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INTELLECTUAL PROPERTY PHILIPPINES

HAWK DESIGNS, INC., } IPC Case No. 4-2009-00072 Opposer, } Case filed: 17 April 2009

} Opposition to: -versus } Appln. Ser. No. 4-2008-009722

} Date filed: 12 August 2008 YEE LOCK CO and ROBIN K. CHAN, }

Respondent-Applicant, } TM: "HAWK}

x---------------------------------------------------x Decision No. 2009-~

DECISION

For consideration is the Verified Notice of Opposition filed by Hawk Design, Inc. , a corporation duly organized under the existing laws of the U.S.A, with business address at 15202 Graham Street, Huntington Beach, CA 92649, U.S.A. against the applications of Yee Lock Co and Robin K. Chan both located at 26 Podium Level, Prime Block, Tutuban Mall, Tondo, bearing Application Serial No. 4-2008-009722 used for footwear namely: shoes, boots, sandals,and slippers under Class 25 of the International Classification of Goods and which was published in the Intellectual Property E-Gazette on 07 November 2008.

The grounds for Opposition to the registration of the mark are as follows:

"1. Opposer is the prior applicant in the Philippines for the mark "TONY HAWK" covered by Application No. 4-2007-006691 and "HAWK HEAD DEVICE" covered by Application No. 4-2007-006692, both filed on June 27, 2007. The subject mark "HAWK" is identical with, or confusingly similar with the Opposer's marks "TONY HAWK". Hence, under Section 123.1 (d) of the IP Code, it can no longer be registered in the name of Respondent-Applicants.

2. Opposer's trademark is a well-known mark hence, approval of subject application violates the rights arising from the said status, contrary to Sections 123.1 (e) and (f) of the IP Code;

3. The use and registration of the applied mark by Respondent-Applicants will cause confusion, mistake and deception upon the consuming public and mislead them as to the origin, nature, quality and characteristics of the goods or: which it is affixed pursuant to 123.1 (g) of the IP Code.

• 1

Republic of the Philippines INTI'" I It'rTTT A I PDOPlt'DTV Olt'lt',rlf.

.' .

4. Even without Application Nos. 4-2007-006691, the "TONY HAWK" mark of Opposer deserves full protection since it is already internationally well-known. Consequently, under Section 123.1 (e) and Section 123.1 (f) of the IP Code, the subject mark "HAWK" and any mark that is confusingly similar with Opposer's marks "TONY HAWK" can no longer be registered by Respondent-Applicants.

5. The approval of the subject application will violate the proprietary rights and interest, business reputation and goodwill of the Opposer considering that the mark applied for mark is identical to Opposer's "TONY HAWK" marks that are highly distinctive and over which the Opposer has exclusive use and registration in numerous countries worldwide.

6. The approval of the subject application will enable the RespondentApplicants to unfairly profit commercially from the goodwill, fame, and notoriety of the trademarks "TONY HAWK" to the damage and prejudice of the Opposer herein contrary to Section 168.1 of the IP Code.

7. Trademark dilution under the Supreme Court ruling in the case of Levi Strauss & Co. & Levi Strauss (Phi/s.), inc. vs. Clinton Apparelle, Inc., G.R. No. 1?8900, September 30, 2005.

Together with the Verified Notice of Opposition, Opposer submitted various evidence, to support its opposition, which are herein enumerated:

Exhibit Description of Document I Material "A" Legalized Affidavit of Sean Pence "B" Certified copy of Trademark Registration No. 2299696,

issued on December 14, 1999, in the United States for the trademark "TONY HAWK"

"B-1" Certified copy of Trademark Registration No. 2931627, issued on March 8, 2005, at the United States for the trademark "HAWK HEAD DEVICE"

"B-2" Certified copy of Trademark Registration No. 3413808, issued on November 21, 2004, in China for the trademark "TONY HAWK"

I

"B-3" Certified copy of Trademark Registration No. 3413806, issued on January 14, 2005 in China for the Trademark "HAWK HEAD DEVICE"

"B-4" Certified copy of Trademark Registration No. 200112874,

·.

issued on September 20, 2001 in Hong Kong for the trademark "TONY HAWK"

"8-5"

"8-6"

"8-7"

"8-8"

"8-9"

"8-10"

"8-11"

Certified copy of Trademark Registration No. 1297018, issued on February 21, 2007, in India for the trademark "TONY HAWK" Certified copy of Trademark Registration No. 494455, issued on November 30, 2001 in Indonesia for the trademark "TONY HAWK" Certified copy of Trademark Registration No. 504852, issued on October 29, 2001 on South Korea for the trademark "TONY HAWK" Certified copy of Trademark Registration No. 00813/2005, issued on November 7, 2005, in Mauritius for the trademark "TONY HAWK" Certified copy of Trademark Registration No. 663683, issued on January 5, 2004 in New Zealand for the trademark "TONY HAWK" Certified copy of Trademark Registration No. TOO/18097F, issued on October 3, 2000 in Singapore for the trademark "TONY HAWK" Certified copy of Trademark Registration No. 2000/18719, issued on February 6, 2007 on South Africa for the trademark "TONY HAWK"

~ 'I

I

"E"

"F"

"G" to "G-2"

A database list of all trademark and service mark I registrations and applications for the mark "TONY HAWK" Certified copy of a poster for the "HAWK European Tour in 2007 Affidavit of Amando S. Aumento Jr., an Associate Lawyer of Federis & Associates Law Office "E" Legalized Power of Attorney executed by Opposer in favor of Federis& Associates Law Offices Printouts of websites http://www.quiksilver.com, http://tonyhawk.com and http://www.hawk-city.com

"H" to "H-l" Certified copies of Trademark Application No. 4-2007006691 for "TONY HAWK" covering goods in class 25 and Trademark Application No. 4-2007-006692 for "HAWK HEAD AND DEVICE"

"I" to "1-26" Printout of internet website where products bearing the 'w7 J

marks "TONY HAWK" and/or "HAWK HEAD DEVICE" appear

"J" to "J-19" Printouts of relevant internet websites where the sports figure Tony Hawk is featured

"K" to "K-1" Printouts of the Google page showing the search results for the keywords "TONY HAWK"and "HAWK CLOTHING"

On 14 April 2009, a Notice to Answer the Verified Notice of Opposition was issued by this Bureau and served personally to Respondent-Applicant's counsel on 15 May 2009. On 25 August 2009, Respondents filed its Verified Answer alleging the followlnq Affirmative and/or Special Defenses:

"1. Respondent-applicants are the lawful owners of the trademark "HAWK" for use on shoes.

1.1. Respondent-Applicants, together with Rosa Kaw, are the majority stockholders of Sportrend Mfg. Corp., a corporation duly organized under the laws of the Philippines and existing since its incorporation last August 29, 1989.

1.2. On December 13, 1985, Rosa Kaw adopted the mark HAWK and through Sportrend Mfg. Inc. Corp. started using the mark HAWK on shoes.

Having acquired ownership of the mark HAWK by means of actual commercial use thereof, on May 28, 1987, Rosa Kaw filed Application Serial No. 1776 for the registration of the mark HAWK for use on shoes falling under Class 25.

On November 3, 1989, Rosa Kaw was issued Certificate of Registration No. 46817 for the mark HAWK.

1.3. On December 13, 1985, Rosa Kaw also adopted the mark LADY HAWK &DESIGN for use on shoes.

Likewise, havlnq acquired ownership of the mark LADY HAWK & DESIGN by means of actual commercial use thereof, on July 27, 1988, Rosa Kaw filed Application Serial No. 65330 for the registration of the mark LADY HAWK & DESIGN for use on shoes falling under Class 25.

On October 1, 1990, Rosa Kaw was issued Certificate of Registratio No. }),I/ 49237 for the mark LADY HAWK & DESIGN. ~/7

I· 4

1.4. Relying simply on what appears in the face of both Exhibits "1" and "5", Rosa Kaw thought that her marks were registered for a term of 20 years. Rosa Kaw did not file any affidavit of use for her registrations, although through Sportrend Mfg. Corp., her registered marks have been continuously used without any interruption, and without any intention of abandoning them.

1.5. On August 12, 2008, Rosa Kawfiled Application Serial No. 4-2008009722, by way of re-application of her Registration No. 46817 which was ordered cancelled for non-filing of an affidavit of use following its 5th anniversary. There was no abandonment of the mark HAWK as the use thereof continues.

1.6 Beginning 2003, Respondent-Applicants through their new corporate vehicle, Shoexpress, Inc. continue using the mark HAWK for footwear.

1.7. On September 15, 2008, Rosa Kaw executed an Assignment of Application Serial No. 4-2008-009722 in favor of Respondent-Applicants, which assignment was presented for recordaI before this Office on September 16, 2008.

1.8. The exclusive right of Respondent-Applicants and their assignor to the mark HAWK has been preserved by express provision of Section 236 of the IP Code.

2. Respondent-Applicants have better and superior right to the mark HAWK as against Opposer.

2.1. As early as December 13, 1985, that is fourteen (14) years before Opposer allegedly adopted and started using in 1999 the mark TONY HAWK for clothing falling Class 25, Rosa Kaw, assignor to Respondent-Applicants, had adopted and through their corporate vehicle, Sportrend Mfg. Corp., started using the mark HAWK on shoes. Such commercial use continues up to the present.

2.2. Through actual and continuous commercial use of the mark HAWK in shoes since December 13, 1985, Respondent-Applicants have acquired ownership of the marks HAWK for use on shoes pursuant to Section 2-A of Republic Act No. 166, as amended.

2.3. Respondent-Applicants right of ownership of the mark HAWK, including the right to register said mark, has been preserved by express~ provisions of Sections 236 of the IP Code. lli·

5

· ,

2.4. Opposer claims that it first used its mark TONY HAWK on March 1, 1999 and the mark HAWK HEAD DEVICE on November 11, 2000. Even assuming Opposer's claim to be true, Opposer's claim of first use is still fourteen (14) years after the date of first use on December 13, 1985 of the mark HAWK by Respondent-Applicants assignor.

By December 13, 1985 when Respondent-Applicant assignor adopted and started using the mark HAWK, Opposer was not yet existing, much less using its marks TONY HAWK and HAWK HEAD DEVICE.

2.5. Opposer can not invoke sections 123.1 (e), (f), (g) and 168.1 of the IP Code to defeat the registration of the mark HAWK, as well as Article 6bis of the Paris Convention.

Opposer's mark TONY HAWK was registered in the USA only on December 14, 1999 while its mark HAWK HEAD DEVICE was registered in the USA only on March 8, 2005", long after Respondent-Applicant' assignor had adopted, started using, and registered the mark HAWK.

2.6. Opposer cannot claim that the use and registration of the mark HAWK in favor of Respondent-Applicants will cause damage to its goodwill and/or dilute the alleged distinctiveness of its marks. As stated above, fourteen (14) years before 1999 when in (Opposer) started using its mark TONY HAWK, RespondentApplicants' assignor had already adopted and through Sportrend Mfg. Corp., has been using the marks HAWK and LADY HAWK & DESIGN. Neither of Opposer's marks TONY HAWK and HAWK HEAD DEVICE were registered by May 28, 1987, when Respondent-Applicants' assignor, ROSA KAW filed her application for the registration of the mark HAWK which ripened into Registration No. 46817 issued on November 3, 1989 (Exhibit "1"); or by July 27, 1988, when Rosa Kaw filed her application for the registration of the mark LADY HAWK & DESIGN which ripened into Registration No. 49237 I issued on October 1, 1990.

2.7. Even assuming that eventually, Opposer's marks TONY HAWK and HAWK HEAD DEVICE have become well-known because of the fame of Tony Hawk in skateboarding, such fame came about definitely very much later than December 13, 1985 when Respondent-Applicant's assignor adopted and started using the mark HAWK on shoes. Opposer's marks were not yet on eXistence'Jr'

much less popular by December 13, 1985. ~. r:

6

3. The claim of Opposer that Respondent-Applicant's mark HAWK is confusingly similar to its marks TONY HAWK and HAWK HEAD DEVICE will not bar the registration of the mark HAWK in favor of Respondent-Applicants.

3.1. As established by substantial documentary evidence, RespondentApplicant's mark HAWK was adopted and started to be used as early as December 13, 1985. In fact, it was even registered in favor of RespondentApplicant's assignor, Rosa Kawon November 3, 1989.

3.2. On the other hand, according to its claim, Opposer's mark TONY HAWK was first used only on March 1, 1999 and its mark HAWK HEAD DEVICE was first used only on November 11, 2000 (Par. 18 of the Notice of Opposition). In the Philippines, Opposer claims that its first use of its mark TONY HAWK was only in the year 2003 (Par. 13 of the notice of Opposition).

3.3. In addition, Opposer's mark TONY HAWK was first registered in the U.S.A. only on December 14, 1999 while its marked HAWK HEAD DEVICE was registered only on March 8, 2005.

3.4. Further, Opposer filed its application to register the marks TONY HAWK and HAWK HEAD DEVICE in the Philippines only on June 27, 2007. (Par. 14 of the Notice of Opposition).

3.5. In fine, even if Respondent-Applicant's mark HAWK and Opposer's marks TONY HAWK and HAWK HEAD DEVICE are confusingly similar, it is the registration of Opposer's marks which is barred by the existence and continuous use by Respondent-Applicant's of the mark HAWK, and not the other way around.

Together with the Verified Answer, Respondent-Applicant filed a Compliance attaching therewith the following documentary exhibits:

EXHIBIT DESCRIPTION "1" Certified copy of Certificate of Registration No. 46817

for the trademark HAWK issued on November 3, 1989 on favor of Rosa Kaw.

"2" Duplicate original copy of the Assignment of Application serial No. 4-2008-009722 for the trademark HAWK executed by Rosa Kaw in favor of Respondent

Applicants. "3", "3-a" to "3-k" Copies of the Acknowledgement of Filing; Trademark

Application Form; Registrability Report; Response dated October 13, 2008; Drawing; Assignment of Application for Registration; Notice of Allowance, and printout of the e-Gazette showing details of Application Serial No. 4-2008-009722 taken from the file wrapper of subject application. Certified copy of the Certificate of Incorporation, together with the Articles of Incorporation of Sportrend Mfg. Corp. Certified copy of Certificate of Registration No. 49237 for the mark LADY HAWK & DESIGN issued on October 1, 1990 in favor of Rosa Kaw. Original/certified copies of the Mayor's Permits issued to Sportrend Mfg. Corp. from 1994 to 2002. Original/certified copies of representative sales Invoices of Sportrend Mfg. Corp. indicating sale of products bearing the mark HAWK. Original/certified copies of Price Lists of Sportrend Mfg. Corp. for its "HAWK" products. Original/certified copies of representative samples of advertising and promotional materials of products bearing the mark "HAWK". Original/certified copies of various Print Budget Appropriations, Broadcast Telecast Orders and Contracts for "HAWK" products for the years 19911995. Certified true copy of the Certificate of Incorporation and Articles of Incorporation of Shoexpress, Inc. Certification issued by the Government of Malabon City re the issuance to Shoexpress, Inc. of Mayor's Permits from 2001 to the present, and the Certification issued by the Office of the Barangay Captain of Potrero, Malabon City. Original/certified copies of representative sales Invoices of Shoexpress, Inc. indicating sale of products bearing the mark HAWK. Duly notarized affidavit of ROSA KAW. Duly notarized joint affidavit of CO YEE LOCK and ROBIN K. CHAN.

"4"

"5"

"6" to "6-h"

"7" to "7-g"

"8" to "8-1"

L"9" to "9-m" "10" to "10-dd"

"11"

"12" and"12-a"

"13" to "13-1"

"14" "15"

A Reply was filed by Opposer on 04 September 2009 and Respondent filed a ReiOinderf/i.

i

thereto on 24 september 2009. The issues having been joined, a Notice of Preliminary Conference was issued on 08 October 2009. On October 20, 2009, the preliminary conference was terminated, there being no possibility of an amicable settlement. On 09 November 2009, Order No. 2009-1595 was issued requiring the parties to submit position papers. Opposer filed its Position Paper on 17 November 2009 while Respondent-Applicant filed its Position Paper on 23 November 2009. Hence, this case is now submitted fir decision.

The main issue to be resolved in this case is: WHETHER OR NOT RESPONDENTAPPUCANT'S MARK ftHAWK- SHOULD BE REGISTERED.

To have a better appreciation of the marks of the parties, they are hereunder reproduced:

&~_~ser's Mari(s - .------ -----.1Resp~~dents-Applica~ts' Mark I Application serial No. 4-2007-006691 I

TONY HAWK App. serial No. 4-2007-006692

There is no doubt that the above contending marks are confusingly similar with each other because of the presence of the dominant word "hawk". However, there is no dispute as to that issue and as such there is no need to belabor on such matter anymore.

Anent the core issue in this case, Opposer posits that as a prior filer of the marks TONY HAWK and HAWK HEAD DEVICE, the registration of Respondents' HAWK mark should be disallowed. Opposer alleged that its marks TONY HAWK and HAWK HEAD DEVICE for us:t;r on goods under Class 25 was filed on June 27, 2007, a much earlier date that Respondents / 1#

date of filing of its HAWK mark on August 12, 2008 so that in a contest between filers of applications for trademark registration for the same mark, the first to file the trademark registration is considered the exclusive owner of the mark who can defeat a subsequent registration of the same as the IP Code has now instituted the first-to-file system. In addition, Opposer contended that the intention of the lawmakers behind the law is to abandon use as a source of trademark rights as per the transcript of legislative deliberations in Congress.

Also, Opposer, relying on the case of Coby Electronics vs. Mirage International reasoned out that in that case, this Bureau was not persuaded by the claim of 'first actual use instead the Bureau applied the first-to-file rule and ruled that as a result of the earlier filing by Mirage, Mirage had a better right than Coby over the COBY mark.

Oppositely, Respondents asseverated that they are the lawful owners of the HAWK mark as they are the prior actual user in commerce haVing stepped into the shoes of Rosa Kaw who was the prior user since 1985 and registrant of the HAWK and LADY HAWK & DESIGN marks. Respondents argued that ownership of the mark HAWK for use on shoes initially acquired by Rosa Kaw and subsequently transferred to them have been preserved through continuous use up to the present. Further, to contradict Opposer's argument that it has a better right over the mark HAWK, Respondents asserted that under the so called firstto-file rule in the IP Code, the first filer does not and cannot automatically be considered as the owner of the mark applied for. The right to register a mark under the IP Code is still limited to the owner of the mark which in turn was acquired by prior appropriation and use in good faith.

It is quite clear then from the arguments of both parties, that the determination of the issue at hand hinges on who between Opposer who is claiming that it is the prior filer and Respondents who are claiming that they are the prior actual user in commerce of the HAWK mark have a better right over said mark.

At present, Republic Act No. 8293 otherwise known as the "Intellectual Property Code of the Philippines" (IP Code) is the governing law on trademark registration. Section 122 thereof states clearly how trademark rights are acquired. It states:

"Sec. 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." /V 10

Corollary thereto, section 123 (d) of the IP Code further provides:

"SEC. 123. Registrability. - A mark cannot be registered if it:

x x x

(d) Is identical with a registered mark belonging to a different proprietor 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."

Applying the above-cited provisions, the basis of registration of a mark is "prior filing" and as between Opposer and Respondents in this case, it would seem that Opposer has a better right over the HAWK mark as it was the first filer, haVing filed its application for the mark TONY HAWK and HAWK HEAD DEVICE on 27 June 2007 as compared to Respondents who filed their application for the herein subject mark on 12 August 2008. However, it bears stressing that while the IP Code adheres to the "first-to-file rule", it also safeguarded the rights which were already acquired prior to its effectivity. This protection to priorly acquired rights is explicitly provided in section 236, to wit:

"Section 236. Preservation ofExisting Rights. - Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act." [Emphasis supplied]

Contrary to Opposer's view, while it is true that the IP Code adheres to the so called "first-to-file" rule, the repeal of Republic Act No. 166 did not terminate all trademark rights acquired under and pursuant to said law. It is noteworthy to emphasize at this point that only the parts of R.A. No. 166 inconsistent with R.A. No. 8293 was repealed. It is a misleading notion that because of the repeal of Republic Act No. 166, the ownership rights acquired in a trademark pursuant to said law has ceased and was terminated. The abovequoted Section 236 guarantees due process and observance of justice, fairness or equity.

The adoption of this provision of law finds purpose in the repeal of R.A. No. 166 by R.A. No. 8293, to protect the rights of those who have already invested and established goodwill on their marks and names. said section 236 draws a conclusion that the rights referred thereto include rights of owners and prior users of registered and unregistered trademarks that were acquired in good faith before R.A. No. 8293 took into force and effect on January 1, 1998 which include the right to appropriate exclusive use of the trademark and the right to prevent the registration of identical and confusingly similar trademarks.

Going back, how was the ownership of the mark acquired under the old trademark law or under R.A. 166? section 2-A of the said law states:

"SEC. 2. Whatare registrable.- Trademark, tradenames and service marks owned by persons, corporation, partnerships or associations domiciled in the Philippines and by persons, corporations, partnerships or associations domiciled in any foreign country may be registered in accordance with the provisions of this Act: Provided, That said trademarks, tradenames, or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: And provided, further, That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines, and such fact is officially certified, with a certified true copy of the foreign law translated into the English language, by the government of the foreign country to the Government of the Republic of the Philippines.

SEC. 2-A. Ownership of trademarks, tradenames and service marks; how acquired. - Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful 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 trademark, a tradename, or a service mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or service of others. The ownership or possession of a trademark, tradename, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the sam~ extent as are other property rights known to the law." [Emphasis / ~!2

supplied]

Undeniably, the afore-quoted law accentuates the "prior user" rule, otherwise stated, under RA No. 166, actual use in commerce and trade in the Philippines is the basis for acquiring ownership of a trademark. Jurisprudentially, this "prior user and adopter rule" in trademarks has been confirmed and enunciated by the Supreme Court in the case of Unno Commercial Enterprises, Incorporated v. General Milling Corporation, et al.1, to wit:

"The right to register a trademark is based on ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same. x x x

Thus, petitioner's contention that it is the owner of the mark 'All Montana' because of its certificate of registration issued by the Director of Patents, must fail, since ownership of a trademark is not acquired by the mere fact of registration alone. Registration merely creates a prima facie presumption of the validity ofthe registration, of the registrant's ownership of the trademark and of the exclusive right to the use thereof. Registration does not perfect a trademark right. As conceded itself by petitioner, evidence may be presented to overcome the presumption. Prior use by one will controvert a claim of legal appropriation by subsequent users. In the case at bar, the Director of Patents found that "ample evidence was presented in the record that centennial Mills, Inc. was the owner and prior user in the Philippines of the trademark 'All Montana' through a local importer or broker. Use of the trademark by a mere importer, indentor or exporter (the Senior Party herein) inures to the benefit of the foreign manufacturer whose goods are identified by the trademark. The Junior Party has hereby established a continuous chain of title and, consequently prior adoption and use" and ruled that "based on the facts established, it is safe to conclude that the Junior Party has satisfactorily discharged the burden of proving priority of adoption and usIj; and is entitled to registration." [Emphasis supplied] ,.

120 scnx 804 (1983) 13

A review of Respondents' evidence would show that Rosa Kaw initially filed her application for registration of the mark HAWK way back on May 28, 1987 and November 3, 1989, the said trademark was registered in her favor under certificate of Registration No. 46817. For the LADY HAWK 81. DESIGN mark, she filed an application for registration on 27 July 1988 and the mark was registered on OCtober 1, 1990 under Certificate of Registration No. 49237. Both marks were registered while the old Trademark Law was still in effect. Considering therefore that the acquisition of ownership over the mark HAWK and LADY HAWK 81. DESIGN was pursuant to the old law, which was based on actual use in commerce, following the rule on preservation of rights under Section 236 of the IP Code, Respondents have a better right over the subject mark since the trademark right acquired by Rosa Kaw was passed to them upon assignment.

In comparison to Opposer, as per its admission, it started using the mark TONY HAWK only in March 1, 1999 and the mark HAWK HEAD DEVICE in November 11, 2000. Opposer's marks were also registered in the United States only on December 14, 1999 and March 8, 2005 respectively. In the Philippines, Opposer's mark was applied for registration on 27 June 2007. These dates are far much later than Respondents date of use here in the Philippines.

Now, Opposer in trying to convince this Bureau that it has a better right over the HAWK mark maintains that the first-to-file rule should be applied in this case since Rosa Kaw's ownership over the mark HAWK was abandoned when she failed to file an Affidavit of Use within one year after the fifth anniversary of the registration of the mark, which is why it was cancelled by the Bureau of Trademarks.

We do not agree.

Generally, abandonment means the complete, absolute or total relinquishment or surrender of one's property or right, or the voluntary giving up or non-enjoyment of such property or right for a period of time which results in the forfeiture or loss thereof. It requires the concurrence of the intention to abandon it and some overt acts from which it may be inferred not to claim it anymore." To work an abandonment, the disuse must be permanent and not ephemeral; it must be intentional and voluntary, and not involuntary or even compulsory. There must be a thorough ongoing discontinuance of any trade-mark use of the mark in question." Applying the said concept to ownership or registration O~~.

2 Agpalo, Ruben E., Legal Words and Phrases, 1997 Ed., page I. 3 . Philippine Nut Industry vs. Standard Brands, Incorporated, Et. aI., G.R. No. L-23035. July 31, 1975 citing Callman,

'f/:; Unfair Competition and Trademark, 2nd Ed., p. 1341)

14

trademarks, in order for a trademark registration to be considered as abandoned, the owner/registrant must relinquish or voluntarily surrender its rights over the trademark. In the instant case, there is no overt act from which it can be inferred that Respondents has abandoned its trademark registration of the mark HAWK and LADY HAWK & DESIGN. Respondents have sufficiently established that the ownership of the marks was never abandoned by Rosa Kaw, the original owner. In fact, as shown by the overwhelming evidence such as the Mayor's Permit, sales Invoices, Price usts, representative samples of advertising and promotional materials of products bearing the mark HAWK, Print Budget Appropriations, Broadcast Telecast Orders and Contracts for "HAWK" products (Exhibits "6" to "10-dd''). Later on, the use was continued through Shoexpress, Inc. through its footwears bearing the mark HAWK., Rosa Kaw through its company Sportrend Mfg. Corp. has continuously used the mark HAWK in its shoes which is evidenced by various sales Invoices, among others.

Consequently, since Respondents were able to prove that it was the first adopter and user in commerce and trade in the Philippines of the marks HAWK and LADY HAWK & DESIGN, it has a better right over the said marks than Opposer and its vested right over the marks acquired in good faith under the old trademark law or R.A. No. 166 cannot be impaired by the passage of R.A. No. 8293 or the IP Code and the application or registration of a similar or identical mark under the IP Code.

Furthermore, contrary to Opposer's supposition, it bears stressing that even in the passage of R.A. No. 8293, ownership is not obtained by mere registration alone. The Philippines implemented the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement) when RA 8293 took into force and effect on 01 January 1998.

Article 15, in relation to Article 16(1) of the said Agreement provides that, "it is not the registration that confers ownership of trademark; rather, it is ownership of the trademark that gives rise to the right to cause its registration and enjoy exclusive use thereof for the goods associated with it."

"The "First-To-File" rule could not have been intended to justify the approval of a trademark application just because it was the first application to be filed regardless of another's better or superior right to the mark applied for. The rule cannot be used to commit or perpetrate an unjust and unfair claim. A trademark is an industrial property and the owner thereof has property rights over it. The privilege of being issued a registration for its exclusive use, therefore, should be based on the concept of ownership. RA 8293 implements the TRIPS Agreement and therefore, the idea of "registered owner" does not mean that ownership is established by mere registration but that registration establishes merely a presumptive right of ownership. That presumption of ownership yields to superior evidence of actual and real ownership of the trademark and to the TRIPS Agreement requirement that no existing prior rights shall be prejudiced."

4 Fishwealth Canning Corp. vs Henry Kawson, Appeal Nos. 10-05-03 and 14-05-06, Office of the Director General, 15

$'

·.

Opposer's reliance on the case of Coby Electronics Corp. vs. Mirage International Corp." is also misplaced. In the said case, this Bureau ruled in favor of Mirage as it was the first to file an application for trademark registration of the mark Coby. But while this Bureau applied the so called "flrst-to-nle" rule, attention should be drawn to the facts of the case. Opposer in that case claimed prior use not in the Philippines but abroad, that is why this Bureau did not consider prior use in resolving the case following the territoriality principle on trademarks. Hence, said case is not applicable to the case at bar. In contrast, herein Respondents' claim of prior use took place in the Philippines and not abroad.

Finally, on Opposer's claim that its mark is well-known, we find the same to be without merit. section 123.1 (e) of Republic Act No. 8293 provides:

"SEC. 123.1 A mark cannot be registered if it:

xxxx

(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 section 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; xxx." [Emphasis ours.]

The cited provision is very explicit that a mark cannot be registered if it is identical or confusingly similar to a mark which has been declared well-known internationally and in the Philippines by competent authority. The said provision further requires that in order to determine whether a mark is well-known, account shall be taken of the relevant sector of the public including knowledge in the Philippines. The law is unequivocal that in order that a mark be considered well-known, evidence should be presented to demonstrate that Opposer's mark is recognized by the relevant sector of the public or that the public is aware of such mark as a result of promotion here in the Philippines. In this regard, oppo~ failed to satisfy this reqUirement of the law as it failed to Present any evidence to show theI f A

22 January 2007) ~, 5 Decision No. 2007-09 dated January31, 2007, IPC No. 14-2006-00085.

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extent of promotion/advertisement of its goods bearing its marks here in the PhNippines. Presentation of proof of the extent of registration of the mark in various countries is not sufficient.

WHEREFORE, premises considered, the Notice of Verified Opposition filed by Opposer, HAWK DESIGNS, INC. against respondent-applicant YEE LOCK CO and ROBIN K, CHAN's application for registration of the mark "HAWK" is, as it is hereby DENIED. Consequently, the trademark "HAWK" bearing Serial No. 4-2008-009722 filed on 12 August 2008 for use on footwear namely: shoes, boots, sandals,and slippers belonging to Class 25 of the international dassification of goods is, as it is hereby, GIVEN DUE COURSE.

Let the filewrapper of HAWK be transmitted to the Bureau of Trademarks (BOn for appropriate action in accordance with this DECISION.

SO ORDERED.

Makati City, 04 December 2009.

irector, Bureau of Legal Affairs

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