INTELLECTUAL PROPERTYP HILIPP INES

CONAGRA, INC.

-versus-

Opposer,IPC No. 14-2007-00223Case Filed: 30 July 2007Opposition to:Appln. Serial No. 4-2004-011335Date Filed: 01 Dec. 2004Trademark: VITAWAY'S

HEALTHY CHOICENUTRI-DRINK

ENGRACIA C. BASA,Respondent-Applicant. Decision No. OK-Ifq

x-----------------------------------------------------x

DECISION

For resolution is the Opposition filed by Conagra, Inc. (the "Opposer")against Application No. 4-2004-011335 filed by Engracia C. Basa (the"Respondent-Applicant") on 01 December 2004 for the registration of the markVITAWAY'S HEALTHY CHOICE NUTRI-DRINK covering goods in Classes 30 and32, upon the ground that the mark VITAWAY'S HEALTHY CHOICE NUTRI-DRINKis identical with and/or confusingly similar with Opposer's HEALTHY CHOICEregistered trademark.

Opposer, ConAgra Foods, Inc. formerly ConAgra, Inc. (hereafter, the"Opposer") is a corporation duly organized and existing under the laws of theState of Delaware, United States of America with principal address at OneConAgra Drive 68102-5001, Omaha, Nebraska, u.s.A.

Respondent-Applicant, ENGRACIA C. BASA, is a single proprietor, withbusiness address at 426 Nazal Complex, North Bay Boulevard, Navotas, MetroManila.

~On 30 July 2007, Opposer filed the instant Opposition agains:~

Respondent-Applicant's application for registration of the trademark VITAWAY'Sr

./

Republic oftbe PbilippinesINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Pbilippines • www.ipophil.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

HEALTHY CHOICE NUTRI-DRINK for goods under Classes 30 and 32, specificallyfor coffee, chocolate, fruit juices.

On 16 August 2007, this Bureau issued a Notice to Answer, copy of whichtogether with the Opposition was sent through DHL to Respondent-ApplicantEngracia C. Basa. The Notice to Answer required Respondent-Applicant tosubmit its Verified Answer within thirty (30) days from receipt thereof.

For failure of Respondent-Applicant to file its Verified Answer and uponOpposer's Motion to Resolve filed on 04 March 2008, this Bureau issued OrderNo. 2008-670 which declared Respondent-Applicant to have waived her right tofile the Verified Answer to Opposer's Notice of Opposition and considered theentitled case submitted for decision.

Grounds for Opposition

Opposer filed the instant Opposition based on the following grounds:

1. "Opposer, ConAgra Foods, Inc. (formerly ConAgra, Inc.), is acorporation duly organized and existing under and by virtue of the laws ofDelaware, United States of America, with principal address at One ConAgra Drive68102-5001, Omaha, Nebraska, U.s.A. Notices and processes relative to theinstant case may be served through the undersigned counsel as Opposer's dulyauthorized representative. A copy of the duly notarized Special Power ofAttorney and related Secretary's Certificate in favor of the undersigned isattached herewith as Exhibits "A", "A-1" to "A-3". The notarized Verification andCertification against Forum Shopping executed by Kristoffer G. De Jesus ofVERALAW (Del Rosario Bagamasbad and Raboca) Law Offices, executedpursuant to the Special Power of Attorney, is attached hereto as Exhibit "B".

2. "Opposer is not doing business in the Philippines but has capacityto sue under Section 160, in relation to Section 3, of Republic Act No. 8293,known as the Intellectual Property Code of the Philippines. Opposer's homecountry, the United States of America, extends by treaty, conventions or law topersons or nationals of the Philippines the privilege to bring an action in thatcountry for infringement, unfair competition, or false designation of origin andfalse description without need of a license to do business in that country .

3. "Opposer has its real and effective commercial establishment in theUnited States, which country and the Philippines are member-signatories to theWTO (Uruguay Round) - TRIPS Agreement. Under Article 2.1 in relation toArticle 16 and 42 of said Agreement, "members shall make available to right

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holders civil judicial procedures concerning the enforcement of intellectualproperty rights. "Said Agreement further provides that "each member shallaccord to the nationals of other members treatment no less favorable than itaccords to its own nationals with regard to the protection of intellectual propertyrights, subject to the exceptions already provided in, respectively, the ParisConvention of which the Philippines is a signatory by virtue of Senate ResolutionNo. 89, dated 10 May 1965." Under said Convention, each signatory countryundertakes at the request of an interested party to prohibit the use of atrademark which constitutes a reproduction, imitation or translation or a markalready belonging to a person entitled to the benefit of the Paris Convention andsued for goods with well-known marks.

4. "The aforesaid provisions of the TRIPS Agreement have beencarried into effect by Section 3 of Republic Act 8293, as follows:

5. "Opposer is the owner of the famous and well-known markHEALTHY CHOICE. It has registered its HEALTHY CHOICE mark in thePhilippines with Certificate of Registration no. 4-1995-104756 for goods underClass 30: "Prepared dinners and entrees consisting primarily of pasta; spaghetti;lasagna; bakery goods; and frozen confections." It should be noted thatOpposer's trademark and Respondent-Applicant's trademark application coversthe same class of goods (Class 30). The certified true copy of registration no. 4­1995-104756 is attached hereto as Exhibit "C".

6. "Respondent-Applicant is an individual with address of record asabove-stated, and where Respondent-Applicant may be served with notices andprocesses of this Honorable Office.

7. "On December 1, 2004, Respondent-Applicant filed an applicationfor the mark "Vitaway's Healthy Choice Nutri-Drink" covered by Application No.42004011335, covering goods in class 30 ("Coffee, Chocolate') and 32 ("FruitJuice''),'' which application was published for opposition in the e-Gazette onMarch 30, 2007. A copy of Trademark Application Serial No. 4-2005-002674 isattached herewith as Exhibit "D".

8. "Respondent-Applicant's current application is the same as herprevious application for the mark HEALTH CHOICE NUTRI-DRINK underapplication no. 42003006407. Respondent-Applicant abandoned her previousapplication after Opposer, through undersigned counsel, confronted her ofOpposer's legitimate ownership of the HEALTHY CHOICE mark. Through evidentbad faith, however, and after Opposer agreed not to pursue any legal actionagainst her, Respondent-Applicant filed another application for the same mark,~albeit with the addition of the name of her company Vitaway as part of the mark.Respondent-Applicant actuations clearly show: (1) her knowledge of opposer~

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ownership of the HEALTHY CHOICE mark; and (2) her evident bad faith inillegally appropriating Opposer's mark for herself.

9. "On April 30, 2007, May 29, 2007 and June 27,2007, Opposer, inaccordance with the Rules and Regulations on Inter Partes Proceedings, filedwith the Honorable Office three (3) successive Motions for Extension of Time toFile Verified Notice of Opposition, all of which were granted. Thus, Opposer haduntil July 28, 2007 within which to file its Verified Notice of Opposition.Considering, however, that July 28, 2007 is a Saturday, Opposer has until thenext working day, or on July 30, 2007 within which to file its opposition.

10. "Opposer believes that it would be damaged by Respondent-Applicant's registration of a mark bearing the dominant mark HEALTH CHOICE.

Opposer relied on the following facts to support its opposition:

(a) "Opposer, ConAgra Foods, Inc., is one of North America'slargest packaged food companies, serving grocery retailers, aswell as restaurants and other food service establishments.Popular ConAgra Foods consumer brands include: Banquet,Chef Boyardee, Egg Beaters, Health Choice, Hebres National,Hunt's, Marie Callender's, Orville Redenbacher's Reddi-wip,PAM, and many others. Its history can be traced back toindividuals and companies who were considered pioneers infood preparations and manufacturing in the United States ofAmerica.

(b) "ConAgra Foods, Inc., maintains the websitewww.conagrafoods.com where all information about thecompany can be found. Printouts of www.conagrafoods.comisattached hereto as Exhibits "E", "E-1" to "E-4".

(c) "In 1988, ConAgra announces plan to build a state-of-the-artproduct development laboratory and a new headquarterscampus in Omaha, Nebraska. The first HEALTHY CHOICEproducts, frozen dinners, are introduced. The HEALTHYCHOICE story began with former ConAgra Foods ChiefExecutive Officer Charles "Mike" Harper. While travelingthrough California on business, this hot-fudge-sundae loversuffered a mild heart attack. Although he made a full~recovery, he needed to evaluate his eating habits. So he~began a search for food that satisfied both his taste and healthneeds. When his search proved unsuccessful, he took it upo~

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(d)

(e)

(f)

(g)

(h)

himself to bring to market products that taste good and aregood for you. And that's how HEALTHY CHOICE was born.

"Since 1988, HEALTHY CHOICE has been a pioneer in thedevelopment of great-tasting food that people can feel goodabout eating. With more than 200 products, HEALTHYCHOICE makes it easy to prepare great-tasting, nutritiousmeals and snacks for the whole family. From savory soups todelicious lunch meats and great-tasting meals and snacks,consumers can find HEALTHY CHOICE throughout the grocerystores.

"Healthy Choice products include: Healthy Choice frozendinners and entrees, ice cream and novelties, canned andmicrowavable soup, lunch meat, deli meat, bread, pasta sauceand popcorn. Opposer maintains a separate website for itsHEALTHY CHOICE products at www.healthychoice.com. Aprintout of www.healthychoice.comis attached hereto asExhibits "F", "F-1" to "F-6".

"Opposer is the owner of the trademark HEALTHY CHOICE inthe Philippines and abroad. A list of all active trademarkregistrations of the mark HEALTHY CHOICE is attached heretoas Exhibits "G", "G-1" to "G-6".

"Opposer has active registration of the mark HEALTHYCHOICE, HEALTHY CHOICE AND DESIGN, and the family ofHEALTHY CHOICE marks in various countries around tha worldincluding Argentina, Aruba, Austria, Bahamas, Barbados,Benelux, Brazil, Canada, China, Colombia, Cuba, DominicanRepublic, Ecuador, Egypt, EI Salvador, European Union,Finland, France, Germany, Greece, Guatemala, Honduras,Iceland, India, Indonesia, Ireland, Israel, Italy, Japan, Kuwait,Lebanon, Mexico, Nicaragua, Netherlands Antilles, Norway,Oman, Panama, Paraguay, Peru, Philippines, Portugal, RussianFederation, Saudi Arabia, Singapore, South Africa, SouthKorea, Spain, Sweden, Switzerland, Taiwan, Trinidad andTobago, Turkey, United Arab Emirates, United States, andUruguay. Attached as Exhibits "H", "H-1" to "H-68" are copiesof certificates of registrations of the mark HEALTHY CHOICEand the family of HEALTHY CHOICE marks acquired worldwide.~

"In the Philippines, Opposer is the registered owner of the~trademark HEALTHY CHOICE & DESIGN with registration{ I

5

(i)

U)

(k)

(I)

(m)

number 41995104755 for goods under Class 29 and thetrademark HEALTHY CHOICE & DESIGN OF A STYLIZEDREPRESENTATION IN SILHOUETTE FORM OF A RUNNINGMAN with registration no. 41995104756 for goods under Class30. Opposer also has pending applications for registration ofthe following: HEALTHY CHOICE & DESIGN (Application No.41995102506, Class 29) and HEALTHY CHOICE & DESIGN(Application No. 41995102507), Class 30).

"A quick search over Philippine websites reveal the following:(1) Products bearing the HEALTHY CHOICE mark of Opposercan be purchased at Crossings Department Store, amongothers (Exhibit "I"); and (2) An online Filipino chat community"Kuro.ph", discussing what the chatters ate in a day has anentree consisting of Sesame Chicken by HEALTHY CHOICE(Exhibits "J" and "J-1''). Clearly, products bearing Opposer'sHEALTHY CHOICE mark is being sold and recognized in thePhilippines.

"In view of the foregoing, Respondent-Applicant's trademarkapplication for "Vitaway's Healthy Choice Nutri-Drink" coveredby Application No. 42004011335 in the name of respondent­applicant, covering goods in class 30 ("Coffee, Chocolate'') and32 ("Fruit Juice''), should be denied as it is identical orconfusingly similar to Opposer's well-known trademark"HEALTHY CHOICE", as to be likely, when applied to or used inconnection with the goods of Resppondent-Applicant, to causeconfusion or mistake or deceive the purchasers thereof.Moreover, Respondent-Applicant's mark covers the same classand category of goods (Class 30 and foods) as Opposer'sHEALTHY CHOICE mark.

"The registration of the trademark "Vitaway's Healthy ChoiceNutri-Drink" in the name of Respondent-Applicant will violatethe following provisions of RA 8293, to wit: Section 123.1 (d),(e), (f) and (g) which provides:

"It cannot be denied that the filing date of Respondent­Applicant's mark is later than the filing date of Opposer's mark.

"With respect to whether the Respondent-Applicant's mar~

Vitaway's Healthy Choice Nutri-Drink" is confusingly similar to~

the Opposer's mark HEALTHY CHOICE, regard should be take~)#/

of the dominant features of both marks, which is HEALTH~ /

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CHOICE. In fact, the previous application of Respondent­Applicant for the same mark distinctly carries the HEALTHYCHOICE mark, albeit with the nutri-drink word. In the instantapplication, Respondent-Applicant simply included its businessname Vitaway as part of its applied mark.

(n) "The word Vitaway's in Respondet-Applicant's mark is simplythe business name of Respondent-Applicant which evidentlydepicts its (illegal) appropriation of the HEALTHY CHOICEmark. This is evident from the way the Vitaway name isdepicted which shows ownership or right over the next phraseHealthy Choice by the addition of an's, hence it is Vitaway'sHealthy Choice. The last phrase Nutri-Drink is merelydescriptive of the goods or product referred to by the mark,which is a "nutritious drink" or nutri-drink.

(0) "Clearly, the dominant features of Respondent-Applicant'smark is Healthy Choice which is identical to Opposer's well­known HEALTHY CHOICE.

(p) "In McDonald's Corporation vs. L.C. Big Mak Burger, Inc. 437SCRA 10, the dominancy test was used to determine whetherthe mark is confusingly similar. The Supreme Court held:

(q) "In view of the fact that the dominant elements of theOpposer's mark HEALTHY CHOICE and Respondent-Applicant'smark Vitaway's Healthy Choice Nutri-Drink are identical, saidmarks are therefore considered as confusingly similar to eachother.

(r) "In fact, Respondent-Applicant is aware of Opposer's well­known HEALTHY CHOICE mark. It should be noted thatRespondent-Applicant's current application is just areapplication of her previous abandoned mark HEALTHYCHOICE NUTRI-DRINK under application no. 40003006407.When Opposer, through undersigned counsel, confrontedRespondent-Applicant on her illegal appropriation of the markHEALTHY CHOICE, Respondent-Applicant agreed to withdrawand abandoned its application no. 42003006407 for the markHEALTHY CHOICE NUTRI-DRINK. Respondent-Applicant evenv ,withdrew her products from the market. A copy of a letter~signed by Respondent's counsel relative to its withdrawal of itsproduct in the market as well as Opposer's letter to tht

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(s)

(t)

(u)

(v)

(w)

(x)

Director of the Bureau of Trademarks are attached hereto asExhibits "K" and "K-1",

"Through evident bad faith, after Opposer did not pursue legalactions against Respondent-Applicant, the latter reapplied hermark, which is the subject application in the instant case.

"This malicious intent to ride on the goodwill that Opposer hasestablished for its registered mark is evident from the goodsfor which Respondent-Applicant's mark Vitaway's HealthyChoice Nutri-Drink is to be applied. Respondent-Applicant'smark covers class 30 ("Coffee, Chocolate") and 32 ("FruitJuice"), which are food items similar and belonging to thesame class of goods (Class 30) as Opposer's HEALTHY CHOICEproducts. In fact, Opposer worldwide registrations of theHEALTHY CHOICE mark include goods in Classes 29, 30, 31and 32.

"Respondent-Applicant's mark is applied to the same classes ofgoods as Opposer's mark. The inescapable conclusion is thatRespondent-Applicant adopted the same mark of Opposer to"ride on the coattails" of the internationally known HEALTHYCHOICE mark of Opposer.

"Resolving conflicting claims in the registration of a markinvolves determining the existence of confusing similaritybetween the opposing marks. "Confusing similarity refers tosuch resemblance between a mark or trade name of a personand that of another as to likely, when applied to or used ontheir respective goods, business or services, cause confusionor mistake on the part of the purchasers as to the goods orservices themselves or as to their source or origin."

"The determination of the existence of confusing similaritybetween two marks can easily be determined in cases ofidentical marks applied on the same class of goods, just like inthe case at bar. "If the marks or trade names are identical,used on the same or similar goods, there is hardly any problemas to who is entitled to the mark." In this case, the prior useror adopter of the mark, which is herein Opposer, owns thesame to the exclusion of others. ~

"No stretch of imagination is needed to see the obvioussimilarity of the subject marks - BOTH HAVE THE HEALTH~

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(y)

(z)

(aa)

(bb)

(cc)

CHOICE AS THEIR DOMINANT FEATURE. Finally, both areapplied to the same classes of goods to which Opposer's markhas already acquired tremendous popularity and goodwill.

"The identity of the subject marks will definitely induce anordinary prudent purchaser of grocery food items to purchaseRespondent-Applicant's goods believing that the same isOpposer's products which has gone through extensiveresearch, development and marketing. Opposer's goods, inturn, will be prejudiced or adversely affected by the inferiorquality of Respondent-Applicant's goods. "[A] person's goodsor services are purchased as that of another, and the poorerquality of the former reflects adversely on the latter'sreputation ."

"Ordinary purchasers will also be deceived as to the origin ofthe goods to which the mark HEALTHY CHOICE is being used.Considering that Respodent-Applicant's mark is applied to thesame class of goods of Opposer, ordinary purchasers willdefinitely be made to believe that Respondent-Applicant'sgoods bearing the mark HEALTHY CHOICE comes fromOpposer.

""In other words, to warrant a denial of an application forregistration of a mark or trade name or to constituteinfringement of a registered mark or trade name, the law doesnot require that the competing marks or trade name produceactual error or mistake. It is sufficient that there is apossibility or likelihood of the purchaser being mistaken ordeceived. The Universal test is whether the public is likely otbe deceived." In the case at bar, an ordinary purchaser ofHEALTHY CHOICE product will definitely believe that he ispurchasing Opposer's HEALTHY CHOICE product not knowingthat he is actually buying Respondent-Applicant's goods.

"The confusion between the goods of Opposer andRespondent-Applicant bearing the mark HEALTHY CHOICE willcause damage to the former and to the buying public as well.

"Hence, in view of (1) the earlier filing date of Opposer's mar~ .HEALTHY CHOICE, (2) similar classification of goods of~Opposer and Respondent-Applicant, as well as (3) the identityor confusing similarity of both marks, Respondent-APPlicant'sr

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mark cannot be registered by virtue of Section 123.1 (d) ofR.A.8293.

(dd) "In the international market, and also in the Philippines,Opposer has acquired immense and valuable goodwill on theHEALTHY CHOICE mark. The affidavit of Kristoffer G. de Jesusis attached hereto as Exhibit "L".

(ee) "There is no doubt that Opposer's mark HEALTHY CHOICE isinternationally well-known in accordance with the criteria forbeing well-known in accordance with the criteria as set forth inRA 8293. Hence, pursuant to RA 8293, relevant Philippinejurisprudence, the Paris Convention, and the TRIPSAgreement, the Government of the Republic of the Philippines,through the Intellectual Property Office is mandated to protectOpposer's trademarks be rejecting all applications for theregistration of identical or confusingly similar marks.

(ff) "Opposer will be damaged in its proprietary rights/interest andbusiness reputation by the registration of the mark Vitaway'sHealthy Choice Nutri-Drink in the name of Respondent­Applicant considering that Opposer's well-known mark has longbeen established and has obtained decades-old goodwill andconsumer recognition not only in the Philippines, butinternationally as well. The distinctiveness of said well-knowmark will be diluted, and will allow Respondent-Applicant tounfairly benefit from and get a free ride on the goodwill ofOpposer's well-known mark, thereby causing irreparable injuryto the Opposer.

(gg) "Respondent-Applicant is well aware of the goodwill it canobtain if it obtains a registration of a mark bearing theHEALTHY CHOICE mark. This is evident from the fact thatwhen it revived its mark, Respondent-Applicant maintained thedominant feature HEALTHY CHOICE and just added itsbusiness name. In fact by adding its business name, the well­known mark HEALTHY CHOICE will be identified as belongingto Respondent-Applicant to the prejudice of the true owner ofthe mark, herein Opposer.

(hh) "The closing deposition of the Supreme Court in the case of~Societe Des Produits Nestle, S.A. and Nestle Philippines, Inc.vs. Court of Appeals and CFC Corporation (G.R. No. 112012~enlightens the issue in the instant case, thus: / I

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(ii) "The registration of the dominant mark HEALTHY CHOICE inthe name of Respondent-Applicant will create confusion in theminds of purchasers and consumers, who will be deceived intobelieving that Opposer and Respondent-Applicant are affiliatedentities, or that Respondent-Applicant has the sponsorship ofOpposer,to the latter's great prejudice.

Uj) "Opposer likewise reserves the right to present other evidencein support of its claims and allegations and such other facts asmay be necessary in the course of these proceedings.

Considering that no Answer has been filed by Respondent-Applicant andthat this case is mandatorily covered by the summary rules, Opposer wasdirected to file its evidences in the required form and duly marked in accordancewith Section 7 and Subsection 7.1 of Office Order No. 79.

Opposer filed their evidences in support of their Notice of Opposition,namely:

Exhibit Description

"A" Certificate of Authentication issuedby the Vice Consul of the Republicof the Philippines at Chicago, Stateof Illinois, U.s.A. ;

"A-1" Certificate stating that Debbie K.Gifford was commissioned as aGeneral Notary in the State ofNebraska U.S.A.:

"A-2" Special Power of Attorneyappointing Vera Law to act forand in behalf of ConAgra Foods,Inc. in, among others, the filing ofa Verified Notice of Oppositionacalnst TA No. 4200401135:

"A-3" Notarial Acknowledqment:

"B" Verification and Certificationacainst Forum Shooolno:

Exhibit I Description

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"(" Certified True Copy of Cert. ofRegistration No. 4-1995-104756'

"C-1" Certificate of Registration No. 4-1995-104756;

"C-2" Certificate of Registration No. 4-1995-104756;

"D" Trademark Search for Vitaway'sHealthy Choice Nutri-Drink;

"E, E-1 to E-4" Print outs ofwww.conaqrafoods.com·

"F, F-1 to F-6" Print outs ofwww.conagrafoods.com;

"G, G-1 to G-6" List of all active trademarkregistration of the markHEALTHY CHOICE;

"H H-1 to H-68" Copies of certificates of,registrations of the markHEALTHY CHOICE and the familyof HEALTHY CHOICE marksacquired worldwide'

"1" Products bearing the HEALTHYCHOICE mark of Opposer can bepurchased at CrossingsDepartment Store, amongothers'

"J and J-1" An online Filipino charcommunity "Kuro.ph", discussingwhat the chatters ate in a dayhas an entree consisting ofSesame Chicken by HEALTHYCHOICE'

"K and K-1" Copy of a letter signed byRespondent's counsel relative to

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its withdrawal of its product inthe market as well as Opposer'sletter to the Director of theBureau of Trademarks'

"L" The affidavit of Kristoffer G. deJesus

Issues

The issues to be resolved in the instant Opposition case are:

(a) Whether or not Respondent-Applicant's trademarkVITAWAY'S HEALTHY CHOICE NUTRI-DRINK for use on goods falling underClasses 30 (Coffee, Chocolate) and 32 (Fruit Juice) is confusingly similar toOpposer's HEALTHY CHOICE & DESIGN registered trademark for prepareddinners and entrees consisting primarily of pasta; spaghetti; lasagna; bakerygoods; and frozen confections under Class 30; and

(b) Whether or not Respondent-Applicant's trademark application forVITAWAY'S HEALTHY CHOICE NUTRI-DRINK should be granted registration.

With R.A. 8293 as basis of registrability, this Bureau adheres to the First­to-File Rule and applying specific provisions of R.A 8293 (Sec. 122 and Sec. 127),records will show that as between the parties, Opposer's application has anearlier filing date. Opposer's mark HEALTHY CHOICE & DESIGN OF ASTYLIZED REPRESENTATION IN SILHOUETTE FORM OF A RUNNING MAN(Exhibit C-t. Opposen was filed on 01 September 1995 while Respondent­Applicant's application for substantially the same mark VITAWAY'S HEALTHYCHOICE NUTRI-DRINK came nine (9) years later on 01 December 2004.Respondent-Applicant's later application for substantially the same markVITAWAY'S HEALTHY CHOICE NUTRI-DRINK was for goods under the categoryof Food and Beverages. Specifically, Opposer's goods under Registration No. 4­1995-104756 cover the following:

prepared dinners and entrees consisting primarily of pasta;spaghetti; lasagna; bakery goods; and frozen confections( Class -;:;;30). ~

While, Respondent-Applicant's products subject of the instant suit include thej/J/following : /"/

Coffee (Class 30); Fruit Juice (Class 32)

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Obviously, they are related because they are included or are within the Food andBeverages market category. Confusion is likely and/or inevitable when identicalor substantially similar marks are applied on similar or related goods. AnentRespondent-Applicant's beverages under Classes 30 and 32 vis-a-vis Opposer'sfood items under Class 30, while specifically different in composition anddescriptive properties, nonetheless they complement each other and are usuallyserved and both offered by manufacturers and restauranteurs in the foodindustry. It is highly probable that they are sold commercially in the samemarket altogether and have common purchasers. Under these circumstances,the goods are related. By their being basically in the food and beveragesmarket category, they are marketed similarly which justifies our conclusion thatindeed the goods flow through the same channels of trade. The SupremeCourt in ESSO Standard Eastern, Inc. vs. Court of Appeals, et. ai, 201 Phil 803,defined what are essentially related goods under the trademark law as :

"Goods are related when they belong to the same class or havethe same descriptive properties; when they possess the same physicalattributes or essential characteristics with reference to their form,composition texture or quality. They may also be related because theyserve the same purpose or are sold in grocery stores. Thus, biscuitswere held related to milk because they are both food products. '/

Certainly, there can be no doubt about the similarity of the two marks inissue when it comes to adoption of the words HEALTHY CHOICE. Below is aside-by-side comparison of the competing marks:

I~ItA[Trlyj CfIOlc::T:-_.~-_._-~- _._-- --- - -- _ .:.•

Opposer's HEALTHY CHOICE markas shown in Registration No. 41995104756

VITAWAY'S Healthy ChoiceNUTRI-DRINK

Respondent's HEALTHY CHOIC8'arkas shown in Application No. 42004011335

To create some variations which is not significantly distinctive,Respondent-Applicant's mark inserted the WORD "VITAWAY" all in capital lettersbefore the words HEALTHY CHOICE. In an effort to make registrable an~

otherwise unregistrable trademark because the subject mark is confusingly~similar to a prior or previously registered trademark of Opposer, Respondent'l/­Applicant disclaimed the words HEALTHY CHOICE when the latter was asked forany disclaimer and stated, thus:

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The applicant disclaims the exclusive right to use the words"HEALTHYCHOICE"apart from the mark as shown.

So this Bureau is left with the words VITAWAY and NUTRI-DRINK to considerwhether or not the mark should be granted registration. However, other thanthe words VITAWAY and NUTRI-DRINK, this Bureau shall consider the wordsHEALTHY CHOICE because the words HEALTHY CHOICE can not be disclaimedby Respondent-Applicant for not being either DESCRIPTIVE or GENERIC.R.A. 8293 on disclaimer is clear:

"Sec. 126. Disclaimers. - The Office may allow or require theapplicant to disclaim an unregistrable component of anotherwise registrable mark but such disclaimer shall not prejudiceor affect the applicant's or owner's rights then existing or thereafterarising in the disclaimed matter, nor such shall disclaimer prejudiceor affect the applicant's or owner's right on another application oflater date if the disclaimed matter became distinctive of theapplicant's or owner's goods, business or services."

The Implementing Rules and Regulations of R.A. 8293 on Trademarks specificallyprovide what matters can be disclaimed when it stated under Rule 608 that:

"Rule 608. Deletion and/or Disclaimer may be required. TheExaminers may require unregistrable matter to be deleted fromthe Drawing or disclaimed in the application, x x x .

The basic purpose of disclaimers is to make on record, that asignificant element of a composite mark is not being exclusivelyappropriated by itself apart from the composite. The followingportions of a mark when comprising less than the entire mark,must be disclaimed to permit registration, namely (a) genericterm; (b) a descriptive matter in the composite mark; (c) amatter which does not function as a trademark, or service ora trade name.

Using the afore-quoted provision, the final outcome and/or general appearanceof Respondent-Applicant's VITAWAY'S HEALTHY CHOICE NUTRI-DRINK fell shortof the requirement to be distinctive in that Respondent-Applicant's mark is formost part likely to be mistaken or confused as Opposer's HEALTHY CHOICE~

mark with the adoption by Respondent of the words HEALTHY CHOICE written~in the same spelling, printing style or horizontal form as Opposer's HEALTH~CHOICE mark. , I

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The words HEALTHY CHOICE still dominates the whole appearance ofApplicant's mark notwithstanding the insertion of the words VITAWAY'S andNUTRI-DRINK in Applicant's mark, thus, similarities in the dominant feature ofboth marks are not lost. It is noteworthy to cite at this juncture the ruling ofthe Supreme Court in the cases of Co Tiong Sa v. The Director of Patents (95Phil 1 (1954); Sapolin Corp. vs. Balmaceda (67 Phil. 705); and Forbes Nurma &Co. vs. Ang San To (40 Phil 272) which applied the dominancy test indetermining the existence of confusing similarity between trademarks, that "ifthere is similarity with the essential or dominant feature of the trademark,despite some differences or variations in detail, there is infringement"

The words HEALTHY CHOICE remains to be the prominent and distinctivefeature in the new mark, the combination or addition of the words VITAWAY'Sand NUTRI-DRINK written below the words HEALTHY CHOICE is insignificant asto yield a distinct appearance not only because word VITAWAY'S is written torefer to the words HEALTHY CHOICE and the word NUTRI-DRINK is printed insuch very small letters, but the words HEALTHY CHOICE standing alone hascontinued to create confusion between the competing marks.

A cursory reading of paragraph (d) of R.A. 8293 with emphasis on priorregistration and/or application of the same mark states that:

''Section 123. Registrability. - 123.1. A mark cannot beregistered ifit:

xxx

(d) Is Identical with a registered mark belonging to adifferent proprietor or a mark with an earlier filingorpriority date, in respect of:

(i) The same goods or services, or(ii) Closelyrelatedgoods orservices, or(iii) Ifit nearly resembles such a mark as to be

likely to deceive or cause confusion;"

xxx

An examination of the documentary evidence confirms Opposer's earlierapplication of the mark HEALTHY CHOICE for goods under Class 30 (Exhibit "e';~opposen. Between the two contending parties, trademark application ofOpposer came earlier by more or less nine (9) years vis-a-vis opposer's#"application in 2004. / I

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The right to register trademarks, trade names and service marks is basedon ownership. Only the owner of the mark may apply for its registration (BertR. Bagano v. Director of Patents, et. al., G.R. No. L-20170, August 10,1965). And where a trademark application is opposed, the Respondent­Applicant has the burden of proving ownership (Marvex Commercial co; Inc.v. Peter Hawpia and Co., 18 SCRA 1178). In the instant case, it is Opposerand not Respondent-Applicant which showed and presented proof of an earlierapplication in 1995 which was not rebutted by Respondent-Applicant.

Moreover, this Bureau cannot take for granted the inaction of Respondent­Applicant in defending its claim over the trademark "VITAWAY'S HEALTHY CHOICENUTRI-DRINK". Such inaction of Respondent-Applicant is evidenced by its failureto file its Answer despite receipt of the Notice to Answer the Notice of Opposition,contrary to the disputable presumption that "a person takes ordinary care of hisconcern", enunciated in Section 3(d) of Rule 131 of the Rules of Court.

It was the Respondent-Applicant's option not to defend its case, contraryto the declared policy of the Supreme Court to the effect that "it is precisely theintention of the law to protect only the vigilant, not those guilty of laches." (Pag­Asa Industrial Corp. vs. Court of Appeals, 118 SCRA 526).

Finally, as provided for under Sec. 230 of R. A. 8293, otherwise known asthe Intellectual Property Code of the Philippines:

"Sec. 230. Equitable Principles to Govern Proceedings. ­In all inter partes proceedings in the Office under this Act, theequitable principles of laches, estoppel, and acquiescencewhere applicable, may be considered and applied."

As defined in the dictionary, laches means "slackness or carelessnesstoward duty or opportunity or neglect to do a thing at the proper time". (WebsterThird International Dictionary, p. 1261)

Opposer is the registered owner, originator, prior user of the trademarkHEALTHY CHOICE used on food products under Class 30. The use and adoptionby Respondent-Applicant of substantially the same mark as subsequent user canonly mean that Applicant wishes to reap on the goodwill, benefit from theadvertising value and reputation of Opposer's HEALTHY CHOICE trademark.

In the case of American Wire & Cable Co. vs. Director of Patents, 31SeRA 544, it was observed that:

"Why of the million of terms and combination ofletters and designs available the ~appellee had to choose a mark so closely similar to another's trademark if there~was no intent to take advantage ofthe goodwill generated by the other mark" ! /

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WHEREFORE, premises considered, the Notice of Opposition is, as it ishereby SUSTAINED. Consequently, application bearing Serial No. 4-2004­011335 filed by Engracia C. Basa on 01 December 2004 for the registration of themark "VITAWAY'S HEALTHY CHOICE NUTRI-DRINK" for use on coffee,chocolate (Class 30) and fruit juice (Class 32) is, as it is hereby REJECTED.

Let the filewrapper of VITAWAY'S HEALTHY CHOICE NUTRI-DRINK,subject matter of this case together with a copy of this Decision be forwarded tothe Bureau of Trademarks for appropriate action.

SO ORDERED .

Makati City, 26 June 2008.

EST, E UTA BELTRAN-ABELARD~Director

/josephinealonHEAL THYCHOICE

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