INTELLECTUAL PROPERTY
PHILI PPINES
GLOBAL QUEST VENTURES, INC.,
Represented by Antonio Lim Hing,
Petitioner,
-versusMA. SHARMAINE R. MEDINA,
Respondent,
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IPC NO. 14-2006-00121
Case filed on : August 31,2006
Cancellation of:
Reg. No. 4-2005 -004181
Date Issued: June 25,2006
TM: " MR. GULAMAN "
Decision No.
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DECISION
This is a Petition for the Cancellation of the Certificate of Registratio n of
the mark "MR. GULAMAN" under Registration No. 4-2005-004181 issued on
June 25, 2006. On May 9, 2005, Respondent herein filed its application for the
registration of the mark "MR. GULAMAN " under Class 29 of the international
classification of goods. On June 25, 2006, the mark was registered in the name
of Ma. Sharmaine R. Medina and Certificate of Registration No. 4-2005-004181
was issued to her.
On August 31, 2006 , this instant Petition for Cancellation was filed by
GLOBAL QUEST VENTURES , INC. represented by Antonio Lim Hing
("Petitioner" for brevity) , a domestic corporation engaged in the manufacture and
sale of the product Mr. Gulaman , with principal place of business at 1841 P.
Hidalgo Lim Street, Malate, Manila . The grounds relied upon by Petitioner are
herein reproduced:
"3. Petitioner is engaged in th e manu facture and sale of gulaman
jelly powder mix bearing th e copy rig hted nam e MR. GULAMAN and its
logo design as prin ted in the box and sachet u sed in the packagin g.
4. Some time in 2004, petition er learned that a gro up of persons,
who are doing business under the nam e Bendum Trading, im itated the
product of GLOBAL QUEST witho u t the knowled ge of th e same and
used the copyrigh ted name MR. GULAMAN and logo design in the
packaging of its gula m an jelly powder mix products. This fake imi tation
of the prod uct and its packaging are still circulating in th e market unti~
no w despite initiating so me legal actions against the perp etrators b Yr~
A
nI
Republic of the Philippines
INTELLECTUAL PROPERTY OFFICE
351 Sen. Gil PuyatAve., Makati City 1200 Philippines' www.ipophil.gov.ph
Telephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: [email protected]
herein petitioners. Bendum's packaging is almost exactly identical to that
of the application for registration of the trademark MR. GULAMAN
submitted by the Respondent and of the Petitioner.
5. On 01 February 2006, Global Quest, filed for the registration of
th e copyrighted name MR. GULAMAN (together with the device
characterized by a baker holding a plateful of jelly) as trademark with the
Intellectual Property Office (IPO) of the Philippines with Serial (sic) No.
04-2006-001148;
6. Upon filing of the application for registration thereof, petitioner
Global Quest learned that a certain Ma. Sharmaine R. Medina has also
filed an application for registration for trademark of the name MR.
GULAMAN (STYLIZED). The application was filed on 09 May 2005
bearing Serial No. 4-2005-004181;
7. Immediately after learning thereof, and without waiting for the
thirty (30) day protest period, as provided by Section 134 of the Republic
Act NO. 8293 also known as the Intellectual Property Code of the
Philippines, petitioner Global Quest, through counsel, informed the IPO
of its Opposition to the application of Ma . Sharmaine R. Medina;
8. Apparently, Ma . Sharmaine R. Medina is not the owner of the
said name and logo design, but Petitioner Global Quest. The copyright of
the name MR. GULAMAN and logo design was assigned to it by the
ori ginal owner Mr. Benjamin Irao, Jr. by virtue of a Deed of Assignment,
dated 14 February 2005;
9. Mr. Benjamin Irao, being the assignor and Global Quest, as
assignee, of the copyrighted name MR. GULAMAN and logo design,
neither authorized any person or entity to use the said copyrighted name
in an y business undertaking nor have given their consent for the
registration as trademark with the IPO;
10. It is also worth to mention that herein Petitioner has also
initiated a criminal complaint for Violation of Section 177.1 in relation to
Section 216 and 217 (cop yright infringement) of R.A. 8293, against a
certain Ken Co, who is behind the operation of Bendum Trading (the
maker of the fake gulaman jelly powder mix using MR. GULAMAN in
packaging. The said criminal case is docketed as Criminal Case No.
06242136, pending at the Regional Trial Court of Manila, Branch 24.
2
11. Respondent Medina, cannot claim ownership much less
register the copyrighted name MR. GULAMAN as trademark under her
name because she is not the owner of the said copyrighted name;
12. As Respondent cannot be deemed to be using the mark as
alleged owner thereof, she should not be allowed to register the same in
her name, lest the essence of trademark protection is nullified. The
purpose of the law in protecting a trademark cannot be overemphasized.
Trademarks are used to point out distinctly the origin or ownership of the
article to which it is affixed; to secure him, who has been instrumental in
bringing into the market a superior article of merchandise, the fruit of his
industry and skill; and to prevent fraud and imposition;
13. Under the circumstance, therefore, respondent's registration of
the trademark Mr. Gulaman (Stylized) must be cancelled pursuant to
Section 151 of R.A. 8293.
In support of the petition, the following evidences were submitted:
Exhibits
"A"
UB"
"C"
"D"
"E"
"F"
"G
IJ
IlH"
3
Description
Secretary's Certificate executed by
Anna Marie Chan on August 20,
2006
Sample of the product's box
packaqinq
Box packaging used by Bendum
Tradino
Application
for
Copy of the
registration of the mark "Mr.
Gulaman and Device" by Petitioner
Letter addressed to Dir. General
Adrian Cristobal
by Abad and
Casis Law Firm
Photocopy of the Certificate of
Registration No. 4-2005-004181 for
the mark "MR. Gulaman" in favor of
Sharmaine Medina
Certified Xerox copy of the
Certificate of Copyright Registration
of the Mr. Gulaman logo design in
the name of Beniamin Irao, Jr.
Deed of Assignment executed by
Benjamin Irao, Jr. of the copyright
reqistration of Mr. Gulaman (with
logo design) among other to Global
Quest Ventures, Inc. on February
14,2005
"I"
Affidavit of Benjamin Irao, Jr.
"J"
Certified copy of an Amended
Copyright
Information
for
Infrinqement aqainst KEN CO
ComplaintCertified
copy
of
Affidavit of Antonio Lim Hing sworn
before the Prosecutor of Manila
Certified copy of Affidavit of SP02
Elmer Barcia sworn before the
Prosecutor of Manila
uK"
"l"
On September 7, 2006, Respondent was directed to file a Verified Answer
to the petition. The Notice was sent to Respondent through registered mail on
September 14, 2006.
Respondent failed to file the answer within the
reglementary period so that on December 13, 2006, this Bureau issued Order
No. 2006-1743 waiving Respondent's right to submit the Answer and its
supporting documents and directed Petitioner to file its Position Paper.
On
January 19, 2007, Petitioner filed its Position Paper. On February 9, 2007,
Respondent-Registrant filed a Motion for Reconsideration of the Order Waiving
the Right of the Respondent-Registrant to File Answer and also praying that the
attached Answer be admitted. Petitioner filed its Consolidated Opposition to the
Motion for Reconsideration of the Order Waiving the Right of RespondentRegistrant to File Answer and Position Paper dated 8 February 2007 and Motion
to Admit Answer dated 8 February 2007.
On March 9, 2007, RespondentRegistrant filed her Reply and Petitioner filed its Rejoinder thereto on March 21,
2007 . On June 4, 2007, this Bureau issued Order No. 2007-1017 denying
Respondent-Registrant's Motion. On June 28, 2007, Respondent-Registrant
filed a Motion for Reconsideration to the Order Denying Respondent-Registrant's
Motion to Admit Answer. During the hearing of the motion on July 10, 2007,
Petitioner did not appear, so that, Respondent-Registrant's counsel moved that
the motion be submitted for resolution without the comment of Petitioner for its
failure to appear during said hearing despite due notice. Said motion was
granted in open court. On July 24, 2007, Order No. 2007-1351 was issued
denying Respondent-Registrant's motion. Hence, this case is now submitted for
decision.
The only issue to be resolved in this case is: Whether or not
Respondent's Certificate of Registration No. 4-2005-000121 should be
cancelled.
4
Undeniably, Respondent has been issued by this Office Certificate of
Reg istration No. 4-2005-004 181 of the mark Mr. Gulaman . However, wh ile it
may be true that Respondent has been already been issued a certificate of
registration , it must be emphasized that
the issuance of a cert ificate of
registration is mere ly a prima facie evidence of the registrant's ownersh ip of the
ma rk. Such presumption may be rebutted by controverting evidence. Bas ic is
the rule that the right to register trademarks, trade names and service marks by
any person , corporation , partnership or association domiciled in the Philippines
or in any foreign country, is based on ownership , and the burden is upon the
ap plicant to prove such ownership. 1 Adoption alone of a trademark would not
give exclus ive right thereto. Such right grows out of their actual use ." In
addition , his application must not be in derogation of previously acquired and
existing rights .
Indeed, ownership of a trademark is not acquired by the mere fact of
regi stration alone . Reg istration merely creates a prima facie presumption of the
validity of the registration , of the registrant's ownership of the trademark and of
the exclusive right to the use thereof. Registration does not perfect a tradema rk
right such that evidence may be presented to overcome the presumption. Prior
use by one will controvert a claim of legal appropriation by subsequent users. " In
UNNO COMMERCIAL ENTERPRISES, INC. VS. GENERAL MILLING
CORPORA nON, ET. AL. 4 , the Supreme Court enunciated that:
"The right to register tradema rk is based on ownership. When
the applicant is not the ow ner of th e trademark being applied for, he has
no right to app ly for the registration of the sa me . Under th e Trademark
Law only th e ow ne r of the trademark, tra de name or service mark used to
distinguish his goods, business or service from th e goods, business or
service of o thers is entitled to regist er th e sam e. "
Petitione r who seeks the cancellation of the herein subject mark posits
that Respondent-Registrant Charmaine Medina is not the owner of the mark and
as such the Certificate of Registration of the mark "Mr. Gulaman" in her name
should be canceled. According to Petitioner, it is the owner of the subject mark
by virtue of a Deed of Assignment executed on February 14, 2005 by its owne r)ff1
Benjamin Irao, Jr.
/ {
r
I Marvex Commercial Co., Inc. vs. Petra Hawpia , G.R. No. L-I9297 , promulgated on December 22, 1966
citing Operators, Inc. YS. Director of Patent s.
2 Sterling Products International, Inc. YS . Farbe nfabrike n Bayer Aktiengesellschaft, G.R. No . L-199006 ,
April 30 1969.
JUnno Commercial Enterprises, Incorpo rated YS . General Milling Corporation, G.R. No . L-28554 .
February 28, 1993.
4 Supra
5
Section 122 of Republic Act No. 8293 states that:
"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."
To prove ownership of the mark, Petitioner presented a copy of the
Certificate of Copyright Registration in the name Benjamin Irao, Jr. (Exhibit "G")
of Mr. Gulaman and Logo Design. Said copyright registration was issued way
back in September 16, 1996. By virtue of a Deed of Assignment, the copyright
registration over the Mr. Gulaman and Logo Design was then ceded and
transferred to herein Petitioner on 14 February 2005. Aside from the fact of
copyright registration by Mr. Irao (predecessor-in-interest of herein petitioner),
Mr. Irao himself positively corroborated in his Affidavit that he allowed Petitioner
to use his copyrighted work as trademark of Petitioner for its gulaman products
immediately after its copyright registration in 1996. Thus, having used the
copyrighted logo as its trademark since 1996 for its gulaman products, Petitioner
has acquired ownership of the mark by prior actual use in commerce since 1996.
Worth mentioning also is the fact that a comparison of the marks of the
parties shows that Respondent merely copied its mark from Petitioner's. The
marks of the parties are hereunder shown:
PETITIONER'S MARK
RESPONDENT-REGISTRANT'S
MARK SOUGHT TO BE CANCELLED
It is crystal clear that the word mark of Respondent-Registrant is identical
to Petitioner's mark in the sense that the appearance of her mark Mr. Gulaman is
6
exactly the same in all aspects to the dominant word Mr. Gulaman as depicted in
Petitioner's Mr. Gulaman and Logo Design. In fact , the records , particularly the
Declarat ion of Actua l Use filed by Respondent-Registrant, shows that she
subm itted photographs of a packaging showing the Mr. Gulaman and Logo
Design of Petitioner which all the more proved that she merely copied the
mark of Petitioner.
Section 151.1 of Republic Act 8293 enumerates the grounds for
cancellation of a certificate of registration. Specifically, paragraph (b) of said
section provides:
" 15 1. 1. A petition to cancel a regist ration of a mark under this
Act may be filed with t he Burea u of Legal Affairs by any person who
believes that he is or will be damaged by the reg istration of a mark und er
thi s Act as follows:
xxx
(b) At any time, if th e registered mark becomes t he gen er ic name
for the goods or services, or a portio n th ereof, for wh ich it is register ed,
or has been abandoned, or its registration was ob ta ined fra udulently
or contrary to t he provis io ns of this Ac t , or if th e register ed mark is
bein g used by, or wit h th e permi ssion of, th e registrant so as to
misrepresent th e source of th e goods or servi ces on or in connect ion with
wh ich the mark is used. If the register ed mark becomes th e gen eri c
nam e for less than all of th e goods or services for whi ch it is registered, a
petition to cancel th e registration for on ly th ose goods or services may
be filed. A r egistered mark shall not be deemed to be th e generic name of
good s or se rv ices solely becaus e su ch mark is also used as a nam e of or to
identify a unique product or servi ce. The primary significance of th e
r egistered mark to th e relevant public ra t her than purchaser motivati on
shall be th e test for determining whether the registered mark has
become th e ge ner ic
All told, having proven by substantial evidence that Respondent's
registration was obtained fraudulently or is contrary to the provisions of the IP
Code , the cancellation of the herein subject mark is proper .
WHEREFORE , premises considered , the instant Petition for Cancellation
is, as it is hereby , GRANTED. Accord ingly, Certificate of Registration No. 42005-00 4181 issued in the name of Ma. Sharmaine R. Medina is, as it is hereby,
CANCELLED .
7
Let the filewrapper of instant case be transmitted to the Bureau of
Trademarks (BOT) for appropriate action in accordance with this DECISION .
50 ORDERED.
Makati City, 08 August 2008.
E5TR
TA BELTRAN-ABELARDO
Direc or, Bureau of Legal Affairs
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