INTELLECTUAL PROPEHTV

OFFICE □* THE PmUPPlNtB,

STARWOOD HOTELS & RESORTS WORLDWIDE, INC.,}

Opposes }

!PC No. 14-2015-00597

Opposition to:

-versus-

Appln, Serial No. 4-2015-006820

Date Filed: 19 June 2015

OCEANIC EMPIRE LIMITED,

Respondent-Applicant

TM:W FIFTH AVENUE

NOTICE OF DECISION

ROMULO MABANTA BUENAVENTURA

SAYOC & DE LOSE ANGELES

Counsel for Opposer

21 5I Floor, Phliomlife Tower

8767 Paseo de Roxas, Makati City

CRUZ MARCELO & TENEFRANCIA

Counsei for Respondent-Applicant

9'», 10*, 111"& 12th Firs., One Orion

111hl Avenue corner University Parkway

Bonifacio Global City 3 634

GREETINGS:

Please be informed that Decision No. 2018 - _2f dated 20 February 2018[copyenclosed) was promulgated in the above entitled cose.

Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007

series of 2016, any parly may appeal the decision to the Director of the Bureau of Legal

Affairs within ten (10) days offer receipt of the decision together with the payment of

applicable fees.

Taguig City, 22 February 2018.

MARILYN F. RETUTAL

IPRS IV

Bureau of Legal Atfairs

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STARWOOD HOTELS &

RESORTS WORLDWIDE, INC.,

Opposer,

-versus-

OCEANIC EMPIRE LIMITED,

Re^pon tlen t-A pplicau t,

-x

IPCNO.14-2U15-00597

Opposition to:

App No.: 4-2015-00682Q

Date Filed: 19 June 2015

T\1: "W FIFTH AVENUE"

Decision No- 2018-

DECISION

STARWOOD HOTELS & RESORTS WORLDWIDE, 1NCJ ("Opposer") filed an

Opposition to Trademark Application Serial No. 4-2015-006820. The application, fikd by

OCEANIC EMPIRE LIMITED2 ("Respondent-Applicant") covets the mark "W FIFTH

AVENUE" for use on "real estate affairs" under Qass 36 of the International Classification of

goods3

The Opposer alleges the following grounds:

"Jl. The approval of !he application in question is contrary to Section 123 (d) of

Republic Act No. 8293, otherwise? known as (he Intellecluii] Property Code of the

Philippines, which provides as follows:

XXX

"12. The approval of the application in question will violate Opposcr's righl to

its registered trademarks.

"13. Kt-sponcient-AppMcinrH mark "W FIFTH AVENUE" is eonEusingly similar

(o the registered "W (WORDMARK" and JW (STVL12EU)" trademarks of Opp«ser,

xxx

It is dear from the above table Ihdt the "W FIFTH AVENUE" mark of Ihe

Refipondenl-Applicanf can be mistaken to have a connection with the Opposer's W

oJ Wllll ITS principal n<Y'CC al One1 A pnv^lc corpfinlinn duly nrgjmircJ Jind cxislLni- [indcr the I«H nf UlC UillEtid

Silamfurd, CunnetliCuC 06902 UniKd Slaltsof AlTlCJlCfl

2 A corpM^uon oifDUZfJ -md ciiiiling under ihc law, of JinMish Virgin lil^inl^ *i[h principal address al P O. Ro* 9&

Ccnrrc. RottdTown. Tonnli BnusJi Virgin Islands

3 The Nfce C]u6S[fnai[&n i& a clas£iJicaiicni of goods nud skvlcct tor riic pwrpOK <it jteunriug Lradeniivk and service marks, basotl nn the

[iiLiliilaicrsI irciny adminisicTcdi by ihc WttSi LDLfiOeCQjj] Prufieriy Oigainiaiicm The treaty n tailed ihc Nice AgrtcTnenL CraCPmbig ihc

lnternaliond I JasiiiiLuliim ufGuods and SffVhCCS 1(H Ihe PlirpfiSC ofUie Rcgi^lmlira i>f Murki ujncluded iu 1957

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l.ln-p-1'i hi' KmLr , tKVa

I tmmi.ir hi Q

Hotels brand. It is apparent Thai i( is intended to ride on the popularity and goodwill of

the Opposed brand and lo confuse, deceive and/or mislead the purchasing public into

believing thai the Respondent-ApphcanfA goods and services arc Ebe same and/or

dealers.

"14. Hence, because of the confusing similarity between the "W FIFTH

AVENUE" of the Respondent-Applicant and the registered "W (WORDMARK" and "W

(STYLIZED)" trademarks of Opposer, ihe approval of the application in question will

cause great and irreparable damage and injury lo the herein Opposer."

Opposer's evidence eunsists of the following:

1. Authenticated and legalized Special Tower of Attorney;

2. Details of Trademark Registration No. 4-2005-011847 for Ehe mark W (WORDMARK)

as downloaded from WIPO Global Brand Database website for Classes 43 and 44

registered on 26 February 2007;

3. Details of Trademark Registration No. 4-200S-011847 for the mark W (WORDMARK)

as downloaded from WHO Global Brand Database website for Class 41 registered on 23

July 2007;

4. Details of Trademark Registration N©> 4-2007-001250 for die mark W HOTELS

{STYLIZED) as downloaded from WIPO Global Brand Database website for Class 37

and 43 issued on 10 March ZOOS;

5. Printout of List of W Hotels Hotel List downloaded from the website

http:/ / www.starwoodhoteils.com;

6. Representative List of Countries where W Formative have been published or

registered; and

7. Copy of "Industry Acclaim" page ior W Hotels,

This Bureau issued on 07 March 2016, a Notiee to Answer and served it to Respondent-

AppDcant's counsel on It) March 2U16. After several motions for extension o( tune, Respondent-

Applicant filed the Verified AnswTer on 08 June 2016 alleging the following Special and

Affirmative Defenses:

"L There is no confusing simihinty between the Respondent-Appiicant's "W

FfFTH AVKNUL" mark and tht* Opp^er's mark.

"A. There is distinct visual dnd durdl dissimilarities beHveen the Respondenl-

Applicant's "W FIFTH AVENUE" and the Opposer's mark,

"B. The mere presence of the common element "W" is not a ground Co proscribe

"C. The services covered by the Respondent-Applicant's "W FIFTH AVE-INUli"

2

mark and the Opposer's mark are not related;

"Dr There is no likelihood of confusion Jo ihe relevant public.

"II. The registration of Respondent-Applicant1s "W FIFTH AVENUE" mark will

not dilute the Opposer's marks.

"III. Opposer's non-use of its marks in Philippine commerce does not vest upon it

ownership of the mark. Hence, it cannot oppose Respondent-Applicant's application."

Respondent-App I irant's evidence consists of the following:

1. Copy of the Registrability Report for Application No. 4.2015-006320 for the mark "W

FIFTH AVENUE";

2. Copy of the Respondent-Applicant's Response to the regislrability report dated IS

August 2015;

3. Copy of the Notice of Allowance for the "W FIFTH AVENUE" mark dated 02

November 2015;

4. Details of various trademarks registered in the Philippines using the "W" element in

the composite marks used in various classes; and

5. Copy of the Declaration of Actual Use for the mark W (wordmark) filed an 02

December 2008.

Pursuant to Office Order No. 154, fl, 2010, the case was referred Io the Alternative

Dispute Resolution ("ADR") for mediation on 15 June 2016, However, the parties failed to settle

their dispute. On 26 October 2017, the preliminary conference was terminated and the parties

were directed to file their respective position papers On 20 November 2017, the parties

simultaneously filed their Position Papers.

Should the Respondent-Applicant's "W FIFTHAVENUE" mark be allowed registration?

Opposer anchors its opposition on Section 123.1 (d) of Republic Act No. 8293, otherwise

known as the Intellectual Property Code of Ehe Philippines {H|IP Code), as amended, which

provides:

Sec, 123. Regisirability. - 123.1, A mark cannot be registered if it:

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

mark with an earlier filing or priority date, in respect of;

(i) The same goods or services, or

(li) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause

confusion;

It is clear from the above provision of the IP Code that whenever a mark subject of an

application for registration resembles another mark which has been registered or ha& -in earlier

filing or priority dale, said mark cannot be registered.

Records will show that at the time Respondent-Applicant filed its application for

registration ai the mark "W FTFTH AVENUE" on 19 June 2015, Opposer already has an existing

registration fur the marks "W" and "W HOTELS". As such, the certificate of registration in its

name is a -prima facie evidence of the validity of its registration, its ownership of the mark and its

exclusive right to use it in connection with the ^oods and/or services and those that are related

thereto, pursuant to Section 138 of the IP Code. Thus, the Opposer has the right to oppose the

application for registration of a mark which is identical or similar to its marks, as in this case.

But arc the marks of the parties confusingly similar as to likely cause confusion or

mistake on the public? The Opposer and Respondent-Applicants trademarks are reproduced

below for comparison.

w wHOTELS

Opposer's Marks

WFIFTHAVENUE

Respondent-Applicant's Mark

A practical approach to the problem of similarity or dissimilarity is to go into the whole

of the two trademark pictured in their manner of display. Inspection should be undertaken

from the viewpoint of the prospective buyer. The trademark complained of should be compared

and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be

infringed. Some such factors as "sound; appearance; form, style, shape, size or formal; color;

ideas connoted by marks; the meaning, spelling and pronunciation, of words used; and the

setting in which the words appear" may be considered,4 Thus, confusion is likely between

marks only if their overall presentation as to sound, appearance or meaning would make it

possible for consumers to believe that the goods or products, to which the marks are attached,

comes from the same source or are connected or associated with eaeh other.

The manifest similarity between Opposer's "W" and "W HOTEI.S" marks and

Respondent-Applicant's "W FIFTH AVHNUri" mark is the present of the letter "W". However,

the adoption by Respondent-Applicant of the letter "W" in its mark does not automatically

makes it confusingly simiJar with that of Opposer's marks. The letter "VV" has been used and

registered as a standalone trademark or in combination with other word/words ot elements as

composite mark by various entities for different classes of goods. A scrutiny of the search result

for "W in the Trademark Database of this Office would reveal Ehat Opposer has not solely

appropriated the letter "VV" to the exclusion tif others, This Office has registered 343 trademarks

adopting the letter "W" as a standalone mark or in combination with other word/words or

elements under different classes of goods. As such, the mere presence of the letter "W" in

Respondent-Applicant's mark is insufficient to establish a finding of confusing similarity

between the competing marks to sustain the opposition. It also highlights the fact that the letter

'W" is widely used as a trademark and taken alone is not very distinctive as to effectively

icrentify a single source or origin of goods or services. Hence, what will determine whether the

competing trademarks are confusingly similar are the oilier words or symbols present in the

marks. In this case. Respondent-Appficant's mark also contains the words "FIFTH AVENUE" to

form the mark "W FIFTH AVENUE" in contrast to Opposer's marks "W" and "W HOTELS", A

perusal of the evidence submitted by Opposes shows that it has not adopted the word "FIFTH

AVE'NUE" in any of its marks. This is very clear from the listing of trademarks that have been

registered by Opposer in other countries. Thus, it cannot be said that they are confusingly

similar.

Moreover, Respondent-Applicant's mark is being applied for use on real estate affairs

under class 36 which is different and unrelated to that of Opposer's hotel and resort, restaurant,

bar and spa businesses covered by classes 43 and 44. In Taiwan Koliti Corporation Ltd. v. Koliu

Electronics Co., lvC?> the Supreme Court held:

In resolving one of the pivotal issues in this case—whether or not the

products of the parties involved are related —the doctrine in Mighty Corporation

is authoritative. There, the Court held that the goods should be tested against

several factors before arriving at sound conclusion on the question of

related ness. Among these are:

q A.fi. v DirwlorcifPaiem*, OR No [-70635,31 Much ISfifi

JG.B Nb,20»e.2S MarchMIS

(a) the bueirteBS (and its location) to which the goods belong;

(b) the clays of product lo which the good*, belong;

(c) the product's quality, quantity, or size, including the nature of the

package, wrapper or container;

(d) the nature and cost of the articles;

(e) the? descriptive properties, physical attributes or essential

characteristics with reference to their form, composition, texture or quality;

(f) the purpose of the goods;

(g) whether the article is bought for immediate consumption, that is,

day-to-day household items;

(h) the fields of manufacture;

(i) the conditions under which the article is usually purchased; and

(j) the channels of trade through which Ihe goods flow, how they are

distributed, marketed, displayed and sold.

As correctly pointed out by Respondent-Applicant, Oppuser's and Respondent-

Appficant's marks arc used on different goods/services. Respondent-Applicant's business

relates to temporary accommodation and hospitality services such as hotels, resorts and motels

which offers also entertainment and leisure services while Respondent-Applicant's business

deals with offering high-end real estate development services marketed towards those who

need to purchase or secure a long term lease for office or retail businesses. These goods/services

Lire also being offered in different channels of trade.

Since the marks as well as the goods upon which the marks are used are different, there

is no likelihood of confusion to the relevant public. In addition, the goods/services being

offered by the parties are not the usual or ordinary household items. These services being

offered by the parties are not readily purchased by ordinary buyers who do not exercise much

prudence in their purchases.

ha Del Monte Corporation i'. Court ofApjwils, the Supreme Court noted Ehat:

|WJhat essentially determines the attitudes of the purchaser, specifically

his inclination to be cautious, is the cosl of the goods. To be sure, a person who

buys a box of candies wilt not exercise ab much care as one who buys an

expensive watch. As a general rule, an ordinary buyer does not exercise as

much prudence in buying an article for which he pays a few centavos as he does

in purchasing a more valuable thing. Expensive and valuable items are

normally bought only after deliberate, comparative and analytical investigation.

But mass products, low priced articles in wide use, and mailers of everyday

'■ ■

purchase requiting frequent replacement are bought by the casual consumer

without great care.,..

En this case, a person who wishes to avail of the luxurious hotel and resort services, buy

or lease A real estate: property are "predisposed to be more cautious and discriminating in and

would prefer to mull over his purchase"*1 as it would involve spending hard earned money or

savings, or constitute a long term investment of his/her money. Thus, confusion and deception

in this case, is less likely.

AnenL Opposer s argument that the registration of Respondent-App I icant's mark will

cause dilution of its 'W marks, this Bureau finds the argument untenable. In lain SfTBJASS Co., el.

AL v. Clinton AppitreUe, Inc.7, the Supreme Court stated:

Trademark dilution is the lessening of the capacity of a famous mark to

identify and distinguish goods or services, regardless of the presence or absence

of: (1) competition between the owner of the famous mark and other parties; or

(2) likelihood of confusion, mistake or deception. Subject to the principles of

equity, the owner of a famous mark is entitled to an injunction "against another

person's commercial use in commerce of a mark or trade name, if such use begins

after the mark has become famous and causes dilution of the distinctive quality

of the mark," This is intended to protect famous marks from subsequent uses that

blur distinctrveness of the mark or tarnish or disparage it

Based on [he foregoing, to be eligible for protection from dilution, there

has to be a finding that: (1) the trademark sought to be protected is famous and

distinctive; (2) the use by respondent of "Paddocks and Design" began after the

petitioners' mark became famous; and (3) such subsequent use defames

petitioners' mark. In the case at bar, petitioners have yet to establish whether

"Dockers and Design" has acquired a strong degree of distinctiveness and

whether the other two elements are present for their cause to fall within the

ambit of the invoked protection.

For a trademark dilution to happen, the mark must first and foremost, he famous. The

records of this case is bereft of any evidence showing that Opposer's mark is famous in the

Philippines. In fact, Opposer failed to prove that it has presence in the Philippines or have

actually used its mark in the country for tt to have acquired goodwill u to be entitled protection

Emerald Caimcm Ml? Corporation v Court of AppcaK Ci.R No I0QW*. Hwemher 2%

from dilution, Even the declaration of use that it filed with the Bureau of Trademark failed lo

show Ehat the mark was actually used in the Philippines,

Finally, 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 el superior article of merchandise, the fruit of his industry and skill; to assure the public

thai 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.1*

Respondent-Applicant's mark meet this function.

Accordingly, the registration of Ihe Respondent-Applicant's mark is not proscribed

under Section 123.1 (d) of the IP Code,

WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let

the filewrapper of Trademark Application 5erial No. 4-2U13-UU6820, together with a copy of this

Decision, be returned to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

TaguigCity, 1 Q FEB

MAHl-ITAV. DAGSA

A ijudkation Officer

Bureau of Legal Affairs

HHrrhhJah I Mirpun v Cuutlol"Appeals, G. R No IJ450S. 19 Nov