office of the president republic of the philippines o · 2011. 7. 6. · oate: san francisco coffee...

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' Republic of the Philippines o ICE COpy

OFFICE OF THE PRESIDENT SAN FRANCISCO COFFEE APPEAL NO.1 0·02-02 & ROASTERY, INC.,

Complainant-Appellant, IPV Case No. 10·2001-0001

-versus- For: Infringement and ur,falr Competition with C aim for Damages

COFFEE PARTNERS, INC., doing business under the name and style of SAN FRANCISCO COFFEE,

Respondent·Appellee. x---····-·----··-··--··--········--··x

COFFEE PARTNERS, INC., doing APPEAL NO.1 0-02-03 business under the name and style of SAN FRANCISCO COFFEE, IPV Case No. 10-2001·0001

Respondent·Appellant,

-versus- For: Infringement and ~nfalr Competition with laim for Damages

SAN FRANCISCO COFFEE & ROASTERY, INC.,

Complainant-Appellee. x ------- -.---- ---- ---..-.--x

"I'",NOTICE OF DECISION

INTERNATIONAL LEGAL ADVOCATES Counsel for Complainant Suite 1403, 14th Floor Annapolis Wilshire Plaza Condominium Annapolis Street, Greenhills, ~ .. San Juan, Metro Manila

Intellectual Property Office

GREETINGS:

Please be informed that on 22 October 2003, the Office of the Director G neral rendered a Decision in the above-titled case (copy attached).

Makati City, 23 October 2003.

Very truly yours, • ~~

ATTY. E=~cbAN~rL

COFFEE PARTNERS, INC., doing business under the name and style of SAN FRANCISCO COFFEE 2202-A The Ritz Tower, 6785 Ayala Avenue Makati City

DIRECTOR ESTRELLITA BELTRAN·ABELARDO Bureau of Legal Affairs Intellectual Property Office

DIRECTOR LENY B. RAZ Bureau of Trademarks

y ___________________________A_tt_o_rn_e_ _

{f!rl£~~lf:fe:g1u~t~~u?~falf~~hl(t::!:!CE

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Republic of the Philippines OFFI~ECOPYOFFICE OF THE PRESIDENT

OATE:

SAN FRANCISCO COFFEE APPEAL NO.1 0-02·02 & ROASTERY, INC., I

Complalnant.Appellant, IPV Case No. 10·2001-00016 I

-versus- For: Infringement and unfalj Competition with Claim for Damages


Respondent.Appellee. x··-··---·-··------··-----·---··---··x

COFFEE PARTNERS, INC., doing APPEAL NO.1 0-02-03 business under the name and style of SAN FRANCISCO COFFEE, IPV Case No. 10-2001·00016


-versus- For: Infringement and Unfal Competition with Claim for Damages


ccmptalnant-Appeuee. x---··--·-·--·-··-····-..·--·--·..---·-··-·-·x

NOTICE OF DECISION

INTERNATIONAL LEGAL ADVOCATES Counsel for Complainant Suite 1403,14111 Floor Annapolis Wilshire Plaza Condominium Annapolis Street, Greenhills, /: ~,.-' San Juan, Metro Manila /

COFFEE PARTNERS, INC., doing b~SS under the name and style of SAN FRANCISCO COFFEE 2202-A The Ritz Tower, 6785 Ayala Avenue Makati City

DIRECTOR ESTRELLITABELTRAN-ABELARDO Bureau of Legal Affairs Intellectual Property Office

DIRECTOR LENY B. RAZ Bureau of Trademarks Intellectual Property Office

GREETINGS:

Please be informed that on 22 October 2003, the Office of the Director Genertl rendered a Decision in the above-titled case (copy attached).

- • - ~-;--;.=


Very truly yours,

ATTY. E~~-t,~ ~ Attorney'V

f-----------------------.......,.---- INTELLECTUAL PROPERTY WFICE [PO Building, 351 Sen. Gil Puyat Avenue. Makati City. Philippines

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Republic of the Philippines

OFFICE OF THE PRESIDENT SAN FRANCISCO COFFEE & ROASTERY, INC.,

Complainant·Appellant,

-versus-


Respondent-Appellee. x····----------------------------------------··x COFFEE PARTNERS, INC., doing business under the name and style of SAN FRANCISCO COFFEE,


-versus-


Complainant-Appellee. x----------------------------------------------x

\ If

APPEAL NO. 10-02-02

IPV Case No. 10·2001·00016

For: Infringement and Unfa Competition with Clai Damages

APPEAL NO. 10-02-03

IPV Case No. 10-2001-00016

For: Infringement and Unfa Competition with Clai Damages

NOTICE OF DECISION

INTERNATIONAL LEGAL ADVOCATES Counsel for Complainant Suite 1403, 14th Floor Annapolis Wilshire Plaza Condominium Annapolis Street, Greenhills, San Juan, Metro Manila


DIRECTOR ESTRELLITA BELTRAN-ABELARDO Bureau of Legal Affairs Intellectual Property Office

DIRECTOR LENY B. RAZ Bureau of Trademarks Intellectual Property Office

GREETINGS:

Please be informed that on 22 October 2003, the Office of the Director Gene Decision in the above-titled case (copy attached).


Very truly yours, .

ATTY. E-=~-t.'AN AttorneyW

INTELLECTUAL PROPERTY

r for

r for

al rendered a

IPO Building, 351 Sen. Gil Puyat Avenue. Makati City, Phi ippines

Republic of the Philippines

OFFICE OF THE PRESIDENT I, iI

SAN FRANCISCO COFFEE APPEAL NO.1 0-02-02 & ROASTERY, INC.,

Complainant-Appellant, IPV Case No.1 0-2001-00016

-versus- For: Infringement and Unfair Competition with Claim r Damages


Respondent-Appellee. x--------------------------------------------------x

COFFEE PARTNERS, INC., doing APPEAL NO.1 0-02-03 business under the name and style of SAN FRANCISCO COFFEE, IPV Case No. 10-2001-00016

Respondent-Appellant,

-versus- For: Infringement and Unfair Competition with Claim r Damages


Complainant-Appellee. x--------------------------------------------------x

DECISION

This case involves the determination of the following issues:

1. Whether or not COFFEE PARTNERS, INC. oing business under the name and style of SAN FRANCI CO COFFEE, is liable for infringement and u fair competition; and ,

2. Whether or not SAN FRANCISCO COFFE & ROASTERY, INC. is entitled to recover damages. ,

OCT 22Z803

t I INTELLECTUAL PROPERTY WFICE

[PO Building, 351 Sen. Gil Puyat Avenue. Makati City, Phi ippines

·'

Records show that on 24 October 2001, SAN FRANCISCol COFFEE &

ROASTERY, INC., (Complainant), a corporation duly organized nd existing

under the laws of the Philippines, filed a complaint before the Bur au of Legal

Affairs (BLA) praying that judgment be rendered ordering COFFEE ARTNERS,

INC., a corporation, doing business under the name and st Ie of SAN

FRANCISCO COFFEE, (Respondent), to cease and desist fro using the

business/trade name SAN FRANCISCO COFFEE and to pa damages,

attorneys fees and cost of suit.

Complainant alleged that it is engaged in wholesale and retai business of

coffee since its registration with the Securities and Exchange Comm ssion (SEC)

on 05 May 1995 and that it secured a Certificate of Registration for he business

name SAN FRANCISCO COFFEE & ROASTERY, INC. from the 0 partment of

Trade and Industry (OTI) on 16 June 1995. On 20 October 1998, omplainant

and Boyd Coffee Company USA formed a joint venture under the name Boyd

Coffee Company Philippines, Inc. (BCCPI), to engage in the process ng, roasting

and wholesale selling of coffee. Complainant maintained that to strategically

reposition its business activity, it decided to go to into retailing coffee and

embarked on a project study of setting up coffee carts in mall and other

commercial establishments in Metro Manila while planning to initiall venture on

operating four (4) coffee carts beginning September 2001. Howev r, sometime

in June 2001, Complainant claimed that it was surprised to find out tie eXisten~•

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san francisco vs. cOff~e partners page 2 of 1

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of a shop in E. Rodriguez Avenue, Libis, Quezon City bearing th name SAN

FRANCISCO COFFEE. According to the Complainant, the shop bears not only a

similar and/or the same name but is also engaged in the busine s of selling

coffee thereby inevitably causing a stir, uncertainty, deception, and confusion in

the minds of the public.'

In its Answer with Counterclaims, Respondent claimed hat it is a

legitimate Philippine business enterprise and is authorized by an ent ty known as

Coffee Partners Ltd., a corporation in British Virgin Island, to use th mark SAN

FRANCISCO COFFEE & DEVICE in the Philippines, and in fact, f led with the

Intellectual Property Office (IPO) applications for the registration of t e mark SAN

FRANCISCO COFFEE & DEVICE, for Class 422 in 1999, and, for lass 353 in

the year 2000. Respondent argued that its mark could not be confu ed with the

Complainant's trade name due to the marked distinctions in their a

Complainant, said the Respondent, had stopped operating under t

name SAN FRANCISCO ROASTERY, INC. after BCCPI was fo ed, and it

cannot be said that it is unfairly competing with the Complainant

than insisting on its exclusive right to the use of the terms "SAN

COFFEE", had not cited specific acts of Respondent showing that it had throU9~'

1 COMPLAINT, pp. 1-2. 2 Provision of food and drink, namely, coffee and related food and bevera es; retail and wholesale trade of coffee, coffee-related products, related food, beverages and merchandise; restaurant services; bar services; cafe; cafeteria and snack bar services. 3 Franchising, namely offering technical assistance in the establishment and/ r operation of restaurant services; bar services; cafe; cafeteria and snack bar services.

san francisco vs. coff~e partners page 3 of 1~

OCT 22m3

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fraudulent acts or means passed off its mark as that of or diverted bU~iness away

from, the Complainant. Respondent maintained that it did n t disparage

Complainant's business or represented itself to be providing services that were in

any way meant to convey that these were emanating from or had an connection

with those pertaining to the Complainant's business."

After appropriate proceedings, the Director of the BLA (Direct r) rendered

a Decision dated 14 August 2002, the dispositive portion of whi h reads, as

follows:

''WHEREFORE, in view of the foregoing discussion and und r the applicable rules and jurisprudence, we hold Respondent liable for infringe ent of Complainant's trade name, and is hereby ordered to permanently cea e and desist from using the trade name mark 'San Francisco Coffee' r any colorable imitation or reproduction of its dominant word 'San Franci co' in connection with the operation of its coffee shop, kiosk, and any other related goods and services.

Respondent is likewise ordered to pay Complainant the fo lowing amounts:

a) PESOS THIRTY THOUSAND (P30,OOO.00) plus 20% of th total amount awarded as attorney's fees.

b) P1 ,500.00 for every appearance of Complainant's counsel, an c) cost of suit.

SO ORDERED."

On 03 September 2002, Complainant filed a PARTIAL M TION FOR

RECONSIDERATION praying that a new Decision be rendered a arding the

Complainant actual damages in the amount of P5,669,041.68. Res ondent also

~. 4 ANSWER WITH COUNTERCLAIMS, pp. 5-10.

san francisco vs. con e partners page 4 of 18

filed its own PARTIAL MOTION FOR RECONSIDERATION on 1 September

2002, seeking a new Decision (a) finding that Respondent had not in ringed upon

Complainant's trade name; (b) ruling that Complainant had abando ed its right

over the exclusive use of the terms SAN FRANCISCO COFFEE; an (c) allowing

Respondent to continue using the terms SAN FRANCISCO COFFEE in its coffee

shop/kiosk business. Both motions were denied per BLA Resolutio No. 2002

01 (D) and Resolution No. 2002-02 (D) dated 20 November 2002. C nsequently,

Complain nt filed

Complainant filed a NOTICE OF PARTIAL APPEAL (With

Damages), docketed as Appeal No. 10-02-02, on 25 November 20 2 while the

Respondent filed a MEMORANDUM ON APPEAL, docketed as Ap eal No. 10

02-03, on 28 November 2002. Subsequently, the a

MEMORANDUM ON PARTIAL APPEAL on 10 December 2002. aid appeals

are now consolidated for resolution.

APPEAL NO. 10-02-02

Complainant claims that the Director erred in finding that ther is no basis

for awarding the damages said party was seeking. It that when

Respondent started operating its coffee business without the C mplainant's

consent, the Complainant was deprived of the business opport nity, which

rightfully belongs to it. Thus, the profits realized by the

necessarily equivalent to the profits not realized by the

Res ondent are

san francisco vs. coff partners page 5 of 18

Complainant argues that when the existence of a loss is establish d, only a

reasonable certainty and not an absolute certainty as to the amount e uivalent to

the loss is required to qualify for an award of darnaqes." It contends that it has

made projections about its planned coffee cart operations and has i telligently

gathered figures from past performances of Figaro Coffee Compan 'S6

cart and that while the data presented may only be to some extent a s

it is common knowledge that a financial projection is the basic financial tool used

in the establishment of a business operation.'

In its COMMENTS, Respondent contends that Complainant is not the

Figaro Coffee Company and vice-versa, hence, the financial projection

coffee

the latter are clearly speculative and are subject to market forces, as well as to

other internal and extraneous factors. Complainant, Respondent claim ,failed to

present evidence regarding the supposed profits earned by the Respo dent in its

operations to support the Complainant's claim as to the

Respondent argues that it should not be held liable for the

made by

Re pondent's exorbitant claim because the latter failed to prove that the

operations was the direct or proximate cause of the alleged damages caused to

the Complainant. The unrealized profits allegedly due to the Complai ant simply

did not and do not exist, not because Respondent operated a coff e shop a;p 5 MEMORANDUM ON PARTIAL APPEAL, pp. 4-5, 11. 6 Complainant is the supplier of coffee to Figaro Coffee Company and the pre ident of the Complainant is also a director in Figaro Coffee Company (TSN, pp. 17-21,28 Janua 2002). 7 MEMORANDUM ON PARTIAL APPEAL, p.11.

san francisco vs. coffeepartners page 6 of 18 I

kiosk bearing the terms SAN FRANCISCO COFFEE, but rather

Complainant chose not to venture yet into the coffee cart business

uncertainty of the economic times."

APPEAL NO.1 0-02-03

Respondent contends that unlike the Complainant, its use of

SAN FRANCISCO COFFEE is in a trademark/service mark sense a

trade/corporate name sense and therefore the holistic/totality test

because

ue to the

the terms

hould be

applied. Thus, Respondent posits, there is no basis to conclude th t its mark

infringes upon the Complainant's trade/corporate name."

argues that the Director erred in not declaring the Complainan to have

abandoned its trade/corporate name, contrary to the evidence prese ed during

the trial and that the citation in the assailed Decision of the Complaina t's right to

expand its business is misplaced.'?

In its COMMENT to the appeal, the Complainant claims that the

composite mark and terms SAN FRANCISCO COFFEE that appea in all the

signages of the Respondent's stores are in fact what identifies the R spondent

and its business to the public. Assuming arguendo, Complainant sa ,that theft: . 'Y

I

8 COMMENTS (To the Memorandum on Partial Appeal filed by comp,ainant_APpellalt), pp.6-8. 9 MEMORANDUM ON APPEAL, p.s. 10 MEMORANDUM ON APPEAL., pp.12, 17.

san francisco vs. coffee partners page 7 of 18

holistic/totality test is applied in the case at bar, a comparison of t e entirety of

the competing mark and name would readily cause a likelihood

because of their striking similarities in the font, color and size of th

FRANCISCO COFFEE.11 Complainant also argues that because a andonment

is in the nature of a forfeiture of a right, it must be proven by clear an convincing

evidence. Respondent, Complainant claims, must show not only "lull" in the

use of the trade name by the Complainant, but a clear proof that omplainant

actually intended to abandon the use of its trade name." Finally, omplainant

alleges that it has been in the coffee business since 1995 and has ontinuously

indulged in any and all businesses related to coffee which are c nsidered as

activities within its natural zone of operations."

After the parties had submitted their respective memoran

decisions, the appeals were deemed submitted for decision.

It should be stressed that the dispute is between a trade

mark. Trade name means the name or designation identifying or d stinguishing

an enterprise14 while a mark means any visible sign capable of distin uishing the

goods (trademark) or services (service mark) of an enterprise and sh II include a

f confusion

11 COMMENT (To Respondent's Memorandum on Appeal), p.5. 12 Ibid., p.6. 13 Ibid., p. 9. 14 R.A.No. 8293, Sec. 121.3.

san francisco vs. COffer partners page 8 of 18

OCT 2 2Z8fI3

stamped or marked container of qoods." Trade names are prot

Sections 165, 165.1, 165.2 and 165.3 of Republic Act No. 8293, k

Intellectual Property Code of the Philippines (IP Code), to wit:

Sec. 165. Trade Names or Business Names.- 165.1. A na

I ! I !

cted under

own as the

e or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put, it is contrary to public order or mora s, and if, in particular, it is liable to deceive trade circles or the public as to the na ure of the enterprise identified by name.

Sec.165.2 (a) Notwithstanding any laws or regulations providing r any obligation to register trade names, such names shall be protected, even rior to or without registration, against any unlawful act committed by third parties.

(b) In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such us of a similar trade name or mark, likely to mislead the public shall be deemed un awful.

165.3 The remedies provided for in Sections 153 to 156 and S ctions 166 and 167 shall apply mutatis mutandis."

Complainant therefore anchors its case under Section 165 of the IP Code while

Respondent raises the defense that its service mark does

Complainant's trade/corporate name.

After a careful consideration of the foregoing and a review of

this Office finds for the Respondent and rules that Respondent's

service mark SAN FRANCISCO COFFEE & DEVICE does not vio

165, particularly Section 165.2, of the IP Code.

The law on trademark and tradename is based on the

ot infringe

the records,

use of the

ate Section

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principle of !, business integrity and common justice. This law, both in letter and rPirit, is Ip15 R.A. No. 8293, Sec. 121.1.

san francisco vs. con e partners page 9 of 18

.' ~~.~-~:,r,~· ..... It ~ ,

upon the premise that, while it encourages fair trade in every way

justified in

nd aims to

foster, and not to hamper, competition, no one, especially a trader, i

damaging or jeopardizing another's business by fraud, deceit, trick

methods of any sort."

In this case, Respondent's use of the mark SAN FRANCIS

would not damage or jeopardize the business of Complainant.

se its trade bereft of evidence to indicate that Complainant has continued to

name in wholesale and retail business of coffee, after the j int venture

agreement with Boyd Coffee Company USA in 1998. ther hand,

Respondent has continuously used the mark SAN FRANCISCO C FFEE since

June 2001 when it opened its first coffee shop outlet in Libis, Qu zon City17.

Respondent's Franchisor, Coffee Partners Ltd., has also filed with the IPO in

1999 and 2000 applications for the registration of the mark SAN FRANCISCO

COFFEE & DEVICE.18 Respondent's continued use of the mark SAN

FRANCISCO COFFEE would therefore not mislead the public as t the owner

and origin of the said mark. Between a subsequent user in good fai h of a trade

name (used as a service mark) and a prior user who had stopped using such

trade name, it would be inequitable to rule in favor of the latter.

16 La Chemise Lacoste, SA vs. Fernandez, 129 SCRA 373 (May 21, 1984). 17 Memorandum on Appeal p.3. 18 Supra, See Notes 2 and 3.

san francisco vs. coffe partners page 10 of 1

The likelihood of confusion of goods or business is a relative concept, to

be determined only according to the particular, and sometim peculiar,

circumstances of each case19 and the complexities attendant to n accurate

assessment of likelihood of such confusion requires that the entir panoply of

elements constituting the relevant factual landscape be com rehensively

examlneo." In the case at bar, there would be no likelihood of onfusion as

Complainant has stopped conducting its business using its trade name since

1999 as admitted by Complainant's witness Roberto Francisco, P sident and

CEO of the Complainant, during his cross-examlnatlon."

"xxx ATTY. VILLAREAL: Is it safe to say Mr. Witness that the primary line f business of

SFCRI is blending, roasting and distribution of coff e? WITNESS: And coffee machines. ATTY. VILLAREAL: Does this primary line of business continue to this ay? WITNESS: No. ATTY. VILLAREAL: Why? What is SFCRI involved in now? WITNESS: Since 1999 we have committed our whole sale b siness to the

Boyd Coffee Company which is the joint venture c rporation as stipulated at the JVA.

ATTY. VILLAREAL: A whole sale of what Mr. Witness? WITNESS: Coffee beans, roast and grind coffee beans and special

machines. ATTY. VILLAREAL: To this date, what is SCFCRI involved in? What b siness? WITNESS: The idea of San Francisco Coffee was to finish th joint venture

and research on the retailing side like putting i s own coffee shops.

ATTY. VILLAREAL: And what is the time frame for which it has to be d ne? WITNESS: To my recall we were trying to open by Jan ary 2001 but

apparently with all the, if I may use the term wettin gate and the May 1 Edsa 2 it was postponed to sometime late, t ird quarter.

ATTY. VILLAREAL: But these are all in the planning stage, am I right r. Witness? WITNESS: Yes. Well, planning stage but definitely with a ten ative opening

of it in 2001.

19 Esso Standard Eastern, Inc. vs. CA, 116 SCRA 336 (1982). 20 Societe Des Produits Nestle, SA, et.al vs. CA, et. aI., G.R. No. 112012,04 April 001. pP

.

21 Transcript of Stenographic Notes, cross-examination of Mr. Roberto Francisco, 2 January 2002, pp. 22-31.

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OCT 22 zeu

ATTY. VILLAREAL:

WITNESS: ATTY. VILLAREAL: WITNESS: ATTY. VILLAREAL: WITNESS: ATTY. VILLAREAL: WITNESS: ATTY. VILLAREAL: WITNESS: ATTY. VILLAREAL:

WITNESS:

ATTY. VILLAREAL: WITNESS: ATTY. VILLAREAL: WITNESS:

" ATTY. VILLAREAL:

WITNESS: ATTY. VILLAREAL: WITNESS:

ATTY. VILLAREAL: WITNESS:






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So. you confirm that 5FCRI as of this date is no Itger primarily involved in blending, roasting and distribution of c ee? In wholesale yes. Are you in retail Mr. Witness? We were about to go into retail. The question is, are you in retail? At this current time? Yes. No. Did you at ever at anytime go into retail? Before. When you mean before what specific aspects of etail you were involved in? Retail are gods that are bought less than ten (10) ilos and these are people who would come to the warehouse to pick it up and buy per kilo. We're talking of coffee beans Mr. Witness? Yes. Does this include coffee blends as well? Yes. When you sell because you mentioned that at s me point you were in retail, how are these sold? In bags. What do the bags look like, Mr. Witness? At the time from 1995 to 1998 they were in clear plastic of 500 grams and 200 grams. Was there any marking on the bags? Yes, it was a white satin sticker with a gold squar boarder with a cup in the center. And that's all the marking that was there? If I may recall the name and the logo. Below the d sign was San Francisco Coffee and Roastery, Inc. then our ph ne number at the bottom. Do you still have samples of those? Not anymore. You mean to say everything was disposed of? Since we transferred all our wholesale to the joint venture corporation, the wholesale, we saw it not needed t be used. For the record, what is the name of the joint ventur corporation? Boyd Coffee Company Philippines, Inc. And when this corporation formed? It took a long term of 1998 and through all the wa till, until now we're still in the SEC stages of finalization. And so there is no existing SEC... ? There is an SEC but we have submitted to the SE the final, can I ask the Attorney how do you say that? The final .. Incorporation documents? Yes. Based on a joint venture of a, based on the capitalization. We have to report that.

fP .

san francisco vs. COff! partners page 12 of 1 I

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ATTY. VILLAREAL:

WITNESS:

ATTY. VILLAREAL: WITNESS: ATTY. VILLAREAL:

WITNESS: ATTY. VILLAREAL:

WITNESS: ATTY. VILLAREAL: WITNESS: ATTY. VILLAREAL:



ATTY. VILLAREAL:

WITNESS:

ATTY. VILLAREAL:



In other words Mr. Witness from 1998 all of the e packagings which use to contain, as you say, San Francis 0 Coffee and Roastery, Inc. or any denomination of that natu e were turned over to Boyd Coffee? All assets and business meaning the clientele, the wholesale clientele, all accounts receivables turned over an committed to Boyd as part of the asset. But any other labels that were not used by San Francisco were not given to Boyd. Are you a part of Boyd? Yes. Does Boyd sell, distribute or otherwise dispose coffee blends, coffee nuts or coffee beans or coffee equipme ts using San Francisco Coffee Roastery, Inc. in any brochures, ackagings, or logo? Can it be repeated please? Okay. Because you did mention that from 1998 verything was turned over, except those that could not be use , and you did confirm that you are a part of Boyd. Is Boyd, f r purposes of brevity I will call it Boyd Coffee Company, I don't know what its real name, is Boyd Coffee still doing business? Yes. Was it doing business last year, in the year 2000 i particular? Yes. In its business was it using packagings, brochures materials that in anyway mentioned San Francisco Coffee Roast ry, Inc.? With regards to the wholesale of coffee beans no. Okay. But there were documents showing that there w s a transition stage that now there is a joint venture between an Francisco Coffee and Boyd USA which came up with th joint venture called Boyd Philippines. Yes, but I'm referring in particular to materials? I would not recall but if I may, in 1998, 1999 ther was a totally cease operation of wholesaling of coffee and t rned over all clients to Boyd. Other than wholesale Mr. Witness then, what acti ity was SFCRI involved in during that so-called transition period? At that point only the importation of coffee machi es specifically a store from Italy, from the Netherlands and th purchase of coffee from farmers or traders and process. And where there any documents to show that the e transactions were using San Francisco Coffee and Roastery, In .? In the importation? Yes. Importation is basically the machines coming fr m abroad so, there will be no other ... Exactly. Who would stand out as the importer thel Mr. Witness? San Francisco Coffee. So, there were documents to that effect? Yes. We have invoices that we have imported and written our • suppliers. ~

I


ATTY. VILLAREAL: For coffee machines? WITNESS: For coffee machines, yes. xxx"

It is clear that Complainant has already turned over its coffee bus ness, all its

assets and clientele to Boyd Coffee Company Philippines, Inc. a

venture in 1998. Respondent's continued use of SAN FRANCISCO OFFEE as

part of its service mark cannot therefore prejudice the Complainant nd mislead

the public.

This Office also notes that Complainant renewed the bus ness name

registration of SAN FRANCISCO COFFEE & ROASTERY, INC. only on 29

October 2001 22 or more than a year after its expiration on 16 June 2000. This

betrays the claim of the Complainant that it has continued using nd has not

abandoned its trade name. In addition, some of the documentary evidence

presented and offered by the Complainant would even strengthen th position of

the Respondent that its use of the mark SAN FRANCISCO COFFE

infringe the trade/corporate name of the Complainant. Exhibits E-1,

highlight Complainant's use of Sancoco/SANCOCO as its trade

Exhibits E, F, and G refer to trade expositions during the period 1

would not

-1 and H-1

ame while

only. Exhibits N-1 and N-2 show March 1999 as the latest date f the sales

invoice of SAN FRANCISCO COFFEE & ROASTERY, INC. but Co plainant did

not present any other evidence to prove business transactions us ng the said •

~"Exhibit D.


OCT 22ZH3

trade name after March 1999. Complainant did not also refute the

Respondent in its Answer which stated that in a market survey cond cted among

eighty seven (87) establishments, comprised of coffee shops, rest urants and

retail stores, it was revealed that none of these establishments was elling coffee

using the brand name SAN FRANCISCO COFFEE or using the C mplainant's

trade/corporate name.23 In contrast, it was not disputed that Res ondent has

used SAN FRANCISCO COFFEE as its service mark since 20 1 and has

continuously used it under a Franchise Agreement with Coffee Partn rs Ltd..

Complainant contends that it "kept its existing business activit at bay with

the thought of realigning its activities with the new corporation" 24 a d that it has

embarked on a project study of setting up coffee carts in Metro Manila and

planned to operate four (4) coffee carts beginning September 2001. However,

such bare claims of the Complainant cannot overcome the test monial and

documentary evidence on record, which proved that Complainant as stopped , , using its trade name since 1999. Neither can Complainant attribute its failure to I

fuse its trade name to the opening of stores by the Respondent. As onfirmed by

Complainant's witness Roberto Francisco, Complainant postpone putting its l

I

I!coffee shops "because of the political. .. ,,25 and "wetting gate and the May 1 Edsa

2,,26 (sic). Aptly, as Complainant has already stopped using its tra

rr?

23 ANSWER WITH COUNTERCLAIMS, par. 29. 24 COMMENT (To Respondent's Memorandum on Appeal), p.9. 25 Transcript of Stenographic Notes, 22 January 2002, p. 28. I 26 Transcript of Stenographic Notes, 28 January 2002, p. 23.

san francisco vs. coff partners page 15 of 1

., il '

confusion will arise, and Respondent cannot be held liable for inf

using the service mark SAN FRANCISCO COFFEE & DEVICE.

Concerning the complaint for unfair competition, this Office

the Director that there was none. Unfair competition means the

person who shall employ deception or any other means contrary to

which he shall pass off the goods manufactured by him or in which

his business, or services for those of one having established such

who shall commit any acts calculated to produce said result."

'ngement in

agrees with

act of any

ood faith by

e deals, or

goodwill, or

It has been held that in an unfair competition, fraudulent intent is

essential." In this case, Respondent was able to establish that it us

SAN FRANCISCO COFFEE in its coffee shop only after obtaining a franchise

from Coffee Partner Ltd., a company from the British Virgin Isla

Partner Ltd. owns and operates coffee shops under its proprietary

SAN FRANCISCO COFFEE and said company granted the Respon ent, a non

ervice mark

exclusive franchise to operate coffee shops under the trade name a d style SAN

FRANCISCO COFFEE subject to the terms of their agreement. Re ords would I

therefore indicate the absence of fraudulent intent on the part of the ~esponden~·

27 IP Code, Section 168.2; Rules and Regulations on Administrative Complaints Laws Involving Intellectual Property Rights, Rule 1 Section 1 (t). 28 Del Monte Corporation and Philippine Packing Corporation vs. Court of Appeals Manufacturing Industries, G.R. No. 78325, 25 January 1990.

san francisco vs. coff page 16 of 1

or Violation of

and Sunshine

partners

1f I ~ •

. "

In the light of the foregoing, Complainant's claims for dama

r;

es have no

legal basis and should therefore be dismissed. As pointed out by the

Respondent:

"The 'unrealized profits' allegedly due Complainant-Appellant sim Iy did not and do not exist, not due to the Respondent-Appellee's having erely operated a coffee shop or kiosk bearing the terms 'San Francisco Coff e', but rather, because Complainant-Appellant chose, of its own volition, to not as yet venture into the coffee cart business, primarily due to the uncertain ies of economic times.,,29

Wherefore, premises considered, Appeal No. 10-02-03 is hereby

GRANTED and Decision No. {IPV} 2002-01 dated 14 August 2002 islherebY SET

ASIDE in so far as it held Respondent liable for infringement of C~mPlainant's trade name. Accordingly, Appeal No. 10-02-02 is hereby DENIED.

Let a copy of this Decision be furnished the Director of Bur au of Legal

Affairs for appropriate action, and the records be returned to he for proper

disposition. Further, let the Director of the Bureau of Trademarks be.

furnished a copy for her information and guidance.

1;1

29 COMMENTS (To the Memorandum on Partial Appeal filed by Complainant-Appel

san francisco vs. coffe page 17 of 1

OCT 22.,

I

ant), p.?

partners

. ~l .. •\

•

I III

SO ORDERED. t t

I I Makati City. 1 ~ ! ,r

~ j

t~17 ' I ~E C. FRINCISCOI, irector General

f

~

Copy Furnished: 1 t f [

INTERNATIONAL LEGAL ADVOCATES Counsel for Complainant Suite 1403, 14th Floor Annapolis Wilshire Plaza Condominium Annapolis Street, Greenhills, San Juan, Metro Manila I

! ~


f {

san francisco vs. coffee In<:ll r'tnore>

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