INTELLECTUAL PROPERTY

OFFICE OF THE PHILIPPINES

DKH RETAIL LIMITED,

Opposer,

IPCNo. 14-2016-00110

Opposition to:

Appln. Serial No. 4-2014-014273

Date Filed: 18 November 2014

TM: "SUPERDRY MASONRY

WATERPROOFER"

-versus-

DAVIES PAINTS PHILIPPINES INC.,

Respondent- Applicant.V ____

NOTICE OF DECISION

HECHANOVA BUGAY VILCHEZ & ANDAYA-RACADIO

Counsel for Opposer

G/F Salustiana D. Ty Tower

105 Paseo de Roxas Avenue

Makati City

CLAIRE L. C. SALVA

Counsel for Respondent-Applicant

213 Biak na Bato Street, Little Baguio

San Juan, Metro Manila

GREETINGS:

Please be informed that Decision No. 2018 - J? dated March 13, 2018 (copyenclosed) 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

(10) days after receipt of the decision together with the payment of applicable fees.

Taguig City, March 14, 2018.

MARILYN F. RETUTAL

IPRS IV

Bureau of Legal Affairs

@ www.ipoptnl.gov.ph q Intellectual Property Center

0 mail@ipophil.gov.ph H?8 uPPcr McKintey Road

+632-5539480 1634 l'hi

_

INTELLECTUAL PROPERTY

OFFICE OF THE PHILIPPINES

DKH RETAIL LIMITED, IPC No. 14-2016-00110

Opposer,

Opposition to:

-versus- Appln. Serial No. 4-2014-014273

Date Filed: 18 November 2014

DAVIES PAINTS PHILIPPINES INC., Trademark: "SUPERDRY MASONRY

Respondent-Applicant. WATERPROOFER"

x x Decision No. 2018- Si-

DECISION

DKH Retail Limited,1 ("Opposer") filed an opposition to Trademark ApplicationSerial No. 4-2013-014861. The application, filed by Davies Paints Philippines Inc.

("Respondent-Applicant)2, covers the mark "SUPERDRY MASONRY WATERPROOFER"

for use on "paints" under Class 02 of the International Classification of goods and

services3.

The Opposer claims to be the prior adopter, user and true owner of the mark

"SUPERDRY", which it registered in the Philippines and abroad. It alleges, among

others, that its parent company, SuperGroup PLC, began with the founding of Cult

Clothing in 1985 by Julian Dunkerton and a former business partner. The original

Cult Clothing store in Cheltenham led to the creation of others across the country. In

2003, Julian joined forces with designer, James Holder, who had previously founded

the Bench brand, to develop and create a new in-house brand "SUPERDRY". The

brand has since gained both recognition and popularity in the United Kingdom and

overseas and underpins the growth of the business. Following the successful

introduction of "SUPERDRY" into Cult Clothing stores, a second store format,

branded as "SUPERDRY", was launched in 2004. It maintains a website at

http://www.superdry.com/ where information about its history, brands, products and

services, among others, are available. In support of its opposition, the Opposer

submitted the following:4

1. affidavit of Mr. Shaun Simon Wills, previous Director of the Opposer;

2. affidavit of Euan Sutherland, Director of the Opposer;

3. affidavit of Atty. Joy Marie R. Gabor-Tolentino; and,

1 A corporation duly organized and existing under the laws of England with principal office at Unit 60 The

Runnings, Cheltenham, Gloucestershire GI51 9NW, United Kingdom.

2 A domestic corporation with business address at #641 T. Santiago St., Lingunan, Valenzuela City, Philippines.

3 The Nice Classification is a classification of goods and services for the purpose of registering trademarks andservice marks based on a multilateral treaty administered by the World Intellectual Property Organization. The

treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the

Purpose of the Registration of Marks concluded in 1957.

4 Marked as Exhibits "B" to "D", inclusive.

m© www.ipophil.gov.ph q Intellectual Property Center

© mail@ipophil.gov.ph "?8 uPPe' McKintey RoadMcKmk.'y 'Mhill town Center

O +632-2386300 Fort BonilLo.Tng^Cyfg +632 5539480 1634 Wiilippines

4. printouts from the IPOPHIL database.

The Respondent-Applicant filed it Answer on 30 August 2016 alleging, among

other things, that the Opposer failed to prove that the latter's "SUPERDRY" mark is

well-known. It also denies that there is likelihood of confusion between the goods of

the competing marks. The Respondent-Applicant's evidence consists of the affidavit

of its president, Johnlee Garcia.5

Pursuant to Office Order No. 154, s. 2010, the case was referred to

mediation. The parties, however, failed to reach any settlement. Accordingly, the

Adjudication Officer conducted a preliminary conference on 04 April 2017 where only

the representative of the Opposer appeared. For the Respondent-Applicant's failure

to appear at the preliminary conference, it is deemed to have waived its right to file

position paper. Therefore, the position paper it submitted is considered stricken off

the records. With the submission of the Opposer's position paper, the case is now

deemed submitted for resolution.

The issue to be resolved is whether the mark "SUPERDRY MASONRY

WATERPROOFER" should be allowed registration.

Records reveal that at the time the Respondent-Applicant filed its application

on 18 November 2014, the Opposer has valid and existing registrations of its

"SUPERDRY" marks issued as early as 19 November 2009.

To determine whether there is confusing similarity, the competing marks

marks are reproduced as follows:

DAVIES

SUPERDRY Waterproofing Paint

Opposer's mark Respondent-Applicants mark

The competing marks similarly appropriate the compound word "SUPERDRY".

Be that as it may, this Bureau finds that the latter mark may be allowed registration.

Section 123.1 (d) of Republic Act No. 8293, also known as the Intellectual Property

Code of the Philippines ("IP Code") provides that:

1 Marked as Exhibit "1".

/Wf2

"123.1. A mark cannotbe registeredifit:

(d) Is identical with a registered mark belonging to a different proprietor

ora mark with an earlier filing orpriority date, in respect of:

(i) The same goods orservices, or

(ii) Closely relatedgoods orservices, or

(Hi) Ifit nearly resembles such a mark as to be likely to deceive or cause

confusion: jaor'TEmphasis supplied.)

Confusion, much more deception, is highly unlikely in this case because of the

disparity of the goods involved. The Opposer's "SUPERDRY" marks cover "bleaching

preparations and other substances for laundry use; cleaning, polishing, scouring and

abrasive preparations; soaps; perfumes; perfumery, body mist, body wash, body

spray, body lotions, bubble bath, shower gel, lip gloss, lip balm, essential oils,

cosmetics, hair lotions; dentifrices; deodorants for personal use; antiperspirant

deodorant, cologne, aftershaves; airperfuming preparations; all the foregoing as far

as included in class 03 and not in other classes", "optical apparatus and instruments;

sunglasses, sports goggles, spectacles; cases, cords and chains for sunglasses,

spectacles and sports goggles; laptop bags; all types of scientific, nautical,

surveying, photographic, cinematographic, optical, weighing, measuring, signaling,

checking (supervision), teaching apparatus and instruments; apparatus and

instruments for conducting, switching, transforming, accumulating, regulating or

controlling electricity, belonging under class 09 and not included in other classes;

apparatus for recording, transmission or reproduction ofsound or images; magnetic

data carriers, recording discs; automatic vending machines and mechanisms for

coin-operated apparatus; cash registers, calculating machines, data processing

equipment and computers; computer hardware; computer software", "precious

metals and their alloys and goods in precious metals or coated therewith, not

included in other classes; jewellery, precious stones; horological and chronometric

instruments; watches, watch bands, watch straps, watch cases, and parts and

accessories relating thereto", "bags, handbags, shoulder bags, toiletry bags, kit

bags, rucksacks, sports bags, beach bags, swing bags, hip bags, travel bags,

luggage, wallets, purses, umbrellas, parasols; leather and imitations of leather and

goods made of these material belonging under class 18 and not included in other

dasses"and "clothing, namely, casual clothing, hooded sweatshirts, jeans, printed t-

shirts, lined and un/inedjackets, short sleeve and long sleeve embroidered t-shirts,

printed and embroidered sweatshirts, trousers, fleece pullovers, socks, skirts, shorts,

scarves, gloves, underwear; all types of footwear under class 25, all types of

headgear under class 25". Not only are these obviously unrelated to paints, which

the Respondent-Applicant uses or intends to use its mark, the target consumers and

channels of trade are different. Therefore, the prospective buyers of the Opposer will

not be confused, misled and/or deceived that the "SUPERDRY" products are in any

way related or connected to that of the Respondent-Applicant's "SUPERDRY

MASONRY WATERPROOFER".

/fljf

Moreover, the Trademark Registry of this Office, which this Adjudication

Officer may take judicial notice, reveals other registered marks that appropriate the

word combination "SUPER" and "DRY", belonging to other entities and/or proprietors

such as:

Diaperi

Reg. No. 4-2017-502527 Reg. No. 4-2005-010241

CAREFREE SUPER DRY

Reg. No. 4-2005-004378

Therefore, trademarks that use "SUPERDRY" or "SUPER DRY" have co-existed

long without causing confusion, mistake or deception. Noteworthy, the registrations

of the marks "SAN MIGUEL SUPER DRY" and "CAREFREE SUPER DRY" were issued

respectively on 25 February 2008 and 30 July 2006, way before the Opposer was

granted any of its trademark registrations. This only shows that it is not the Opposer

which first applied the words "SUPER" and "DRY" as its trademark.

Furthermore, it is emphasized that the essence of trademark registration is to

give protection to the owners of trademarks. 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

product.6 The Respondent-Applicant's mark sufficiently met this function.

WHEREFORE, premises considered, the instant opposition is hereby

DISMISSED. Let the filewrapper of Trademark Application Serial No. 4-2014-

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

014273 be returned, together with a copy of this Decision, to the Bureau of

Trademarks for information and appropriate action.

SO ORDERED.

Taguig City, \] 3 MAR Mb

Atty. Z'SA MAY\B. SUBEJANO-PE LIM

Adjudication OfficerBureau of Legal Affairs