iPINTELLECTUAL PROPERTYPHILI P PINES

PHIL. MORINDA CITRIFOLIA, INC., }Opposer, }

}- versus - }

}VIDA NUTRISCIENCE, INC. }

Respondent-Applicant. }x ---------------------------------------------- x

IPC No. 14-2007-00272Opposition to:

Serial No. 4-2006-006482Date Filed: 19 June 2006

Trademark: "PHILNONI"Decision No. 2008 - -4-L

DECISION

This pertains to an Opposition Case filed on 24 September 2007 by hereinopposer, PHIL. MORINDA CITRIFOLIA, INC., a corporation organized and existingunder the laws of Philippines, with business address at 11039 Kanluran Road, LosBanos, Laguna, Philippines, against the application for registration of thetrademark "PHILNONI" bearing Application Serial No. 4-2006-006482 filed on 19June 2006 for goods falling under Class 5 and 32 of the Nice Classification ofGoods, namely pharmaceutical preparations, herbal food supplement powderherbal and medicinal preparation drinks, non alcoholic drinks, beverages andjuices, by VIDA NUTRISCIENCE, INC., respondent-applicant, with address onrecord at 117 Mindanao Ave., Quezon City, Metro··Manila.

The subject trademark application was published for opposition in theIntellectual Property Office Official Gazette which was officially released forcirculation on 30 March 2007.

The allegations of facts and grounds in support of the instant of the instantopposition are provided, in sum, as follows:

1. Ph il. Morinda Citrifolia, Inc. was incorporated in 2001, when itstarted to use the mark "PhiINONI" to describe its noni food/d ietarysupplements, and has devoted all its capitalization, manpower, timeand resources to manufacture, trade, distribute and promote itsproduct bearing the mark "PhiINONI".

2. Since February 2002, the opposer registered as a member ofthe Evangelical Business People and Entrepreneurs for Socia lTransformation (also known as 'IE-BEST"), an organization thathelps build and grow Philippine Business locally. In addition , E-BESTis also a member of Partners Worldwide (PWW), an internationa

r,

business partnership group that provides business support to

Republic of the Philippines J. INTELLECT~A.L PROPE~!Y.OFFICE . 1

351 Sen . GIl Puyat Ave., Makati City 1200 Philippines • www.ipophil.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email : mail@ipop hil.gov.ph I

various countries. Opposer has then started to promote its nonifood/dietary supplement with the trademark "PhiINONI" through theE-BEST Philippine network and the PWW international network,covering several countries.

3. Since October 2003, the opposer has had numerous productslogos, labels, brochures, print and other advertising and marketingmaterials made for the advertising and promotion of its mark"PhiINONI".

4. From 21-23 November 2003, the opposer was an Exhibitor atthe Center for the International Trade Expositions and Missions(CITEM) Asian Ethnic Food Fest Philippines where opposer exhibited,promoted and sold its noni food/dietary supplement with thetrademark "PhiINONI" at the E-BEST booth.

5. From 13-15 May 2005, the opposer was an Exhibitor at theCenter for International Trade Expositions and Missions (CITEM)International Food Exhibition (IFEX) Philippines where opposerexhibited, promoted and sold its only product - the nonifood/dietary supplement known by the "PhiINONI".

6. During the 2005 CITEM IFEX Philippines, the respondentbecame aware of the opposer's Philippine and International use andpromotion of the mark "PhiINONI" since 2001 when therespondent's VP/Managing Director, Mr. Romeo R. Tizon, inquiredon the opposer's use of the its mark and requested and receivedfrom the opposer's President, Dr. Tito E. Contado, a photograph ofthe evolution of the opposer's mark.

7. From July to September 2006, the opposer placed dailyadvertisements for its noni food/dietary supplement with thetrademark "PhiiNONI" on the Community Cable Vision Corp.'sCommunity Channel 8 which reaches the municipalities of LosBanos, Bay, Calauan, Nagcarlan, Liliw and Majayjay in Laguna.

8. From 16 December 2006 until 15 March 2007, the opposerwas a regular sponsor, promoting its "PhiiNONI" noni food/d ietarysupplement on the Bio Vitale Holistic Center, Inc. 's regularly in"Likas Lunas" radio programs promoting health, wellness and theuse of natural dietary supplements in the entire Luzon area on th~

Radio Stations DWSS 1494 KHZ and DZBB 594 KHZ AM Stations. , f

\7

9. From 16-19 August 2007, the opposer was an Exhibitor at thePhilippine Exporters Confederation, Inc. ("PHILFOODEX") BUYPINOY EXPORTERS FAIR", which was held at the SM MEGATRADEHALL 1, Mandaluyong City, Metro Manila, where opposer exhibited,promoted and sold its "PhiINONI" noni food/dietary supplement.

10. In September 2007, the opposer became a member of theChamber of Herbal Industries of the Philippines, Inc. , anorganization of Philippine corporations engaged in natural, herbal,and alternative dietary supplements with Thirty-Nine (39) PhilippineMembers where opposer has promoted its noni food/dietarysupplement with the trademark "PhiINONI" through the Chamber ofHerbal Industries of the Philippines, Inc.

11. Since 2001, the opposer has sold its noni food/d ietarysupplement with the trademark "PhiINONI" throughout thePhilippines; since 2005, it has sold its noni food/dietary supplementwith the trademark "PhiINONI" in the Northern America; and since2006, it has sold its noni food/dietary supplement with thetrademark "PhiiNONI" in west Africa and South Korea". Due to thevolume of the delivered goods and the numerous delivery receipts tobe attached as evidence, and due to the short period of time withinwhich to file this Opposition, the opposer hereby manifests that itwill submits its list of delivered goods with supporting deliveryreceipts to the Philippines, Northern America, West Africa and Koreaon a later date.

12. The opposer's mark "PhiINONI" has already acquiredtremendous goodwill in the Philippines. On 21 July 2006, theNational Product Excellence Awards, Inc. which administers theNational Council for Product and Service Quality together with theConsumer Today MagaZine, conferred upon the opposer the"National Product Quality Excellence Award" and the "Seal of ProductQuality" for its noni food/dietary supplement with the trademark"PhiiNONI", which was awarded best Herbal Dietary Supplement(National Awards). It was based on an independent randomnational survey in the year 2005, considering herbal dietarysupplements found throughout the Philippines. Such that, in theyear 2005, the opposer's noni food/dietary supplement with thetrademark "PhiiNONI" was found by the National Product QualityExcellence Awards and the Seal of Product Quality as havingreceived the highest nationwide marks as Best Herbal Dietarvj(-¥

Supplement. 1(/..,-'

13. In addition to the foregoing, the opposer's mark "PhilNONI"has already attained significant registration in the Philippines and inthe world. On 25 April 2003, Philippine Bureau of Food and Drugs(BFAD) issued to the opposer BFAD Certificate of ProductRegistration No. FR-41351 for its noni food/dietary supplement withthe trademark "PhiINONI". In addition, there is no other company onrecord with the BFAD that has the same registered brand name for"PhiINONI" in the BFAD Certificate of Product Registration No. FR­41351.

14. On 15 December 2004, the opposer registered as a membersubscriber of GSl Philippines, Inc., the only Philippine corporationauthorized to allocate EAN Company Prefix Numbers, and on thesame date was conferred Global Individual Asset Identifier (GIAI)EAN.UCC Prefix Number 4809013406 and Global Location Number4809013406887 for its noni food/dietary supplement with thetrademark "PhiINONI". The EAN.UCC System is co-administered bythe Uniform Code Council, Inc. (UCC) based in the United States,and SEAN international, based in Brussels, Belgium, for globalstandards in locating products globally. In addition, therei is no othercompany on record with an EAN.UCC Prefix Number or GlobalLocation Number of the mark "PhiiNONI".

15. On 21 January 2005 the opposer applied for the registrationof its noni food/dietary supplement with the trademark "PhiINONI"with the U.s. Food and Drug Administration (FDA).

16. On 19 June 2006, more than one (1) year after therespondent first learned of, and asked for a photocopy of, theopposer's mark "PhiINONI", the respondent filed with the IntellectualProperty Office (IPO), a trademark application for the mark"PHILNONI", a flagrant and veritable imitation of opposer's"PhiINONI", seeking to register the mark under the class "05",specifically for the designated goods: "pharmaceutical preparations,herbal food supplement powder herbal and medicinal preparationdrinks, non-alcoholic drinks, beverage and juices". Clearly,respondent's application for the mark "PHILNONI" is a veritableimitation of opposer's "PhiINONI", and is likely to cause confusionand deception to the buying public, as the mark is not onlypractically identical but is also to be used for similar goods, i.e.~

food/dietary supplements. \ !I

4

17. Well-settled is the rule that a trademark application cannot beregistered if it violated any of the thirteen (13) requirements forregistrability specified in Section 123 of Republic Act No. 8293 [R.A.8293], otherwise known as the Intellectual Property Code of thePhilippines. Section 123, par. (e) of R.A. 8293 states that a markcannot be registered if it:

"(e) is identical with, or confusingly similar to, orconstitutes a translation of a mark which is consideredby the competent authority in the Philippines to bewell known internationally and in the Philippines,already the mark of a person other than the applicantfor registration, and used for identical or similar goodsor services; Provided, That in determining whether amark is well known, account shall be taken knowledgeof the relevant sector of the public, rather that of thepublic at large, including knowledge in the Philippinewhich has been obtained as a result of the promotionof the mark." (Emphasis Added)

18. As was shown in this opposition, the respondent's applicationfor the mark "PhiiNONI" cannot be registered as it violates Section123 (e) of R.A. 8293, specifically that: (a) the respondent'sapplication for the mark "PHILNONI" is identical with, or confusinglysimilar to, the Opposer's mark "PhiINONI" and is used for identi cal orsimilar goods or services; and (b) the Opposer's mark "PhiINONI" iswell known internationally and in the Philippines as already being themark of a person other than the applicant registration. Indetermining whether a mark is well known, account shall be taken ofthe knowledge of the relevant sector of the public (i.e ., theknowledge of the opposer's mark "PhiINONI" in the food, herbal anddietary supplement sector, including the knowledge in thePhilippines.

19. In determining whether a mark is well known, the opposerhas also fulfilled a combination of the criteria in Rule 102 of the IPORules & Regulations on Trademarks, Service Marks, Trade namesand Marked or Stamped Containers. As shown in this Opposition, theopposer has extensively used and promoted the mark "PhiINONI",has acquired exceptional market and customer goodwill andreputation for the mark, has significantly registered the mark, and/(there is no other known registration of the mark to any entity otherthan the opposer, in the Philippines and in the world . I

5

20. In addition to all the foregoing, a person/entity using atrademark for several years but did not register said trademark withthe IPO, may file against a person/entity using that same trademark,a criminal case for unfair competition and/or the fraudulentregistration of the trademark under Art. 189 of the Philippine RevisedPenal Code (RPC) [Act No. 3815] subject to the conditions.

21. In the present case, the respondent had prior knowledge ofthe opposer's use of the mark "PhiINONi", its goods and the generalappearance of its goods, having been a co-exhibitor with theopposer at the 13-15 May 2005 CITEM IFEX Philippines, as certifiedby CITEM's Deputy Executive Director for Operations Group 2, maoLourdes D. Mediran (Please see Annex "F") . Moreover, at the 13-15may 2005 IFEX Philippines, the respondent's VP/Managing Director,Mr. Tizon, asked from the opposer's President, Dr. Contado, aphotocopy of the evolution of the opposer's marl "PhiINONI" whichwas given to the respondent. Thereafter, only after being fully awareof the nature and appearance of opposer's mark and goods, therespondent then on 19 June 2006, with the intent to gain the mark"PHILNONI", and with no known product using the said mark, butknowing full well that this was already used by the opposer in actualtrade and commerce extensively in the Philippines and in variouscountries since 2001, filed with the IPO, a trademark application forsame mark "PHILNONI" seeking to register the mark under class"05", the same class of goods as opposer's noni food/d ietarysupplements with the mark "PhiINONI".

22. Thus, any registration of the mark "PhiINONI" in favor of therespondent would violate Philippine criminal laws, particularly , Art.189, RPC, and would result in deceiving or defrauding: (a) theopposer of his legitimate trade, as the opposer was incorporatedsolely for the purpose of manufacturing and trading Phil. MorindaCitrifolia of "noni" food/dietary supplements, and since itsincorporation in 2001 has used only the mark "PhiINONI" to describeits goods, and which mark has already been used, promoted andregistered extensively in the Philippines and the world, and as aresult thereof has already attained substantial recognition particularlyin the food/dietary supplements sector, sand has already beenawarded in the Philippines as best Herbal Dietary Supplement(National Awards); and (b) the public in general, as the registrationof the mark "PHILNONI" in favor of the respondent would then givethe respondent's goods the mark and general appearance of th~1j//

opposer's food/dietary supplement "PhiINONI", an alreadi we~I

6

known mark, particularly in the Philippines and in the food/dietarysupplement sector.

This Bureau issued a Notice to Answer dated 03 October 2007, to hereinrespondent-applicant's agent, AngelO. Olandres, Jr., requiring the filing ofAnswer within thirty (30) days from receipt. After sufficient lapse of time, thisBureau did not receive an Answer nor any motion related thereto fromrespondent-applicant's agent. Consequently, in Order No. 2007-2062 dated 21November 2007, this Bureau in accordance to Section 11 of Office Order No.79,series of 2005, ordered this instant case submitted for decision on the basis of theopposition and its evidence.

Opposer offered and submitted Annexes "A", "B" (with attachments), "C"(with attachments), "D" (with attachments), "E", "F", "G", "H", "I" (withattachments) "J" (with attachments) "K" "L" "M" "N" "0" "P" "Q" and "R", , " , , " .An examination of these annexes and its attachments reveal that several of thedocuments are mere photocopies of the original documents. Therefore, thesephotocopied documents are inadmissible in evidence for failure to comply withOffice Order No. 79, series of 2005 or the Amendments to theRegulations on Inter Partes Proceedings, to wit:

"Section 7. Filing ofPetition or Opposition -7.1 The petition or opposition, together with theaffidavits of witnesses and originals of the documentsand other requirements, shall be filed with theBureau, provided, that in case of public documents,certified copies shall be allowed in lieu of theoriginals. x x x" (Emphasis Supplied)

Thence, the following are the pieces of opposer's documentary evidencewhich are admitted in accordance to the rules, to wit:

Exhibit

"B"

"("

Description

Affidavit of Ruel P. Lunz, E-BEST's Secretary General(including attached Annexes "A" and "B")

Affidavit of Randolf Gustaf P. Luna, Pinoy EtceterarProprietor 1

7

"D" Affidavit of Azucena R. Reyes, Printing SolutionsInc. 's President

"G" Affidavit of Romeo T. Sarabia, Community CableVision Corp.'s President

"H" Affidavit of Sonny A. Viloria, Bio Vitale Holistic CenterInc., Director

"I" Certification by Marlane C. Villa-real, Buy PinoyExporters Fair Committee Chairperson

"J" Affidavit of the Chamber of Herbal Industries of thePhilippines, Inc.'s President(including attached Annex "A")

"L" Affidavit of Cristina Eugenio, National ProductExcellence Awards, Inc. 's Administrative Officer

"P" Affidavit of Hazel Amador

The issue -

Whether or not respondent-app licant's mark "PHILNONI"covering goods in classes 5 and 32 maybe allowedregistration.

Opposer's ground for the opposition of respondent-applicant's trade mark"PHILNONI" is subparagraph (e), Section 123.1 of Republic Act No. 8293,or the Intellectual Property Code of the Philippines, to wit:

"Sec. 123. Registrability. - 123.1. A mark cannot beregistered if it:

xxx

(e) Is identical with, or confusingly similar to, orconstitutes a translation of a mark which is considerel~yby the competent authority of the Philippines to be well; I

~8

known internationally and in the Philippines, whetheror not it is registered here, as being already the mark of aperson other than the applicant for registration, and usedfor identical or similar goods or services: Provided,That in determination whether a mark is well-known, accountshall be taken of the knowledge of the relevant sector of thepublic, rather than of the public at large, including knowledgein the Philippines which has been obtained as a result of thepromotion of the mark;(Emphasis Ours.)

The above-quoted provisron deduced the following concurringrequirements necessary to invalidate the allowance for registration of a trademark: (1) the subject mark is identical with, or confusingly similar to, orconstitutes a translation of opposer's mark; (2) the subject mark should be usedfor identical or similar goods or services as the opposer's goods; and, (3) theopposer's mark is well-known internationally and in the Philippines, whether ornot it is registered in the Philippines.

First. An examination of the contending word marks, opposer's "PhiINONI"and respondent-applicant's "PHILNONI", obviously shows that they are not onlysimilar but clearly identical marks, visually and aurally. The only distinction is thefirst syllable word in the contending marks which is all-capitalized in respondent­applicant's mark. Therefore, on the point alone of identical word marks, the issueof confusing similarity or the likelihood of deception or mistake on the part of thebuying public is factually evident.

Second. The contending marks have similar goods. Opposer's goods, asindicated in several affidavits admitted as evidence, cover noni food/dietarysupplements, which falls under class 5 of the Classification of Goods. On theother hand, respondent-applicant's application for registration, as part of the filewrapper records, shows goods under classes 5 and 32 which includespharmaceutical preparations namely herbal food supplement powder herbal andmedicinal preparation drinks, non alcoholic drinks, beverages and juices.

The goods of the opposer and the respondent-applicant serve the samepurpose and flow through the same channels of trade. They likewise have thesame class of purchasers. Thus, they are similar and competing goods.

Finally. The determination of whether opposer's mark is well-known isenshrined in the Rules and Regulations on Trademarks, Service Marks,Trade Names and Marked or Stamped Containers, particularly Rule 102jrwhich provides for the criteria of a well-known mark, to wit: ~ I (

9

"Rule 102. Criteria for determining whether a mark is well-known. ­In determining whether a mark is well-known, the following criteriaor any combination thereof may be taken into account:

(a) the duration, extent and geographical area of any use of themark, in particular, the duration, extent and geographicalarea of any promotion of the mark, including advertising orpublicity and the presentation, at fairs or exhibitions, of thegoods and/or services to which the mark applies;

(b) the market share, in the Philippines and in other countries, ofthe goods and/or services to which the mark applies;

(c) the degree of the inherent or acquired distinction of themark;

(d) the quality-image or reputation acquired by the mark;

(e) the extent to which the mark has been registered in theworld;

(f) the exclusivity of registration attained by the mark in theworld;

(g) the extent to which the mark has been used in the world;

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

(j) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the issue of whetherthe mark is a well-known mark; and

(I) the presence or absence of identical or similar marks validlyregistered for or used on identical or similar goods or servicesand owned by persons other than the person claiming thathis mark is a well-known mark."

The onus probandi in establishing and proving that a mark is well-know~yinternationally and in the Philippines lies on the opposer. However, with thl/

i10

pieces of evidence admitted by this Bureau, opposer failed to meet theenumerated criteria or any majority combination of the said criteria . Thus,opposer did not establish by eloquent and sufficient proof that its mark indeedgained and enjoyed a worldwide reputation internationally and in the Philippines.

This Bureau is not convinced that the affidavits executed by officers ofvarious companies (Annex "B" "C" "D" "G" "H" "I" "J" and "L") could vest, , , , , ,opposer's mark of an internationally well-known status, without attaching actualproof of sales, promotion and advertisement in the Philippines and in foreigncountries showing the actual duration, extent and geographical area in relation tothe relevant sector of the "PhiINONI" consumers worldwide. The evidence of use,adoption, consumer's patronization and wide spread promotion will cause theacquisition of the opposer's mark distinction and reputation necessary for a markto be internationally well-known mark.

In the instant case, opposer did not produce actual proof of sales andpromotional items which are distributed and made available locally and abroad .For one, the affidavit of Romeo Sarabia stated that the daily advertisement ofopposer's "PhiiNONI" through the Community Cable Vision, reached only six (6)municipalities in Laguna. Similarly, the affidavit of Sonny Viloria stated that thepromotion of opposer's "PhiINONI" through "Likas Lunas" radio program reachedonly the entire Luzon area. These proffered evidence by the opposer verilynegates the required duration, extent and geographical area required in theaforementioned criteria.

It is worthy of note that herein opposer did not even bother to apply for theregistration of its alleged well-known mark in the many countries worldwide, itallegedly claimed its mark promoted. Thus, in the light of the foregoing, th isBureau finds opposer's mark "PhiINONI" not internationally well-known for failureto meet the standards as above-enumerated.

At the outset, Opposer's membership with several organizations is notsufficient proof that it has acquired a well-known status internationally and in thePhilippines. It will be noted that Opposer's membership in an organization doesnot necessarily mean the promotion of its mark. To reiterate, Opposer has noteven bother to register its mark in the Philippines in order to be entitled toprotection. It cannot just assume that its mark is internationally well-known to beentitled to protection without registering its mark.

Following the cited laws and jurisprudence, this Bureau hereby resolves thatthe opposer failed to prove sufficiently the grounds alleged in the instan1~opposition . Hence, the Notice of Opposition must perforce be DENIED. i

11

However, this Bureau cannot take for granted the inaction of respondent­applicant in defending its claim for the application of the trademark "PHI LNONI".Such inaction of respondent-applicant is evidenced by its failure to file its Answerto the notice of opposition despite the issuance of the Notice to Answer. In whichcase, it is considered to have ABANDONED/WITHDRAWN its application forlack of interest to prosecute such application, as it is guilty of laches. In the caseof Olizon v Court of Appeals, et aI., G.R. No. 107075, September 1, 1994,the Supreme Court declared the effect of laches, to wit:

"The negligence or omission to assert a right within areasonable time warrants not only a presumption thatthe party entitled to assert it either had abandoned itor declined to assert it, but also casts a doubt on thevalidity of the claim of ownership. Such neglect toassert a right taken in conjunction with the lapse of time,more or less great, and other circumstances causingprejudice to the adverse party operates as a bar in a court ofequity."

Consequently, application bearing Serial No. 4-2006-006482 filed byrespondent-applicant Vida Nutrisciene, Inc., on 19 June 2006 for the registrationof the mark "PHILNONI", under classes 5 and 32 for pharmaceutical preparationsnamely herbal food supplement powder and medicinal preparation drinks, nonalcoholic drinks, beverages and juices is hereby considered ABANDONED/WITHDRAWN by respondent-applicant due to laches.

Let the filewrapper of the trademark "PHILNONI" subject matter of thiscase together with a copy of this Decision be forwarded to the Bureau ofTrademarks (BOT) for appropriate action.

SO ORDERED. .>:

E ELLITA BELTRAN-ABELARDOrector, Bureau of Legal Affairs ~

12