e x x GINEBRA SAN MIGEUL, INC., } Opposers, } } } } }

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1 .~ INTELLECTUALPROPERTY OFFICEOF THE PHILIPPINES x x x x x x -ve~~- x x -versus x x IPC No Opposition to : Appln. Serial No TM: FRASCO IPC No Opposition to : Appln. Serial No TM: FRASCO PREMIUM WATER IPC No Opposition to: Appln. Serial No TM: FRASCO PREMIUM WATER IPC No Opposition to: Appln. Serial No TM: FRASCO WATER THIS IS THE LIFE IPC No Opposition to : Appln. Serial No TM: FRASCO WATER Intellectual Property Center mail@ipophil.gov.ph #28 Upper McKi nley Road Mck inley Hill Town Center e Fort Bonifacio. Taguig City Philippines

2 NOTICE OF DECISION ANGARA ABELLO CONCEPCION REGALA & CRUZ Counsel for Opposer 22 nd Floor, ACCRALAW Tower, Second Avenue corner 30 th Street, Crescent Park West, Bonifacio Global City Taguig City ROMULO MABANTA BUENAVENTURA SAYOC & DE LOS ANGELES Counsel for Respondent-Applicant 21 st Floor, PhiiamLife Tower 8767 Paseo de Roxas, Makati City GREETINGS: Please be informed that Decision No. 201tl-»s: dated 30 January 2019 [copy enclosed) was promulgated in the above entitled case. Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No 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, 30 January MAR~~ IPRS IV Bureau of Legal Affairs

3 INTELLECTU;lL PROPERTY OFFICE OF "TilEPHILIPPINES Respondent-Appl icant. IPC No Application No Trademark: "FRASCO" IPC No Application l'jo Trademark: "FRASCO PREMIUM WATER" IPC No Application No Trademark: "FRASCO PREMIUM WATER" IPC No Application No Trademark: "FRASCO WATER THIS IS THE LIFE" IPC No Application No Trademark: "FRASCO WATER" Decision No OS - Inte llectual Property Center e mail@ipophil.gov.ph #28 Upper:!McKinley Road Mck inley Hill Town Center Q Fort Bonifaci o. Taquiq City II Philippines

4 DECISION Ginebra San Miguel, Inc.' C'Opposer'') filed an opposition to Trademark Application Serial Nos to The contested applications, filed by Vincent Franco d. Frasco/ C'Respondent-Applicant''), cover the marks "FRASCO", "FRASCO PREMIUM WATER", "FRASCO WATER THIS IS THE LIFE" and "FRASCO WATER" for use on ''purified and aerated waters and other nonalcoholic drinks and beverages" under Class 32 of the International Classification of Goods', The Opposer alleges, among other things, that it is the true lawful prior user and rightful owner of the "FRASCO" mark, which it uses on gin products under Class 33. It began to use "FRASCO" or the "cuatro cantos" square bottles, which originally came in flint and green-colored glass bottles. It imported the bottles from Europe and the United States. On 25 September 2009, it filed an application for the mark "FRASCO" and the same was granted registration on 08 April It thus contends that the Respondent-Applicant's marks should not be allowed for being confusingly similar with its own registered mark. In support of its oppositions, the Opposer submitted the followinq:" 1. copy of its 2010, 2013 and 2015 Annual Reports; 2. copy of its Sales Kits; 3. copy of "History of Ginebra San Miguel, Ginebra Bottle in a History"; 4. certified true copy of its trademark registration for "FRASCO' 5. copies of the Notices of Acceptace of its 3 rd and 5 th year anniversary Declarations of Actual Use C'DAU''); 6. printed copies of its advertising campaigns and posters; and, 7. photo of a box where the "FRASCO" mark appears. The Respondent-Applicant, on the other hand, denies that his applied marks are confusingly similar with that of the Opposer's considering that he uses his marks in connection with bottled water while the latter applies "FRASCO" on gin products. He also contends that the Opposer merely uses "FRASCO" to identify its 700ml size of the Ginebra San Miguel products and that the said mark does not appear at all on the bottles of the products. In addition, he asserts that his water products are sold I A domestic corporation with office address at No. 3 rd and 4 th Floors, San Miguel Properties Centre, St. Francis St., Ortigas Center, Mandaluyong City. 2 An individual with address at Unit 7C, MSYTower, Pescadores Road, Cebu Business Park, Ayala, Cebu City 6000, Cebu. J-rhe Nice Classification is a classification of goods and services for the purpose of registering trademark and services 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 Marked as Exhibit "D" to " N", inclusive of submarkings.

5 in upscale establishments and to consumers of discerning tastes and active lifestyles with appreciation for design and aesthetics. He finally maintains that he cannot be precluded from using his surname as a trademark. The Respondent-Applicant's evidence consists the affidavit of the Respondent-Applicant, wlthannexes.! Pursuant to Office Order No. 154, s. 2010, the Adjudication Officer referred the case to mediation. This Bureau's Alternative Dispute Resolution Services, however, submitted a report that the failed to reach any settlement. Accordingly, a Preliminary Conference was conducted and upon termination thereof, the Adjudication Officer directed the parties to submit their respective position papers. Both parties filed their position papers on 03 January Thus, the case is deemed submitted for resolution. The issue to be resolved is whether the Respondent-Applicant's marks "FRASCO", "FRASCO PREMIUM WATER", "FRASCO WATER THIS IS LIFE" and "FRASCO WATER" should be allowed registration. Prefatorily, it is emphasized that 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." Records reveal that at the time the Respondent-Applicant filed the application for registration of the contested marks on 06 October 2016, the Opposer already has valid and existing registration of its "FRASCO" mark which was issued on 8 April The competing marks are depicted below: Opposers'mark: FRASCO 5 Marked as Exhibits " 1" to "8", inclusive of submarkings. 6 Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No , 19 November 1999.

6 v Respondent-Applicant's marks: FRASCO FRASCO WArr.ER FRASCO promlurn waler \\ t PI. '1'1 is is tl ( I i Looking at the Opposer's mark, what is impressed in the eyes and mind is the word "FRASCO". The Respondent-Applicant's marks, on the other hand, similarly appropriate the word "FRASCO", whether alone or in conjunction with other words. Be that as it may, this Adjudication Officer finds that the latter mark may be allowed registration. Section (d) of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code") provides that: " A mark cannot be registeredifit: (d) Is identical with a registered mark belonging to a different proprietor ora mark with an earlier filing orpriority date, in respect of: (i) The same goods orservices, or (ii) Closely related goods orservices, or (iii) Ifit nearly resembles such a mark as to be likelv to deceive or cause confusion: xxx"(emphasis supplied.) Confusion, much more deception, is highly unlikely in this case because of the disparity of the goods involved. The Opposer's "FRASCO" registration specifically covers gin under Class 33 and advertising under Class 35. On the other hand, the Respondent-Applicants' applied marks are used or intended to be used on purified or aerated water and other non-alcoholic drinks under Class 32. The Opposer cannot extend the protection afforded by its trademark registration to water and nonalcoholic drinks. Although both involve kinds of beverage, the two are not related products and the target consumers and channels of trade are different.

7 Also, it is noteworthy that the Opposer's goods are a kind of liquor. These products are the type which a customer buys by brand. Cast in this particular controversy, the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. The definition laid down in Dy Buncio v. Tan Tlao Bok is better suited to the present case. There, the "ordinary purchaser" was defined as one "accustomed to buy, and therefore to some extent familiar with, the goods in question. The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The test is not found in the deception, or the possibility of deception, of the person who knows nothing about the design which has been counterfeited, and who must be indifferent between that and the other. The simulation, in order to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.' Therefore, the consumers of one will not be confused, misled and/or deceived that the Opposer's gin products are in any way related or connected to the Respondent-Applicant's water products. WHEREFORE, premises considered, the instant Oppositions to Trademark Application No , , , and are hereby DISMISSED. Let the filewrapper of the subject trademark application be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action. SO ORDERED. Atty. Z'SA Y. SUBElANO-PE LIM judication Officer Bureau of Legal Affairs 7 Victorio P. Diaz vs. People of the Philippines, G.R. No , 18 February