In The Republic of the Philippines and

Before the Bureau of Legal Affairs

In re Registration of Justin Bieber.

Mark: R&Bieber
Reg. No.: 5,003,2020

“R.B.Ver, & Co.”, owned by

RICHARD B. VER

Petitioner, Cancellation No. 20211203

- versus -

JUSTIN BIEBER

Registrant.

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REPLY
PETITIONER, herein represented by his Attorney-in-fact,
ATTY. ROLAN VINCENT TAN, thru the undersigned Counsel, unto this
Honorable Court, most respectfully submits this Reply to Registrant’s Answer,
thus avers that:
1. Paragraphs 1 and 2 are hereby admitted;

2. Contrary to the allegations of herein Registrant under

Paragraph 3 of their Position Paper, the mark cannot be
registered, as provided under Sec. 123.1 (d) of Republic
Act 8293, if it is identical with a registered mark belonging
to a different proprietor or a mark 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. Petitioner registered the same mark under Class
9, specifically for recording, pressing, dubbing, processing
or otherwise dealing in phonographic and sound records in
any form whatsoever and by any means of sound recording,
electronic equipment devices; Class 35 for producing,
reproducing, buying and selling at wholesale said sound
recordings and the component materials thereof; Class 40
for manufacturing said sound recordings and the
components and materials thereof; and Class 41 for
entertainment services in the nature of live musical
performances. Therefore, the mark cannot be registered
because it is identical with a registered mark belonging to
 Petitioner with the same goods or services with that of
Registrant;

3. Under Paragraph 4, Registrant avers that the “Mark” is by

nature a telescoped mark. This petitioner admits to be true.
However, as discussed in the preceding paragraph,
considering the “Mark” similarly resembles a previously
registered mark belonging to the exact same industry, the
mark herein applied for registration should be cancelled as
it is likely to deceive or cause confusion; thereby, the mark
by herein registrant is void;

4. Paragraph 5 is hereby admitted;

5. Paragraph 6 is misplaced. For a telescoped mark to be

considered unitary and registrable, the said mark must
create a commercial impression independent of any
unregistrable element of the mark. However, not all unitary
marks can be registered. The entirety of the mark must be
over and above the unregistrable portion that will allow for
registration. As discussed in paragraph 3, the “Mark” being
void is not registrable as a whole, therefore, Registrant
cannot be allowed to register.

6. Assuming arguendo that the allegations of Registrant under

Paragraph 7 is correct and that the word R&B may be
disclaimed, this cannot hold water because said mark is
identical with a registered mark belonging to Petitioner
with the same goods or services and therefore cannot be
registered;

7. Assuming arguendo that the allegations of Registrant under

Paragraph 8 are correct, the mark can still not be registered
because the same mark is already registered as Petitioner’s
mark with the Registration No. 12,003,2000. It is a well-
settled rule that a certificate of registration of a mark shall
be prima facie evidence of the validity of the registration,
the registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in connection
with the goods or services and those that are related thereto
specified in the certificate;

8. Likewise, the allegations of Registrant under Paragraph 9

are misplaced, because the issue at hand is whether the
mark being applied for by the Registrant be allowed for not
running afoul with any prohibitions provided by law. Here,
the Registrant avers that the trademark “R&Bieber” is an
arbitrary mark which is a mark that bears no logical relation
to the actual characteristics of the products it represents.
Petitioner is of the position that it is not whether the mark
refers to a particular person or not, but whether the applied
mark does not go in contrary with another mark which has
been priorly registered, thereby giving rise to deceitful
confusion. Clearly, the mark of the registrant belongs to the
exact same goods or services, is likewise closely related to
the goods and services, and more importantly nearly
resembles the mark of the petitioner, thus providing an
avenue for confusion;
 WHEREFORE, premises considered, it is hereby respectfully prayed
that the foregoing Reply to Registrant’s Answer be given due credence and
consideration and the reliefs prayed for in the Petition for Cancellation of
Trademark Registration be granted.
Finally, Petitioner respectfully prays for such and other reliefs as may
be deemed just and equitable under the premises.
December 9, 2020, Cebu City Philippines

Counsel for the Petitioner