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    ALIGATO Canon Kabushiki V NSR Trademark

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    Shiva
    The document discusses a trademark dispute between Canon Kabushiki and NSR Rubber over use of the mark CANON. It analyzes whether NSR Rubber's registration of CANON for sandals infringes on Canon Kabushiki's rights to the mark for other goods. The court ultimately finds that the goods are sufficiently different and that Canon Kabushiki failed to show the mark was well-known, so NSR Rubber's registration is allowed.

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    ALIGATO Canon Kabushiki V NSR Trademark

    Uploaded by

    Shiva
    61 views15 pages
    The document discusses a trademark dispute between Canon Kabushiki and NSR Rubber over use of the mark CANON. It analyzes whether NSR Rubber's registration of CANON for sandals infringes on Canon Kabushiki's rights to the mark for other goods. The court ultimately finds that the goods are sufficiently different and that Canon Kabushiki failed to show the mark was well-known, so NSR Rubber's registration is allowed.

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    ALIGATO Canon Kabushiki v NSR Trademark

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    The document discusses a trademark dispute between Canon Kabushiki and NSR Rubber over use of the mark CANON. It analyzes whether NSR Rubber's registration of CANON for sandals infringes on Canon Kabushiki's rights to the mark for other goods. The court ultimately finds that the goods are sufficiently different and that Canon Kabushiki failed to show the mark was well-known, so NSR Rubber's registration is allowed.

    Copyright:

    © All Rights Reserved
    Download as PPTX, PDF, TXT or read online from Scribd
    Download as pptx, pdf, or txt
    61 views15 pages

    ALIGATO Canon Kabushiki V NSR Trademark

    Uploaded by

    Shiva
    The document discusses a trademark dispute between Canon Kabushiki and NSR Rubber over use of the mark CANON. It analyzes whether NSR Rubber's registration of CANON for sandals infringes on Canon Kabushiki's rights to the mark for other goods. The court ultimately finds that the goods are sufficiently different and that Canon Kabushiki failed to show the mark was well-known, so NSR Rubber's registration is allowed.

    Copyright:

    © All Rights Reserved
    Download as PPTX, PDF, TXT or read online from Scribd
    Download as pptx, pdf, or txt
    of 15

    CANON KABUSHIKI

    KAISHA v
    COURT OF APPELS AND
    NSR RUBBER
    CORPORATION
    January 15, 1985
    NSR Rubber Corporation (NSR Rubber) filed an
    application for registration of the mark CANON for
    sandals in the Bureau of Patents, Trademarks, and
    Technology Transfer (BPTTT).

    Canon Kabushiki Kaisha (Canon Kabushiki) filed a


    VERIFIED NOTICE OF OPPOSITION, alleging that it will be
    damaged by the registration of the trademark CANON
    in the name of NSR Rubber.

    Canon Kabushiki moved to declare NSR Rubber in


    default for its failure to file its answer within the
    prescribed period.
    BPTTT declared NSR
    Rubber in default
    and allowed Canon
    Kabushiki to present
    its evidence ex-
    parte
    Certificates of Registration for the Application for Registration for the
    mark CANON in various countries trademark CANON covering:
    covering:

    Goods belonging to Class 2 Goods belonging to Class 25

    Paints Sandals
    Chemical Products
    Toner, and
    Dye Stuff
    November 10, 1992
    BPTTT issued its decision dismissing the
    opposition of Canon Kabushiki and giving
    due course to NSR Rubber’s application for
    the trademark CANON.

    February 16, 1993, Canon Kabushiki


    appealed to CA.
    CA affirmed the decision of BPTTT.
    ISSUE
    WON the granting of NSR Rubber’s application for
    registration for the mark CANON for sandals is proper

    YES
    Ordinarily, the ownership of a
    trademark or tradename is a
    property right that the owner is
    entitled to protect as mandated by
    the Trademark Law.

    However, when a trademark is used


    by a party for a product in which the
    other party does not deal, the use of
    the same trademark on the latter’s
    product cannot be validly objected
    to.
    Certificates of Registration for the Application for Registration for the
    mark CANON in various countries trademark CANON covering:
    covering:

    Goods belonging to Class 2 Goods belonging to Class 25

    Paints Sandals
    Chemical Products
    Toner, and
    Dye Stuff
    Clearly, there is a world of difference between the paints, chemical products, toner,
    and dyestuff of Canon Kabushiki and the sandals of NSR Rubber.
    In cases of confusion of business or
    origin, the question that usually arises is
    whether the respective goods or services
    of the senior user and the junior user are
    so related as to likely cause confusion of
    business or origin, and thereby render
    the trademark or tradenames
    confusingly similar.
    Goods are related when they belong to
    the same class or have the same
    descriptive properties; when they
    possess the same physical attributes or
    essential characteristics with reference
    to their form, composition, texture or
    quality.

    They may also be related because they


    serve the same purpose or are sold in
    grocery stores.
    Thus, in Esso Standard Eastern, Inc. vs. Court of
    Appeals

    "The products of each party move along and are disposed


    through different channels of distribution. The Petroleum products
    are distributed principally through gasoline service and lubrication
    stations, automotive shops and hardware stores. On the other
    hand, thecigarettes are sold in sari-sari stores, grocery store, and
    other small distributor outlets. The cigarettes are even peddled in
    the streets while gasul burners are not. Finally, there is a marked
    distinction between oil and tobacco, as well as between
    petroleum and cigarettes. Evidently, in kind and nature the
    products of the partiesare poles apart."
    ISSUE
    WON Canon Kabushiki has the exclusive right to the mark CANON
    because it forms part of its corporate name or tradename, protected by
    Article 8 of the Paris Convention

    NO
    Article 8 of the Paris Convention
    "A tradename shall be protected in all the countries of the Union
    without the obligation of filing or registration, whether or not it forms
    part of a trademark."
    Canon Kabushiki questions the applicability of the guidelines
    embodied in the Memorandum of then Minister of Trade and
    Industry Roberto Ongpin (Ongpin) dated October 25, 1983 which
    according to Canon Kabushiki implements Article 6bis of the Paris
    Convention, the provision referring to the protection of trademarks.
    The memorandum reads:

    "a) the mark must be internationally known;


    b) the subject of the right must be a trademark, not a patent or copyright or anything
    else;
    c) the mark must be for use in the same or similar class of goods;
    d) the person claiming must be the owner of the mark.“

    Canon Kabushiki emphasizes that the guidelines in the memorandum of Ongpin implement
    Article 6bis of the Paris Convention, the provision for the protection of trademarks, not
    tradenames
    CONTROLLING DOCTRINE: with respect to the applicability of Article 8 of
    the Paris Convention

    Kabushiki Kaisha Isetan vs. The Intermediate Appellate Court


    The Paris Convention for the Protection of Industrial Property does not automatically
    exclude all countries of the world which have signed it from using a tradename which
    happens to be used in one country. To illustrate if a taxicab or bus company in a town
    in the United Kingdom or India happens to use the tradename "Rapid
    Transportation", it does not necessarily follow that "Rapid" can no longer be
    registered in Uganda, Fiji, or the Philippines.
    This office is not unmindful that in the Treaty of Paris for the Protection of Intellectual Property
    regarding well-known marks and possible application thereof in this case. Canon Kabushiki, as this
    office sees it, is trying to seek refuge under its protective mantle, claiming that the subject mark is well
    known in this country at the time the then application of NSR Rubber was filed.
    However, the then Minister of Trade and Industry, the Hon. Roberto V. Ongpin, issued a memorandum
    dated 25 October 1983 to the Director of Patents, a set of guidelines in the implementation of Article
    6bis (sic) of the Treaty of Paris. These conditions are:

    a) the mark must be internationally known;

    b) the subject of the right must be a trademark, not a patent or copyright or anything else;

    c ) the mark must be for use in the same or similar kinds of goods; and

    d) the person claiming must be the owner of the mark (The Parties Convention Commentary on the Paris Convention.
    Article by Dr. Bogsch, Director General of the World Intellectual Property Organization, Geneva, Switzerland, 1985)

    From the set of facts found in the records, it is ruled that the Canon Kabushiki failed to comply
    with the third requirement of the said memorandum that is the mark must be for use in the
    same or similar kinds of goods.

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