FACTS: Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing under Philippine laws. It is the emergent entity in a merger with UFC Philippines, Inc. that was completed on February 11, 2009. Respondent Barrio Fiesta Manufacturing Corporation (respondent) is likewise a corporation organized and existing under Philippine laws.
On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark “PAPA BOY & DEVICE” for goods under Class 30, specifically for “lechon sauce.” The Intellectual Property Office (IPO) published said application for opposition in the IP Phil. e-Gazette released on September 8, 2006. The mark appears as follows:
On December 11, 2006, petitioner filed with the IPO-BLA a Verified Notice of Opposition to the above-mentioned application and alleged that:
1. The mark “PAPA” for use on banana catsup and other similar goods was first used [in] 1954 by Neri Papa, and thus, was taken from his surname;
2. After using the mark “PAP A” for about twenty-seven (27) years, Neri Papa subsequently assigned the mark “PAPA” to Heman D. Reyes who, on September 17, 1981, filed an application to register said mark “PAP A” for use on banana catsup, chili sauce, achara, banana chips, and instant ube powder;
3. On August 14, 1983, Heman D. Reyes was issued Certificate of Registration No. 32416;
4. [Certificate of] Registration No. 32416 was subsequently assigned to the following in successive fashion: Acres & Acres Food, Inc., Southeast Asia Food, Inc., Heinz-UFC Philippines, Inc., and Opposer UFC Philippines, Inc.;
5. Last October 28, 2005, Heinz-UFC Philippines, Inc. filed Application Serial No. 4-2005-010788 which, in effect, is a re-registration of Registration No. 32416 which expired on August 11, 2003;
6. Heman D. Reyes also filed on March 04, 1982 an application to register in the Supplemental Register the “PAPA BANANA CATSUP Label”;
7. On August 11, 1983, Heman D. Reyes was issued Certificate of Registration No. SR-6282 which was subsequently assigned to Acres & Acres Food, Inc., Southeast Asia Food, Inc., Heinz-UFC Philippines, Inc.;
8. After its expiration, Opposer filed on November 15, 2006 Trademark Application Serial No. 4-2006-012346 for the re-registration of the “PAP A Label Design”;
9. The mark “PAP A KETSARAP” for use on banana sauce falling under Class 30 was also registered in favor of Acres & Acres Food, Inc. under Registration No. 34681 issued on August 23, 1985 and renewed last August 23, 2005 by Heinz-UFC Philippines, Inc. for ten (10) years;
10. On November 07, 2006, Registration No. 34681 was assigned to Opposer;
11. Opposer has not abandoned the use of the mark “PAP A” and the variations thereof as Opposer has continued their use up to the present;
12. The mark “PAPA BOY & DEVICE” is identical to the mark “PAPA” owned by Opposer and duly registered in its favor, particularly the dominant feature thereof;
13. [With the] dominant feature of respondent-applicant’s mark “PAPA BOY & DEVICE”, which is Opposer’s “PAPA” and the variations thereof, confusion and deception is likely to result: The consuming public, particularly the unwary customers, will be deceived, confused, and mistaken into believing that respondent-applicant’s goods come from Opposer or are authorized by Opposer to Opposer’s prejudice, which is particularly true considering that Opposer’s sister company, Southeast Asia Food, Inc., and its predecessors-in-interest have been major manufacturers and distributors of lechon sauce and other table sauces since 1965 under its registered mark “Mang Tomas”;
14. Respondent-applicant’s mark “PAPA BOY & DEVICE” which nearly resembles Opposer’s mark “PAPA” and the variations thereof will impress upon the gullible or unsuspecting public that it is the same or related to Opposer as to source because its dominant part is the same as Opposer’s mark and, thus, will likely be mistaken to be the mark, or related to, or a derivative or variation of, Opposer’s mark;
15. The goods covered by respondent-applicant’s application fall under Class 30, the same Class under which Opposer’s goods enumerated in its earlier issued registrations;
16. The test of dominancy is now explicitly incorporated into law in Section 155 .1 of the IP Code which defines infringement as the colorable imitation of a registered mark or a dominant feature thereof, and is provided for by jurisprudence;
17. As a corporation also engaged in the food business, Respondent-applicant knew and/or ought to know that Opposer and its predecessors-in-interest have been using the mark “PAPA” and the variations thereof for the last fifty-two (52) years while its sister company is engaged in the business of manufacturing and distributing “lechon sauce” and other table sauces for the last forty-one (41) years;
18. The approval of the subject application will violate Opposer’s right to the exclusive use of its registered mark “PAPA” and the variations thereof per Section 138 of the IP Code;
19. The approval of the subject application has caused and will continue to cause great and irreparable damage and injury to Opposer;
20. Respondent-applicant filed the subject application fraudulently and in bad faith; and
21. Respondent-applicant is not entitled to register the subject mark in its favor.
In its verified opposition before the IPO, petitioner contended that “PAPA BOY & DEVICE” is confusingly similar with its “PAPA” marks inasmuch as the former incorporates the term “PAP A,” which is the dominant feature of petitioner’s “PAPA” marks. Petitioner averred that respondent’s use of “PAPA BOY & DEVICE” mark for its lechon sauce product, if allowed, would likely lead the consuming public to believe that said lechon sauce product originates from or is authorized by petitioner, and that the “PAPA BOY & DEVICE” mark is a variation or derivative of petitioner’s “PAPA” marks. Petitioner argued that this was especially true considering that petitioner’s ketchup product and respondent’s lechon sauce product are related articles that fall under the same Class 30.
Petitioner alleged that the registration of respondent’s challenged mark was also likely to damage the petitioner, considering that its former sister company, Southeast Asia Food, Inc., and the latter’s predecessors-in-interest, had been major manufacturers and distributors of lechon and other table sauces since 1965, such as products employing the registered “Mang Tomas” mark.
In its Verified Answer, respondent argued that there is no likelihood of confusion between petitioner’s family of “PAPA” trademarks and respondent’s “PAPA BOY & DEVICE” trademark. Respondent raised affirmative defenses and we quote the relevant ones below:
3. Opposer cites several of its following marks in support of its opposition to the application but an examination of said marks [reveals] that these have already expired and/or that no confusing similarity exists x xx;
4. Assuming that the mark “PAPA KETSARAP” had been timely renewed on August 23, 2005 for “banana sauce” under Class 30, the same is not a hindrance to the successful registration of the mark “PAPA BOY & DEVICE”: Jurisprudence provides that a certificate of registration confers upon the trademark owner the exclusive right to use its own symbol only to those goods specified in the certificate subject to the conditions and limitations stated therein;
5. As a result, Opposer’s right to use the mark “PAPAKETSARAP” is limited to the products covered by its certificate of registration which is Class 30 for banana sauce;
6. Contrary to Opposer’s belief, the dominant features of Respondent-applicant’s mark “PAPA BOY & DEVICE” are the words “PAPA BOY” and the representation of a smiling hog-like character gesturing the thumbs-up sign and wearing a traditional Filipino hat and scarf while the dominant feature of Opposer’s mark “PAPA KETSARAP” are the words “Papa” and “Ketsarap”, not the word “Papa”; and the word “Ketsarap ” is more prominently printed and displayed in the foreground than the word “Papa” for which reasons opposer’s reference to the Dominancy Test fails;
7. Opposer’s allegation that the registration of Respondent-applicant’s mark “PAPA BOY & DEVICE” will damage and prejudice the mark “MANG TOMAS” is irrelevant considering that Opposer’s basis for filing this opposition is the alleged confusing similarity between Respondent-applicant’s mark and Opposer’s mark “PAPA KETSARAP”, not the mark “MANG TOMAS”;
8. Respondent-applicant’s mark “PAPA BOY & DEVICE” is neither identical nor confusingly similar to Opposer’s mark “PAPA KETSARAP”: Respondent-applicant’s mark “PAPABOY & DEVICE” is an arbitrary mark which differs in overall sound, spelling, meaning, style, configuration, presentation, and appearance from Opposer’s mark “PAPA KETSARAP”;
9. The dissimilarities between the marks are so distinct, thus, confusion is very unlikely: While Opposer’s mark is a plain word mark, Respondent-applicant’s mark “PAPA BOY & DEVICE” is much more intricate and distinctive such as Opposer’s mark not having the words “Lechon Sauce” printed inside a blue ribbon-like device which is illustrated below the words “PAPA BOY”, Opposer’s mark not having a prominent smiling hog-like character gesturing a thumbs-up sign and wearing a Filipino hat and scarf stands beside the words “PAPA BOY”, and Opposer’s mark not having the words “Barrio Fiesta” albeit conspicuously displayed above the mark, all which leave no doubt in the consumer’s mind on the product that he is purchasing;
10. Aside from the fact that Respondent-applicant’s mark “PAPA BOY & DEVICE” is distinct and different in appearance, spelling, sound, meaning, and style from Opposer’s mark “PAPA KETSARAP”, the difference in the goods covered by both marks is obvious: Since the goods covered by Respondent-applicant’s mark is unrelated and non-competing to those covered by Opposer’s mark, the doctrine allowing the registrations of marks covering unrelated and non-competing goods as enunciated by the Supreme Court is therefore applicable in this case;
11. Respondent-applicant’s mark cannot be confusingly similar to Opposer’s mark considering that the products covered by these marks are different: While Respondent-applicant’s mark “PAPA BOY & DEVICE” covers lechon sauce under Class 30, Opposer’s mark “PAPA KETSARAP” covers banana sauce;
12. If a consumer is in the market for banana sauce, he will not buy lechon sauce and vice-versa and as a result, the margin of error in the acquisition of one from the other is simply remote;
13. Respondent-applicant is the exclusive owner of the mark “PAPA BOY & DEVICE” for lechon sauce under Class 30: The words “PAPA BOY” is a combination of the nickname of Bonifacio Ongpauco who is one of Respondent-applicant’s incorporators and founders” BOY”- and the word “PAPA” as Bonifacio Ongpauco’s mother, Sixta P. Evangelista, had been fondly known as “Mama Chit”, making Respondent-applicant the prior adopter, user, and applicant of the mark “PAPA BOY & DEVICE” in the Philippines;
14. To protect its ownership over the mark “PAPA BOY & DEVICE” considering that it is the first to adopt and use said mark, Respondent-applicant applied for its registration under Application Serial No. 4-2002-002757 for Class 30, and said application was found registrable by the Examiner as. a consequence of which the same was recommended for allowance after undergoing a thorough process of examination, which recommendation was then approved by the Director of the Bureau of Trademarks (BOT);
15. Respondent-applicant’s mark “PAPA BOY & DEVICE” has been commercially used in the Philippines;
16. Respondent-applicant’s mark “PAPA BOY & DEVICE” has been promoted and advertised for a considerable duration of time and over wide geographical areas: Respondent-applicant has invested tremendous amount of resources in the promotion of its mark “PAPA BOY & DEVICE” through various media including print publications and promotional materials;
17. The widespread local commercial use of the subject mark by Respondent-applicant to distinguish and identify its various high-quality consumer products has earned Respondent-applicant a well-deserved business reputation and goodwill;
18. Respondent-applicant’s mark is distinctive and capable of identifying its goods and distinguishing them from those offered for sale by others in the market including Opposer’s goods for which reason no confusion will result because Respondent-applicant’s mark is for lechon sauce while Opposer’s mark is for banana sauce; and
19. The presence of a common prefix “PAPA” in the marks of both parties does not render said marks identical or confusingly similar: Opposer cannot exclusively appropriate said prefix considering that other marks such as “Papa Heinz Pizza”, “Papa Heinz Sausage”, “Papa Beaver”, “Papa Pop”, “Pizza Papa John’s & Design”, “Papadoods”, and “Papa in Wine and Device” are valid and active.
BLA: The IPO-BLA rendered a Decision on March 26, 2008 sustaining petitioner’s Opposition and rejecting respondent’s application for “PAPA BOY & DEVICE
IPO DIRECTOR GENERAl: Dismissed the appeal.
ISSUE: WON THE RESPONDENTS TRADEMARK IS REGISTRABLE.
HELD: NO. A scrutiny of petitioner’s and respondent’s respective marks would show that the IPO-BLA and the IPO Director General correctly found the word “PAPA” as the dominant feature of petitioner’s mark “PAPA KETSARAP.” Contrary to respondent’s contention, “KETSARAP” cannot be the dominant feature of the mark as it is merely descriptive of the product. Furthermore, it is the “PAPA” mark that has been in commercial use for decades and has established awareness and goodwill among consumers.
We likewise agree with the IPO-BLA that the word “PAPA” is also the dominant feature of respondent’s “PAPA BOY & DEVICE” mark subject of the application, such that “the word ‘PAPA’ is written on top of and before the other words such that it is the first word/figure that catches the eyes.”49 Furthermore, as the IPO Director General put it, the part of respondent’s mark which appears prominently to the eyes and ears is the phrase “PAPA BOY” and that is what a purchaser of respondent’s product would immediately recall, not the smiling hog.
We quote the relevant portion of the IPO-BLA decision on this point below:
A careful examination of Opposer’s and Respondent-applicant’s respective marks shows that the word “PAPA” is the dominant feature: In Opposer’s marks, the word “PAPA” is either the mark by itself or the predominant word considering its stylized font and the conspicuous placement of the word “PAPA” before the other words. In Respondent-applicant’s mark, the word “PAPA” is written on top of and before the other words such that it is the first word figure that catches the eyes. The visual and aural impressions created by such dominant word “PAPA” at the least is that the respective goods of the parties originated from the other, or that one party has permitted or has been given license to the other to use the word “PAPA” for the other party’s product, or that there is a relation/connection between the two parties when, in fact, there is none. This is especially true considering that the products of both parties belong to the same class and are closely related: Catsup and lechon sauce or liver sauce are both gravy-like condiments used to spice up dishes. Thus, confusion of goods and of business may likely result.
Under the Dominancy Test, the dominant features of the competing marks are considered in determining whether these competing marks are confusingly similar. Greater weight is given to the similarity of the appearance of the products arising from the adoption of the dominant features of the registered mark, disregarding minor differences. The visual, aural, connotative, and overall comparisons and impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace are the main considerations (McDonald’s Corporation, et al., v. L. C. Big Mak Burger, Inc., et al., G. R. No.143993, August 18, 2004; Societe Des Produits Nestle, S. A.” et al. v. Court of Appeals, et al., G. R. No. 112012, April 4, 2001). If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. (Lim Hoa v. Director of Patents, 100 Phil. 214 ); Co Tiong Sa v. Director of Patents, et al., G. R. No. L-5378, May 24, 1954). Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate (Lim Hoa v. Director of Patents, supra, and Co Liang Sa v. Director of Patents, supra). Actual confusion is not required: Only likelihood of confusion on the part of the buying public is necessary so as to render two marks confusingly similar so as to deny the registration of the junior mark (Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, 137 Phil. 838 ).
As to the first issue of whether PAPA BOY is confusingly similar to Opposer’s PAPA mark, this Bureau rules in the affirmative.
The records bear the following:
1. Registration No. 32416 issued for the mark “PAPA” under Class 29 goods was deemed expired as of February 11, 2004 (Exhibit “A” attached to the VERIFIED NOTICE OF OPPOSITION). Application Serial No. 4-2005-010788 was filed on October 28, 2005 for the same mark “PAPA” for Class 30 goods and Registration No. 42005010788 was issued on March 19, 2007;
2. Opposer was issued for the mark “PAPA BANANA CATSUP LABEL” on August 11, 1983 Registration No. SR-6282 for Class 30 goods in the Supplemental Register, which registration expired in 2003. Application Serial No. 4-2006-012364 was filed for the mark “PAPA LABEL DESIGN” for Class 30 goods on November 15, 2006, and Registration No. 42006012364 was issued on April 30, 2007; and
3. Lastly, Registration No. 34681 for the mark “PAPA KETSARAP” for Class 30 goods was issued on August 23, 1985 and was renewed on August 23, 2005.
Though Respondent-applicant was first to file the subject application on April 04, 2002 vis-a-vis the mark “PAP A” the filing date of which is reckoned on October 28, 2005, and the mark “PAPA LABEL DESIGN” the filing date of which is reckoned on November 15, 2006, Opposer was able to secure a registration for the mark “PAPA KETSARAP” on August 23, 1985 considering that Opposer was the prior registrant and that its renewal application timely filed on August 23, 2005.
x x x x
Pursuant to [Section 123 .1 (d) of the IP Code], the application for registration of the subject mark cannot be allowed considering that Opposer was earlier registrant of the marks PAPA and PAPA KETSARAP which registrations were timely renewed upon its expiration. Respondent-applicant’s mark “PAPA BOY & DEVICE” is confusingly similar to Opposer’s mark “PAPA KETSARAP” and is applied to goods that are related to Opposer’s goods, but Opposer’s mark “PAPA KETSARAP” was registered on August 23, 1985 per Certificate of Registration No. 34681, which registration was renewed for a period of 10 years counted from August 23, 2005 per Certificate of Renewal of Registration No. 34681 issued on August 23, 2005. To repeat, Opposer has already registered a mark which Respondent-applicant’s mark nearly resembles as to likely deceive or cause confusion as to origin and which is applied to goods to which respondent-applicant’s goods under Class 30 are closely related.1âwphi1
Section 138 of the IP Code provides that a certificate of registration of a mark is 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 and those that are related thereto specified in the certificate.50
We agree that respondent’s mark cannot be registered. Respondent’s mark is related to a product, lechon sauce, an everyday all-purpose condiment and sauce, that is not subjected to great scrutiny and care by the casual purchaser, who knows from regular visits to the grocery store under what aisle to find it, in which bottle it is contained, and approximately how much it costs. Since petitioner’s product, catsup, is also a household product found on the same grocery aisle, in similar packaging, the public could think that petitioner had expanded its product mix to include lechon sauce, and that the “PAPA BOY” lechon sauce is now part of the “PAPA” family of sauces, which is not unlikely considering the nature of business that petitioner is in. Thus, if allowed. registration, confusion of business may set in, and petitioner’s hard-earned goodwill may be associated to the newer product introduced by respondent, all because of the use of the dominant feature of petitioner’s mark on respondent’s mark, which is the word “PAPA.” The words “Barrio Fiesta” are not included in the mark, and although printed on the label of respondent’s lechon sauce packaging, still do not remove the impression that “PAPA BOY” is a product owned by the manufacturer of “PAPA” catsup, by virtue of the use of the dominant feature. It is possible that petitioner could expand its business to include lechon sauce, and that would be well within petitioner’s rights, but the existence of a “PAPA BOY” lechon sauce would already eliminate this possibility and deprive petitioner of its rights as an owner of a valid mark included in the Intellectual Property Code.
The Court of Appeals likewise erred in finding that “PAPA,” being a common term of endearment for one’s father, is a word over which petitioner could not claim exclusive use and ownership. The Merriam-Webster dictionary defines “Papa” simply as “a person’s father.” True, a person’s father has no logical connection with catsup products, and that precisely makes “PAPA” as an arbitrary mark capable of being registered, as it is distinctive, coming from a family name that started the brand several decades ago. What was registered was not the word “Papa” as defined in the dictionary, but the word “Papa” as the last name of the original owner of the brand. In fact, being part of several of petitioner’s marks, there is no question that the IPO has found “PAPA” to be a registrable mark.
Respondent had an infinite field of words and combinations of words to choose from to coin a mark for its lechon sauce. While its claim as to the origin of the term “PAPA BOY” is plausible, it is not a strong enough claim to overrule the rights of the owner of an existing and valid mark. Furthermore, this Court cannot equitably allow respondent to profit by the name and reputation carefully built by petitioner without running afoul of the basic demands of fair play.