say Ain FaUIBIEOL | wh Sa joe Lay Firm A Ss RBISUA ote, i Rt OCT 07 2020 Meryeaarr yh U J. CHOO LIMITEL } IPC No. 14-2018-00458 Opposer, } Opposition to: } Appin. No. 4-2018-005211 } Date Filed: 11 April 2018 } ‘TM: GHOO SAINT } ~versus- } } } GUANGZHOU SHENGTONG } ‘TRADE CO. LIMITED, } Respondent-Applicant. } ne NOTICE OF DECISION CASTILLO LAMAN TAN PANTALEON & SAN JOSE Counsel for Oppaser 2%, 3%, 4", 5 & 9" Floors, The Valero Tower 122 Valero Street, Salcedo Village Makati City HECHANOVA AND CO., INC. Representative of Respondent-Applicant Ground Floor, Salustiana D. Ty Tower 104 Paseo de Roxas Avenue Makati City GREETINGS: i | Please be informed that Decision No. 2020 - {96 dated 07 August 2020 (copy | enclosed) was promulgated in the above entitled case. Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of 2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees. Taguig City, 24 August 2020. Whiea Aedrn +. Atty. MARIANNE A ISABEDRAg' TR y, IPRS IV, Bureau of Legal Aa 4. SED © vernpostagonye © rraieipopntcowey © +352-2380000 a +692-5590400UF em gomusoua torte ATI eee bya ctr J. CHOO LIMITED, IPC NO, 14 - 2018 — 00458 Opposers, He Opposition to: - versus * ‘Trademark Application No. 42018006211 GUANGZHOU SHENGTONG TRADE CO. LIMITED, TM: “CHOO SAINT” Respondent-Applicant. x DECISION NO. 2020 -_(26_ DECISION J. CHOO LIMITED (pposer)! filed an Opposition to the Trademark Application Serial No. 4-2018-006211. The trademark application filed by GUANGZHOU SHENGTONG TRADE CO. LIMITED (Respondent-Applicant),? covers the mark “CHOO SAINT” for use on “leather unworked or semi-worked, Pocket wallets, bags, School bags, Backpacks, Handbags, Travelling trunks, Umbrellas, Clothing for pets, Vanity cases, not fitted: Clothing, Lafayettes [clothing], Swimsuits, footwear, Hats, Hosiery, Gloveslelothingl, Shawls, Girdles, Wedding dresses; Advertising for others, presentation of goods on communication media, for retail purposes, commercial administration of the licensing of the goods and services of others, on-line advertising for others on a computer network, import-export agency services, marketing, personal management consultancy, provision of an on-line marketplace for buyers and sellers of goods and services, ‘Systemization of information into computer databases, Accounting” under Classes 18, 25 and 35 of the Nice International Classification of Goods*. ‘The Opposer based their Opposition on the following grounds: 1. Respondent's “CHOO SAINT’ mark is identical or at the very least, confusingly similar, to the registered and internationally well-known “JIMMY CHOO” and “CHOO” marks owned by Jimmy Choo; 2 Company organized under the laws of England and Wales, UK with address located in London, U 2 A corporation with address located in Guangzhou, China 3 The Nice Classification of Goods and Services is for registering trademarks and service marks. ‘multilateral treaty administered by the WIPO, called the Nice Agreement Concerning the Inten CCassification of Goods and Services for Registration of Marks concluded in 1957. bs wcscrtaoh * @ red aA © maiginopiloats” "(28 Uber} © e6s2-z206000 =! oh sf vosz-sssoue0 ‘eu2. Respondent's use of an identical, or at the very least confusingly similar mark dilutes, defames, or otherwise blurs the distinctiveness of Jimmy Choo’s internationally well-known “JIMMY CHOO” and “CHOO” marks; and 3. Respondent’s use of a mark similar to Jimmy Choo’s famous and distinctive mark dilutes, defames or otherwise blurs the distinctiveness of such marks. The Opposer further alleges that Jimmy Choo has been in existence since 1996 and traces its roots to a Malaysian shoemaker based in the east end of London named Mr. Jimmy Choo. Jimmy Choo Company started with ready to wear luxury ladies’ footwear business and expanded to hand bags, clutch bags, small leather goods such as wallets, purses, key holders, cosmetic bags, flat shoes, boots for leisure and outdoor wear, women sunglasses, scarves, jewelries, men’s footwear, men’s bags, men’s small leather goods, porfume and body lotion. The Opposer claims that overtime, “JIMMY CHOO” has frequently referred to colloquially as ‘CHOO.” Opposer has also launched 24/7 “CHOO” collection for shoes and boots in 2010, CHOO.08 collection of ladies footwear and bags in 2014, and PICK & CHOOS collection for jeweled accessories to decorate footwear and bags in 2017. According to the Opposer, retail development has been integral to its business strategy thereby launching flagship stores in at least 45 countries and territories including the Philippines. In 2011, Jimmy Choo's wholesale channel grew from 457 locations to 504 multi-brand wholesale locations as of June 2014. In 2014, Jimmy Choo’s retail channel has 120 directly-operated stores located in various prestigious locations and 47 franchise stores. This expanded to 150 directly operated shops and more than 60 franchised shops in 2016. Opposer also claims international reputation for luxurious fashion as shown by celebrities and fashion icons wearing its shoe collections, numerous articles featuring Jimmy Choo brand, international award recognitions and the brand appearances in films and televisions. Opposer also maintains worldwide trademark registrations for its “JIMMY CHOO” mark in various goods and services, including Classes 3, 9, 14, 18 and 25 of the Nice International Classification. To support its Opposition, the Opposer submitted the following: Exhibit “A” - Printout of Opposer’s website profile: Exhibit “B” - Power of Attorney; Exhibit “C” - Printout Jimmy Choo Company's trademark information; Exhibit “D” ~ Printout of Jimmy Choo’s website store finder page showing Manila store in the Philippine map; Exhibit “E” to “E-5” ~ Printout of articles on Jimmy Choo partnership with H&M, uae Australia, Carrera, Rafael Mantesso, Etihad Airway gir exhibit “F— Printout of Article on Jimmy Choo partnership in hosting oo ise BAFTA After party } Exhibit “G” — Printout of article Jimmy Choo: The world’s most valuadi “ SHAR ez Admiqistrative OMficer 1] Burdau of eyo"shoemaker: Exhibit “H” to “H-1” - Copy of Deed of Assignment of Trademark between MR «.Y.K. CHOO and J CHOO (Jersey) Limited and request for Recordal of Assignment of Mark Exhibit “?’ to “I-19” ~ Printout of articles and photos on Jimmy Choo brand: Exhibit “J” to “J-1” — Printout of quotes form the movie The Devil Wears Prada and article on Jimmy Choo used in Korean Soap Opera; Exhibit “K” to “K-6" ~ Printout of social media webpages of Jimmy Choo Company: Exhibit “L’ - “L-12” - Printout of local articles on Jimmy Choo ; Exhibit “M” to “M-11” and “N” - CD and printout copies of the trademark registrations owned by Jimmy Choo: Exhibit “O” — Copy of an EU trademark decision favoring Jimmy Choo; Exhibit “P” - Copy of an IPOPHL decision favoring Jimmy Choo; Exhibit “Q” - Copy of IPOPHL's final disposition granting trademark protection to Jimmy Choo trademark; and Exhibit “R” - Judicial Affidavit of Me. Hannah Lucy Vietoria Merritt. ‘This Bureau served a Notice to Answer dated 13 Decomber 2018 to the Respondent-Applicant on 21 December 2018. However, the Respondent Applicant did not file an Answer to the Opposition. In view of the failure to file an Answer, an Order dated 12 April 2019 was issued declaring the Respondent-Applicant in default. Consequently, this case was deemed submitted for decision. ‘The issue in this case is whether to allow the registration of Respondent’ Applicant's “CHOO SAINT” trademark. At the onset, records show that when the Respondent-Applicant file the herein trademark application, Opposer has already a prior and existing trademark registrations for the trademarks “CHOO” and “JIMMY CHOO” for the various goods covered by Nice Classes 3, 9, 14, 18, 25, and 35, which among others include: goods made of leather and imitations of leather, handbags, purses, wallet, clothing, footwear, headgear, scarves, gloves, hats, hosiery, sashes and wedding dresses. Under Section. 123.1 (4) of the Intellectual Property Code (IP Code), it provides that a mark cannot be registered 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: the same goods or services, or closely related goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion. The question now is are the contending trademarks similar such that confusion or deception on the part of the consumers are likely to occur? The relevant trademarks of the contending parties are reproduced below for examination. aa oy see an “ Hondo imirfistrative Office uot Lenn! AttalrsCHOW jimmy cHOO CHOO SAINT Opposer's Trademark Respondent's ~ Applicant's ‘Trademark A perusal of the above trademarks shows that one of the registered trademark of the Opposer, namely the wordmark “CHOO”, can be found on the Respondent-Applicant's trademark. While it is true that the Respondent- Applicant’s trademark has an additional word “SAINT” included in its trademark, it does not provide enough distinctive feature and differentiation from the trademarks of the Opposer. The word “CHOO” remains to be the most prevalent element on the Respondent-Applicant trademark and gives the same commercial impression on the consuming public, especially that the Opposer has other permutations of its trademarks with the word “CHOO.” Thus, the minor variation on the Respondent-Applicant’s trademark does not make the mark distinctive vis- a-vis the different trademarks of the Opposer. Our Intellectual Property law does not require that the competing trademarks must be so identical as to produce actual error or mistake. It would be sufficient, for purposes of the Jaw that the similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it.5 Our law also does not require actual confusion, it being sufficient that confusion is likely to occur. Moreover, since the competing trademarks are applied to similar, competing and/or closely related products or services, there is clearly high probability that the buyers may be confused or deceived between the Respondent Applicant's and the Opposer’s products or services. The public may also be mistaken in believing that the competing brands are related or connected with each other, like in a sponsorship or licensing agreement. Verily, the choices from which a person may select a trademark is practically unlimited. As in all other cases of colorable imitation, the unanswered riddle is why, of the millions of terms and combination of design available, the Respondent-Applicant had to come up with a mark identical or so closely similar “TM Registration 4-2010-00001562; TM Registration 1247526; TM Registration 1325017; TM Registration 1286957; TM Registration 1291240; TM Registration 125725; and TM Registrat 411257825. 5 American Wire & Cable Co. vs. Director of Patents, etal, G.R. No. L-26557, February 18.) «Philips Export BV. et. al. vs. Court of Appeals, et.al, G.R No. 96161, February 22,1992 4s RA -emninpstative 0to another's mark if there was no intent to take advantage of the goodwill generated by the other mark.” WHEREFORE, premises considered, the instant Opposition to Trademark Application Serial No. 42018006211 is hereby SUSTAINED. Let the filewrapper of Trademark Application Serial No. 42018006211 be returned together with a copy of this DECISION to the Bureau of Trademarks (BOT) for appropriate action. SOORDERED. = Taguig City, OT AUG 2028 Adjudication Officer Bureau of Legal Affairs So uu 7 American Wire & Cable Company vs. Dir. Of Patent, G.R. No. L-26557, February 18, 1970. - snaked ae Adminigtrative Officer Iii Bure of eget Aan 5