot create a remarkable distinction to it.
Meanwhile, all the other letters are the same such that when the two words are
pronounced. the sound is almost the same."
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The marks also sound alike. In Marvex Commercial Co., Inc. v. Petra Hawpia & Co., et
sl., it was held that the similarity of sound is sufficient ground to rule that the two marks are
confusingly similar when applied to merchandise ofthe same descriptive properties."
Evidence submitted by the parties show that the Appellee used its mark AQUACLOR
ahead of the Appellant's use of AQUA-CHLON. Cert. of Reg. No. 66230 indicates that
AQUACLOR
was first used by the Appellee in 19803°. On the other hand, the Appellant's
trademark application indicates its first use of AQUA-CHLON in 199031 •
The Appellant is not a better position to claim prior use of its mark than the Appellee,
even as it alleges that the latter did not substantiate its claim of first use in 1980. The Appellant
did not also submit additional documentary evidence to bolster its statement in its trademark
application that it first used AQUA-CHLON in 1990. The documentary evidence it submitted,
aside from its trademark application, shows its earliest use of AQUA-CHLON in a sales invoice
dated on 03 March 199732• This document does not prove that its use of AQUA-CHLON was
earlier than the Appellee's use of AQUACLOR even if the latter did not submit, aside from its
certificate of registration, additional evidence of use. The sales invoice was issued two years
later than the Appellee's filing of its trademark application in 1995.
Under RA 166, a mark must be in use in commerce in the Philippines for at least two
months prior to the filing of the trademark application. Considering that the Appellee's
application filed in 1995 was granted and a certificate of registration was issued, it is presumed
that the Appellee had met this requirement. Otherwise, the application would have been
refused or rejected. A certificate of registration is prima facie evidence of the validity of the
registration, the registrant's ownership of the mark and the registrant's exclusive right to use
the same in connection with the goods, business or services specified in the certificate.f The
Appellant has the burden of presenting clear and convincing evidence to overcome this
presumption.
Considering that both parties are engaged in the same line of business, it is fair to infer
that the Appellant knew the mark AQUACLOR when it adopted AQUA-CHLON. The
Appellee argues quite correctly, thus:
Indeed, notwithstanding a boundless choice of words. phrases and symbols, the
Appellant chose a mark that closely resembles the Appellee's trademark for use on
identical goods. In the absence of a plausible explanation from the Appellant as to how
Decision No. 2006-152, dated 21 Dec. 2006. pp. 7 and 8.
G. R. No. L-19297, 22 Dec. 1966.
30 See Exhibit "B".
31 See Exhibit "8".
32 See Exhibit "2" (attached to the Appellant's REJOINDER)
.'3 See Sec. 20 of RA 166, now Sec. 138 under the IP Code.
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this happened, it is not far-fetched to conclude that the Appellant is aware of the
existence, renown and goodwill of the Appellee's AQUACLOR trademark. In this regard,
the BLA pointed out that 'respondent-applicant's choice of a confusingly similar mark
with that of opposer has no reasonable explanation because of the boundless choice of
words available to one who wishes distinction and originality from others."
The Appellant's argument that it is a common practice in the industrial chemical
business to use marks suggestive of the elements of chemicals for which they contain is
irrelevant. What is in issue in this case is the similarity between the Appellant's and the
Appellee's marks which would likely cause confusion or even deception. Likewise, the
Appellant's claim that the buyers and the users of the product are discerning, deliberate,
lettered and educated engineers, chemists and technologists who would thoroughly examine
the goods that they are buying and using, also deserves scant consideration. Both the competing
marks are used on calcium hypochlorite and flow through the same channels of trade. It is not
required that there should be actual confusion to bar the registration of the Appellant's mark
and that such mark should be the dominant one in the market. The law only requires the
possibility or likelihood of confusion, mistake or deception to the public.
Moreover, the argument that the Appellant's use and registration of the mark would
not damage the Appellee because the Appellant is the dominant player in the industry with
better sales record is untenable. Protection afforded by law to trademark registrants or owners
does not distinguish between big and small companies. It is stressed that the intellectual
property system was established to recognize creativity and give incentives to innovations.
Similarly, the trademark registration system seeks to reward entrepreneurs and individuals who
through their own innovations were able to distinguish their goods or services by a visible sign
that distinctly points out the origin and ownership of such goods or services. The intellectual
property system is not a haven for people who would take advantage of the intellectual creation
of others, whether a local resident or a foreigner.
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Lastly, the Appellant belatedly raised in its Memorandum filed in this Office on 04
August 2008 the issue that the Appellees' mark is allegedly generic or descriptive and therefore
cannot be registered or protected. While this issue was not raised by the Appellant in the
proceedings before the Director nor in its APPEAL MEMORANDUM, this Office will resolve
this because a determination that the Appellee's mark is generic or descriptive will render it
non-registrable.
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A generic mark is one which is the genus or the common name of the product to which
it is used. As to what constitute a descriptive mark in explained by the Supreme Court in
Societe Des Produits, et a1. v. Court ofAppeals, et aJ.3s;
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On the other hand, a term is descriptive and therefore invalid as a trademark if, as
understood in its normal and natural sense, it "forthwith conveys the characteristics,
functions, qualities or ingredients of a product to one who has never seen it and does not
know what it is," or "if it forthwith conveys an immediate idea of the ingredients, qualities
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COMMENT (to Appellant-Applicant's Appeal Memorandum), pages 7-8.
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G.R. No. 112012, Apr. 4, 2001.
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or characteristics of the goods," or if it clearly denotes what goods or services are provided
in such a way that the consumer does not have to exercise powers of perception or
imagination.
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and in Asia Brewery, Inc. v. Court ofAppeals, et a1. 36 , thus:
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A word or a combination of words which is merely descriptive of an article of
trade, or of its composition, characteristics, or qualities, cannot be appropriated and
protected as a trademark to the exclusion of its use by others ... inasmuch as all persons
have an equal right to produce and vend similar articles, they also have the right to describe
them properly and to use any appropriate language or words for that purpose, and no person
can appropriate to himself exclusively any word or expression, properly descriptive of the
article, its qualities, ingredients or characteristics, and thus limit other persons in the use of
language appropriate to the description of their manufactures, the right to the use of such
language being common to all. This rule excluding descriptive terms has also been held to
apply to trade-names. As to whether words employed fall within this prohibition, it is said
that the true test is not whether they are exhaustively descriptive of the article designated,
but whether in themselves, and as they are commonly used by those who understand their
meaning, they are reasonably indicative and descriptive of the thing intended. If they are
thus descriptive, and not arbitrary, they cannot be appropriated from general use and
become the exclusive property of anyone. (52 Am. [ur, 542-543.) (Emphasis supplied)
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The registration of purely descriptive signs or indications as trade marks is prohibited
because they are no different from the usual way of designating the relevant goods or services
or their characteristics. These "marks" could not fulfill the function of identifying the
undertaking that markets them and are thus devoid of the distinctive character needed for that
function.
This Office, however finds the Appellee's mark is not generic. AQUACLOR is simply
not the common name of the chemical compound calcium hypochlorite.
The Appellee's mark is also not descriptive. For a mark composed of a word or
combination of words to be descriptive, the test is not whether they are exhaustively
descriptive of the good or article designated, but whether in themselves, they are, in the
locality or community, commonly used by those who understand their meaning, reasonably
indicative and descriptive of the thing intended. Thus, any perceptible difference between
the combination of words submitted for registration and the terms used in common parlance of
the relevant class of consumers to designate the goods or services or their essential
characteristics is apt to confer distinctive character on the word combination enabling it to be
registered as a trade mark.
While AQUA may form part of expressions used in everyday speech to denote water, its
syntactically unusual juxtaposition with the letters CLOR, to form the word AQUACLOR is not
a familiar or common expression in the English nor in any other language for water
disinfectant. Even CLOR is not of common usage nor can be readily assume to mean "chlorine".
As it was in the case of the Appellant itself, a deal of intelligence and imagination was used by
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G.R. No. 103543, 05 July 1993, citing Ong Ai Gui v. Director of Patents, 96 Phil. 673, 676 [1955].
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the Appellant in its inference as to what AQUACLOR may have mean or represent. At most,
AQUACLOR is a suggestive mark. It cannot be regarded as exhibiting as a whole, descriptive
character; they are lexical inventions bestowing distinctive power on the mark so formed and
must not be refused registration.
WHEREFORE, premises considered, the instant appeal is hereby DISMISSED. Let a
copy of this Decision as well as the trademark application and records be furnished and
returned to the Director of the Bureau of Legal Affairs for appropriate action. Further, let also
the Director of the Bureau of Trademarks and the library of the Documentation, Information
and Technology Transfer Bureau be furnished a copy of this Decision for information,
guidance, and records purposes.
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SO ORDERED.
APR 07 2009
Makati City
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