INTELLECTUAL PROPERTY

PHILIPPINES

ABS-CBN Fll.M PRODUCTIONS, INC., Inter Partes Case No. 14<-2008-D0093

(ABS-CBN Fll.MS), opposer, Opposition to:

-versus- Appln. Serial No ..: 04-1994-096172 Date Filed: 03 November 1994 Trademark: "STAR TV & STAR

STAR TELEVISION PRODUCTIONS Device" LIMITED,

Respondent-Applicant. x--------------· x

Decision No. 2011----=50'----- _

DECISION

ABS-CBN FILM PRODUCfIONS, INC., (ABS-CBN FILMS) ("Opposer"), with business address at ABS-CBN Broadcasting Corporation, ABS-CBN Broadcast Center, Sgt. Esguerra & Mother Ignacia Streets, Quezon City, filed on 21 April 2008 an opposition to Trademark Application No. 4­1994-096172'. The application, fLIed by STAR TELEVISION PRODUCTIONS, LTD., ("Respondent­Applicant"), a corporation organized under the laws of the British Virgin Islands with address at Craigumier Chambers, P.O. Box 71, Road Town, Tortola British Islands, seeks the registration of the mark "STAR TV & STAR Device" for use on goods and services falling under class 41 of the International Classification of goods-. "education and entertainment services in the nature if planning, production and distribution iflive or recorded audio, visual or audiovisual materialJor broadcasting by radio and television ifthrough film or videotape;publication ifbooks and printed matter relating toJilms, videotapes, radio and television, rental if sound recordings, films, Jilm projectors, videotapes, videocassette recorders, radios and television sets and accessories therefore, providing cinema and theatre Jacilities, education and entertainment inJormation services; presentation iflive performances, organization ifeducational or entertainment competitions'.

The Opposer anchors its case on Sec. 123.1(d) of Rep. Act No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code"), cites the Supreme Court's ruling in McDonald's Corporation v. Macjoy Fasifood Corporation, and argues that the Respondent-Applicant's trademark application should be rejected and dismissed outright in order to protect the goodwill which the Opposer allegedly had already generated for its own "star" marks. According to the Opposer, it used and adopted in commerce and filed trademark applications for the "Star Cinema" mark in the Philippines covering goods and services falling under classes 35 and 41 prior to the Respondent­Applicant's filing of the opposed application.

The Opposer's evidence consists of the following:

1. Exh. "A"- Securities and Exchange Commission ("SEC') Cert. of Reg. No. CS200307277, issued 25 March 2003;

2. Exh. "E-Series" - Copies of trademark application printed from the Intellectual Property Office of the Philippines website;

3. Exh. "C' - Affidavit of Beverly Sanchez-Fernandez, executed on 17 August 2007;

, Application was published in the Intellectual Property Office of the Philippines (IPP) E-Gazette on 21 December 2007.

2 The Nice Classification is a classification of goods and services for the purpose of registering trademarks and service marks, based on a multilateral treaty administered by the World Intellectual Property Organization. This treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks concluded in 1957.

Republic of the Philippines Page I of 5

INTELLECTUAL PROPERTY OFFICE World Finance Plaza Bldg., No. 28 Upper McKinley Road, McKinley Hill Town Center, Fort Bonifacio, Taguig City

• www.ipophil.gov.ph T: +632-2386300 e F: +632-8904862 email@ipophil.gov.ph

4. Exh. "D" - Affidavit of Mary Angeline Pineda; 5. Exh. "E" (with attached Exhibits "4-a-Series" to -i-b-Series) - Affidavit of Roxy

Lequigan, 6. Exh. "F-Series" - Certificates of Registration ("C.R.") in the Philippines: c.R. No. 4­

2000-002699 for "STAR STUDIO & DEVICE"; c.n. No. 4-2005-001089 for "SEARCH FOR A STAR IN A MILLION"; c.n. No. 4-2004-001148 for "STAR IN A MILLION"; c.n. No. 4-2001-006423 for "STAR MAGIC"; c.n. No. 4-2005-009806 for "LITTLE BIG STAR"; C.R No. 4-2004-009924 for "MORNING STAR"; c.n. No. 4-2005-003329 for "STAR CIRCLE QUEST";

7. Exh. "G" - Certified copy ofC.R. No. 4-1999-009252 for "STAR CIRCLE QUEST"; 8. Exh. "H" - Certified copy ofC.R. No. 4-2003-009740 for "STAR STUDIO"; 9. Exh. "I" with attached Exh. "2-4" - Affidavit of Catherine Perez-Ochoa; and 10. Exh. "f-Series" - Affidavit of Anabelle Regalado-Borja.

The Respondent-Applicant filed its Verified Answer on 26 September 2008 alleging, among other things, that the opposition states no cause of action or specific allegations and evidence to constitute and prove the required cause of action on the damage which the Opposer may incur. Aside from being distinct and previously registered in favor of the Respondent-Applicant, the mark is internationally well-known, said party being also the owner and the first to adopt, use and register the "STAR", "STAR TV & STAR Device", "STAR Logo", "STAR and Logo", "STAR MOVIES with cropped box", "STAR WORLD" and other derivative marks in several countries worldwide including the Philippines for goods and services under 9, 16,35,38,41 and 42.

According to the Respondent-Applicant, it and its affiliates have continuously and uninterruptedly used its well-known marks since 1990 in Hong Kong, and also in the Philippines in the early 1990s. It points out that it was issued the following certificates of registrations in the Philippines:

1. No. 4-2004-011645 for "STAR MOVIES WITH CROPPED BOX LOGO", issued on 18 February 2006, for use on goods and services under classes 9, 16,38,41 and 42;

2. No. 4-1992-084265 for "STAR TV & STAR DEVICE", issued on 210ctober 2002, for goods and services under class 38;

3. No. 4,-1994-096170 for "STAR TV & STAR DEVICE", issued on 12 May 2005, for goods and services under class 16;

4. No. 4-1994-096171 for "STAR TV & STAR DEVICE", issued on 10 March 2006, for goods and services under class 35;

5. No. 4-2004-01164<4 for "STAR WITH CROPPED BOX LOGO", issued on 18 February 2006, for goods and services under classes 9, 16, 38, 41 and 42;

6. No. 4-2004-011646 for "STAR WORLD WITH CROPPED LOGO", issued on 21 January 2006, for goods and services under classes 9, 16, 38, 41 and 42; and

7. No. 4-1994-097947 for "STARNET", issued on 01 March 2001, for goods and services 9.

The Respondent-Applicant also claims that the services offered and provided bearing its marks are promoted at the internet domain www .starl\'.com and there is already a high degree of distinction thereof Its products/services carried under the said trademark had, through the years, earned a distinct reputation of being high quality products.

The well-known status of the Respondent-Applicant's marks has been confirmed by this Honorable Office in the decision rendered in the case entitled "Star Television Productions Limited us. Juanita Cardenas' with Inter Partes case No. 14-2001-0013.

The Respondent-Applicant submitted as its evidence the Affidavit executed by Kuwan Cheng (Exh. "1") and the attachments thereto, to wit:

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1. Annex"}" - Copy of the latest company report of Star Group; 2. Annex "2" - Related press releases in 1992, 1993;

3. Annex "3" - Samples of the screen shots of actual television programs showing the STAR marks;

4. Annex "4" - A listing of all the current registration for the trademark "STAR TV & STAR DEVICE" and "STAR LOGO" in the name of Star Television Productions Limited all over the world;

5. Annex "5" - Certified true copies of samples of foreign registration covering the said mark;

6. Annex "6" - Representative samples of invoices for the purchase of products bearing the mark "STAR"; and

7. Annex "7" - Copies of several advertisements and TV Guides.

The Opposer filed on 06 November 2008 "Written Interrogatories" which prompted the Respondent-Applicant to submit on 18 November 2008 its "Objection/Opposition and Motion to Expunge (Opposer's Written Interrogatories)". Notwithstanding the Opposer's filing on 09 December 2008 of a Reply to the Respondent-Applicant's objection/opposition, this Bureau issued Order No. 2009-05, dated 06 January 2009, denying the Opposer's "Written Interrogatories".

Subsequently, the Opposer filed on 17 February 2009 a "Submission of Additional Evidence'". The Respondent-Applicant in turn filed on 27 February 2009 its "Comment/ Opposition and Motion to Expunge (Opposer's Submission of Additional Evidence)". The Opposer filed its "Reply and Opposition" on 09 March 2009

On 19 March 2009, this Bureau issued Order No. 2009--505 denying the Opposer's "Submission of Additional Evidence". Undaunted, the Opposer submitted on 25 June 2009 "Proffer of Additional Evidence'", which was noted by this Bureau in its Order No. 2009--1060, dated 30 June 2009. The Respondent-Applicant, meanwhile, filed on 09 July 2009 its "Comment/Opposition" to the Opposer's "Proffer of Additional Evidence".

Should the Respondent-Applicant be allowed to register the mark STAR TV AND STAR DEVICE?

That the competing marks are confusingly similar is not in dispute. What is disputed is the Respondent-Applicant's right to register the mark STAR TV AND STAR DEVICE.

In this regard, it is emphasized that the fundamental principle and legal basis of trademark registration is that the owner of the trademark has the right to register it. The essence of trademark registration is to give protection to the owners of trademarks. The function of 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 or merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition;

J Exh. "K" to "N": Consularized Notice of Opposition in IPC No. 14-2006-00057; Declaration of Actual Use da ted 28 March 2006 of Chan Wai Man; Letter of Quisumbing Torres Law Firm in connection with the Application No. 96171; Cert. of Reg. No. 4-1992­084265 for "STAR1V & STAR DEVICE"; Letter of Quisumbing Torres Law Firm in connection with the Appln. No. 82496; 16 Dec. 1992 letter of Quisumbing Torres Law Firm in connection with Application No. 82496; and 20 May 1996 letter of Quisumbing Torres Law Firm in connection with Appln. No. 82496. 4 Exh. "0" to "U": Affidavit of Ms. Evangeline Baylon; List of print advertisements and articles in the Manila Daily Inquirer; Certified copies of Manila Bulletin advertisements and articles; Certified copies of Daily Inquirer advertisements; Certified copy of STARlVs verified notice of opposition in IPC CaseNo. 14-2006-00056; Certified copy of STARlVs verified opposition in IPC Case No. 14­2006-00056; and Certified copy of Declaration of Actual Use, dated 28 March 2006, of STAR1V"s Chan Wai Man.

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and to protect the manufacturer against substitution and sale of an inferior and different article as his products Sec. 2-A of Rep. Act No. 166, as amended, which is the governing law at the time the Respondent-Applicant filed the contested trademark application, contains the aforementioned fundamentals of trademark registration, to wit:

"Section 2-A. Ownership of trade-marks, trade-names and service-marks; how acquired. - Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawfill business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive use a trade-mark, a trade­name, or a service-mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or services of others. The ownership or possession of a trade­mark, trade-name, service-mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law." (R.A. No. 166, as amended by Section 1 ofR.A. No. 638)

Accordingly, in opposing the Respondent-Applicant's trademark application, the Opposer has the burden of proof to show that the Respondent-Applicant is not the owner of the contested mark. Corollarily, this Bureau in resolving opposition cases, may also take cognizance of the contents or information in the Trademark Registry and other records of the Intellectual Property Office of the Philippines via judicial notice.

In this regard, the records reveal that aside from the opposed trademark application, the Respondent-Applicant had previously filed on a Septemberl992 an application for "STAR TV & STAR DEVICE" and accordingly, was issued Cert. of Reg. No. 1-1992-81265 on 21 October 2002 for goods and services under class 38.6 The goods and services covered by the aforementioned trademark application and registration are similar or closely related to those indicated in the trademark application subject of this instant opposition case. Significantly, Sec. 1 (d) of Rep. Act No. 166, as amended, requires that in order to register a trademark, one must be the owner thereof and must have actually used the mark in commerce in the Philippines for two (2) months prior to the filing of the application. That the Respondent-Applicant's 1992 application was allowed, and the said party was issued a certificate of registration, only indicates that the requirement of use prior to the filing of application under Sec. 1 (d) of Rep. Act No. 166, as amended, was complied with.

This Bureau also noticed that the Respondent-Applicant has other applications and registrations for the mark since 1991 for use also on similar or closely related goods or services.

On the other hand, the Opposer's evidence shows that its earliest filing was only in 1991, after the Respondent-Applicant filed an application in 1992. The Respondent-Applicant's filing in 1992 was earlier even than the Opposer's first use, as claimed, of the "STAR" marks in 1993.

Hence, at the time the Respondent-Applicant filed its trademark application in 1992, the mark "STAR TV AND STAR DEVICE" as used for the goods and services covered by the said application had not yet been appropriated by another. The Opposers' claim of use of STAR as trademarks as early

5 Pribhdas .J.Mirpuri v. Court ofAppeals, G.R. No. 114508, 19 Nov. 1999. 6 "Television and radio broadcasting services, diffusion of television programmes; operation of earth to satellite TV transmitters for transmission of signals to satellite; relaying of TV programmes by satellite; operation of satellite to earth receiver aerials, frequency conversion of microwave signals relayed by satellite; dissemination of TV programmes relayed by satellite receiver aerials by cable or by microwave link to television receivers of users; operation of TV cable networks, provision and operation of radio, telephone, telegraph, videotext and teletext transmission services; electronic and telecommunication transmission services, services for the transmission of data and of information by electronic computer, cable, radio, radiopaging, teleprinter, teleletter, electronic mail, telecopier, TV, microwave, laserbeam, communication satellite or other communication means; provision of communication facilities for the interchange of data by electronic means, consultancy services relating to data communication; services for the transmission, provision or display of information for business of domestic purposes from a computer-stored data bank; rental of communication.

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1986-1987 is anchored only on the uncorroborated statements in the affidavits of Ms. Catherine Perez­Ochoa', Ms . Beverly Sanchez-Fernandez, Mary Angeline Pineda and Roxy Liquigan." This Bureau finds these self-serving.

Significantly, this Bureau in its Decision in Inter Partes Case No. 14-2001-00013, dated 05 December 20029 , already declared the Respondent-Applicant's mark STAR & STAR DEVICE as a well­known mark. Respondent-Applicant has substantially proven STAR marks international notoriety. The pertinent portion of the Decision red as follow:

"As the records eloquently show. Opposer's mark is well-known. The STAR TV and STAR DEVICE, STAR DEVICE and STAR and STAR DEVICE have registrations and pending applications in the name of the Opposer in many countries around the world and more than ever almost covered the Asia Region Limited. Opposer likewise has enjoyed international reputation and goodwill bearing their trademarks. Over the years, Opposer 's services like satellite network and broadcast operations bearing the STAR marks have been produced and distributed by the company, Opposer herein and/or its well-renowned group of companies referred as STAR Group Limited cable operators in many Asian countries and in at least thirty four (34-) countries worldwide including the Philippines. x x x In fact, Opposer has registration in United Kingdom, Russia and Japan for their trademarks used x x x. To enhance its international reputation and further promote goodwill over its name, marks and products, the company has extensively advertised its products and services x x x, trademarks and name in various publications which are circulated in many countries around the world, including the Philippines."

The international well-known status of the Respondent-Applicant's mark "STAR" was confirmed and re-affirmed in the Decision of this Bureau, dated 22 July 2008, in the case entitled "Star Television Productions Limited vs. Atlas Publishing Company, Inc." under Inter Partes Case (IPC) No. 14­2007-00255.

WHEREFORE, premises considered, the opposition is, hereby DENIED. Let the filewrapper of the Trademark Application No. 4-1994-096172 be returned, together with a copy of this Decision, to the Bureau ofTrademarks for information and appropriate action.

SO ORDERED.

Taguig City, 07 June 2011.

Bureau of legal Affairs

7 Exh."C" in IPC No. 14-2007-00236. 8 Exh."C", "D" &"E" in IPC No. 14-2007-00238. 9 Star Television Productions Limited us. Juanito Cardenas

IEL S. AREVALO Director IV

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