G-STAR RAW DENIM KFT P H I}l I P P I NIAtefr Partes Case No. 14

INTELLECTUAL PROPERTY
G-STAR RAW DENIM KFT
Petitioner,
P H I}l I P P I
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-versus­
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128 DREAM FOUNTAIN CORP. }
Respondent-Registrant
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NIAtefr Partes Case No. 14-2008-00140
Case Filed: 23 June 2008
Cancellation of:
Reg. No. : 4-2006-007117
Date Registered: 17 September 2007
Trademark: "GSTAR and Logo"
Decision No. 2009 -
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DECISION
This is a PETITION FOR CANCELLATION filed on June 23, 2008 by
petitioner G-Star Raw Denim KFT to Registration No. 4-2006-007117 for the
mark "GSTAR and Logo" covering Classes 9 (shades), 18 (wallets, bags), and
25 (rubber shoes, sandals, closed shoes, slippers and school shoes , tank top,
blouses, blazers, jackets, short sleeve shirts, long sleeve shirts, shorts, pedal
pusher, Capri pants, slacks and jeans, belts) issued in the name of respondent­
registrant 128 Dream Fountain Corporation on September 17,2007, published for
opposition on the Intellectual Property Philippines (IP Philippines) Official Gazette
which was officially released for circulation on August 17, 2007.
Petitioner is a corporation organized and existing under the laws of
Hungary with address at 1052 Budapest, Apaczai Csere Janos utca 11, Hungary.
Respondent-registrant is a corporation organized under the laws of the
Philippines with business address at No. 7 Agno Street, Dona Josefa, Sta. Mesa
Heights, Quezon City, 1113, Philippines.
Petitioner alleges as follows:
"1. Petitioner G-Star Raw Denim KFT is the owner of the
trademark "G-STAR" and its derivatives . It has licensed G-Star
International BV to use the said mark and its derivatives. G-Star
Raw Denim Kft and/or its predecessors-in-interests and/or
Iicensee/s has used and adopted the mark since 1994 in various
countries around the world, including Asia.
Respondent's
trademark "GSTAR and logo" is confusingly similar with and
sounds exactly like Petitioner's mark. As Respondent's similar
trademark directly violates the intellectual property rights of
Petitioner who has nurtured and used the mark which has becom~
Republic of the Philippines
well-known in various countries around the world, the registration
of the trademark "GSTAR and logo" in the name of Respondent
should be cancelled;
"2. The registration of the trademark "GSTAR and logo" in the
name of Respondent was obtained contrary to the provisions of
Section 123.1 (d) of the Intellectual Property Code because
Respondent's "GSTAR and logo" mark is identical with or nearly
resembles Petitioner's "G-STAR" mark which has an earlier filing
date;
2.1
Petitioner filed its application for registration
of their mark in the Philippines on 14 May 2004 with
a claim for convention priority date of 28 November
2003 while Respondent filed its application for
registration of its mark only on 03 July 2006, or at
least two years later;
2.2
Applicant Nelson Chan assigned his 13
March 2002 application for registration of the "G­
STAR" mark in favor of Petitioner's predecessors-in­
interest in Inter-Partes Case 1\10. 14-2004-00079
instituted by Petitioner (through its predecessors-in­
interest). Pursuant thereto, this Honorable Office on
04 July 2007 issued Decision No. 2007-93 giving
due course to the subject application and
recognizing its assignment in favor of Petitioner's
predecessors-in-interest. Thus, Petitioner owns the
application for registration of the mark filed on 13
March 2002, or more than four years earlier than
Respondent's application;
"3. The registration of the trademark "GSTAR and logo" in the
name of Respondent was obtained contrary to the provisions of
Section 123.1 (e) and/or (f) of the Intellectual Property Code
because Petitioner's "G-STAR" mark is well-known all over the
world long before respondent's unauthorized use in bad faith of
said mark;
3.1
The first registration date of the mark "G­
STAR" in the Benelux by Petitioner (through its
predecessor-in-interest) is on 11 August 1994, while
first use was also in 1994. Various G-STAR mar~~
and its derivatives have been used since then b;
itrIC:
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Petitioner;
3.2
The trademarks of Petitioner are well known
worldwide, due to its worldwide use and/or
registrations thereof in almost all countries. Due to
the use of Petitioner's marks worldwide, which use is
much earlier than that of Respondent, Petitioner's
marks enjoy a good reputation among purchasers
for the high quality and value of their products;
3.3
By virtue of Petitioner's prior and continued
use of their trademarks worldwide, and the large
amounts spent by Petitioners in advertising the
same, said trademarks have acquired valuable
goodwill among consumers who have identified
Petitioner's marks as the source of the products
bearing said trademarks;
"4. Thus, the continued registration of the trademark "GSTAR and logo"
in the name of Respondent will cause confusion as to the goods
themselves or to their source or origin or will mislead consumers in the
Philippines who may associate said mark with Petitioner, resulting in
damage to both the public and Petitioner;
"5. The continued registration of the trademark "GSTAR and logo" in the
name of Respondent will violate the proprietary rights and interests of
Petitioner over their trademark and other similar marks, and will therefore
cause great and irreparable injury to the latter;
"6. The continued registration of the trademark "GSTAR and logo" in the
name of Respondent will mislead prospective purchasers into thinking that
Petitioner is the one selling the product, or that the product or business is
under the sponsorship of Petitioner or by a subsidiary of Petitioner;
"7. The continued registration of the trademark "GSTAR and logo" in the
name of Respondent is contrary to the Memorandum Circulars of the then
Minister of Trade and Industry to the Director of Patents on November 20,
1980 and October 25, 1983, now embodied in Section 123 of the
Intellectual Property Code, directing the Bureaus of Patents Trademark
and Technology Transfer to comply with the Philippines' commitment to
the Paris Convention in giving protection to world famous trademarks, Iik;;f,~
the Petitioner's trademarks;
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"8. Petitioner relies on the following facts and circumstances to support
this Petition and reserves its right to present further evidence to prove the
same and such other facts as maybe necessary in the course of the
proceedings, depending upon the evidence to be presented by
Respondent;
"a)
Petitioner owns the G-STAR mark which is a major
jeans brand in Europe, USA, Canada, Australia and in
Asia. G-STAR is a worldwide brand for clothing such as
jeans, trousers, t-shirts, sweaters, jackets, blouses and
caps, and clothing-related products such as shoes, belts,
leather bracelets, etc. Opposers sell their jeans in more
than 50 countries including Europe, USA, Canada,
Australia, New Zealand, South Africa, Hongkong, China,
Singapore, Taiwan, Korea, Japan and many more. The
products have been sold and marketed all over the world
long before Respondent filed its application on 03 July
2006;
b)
On various dates sometime beginning as early as
1994 in Amsterdam, Petitioner's predecessor-in-interest
began using the trademark "G-STAR" and various G-STAR
derivatives over the years. The mark "G-STAR" was first
registered in Benelux in 1994. Said mark has now been
registered in the name of Petitioner G-Star Raw Denim Kft
in almost all countries of the world, including countries in
Europe and Asia. Thus, the mark "G-STAR" and its
derivatives have been in use by Petitioner way before
Respondent's alleged first use of the mark;
c)
Petitioner's
predecessors-in-interest,
G-Star
International Ltd. and G-Star International BV, filed their
application for their trademarks registration in the
Philippines on 14 May 2004, with a claim for convention
priority date of 28 November 2003;
d)
Inter-Partes Case No. 14-2004-00079 instituted by
Petitioner (through its predecessors-in-interests) against a
similar application for registration of the mark "G-STAR and
logo" (filed on 13 March 2002) by Respondent-Applicant
Nelson Chan culminated on 04 July 2007 with this
Honorable Office issuing Decision No. 2007-93 giving due
course to the subject Application and recognizing its
assignment in favor of Petitioner's predecessorS-in-intere~
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d)
The mark "G-STAR" registered to Respondent is
confus ingly similar and sounds exactly like the trademarks
of Petitioner and as such, it will definitely deceive the public
or cause confusion. Hence, the registration of "GSTAR and
logo" in the name of Respondent is contrary to the provision
of Section 123 of the Intellectual Property Code;
e)
The trademarks of Petitioner are well known
worldwide, due to its world wide use and/or registrations
thereof in almost all countries. Due to the use of Petitioner's
marks worldwide, which use is much earlier than that of
Respondent, Petitioner's marks enjoy a good reputation
among purchasers for the high quality and value of their
products;
f)
By virtue of Petitioner's prior and continued use of
their trademarks worldwide, and the large amounts spent by
Petitioners in advertising the same, said trademarks have
acquired valuable goodwill among consumers who have
identified Petitioner's marks as the source of the products
bearing said trademarks;
g)
Respondent's trademarks "GSTAR and logo" is
confusingly similar and sounds exactly like Petitioner's
trademarks, such that its use on the goods of Respondent­
Applicant would infer that the latter's goods are connected
with the products sold by Petitioner as to falsely suggest a
connection with the existing business of the Petitioner, and
therefore, constitutes an intent to defraud Petitioner and the
public ;
h)
The mark "GSTAR and logo" registered to
Respondent sound exactly like the trademarks of Petitioner
so as to cause mix-up between Respondent's and
Petitioner's goods and services.
This confusion is
compounded by the fact that the mark "GSTAR and logo"
clearly shows that Respondent intended to ride on the
trademarks of Petitioner as well as their goodwill;
i)
The registration of the trademark "GSTAR and
logo" diminishes the distinctiveness and strength of
Petitioner's trademarks, which the public and consumers
have already identified, or associated with petitioner'1fS
goods and services, to the great prejudice and in violation
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of Petitioner's rights to said trademarks;
"9. Petitioner herewith
trademark "G-STAR".
encloses four (4) label specimens of the
"10. Petitioner encloses herewith list of its applications/registrations in the
world covering the mark, with the Certificates to be presented later in the
proceedings.
"11. Petitioner reserves the right to present further evidence in support of
its allegations in the proceedings.
On August 19, 2008, a NOTICE TO ANSWER was issued to and
mailed through DHL to respondent-applicant through its resident agent's
representative, Dianne Santos, but no verified answer was filed by respondent­
applicant, albeit within the reglementary period. Thus, per Order No. 2009-1496 ,
respondent-applicant was deemed to have waived its right to file a verified
answer and the case was deemed submitted for decision based on Section 5 of
Office Order No. 79 Series of 2005 in relation to Rule 2, Section 11 of the Rules
On Inter Partes Cases.
The issues to be resolved herein are as follows:
1. Whether petitioner's mark is confusingly similar with opposer's
mark; and
2) Whether the petition for cancellation of respondent-registrant's
"GSTAR AND LOGO" should be granted .
Petitioner's mark is depicted below:
I:-STAR::::;
"G-STAR"
[Registration No. 4-2002-003766] ~
for Class 25
I ~ ~
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"G-STAR (OUO) LOGO"
[Application No. 4-2004-004311]
for Class 25
Meanwhile , respondent-registrant's mark is depicted below:
At first glance, the competing marks appear different visually per se:
Petitioner's mark consists of the word "G-STAR" in uppercase, bold Arial-like font
that is enclosed in an uppercase letter "G", while respondent-registrant's mark
consists of stylized, scripted lowercase letter "G" the end stroke of which forms
into a stylized star to the right of the letter "G". However, the visual aspect of a
mark is only one of the factors, not the only factor, considered in determining
confusing similarity between competing marks. Likelihood of confusion is a
relative concept; to be determined only according to the particular, and
sometimes peculiar, circumstances of each case (ESSO Standard Eastern, Inc.
v. Court of Appeals, et aI., G. R. No. L-29971, August 31,1982).
When a purchaser buys the product of either party, such buyer will
mention the words "G" and "STAR". The pronunciation for both marks are the
same when spoken. Notwithstanding, thus, their visual dissimilarity, the aural
similarity of the competing marks herein creates aural impressions and
connotative comparisons such that there is likelihood a buyer may be confuse~
that the product of one party originates from the other party or that there is some
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connection between petitioner and respondent-registrant which, in fact, does not
exist. There is therefore, confusion of goods and confusion of business (Societe
des Produits Nestle, S.A. et al. v. Court of Appeals, et aI., G. R. No. 112012,
April 4, 2001; Sterling Products International, Inc. v. Farbenfabriken Bayer
Aktiengesselschaft, G.R. No. L-19906, April 30, 1969). This is especially true
considering that petitioner's goods fall under Class 25 which is the same class
under which respondent-registrant's goods fall. Such goods of the parties are,
thus, identical and/or related.
It is to be noted that some of respondent-registrant's goods fall under
other classes, namely Classes 09 and 18, these goods, namely, sunglasses,
wallets, and bags. are related to petitioner's goods under Class 25 for which the
subject mark "GSTAR AND LOGO" is applied . A reading of petitioner's goods
under Class 25, and of respondent-registrant's goods under Classes 09 and 18
shows that these goods are related: 1) They essentially serve the same or
complementary purpose; and 2) It might be reasonably assumed that they
originate from one manufacturer (ESSO Standard Eastern, Inc. v. Court of
Appeals, et aI., supra.). Moreover, although goods may be non-competing
because they have different descriptive properties, they may still be considered
as related if the simultaneous use on them of identical or closely similar
trademarks would be likely to cause confusion as to the origin, or personal
source, of the second user's goods (Ang. V. Teodoro, G.R. No. 48226,
December 14, 1942).
In the instant case, petitioner's goods under Class 25 and
respondent-registrant's goods under Classes 09 and 18 are all apparel worn
either as necessities by themselves or as articles to complement each/one
another. Handbags and wallets on the one hand complement clothing apparel on
the other hand. Matching handbags with clothing apparel is commonly done out
of necessity, practical considerations, or aesthetic values. For instance, nylon
sports bags are necessarily used and matched with sports attire and sports
shoes. Certain kinds of bags are matched with certain kinds of clothing for
practical considerations: For instance, large tote bags are usually matched with
casual tees, jeans, shorts, and/or pedal pushers for casual activities such as trips
to the supermarket or mall. Genuine leather and "synthetic" leather bags are
usually used for the office to complement more formal blouses and shirts.
Sunglasses are likewise apparel for the body used out of necessity, practical
considerations , or aesthetic purposes in conjunction with clothing apparel under
Class 25. Opposer's goods under Class 25 and respondent-applicant's goods
under Classes 09 and 18, thus, have the same descriptive characteristics or
physical attributes, and they essentially serve the same or complementary
purpose.
As to the first issue, thus, this Bureau rules in the affirmative.
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Section 122 of the IP Code provides that rights to a mark shall be
acquired through registration made validly in accordance with the provisions
of the IP Code (Underscoring supplied.). But how is registration validly made
and what are these provisions of the IP Code?
Section 122 of the IP Code must be, thus, read in the context of the
other provisions of the IP Code, such as, among others , Section 123.1 (d) of the
IP Code which provides:
Records show that petitioner's mark "G-STAR" was applied for
registration on May 13, 2002 and was registered on April 16, 2004 for Class 25.
Moreover, petitioner's "G-STAR (OUD) LOGO" was applied for registration on
May 14, 2004 for Class 25 goods, and such application is pending registration
before the Bureau of Trademarks (BOT). Meanwhile respondent-registrant's
mark "GSTAR and LOGO" was applied for registration on July 03, 2006 and
registered on September 17, 2007 for Classes 09, 18, and 25.
"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.
ii.
iii.
The same goods or services . . . or
Closely related goods or services. . . or
If it nearly resembles such a mark as to be likely to
deceive or cause confusion;" (Underscoring
supplied.)
Pursuant to said provision, the application for registration of the
subject mark may not be allowed for Classes 09 (shades), 18 (wallets, bags), and
25 goods (rubber shoes, sandals, closed shoes, slippers and school shoes, tank
top, blouses, blazers, jackets, short sleeve shirts, long sleeve shirts, shorts, pedal
pusher, Capri pants, slacks and jeans, belts): Respondent-registrant's mark
"GSTAR AND LOGO " is confusingly similar to petitioner's "G-STAR" and is
applied to goods under Classes 09, 18, and 25 that are similar and/or related to
petitioner's goods under Class 25; moreover, petitioner filed its applications
earlier than that of respondent-registrant, one of which has already resulted in a
registration that was issued earlier than the filing of the subject application.
As to the second issue, thus, this Bureau rules in the affirmative.
WHEREFORE , the PETITION FOR CANCELLATION is, as it is, hereby
SUSTAINED. Consequently, Registration No. 4-2006-007117 for the mark
"GSTAR and LOGO" for goods under under Class os (shades). Class 18 (Wallet~
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bags), and Class 25 (rubber shoes, sandals, closed shoes, slippers and school
shoes, tank top, blouses, blazers, jackets, short sleeve shirts, long sleeve shirts,
shorts, pedal pusher, Capri pants, slacks and jeans, belts) issued on September
17, 2007 is hereby ordered CANCELED.
Let the filewrapper of this case be forwarded to the Bureau of
Trademarks (BOT) for appropriate action in accordance with this Decision.
SO ORDERED.
Makati City, November 27, 2009.
LUTA BELTRAN-ABELARDO
rector, Bureau of Legal Affairs ~.
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