IN El. ECTUAL P OPEItTY

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OFFICE OF n PHILIPPINES

JOLLIBEE FOODS CORPORATION, } IPC No. 14·2015·00527 Opposer, } Opposition to:

} } Appln. Serial No. 4-2015-00003484

-versus­ } Date Filed: 30 March 2015

YUM CONCEPTS, INC., } TM: Respondent-Applicant. }

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NOTICE OF DECISION

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Counsel for Opposer 12th Floor, Net One Center 26th Street corner 3rd Avenue, Crescent Park West, Bonifacio Global City Taguig

V MIGALLOS & LUNA LAW OFFICES Counsel for Respondent-Applicant 7th Floor, The Phinma Plaza 39 Plaza Drive, Rockwell Center Makati City 1210

GREETINGS:

Please be informed that Decision No. 2018 - 02 ~4 dated 27 September 2018(copy enclosed) was promulgated in the above entitled case.

Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of 2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten (1 OJ days after receipt of the decision together with the payment of applicable fees.

Taguig City, 02 October 2018.

MA~~ IPRS IV

Bureau of Legal Affairs

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INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

JOLLIBEE CORPORATION,

- versus ­

FOODS

Opposer,

IPC NO. 14 - 2015 . 00527

Opposition to: Trademark Application No. 4201500003484

YOM CONCEPTS INC.,

Respondent-Applicant.

DECISION NO. 2018· 2'lG x------------------------------------------------------x

DECISION

JOLLIBEE FOOD CORPORATION (Opposer) 1 filed an Opposition to Trademark Application Serial No. 4-2011-012610. The trademark application filed by YUM CONCEPTS INC. (Respondent-Applicant) 2, covers the mark ''YUM CREE: MAGPAKAILAN YUM" for use on "services for providing food and drink; temporary accommodation" under Class 43 of the International Classification of Goods 3.

The Opposer based its Opposition on Section 123.1 (d) of Republic Act No. 8293 or the Intellectual Property Code of the Philippines (IP Code), which provides that a mark cannot be registered ifit 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 same goods or services, or closely related goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion.

In its Opposition, the Opposer alleges that the Respondent's YUM CREE: MAGPAKAILAN YUM mark is confusingly similar to its registered YUM

1 A corporation organized under the laws of Philippines with address atlOth FIr., [ollibee Plaza, F. Ortigas Jr. Avenue, Ortigas Center, Pasig City, Metro Manila, Philippines. 2 A corporation with address at PEl Building, Victor Buencamino St., Alabang Zapote Road, Muntinlupa City, Metro Manila. 3 The Nice Classification ofGoods and Services is for registering trademarks and service marks based on multilateral treaty administered by the WIPO, called the Nice Agreement Concerning the International Classification ofGoods and Services for Registration ofMarks concluded in 1957.

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trademark, as to likely deceive or cause confusion in the minds of the relevant sector of the purchasing public. It claims that the Opposer is the rightful owner and prior registrant of the YUM trademark, which is registered with the Intellectual Property Office of the Philippines (IPOPHL) and other countries, such as, Italy, Japan, Myanmar, Oman, Saudi Arabia, United Kingdom, and United States of America. It asserts that the likelihood of confusion is enhanced because the competing marks cover the same food-related services in the same Class 43. It further adds that the use of Respondent-Applicant of the subject mark will take unfair advantage of, dilute the goodwill, and diminish the distinctive character or reputation of Opposer's well-known YUM trademark.

The Opposer submitted the following exhibits:

Exhibit "A" - Original notarized Verified Notice of Opposition;

Exhibit "B" - Original Notarized Affidavit of Atty. Reena C. Mitra-Ventanilla:

Exhibit "C" - Philippine Certificate of Registration No. 4-2003-008177 for the mark YUM;

Exhibit "D" - Registrations and applications for the mark YUM issued by/filed with the foreign trademark offices;

Exhibit "E" - Food packaging bearing the YUM mark;

Exhibit "F" - Screen shots of Opposer's website, www.jollibee.com.ph. featuring various Jollibee items;

Exhibit "G" - Representative samples of promotional materials and advertisements;

Exhibit "H" - Screen shots of Opposer's website, www.jollitown.com.ph. featuring Opposer's mascot, Mr. YUM and his YUM Mascot house;

Exhibit "I" - Original Notarized Special Power of Attorney; and

Exhibit "J" - Copy of Notarized Secretary Certificate.

This Bureau issued a Notice to Answer on 22 February 2016 and received by Respondent-Applicant on 7 March 2016. After several period of extensions the Respondent-Applicant filed its Verified Answer on 6 June 2016.

On its Answer, the Respondent-Applicant denies the pertinent allegations in the Opposition and claims that the Respondent-Applicant's Trademark is not confusingly similar with Opposer's ''YUM'' Mark and there is neither confusion nor likelihood of confusion between the trademarks nor confusion as to the source of any product of Respondent-Applicant. It further contends that the use by the Respondent-applicant of its trademark which is entirely distinct and different from the opposer's ''YUM'' mark will not result in unfair competition.

The Respondent-Applicant's evidence consist of the following:

Exhibit "I" - Affidavit of Mr. Kenneth De Ocampo Kho, President/CEO of Yum Concepts' Inc.:

Exhibit "2" - Photographs ofYum Chee Restaurant;

Exhibit "3" - Copy of the menu of the Restaurant. And

Exhibit "4" to "4-H" - Print outs of the other trademark registrations in the Philippine Trademark Database with the word ''YUM.''

On 20 March 2018, the Preliminary Conference was terminated and the parties are directed to submit their respective Position Papers . The parties then submitted their respective Position Papers. Accordingly, the instant case is submitted for Decision.

The issue to be resolved in the instant case is whether Respondent­Applicant's trademark ''YUM CHEE: MAGPAKAILAN YUM" should be allowed for registration .

The Office Records show that the Opposer has a prior and existing trademark registration for the trademark ''YUM'' when the Respondent-Applicant filed its trademark application for the instant mark ''YUM CHEE: MAGPAKAILANYUM." In addition, records also show that the Opposer and the Respondent-Applicant are both engage in food business under Class 43.4

The question now to consider is, do the contending trademarks as shown below resemble each other such that mistake or confusion or even deception is likely to occur?

Opposer's Trademark Respondent-Applicant's Trademarks

4 Exhibit "C" of the Opposer and Respondent-Applicant's Trademark Application.

Upon a careful examination of the competing trademarks and the evidence submitted, this Office finds that the registration by the Respondent-Applicant of the trademark ''YUM CHEE: MAGPAKAILAN YUM" is unlikely to cause confusion or indicate any connection between the Respondent-Applicant's goods and that of the Opposer's product or services.

At the outset, a visual comparison of the mark being applied by respondent­applicant vis-a.-vis the registered mark of the Opposer, would show that the composite ''YUM CHEE: MAGPAKAILAN YUM" trademark being applied by the Respondent is distinct and distinguishable from the Opposer's mark. While the Opposer has a plain single word mark ''YUM'', the Respondent-Applicant's mark is compose of other visual elements than its word composition and the said elements are arranged in such a way that it cannot be mistaken to be the mark of the Opposer.

In the pleading, the Opposer cited the pictures of its trademark as actually used in commerce and the similar use ofthe color orange by Respondent-Applicant to show visual similarity. However, a cursory examination of the said pictures supports the conclusion that the Opposer's ''YUM'' mark and its limited usage in relation to its hamburger products would not be confused to the usage of the Respondent-Applicant as the name of its Chinese restaurant.

In addition to the visual differences of the two contending trademarks, aurally they are even more different. The Opposer's registered mark is a one syllable trademark while the Respondent-Applicant's mark is composed of a seven syllable phrase. Even if this Office would consider ''YUM CHEE", as the most dominant feature, being the most visible words in the mark, it would still be identifiable and easily distinguish from the Opposer's trademark.

Moreover, the only similarity on the two contending trademarks lies on the word ''YUM.'' However, the word "YUM" is not a coined word invented by the Opposer but a commonly used interjection to express enjoyment or satisfaction, especially in relation to the taste of food. Thus, the word ''YUM'' is a suggestive mark and is considered a weak mark on food related products. When the consuming public use or hear the said word, it would not readily connote the product of the Opposer.

The essence of a trademark is to point out distinctly the origin or ownership of the goods to which it is applied; to secure to him who has been instrumental in bringing into the market a superior article of merchandise; the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product.s On this point, the Respondent-Applicant's trademark satisfies the above stated functions and should be allowed to be registered.

5 Pribhdas J. Mirpuri vs. Court of Appeals, G.R No. 114508, November 19,1999

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WHEREFORE, premises considered, the instant opposition to Trademark Application Serial No. 42015003484 is hereby DISMISSED. Let the filewrapper of Trademark Application Serial No. 42015003484 be returned together with a copy of this Decision to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

Taguig City, 27 SEP 201 B

Atty. ~er I Jimno Adjudication Officer

Bureau of Legal Affairs

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