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INTELLECTUAL PROPERTY PHILIPPINES

OMEGA (OMEGA SA) (OMEGA LTD.), } IPC No. 14-2008-00103 Opposer, } Opposition to:

} Appln. Serial No. 4-2006-010808 } Date filed: 25 June 2006

-versus- } TM: "OMEGA BRAND PAINT } ROLLER COVER LABEL MARK" }

MARCH RESOURCES } MANUFACTURING CORPORATION, }

Respondent-Applicant. }

)(---------------------------------------------------------)(

SAPALO VELEZ BUNDANG &

By: I-e':

JBULILAN Counsel for the Opposer t t" Floor, Security Bank Centre 6776 Ayala Avenue , Makati City

MR. CHRISTOPHER G. ILUMIN ~&/2gfoFor Respondent-Applicant No. 90 Rubber Master Road "r. '20AJVLingunan, Valenzuela City

GREETINGS:

Please be informed that Decision No. 2010 - -.2:l... dated 19 June 2010 (copy enclosed) was promulgated in the above entitled case.

Makati City, 19 June 2010.

Republic of the Philippines Tl'.ITlf'T T If'r-rfT A' P1UlPl<U-rV Ol<1<Trl<

INTELLECTUAL PROPERTY PHILIPPINES

OMEGA (OMEGA SA) (OMEGA LTD.), } Inter Partes Case No. 14-2008-00103 Opposer, } Case Filed 12 May 2008

} Opposition to: }

-versus- } Appl'n Serial No.. : 04-2006-010808 } Date Filed : 25 June 2006 } Trademark : "OMEGA BRAND

MARCH RESOURCES } PAINT ROLLER COVER MANUFACTURING CORPORATION, } LABEL MARK"

Respondent-Applicant } x-----------------------------------------------------x Decision No. 2010-..zf...

DECISION

OMEGA (OMEGA SA) (OMEGA LTD.) ("Opposer")1 a foreign corporation duly organized and existing under the laws of Switzerland with office address at [acob-Stampfli­Strasse 961 2502 Biel/Bienne, Switzerlan, filed on 12 May 2008 an opposition to Trademark Application Serial No. 4-2006-0010808. The application, filed by MARCH RESOURCES MANUFACTURING CORPORATION ("Respondent-Applicant), with address at No. 90 Rubber Master Road, Lingunan, Valenzuela City, covers the mark OMEGA BRAND PAINT ROLLER COVER LABEL MARK for use on "paint roller use in paint application" falling under class 16 of the International Classification of goods.' The application was published in the Intellectual Property Philippines (IPP) E-Gazette, on 18 January 2008.

The Opposer alleged the following:

"1) Opposer is the first to register, adopt and use the trademark OMEGA for goods under international classes 14 and 16, especially horological goods, in the Philippines and other countries worldwide; and therefore enjoys under Section 147 of Republic Act No. 8293 the right to exclude others from registering or using, in the Philippines, an identical or confusingly similar mark such as Respondent-Applicant's trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK under international class 16 for paint roller use in paint application.

"2) There is a likelihood of confusion between Opposer's trademark OMEGA for goods under international classes 14 and 16 and Respondent-Applicant's trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK under international class 16 for paint roller use in paint application, because the latter is identical with Opposer's trademark OMEGA.

1The Nice Classification is a classification of goods and services for the purpose of registering trad emarks and service marks , based on a multilateral treaty administered by the World Intellectual Property Organization. This treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957.

Republic of the Philippines Page 1 of 8

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"3) The Opposer's OMEGA trademark is well-known internationally and in the Philippines, especially for horological goods, taking into account the knowledge of the relevant sector of the public, rather than the public at large, as being a trademark owned by the Opposer; hence, even assuming for the sake of argument that horological and related products on one hand and PAINT ROLLER USE IN PAINT APPLICATION on the other are not related or similar, the Respondent-Applicant's trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK cannot be registered in the Philippines pursuant to the express provision of Section 147.2 of Republic Act No. 8293. There is not doubt that the use of Respondent-Applicant's trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK under international class 16 for PAINT ROLLER USE IN PAINT APPLICATION would indicate a connection between these goods and the Opposer. Likewise, the interests of the Opposer are likely to be damaged by Respondent-Applicant's use of the trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK under international class 16 for PAINT ROLLER USE IN PAINT APPLICATION.

"4) The Respondent-Applicant, by using OMEGA BRAND PAINT ROLLER COVER LABEL MARK for its products is likely to cause confusion, mistake, or deception as regards its affiliation, connection or association with the Opposer, or as to the origin, sponsorship, or approval of its products by the Opposer, for which it is liable for false designation of origin, false description or representation under Section 169 of Republic Act No. 8293.

"5) Respondent-Applicant, in adopting the trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK for its products is likely to cause confusion, mistake, or deception as regards its affiliation, connection, or association with the Opposer, or as to the origin, sponsorship, or approval of its products by the Opposer, for which it is liable for false designation of origin, false description or representation under Section 169 of Republic Act No. 8293.

"Opposer relies on the following facts to supports its opposition, reserving the rights to present other evidence to prove these facts and others as may appear necessary or expedient in the course of the proceedings:

"1) The Opposer is the first to adopt, use and register the mark "OMEGA" trademarks in the Philippines and many countries worldwide.

Opposer is the first to adopt and use its OMEGA trademark for goods falling under classes 14 and 16 in the Philippines and many countries around the world. Opposer has prior use and registrations for the OMEGA trademark in the Philippines and abroad. As a matter of fact, the trademark OMEGA has been used in the Philippines by the herein Opposer and its predecessors since 1906.

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Opposer was issued by the IPO the following certificates of trademark registration:

Trademark Registration

No. Date Issued

Classes of Goods

OMEGA & Device 4-1996-110786 September 28, 2000 16

OMEGA & Device R-1766 August 23, 1996 14

Copies of the aforementioned certificates of registration are hereto attached as Exhibits A and B respectively.

"2) There is a likelihood of confusion between Respondent-Applicant's trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK and Opposer's OMEGA trademark.

Respondent-Applicant's trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARKis identical, in all respects, with Opposer's OMEGA trademark hence, would likely influence the purchasers to believe that it belongs to the Opposer.

"3) The Opposer's OMEGA trademark is well-known internationally and in the Philippines.

The Opposer has obtained registrations and pending applications for its OMEGA trademark covering the goods under international classes 14 and 16 in the Philippines and several countries around the world.

The Opposer's OMEGA trademark has been used, promoted and advertised for a considerable duration of time and over wide geographical areas. Opposer has invested tremendous amount of resources in the promotion of its trademark through magazines, newspapers, videos, movies, etc. In fact, the Opposer's OMEGA trademark has a considerable share in the market in the Philippines and in other countries. There is already a high degree of distinction of the Opposer's OMEGA trademark. Its products carried under said trademarks had, through the years, earned international acclaim, as well as the distinct reputation of being high quality products.

As a matter of fact, Opposer's OMEGA watches have been used in the official timekeeper for the Olympic games several times, particularly in 1932, 1936, 1948, 1952, 1956, 1960, 1964, 1968, 1976, 1980 and 1984. Opposer's OMEGA watches were also used in space exploration missions, including the Apollo 11 landing on the moon whereby an OMEGA Speedmaster was worn by Niel Armstrong, the first man to walk on the moon's surface on July 21, 1969.

Page 3 of 8

"4) The use of Respondent-Applicant's trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK under international class 16 for PAINT ROLLER USEIN PAINT APPLICATION would indicate a connection to the products covered in Opposer's OMEGA trademark, hence, the interests of the Opposer are likely to be damaged.

The use of the Respondent-Applicant's trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK under international class 16 for PAINT ROLLER USE IN PAINT APPLCIATION definitely misleads the public into believing that the products originate from, or are licensed or sponsored by Opposer or that Respondent-Applicant is associated with or an affiliate of the Opposer.

Respondent-Applicant has appropriated the trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK under international class 16 for PAINT ROLLER USE IN PAINT APPLCIATION for the obvious purpose of capitalizing upon or riding on the valuable reputation, goodwill and popularity in the international market for OMEGA products which Opposer gained through tremendous effort and expenses over a long period of time. This clearly constitute an invasion of Opposer's intellectual property rights .

Undoubtedly, the use of the OMEGA BRAND PAINT ROLLER COVER LABEL MARK and the sale and distribution of goods falling under international class 16 bearing the trademark OMEGA BRAND PAINT ROLLER COVER LABEL MARK by the Respondent-Applicant are inflicting considerable damage to the interests of the Opposer. To allow Respondent-Applicant to register OMEGA BRAND PAINT ROLLER COVER LABEL MARK trademark, will constitute a mockery of our laws protecting intellectual property rights as it will legitimize Respondent-Applicant's unfair and unlawful business practice.

"5) Five (5) labels of Opposer's OMEGA trademark, as actually used in commerce, which constitute the bases of its opposition, are hereto attached and made an integral parts hereof as Exhibits Cto C-4, respectively.

The Opposer's evidence consists of the following:

1. Exhibit "A" - Certified copy of Certificate of Registration No. 4-1996-110786 for the mark OMEGA & Greek Letter 0 Device, date of registration, 28 September 2000 issued by the Intellectual Property Office of the Philippines (IPP);

2. Exhibit "B" - Certified true copy of Certificate of Registration No. R-1766 for the mark OMEGA & Device, date of registration 23 August 1976, issued by the Intellectual Property Office of the Philippines (IPP);

3. Exhibits "C" to "C-4" - Tag containing the mark OMEGA & Device; and

Page 4 of 8

4. Affidavit of Edith D. Dychiao, executed on 6 May 2008, and the annexes thereto: a. Annex "A" - Identification Card of Ms. Edith D. Dychiao attached to her

Affidavit; b. Annexes "B" and "C" - Copies of certificate of registration for the mark

OMEGA & Device; c. Annex "D" - List of Trademark registrations in different countries of

the world; d. Annexes "E" to "E-4" - Sales figures of the watches sold in the

Philippines; and e. Annexes "F" to "F-S" - Promotional materials used promoting

products bearing the mark OMEGA.

This Bureau served upon Respondent-Applicant a Notice to Answer on 14 July 2008. However, the Respondent-Applicant did not file an Answer.

In this regard, Sec. 11 Rule 2 of the Regulations on Inter Partes Proceedings, as amended, provides:

Section 11. Effect of failure to file an Answer. - In case the Respondent­Applicant fails to file an answer, or if the answer is filed out of time, the case shall be decided on the basis of the Petition or Opposition, the affidavit of the witnesses and documentary evidence submitted by the Petitioner or Opposer.

The issues to be resolved in this case are the following:

1. Whether the Opposer's mark is a well-known mark; 2. Whether the competing marks are confusingly similar; and 3. Whether the Respondent-Applicant's trademark application should be allowed

On the issue of whether the Opposer's mark is well-known, Rule 102 of the Trademark Regulations, provides:

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

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

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

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(c) the degree ofthe inherent or acquired distinction of the mark;

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

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

(f) the exclusivityof registration attained by the mark in the world;

(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 whether the mark is a well-known mark; and

(1) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his mark is a well-known mark.

This Bureau finds that the Opposer failed to submit evidence that it meets at least a combination of the criteria set forth under the aforestated rule.

With respect to the second issue, the competing marks are reproduced below for comparison:

Opposer's mark Respondent-Applicant's mark

The features of the Respondent-Applicant's mark that immediately draw attention, visually and aurally, is the word "OMEGA" and the representation of the letter 0 in Greek. These features of the Respondent-Applicant's mark constitute the Opposer's registered mark.

In this regard, the Respondent-Applicant is applying for the registration of the mark for use on "paint roller used in paint application", which is similar or closely related to a product covered by the Opposer's trademark registration, particularly, painting brushes.

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These goods belong in Class 16. The Supreme Court in Esso Standard Eastern, Inc. v. Court ofAppeals, et aJ.2 held:

Goods are related when they belong to the same class or have the same 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. x x x.

Accordingly, the consumers will likely be deceived or confused as to the origin or source of the goods. The similarity in the general appearance of the competing marks evidently creates a likelihood of confusion, not only to confusion of goods but as to reputation if the public could reasonably assume that the goods of the parties originated from the same source.' Corollarily, the law does not require actual confusion, it being sufficient that confusion is likely to occur."

Going now to the third issue, it is emphasized that the essence of trademark registration is to give protection to the owners of trademarks. A trademark means any visible sign capable of distinguishing the goods of an enterprise. 5 The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; 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 products." Thus, Sec. 123.1 (d) of the IP Code, states:

SEC. 123. Registrability - 123.1. A mark cannot be registered ifit:

x x x

"(d) Is identical with a registered mark belonging to a different proprietor or mark with an earlier filing or priority date, in respect of:

(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;

In this instance, at the time that Respondent-Applicant filed its trademark application on 25 June 2006, the Opposer had already obtained trademark registration for

2 201 Phil. 803. 3 See Converse Rubber Corp. v. Universal Rubber Products G.R. No. L-2790, 8 January 1987 4 5 6

See Philips Export B. v., et. al. v. Court ofAppeals, et. al., G.R. No. 96161,21 February 1992 Sec. 121.1 of the IP Code. Pridhdas 1. Mirpuri v. Court ofAppeals, G.R. No. 114508, 19 November 1999.

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· .

the mark OMEGA. Considering therefore, that the competing marks are confusingly similar, the Respondent-Applicant's application is proscribed by Section 123.1 (d) of the IP Code.

WHEREFORE, premises considered, the instant Opposition is hereby SUSTAINED. Let the filewrapper of Trademark Application Serial No. 4-2006-010808 together with a copy of this DECISION be returned to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

Makati City, 19 April 2010.

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Atty. NAT A IEL S. AREVALO rector

Bureau of legal Affairs

PUS//lo}o j04-Feb-10