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    IPOPHIL BLA Decision

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    IPOPHIL BLA Decision

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    71 views10 pages

    Exxon Mobil Corp. v. Lexton Commercial Marketing

    Uploaded by

    Roxanne C.
    IPOPHIL BLA Decision

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    © All Rights Reserved
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    lomeuecTuat PxorERTY OFFICE OFTHE FHIUPPINES EXXON MOBIL CORPORATION, > IPC No. 14-2018-00597 Opposer, } Opposition to: } Appin, No. 4-2018-002888 } Date Filed: 14 February 2018 3 TM: MOBIL ) versus- J } } LEXTON COMMERCIAL } MARKETING CORPORATION, } Respondent-Applicant. } ee x NOTICE OF DECISION ‘CASTILLO LAMAN TAN PANTALEON & SAN JOSE Counsel for Opposer 2, 3%, 4%, 5° & 9” Floors, The Valero Tower 122 Valero Street, Salcedo Village Makati City LEXTON COMMERCIAL MARKETING CORPORATION, Respondent-Applicant 280 9" comer 8" Avenue Gracepark, Caloocan City | \ | GREETINGS: | Please be informed that Decision No. 2020- $4 dated 20 July 2020 (copy enclosed) was promulgated in the above entitled case. Pursuant to Section 2, Rule § 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, * August 2020. Atty, Oiiaed A. ISABEDRA ¢ | IPRS IV, Bureau of Legal Affai = ne | ght Ree Sud a vensionssts / pul © maigineo Lear eReT © +€32.2386300xqmid st Fatt ee bs 12 -602250040 Era, BEARER rs EXXON MOBIL CORPORATION, IPC No. 14-201! Opposer, Opposition to: -versus- Appln. Serial No. 4-2018-002888 ' Date Filed: 14 February 2018 LEXTON COMMERCIAL | TM: MOBIL MARKETING CORPORATION Respondent-Applicant. Decision No. 2020-_84 DECISION EXXON MOBIL CORPORATION ? ("Opposer”) filed an opposition to Trademark Application Serial No. 4-2018-002888. The application, filed by LEXTON COMMERCIAL MARKETING CORPORATION? (“Respondent-Applicant”), covers the mark “MOBIL” for use on “millstones, grindstones, grinding wheels and the like, without frameworks, for grinding, sharpening, polishing, trueing or cutting hand sharpening or polishing stones, and parts; interchangeable tools for hand tools, whether or not power operated or for machine tools.” under Class 7 and “hand tools namely spades, shovels, mattocks, picks, hoes, forks and rakes; axes, vill hooks and similar hewwing tools} secateurs and pruners of any kind; hand saws; blades for saws of all kinds; files, rasps, pliers, pinbers, hueezers, metal cutting shears, pipe cutters, bolt croppers, perforating punches and similat hand tools; hand-operated spanners and wrenches; hand tools, blow lamps, vices, clamps and the like” under Class 8 of the International Classification of Goods*. ‘The Opposer alleges the following grounds for opposition: “1. Respondent's MOBIL mark is identical and confusingly similar, to Exxon Mobil’s internationally well-known MOBIL word mark and MOBIL Device mark, as well as other MOBIL derivative marks, such that the public will be misled into believing that Respondent's business is in some way connected with or related to the Opposer’s business, “TI. Respondent’s use of an identical and confusingly similar mark dilutes, defames or otherwise blurs the distinctiveness of Exxon Mobil’s internationally well-known MOBIL mark.” Opposer’s submitted the following documentary evidence to support the ‘opposition: ‘Acomorgn nana an exiting und te he ind Ste of Ameri, ‘nd exeing under the laws ofthe Philippines located ir Caloocan City. ‘the World Intellectual Propeny ion. The treaty is a ie Nice Agreemgit’ cc 8 wwewig. i © vaiag rativetttiggni Eben Gorter Hi i £ i £ i 7 é i : i z CS cecobabety of Legge . Legalized and authenticated Special Power of Attorney; . Printouts of webpage relating to the history of Exxon Mobil company ; }. Compilation of relevant webpages containing trademark registrations of Opposer in other countries ; 4, Copy of Certificate of Renewal of Registration No. 4-2005-011959; . Copy of “A Brief History of Mobil”; . Printout of webpages relating to recognition of Exxon Mobil as among the top 500 global brands and articles about Exxon Mobil; 7. Acompilation of worldwide advertisements for the MOBIL mark; 8. Printout of webpage showing Opposer’s worldwide operations; 9, Photographs of Opposer’s products using the MOBIL marks; 10, Representative invoices for various Exxon products; 11. Printout of relevant pages of Opposer’s website and the website for the MOBIL. brand at hitps://www.mobilcom and https://www-mobiloilcom/en and ‘mobill.coi 2. Per of the YouTube Channel and social media accounts of ExxonMobil; 13. List of trademark registrations for the mark MOBIL. in other countries; 14. Copies of trademark registrations and renewals for the mark MOBIL issued in various jurisdiction; 15. Copy of decisions rendered in various jurisdiction relating to cases involving trademark protection of MOBIL mark; 16. Printout of the summary of net sales in the Philippines of MOBIL merchandise from 2005-2017; 17, Printouts of registration details and pending applications of Opposer’s MOBIL and aie derivative marks in the ‘Philippines from hi 10.int/ branddb/ ph/en; 18. Judicial "Alfidavit of Atty, Sarah Buyco; and 19. Legalized and authenticated Judicial Affidavit of Ms. Melody Schottle. i 2 3. 5. 6. On 14 February 2019, this Bureau issued a Notice to Answer (NTA) and served it on to Respondent-Applicant on 08 July 2019, However, despite the receipt of the NTA, Respondent-Applicant failed to file the answer within the reglementary period ‘Consequently, Respondent-Applicant was declared in default on 12 November 2019. The sole issue to be resolved in this case is whether Respondent-Applicant’s MOBIL mark is confusingly similar to Opposer’s MOBIL mark as to deny the registration. Section 134 of Republic Act No. 829, also known as the Intellectual Property Code of the Philippines (IP Code), as amended, provides the remedy of opposition against an application for registration of a trademark which may cause damage to the interest of third persons. It provides: Section 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within oo, days after the publication referred to in Subsection 133.2, file with et ‘opposition to the application. Apres TR te ss eb ¢? & & f Sw Urea Adminfstrative Officer HI Burelts of Legal Affairs Itis an established fact that Opposer is the registered owner of the mark MOBIL. It was first registered on 16 July 2006 under Trademark Registration No. 42002006942. The said registration has been renewed and is still valid and existing to this date. Opposer has other registration for its MOBIL mark for various classes of goods. Registration for its MOBIL derivative marks has also been granted. As such, the certificates of registration issued to Opposer serves as prima facie evidence of the ownership of the mark, and the exclusive right of Opposer to use it in connection with the goods or services specified in the certificate and those that are related thereto. Also, as a registered owner of a mark, it is conferred exclusive rights pursuant to Section 147 of the IP Code: Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. 147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use. The right to register a trademark is based on ownership, Only the owner of the mark may apply for its registration5. Where a trademark application is opposed, the Respondent-Applicant has the burden of proving ownership $ Section 123.1 paragraph (d) of the IP Code, as amended, provides for the proscription on registrability of a mark: Section 123.Registrability. - 123.1. A mark cannot be registered if it: xx (@) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: J. The same goods or services, o losely related goods or services, or If it nearly resembles such a mark as to be likely to deceive or ‘cause confusion; can stn n Em og «Ace of gn or al ein eel vty oe stats ce ue on cs Sate i Se ect Eo hove hat are raed hereto specified inthe certfcte EIR. aetna Decor of Pact ca Rh L201, Ang 16S HP stBeqgan * Marvex Commercial Co, ine. Pete Hawpia and Co, 18 SCRA 1178 a a Diodes 3 ‘SHARG] TARA Adminiftrative OMcer IT Bureals of Legat Affairs ‘The proscription is very implicit that whenever a mark subject of an application for registration, resembles another mark, which has been registered or has an earlier filing ot priority date, said mark cannot be registered when such registration will likely cause confusion. In Societe des Produits Nestle S.A. et. Al. v. Court of Appeals, et. Al’, the Court stated: A trademark has been generally defined as "any word, name, symbol or device adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured and sold by others.” ‘A manufacturer’s trademark is entitled to protection. As Mr. Justice Frankfurter observed in the case of Mishawaka Mfg. Co. v. Kresge Co.: The protection of trade-marks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means employed, the aim is the same to convey through the mark, in the minds of potential customers, the desirability of the ‘commodity upon which it appears. Once this is attained, the trade-mark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the ‘owner can obtain legal redress. Thus, the law prescribes a more stringent standard in determining registrability of mark, that is, that there should not only be confusing similarity but that it should not likely cause confusion or mistake or deceive purchasers.* Similarity does not mean absolute identity of marks. To be regarded as similar to an earlier mark, it is enough that a prospective mark be a colorable imitation of the former. Colorable imitation denotes such likeness in form, content, words, sound, meaning, special arrangement or general appearance of one mark with respect to another as would likely mislead an average buyer in the ordinary course of purchase? In Emerald Garment Manufacturing Corporation v. Court of Appeals, the Court held: Proceeding to the task at hand, the essential clement of infringement is colorable imitation. This term has been defined as "such 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. Colorable imitation does not mean such similitude as amounts to identity. Nor 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 ee 1 Supra re : * Mang inal Philippines, Inv FP Manufacturing Corporation, G.R No. 221717, 19 Jane 2017, citing snerald Garment MaghcTER yy Court Of ‘Appeals, G.R. No, 100098, December 28,1995, 5 1SCRAGOO and Click v. Manila Candy Company, 36 Phi 10 ON eo GR No, 109088, December 29, 1995, 251 SCRA 600, citing Etephav.Dietor of Patents, 16 SCRA 495 (865). @ cA, : Sra TARA pemippstrative Officer IIL sof Legal Affairs appearance of the trademark or trade name with that of the other mark or trade name in their over-all presentation of in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article In deciding whether a mark is similar or dissimilar to another mark, the practical approach is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of the prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed. Some such factors as "sound; appearance; form, style, shape, size or format; color; ideas connoted by marks; the meaning, spelling and pronunciation, of words used; and the setting in which the words appear" may be considered. In Skechers U.S.A. Inc. v. InterPacific Industrial Trading Corp.2, the Court mentioned: ‘The essential element of infringement under R.A. No, 8293 is that the infringing mark is likely to cause confusion. In determining similarity and likelihood of confusion, Jurisprudence has developed tests: the Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the prevalent or dominant features of the ‘competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required that the ‘mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments. In contrast, the Holistic or Totality Test necessitates a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly similar to the other. Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2) types of confusion, viz: (1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he ‘was purchasing the other; and (2) confusion of business (source or origin confusion), where, although the goods of the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, though inexistent. In McDonald’s Corporation Et. Al. v. L.C. Big Mak Burger, Inc.¥3, the Court held: ‘The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar. Under the dominancy test, courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disre; minor differences. Courts will consider more the aural and visual imy "GR No. L-20635,31 March 1966 "GR. No. 164321, March 23,2011 GR No. 143995. August (8, 2004 ‘Aciminisfrative Officer IL bureau’ of Legal AMalrS, created by the marks in the public mind, giving little weight to factors like prices, quality, sales outlets and market segments. Thus, in the 1954 case of Co Tiong Sa v. Director of Patents, the Court ruled: Ithas been consistently held that the question of infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. (G. Heilman Brewing Co. vs. independent Brewing Co, 191 F,, 489, 495, citing Eagle White Lead Co. vs. Pilugh (CC) 180 Fed. 579). ‘The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code, which defines infringement as the “colorable imitation of a registered mark. . . or a dominant feature thereof.” Taking from this cue, the images of the marks of the Oppaser and the Respondent- Applicant lifted from IPOPHL’s Trademark Database are reproduced below for Mobil Mobil Opposer's Marks Respondent-Applicant's Mark Instantaneously, it can be readily seen that the marks are virtually identical. They are both word marks that appeal to the visual sense. The observation of the Opposer is correct when it pointed out: “60, Respondent's MOBIL mark consists of the word “mobil” which is identical to Exxon Mobil’s “Mobil” word mark and trade name. The fact that itis stylized to appear as MoBit. does not eliminate the infringing character. Respondent may not claim that its ‘competing mark and Exxon Mobil’s differ in presentation or style. There are simply no presentations or styles to speak of in word marks. “61. Even in its stylized form, Respondent's MOBIL mark is viualy eR co I to Exxon Mobil’s MOM mark. The competing marks consists of the se vay eGo word “Mobil”, and letters using sans serif font with a different shade or met te ree

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