Please be informed that Decision No &5" dated June 29, 2018 (copy

Transcription

1 INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES CROWN MELBOURNE LIMITED, Opposer, -versus- CORON SOLEIL GARDEN RESORTS, INC., Respondent- Applicant. x IPCNo Opposition to: Application No Date Filed: 12 August 2014 TM: "CROWN SOLEIL" NOTICE OF DECISION FEDERIS & ASSOCIATES LAW OFFICES Counsel for Opposer 141 Valero cor. Sedeno Streets Salcedo Village, Makati City CORDOVA & ASSOCIATES Counsel for Respondent-Applicant 1609, 16th Floor, 128 Eton Tower Makati, Dela Rosa corner V.A. Rufino Street, Legaspi Village Makati City GREETINGS: Please be informed that Decision No &5" dated June 29, 2018 (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, June 29, MARIL/YN F. RETUTAL IPRS IV Bureau of Legal Affairs q Intellectual Property Cenier Q mail@ipophil.gov.ph tt?8 Upper McKinlr.:/ Road

2 INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES CROWN MELBOURNE LIMITED, IPC NO Opposer, Opposition to: Appln. Ser. No versus- Date Filed: 12 August 2014 Trademark: "CROWN CORON SOLEIL GARDEN RESPORTS, INC., SOLEIL" Respondent-Applicant. x x Decision No DECISION CROWN MELBOURNE LIMITED, (Opposer)1 filed an opposition to Trademark Application Serial No The application, filed by CORON SOLEIL GARDEN RESPORTS, INC. (Respondent-Applicant)2, covers the mark "CROWN SOLEIL", for use on "Stationery, namely memo pads, letterhead, envelopes, ballpens, postcards, file folders, paper coasters, packaging for toiletry namely: shampoo, bath gel, bath soap, lotions, toothpaste, toothbrush set, comb & brush, shoe polish, disposable slippers" under Class 16; "Linen namely: bedsheets, pillow case, pillow covers, blankets, table clothes, table runners, table napkins, towels" under Class 24; "Promotional materials used in relation to hotel business" under Class 35; and "Hotels, apartment hotels, resort hotel, motels, operating hotel complexes, hotel services, cafeteria, tearoom, bars (except clubs) services, temporary accommodation, tourist homes, hotel room reservation services for travelers, temporary accommodation reservation services, (nonbusiness) consultation and consulting in hotel services and restaurant fields" under Class 43 of the International Classification of Goods3. The Opposer relies on the following grounds in support of the opposition: "a. The subject mark is confusingly similar to the Opposer's earlier registered trademarks CROWN and CROWN TOWERS, and therefore, must be denied registration under Section (d) of the Intellectual Property Code ('IP Code'). "b. The Opposers trademark - CROWN, CROWN TOWERS and (Crown Spray Device) and variations thereof (collectively, 'CROWN marks') are well-known trademarks, both internationally and in the Philippines; the registration of the opposed ' A corporation duly organized and existing under the laws of Australia with address at Crown Towers C. 1 A Philippine corporation with address at Mabentangen Road, Brgy 6 Coron, Palawan. 3 The Nice Classification of Goods and Services is for registering trademarks and service marks based on multilateral treaty administered by the WIPO, called the Nice Agreement Concerning the International Classification of Goods and Services for Registration of Marks concluded in q IntellectuallProperty Center mail@ipophil.gov.ph #28 Upper McKinley Road McKinley Hill Town Center

3 mark will deprive the Opposer the right to enjoy expanded protection for famous marks under Section (e) and (f) of the IP Code. "c. The opposed mark is bad faith copy of the Opposer's CROWN Marks, and if allowed to register, the Respondent-Applicant will be permitted to unfairly profit commercially from the goodwill, fame and notoriety enjoyed by the Opposer's trademarks, contrary to Section ofthelpcode. "d. The registration of the opposed mark will lead to the dilution of the Opposer's well-known trademarks whose image, goodwill and reputation will be irretrievably damaged and the distinctiveness substantially diminished, contrary to the dilution principles enunciated in the cases of Ang v. Teodoro and Levi Strauss v. Clinton. "e. CROWN SOLEIL is an illegal appropriation of the business name of the Opposer and the Opposer's subsidiaries and/or affiliated companies, including its parent company, Crown Entertainment Group Holdings Pty. Ltd. (Australian CompanyNumber ('CAN') and its ultimate holding company, Crown Resorts Limited, and therefore prohibited from registration under Section 165 of the IP Code and Article 8 of the Paris Convention. " The Opposer alleges among other things that it operates the Crown Entertainment Complex, in Melbourne, Australia, which consists of one of the largest casinos in the northern hemisphere, as well as multiple hotels, event and conference facilities. Its operations include the casino and gaming businesses, general entertainment services, hotel accomodation, restaurant, cafes and bars. The word CROWN was chosen to signify quality. According to the Opposer, the CROWN marks have gained fame and popularity through exclusive use and promotions. It has online presence in the internet; is a preferred supplier of service by travel agencies. It is promoted by leading airlines and has been featured in various national and international media and publication. The Opposer maintains that CROWN SOLEIL is identical to the prior registered CROWN marks. To support its opposition, the Opposer submitted as evidence the following: Affidavit of Kylie Burchmore; Company extract for Crown Melbourne Limited; Company Extract for Crown Entertainment Group Holdings Pty ltd and Crown Resorts Limited; Schedule of the Opposer's Australian, international applications/registrations of CROWN marks; Certified copies of certificates of registration of CROWN marks; List of Opposer's domain names and registrations; Print-out of social media accounts; List of travel agents; Print-out of downloaded pages from websites that promote the Opposer; Sample of promotions of airlines and travel companies; List of tradeshows; Sample of promotional materials, national and international publications referring to CROWN marks; List of achievements and awards; Print-out of City of Dreams and Crown Towers Manila website; Press features for CROWN Towers; Affidavit of Diana Rabanal; Special Power of Attorney; Corporate Secretary's Certificate; Certified true copies of Certificate

4 of Trademark Registrations /applications in the Philippines; Certified copies of Decision no and Entry of Judgment in IPC Case No This Bureau issued a "Notice to Answer" and served a copy thereof upon the Respondent-Applicant on 25 May The Respondent-Applicant, however failed to file an Answer. Thus, the Bureau issued on 11 September 2015, Order No declaring the Respondent-Applicant in default. SOLEIL? Should the Respondent-Applicant be allowed to register the trademark CROWN Section 123 (d) of the Intellectual Property Code, provides that: 'Sec Registrability A mark cannot be registered if it: 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. The records show that at time the Respondent-Applicant filed its application for the mark CROWN SOLEIL, the Opposer already registered its marks under Registration No and for the mark CROWN SPRAY DEVICE and Registration No for CROWN TOWERS.5 But are the competing marks identical or closely resembling each other such that confusion or mistake is likely to occur? Opposer's mark CROWN Respondent-Applicant's mark 4 Exhibits "A" to "Z", inclusive of submarkings. 5 Exhibits "X-2", "X-3", "X-4".

5 Scrutinizing the composition of the marks, the word CROWN is the only common element in the two marks. The Respondent-Applicant's mark is a composite mark consisting of a device in gold, yellow and silver color and the words, CROWN SOLEIL. In determining whether marks are confusingly similar, the Supreme Court apply two tests. In Societe Nestle des Produits v. Court of Appeals6, it held: Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other. In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test and the Holistic Test. The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement. On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. Applying the dominancy test, the word "CROWN"; "CROWN TOWER"; are the Opposer's dominant feature. On the other hand, Respondent-Applicant's mark comprise not only the words "CROWN SOLEIL" but a device that approximates three slanting, curved waves above the literal component of the mark in gold, yellow and silver. As seen, Opposer's CROWN SPRAY mark is also distinct, with dots sprayed atop the crown. Therefore, the central feature of Opposer's mark is not appropriated by the Respondent-Applicant. The difference in the visual perception of the marks dispel any likelihood of confusion among the public that the services/ products of the Respondent-Applicant, originate from, are sourced from or have the same affiliation or sponsorship with the Opposer. In the case of Taiwan Kolin Corporation, Ltd. v. Kolin Electronics, Co., Inc.7, the Supreme Court held: While both marks refer to the word 'KOLIN' written in upper case letters and in bold font, the Court at once notes the distinct visual and aural differences between them: Kolin Electronics' mark is italicized and colored black while that of Taiwan Kolin is white in pantone red color background. The differing features between the two, though they may appear minimal, are sufficient to distinguish one brand from the other. It cannot be stressed enough that the products involved in the case at bar are, generally speaking, various kinds of electronic products. These are not ordinary household items, catsup, soy sauce or soap which are of 6 G.R. No , 4 April G.R. No , March 25, 2015

6 minimal cost. The products of the contending parties are relatively luxury items not easily considered affordable. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely, xxx" In the instant case, clients of hotel services, and casinos tend to be more discriminating and finicky in seeking accommodation or entertainment, would not immediately form a connection that Respondent-Applicant's hotel is affiliated with the Opposer's, IJBBBBHBBHH^^^^BJ, CROWN marks, simply because the marks use the word "CROWN". WHEREFORE, premises considered, the instant Opposition to Trademark Application No is hereby DISMISSED. Let the filewrapper of the subject trademark be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action. SO ORDERED. ATTY^ADORACION U. ZARE, LL.M. Adjudication Officer Bureau of Legal Affairs