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OfFICE COpy Vi' I' lL.C, Ul'

1

OAKLEY, INC., APPEAL NO. 14-03·25 I

Petltioner·Appellee, INTER PARTES CASE NO. 4079

Petition for Cancellation: 1

TM Registration No. 575691 • versus· Issued: 05 April 1994

Trademark: "OAKLEY" WILLIE A. LAO, For: T-shlrts, shorts, paniS' sandos,

Respondent·Registrant· jeans, jackets, swea shirts, Appellant. socks, polos

x.···.·••- ••··-.··••-.·••••·••·•·•••··•·••••x

NOTICE OF DECISION

ATTY. NARCISO A. MANANTAN I ~

Counsel for Respondent-Registrant-Appellant ~V\\\J\\!\~ 25 Buick Street, Fairview Park Quezon City

CARAG, CABALLES, JAMORA &SOMERA Law Offices Attention: ATTY. MARIA TRINIDAD P. VILLAREAL I

Counsel for Petitioner-Appellee CAR,. . " nd

2 Floor, The Plaza Royale I

. M!= ~ A I1 '.'

120 L..p..Leviste St., Salcedo Village, nr:'?"f£c/' '- a ' Makatl CIty i J,!' r l j Ck> ~11\1Q1M""_

nL ...... i~ ,_. _. : 2_ .3.... ,.0.,.C. _T._.: _ZUOJ"-=DIRECTOR ESTRELLITA BELTRAN·ABELARDO .' . - -.. ~

~~~~:~t~~IL~~:~:~a~~ce ~ £~~ .6ka 1tJj">YA DIRECTOR LENY B. RAZ Bureau of Trademarks Intellectual Property Office

DIRECTOR CORAZON T. MARQUESES tJw IO/~/OJ Administrative, Financial and Human Resources Development Service Bureau Intellectual Property Office

GREETINGS:

Please be informed that on 22 October 2003, the Office of the Di ctor General rendered a Decision in the above-titled case (copy attached).

7\i . lD- ?-r-03>

Makati City, 23 October 2003.

ATTY.~A ~ Attorne I

-------1-~~fuIf!:;/£f!!!u1ufat~!:!.~Ifa!!~thf::X:!CE

I

~-- - -

;.. " w, .. .Republic of the Philippines1

,

OFFICE OF THE PRESIDENT

OAKLEY, INC., Petitioner-Appellee,

- versus

WILLIE A. LAO, Respondent-RegistrantAppellant.

x----------------------------------------------x

APPEAL NO. 14-03-25 INTER PARTES CASE NO. 40

Petition for Cancellation: TM Registration No. 57569 Issued: 05 April 1994 Trademark: "OAKLEY" For: T-shirts, shorts, pants,

jeans, jackets, sweatsh socks, polos

NOTICE OF DECISION

ATTY. NARCISO A. MANANTAN Counsel for Respondent-Registrant-Appellant 25 Buick Street, Fairview Park Quezon City

CARAG, CABALLES, JAMORA & SOMERA Law Offices Attention: ATTY. MARIA TRINIDAD P. VILLAREAL Counsel for Petitioner-Appellee 2nd Floor, The Plaza Royale 120 L.P. Leviste St., Salcedo Village, Makati City

DIRECTOR ESTRELLITA BELTRAN-ABELARDO Bureau of Legal Affairs Intellectual Property Office

DIRECTOR LENY B. RAZ Bureau of Trademarks Intellectual Property Office

DIRECTOR CORAZON T. MARQUESES Administrative, Financial and Human Resources Development Service Bureau Intellectual Property Office

GREETINGS:

Please be informed that on 22 October 2003, the Office of the Direct rendered a Decision in the above-titled case (copy attached).

Makati City, 23 October 2003.

Very truly yours, . ATTY.~A~B

Attorne~1

andos, rts,

r General

INTELLECTUAL PROPERTY IPO Building, 351 Sen. Gil Puyat Avenue. Makati City, Phi ippines .

". 1 •

,. ' Republic of the Philippines

OFFICE OF THE PRESIDENT

OAKLEY, INC., Petitioner-Appellee,

- versus-

WILLIE A. LAO, Respondent-Registrant-Appellant.

,~ j

)(----------------------------------------------)(

1

APPEAL NO. 14-03-25 INTER PARTES CASE NO.4

Petition for Cancellation: TM Registration No. 57569 Issued: 05 April 1994 Trademark: "OAKLEY" For: T-shirts, shorts, pants,

jeans, jackets, sweats socks, polos

DECISION 1 ! This concerns Decision No. 2002-13 rendered by the DireI I Bureau of Legal Affairs (Director) on 13 June 2002 granting the ! I

79

sandos, irts,

I I I

1 j

Cancellation filed by the Appellee OAKLEY, INC. (Appellee)' for the c ncellation

J of Certificate of Registration No. 57569 issued on 05 April 1994 for the trademark ,1

j OAKLEY of the Appellant WILLIE A. LAO (Appellant) 2 used on t-shi s, shorts, *

pants, sandos, jeans, jackets, sweatshirts, socks and polos under Clas 25 of the

International Classification of Goods",

The controversy involves the determination as to:

If •

1 A corporation organized and existing under the laws of the State of Washington U.S.A. with principal office at 10 Holland, Irvine, California 92718, U.S.A. (see Decision No. 2002 13 dated 13 June 2002, page 1). 2 Filipino citizen, with office address at 195-H, a" Avenue Extension, Grace Park, C loocan City, Philippines (see Decision No. 2002-13 dated 13 June 2002, page 1).

'j 3 Also known as the Nice Classification. It is based on a multilateral treaty administe ed by World

I Intellectual Property Organization, called the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Mark , which was concluded in 1957. The Agreement is open to States party to the Paris Conve tion for the 1

1 Protection of Industrial Property.

INTELLECTUAL PROPERTY WFICE IPO Building, 351 Sen. Gil Puyat Avenue. Makati City, Phi ippines

1. Whether or not the Appellant's mark OAKLEY is confusingly simi+ to that of

the Appellee's mark OAKLEY.

2. Whether or not the Appellant is the prior user and adopter 0

OAKLEY.

Records show that on 07 August 1992, Appellant filed with t

Bureau of Patents, Trademarks and Technology Transfer (BPTTT)

Department of Trade and Industry (DTI) an application for registration

OAKLEY used on t-shirts, shorts, pants, sandos, jeans, jackets, sweats

and polos under Class 25 of the Nice Classification. On 05 April 1994 th

the mark

e defunct

under the

f the mark

irts, socks

mark was

registered with the Principal Register and Certificate of Registration No. 7569 was

issued in favor of the Appellant. Consequently, on 25 August 1994, a etition for

Cancellation was filed by the Appellee, alleging that: 4

1. The registration of the trademark OAKLEY in the name of th Appellant

violates and contravene the provisions of Section 4(d) of Repu

166, as amended because said mark is confusingly similar to th

OAKLEY owned and unabandoned by the Appellee, as to be Ii ely, when

applied to or used in connection with the goods of the Appella t to cause

confusion or mistake or deceive purchasers thereof;

2. The registration was obtained fraudulently through misrepresent

the BPTTT;

trademark

ion before

4 Petition for Cancellation dated 12 July 1994, pages 1-2.

age 2 of 17 OAKLEY

3. The trademark OAKLEY is known all over the world to be xclusively

owned by the Appellee. Hence, the registration of the confusing y identical

trademark OAKLEY in the name of the Appellant will be a br ch of the

clear provisions of Article 6bis of the Paris Convention for the P otection of

Industrial Property which is enforced in the Philippines since 27

September 1965;

4. The mark OAKLEY is a tradename/company name of herein A pellee and

as such is protectable even without registration pursuant to Arti Ie 8 of the

Paris Convention and Section 37 of the Philippine Trademark L w;

5. The registration of the mark OAKLEY in the name of the Ap ellant will

cause grave and irreparable injury and damage to the Appelle

meaning of Section 8 of Republic Act No. 166, as amended.

The Appellee also claimed that:"

1. The Appellee is the true and actual owner of the mark OAKL Y and has

registered the same in the U.S.A. and in more than 25 countr es outside

the U.S.A.;

2. The mark OAKLEY (stylized) is a copyrighted property of Appell e;

5 Id, page 2-3.

Page 3 of 17 OAKLEY

OCT 22 MIJ

3. The mark OAKLEY for clothing, headwear and footwear, an also on

protective and/or anti-glare eyewear including sunglasses,

goggles and their parts and accessories including replacem

earstems, frames, nose pieces and foam strips; cases special y adopted

for protective and/or anti-glare eyewear and their parts and a cessories

has been used by Appellee since 01 August 1976 (Class 9: go gles) and

01 June 1977 (Class 25);

, 4. Appellee has built an immense and valuable goodwill for its OA LEY mark

due mainly to the vastly superior quality of its products and lar e sums of

money that it has spent for advertising and promoting its goo s bearing

the OAKLEY trademark;

5. In adopting and using a similar mark on his goods, it is 0 ious that

Appellant, is intending to ride-on and cash-in on the in ernational

popularity of Appellee's OAKLEY mark and to palm-off his good as those

of the Appellee;

6. The use and registration of the mark OAKLEY by the Appellan will likely

cause confusion, mistake and deception to the buying public 0 the origin

of the goods and will definitely dilute the value of Appellee' OAKLEY

mark because the mark and goods of the Appellant are confusi ,gly similarpif not identical to that of the Appellee's;

I

age 4 of 17 OAKLEY

I

In his Answer filed on 07 October 1994, the Appellant inter osed the

followlnq:"

1. The petition is fatally defective in that copies of certificates of re istrations

of marks, trade names and copyright in other countries

supporting documents mentioned in the petition were not filed th rewith.

2. If Appellee is to be believed that the registration of the mark AKLEY in

the name of Appellant violates and contravenes the provisions of Section

4(d) of Republic Act No. 166, as amended, the then Application Serial No.

81941 of Appellant should have been rejected outright. On th contrary,

after the usual process of research and examination, the appli ation was

given due course and ripened into Certificate of Registration No. 57569.

3. The accusation of Appellee that the registration was obtained f audulently

through misrepresentation is without any legal or factual

discussion of the registrability of the mark duly signed by the

will attest to the fact that the registration was issued in accor ance with

the Trademark Law and rules.

4. Article 6bis of the Paris Convention applies only when th mark in

question is used on similar goods. The labels attached to the p ition upon •

p, 6 Answer, dated 07 October 1994, pages 3-4.

xaminers

I

age 5 of 17 OAKLEY

OCT 222803 r

which the Appellee predicated its action shows that its OAKL

used on "software" only.

5. The protection afforded to tradename under Article 8 of

Convention applies only in countries where there is no specifi

requiring registration of tradenames to be entitled to protection.

In the Philippines, the Trademark Law requires registration of tr

in order that the owner will be entitled to protection.

6. The alleged OAKLEY mark of the Appellee which is neithe

registered in the Philippines is not entitled to protection. Thus, t

Appellee that the registration of the trademark OAKLEY in th

Appellant will cause grave or irreparable injury and dama

Appellee or will likely cause confusion, mistake and decept

buying public utterly lacks any basis.

7. Goodwill attaches to a trademark only if the same is used in

Logically, a non-user mark like Appellee's OAKLEY can nev

simple goodwill, much less an immense and valuable goodwill.

Incidentally, on 01 January 1998, Republic Act No. 8293 also

the Intellectual Property Code of the Philippines (IP Code) took

abolished, among other things, the BPTTT and transferred its functi

Y mark is

the Paris

provision

denames

used nor

e claim of

name of

e to the

on to the

ommerce.

r attain a

known as

effect. It

ns to the

age 6 of 17 OAKLEY

newly created Intellectual Property Office. Accordingly, on 13 June 2002, the

Director rendered the assailed Decision, the dispositive portion of wh ch reads,

as follows:

"WHEREFORE, premises considered, the Petition for Cancellati n is hereby GRANTED. Consequently, Certificate of Registration No. 57569 fo the mark "OAKLEY" issued in the name ofWILLIE A. LAO on 05 April 1994 is h reby ordered CANCELLED.

"Let the file wrapper of OAKLEY subject matter of this case be forw ded to the Administrative, Financial and Human Resource Development Se ices Bureau for appropriate action in accordance with this Decision and a copy th reof furnished the Bureau ofTrademarks for information and update of its records."

On 28 June 2002, Appellant filed a Motion for Reconsideration prompting

the Appellee to file an Opposition on 16 July 2002. The Director enied the

motion per Resolution No. 2003-01 (D) dated 18 February 2003. No satisfied,

the Appellant filed the instant appeal.

In its Appeal, the Appellant contends that the decision of t

granting the petition for cancellation and ordering the cancellation of C , Registration No. 57569 is contrary to law, jurisprudence and not su

evidence." The Appellant also claims that the Director erred in findi g that the

Appellee is the prior user of the trademark OAKLEY in the Philippine .8 Further,

the Appellant argues that the Director erred in finding that the go ds of the

Appellee and the Appellant are not totally unrelated to each othe and that

"sunglasses" and "clothing" may both be described as wearing apparel.

7 Appellant's Appeal Memorandum dated 10 March 2003, page 4. 8 Ibid, page 4. 9 Ibid.

age 7 of 17 OAKLEY

OCT 22lUR3

e Director

','

For its part, the Appellee argues in its Comment filed on 28 M rch 2003

that the Director had correctly and validly ordered the cancellati n of the

Appellant's trademark certificate of registration, inasmuch as the Ap ellee had

presented more than substantial evidence to support the Appellee's cl ims that it

is the true owner and prior user of the OAKLEY mark." The Appellee

that prescinding from the clearly meritorious ruling of the Director, he herein

Appellee is clearly entitled to the protection of its OAKLEY mark both for goods

falling under International Classes 9 and 25.11 Further, the Appellee rgues that

c.-,: contrary to the Appellant's assertion, the Director had correctly

doctrines on related goods and reasonable business expansion, hence the order

to cancel the Appellant's trademark certificate is but proper, and must be upheld

by the Director General of the IPOY

After consideration of the foregoing and review of the records 0 this case,

this Office finds the appeal devoid of merit.

Let us take the first issue. This Office agrees with the find ng of the

Director that the Appellant's mark OAKLEY is confusingly simil r to the

Appellee's mark OAKLEY.

){Y" I

10 Appellee's Comment dated 27 March 2003, page 1. 11 Ibid, page 2. 12 Ibid.

age 8 of 17 OAKLEY

OCT 22 Z983

Republic Act No. 166, as amended, which is the applicable I w in this

case, provides that:

"Sec. 4. Registration of trade-marks, trade-names and service-mark on the principal register. - There is hereby established a register of trade-m rks, trade-names and service-marks which shall be known as the principal regi ter. The owner of a trade-mark, trade-name or service-mark used to distinguis his goods, business or services from the goods, business, or services of others hall have the right to register the same on the principal register, unless it:

xxx

(d) Consists ofor comprises a mark or trade-name which so resembl sa mark or trade-name registered in the Philippines or a mark or trade-n me previously used in the Philippines by another and not abandoned, as to be Ii ely, when applied to or used in connection with the goods, business orservices 0 the applicant, to cause confusion ormistakes ortodeceive purchasers;

xxx

In this light, the Supreme Court has spoken that likelihood of c nfusion is

a relative concept; to be determined only according to the parti ular, and

sometimes peculiar, circumstances of each case. In trademark cases, ven more

than in any other litigation, precedent must be studied in light of the f cts of the

particular case. The wisdom of the likelihood of confusion test ies in its

recognition that each trademark infringement case presents its own un que set of

facts. Indeed, the complexities attendant to an accurate assessment 0 likelihood

of confusion require that the entire panoply of elements constituting t e relevant

factual landscape be comprehensively examined."

13 Societe Des Produits Nestle, SA, et aI., vs. CA, et aI., G.R. No. 112012, dated 04 ~pril 2001.

page 9 of 17 OAKLEY

c

,'. .

The competing marks are reproduced below for comparison:

APPELLANT'S MARK

APPELLEE'S MARK

As the Director correctly pointed out:

'The trademarks of the Appellee and the Appellant are not only simila but are identical. Both parties use the word OAKLEY in exactly the same yle, configuration and pictorial arrangement. The trademarks used by both partie are exactly the same such that it can reasonably be concluded that one party co ied the trademark of the other. It is quite impossible for two people to come up with exactly the same trademark, presented in exactly the same method of de ign, without one first having seen the trademark of the other. In the face of uch identity, the question as to confusing similarity of trademarks becomes acad mic. Res ipsa loquifor. x x x." 14

The Supreme Court enunciated in one case that a practical a proach to

the problem of similarity or dissimilarity is to go into the whole f the two

trademarks pictured in their manner of display. Inspection should be ndertaken . from the viewpoint of a prospective buyer. The trademark complained of should ~

14 Decision No. 2002-13, page 5. /

P ge 10 of 17 OAKLEY

meaning,

" .

be compared and contrasted with the purchaser's memory (not in ju

of the trademark said to be infringed. Some such factors as sound; a

form, style, shape, size or format; color; ideas connoted by marks; th

spelling and pronounciation of words used; and the setting in which he words

appear may be considered. For, indeed, trademark infringement is a form of

unfair cornpetltlon."

Thus, where a comparison between two trademarks s ow such

resemblance in the general appearance or general features of both as would

, likely deceive the ordinary purchaser exercising ordinary care, and to i duce him

to believe that the goods bearing the marks are products of one and the same

enterprise, the junior mark is confusingly similar to the other."

Appellant now advances that it is erroneous to describe r classify

sunglasses and clothing as wearing apparel because sunglasses is an optical

apparatus or instrument under Class 9 while clothing falls under Class 25. Thus,

according to him, it cannot be denied that the sunglasses, eyewea , goggles,

replacement parts such as lenses, ear stems, nose-pieces, etc. are u related to

t-shirts, shorts, pants, sandos, jeans, jackets, sweatshirts, socks and polos, the

products of Appellant." On this score, the High Court ruled, that: pJ/

15 Etepha vs. Director of Patents, G.R. No. L-20635, dated 31 March 1966. J I 16 The Law on Trademark, Infringement and Unfair Competition, 2000 Edition, y Ruben E. Agpalo, pages 54-55, citing Recoro vs. Embisan, 2 SCRA 598 (1961); and Mead Jo nson & Co. vs. N.V.J. Van Dorp., Ltd., 7 SCRA 768 (1963). I

17 Appellant's Appeal Memorandum, page 11. I


1i 1 f

t, •

nrT

"In determining whether a trademark registration should be a bar to the registration of the identical or similar trademark, the courts have formulated the doctrine of related or similar goods. Under this doctrine, whether trade ark infringement exists depends for the most part upon whether or not the good are so related that the public may be, or is actually, deceived and misled that hey came from the same maker or manufacturer. For non-competing goods ma be those which, though they are not in actual competition, are so related to ach other that it might reasonably be assumed that they originate from one manufacturer. Non-competing goods may also be those which, being en 'rely unrelated, could not reasonably be assumed to have a common source. In the former case of related goods, confusion of business could arise out of the u e of similar marks; in the latter case of non-related goods, it could not. The ast majority of courts today follow the modern theory or concept of related gods which the Court has likewise adopted and uniformly recognized and applied.

Goods are related when they belong to the same class or have the s me descriptive properties; when they possess the same physical attribute or essential characteristics with reference to their form, composition, textur or quality. They may also be related because they serve the same purpose 0 are sold in grocery stores. Thus, biscuits were held related to milk because the are both food products. Soap and perfume, lipstick and nail polish are similarly rei ted because they are common household items nowadays. The trademark 'Ang Tibay' for shoes and slippers was disallowed to be used for shirts and pants bec use they belong to the same general class ofgoods. Soap and pomade, although oncompetitive, were held to be similar or to belong to the same class, since bot are toilet articles. But no confusion ordeception can possibly result or arise whe the name 'Wellington' which is the trademark for shirts, pants, drawers and ther articles of wear for men, women and children is used as a name of a depart ent store."18

Also, court and administrative decisions that have adopted the liberal view

of trademark protection against subsequent appropriation have relie

Supreme Court doctrines in Ang vs. Teodoro and Sta. Ana vs. Mali

vs. Teodoro, the Supreme Court said:

"In the present state of development of the law on Trade-Marks, U fair

t. In Ang

Competition, and Unfair Trading, the test employed by the courts to deter ine whether non-competing goods are or are not of the same class is confusion s to the origin of the goods of the second user. Although two non-competing articles may be classified under two different classes by the Patent Office because ~hey jt1b

,

Esso Standard Eastern, Inc. vs. CA, 116 SCRA 336,31 August 1982, pages 342-3 3. 18 f' ,


" ..~ I

c

are deemed not to possess the same descriptive properties, they w uld, nevertheless, be held by the courts to belong to the same class if the simultan ous use on them of identical or closely similar trade-marks would be likely to c use confusion as to the origin, or personal source, of the second user's goods.. hey would be considered as not falling under the same class only if they ar so dissimilar or so foreign to each other as to make it unlikely that the purch ser would think the first user made the second user's goods.

"Such construction of the law is induced by cogent reasons of equity and fair dealing. The courts have come to realize that there can be unfair competitio or unfair trading even if the goods are non-competing, and that such unfair tra ing can cause injury or damage to the first user of a given trade-mark, first by prevention of the natural expansion of his business and, second, by havin his business reputation confused with and put at the mercy of the second user. hen non-competitive products are sold under the same mark, the gradual whi ling away or dispersion of the identity and hold upon the public mind of the ark created by its first user, inevitably results. The original owner is entitled to the preservation of the valuable link between him and the public that has been cre ted by his ingenuity and the merit of his wares or services. Experience has demonstrated that when awell-known trade-mark is adopted by another even ora totally different class of goods, it is done to get the benefit of the reputation and advertisements of the originator of said mark, to convey to the public a Ise impression ofsome supposed connection between the manufacturer of the a icle sold under the original mark and the new articles being tendered to the p blic under the same orsimilar mark. As trade has developed and commercial cha ges have come about, the law of unfair competition has expanded to keep pace with the times and the element of strict competition in itself has ceased to be the determining factor. The owner of a trade-mark or trade-name has a property ight in which he isentitled toprotection, since there isdamage to him from confusi nof reputation orgoodwill in the mind of the public as well as from confusion ofgo ds. The modern trend is to give emphasis to the unfairness of the acts and to cia sify and treat the issue as a fraud." 19

On the other hand, in Sta. Ana VS. Maliwat, the Supreme Court eld:

'Modern law recognizes that the protection to which the owner of a trade-ma k is entitled is not limited to guarding his goods or business from actual m rket competition with identical or similar products of the parties, but extends t all cases in which the use by a junior appropriator of a trade-mark or trade-na e is likely to lead to a confusion of source, as where prospective purchasers woul be misled into thinking that the complaining party has extended his business int the field (see 148 ALR 56 etseq; 52 Am. Jur. 576) or is in any way connected wit the activities of the infringer; orwhen it forestalls the normal potential expansion his :fIR'

19 Ang vs. Teodoro, 74 Phil. 50,14 December 1942, pages 54-55.

/'\ I '" "I '" "',

lL I\, ,L

, I, f

business (v. 148 ALR, 77, 84; 52 Am. Jur. 576, 577). It is on this basis tha the respondent Director of Patents adverted to the practice "among local tailors and haberdashers to branch out into articles of manufacture which have some d rect relationship" x x x x, lito garments or attire to complete one's wardrobe". ere dissimilarity of goods should not preclude relief where the junior user's good are not too different or remote from any that the owner would be likely to make or ell; and in the present case, wearing apparel is not so far removed from shoes s to preclude relief, any more than the pancake flour is from syrup or sugar cr am (Aunt Jemima Mills Co. vs. Rigney & Co., LRA 1918 C 1039), or baking po der from baking soda (Layton Pure Food Co. vs. Church & Co., 182 Fed. 35, or cosmetics and toilet goods from ladies' wearing apparel and costume je elry (Lady Esther Ltd. vs. Lady Esther Corset Shoppe, 148 ALR 6). More specifi ally, manufacturers of men's clothing were declared entitled to protection agains the use of their trademark in the sale of hats and caps [Rosenberg Bros. vs. Elli tt, 7 Fed. (2d) 962] and of ladies shoes (Forsythe & Co. vs. Forsythe Shoe Corp., 254 NYS 584). In all these cases, the courts declared the owner of a trade-mark rom the first named goods entitled toexclude use of its trade-mark on the related lass ofgoods above-referred to."20

In the instant case, the Appellee has sufficiently proved that it is dealing in

the distribution and sale of goods under Class 25 in the United tates and

several other countries worldwide, such that the sale of clothing in the hilippines

is a normal potential expansion of its business. The registration of the rademark

OAKLEY in the name of Appellant not only forestalls such expansion ut is likely

to cause confusion and deception of the buying public as to the source of

goods.21

As to the second issue, this Office is not persuaded that the A pellant is

the prior user and adopter of the mark OAKLEY.

I

In Philippine jurisprudence, 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

I?f! 20 Sta. Ana vs. Maliwat, 24 SeRA 1018, 31 August 1968, pages 1025-1026. I 21 Decision No. 2002-13, dated 13 June 2002, page 7.


OCT 222813

c

"

him, who has been instrumental in bringing into the market a superio

merchandise, the fruit of his industry and skill; to assure the public th

procuring the genuine article; to prevent fraud and imposition; and to

1!I

I

article of

t they are

rotect the

manufacturer against substitution and sale of an inferior and different article as

his product." Aptly, the right to register trademark is based on owners ip. When

the applicant is not the owner of the trademark being applied for, he h

to apply for the registration of the same. Under the Trademark La

owner of the trademark, trade name or service mark used to disti

goods, business or service from the goods, business or service 0

, entitled to register the same."

As per the evidence presented, the trademark OAKLEY was fir t used by

the Appellee for its products sold in the United States in the year 197 ,and was

first placed on stickers in 1978. In the Philippines, Appellee started selling its

products bearing the trademark OAKLEY in the year 1987 through its istributors

Offroad Cycle Shop (until 1990) and Twin Pines Industries (until 19 4). From

1995, Appellee has been selling its products through its exclusive distributor

Meera Trading. To prove such sales, Appellee presented various do umentary

evidences, already mentioned above. Appellant, on the other hand, claims to

have first used the trademark OAKLEY in the year 1989. However, t e earliest

documentary evidence presented to support this claim, Le., sales invoi es, dates

jtf7

only the

others is

22 Mirpuri VS. CA, 318 SCRA 516, 19 November 1999, page 532. 23 Unno Commercial Enterprises, Inc. VS. General Milling Corporation, 120 SC February 1983, page 808.

804, 28

t , .

" . , .

only as far back as the year 1991.24 As held in one case, the use of a

by a mere importer, indentor or exporter inures to the benefit of t

manufacturer whose goods are identified by the trademark."

Moreover, this Office agrees with the Decisiorr" of the Dire

cursory review of the documentary exhibits indicates that OAKLEY,

incorporated on 28 November 1977.27 It cannot be disputed that

rademark

e foreign

tor that a

INC. was

the word

OAKLEY is the tradename/company name of the Appellee. It is likew se shown

that Appellee had registered the said tradename as a trademark in its

origin, the United States Patent and Trademark Office under Regis

1,169,945 registered on 22 September 1981 under classes 9 and 12

first used on 29 August 1978 and 01 August 1976 respectlvely;" Regis

1,521,599 registered on 24 January 1989 under class 9 which was fir

country of

ration No.

hich were

ration No.

t used on

1984 March;29 Registration NO.1 ,519,596 registered on 10 January 1 89 which

was first used in 1984 March for class 9;30 Registration No. 1,522,692 registered

on 31 January 1989 for class 25 which was first used on July 1 8031 and

Registration No. 1,356,297 registered on 27 August 1985 for classes , 12, and

25 which was first used on June 1978,1977 and 1977, respectlvely",

24 Decision No. 2002-13, dated 13 June 2002, pages 5-6. 25 Unno Commercial Enterprises, Inc. vs. General Milling Corporation, 120 SC 804, 28 February 1983, page 811. 26 Decision No. 2002-13 dated 13 June 2002, page 8. 27 Exhibit "B", 28 Exhibit "C", 29 Exhibit "0". 30 Exhibit "E". 31 Exhibit "F". 32 Exhibit "G".


1f ., . J,

Lastly, this Office also noted that the Appellant conceded by tes ifying that

the word OAKLEY was already in existence when he registered th same as

trademark."

WHEREFORE, premises considered, there is no cogent reason to disturb

the appealed decision of the Director of the Bureau of Legal Affairs. A cordingly,

the same is AFFIRMED.

Let a copy of this Decision be furnished the Director of the ureau of

'" Legal Affairs for appropriate action, and the trademark application as

records be returned to her for proper disposition. Further, let the Direc ors of the

Bureau of Trademarks and the Administrative, Financial and Human Resource

Development Service Bureau be furnished copies hereof for informat on and/or

appropriate action.

SO ORDERED.

OCT 22. ,Makati City, Philippines.

/!(l~ISC~e~tor General

33 Transcript of Stenographic Notes, dated 27 February 1997, pages 14-15.


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