INTELLECTUAL PROPERTYPHILI PPINES

-versus-

GLOBAL QUEST VENTURES, INC.,Represented by Antonio Lim Hing,

Petitioner,

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MA. SHARMAINE R. MEDINA, }Respondent, }

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DECISION

IPC NO. 14-2006-00121Case filed on : August 31,2006Cancellation of:Reg. No. 4-2005-004181Date Issued: June 25,2006TM: " MR. GULAMAN"

Decision No.---L...~

This is a Petit ion for the Cancellation of the Certificate of Registratio n ofthe mark "MR. GULAMAN" under Registration No. 4-2005-004181 issued onJune 25, 2006. On May 9, 2005, Respondent herein filed its application for theregistration of the mark "MR. GULAMAN " under Class 29 of the internationalclassification of goods. On June 25, 2006, the mark was registered in the nameof Ma. Sharmaine R. Medina and Certificate of Registration No. 4-2005-004181was issued to her.

On August 31, 2006, this instant Petition for Cancellation was filed byGLOBAL QUEST VENTURES, INC. represented by Antonio Lim Hing("Petitioner" for brevity) , a domestic corporation engaged in the manufacture andsale of the product Mr. Gulaman , with principal place of business at 1841 P.Hidalgo Lim Street, Malate, Manila. The grounds relied upon by Petitioner areherein reproduced:

"3. Petitioner is engaged in the manufacture and sale of gulamanjelly powder mix bearing the copy righted name MR. GULAMAN and itslogo design as prin ted in the box and sachet used in the packagin g.

4. Some time in 2004, petitioner learned that a gro up of persons,who are doing business under the name Bendum Trading, imitated theproduct of GLOBAL QUEST witho ut the knowledge of the same andused the copyrighted name MR. GULAMAN and logo design in thepackaging of its gula man jelly powder mix products. This fake imitation

of the product and its packaging are still circulating in th e market unti~ Anno w despite initiating so me legal actions against the perp etrators bYr~ I

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil PuyatAve., Makati City 1200 Philippines' www.ipophil.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

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herein petitioners. Bendum's packaging is almost exactly identical to thatof the application for registration of the trademark MR. GULAMANsubmitted by the Respondent and of the Petitioner.

5. On 01 February 2006, Global Quest, filed for the registration ofth e copyrighted name MR. GULAMAN (together with the devicecharacterized by a baker holding a plateful of jelly) as trademark with theIntellectual Property Office (IPO) of the Philippines with Serial (sic) No.04-2006-001148;

6. Upon filing of the application for registration thereof, petitionerGlobal Quest learned that a certain Ma. Sharmaine R. Medina has alsofiled an application for registration for trademark of the name MR.GULAMAN (STYLIZED). The application was filed on 09 May 2005bearing Serial No. 4-2005-004181;

7. Immediately after learning thereof, and without waiting for thethirty (30) day protest period, as provided by Section 134 of the RepublicAct NO. 8293 also known as the Intellectual Property Code of thePhilippines, petitioner Global Quest, through counsel, informed the IPOof its Opposition to the application of Ma . Sharmaine R. Medina;

8. Apparently, Ma . Sharmaine R. Medina is not the owner of thesaid name and logo design, but Petitioner Global Quest. The copyright ofthe name MR. GULAMAN and logo design was assigned to it by theori ginal owner Mr. Benjamin Irao, Jr. by virtue of a Deed of Assignment,dated 14 February 2005;

9. Mr. Benjamin Irao, being the assignor and Global Quest, asassignee, of the copyrighted name MR. GULAMAN and logo design,neither authorized any person or entity to use the said copyrighted namein an y business undertaking nor have given their consent for theregistration as trademark with the IPO;

10. It is also worth to mention that herein Petitioner has alsoinitiated a criminal complaint for Violation of Section 177.1 in relation toSection 216 and 217 (cop yright infringement) of R.A. 8293, against acertain Ken Co, who is behind the operation of Bendum Trading (themaker of the fake gulaman jelly powder mix using MR. GULAMAN inpackaging. The said criminal case is docketed as Criminal Case No.06242136, pending at the Regional Trial Court of Manila, Branch 24.

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11. Respondent Medina, cannot claim ownership much lessregister the copyrighted name MR. GULAMAN as trademark under hername because she is not the owner of the said copyrighted name;

12. As Respondent cannot be deemed to be using the mark asalleged owner thereof, she should not be allowed to register the same inher name, lest the essence of trademark protection is nullified. Thepurpose of the law in protecting a trademark cannot be overemphasized.Trademarks are used to point out distinctly the origin or ownership of thearticle to which it is affixed; to secure him, who has been instrumental in

bringing into the market a superior article of merchandise, the fruit of hisindustry and skill; and to prevent fraud and imposition;

13. Under the circumstance, therefore, respondent's registration ofthe trademark Mr. Gulaman (Stylized) must be cancelled pursuant toSection 151 of R.A. 8293.

In support of the petition, the following evidences were submitted:

Exhibits Description"A" Secretary's Certificate executed by

Anna Marie Chan on August 20,2006

UB" Sample of the product's boxpackaqinq

"C" Box packaging used by BendumTradino

"D" Copy of the Application forregistration of the mark "Mr.Gulaman and Device" by Petitioner

"E" Letter addressed to Dir. GeneralAdrian Cristobal by Abad andCasis Law Firm

"F" Photocopy of the Certificate ofRegistration No. 4-2005-004181 forthe mark "MR. Gulaman" in favor ofSharmaine Medina

"GIJ Certified Xerox copy of theCertificate of Copyright Registrationof the Mr. Gulaman logo design inthe name of Beniamin Irao, Jr.

IlH" Deed of Assignment executed byBenjamin Irao, Jr. of the copyrightreqistration of Mr. Gulaman (with

logo design) among other to GlobalQuest Ventures, Inc. on February14,2005

"I" Affidavit of Benjamin Irao, Jr.

"J" Certified copy of an AmendedInformation for CopyrightInfrinqement aqainst KEN CO

uK" Certified copy of Complaint-Affidavit of Antonio Lim Hing swornbefore the Prosecutor of Manila

"l" Certified copy of Affidavit of SP02Elmer Barcia sworn before theProsecutor of Manila

On September 7, 2006, Respondent was directed to file a Verified Answerto the petition. The Notice was sent to Respondent through registered mail onSeptember 14, 2006. Respondent failed to file the answer within thereglementary period so that on December 13, 2006, this Bureau issued OrderNo. 2006-1743 waiving Respondent's right to submit the Answer and itssupporting documents and directed Petitioner to file its Position Paper. OnJanuary 19, 2007, Petitioner filed its Position Paper. On February 9, 2007,Respondent-Registrant filed a Motion for Reconsideration of the Order Waivingthe Right of the Respondent-Registrant to File Answer and also praying that theattached Answer be admitted. Petitioner filed its Consolidated Opposition to theMotion for Reconsideration of the Order Waiving the Right of Respondent­Registrant to File Answer and Position Paper dated 8 February 2007 and Motionto Admit Answer dated 8 February 2007. On March 9, 2007, Respondent­Registrant filed her Reply and Petitioner filed its Rejoinder thereto on March 21,2007 . On June 4, 2007, this Bureau issued Order No. 2007-1017 denyingRespondent-Registrant's Motion. On June 28, 2007, Respondent-Registrantfiled a Motion for Reconsideration to the Order Denying Respondent-Registrant'sMotion to Admit Answer. During the hearing of the motion on July 10, 2007,Petitioner did not appear, so that, Respondent-Registrant's counsel moved thatthe motion be submitted for resolution without the comment of Petitioner for itsfailure to appear during said hearing despite due notice. Said motion wasgranted in open court. On July 24, 2007, Order No. 2007-1351 was issueddenying Respondent-Registrant's motion. Hence, this case is now submitted fordecision.

The only issue to be resolved in this case is: Whether or notRespondent's Certificate of Registration No. 4-2005-000121 should becancelled.

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Undeniably, Respondent has been issued by this Office Certificate ofReg istration No. 4-2005-004181 of the mark Mr. Gulaman. However, wh ile itmay be true that Respondent has been already been issued a certificate ofregistration , it must be emphasized that the issuance of a cert ificate ofregistration is mere ly a prima facie evidence of the registrant's ownersh ip of themark. Such presumption may be rebutted by controverting evidence. Bas ic isthe rule that the right to register trademarks, trade names and service marks byany person , corporation , partnership or association domiciled in the Philippinesor in any foreign country, is based on ownership , and the burden is upon theapplicant to prove such ownership. 1 Adoption alone of a trademark would notgive exclus ive right thereto. Such right grows out of their actual use." Inaddition , his application must not be in derogation of previously acquired andexisting rights .

Indeed, ownership of a trademark is not acquired by the mere fact ofregistration alone . Reg istration merely creates a prima facie presumption of thevalidity of the registration , of the registrant's ownership of the trademark and ofthe exclusive right to the use thereof. Registration does not perfect a trademarkright such that evidence may be presented to overcome the presumption. Prioruse by one will controvert a claim of legal appropriation by subsequent users. " InUNNO COMMERCIAL ENTERPRISES, INC. VS. GENERAL MILLINGCORPORA nON, ET. AL. 4

, the Supreme Court enunciated that:

"The right to register trademark is based on ownership. Whenthe applicant is not the owner of the trademark being applied for, he hasno right to app ly for the registration of the same. Under the TrademarkLaw only the owne r of the trademark, tra de name or service mark used todistinguish his goods, business or service from the goods, business orservice of others is entitled to register the same. "

Petitione r who seeks the cancellation of the herein subject mark positsthat Respondent-Registrant Charmaine Medina is not the owner of the mark andas such the Certificate of Registration of the mark "Mr. Gulaman" in her nameshould be canceled. According to Petitioner, it is the owner of the subject markby virtue of a Deed of Assignment executed on February 14, 2005 by its owner)ff1Benjamin Irao, Jr. / { rI Marvex Commercial Co., Inc. vs. Petra Hawpia , G.R. No. L-I9297, promulgated on December 22, 1966citing Operators, Inc. YS. Director of Patent s.2 Sterling Products International, Inc. YS . Farbenfabrike n Bayer Aktiengesellschaft, G.R. No . L-199006 ,April 30 1969.JUnno Commercial Enterprises, Incorpo rated YS . General Milling Corporation, G.R. No. L-28554 .February 28, 1993.4 Supra

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Section 122 of Republic Act No. 8293 states that:

"SECTION 122. How Marks are Acquired- The rights in a

mark shall be acquired through registration made validly inaccordance with the provisions of this law."

To prove ownership of the mark, Petitioner presented a copy of theCertificate of Copyright Registration in the name Benjamin Irao, Jr. (Exhibit "G")of Mr. Gulaman and Logo Design. Said copyright registration was issued wayback in September 16, 1996. By virtue of a Deed of Assignment, the copyrightregistration over the Mr. Gulaman and Logo Design was then ceded andtransferred to herein Petitioner on 14 February 2005. Aside from the fact ofcopyright registration by Mr. Irao (predecessor-in-interest of herein petitioner),Mr. Irao himself positively corroborated in his Affidavit that he allowed Petitionerto use his copyrighted work as trademark of Petitioner for its gulaman productsimmediately after its copyright registration in 1996. Thus, having used thecopyrighted logo as its trademark since 1996 for its gulaman products, Petitionerhas acquired ownership of the mark by prior actual use in commerce since 1996.

Worth mentioning also is the fact that a comparison of the marks of theparties shows that Respondent merely copied its mark from Petitioner's. Themarks of the parties are hereunder shown:

PETITIONER'S MARK RESPONDENT-REGISTRANT'SMARK SOUGHT TO BE CANCELLED

It is crystal clear that the word mark of Respondent-Registrant is identicalto Petitioner's mark in the sense that the appearance of her mark Mr. Gulaman is

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exactly the same in all aspects to the dominant word Mr. Gulaman as depicted inPetitioner's Mr. Gulaman and Logo Design. In fact , the records, particularly theDeclarat ion of Actua l Use filed by Respondent-Registrant, shows that shesubmitted photographs of a packaging showing the Mr. Gulaman and LogoDesign of Petitioner which all the more proved that she merely copied themark of Petitioner.

Section 151.1 of Republic Act 8293 enumerates the grounds forcancellation of a certificate of registration. Specifically, paragraph (b) of saidsection provides:

" 15 1. 1. A petition to cancel a regist rat ion of a mark under thisAct may be filed with the Burea u of Legal Affairs by any person whobelieves that he is or will be damaged by the reg istration of a mark und erthi s Act as follows:

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(b) At any time, if th e registered mark becomes the gener ic namefor the goods or services, or a portio n th ereof, for wh ich it is register ed,or has been abandoned, or its registration was obtained fra udulentlyor contrary to t he provis io ns of this Ac t , or if th e register ed mark isbein g used by, or with th e permi ssion of, th e registrant so as tomisrepresent th e source of th e goods or servi ces on or in connect ion withwh ich the mark is used. If the registered mark becomes the generi cnam e for less than all of th e goods or services for whi ch it is registered, apetition to cancel th e registration for only th ose goods or services maybe filed. A registered mark shall not be deemed to be the generic name ofgoods or serv ices solely becaus e such mark is also used as a name of or toidentify a unique product or servi ce. The primary significance of th eregistered mark to th e relevant public ra ther than purchaser motivati onshall be th e test for determining whether the registered mark hasbecome th e ge ner ic

All told, having proven by substantial evidence that Respondent'sregistration was obtained fraudulently or is contrary to the provisions of the IPCode , the cancellation of the herein subject mark is proper .

WHEREFORE , premises considered , the instant Petition for Cancellationis, as it is hereby, GRANTED. Accord ingly, Certificate of Registrat ion No. 4­2005-00 4181 issued in the name of Ma. Sharmaine R. Medina is, as it is hereby,CANCELLED.

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Let the filewrapper of instant case be transmitted to the Bureau ofTrademarks (BOT) for appropriate action in accordance with this DECISION .

50 ORDERED.

Makati City, 08 August 2008.

E5TR TA BELTRAN-ABELARDODirec or, Bureau of Legal Affairs

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