ABS-CBN PUBLISHING INC. vs. DIR.

OF THE BUREAU OF THE TRADEMARKS AND

PATENTS

Facts:

In 2004, the petitioner filed with the Intellectual Property Office of the Philippines (IPO) its
application for the registration of its trademark "METRO" under class 16 of the Nice
classification, with specific reference to "magazines." The case was assigned to
Examiner Arlene M. Icban (Examiner Icban), who, after a judicious examination of the
application, refused the applicant mark's registration.

According to Examiner Icban, the applicant mark is identical with three other cited marks,
and is therefore unregistrable according to Section 123.1(d) of the Intellectual Property
Code of the Philippines (IPC).The cited marks were identified as (1) "Metro" (word) by
applicant Metro International S.A. (2) "Metro" (logo) also by applicant Metro International SA,
and (3) "Inquirer Metro" by applicant Philippine Daily Inquirer, Inc.

The petitioner appealed the assessment of Examiner Icban before the Director of the Bureau
of Trademarks of the IPO, who eventually affirmed Examiner Icban's findings. The decision
averred that the applicant and cited marks were indeed confusingly similar, so much so that
there may not only be a confusion as to the goods but also a confusion as to the source or
origin of the goods.

Petitioner appealed to the Office of the Director General (ODG) of the IPO. After the
submission of the memoranda from the parties, the ODG, rendered a Decision which upheld
Examiner Icban's assessment and the Bureau Director's decision. According to the ODG;
there is no merit in the petitioner's appeal because (1) the applicant and cited marks are
identical and confusingly similar, (2) the petitioner's mark was deemed abandoned under the
old Trademark Law, and thus, petitioner's prior use of the same did not create a vested right
under the IPC, and (3) the applicant mark has not acquired secondary meaning.

Issue:

Whether or not the ODG was correct in refusing to register the applicant mark for being
identical and confusingly similar with the cited marks already registered with the IPO.

Ruling:

According to Section 123.1(d) of the Intellectual Property Code of the Philippines (IPC),

“a mark cannot be registered if it is "identical with a registered mark belonging to a different

proprietor or a mark with an earlier filing or priority date," in respect of the following: (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.”

To determine whether a mark is to be considered as "identical" or that which is confusingly

similar with that of another, the Court has developed two (2) tests: the dominancy and
holistic tests. While the Court has time and again ruled that the application of the tests is on a
case to case basis, upon the passage of the IPC, the trend has been to veer away from the
usage of the holistic test and to focus more on the usage of the dominancy test. As
stated by the Court in the case of McDonald's Corporation vs. L.C. Big Mak Burger, Inc.,
the "test of dominancy is now explicitly incorporated into law in Section 155.1 of the
Intellectual Property Code which defines infringement as the 'colorable imitation of a
registered mark x x x or a dominant feature thereof.'" This is rightly so because Sec.
155.1 provides that:
SECTION 155. Remedies; Infringement. - Any person who shall, without the
consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation

of a registered mark or the same container or a dominant feature thereof in
connection with the sale, offering for sale, distribution, advertising of any goods or
services including other preparatory steps necessary to carry out the sale of any
goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or x x x.

In using this test, focus is to be given to the dominant features of the marks in question. In the
1954 case of Co Tiong Sa vs. Director of Patents, the Court, in using the dominancy test,
taught that:
But differences of variations in the details of one trademark and of another are not
the legal!y accepted tests of similarity in trademarks. It has been consistently held
that the question of infringement of a trademark is to be determined by the test of
dominancy. Similarity in size, form, and color, while relevant, is not
conclusive. 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.

In other words, in committing the infringing act, the infringer merely introduces negligible
changes in an already registered mark, and then banks on these slight differences to state
that there was no identity or confusing similarity, which would result in no infringement. This
kind of act, which leads to confusion in the eyes of the public, is exactly the evil that the
dominancy test refuses to accept. The small deviations from a registered mark are insufficient
to remove the applicant mark from the ambit of infringement.

In the present case, the dominant feature of the applicant mark is the word "METRO" which is
identical, both visually and aurally, to the cited marks already registered with the IPO. As held
by the ODG-and correctly at that -
x x x there is no dispute that the subject and cited marks share the same
dominant word, "Metro". Even if, as the Appellant (petitioner herein) points out,
the second cited mark owned by Metro International contains an accompanying
device, and the third cited mark contains the terms "Philippine Daily Inquirer", (sic)
the dominant feature of the subject and cited marks is still clearly the word
"Metro", (sic) spelled and pronounced in exactly the same way. The identity
between the marks would indubitably result in confusion of origin as well as goods.
[51] (Emphasis and underscoring supplied, citations omitted)
Also, greater relevance is to be accorded to the finding of Examiner Icban on the confusing
similarity between, if not the total identity of, the applicant and cited marks. Examiner Icban, in
reiterating with finality her earlier findings, said that the applicant and cited marks are " the
same in sound, spelling, meaning, overall commercial impression, covers substantially the
same goods and flows through the same channel of trade," which leads to no other
conclusion than that "confusion as to the source of origin is likely to occur." This is also the
tenor of Examiner Icban's "Final Rejection" of the application, which stated that:
The findings of Examiner Icban, reviewed first by the Director of the Bureau of Trademarks,
and again by the Director General of the IPO, are the result of a judicious study of the
case by no less than the government agency duly empowered to examine applications
for the registration of marks.

The petitioner asserts that it has a vested right over the applicant mark because Metro Media
Publishers, Inc. (Metro Media), the corporation from which the petitioner acquired the
applicant mark, first applied for the registration of the same under the old Trademark Law, and
since then, actually used the applicant mark in commerce. The petitioner belabors the point
that under the old Trademark law, actual use in commerce is a prerequisite to the acquisition
of ownership over a trademark and a trade name. The petitioner even went on further in
asserting that its actual use of the applicant mark enabled it to automatically acquire
trademark rights, which should have extended even upon the promulgation of the IPC in
1998.

Two things must be said of this argument.

First, there is no question that the petitioner's predecessor already applied for the registration
of the applicant mark "METRO" There is likewise no question that as early as 1989, Metro
Media has already used the applicant mark "METRO" in its magazine publication. At that
point, Metro Media exercised all the rights conferred by law to a trademark applicant.

Second, however, the petitioner itself admitted in its petition that its application/registration
with the IPO under Application No. 4-1994-096162 was already "deemed abandoned."

While it is quite noticeable that the petitioner failed to discuss the implications of this
abandonment, it remains a fact that once a trademark is considered abandoned, the
protection accorded by the IPC, or in this case the old Trademark Law, is also
withdrawn. The petitioner, in allowing this abandonment, cannot now come before the
Court to cry foul if another entity has, in the time that it has abandoned its trademark
and in full cognizance of the IPC and the IPO rules, registered its own.

Also, as correctly pointed out by the ODG, this abandonment is the very reason why
the petitioner lost its rights over its trademark, and that it is also the reason why, after
twenty years (20) from the initial application and after actual use of the applicant mark,
the petitioner once again came before the IPO to apply for registration.

But like the petitioner's earlier argument, this does not hold water. Section 3, Rule 18 of the
Rules of Procedure for Intellectual Property Cases provides for the legal presumption
that there is likelihood of confusion if an identical mark is used for identical goods. The
provision states:
SEC. 3. Presumption of likelihood of confusion. - Likelihood of confusion shall
be presumed in case an identical sign or mark is used for identical goods or
services.

In the present case, the applicant mark is classified under "magazines," which is found in
class 16 of the Nice classification. A perusal of the records would reveal, however, that the
cited marks "METRO" (word) and "METRO" (logo) are also both classified under magazines.
In fact, Examiner Icban found that the cited marks were used on the following classification of
goods.
Thus, the presumption arises.

Even then, it must be emphasized that absolute certainty of confusion or even actual
confusion is not required to refuse registration. Indeed, it is the mere likelihood of confusion
that provides the impetus to accord protection to trademarks already registered with the IPO.
The Court cannot emphasize enough that the cited marks "METRO" (word) and "METRO"
(logo) are identical with the registrant mark "METRO" both in spelling and in sound. In fact, it
is the same exact word. Considering that both marks are used in goods which are classified
as magazines, it requires no stretch of imagination that a likelihood of confusion may occur.
Again, the Court points to the finding of Examiner Icban which was reviewed and upheld
twice: one by the Director of the Bureau of Trademarks and another by the Director General
of the IPO.

As a final point, the petitioner, in the pleadings submitted, manifested that the cited marks are
no longer valid. It said that: (1) the cited mark "METRO" (logo) was removed from the IPO
register for non-use, citing the IPO online database, (2) the cited mark "INQUIRER METRO,"
while valid according to the IPO online database, was cancelled according to a certain
certification from the Bureau of Trademarks of the IPO; and (3) the cited mark "METRO"
(word) already expired on June 26, 2016 according to yet another certification from the IPO.

A perusal of the records, however, would reveal that these alleged de -registration and
cancellation all allegedly occurred after the ODG has already ruled on the instant case.
Considering that the Court is not a trier of facts, the Court could therefore not make a
determination of the validity and accuracy of the statements made in the petitioner's
manifestation. As such, the Court, through the limited facts extant in the records, could not
give weight and credence thereto.

Nonetheless, not all is lost for the petitioner. Should it be true that the cited marks, which were
the basis of the IPO in refusing to register the applicant mark, were already de-registered and
cancelled, nothing prevents the petitioner from once again applying for the registration of the
applicant mark before the IPO.

WHEREFORE, premises considered, the Resolutions of the Court of Appeals dated May 20,
2014 and April 15, 2015, are hereby AFFIRMED without prejudice to the petitioner's refiling of
its application for the registration of the trademark "METRO" before the Intellectual Property
Office.