Sample Response To OA

The Director
Bureau of Trademarks
Intellectual Property Office
World Finance Plaza Bldg.,
#28 Upper McKinley Road
McKinley Hill Town Center,
Fort Bonifacio, Taguig City
S I R:
Re:
Name of
applicant/owner
Filing Date:
International
Registration Number
Title
Name of Bureau
Name of Examiner
Document Code and
Title
Agent Code
T031 Response to Office Action

8002
This is in response to your Official Action (Document No. ____/______) with original
notification date on February 26, 2016, and the subject of a Grant of Extension to File Response
dated May 26, 2016.
In response to the finding that the proposed mark _________________ nearly
resembles a registered mark belonging to a different proprietor, with its resemblance likely to
deceive or cause confusion, Applicant respectfully disagrees. Confusion being a relative
concept, the mere fact that two marks cover goods within a similar class, as in this case, is not
enough proof to show that a likelihood of confusion exists. In the same vein, a mere simple
comparison of the marks and the class it covers is insufficient for a finding of a likelihood of
confusion, whether it is in relation to goods or as to business.
In numerous cases, the Supreme Court has allowed the registration of similar, even
identical marks for as long as the likelihood of confusion is not present. This was initially held in
the case of Mighty Corporation, et al., vs. E. & J. Gallo Winery, et al. (434 SCRA 473, 2004),
where the mark GALLO was allowed to be registered for cigarettes despite an existing
registration of the exact same mark for wine.
The said ruling is consistent with the other rulings of the Supreme Court in the cases of
Acoje Mining Co., Inc. vs. The Director of Patents (38 SCRA 480, 1971) for the use of the
mark LOTUS for soy sauce and oil, both under Class 47; Philippine Refining Co., Inc. vs. Ng
Sam (115 SCRA 472, 1982) for the use of the mark CAMIA for ham on one hand, and lard,
butter and cooking oil among other things, both under Class 47; Hickok Manufacturing Co.,
Inc. vs. Court of Appeals and Santos Lim Bun Liong (116 SCRA 388, 1982) for the use of
the HICKOK mark for shoes made in Marikina, against the petitioners earlier registration of
the same mark for handkerchiefs, briefs, belts and wallets; Esso Standard Eastern, Inc., vs.
Court of Appeals (116 SCRA 336), for the use of the mark ESSO in cigarettes, despite an
earlier registration for petroleum products, and; Canon Kabushi Kaisha vs. Court of Appeals
and NSR Rubber Corporation (336 SCRA 266, 2000), where the mark CANON was allowed
use for sandals, despite an earlier registration of the same trademark for paint, chemicals, toner
and dye.
More recently, in the case of Taiwan Kolin Corporation, Ltd. vs. Kolin Electronics Co.
Inc., (G.R. No. 209843, March 25, 2015) the Supreme Court allowed the registration of the
petitioners KOLIN mark, notwithstanding the fact that both marks cover goods under class 9,
and despite the prior registration of respondents identical KOLIN mark. The High Court
ratiocinated that mere uniformity in categorization, by itself, does not automatically preclude the
registration of what appears to be an identical mark, if that be the case. The fact that goods fall
under the same categories in the Nice Classification (NCL) is not the sole determining factor to
determine a possible violation of intellectual property rights.
Applying the principles laid out in the aforementioned cases, it can be easily gleaned
that the dominant features of the proposed and cited mark, namely ______ and _______,
have different definitions. The difference between the use of _________ and ______
becomes more pronounced when taking into consideration the roles the companies play in their
respective industries.
The Applicants proposed mark, is one that is suggestive in nature. When coupled with
the applicants position as a _________________, _______________ would connote that the
watches the Applicant makes which bear the said mark are different from other watches
available in the market, and go against the usual convention.
The cited mark on the other hand, ______________________, when coupled with the
registrants position as a multinational technology company, would literally mean that the
company uses a different thought process in developing its technology. Suggestively, the
implication is that the technology developed by the company is unlike that of any other
technology company, and does not specifically point to the watchmaking industry.
Lastly, the Applicants proposed mark is already registered, or pending registration in
different territories abroad. Attached to this response is a list of the Applicants active
applications for the proposed mark.
From the foregoing, what becomes clearer is the fact that confusion, or the likelihood
thereof, is close to nil.
WHEREFORE, it is respectfully requested that a favorable reconsideration on the merits
of this application be given, the objection thereto be withdrawn, and that this application be
recommended for allowance in due course.
Very respectfully,
By:

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The Director

T031 Response to Office Action

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