INTELLECTUAL PROPERT4

OFFICE Or TL4r 'w!! IPP,NF

HUGO BOSS TRADEMARK IPC No. 14-2016-00366
MANAGEMENT GMBH & CO. KG, Opposition to:
Opposer, Appin. No. 4-2016-0502451
Date Filed: 17 May 2016
TM: "DREAMWORKS THE BABY
-versus- BOSS"

DREAMWORKS ANIMATION L.L.C.,

Respondent- Applicant.
x

NOTICE OF DECISION

LAW FIRM OF E.B. ASTUDILLO AND ASSOCIATES

Counsel for Opposer
Citibank Center, 10th Floor
8741 Paseo de Roxas, Makati City

SAPALO VELEZ BUNDANG & BULILAN

Counsel for Respondent-Applicant
11th Floor, Security Bank Centre
6776 Ayala Avenue, Makati City

GREETINGS:

Please be informed that Decision No. 2018 - .2.g4 dated September 28, 2018 (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, September 28, 2018.

4/(7
MARILYN F. RETUTAL
IPRS IV
Bureau of Legal Affairs

• www.ipophil.gov.ph o Intellectual Property Center

O mail@ipophitgov.ph
e +632-2386300
g +632-5539480
#28 Upper McKinley Road
McKinley Hill town Centex
Fort Bonilacio. Taguig r; y
1634 Philippnies
 INTELLECTUAL PROPERTY
OFFICE OF THE PHIUPPINES

HUGO BOSS TRADEMARK IPC NO. 14-2016-00366

MANAGEMENT GMBH & CO. KG,
Opposer, Opposition to:
Appin. Ser. No. 4-2016-0501451
-versus- Date Filed: 17 May 2016
TM: DREAMWORKS THE BABY
DREAMWORKS ANIMATION L.L.C., BOSS
Respondent-Applicant.
x Decision No. 2018 -

DECISION

HUGO BOSS TRADEMARK MANAGEMENT GMBH & CO. KG1 ("Opposer") filed
an Opposition to Trademark Application Serial No. 4-2016-0501451. The application, filed
by DREAMWORKS ANIMATION L.L.C.2 ("Respondent-Applicant") covers the mark
DREAMWORKS THE BABY BOSS for use on "clothing, footwear, headgear" under Class 25
and "games and playthings; gymnastic and sporting articles not included in other classes;
decorations for Christmas tree" under Class 28 of the International Classification of goods3.

The Opposer relies on the following grounds to oppose the registration of the subject
mark:

"13.The trademark BOSS and other marks containing the dominant word BOSS for
goods under Class 25 is exclusively owned by opposer.

"14. The mark DREAMWORKS THE BABY BOSS being applied by respondent-
applicant is confusingly similar to opposer's well-known trademarks BOSS, BOSS
HUGO BOSS, and HUGO BOSS, hereinafter collectively referred to as BOSS, as to
likely, when applied to, or used in connection with the goods of respondent-
applicant, cause confusion, mistake and deception on the part of the purchasing
public.

"15.The registration of the trademark DREAMWORKS THE BABY BOSS in the name
of respondent-applicant will violate Section 123.1 (d) and (e) of the IP Code.

' A corporation duly organized and existing under the laws of Germany, with principal address at Dieselstrasse 12, 72555 Metzingen,
Germany.
2 A corporation duly organized and existing under the laws of the U.S.A. with address at 1000 Flower Street, Glendale, California 91201,
U.S.A.
'The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based on the
multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning the
International Classification of Goods and Services for the Purpose of the Registration of Marks concluded in 1957.

• www.ipophil.gov.ph Intellectual Property Center

e mail@ipophilgovph #28 Upper McKinley Road
McKinley Hill Town Center
0 +632-2386300 Fort Bonifacio. Taguig City
di +632-5539480 1634 Philippines
 XXX

"16.Opposer has 'exclusive rights to use' the mark BOSS for the goods and services
covered by the certificate of registration, pursuant to Section 138 of the IP Code xxx.

xxx

"17.Opposer also has 'exclusive right to prevent' respondent applicant 'from using'
the mark BOSS for goods and services covered by the certificate of registration,
pursuant to Section 147.1 of the IP Code xxx.

xxx

"18. Opposer's mark BOSS is a "well-known" mark. Accordingly, it cannot be

appropriated by respondent-applicant pursuant to Section 123.1 (e) of the IP Code.

xxx

"19.The exclusive rights of the opposer over its "well-known" mark BOSS extends to
goods and services, other than or outside of those covered by registration pursuant to
Section 123.1 (f) of the IP Code.

"20.The rights of the opposer over its "well-known mark BOSS is further recognized
under Section 147.2 of the IP Code."

Opposer's evidence consists of the following:

1.Legalized Affidavit-Testimony of Paul Anthony Daly;

2. Copy of certificates of registration for its BOSS, BOSS Hugo Boss, and Hugo Boss
marks in the Philippines;
3.CD-Rom containing selected advertisements and promotional paraphernalia of the
BOSS and HUGO BOSS marks;
4. Printouts of search result for BOSS from Google;
5.Printout of the homepage of www.dreamworksanimation.com;
6.Printout of Hugo Boss' social media sites;
7.CD-Rom containing Hugo Boss' Annual Report for 2015;
8.Copy of Financial Statements of Hugo Boss AG for 2014;
9. Original legalized and authenticated extract of Commercial Register in Germany
dated 11 January 2016;
7. Legalized Certificate of Legal Identity of Legal Representative; and
8. Legalized and authenticated Power of Attorney.

On 27 October 2016, this Bureau issued a Notice to Answer and served it to

Respondent-Applicant's counsel on 09 November 2016. After several motions for
extension of time, Respondent-Applicant filed its Verified Answer on 07 February 2017. In
the Answer, Respondent-Applicant alleges that the opposition should be dismissed
outright for failure to state a cause of action as Opposer will not be damaged by the
registration of Respondent-Applicant's DREAMWORKS THE BABY BOSS trademark
because it is Respondent-Applicant who is the owner, first adopter, prior user, and first
applicant of the trademark DREAMWORKS THE BABY BOSS. Respondent-Applicant
further alleges that:

"I. Respondent-Applicant's DREAMWORKS THE BABY BOSS trademark is not

confusingly similar to Opposer's mark;

"II.Respondent-Applicant 's products cannot be confused with that of Opposer's.

"III.Respondent-Applicant's business cannot be confused to that of Opposer's.

"IV. Opposer cannot exclusively appropriate the word 'BOSS' because there are
numerous and co-existing registered 'BOSS' marks both internationally and in the
Philippines.

"V. There is no passing off or any intention to pass off on the part of Respondent-
Applicant in this case.

Respondent-Applicant's evidence consists of the following:

1. Authenticated Special Power of Attorney;

2. Authenticated Secretary's Certificate;
3. Printout of the relevant page of Respondent-Applicant's website
www.dreamworksanimation.com;
4. Printout of various social media site of Respondent-Applicant;
6. Certified copies of Respondent-Applicant's certificates of registration for the mark
DREAMWORKS issued in the U.S.A., EU IPO, Australia, Argentina and Japan;
7. Printout of search result for the mark DREAMWORKS from the IPOPHL
Trademark Database;
8. Printout of search result for the mark DREAMWORKS from the WIPO Global
Trademark Database;
9. Printout of search result for the mark BOSS from the IPOPHL Trademark
Database;
10. Printout of search result for the mark BOSS from the WIPO Global Trademark
Database;
11. Duly notarized Affidavit of Arjel P. De Guzman; and
12. Duly notarized Affidavit of Araceli M. Delos Santos.

Pursuant to Office Order No. 154, s. 2010, the case was referred to the Alternative
Dispute Resolution ("ADR") for mediation on 20 February 2017. However, the parties
failed to settle their dispute. The preliminary conference was terminated on 18 January 2018
and the parties were directed to submit position papers. On 02 February 2018, Opposer and
Respondent-Applicant filed their Position Papers. Hence, this decision.
 Should Respondent-Applicant be allowed to register the mark DREAMWORKS
THE BABY BOSS?

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods to
identify and distinguish them from those manufactured, sold, or dealt by
others.4 Inarguably, it is an intellectual property deserving protection by law. In trademark
controversies, each case must be scrutinized according to its peculiar circumstances, such
that jurisprudential precedents should only be made to apply if they are specifically in
point.5

Sec. 123.1 (d) of Republic Act No. 8293, also known as the "Intellectual Property
Code of the Philippines (IP Code)", as amended, provides for the criteria for registrability of
a mark:

Section 123. Registrability. — 123.1. A mark cannot be registered if it:

x x x
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;

From the afore-cited provision, it is clear that, whenever a mark subject of an application
for registration resembles another mark which has been registered or has an earlier filing or
priority date, said mark cannot be registered.

The records will show that at the time the Respondent-Applicant filed its application
for the mark DREAMWORKS THE BABY BOSS on 17 May 2016, the Opposer already has
an existing registration for the trademark BOSS issued way back in 24 March 1994. Opposer
also registered other marks such as HUGO BOSS and BOSS HUGO BOSS, among others
under Classes 9, 14, 18, 25, 27 and 35. As such, pursuant to Section 1386 of the IP Code,
Opposer's certificate of registration is a prima facie evidence of the its ownership of the
mark, and its exclusive right to use the same in connection with the goods or services
specified in the certificate and those that are related thereto. And further, pursuant to
Section 1477 of the IP Code, it has a right to oppose the herein subject application for
registration of Respondent-Applicant's DREAMWORKS THE BABY BOSS mark.

4 Prosource International, Inc. v. Horphag Research Management SA, G.R. No. 180073, November 25, 2009, 605 SCRA 523, 528; McDonalds
Corporation v. MacJoy Fastfood Corporation, G.R. No. 166115, February 2, 2007, 514 SCRA 95, 107.
s Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006, 493 SCRA 333, 356.
Section 138. Certificates of Registration. - 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.
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

4
 In this case, Opposer's bone of contention is on the alleged similarity of the
Respondent-Applicant's DREAMWORKS THE BABY BOSS mark to its BOSS trademarks.
The claim of similarity is anchored on the presence of the word BOSS in Respondent-
Applicant's mark. The contending marks are reproduced below:

BOSS 139§§ HUN BOSS

Opposer's Marks

Respondent-Applicant's Mark

The Supreme Court in Ethepa A.G. v. Director of Patents8 held that:

A practical approach to the problem of similarity or dissimilarity 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.

Thus, confusion is likely between marks only if their overall presentation as to

sound, appearance or meaning would make it possible for consumers to believe that the
goods or products, to which the marks are attached, comes from the same source or are
connected or associated with each other.

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.
8 G.R. No. L-20635, 31 March 1966
 There is no doubt that Respondent-Applicant's mark contain the word "BOSS".
However, the mere adoption of a similar word in a mark does not make it confusingly
similar. In the case of Respondent-Applicant's mark, its overall appearance is distinctively
different from that of Opposer's BOSS trademarks. Opposer's marks are mere word marks
while Respondent-Applicant's mark is a composite mark which consists of various
elements. The presence of these different elements obliterate the single similar elements
between the two marks which is the word "BOSS" that it is unlikely that consumers will be
confused, mistaken or deceived that the two marks are one and the same or that they are
associated or connected with each other.

Also, this Bureau agrees with Respondent-Applicant's explanation as to why its

mark is not confusingly similar to Opposer's. In the Answer, Respondent-Applicant stated:

"16.In all, the stylized boy design is the depiction of the central character in
the famous children's book The Baby Boss written by Marla Frazee, on which
Respondent-Applicant's upcoming animated film is based. Such distinguising
feature, which are obviously absent in Opposer's mark, effectively separate and
differentiate Respondent-Applicant's trademark from that of Opposer's.

"17. Moreover, Respondent-Applicant's internationally well-known

"DREAMWORKS" trademark with the fishing boy device is conspicuously made an
integral part of Respondent-Applicant's 'DREAMWORKS THE BOSS BABY'
trademark. By reason of such, the source of the goods which Respondent-Applicant's
trademark is readily made known and provided — Respondent-Applicant
DREAMWORKS ANIMATION L.L.C.. Accordingly, confusion on the part of the
consuming public is nothing more than a rather imagined probability which
Opposer unreasonably proffers."

In Emerald Garment Manufacturing Corporation v. Hon. Court of Appeals, et. A1.9, the
Court in finding no confusing similarity between the marks "LEE" and "STYLISTIC MR.
LEE" stated: "the issue of confusing similarity between trademarks is resolved by
considering the distinct characteristics of each case. In the present controversy, taking into
account these unique factors, we conclude that the similarities in the trademarks in
question are not sufficient as to likely cause deception and confusion tantamount to
infringement."

In Fruit of the Loom, Inc. v. Court of Appeals, et. A1.10, the court held:

In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone
similar word is FRUIT. We agree with the respondent court that by mere
pronouncing the two marks, it could hardly be said that it will provoke a confusion,
as to mistake one for the other. Standing by itself, FRUIT OF THE LOOM is wholly
different from FRUIT FOR EVE. We do not agree with petitioner that the dominant

G.R. No. 100098. December 29, 1995

Supra, note 10.
10
 feature of both trademarks is the word FRUIT for even in the printing of the
trademark in both hang tags, the word FRUIT is not at all made dominant over the
other words.

Aptly, 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.11 The glaring difference
between Respondent-Applicant's and Opposer's marks makes them easily distinguishable
from one another. Accordingly, the purchasing public will not likely be confused, mistaken
or deceived into believing that the mark of Respondent-Applicant is the same as that of
Opposer's, or that the two are associated or affiliated with each other. "The ordinary
purchaser must be thought of as having, and credited with, at least a modicum of
intelligence to be able to see the obvious differences between the two trademarks in
question. "12

Indeed, 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.13 Respondent-Applicant's mark has met this function.

WHEREFORE, premises considered, the instant opposition is hereby DISMISSED.

Let the filewrapper of Trademark Application Serial No. 4-2016-0502451, together with a
copy of this Decision, be returned to the Bureau of Trademarks for information and
appropriate action.

SO ORDERED.

Taguig City, 2 8 SEP 2018

M v LITA DAQItSA
Adjudication Offi r
Burkau of Legal A airs

" Societe Des Produits Nestle. S.A. v. Court of Appeals, G.R. 112012. 04 April 2001.
11 Fruitof the Loom, Inc. v. Court of Appeals, G.R. No. L-32747, 29 November 1984.
13 Pribhdas J. Mirpuri v. Court of Appeals, G. R No. 114508, 19 Nov. 1999.