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INTELLECTUAL PROPERTY
PHILIPPINES
OFFICE OF THE DIRECTOR GENERAL

PAGODA PHILIPPINES, INC., Appeal No. 14-06-29

Appellee,
Inter Partes Case No. 14-2005-00048
-versus- Application Serial No. 4-2002-010764
Date Filed: 17 December 2002
UNIVERSAL CANNING, INC. Goods: mineral water and fruit juices
C/O ANITA L. KAW,
Appellant. Trademark: FAMILY'S BRAND
x----------------------------------------------x

PAGODA PHILIPPINES, INC., Appeal No. 14-06-30

Appellee,
Inter Partes Case No. 14-2005-00119
-versus- Application Serial No. 4-2002-010765
Date Filed: 17 December 2002
UNIVERSAL CANNING, INC. Goods: green peas
C/OANITAL. KAW,
Appellant. Trademark: FAMILY'S BRAND
x----------------------------------------------x

DECISION

The UNIVERSAL CANNING, INC. C/O ANITA L. KAW ("Appellant") appeals

Decision No. 2006-86 in Inter Partes Case No. 14-2005-00048\ and Decision No. 2006-87 2
in Inter Partes Case No. 14-2005-00119, of the Director of the Bureau of Legal Affairs
("Director"). The Director sustained the oppositions flied by PAGODA PHILIPPINES,
INC. ("Appellee") to the Appellant's applications for the registration of the trademark
"FAMILY'S BRAND".

Although the Appellant flied two separate appeals, this Office shall resolve them
together due to the identity of the parties and of the factual and legal issues involved.

Records show that the Appellant flied on 17 December 2002 two (2) applications for
the registration of the mark FAMILY'S BRAND: Application Serial No. 4-2002-0010764
for mineral water and fruit juices, and Application Serial No. 4-2002-0010765 for green
peas.' After the applications' publication in the Intellectual Property Office e-Gazette", the
Appellee flied two separate opposition cases, anchored on common grounds, to wits:

1. The Appellant's trademark is identical and/or confusingly similar to the

Appellee's trademark FAMILY and derivatives thereof;

1 Dated 30 Aug. 2006.

2 Dated 31 Aug. 2006.
3 "Brand" is disclaimed.
417 Feb. 2005 and 28 July 2005
518 Apr. 2005 and 05 Oct. 2005.
Republic of the Philippines
INTELLECTUAL PROPERTY OFFICE
351 Sen. Gil Puyat Ave., Makati City 1200 Philippines • www.ipophil.gov.ph Ffo:L
Telephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ijjlAA'ffir.'b8yj~wl
-'Page ~oi'rr
 2. The approval of the Appellant's application is contrary to Sec. 123.1,
paragraphs (d) and (f) of Rep. Act No. 8293 (Intellectual Property Code or
"IP Code", for brevity), violates the Appellee's right to the exclusive use of its
registered trademark and the extension of the use thereof to other goods, and
will cause great and irreparable damage and injury to the Appellee;

3. The Appellant is not entided to register its trademark;

4. The Appellee has not abandoned the use of its trademark and continues to
use it up to the present for varied goods including food products and bottled
water;

5. The Appellee has spent a substantial amount of money to popularize and

promote its products with the trademark FAMILY and derivatives thereof;

6. Through the Appellee's extensive advertising and promotional campaigns and

its high quality products bearing its trademark and derivaties, the marks have
become distinctive of the Appellee's products, established valuable goodwill
in its favor and its slogan "HINDI LANG PAMPAMILYA PANG SPORTS
PA" has become a household byword;

7. The trademark "FAMILY & REPRESENTATION OF A RIBBON" was

first registered in favor of the Appellee's predecessor-in-interest on 13 April
1981 under Reg. Cert, No. 29065;6

8. The Appellee had obtained the following registrations:

8.1. No. 51745 (FAMILY & REPRESENTATION), issued on 5

November 1991;7

8.2. No. 65188 (FAMILY), issued on 02 September 1997;8

8.3. No. 4-1994-96831 (FAMILY & REPRESENTATION OF A

FAMILY), issued on 12 July 2000;9

8.4. No. 4-2000-02713 (FAMILY VITAGEL), issued on 20 January

2003;10

8.5. No. 4-1993-085710 (FAMILY), issued on 08 July 2004;11 and

8.6. No. 4-1992-080068 (FAMILY), issued on 30 October 2004. 12

6 Used on rubbing alcohol. Deemed cancelled for non-payment of affidavit of use for the 5th anniversary.
7 Used on rubbing alcohol.
8 Used on toothpaste.
9 Used on absorbent cotton.
10 Used on hand sanitizer.
11 U sed on liquid detergents.
12 U sed on mosquito coils an insecticides.

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 9. The Appellee has the following applications for registrations of the trademark
FAMILY and derivatives thereof:

9.1. No. 4-1999-09740 (FAMILY), filed on 17 December 1999;13

9.2. No. 4-2000-02712 (FAMILY ALOEGEL), filed on OS April

2000;14

9.3. No. 4-2000-02714 (FAMILY ALCOGEL), filed on OS April

2000;15

9.4. No. 4-2004-004128 (FAMILY ALCOLOGNE), filed on 07 May

2004.16

The Appellant alleged in its defense the following 1?:

1. The approval of the Appellant's trademark does not contravene Sec. 123.1 (d)
and (f) of the IP Code;

2. The Appellee does not have exclusive right to use the trademark FAMILY on
food products under Classes 31 and 32;

3. The Appellee is not authorized by its Articles of Incorporation to

manufacture food products;

4. The Appellee does not even pretend to have ventured into the production of
goods under Classes 31 and 32;

S. No damage will be sustained by the Appellee;

6. The Appellant is entided to the registration of its FAMILY'S trademark for

use under Classes 31 and 32;

7. The Appellant is the first to apply for registration for its FAMILY'S
trademark for use on food products;

8. The Appellee has only filed its trademark application for use of its supposed
FAMILY trademark on food products subsequent to that filed by the
Appellant; and

13 Used on tbidiaron, nuts, pop corn, cheese curls, candies, chocolate bars, jellies, powdered fruit &
chocolate juices, canned goods such as sardines, mackerel, corned beef, green peas, milk, fruit juices,
chocolate, fruit cocktail, etc.
14 Used on hand sanitizer.
15 Used on hand sanitizer.
16 Use on alcohol with cologne; alcohol with cologne and baby oil; alcohol with cologne and aloe vera;
alcohol with cologne and gel; alcohol with cologne, vitamins and gel.
17 The answer to the opposition in InterPartes Case No. 14-2005-00048 was ftIed on 06 Jan. 2006 while the
answer to the opposition in InterPartes Case No. 14-2005-00119 was filed on 16 Jan. 2006.

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 9. The Appellant has actually used the trademark FAMILY'S on mineral water,
green peas and garbanzos.

After appropriate proceedings, the Director rendered the assailed decisions. The
Director held that the competing marks are the same, the word FAMILY being the
dominant feature of both marks, resulting in confusing similarity as the parties are engaged
in the same line of business. She also ruled that the Appellee is the first filer of an
application for the registration of the mark FAMILY for goods belonging to the same
classes of goods as those applied for by the Appellant.

The Appellant filed its motions for reconsideratiorr" which were denied by the
Director." Not satisfied, the Appellant filed the instant appeals alleging that the Director
erred in rejecting its trademark application by assuming that the Appellee's supposed earlier
Trademark Application Serial No. 4-1999-09740 would be allowed despite the following
fatal defects:

1. The Appellant has two earlier Trademark Application Nos. 4-1998-09114 and
8722820 that prevents the allowance of the Appellee's application;

2. The Appellee failed to file the Declaration of Actual Use (DAU) for its goods
falling under Classes 31 and 32 required under Rule 204 of the Trademark
Regulations;

3. It is too late to file evidence of actual use for the Appellee's goods falling
under Classes 31 and 32; and

4. It is too late to divide the Appellee's application to allow it for goods under
Classes 31 and 32 separately from the goods under Class 29 against which
Appellant has two earlier trademark applications."

Commenting on the appeals'", the Appellee claims that these are clearly without
merit. It contends that the question on whether the DAU it flied was sufficient or defective
was never at issue in the opposition cases.

A scrutiny of the instant appeals shows that the Appellant is not questioning the
finding of the Director on the confusing similarity between the competing trademarks.

1K The Appellant flied the Motion for Reconsideration and Supplemental Motion for Reconsideration on
the Decision No. 2006-86 on 22 and 27 Sep. 2006, respectively. The Appellant also flied a Motion for
Reconsideration and Supplemental Motion for Reconsideration of the Decision No. 2006-87 on 22 and 27
Sep.2006,respectively.
19ResolutionNo. 2006-17 (D) in InterPartes Case No. 14-2005-00048 and Resolution No. 2006-18(D) 2006
in InterPartes Case No. 14-2005-000119.
2°Trademark Application Serial No. 14-1999-09740 was flied on 15 Dec. 1998 for use on canned sardines
and is now subject of an opposition case in Inter Partes Case No. 14-2003-00060 while Trademark
Application Serial No. 4-1993-87228 was flied on 03 Aug. 1993 for use on canned goods and is now
subject of an opposition case in InterPartes Case No. 14-1999-00059.
21 See APPEAL MEMORANDUM (for the Decision dated 30 Aug. 2006), pp. 7-8.
22 The Appellee flied its "COMMENT" in Appeal No. 14-06-29 and Appeal No. 14-06-30 on 14 Feb. and
16 Feb. 2007, respectively.

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Neither does the Appellant dispute that the Appellee has a pending application (Serial No.
4-1999-09740) filed on 19 December 1999 for the registration of the mark FAMILY for use
on fruit juices and green peas - the same goods covered by the opposed applications.
Instead, the Appellant claims that the Director allegedly erred in disregarding the fatal
defects of the Appellee's Trademark Application No. 4-1999-09740 and in using it to sustain
the opposition to its applications.

In resolving these appeals, this Office revtsits the raison d'etre underlying the
trademark registration system. The essence of trademark registration is to give protection to
the owners of trademarks. 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."

Accordingly, the issue to be resolved is whether or not the registration of the

Appellant's trademark for use on mineral water, fruit juices, and green peas is in accord with
the purpose of the trademark registration system. To determine this, the Appellant's
applications have to be measured against the pertinent provisions of the IP Code,
specifically, Sec. 123.1 (d) which provides:

"SEC. 123. Registrability.- 123.1. A mark cannot be registered if it:

xxx
(d) 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;

Thus, a mark cannot be registered if it is identical or nearly resembles a mark

covered by a trademark application with an earlier filing or priority date in respect of the
same goods or services or closely related goods or services. Significantly, the law does not
require that the application with an earlier filing or priority date must, later on, prosper or be
allowed.

In this instance, the Appellant did not dispute the findings of the Director that its
trademark applied for registration is identical or closely resembling the Appellee's. Its is also
a fact that the goods covered by the Appellant's trademark applications and the goods
covered by the Appellee's Trademark Application Serial No. 4-1999-09740 are identical or
similar.

Accordingly, since Trademark Application Serial No. 4-1999-09740 was filed ahead
of the Appellant's applications, and therefore, with an earlier priority date, the Appellant's
applications cannot prosper.

23 See Pbnbbdas J. Mirpuri Y. CA, G.R. No. 114508, 19 Nov. 1999, citing Etepha Y. Director of Patents, 16 SCRA
495 (1966), Gabriel Y. Peter, 55 SCRA 406 (1974).

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 The Appellant's claim that Trademark Application Serial No. 4-1999-09740 suffers
from fatal defects is an issue that is beyond the ambit of these proceedings. It must be
stressed that it is the Appellant's trademark applications that are the subjects of these cases,
not the Appellee's trademark application. Moreover, Trademark Application Serial No. 4-
1999-09740 is still pending examination in the Bureau of Trademarks, seven (7) years after it
was filed, and thus, is still within the jurisdiction of the Trademark Examiner concerned and
the Director of the Bureau of Trademarks.i" As correctly pointed out by the Director in her
Resolution No. 2006-18(D):

"Finally, considering that the trademark application of Opposer is not the subject matter
of the instant opposition proceeding, its merit cannot be determined in this case. However, if
Respondent-Applicant believes that it will be prejudiced by the registration of the said application,
it may file an opposition thereto or a petition for cancellation if it is already registered."25

Wherefore, premises considered, Appeal No. 14-06-29 and Appeal No. 14-06-30 are
hereby DISMISSED. Accordingly, the appealed decisions are hereby AFFIRMED.

Let a copy of this Decision as well as the trademark applications and the 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 and 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.

SO ORDERED.

SEP 1 7 2007 , Makati City.

24 "RULE 600. Application prosecuted ex parte; Protests.-An application for registration is prosecuted ex parte by
the applicant; that is, the proceedings are like a lawsuit in which there is a plaintiff (the applicant) but no
defendant, the court itself (the Examiner) acting as the adverse party.
"No attention shall be paid to ex parte statements or protests of persons concerning pending applications to
which they are not parties, unless information of the pendency of these applications shall have been voluntarily
communicated by the applicants."
"RULE 601. Proceedings a contest between Examiner and theApplicant.-An ex-parte proceeding in the Office for
the registration of a mark is a law contest between the Examiner, representing the interest of the public and the
applicant (or his attorney), representing his own private interests."
"RULE 606. Jurisdiction of the Examiner.-The Examiners shall have original jurisdiction over the examination
of all applications for registration and over their allowance for publication in the fPO Gazette for purposes of
opposition. Their decision, when final, shall be subject to petition and appeal to the Director. The applicants,
their attorneys or agents shall take up the problems arising from their pending applications only with the
respective Examiners in charge and with no other person in the Office."
25 See page 2, last par., of the Resolution.

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