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OFFICE OF THE DIRECTOR GENERAL

OCEAN CROWN PRODUCTS, INC., APPEAL No. 14-06-051

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Opposer-Assignee-Appellant, IPC No. 3940 Opposition to:

-versus-Application Serial No. 63527 f Date Filed: 29 December 1987

P.]. RHODES CORPORATION, Trademark: ROSE PRIZE Respondent-Applicant-Appellee.

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NOTICE OF DECISION

ESTELLA & VIRTUDAZO LAW FIRM DIRECTOR CORAZON T. MARQUESES l~ Counsel for Opposer-Assignee-Appellant Administration, Finance and Human

Suite 5B, 5th Floor, Electra House, Resource Development Service Bureau 115 Esteban cor., V.A. Rufino Streets Intellectual Property Office Legaspi Village, Makati City

ROMULO~ANTABUENAVENTURA DIRECTOR CARMEN G. PERALTA 1}i f

SAYOC & DELOS ANGELES Documentation, Information and Counsel for Opposer-Assignee-Appellant Technology Transfer Bureau 30th Floor, Citibank Tower, Citibank Plaza Intellectual Property Office 8741 Paseo De Roxas, Makati City

SIOSO SIOSON & ASSOCIATES DIRECTOR LENY B. RAZ Counsel for Respondent-Applicant-Appellee Director of the Bureau of Trademarks Unit 1806, Cityland Herrera Tower, Intellectual Property Office 98 V.A. Rufino cor. Valero Streets, Salcedo Village, Makati City

DIRECTOR ESTRELLITA B. ABELARDO Bureau of Legal Affairs Intellectual Property Office

GREETINGS:

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Please be informed that on 02 May 2007, the Office of the Director General rendered a Decision in the above-tided case (copy attached).

Makati City, 02 May 2007.

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. ATHANIEL S. AREVALO A rneyVI Office of the Director General

Republic of the Philippines lNTELLECfUAL PROPERTY OFFICE

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LAW FIRM R,£ C E¢sVEfI..1J!'

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OCEAN CROWN PRODUCTS, INC., Opposer-Assignee-Appellant,

-versus-

P.]. RHODES CORPORATION, Respondent-Applicant-Appellee.

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ESTELLA & VIRTUDAZO NOTICE OF DECISION

IRTUDAZO LAW FIRM oser-Assignee-Appellant

or, Electra House,

" v.A. Rufino Streets Makati City

~iP OFFICE COPY INTELLECTUAL PROPERTY PHILIPPINES

APPEAL No. 14-06-05 IPC No. 3940 Opposition to:

Application Serial No. 63527 Date Filed: 29 December 1987 Trademark: ROSE PRIZE

DIRECTOR CORAZON T. MARQUESES Administration, Finance and Human ~ Resource Development Service Bureau I ~ / Intellectual Property Office

OFFICE OF THE DIRECTOR GENERAL

ROMULO MABANTA BUENAVENTURA SAYOC & DELOS ANGELES Counsel for Opposer-Assignee-AppeUant 30'h Floor, Citibank Tower, Citibank Plaza 8741 Paseo De Roxas, Makati City

SIOSO SIOSON & ASSOCIATES Counsel for Respondent-Applicant-Appellee Unit 1806, Cityland Herrera Tower, 98 V.A. Rufino cor. Valero Streets,

Salcedo Villa~e, ,~~~1i*1!t Gily

{DIRECTOR CARMEN G. PERALTA Documentation, Information an~ I Technology Transfer Bureau ~ i- '07 1 Intellectual Property Office

\ DIRECTOR LENY B. RAZ Director of the Bureau of Trademarks Intellec 1Pro er Office \

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RECEIVED SIOSON, SIOSON & ASSOCIATES

~~~ BY: ~.IC:t;:l. 1&i.:C DATE. ~=~;rME.

Please be informed that on 02 May 2007, the Office of the Director General rendered a Decision in the above-titled case (copy attached).

Makati City, 02 May 2007.

FAIRS

~~~:c~~~P',QNlU!MbN Intellectual pq,mmlMlBY: [l4J, =

GREETINGSJ RECEIVED ON: ;r/7tJC>:t -_._._~-------~--_...-­

V~~_t!-u.~Ly~rs,) .. ~ I L----­

ATTY: NATHANIEL S. AREVALO Au6~ney VI Office of the Director General

Republic of the Philippines CERTIFIED TRUE COPY INTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines> www.ipophil.gov.ph ~

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OFFICE OF THE DIRECTOR GENERAL

OCEAN CROWN PRODUCTS, INC., APPEAL NO. 14-06-05 Opposer-Assignee-Appellant,

Inter Partes Case No. 3940 Opposition to:

-versus- Application Serial No. 63527 Date Filed: 29 December 1987

P.J. RHODES CORPORATION, Trademark: ROSE PRIZE Respondent-Applicant-Appellee.

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DECISION

3. violate and run counter to Sec. 4(d) of Republic Act No. 166, as amended (RA 166).5

1 For use on canned fish, shellfish, fruits, vegetables, dried fruits, milk cream and dairy products. 2 Decision No. 2005-20 dated 16 November 2005 3 Application Serial No. 63527. 4 Bureau of Patents Trademarks and Technology Transfer Official Gazette, Vol. VI, No.3. 5 Entitled "AN ACT TO PROVIDE FOR THE REGISTRATION AND PROTECTION OF TRADEMARKS, TRADE-NAMES AND SERVICE-MARKS, DEFINING UNFAIR COMPETITION AND FALSE MARKING AND PROVIDING REMEDIES AGAINST THE SAME, AND FOR OTHER PURPOSES."

Republic of the Philippines INTELLECTUAL PROPERTY OFFICE

l"i 1 Sen. Gil Puvat Ave._ MaJcati Citv 1200 Philinnines • www.inonhil.oov.nh

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!This is an appeal from the decision of the Director of the Bureau of Legal Affairs (Director) denying the opposition of OCEAN CROWN PRODUCTS, INC. (Appellant) to the application for registration of the mark ROSE PRIZEl filed by P.J. RHODES CORPORATION (Appelleej.'

Records show that on 29 December 1987, the Appellee filed its trademark application'. The application was published for opposition in the Official Gazette", which was released for circulation on 29 July 1993.

~ On 28 September 1993, the Appellant filed a Verified Notice of Opposition claiming

that the trademark ROSE PRIZE is confusingly similar if not identical to its trademark ROSE BOWL & DESIGN such that allowing registration in favor of the Appellee will:

1. violate the rights and interests of the Appellant over its trademark ROSE BOWL & DESIGN, causing great and irreparable injury and damage;

2. mislead the purchasing public and make it convenient for the Appellee to pass off its goods as goods of the Appellant to the injury of the Appellant and the tpurchasing public; and

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In its Answer, the Appellee denied that the Appellant would be damaged by the approval of its trademark application claiming that:

1. its trademark is neither identical nor confusingly similar to the Appellant's and the approval of its application is fully in accordance with Sec. 4(d) of RA 166;

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I2. the issuance of registration in its favor will not mislead the purchasing public nor

violate any right and interest of the Appellant; and

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3. the approval of the application does not contravene any other provisions of RA 166 nor any provisions of the Revised Rules of Practice in Trademark Cases.

On 16 November 2005, the Director rendered the assailed decision." Using the holistic test, the Director did not find the contending marks confusingly similar. The Director held that the mark "ROSE" is a weak mark citing several registrations containing

~ the word "ROSE" and that the Appellant is in estoppel because it did not oppose the earlier \ registration of the mark ROSE PRIZE & DEVICE in favor of the Appellee. ~

i The Appellant filed a Motion for Reconsideration on 07 December 2005, which was ! !; j

denied by the Director in her Resolution dated 20 February 2006. Obviously not satisfied, the Appellant filed the instant appeal claiming that the Director erred in:

1. applying the holistic test; '~

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2. finding that "ROSE" is not the dominant word in the mark under opposition;

3. finding that "ROSE" is a weak mark;

4. finding that the mark under opposition has been used since the 1950's continuously up to the present;

c 5. ignoring and disregarding the Appellee's glaring bad faith;

6. giving weight to the Appellee's ROSE PRIZE & DEVICE registration which covers a device/design which is not being contested by the Appellant; and

7. not considering the resulting confusion of origin or business in addition to the confusion of goods that will result if the Appellee's mark is registered."

6 The dispositive portion of which reads: ''WHEREFORE, premises considered the Notice of Opposition is hereby DENIED. Consequently,

application bearing Serial No. 63527 flied by P. J. Rhodes Corporation on December 29, 1987 for the registration of the mark ROSE PRIZE used on canned fish, shellfish, fruits, vegetables, dried fruits, milk cream and dairy products is hereby GIVEN DUE COURSE.

"Let the filewrapper of ROSE PRIZE, subject matter of this case be forwarded to the Administrative, Financial and Human Resource Development Services Bureau (AFHRDSB) for appropriate action in accordance with this Decision with a copy furnished the Bureau of Trademarks (BOT) for information and update of its record.

SO ORDERED."

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Commenting on the appeal, the Appellee contends that Decision No. 2005-20 had long become final and executory because the Appellant's Motion for Reconsideration was a mere scrap of paper for want of Notice of Hearing. The Appellee argues that even if the motion is not to be considered pro forma, the appeal was still filed out of time. It also claims that the ''Verification and Certificate of Non-Forum Shopping" attached to the Appeal Memorandum is fatally defective as it was signed and executed by the counsel of the Appellant and not by its duly authorized director or officer.

The issues to be resolved are the following:

1. Whether or not Decision No. 2005-20 had already become final and executory;

2. Whether or not the contending marks are confusingly similar; and

3. Whether or not the Appellant is in estoppel because it did not oppose the earlier registration of the mark ROSE PRIZE & DEVICE in favor of the Appellee.

On the first issue, this Office in its Order dated 15 May 2006, has already ruled that the appeal was filed on time. The same Order also settled the issue involving the Verification and Certificate of Non-Forum Shopping submitted by the Appellant, to wit:

"This Office also finds the submission of the document confirming the appointment of Estella and Virtudazo Law Firm as its attorney/agent authorized to sign a Certification of Non-Forum Shopping relative to Appellant's Appeal Memorandum as proof that said law firm is authorized to execute the required certification of non-forum shopping."

Rule 2, Sec. 6 (Sec. 5)7 of the Regulations on Inter Partes Proceedings provides:

"Section 5. Rules of Procedure to be followed in the conduct of hearing of Inter Partes cases. - The rules of procedure herein contained primarily apply in the conduct of hearing of Inter Partes cases. The Rules of Court may be applied suppletorily. The Bureau shall not be bound by strict technical rules of procedures and evidence but may adopt, in the absence of any applicable rule herein, such mode of proceedings which is consistent with the requirements of fair play and conducive to the just, speedy and inexpensive disposition of cases, and which will give the Bureau the greatest possibility to focus on the contentious issues before it."

Accordingly, rules of procedure are intended to promote, not to defeat, substantial justice and, therefore, they should not be applied in a very rigid and technical sense. An appeal perfected out of time may still be given due course when to do so would serve the demands of substantial justice." In this case, the demands of substantial justice are better served by resolving this case on the merits.

7 Rule 2 Section 6 of the Regulations on Inter Partes Proceedings was amended and converted to Rule 2 Section 5 under Office Order No. 79, series of 2005. 8 See the cases of Buenaflor, et al v. CA, et al, G. R. No. 142021,29 November 2000 and Trani Internationalv. CA, et

al, G. R. No. 128421. ,%

Moving on to the second and third issues, it must be stressed that 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 him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product." A trademark can be registered if it can show distinctiveness.

Thus, this Office does not agree with the Director in her finding that "ROSE" is a weak mark. While indeed there are registered trademarks using the word "ROSE",IO these registrations do not necessarily mean that "ROSE" or a mark utilizing it is a weak mark. Every registered trademark seeks to distinguish the goods of an enterprise. I I The trademark registrations cited by the Director, which use the word "ROSE" have shown the quality of distinctiveness.

In this case, the Appellant is contesting the application of the Appellee for the registration of the trademark ROSE PRIZE on the basis of Sec. 4(d) of RA 166, as amended, which provides:

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

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(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned, as to be likely, when applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive purchases: or"

The law prescribes a more stringent standard in that there should not only be confusing similarity but that it should not likely cause confusion or mistake or deceive purchasers. 12

Confusing similarity or the likelihood of confusion stems from colorable imitation, that is, a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other. It does not mean such similitude as amounts to identity nor

9 PribhdasJ. Mirpuri v. C4, G.R. No. 114508, 19 November 1999, citing Etepha vs, Director of Patents, 16 SCRA 495 (1966), Cabrie! v. Perer, 55 SCRA 406 (1974). 10 See Decision, pp. 7-8. 11 Rep. Act. No. 8293, Sec. 121.1. 12 Societe Des Produits Nestle, SA., et.alus. C4, et. aL, G.R. No. 112012,04 April 2001.

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does it require that all the details be literally copied. Colorable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or tradename with that of the other mark or tradename in their over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article. 13

The universal test has been said to be whether the public is likely to be deceived. As a form of unfair competition, trademark infringement is always a question of fact. The person who infringes a trademark does not normally copy out but only makes colorable changes, employing enough points of similarity to confuse the public with enough points of difference to confuse the courts. What is undeniable is the fact that when a manufacturer prepares to package his product, he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from the others. When choosing, without a reasonable explanation, to use the same colors and letters as those used by another though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive. 14

Confusing similarity takes into consideration the purchasers, the nature of the goods, and whether or not the goods are related to each other. The purchasers may be an ordinary casual purchaser or a careful purchaser. Although neither RA 166 and Republic Act No. 8293, known as the Intellectual Property Code of the Philippines (IP Code) define who are the purchasers likely to be confused, such purchasers have been referred to as the ordinary average purchasers, and not the experts, the dealers, or other persons especially familiar with the trademark or goods involved.

Thus, in order that there may be deception of the buying public in the sense necessary to constitute unfair competition, it is necessary to suppose a public accustomed to buy, and therefore to some extent familiar with, the goods in question. The test of fraudulent simulation is to be found in the likelihood of the deception of persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The test is not found in the deception, or possibility of the deception, of the person who knows nothing about the design which has been counterfeited, and who must be indifferent as between that and the other. The simulation, in order to be objectionable, must be such as appears likely to mislead the ordinarily intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase. ,,15 Confusing similarity of the marks must be taken from the viewpoint of ordinary purchasers who are, in general less inclined to examine specific details of similarities and dissimilarities between competing products." Also, the ordinary or casual purchaser must be thought of as having, and credited with, at least a modicum of intelligence. He or she does not scrutinize the details of the label; he or she forgets or overlooks these, but retains a general impression, or a central figure, or a dominant characteristic.

13 Emerald Garment Manufacturing Corporation u. CA, et aI., G.R. No. 100098. December 29, 1995. 14 DelMonteCorporation, etal. u. CA, etal., G.R. No. 78325. 25 January 1990. 15 Asia Brewery, Inc. u. CA, G.R. No. 103543. 5 July 1993; citing In Dy Buncio us. Tan Tiao Bok, 42 Phil. 190, 196­197, 16 See Societe Des Produits Nestle,S A., et. al us. CA, et. aI., supra.

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In determining confusing similarity of two marks, two tests have evolved -Dominancy and Holistic. The test of Dominancy focuses on the similarity of the prevalent features of the competing trademarks, which might cause confusion or deception and thus, constitutes infringement. It relies not only on visual but also on connotative comparisons and overall impression between the marks. etermining dominance therefore includes dissecting the infringing trademark and subjecting it to a detailed comparison with the infringed mark, taking into consideration the point of view of the consumers.

On the other hand, Holistic test mandates that the entirety of the marks in question must be considered in determining whether or not confusing similarity exists.17 The discerning eyes of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other.

The Holistic test relies only on a visual comparison between the contending trademarks. The Dominancy test, meanwhile, relies not only on the visual but also on the aural (idem sonans or similarity in sound) and connotative comparisons and overall impressions between the two trademarks.

For comparison, the contending marks are reproduced below:

Appellant's mark ROSE BOWL and DESIGN

Appellee's mark ROSE PRIZE

Ruling in favor of the Appellee, the Director applied the Holistic test citing the case of Fruit of the Loom, Inc. us. Court of .Appeals", The Appellant, however, contends that the

17 Ibid. 18 133 SeRA 405.

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Dominancy test should be used whereby the registration of the Appellee's mark must be rejected.

In this regard, the 2001 case of Societe Des Produit Nestle SA. v. Court of Appeals is relevant. The case involved a household commodity - coffee. Admitting that no set rules can be deduced in deciding trademark cases in the Philippines, the Supreme Court chose to apply the Dominancy test in determining whether or not CFC Corporation's trademark "Flavor Master" is a colorable imitation of Nestle's "Master Roast" and "Master Blend." Anent the classification of the purchaser, the Supreme Court held that if the consumer is rash, he or she will neither have the time nor inclination to examine the discrepancies in order to exercise his choice. There are no set rules, if the dominant feature would have profound effect in the choice of goods by the purchasers. Interestingly, in the cited case, the Supreme Court explicitly rejected the Holistic test:

"The totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace."

In the instant case, this Office has observed that both the contending marks:

1. are used on canned food products, which are common household goods;

2. appeal to the consuming public, visually and aurally; and

3. possess dominant features that appeal to the consummg public, aurally and visually, and have effects on the purchasers.

Based on the factual milieu of this case, therefore, the test that should be used is the Dominancy test.

There are two (2) dominant features common to the contending marks: first, the color of the background (red); and second, the word "ROSE" which is very prominent and appeals visually and aurally. Appellee's mark uses the word "ROSE" as its first word while Appellant not only uses "ROSE" as its first word, the design of the Appellant's mark illustrates a picture of flowers to give emphasis to the word "ROSE".

Under the Dominancy test, the likelihood of confusion, mistake and deception on the purchasing public by Appellee's use of the mark ROSE PRIZE is very evident. As previously mentioned, the contending marks have the first and dominant word "ROSE".

It is obvious that the emphasis is given on the word "ROSE". The consuming public's attention is drawn into or is fixated on the word "ROSE". The goods which they represent are associated with the word "ROSE".

Considering therefore, that the goods, which the contending marks represent are similar and related, there would certainly be a likelihood of confusion both as to the goods and source or origin of the goods. The risk of damage is not limited to a possible confusion

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of goods but also includes confusion of reputation if the public could reasonably assume that the goods of the parties originated from the same source." It is very likely that a purchaser of a canned fish bearing the trademark ROSE PRIZE would have believed that it came from the same source of the goods bearing the trademark ROSE BOWL & DESIGN.

The next question is, who has the better right?

The Director in her Decision stated:

"Further, from the evidence presented, Respondent-Applicant-Assignee has sufficiently established that through the Respondent-Applicant, the trademark ROSE PRIZE has been adopted and used in the Philippines since the 19S0s continuously up to the present (Exhibits 'S-A' to 'S-WWWW') without objection from Opposer-Assignee and its predecessors-in-interests. Except for the present opposition proceeding, none of Opposer's predecessors-in-interest appears to have taken any action, judicial or otherwise, against the use by Respondent-Applicant­Assignee and it predecessors-in-interest of the mark ROSE PRIZE in commerce in the Philippines. (p. 8)

x x x "For having continuously used the mark ROSE PRIZE for various food

products for more than fifty (50) years pursuant to Section 2-A of Republic Act 155, as amended(sic), Respondent-Applicant-Assignee is entitled to have its right over the mark ROSE PRIZE recognized and protected and the same registered in its favor pursuant to Section 2 of the same law."

A scrutiny and consideration of the evidence on record, however, leads to a different conclusion.

While the Appellee may have presented evidence that it used the mark in the Philippines since the 1950s, this yields to the superior evidence that the trademark ROSE BOWL was used and registered in the Philippines earlier than ROSE PRIZE and its variations. The Appellant's mark ROSE BOWL & DESIGN has been known in existence in the Philippines since 1939. Its first use on canned fish in the Philippines by one of Appellant's predecessors-in-interest, the California Marine Curing & Packing Co., dates back to 1939 2°for which it was registered in the Philippine Patent Office on 12 January 1954 (Registration No. 4445).

This Office also noticed that the evidence presented by Appellee, supposedly to prove that it has used ROSE PRIZE since 1953, contradicts the contents of the notarized Trademark Application Serial No. 63527 which states that the Appellee first used the mark ROSE PRIZE on goods on 1 December 1955 and its first use in the Philippines was on 23 February 1956 21.

The Appellee's case is further weakened by the fact that, as borne by the records, it was a distributor of the Appellant's canned fish products, which use the mark ROSE BOWL

19 See Converse Rubber Corporation u. Universal Rubber Products, Inc. et al, G. R. No. L-27906, 08 January 1987. 20 Exhibits. "L" and "R" 21 Exhibit "P".

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and Design since 1946.22 This relationship lasted until 198123 when the Appellant terminated their distributorship agreement. This distributorship issue has already been passed upon in Inter Partes Case No. 154824 involving the same parties wherein the Director ruled 25:

"It is clear from the evidence presented that Petitioner (Appellee) is one of the distributors of the Rose Bowl & Design in the Philippines and its principal is the Respondent-Registrant (Appellant) as shown by the sharing of royalties paid by the packers. As master brokers or sales agent of the Respondent's the equitable principles of laches, estoppel and acquiescence can be considered and applied against Appellant, (Appellant) predecessors, Petitioner (Appellee) is deemed to be transacting business in behalf or in the name of its principal." 26

The Appellant, through the efforts of its distributors, including the Appellee, has brought into the market canned fish products bearing the mark ROSE BOWL & DESIGN. Being a distributor of the canned fish products bearing the mark ROSE BOWL & DESIGN owned by the Appellant, the Appellee's use of this mark should inure to the benefit of the Appellant.

I.·'···.,. ~ Accordingly, as there is no indication that Appellant has abandoned the use of the

mark ROSE BOWL & DESIGN for canned fish products, the registration of a confusingly similar mark ROSE PRIZE for similar canned fish products in favor of the Appellee cannot Ibe countenanced. There would certainly be a likelihood of confusion both as to the goods ,>and source or origin of the goods if the trademark application for ROSE PRIZE for use on r

!canned fish, shellfish, fruits, vegetables, dried fruits, milk cream and dairy products canned t fish products would be allowed. The trademark regime should ensure the protection of the Appellant from anyone who would want to ride on the goodwill generated by its products bearing the mark ROSE BOWL & DESIGN. Aptly, the intent of the Appellee to pass to the public its products as those of the Appellant is evident by its choice of the mark ROSE PRIZE. As held by the Supreme Court in the case of Philippine Nut Industry, Inc. us. Standard Brands Incorporated, et a1.27

"Admittedly, no producer or manufacturer may have a monopoly of any color scheme or form of words in a label. But when a competitor adopts a distinctive or dominant mark or feature of another's trademark and with it makes use of the same color ensemble, employs similar words written in a style, type and size of lettering almost identical with those found in the other trademark, the intent to pass to the public his product as that of the other is quite obvious."

Between an earlier user of a trademark who by honest dealing has already achieved favor with the public, and a later user of an identical or confusingly similar mark who by the confusion has nothing to lose and everything to gain, any doubt should be resolved against the latter because the field of selection of mark is obviously a large one.28 Appellee has been given the opportunity to explain why it wanted to use the mark ROSE PRIZE

22 See Exhibits "B", "C", "D", "E" and "H". 23 Ibid. 24Petition for Cancellation of the mark ROSE BOWL and DESIGN filed by the Appellee against the Appellant. 25 Decision No. 2005-19 on Inter Partes Case No. 1548 became final and executory on 04 February 2006. 26 Decision No. 2005-19, p. 12. f­

27 G. R. No. L-23035, 31 July 1975. 28See DelMonte Corporation, et al., v. Cour: ofAppeals, G. R. No. 78325,25 January 1990.

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notwithstanding the existence of the mark ROSE BOWL and Design on canned fish products of the Appellant, which the Appellee itself has been distributing for more than four (4) decades. Its failure to clearly manifest the reason(s) for choosing and using the mark ROSE PRIZE, indicates the intent to ride on the goodwill generated by the products bearing the mark ROSE BOWL & DESIGN. By appropriating the word "ROSE" in its trademark being sought for registration, the Appellee's products are likely to be mistaken as having been produced by the Appellant. To allow the Appellee to register the mark ROSE PRIZE

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for canned fish products would, thus, defeat the very rationale of having a trademark i !

!registration.

Finally, this Office finds untenable the Appellee's contention that the equitable t !principles of laches, estoppel and acquiescence can be considered and applied against

Appellant because it did not oppose the earlier registration of the trademark ROSE PRIZE & DEVICE in favor of the Appellee.

The Appellant is correct in pointing out that what is in issue in this case is the

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I~confusing similarity of the trademarks ROSE PRIZE and ROSE BOWL & DESIGN29

, and • not a challenge to the certificate of registration of the mark ROSE PRIZE & DEVICE.

Appellant is exercising a right, which the laws and regulations on trademarks have given the Appellant to ensure that its own property right to the mark ROSE BOWL & DESIGN is protected.

Further, while it may not have opposed the earlier registration of the trademark ROSE PRIZE & DEVICE, the remedy of cancellation of registration, which may be filed anytime as provided for under Section 17 of RA 166, is still available to the Appellant.

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WHEREFORE, premises considered, the instant appeal is GRANTED. The fopposition to the registration of the mark ROSE PRIZE for use on canned fish, shellfish,

fruits, vegetables, dried fruits, milk cream and dairy products, is hereby SUSTAINED. Accordingly, Application Serial No. 63527 filed by P. J. RHODES CORPORATION is REJECTED. I•

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Let a copy of this Decision as well as the trademark application and records be furnished and returned to the Director of Bureau of Legal Affairs for appropriate action. Further, let also the Directors of the Bureau of Trademarks, the Administrative, Financial and Human Resources Development Services Bureau, and the library of the Documentation, Information and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance, and records purposes. t

SO ORDERED.

MAY 02 2007 Makati City

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29 See APPEAL MEMORANDUM, p. 11.

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