This case involves a trademark dispute between Wilton Dy and Philites Electronic & Lighting Products (Petitioner) and Koninklijke Philips Electronics, N.V. (Respondent). The Petitioner filed an application for a trademark that is confusingly similar to the Respondent's registered PHILIPS mark. The Respondent filed an opposition claiming the marks are nearly identical and likely to cause confusion. While the opposition was initially denied, the Court of Appeals and Supreme Court both found in favor of the Respondent, determining that the Petitioner's mark cannot be registered due to its similarity to the Respondent's well-known registered mark.
This case involves a trademark dispute between Wilton Dy and Philites Electronic & Lighting Products (Petitioner) and Koninklijke Philips Electronics, N.V. (Respondent). The Petitioner filed an application for a trademark that is confusingly similar to the Respondent's registered PHILIPS mark. The Respondent filed an opposition claiming the marks are nearly identical and likely to cause confusion. While the opposition was initially denied, the Court of Appeals and Supreme Court both found in favor of the Respondent, determining that the Petitioner's mark cannot be registered due to its similarity to the Respondent's well-known registered mark.
This case involves a trademark dispute between Wilton Dy and Philites Electronic & Lighting Products (Petitioner) and Koninklijke Philips Electronics, N.V. (Respondent). The Petitioner filed an application for a trademark that is confusingly similar to the Respondent's registered PHILIPS mark. The Respondent filed an opposition claiming the marks are nearly identical and likely to cause confusion. While the opposition was initially denied, the Court of Appeals and Supreme Court both found in favor of the Respondent, determining that the Petitioner's mark cannot be registered due to its similarity to the Respondent's well-known registered mark.
This case involves a trademark dispute between Wilton Dy and Philites Electronic & Lighting Products (Petitioner) and Koninklijke Philips Electronics, N.V. (Respondent). The Petitioner filed an application for a trademark that is confusingly similar to the Respondent's registered PHILIPS mark. The Respondent filed an opposition claiming the marks are nearly identical and likely to cause confusion. While the opposition was initially denied, the Court of Appeals and Supreme Court both found in favor of the Respondent, determining that the Petitioner's mark cannot be registered due to its similarity to the Respondent's well-known registered mark.
1. Whether or not the mark used by the respondent (PHILIPS) is registered in the Philippines 2. Whether or not the mark requested by the petitioner is identical to or confusingly close to the mark requested by the respondent
RULES, LAWS, REGULATIONS, POLICIES
Republic Act No. [RA] 8293 or the Intellectual Property Code of the Philippines (IP Code): Sections 123.1 (d), (i) and (iii), 123.1, 147, and 168.
Section 122 of the Intellectual Property Code of the Philippines (IPC) provides that rights to a mark shall be acquired through registration validity done in accordance with the provisions of this law.
Section 123. Registrability.- 123.1 A mark cannot be registered if it:
1. Is identical with a registered mark belong to a different proprietor or a mark with an earlier filing or priority date, in respect of: i. The same goods 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; e. Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark
Rule 100 (a) of the Rules and Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers defines “competent authority” in the following manner: (c) “Competent Authority” for the purposes of determining whether the mark is well known, means the Court, the Director General, Director of the Bureau of Legal Affairs, or any administrative agency or office vested with quasi-judicial or judicial jurisdiction to hear and adjudicate any action to enforce the rights to a mark. ANALYSIS OF FACTS
WHO: The parties are Wilton Dy and Philites Electronic & Lighting Products, petitioner, and Koninklijke Philips Electronics, N.V., respondent
WHAT: PHILITES filed a trademark application confusingly similar to PHILIPS.
WHERE:
WHEN: The trademark application was filed by PHILITES on 22 April 2000. A
Verified Notice of Opposition was filed by PHILIPS on 17 March 2006.
HOW: IPP-BLA Director Estrellita Beltran-Abelardo denied the Opposition filed by
PHILIPS. IPP-DG dismissed the appeal of PHILIPS for the lack of merit, affirming the decision of the Director of the Bureau of Legal Affairs. The Court of Appeals rendered Decision for the Petition for review , reversing the Decision of the Director General of the Intellectual Property Office.
On March 17, 2006, On August 8, 2006,
On April 12, 2000, Koninklije Philips PHILITES filed a Verified PHILITES filed a electronics (“PHILIPS”) Answer, it states that trademark application filed a Verified Notice of PHILITES & LETTER P covering its fluorescent Opposition since it is DEVICE trademark are not bulb, incandescent light, contrary to Intellectual similar in terms of spelling, starter and ballast. Property Code of the sound and meaning. Philippines.
On October 7, 2008, the On November 9, 2006, IPP-
On April 16, 2008, the IPP- Court of Appeals granted BLA Director Estrellita DG affirmed the decision of Petition to Review the Beltran-Abelardo denied the IPP-BLA. The appeal of Decision dated April 16, Opposition filed PHILIPS. PHILIPS was dismissed. 2008.
On December 18, 2008, the On October 25, 2008,
application for trademark PHILITES filed a motion for PHILIPS filed its comment on registration of Wilton Dy Reconsideration which was June 23, 2009, opposing the and/or Philites Electronic denied in a Resolution application for registration and Lighting Products is issued by the CA on of PHILITES. DISMISSED. December 18, 2008.
The Supreme Court agreed
The Supreme Court ANALYSIS OF ARGUMENTS AND COUNTER-ARGUMENTS
PETITIONER (PHILITES) RESPONDENT (PHILIPS)
PHILITES trademark application covering The approval of the application of
its fluorescent bulb incandescent light, PHILITES is contrary to provisions of the starter and ballast. Intellectual Property Code of the Philippines (IP Code): Sections 123.1 (d), (i) and (iii), 123.1, 147, and 168 PHILITES & Letter P Device trademark and The trademark will mislead the public over Respondent’s PHILIPS have vast an identical or confusingly similar mark of dissimilarities in terms of spelling, sound PHILIPS. and meaning.
CONCLUSION:
PHILIPS’ mark is a registered and well-known mark in the Philippines. It is considered by
the competent authority to be well-known internationally and in the Philippines. Thus, it cannot be registered by another in the Philippines.
Since PHILITES and PHILIPS are both engaged in the same line of business, it is not allowed to register marks which are nearly or confusingly similar which may be likely to deceive or cause confusion among consumers.
