INTELLECTUAL PROPERTYPHiliPPI NES

- versus -

VICTOR SIASAT,Opposer,

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RENO SCHUHCENTRUM GMBH, }Respondent-Applicant. }

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Inter Partes Case No. 14-2007-00293Opposition to :

Appln . Ser. No. : 4-2007-000523Date Filed 17 January 2007Trademark "RENO & DESIGN "

Decision No. 2008 - tlJq

DECISION

This case pertains to an oppos ition to the registration of the mark "RENO & DESIGN "bearing Application No. 4-2007-000523 filed on January 17, 2007 covering the goods "clothing,footwear, headgear, parts and components of aforementioned goods " as far as included in class25, which application was published in the Trademark Electronic Gazette (E-Gazette) of theIntellectual Property Philippines (IPP) , officially released for circulation on July 20,2007.

The Opposer in the present opposition is "VICTOR SIASAT" a Filipino , with businessand posta l address at No. 150 011 Building , San Vicente Road, Barangay San Vicente , SanPedro , Laguna .

The Respondent-Applicant is "RENO SCHUHCENTRUM GMBH" of IndustriegebietWest, 66987 Thaleishweiler-Froschen, Germany.

The grounds of the opposition are as follows :

"1. Approval of the application in question is cont rary to Sections 123.1 (d)and 138 of Republ ic Act No. 8293.

"2. Approval of the application in question has caused and will cont inue tocause great and irreparable damage and injury to herein Opposer.

Opposer relied on the following facts :

"1. Opposer is a Filipino citizen, of legal age , with business and postaladdress at 150 011 Building, San Vicente Road , San Vicente, San Pedro ,Laguna.

"2. Opposer is the registered owner of the trademark RENO AND DEVICEOF A HAT for use on RTW, jeans, slacks , polo shirts , t-shirts, blouses ,socks, briefs , belts , jackets, dresses, leather bags and shoes underRegistration No. 4-1985-57766 issued on September 13, 2002 ;

A cert ified copy of Certificate of Registration No. 4-1985-57766 is heretoattached as Exhibit "A' and made an integra l part hereof;

Registration No. 4-1985-57766 continues to be in full force and effe~

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

35 1 Sen. Gil PuyatAve., Makati City 1200 Philippines· www.ipophil.gov.phTelephone : +632-7525450 to 65 • Facsimile: +632-8904862 • email : mail@ipophil.gov.ph

"3. Opposer has not abandoned the use of its trademark RENO ANDDEVICE OF A HAT registered under Registration No. 4-1985-57766(Exhibit "A");

Submitted herewith as Exhibits "B" to "B-8", are the duplicate originalcopies of the Declaration of Actual Use submitted by Opposer lastDecember 3, 2001 as part of his Application Serial No. 57814 (now,Registration No. 4-1985-57766 - Exhibit "A"), and made an integral aprtshereof;

"4. As proof of his continuous use of his registered trademark RENO ANDDEVICE OF A HAT, Opposer submits herewith representative salesinvoices marked as Exhibits "C" to "C-3" and made integral part hereof;

Sample of Opposer's jeans and t-shirts bearing his trademark RENOAND DEVICE OF A HAT and photographs thereof, are marked asExhibits "0" and "0-1", and "E" and "E-1", respectively and made integralpart hereof;

"5. Through continuous commercial use, promotion and/or advertising of hisregistered trademark RENO AND DEVICE OF A HAT for the last twenty­seven (27) years, the relevant sector of the public in the Philippines hascome to know and identify said RENO AND DEVICE OF A HATtrademark as belonging to Opposer;

"6. The trademark "RENO AND DESIGN" being applied for registration byRespondent-Applicant, is identical or at the very least, confusingly similarto the registered trademark RENO AND DEVICE OF A HAT of Opposer;

A print-out of Respondent-Applicant's mark as published, is heretoattached as Exhibit "F", and made an integral part hereof;

"7. The goods, namely, clothing, footwear, headgear: parts and componentsof aforementioned goods as far as included in Class 25 covered byRespondent-Applicant's application are identical to, and/or closely relatedto the goods covered by Registration No. 4-1985-57766 (Exhib it "A") ofOpposer;

Accordingly, the approval of the application in question is contrary toSection 123.1 (d) of Republic Act No. 8293, which provides:

Sec. 123. Registrability - 123.1. A mark cannot be registered if it:

x x x

(d) Is identical with a registered mark belonging toa different proprietor or mark with an earlierfiling or priority date, in respect of:

(i) The same goods or services,0'lf;.2

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as tobe likely to deceive or cause confusion;

"8. The approval of the application in question violates the right of Opposer tothe exclusive use of its registered RENO AND DEVICE OF A HATtrademark on the goods listed in his Certificate of Regist ration (Exhibit"AI) ;

Section 20 of Republic Act No 166, as amended, the law under whichOpposer's application was filed , examined and approved, provided :

"Section 20. Certificate of registration primafacie evidence of validity. - A certificate of registration ofa mark or trade-name shall be prima facie evidence of thevalidity of the registration, the registrant's ownership of themark or trade-name, and of the registrant's exclusive rightto use the same in connection with the goods , business orserv ices specified in the certificate, subject to anyconditions and limitations stated therein. "

Section 20 of Republic Act No. 166, as amended, is now found in Section138 of the Intellectual Property Code of the Philippines (IP Code).

"9. Should the trademark RENO AND DESIGN be registered in the name ofRespondent-Applicant, the likelihood of confusion on the part of theconsuming public is bound to occur, as well as confusion of source ,affiliation or connection. Compounding the likelihood of confusion anddeception is the fact that the goods upon which Respondent-Applicant'strademark are to be used are identical, as well as closely related, to thegoods of Opposer;

"10. Opposer has been damaged and will continue to be damaged by theregistration of the trademark RENO AND DESIGN in the name ofRespondent-Applicant, in that the use of said mark by Respondent­Applicant will prejudice the rights of Opposer over his registered RENOAND DEVICE OF A HAT trademark and irreparably impair and/or destroythe goodwill generated by him over his RENO AND DEVICE OF A HATtrademark for the last twenty-seven (27) years;

Opposer submitted the following in support of his opposition:

Exhibit i t''' ;;:; DescriptionA certified copy of Opposer's Certificate of

Exhibits "A"Registration NO. 4-1985-57766 issued on September13, 2002 for the trademark RENO AND DEVICE OFA HAT

Exhibits "8" to "8-8" Declaration of Actual Use submitted by Opposer last

December 3, 2001 for Application Serial No. 57814(now Reqistration No. 4-1985-57766);

Exhibits "C" to "C-3Representative sales invoices for goods bearing thetrademark RENO AND DEVICE OF A HAT;

Exhibit "0" and "0 -1" Samples of Opposer's jeans and t-shirts bearing thetrademark RENO AND DEVICE OF A HAT;

Exhibits "E" and "E-1 Photooraphs of Exhibits "0 " and "0 -1";

Exhibit "F" Computerized print-out of Respondent-Applicant'smark as published in the e-Gazette;

Exhibit "G" Duly notarized affidavit of Victor Siasat.

On the other hand , Respondent-Applicant failed to file its verified answer despite havingreceived the Notice to Answer.

It is provided for in Section 11 of the Summary Rules (Office Order No. 79, Series of2005) provides that:

Section 11. Effect of failure to file an Answer. - In case theRespondent-Applicant fails to file an answer , or if the answer is filed outof time , the case shall be decided on the basis of the Petition orOpposition , the affidavit of the witnesses and documentary evidencesubmitted by the Petitioner or Opposer.

The only issue to be resolved in the instant opposition is:

WHETHER OR NOT THE RESPONDENT-APPLICANT ISENTITLED TO THE REGISTRATION OF THE MARK "RENO ANDDESIGN".

The applicable provision of the law is, Section 123 (d) of Republic Act No. 8293, whichprovides :

Sec. 123. Registrability - 123.1. A mark cannot be registered if it:

(d) Is identical with a registered mark belonging to adifferent proprietor or mark with an earlier filing orpriority 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 tobe likely to deceive or cause confusion ;

The contending trademarks of the parties are reproduced below for compar ison and~scrutiny. I !~

(J-4

Opposer's mark Respondent-Applicant's mark

The competing trademark are composite, as both are composed of many components,however, it is observed that their dominant feature is the word "RENO" wherein the spelling,pronunciation as well as meaning are the same.

A practical approach to the problem of similarity or dissimilarity is to go into the whole ofthe two trademarks pictured in their manner of display. Inspection should be undertaken fromthe viewpoint of prospective buyer. The trademark complained should be compared andcontrasted with the purchaser's memory (not in juxtaposition) of the trademark said to beinfringed. (87 C.J.S. pp 288-291) Some such factors as sound; appearance; form, styleshape, size or format; color, idea connoted by the mark; the meaning, spelling andpronunciation of the words used; and the setting in which the words appear may be considered,(87 C.J.S. pp. 291-292) for indeed, trademark infringement is a form of unfair competition(Clark vs. Manila Candy Co., 36 Phil. 100, 106; Co Tiong Sa vs. Director of Patents, 95Phil. 1,4).

Confusion is likely between trademarks only if their over-all presentations in any of theparticulars of sound, appearance or meaning are such as would lead the purchasing publicinto believing that the products to which the marks are applied emanated from the same source.

In the instant case, the dominant feature of the competing trademarks is the word"RENO" which has the same spelling, pronunciation and meaning as well as the same wordor feature that attracts the mind or attention of the ordinary purchasers. The presence of thedevice in both trademarks is of less important and will not in any way avoid confusing similarity.

Having found confusing similarity between the competing marks, what remains to beresolved now is, "WHO BETWEEN THE CONTENDING PARTIES HAS A BETTER RIGHTOVER THE TRADEMARK "RENO & DEVICE"?

Records will show that the Opposer's trademark "RENO and DEVICE OF A HAT" hasbeen registered with the Intellectual Property Philippines (IPP) on September 13, 2002 bearingRegistration No. 4-1985-057766 covering the goods "RTW, jeans, slacks, polo shirts, t-shirts,skirts, blouses, socks, briefs, belts, jackets, dresses, leather bags, shoes" falling under classes18 and 25 of the International Classification of goods (Exhibit "A"). The Declaration of ActualUse relating thereto has been filed on December 3, 2001 (Exhibit "B-1").

As proof that Opposer has not abandoned his trademark or use of his trademark and asproof of his continuous use, he submitted representative sales invoices marked Exhibits "C"t~~"C-3" and photographs thereof marked Exhibits "D" and "D-l", "E" and "E-1". I I./;~

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Section 20 of Republic Act No. 166, as amended , is now found in Section 138 ofRepublic Act No. 8293 or otherwise known as the Intellectual Property Code of the Philippines(IP Code) which provides:

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

Considering that the Respondent-Applicant's mark "RENO AND DESIGN" is identical orat the very least, confusingly similar to the registered trademark of the Opposer "RENO ANDDEVICE OF A HAT", the approval of the application in question is contrary to Section 123.1 (d)of Republic Act No. 8293. Likelihood of confusion on the part of the consuming public is boundto occur , as well as confusion of source or origin. Compounding the likelihood of confusion anddeception is the fact that the goods upon which Respondent-Applicant's trademark are to beused are identical , as well as closely related to the goods of the Opposer.

The purpose of the law in protecting a trademark cannot be overemphasized. They areto point out distinctly the origin or ownership of the article to which it is affixed, to secure to him,who has been instrumental in bringing into the market a superior article of merchandise the fruitof his industry and skill , and to prevent fraud and imposition (Etepha vs. Director of Patents,16 SCRA 495). The legislature has enacted laws to regulate the use of trademarks andprovide for the protection thereof.

The law on trademarks and trade names is based on the principle of business integrityand common justice. This law, both in letter and spirit, is laid upon the premise that , while itencourages fair trade in every way and aims to foster, and not to hamper, competition, no oneespecially a trader, is justified in damaging or jeopardizing another's business by fraud , deceit ,trickery or unfair methods of any sort. This necessarily precludes the trading by one dealerupon the good name and reputation built by another. (Baltimore vs. Moses, 182, Md 229, 34 A(2d) 338)

The approval of the application in question therefore, violates the right of the Opposer tothe exclusive use of its registered trademarks "RENO AND DESIGN" on the goods listed in theregistration certificate issued in its favor as well as to the goods related thereto .

WHEREFORE, in the light of all the foregoing, the opposition is, as it is, herebySUSTAINED. Consequently, trademark application bearing Application No. 4-2007-000523filed on January 17, 2007 by RENO SCHUHCENTRUM GMBH for the mark "RENO ANDDESIGN" is, as it is hereby , REJECTED.

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Let the filewrapper of the trademark "RENO AND DESIGN" subject matter of this casetogether with a copy of this DECISION be forwarded to the Bureau of Tr marks (BOT) forappropriate action.

SO ORDERED.

Makati City, 24 April 2008.

ELLITABELTRAN-ABELARDODirector

Bureau of Legal Affairs

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