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INTELLECTUAL PROPERTY

PHILIPPINES

PIZZA HUT INTERNATIONAL }


Oppose~
}
}
- versus }
}
INTERNATIONAL FAMILY
}
FOOD SERVICES, INC.
}
Respondent-Applicant.
}
x----------- ---- -------------------------x

IPC No. 14-2006-00130


Opposition to:
Serial No. 4-2002-007433
Date Filed: 03 September 2002
Trademark: "SUPER PAN PIZZA"

Decision No. 2007 -

qtf

DECISION
This pertains to an Opposition filed on 16 October 2006 by herein Opposer,
PIZZA HUT INTERNATIONAL, a limited liability company organized and existing
under the laws of the State of Delaware, U.S.A., with principal office located at
14841 N. Dallas Parkway, Dallas, Texas, 75254, U.S.A., against the application for
registration of the trademark "SUPER PAN PIZZA" bearing Application Serial No.
4-2002-007433 filed on 03 September 2002 for goods falling in Class 30 of the
Nice Classification of Goods, namely for "pizza", by INTERNATIONAL FAMILY
FOOD SERVICES, INC., Respondent-Applicant, with address on record at AFPRSBS Industrial Park, Km. 12 East Service Road corner C-5, South Superhighway
Taguig, Metro-Manila.
The subject trademark application was published for opposition in the
Intellectual Property Office Official Gazette which was officially released for
circulation on 16 May 2006.
The grounds for opposition are stated, in sum, to wit:
1.
Opposer is the registered owner of the trademark PAN PIZZA
in the United States of America and other countries worldwide
covering goods in International Class 30. Opposer is the first and
prior user of the trademark PAN PIZZA in the United States of
America and in many other countries long before Respondent
appropriated the mark SUPER PAN PIZZA for its own products.
2.
Respondent's mark SUPER PAN PIZZA is identical to or so
resembles Opposer's trademark PAN PIZZA and PAN PIZZA and
Design, as to cause confusion, mistake and deception to the
purchasing public by misleading them into thinking that
Respondent's goods either come from Opposer or are sponsored or
licensed by it.

Republic of the Philippines


INTELLECTUAL PROPERTY OFFICE
351 Sen. Gil PuyatAve., Makati City 1200 Philippines www.ipophil.gov.ph
Telephone: +632-7525450 to 65 Facsimile: +632-8904862 email: mail@ipophil.gov.ph

3.
Respondent's registration and use of the subj ect mark will
diminish th e distinctiveness and dilute the goodwill of Opposer's
mark PAN PIZZA, an arbitrary mark when used on Opposer's
produ cts.
4.
Respondent 's appropriation and use of the identical and
confusin gly simi lar trademark SUPER PAN PIZZA on its own goods
has th e inte nt ion of misleading the public to believe that its goods
bearing th e t rademark originate from, or licensed or sponsored by
Opposer, ident ified in the trade and by consumers as the
manu facturer of goods bearing the trademark PAN PIZZA. It
infringed upon Opposer's exclusive right to th e well-know n
tradema rk PAN PIZZA, which is protected under Section 37 of the
old Tradema rk Law, Section 147 and 165(2)(a) of th e I P Code,
Arti cle 6bis of the Paris Convention and Article 16 of the
Agreement of Trade Related Aspects of Intellectual Property Rights
to which th e Philippines and United States of America adhere.
5.
The approval of the subject mark is based on Respondent's
fa lse representation as the originator, true owner and fi rst user
th ereof, which was merely copied/derived from Opposer 's PAN
PI ZZA mark.
Opposer relied on the antecedent relevant facts, to wit:
1.
Since 1980, Opposer has been extensively using and
market ing the PAN PIZZA products throughout the world in eighty
four (84 ) countries.
PAN PIZZA has accordingly become an
internat ionally well-known trademark, wh ich consumers have
associated wit h Opposer as the product source. The list of
count ries w here the PAN PIZZA trademarks are used is attached as
Annex " A" of the Opposition.

2.
Opposer has registered the trademarks PAN PI ZZA and PAN
PIZZA Design for goods in Classes 29 and 30 in th e Philippines,
Bangladesh, Greece, New Zealand, Pakistan, Sri Lanka, Tu nisia and
th e United Arab Emirates attached as Annex " B" of th e Opposit ion.
It has also regist rat ions and/or pending applications for registra tion
in more than eighty (80) countries worldwide attach ed as Annex
" C" of th e Opposition.
3.

Opposer's arbitrary trademark PAN PIZZA is entitled to

broad legal protection against unauthorized users like

Respond~tr

4.
Respondent has appropriated the identical or confusingly
similar trademark SUPER PAN PIZZA in bad-faith for th e obvious
purp ose of capitaliz ing upon the renown of Opposer's selfpromoting trademark by misleading the public into believing th at
its goods originate from, or are licensed or sponsored by Opposer.
5.
The registration and use of the subject mark by t he
Respondent wil l deceive and/or confuse purchasers into believing
that its products emanate from or are under the sponsorship of
Opposer, damage its interests for the following reasons: (a) the
t rademarks are identical or confusingly similar; (b) th e goodwi ll
and reputati on of Opposer's trademark PAN PIZZA among
consumers will be diluted; (c) Respondent used SUPER PAN
PIZZA on its products as a self-promoting trademark to gain public
acceptabil ity through their association with Opposer's popular
t rademark PAN PIZZA; (d) the goods bearing identical t rademarks
are sold and advertised to consumers through the same channels
of trade; and, (e) Respondent intends to t rade on Opposer's
goodwill.
In Res pondent-Applicant 's Answer dated 07 December 2006 and received
by the I nte llect ual Property Office on 19 December 2006, it denied the
introducto ry paragraph of the instant Opposition except that part pertaining to the
application of Respondent for registration of the subject mark. It likewise denied
paragraphs 2, 3, 4, 5, 7 and 8 of the said Opposition.
I n f urt herance, special and affirmative defenses are set forth , to wit:
1.
Respondent- Applicant' s subject mark is ent irely different
from the Opposer 's trademark.
2.
Respondent-Applicant's trademark is coined word being th e
produ ct of the creative imagination in considerat ion of and as
dictated by its clientele and the logical upwa rd development in
terms of t he increasing features added to its products and the
same was not patterned after any trademark in existence except
t hose th at its predecessor had used in the United States of America
nor has th ere been the least intent to ride on any tradem ark's
goodwill of any party .
3.
The regist rat ion of Respondent-Applicant's mark will not
diminish nor dilute the alleged strength of Opposer's mark
consideri ng that there exist no basis at all for th e principle of
"dilution" of mark to apply as the mark under application an ih r

mark of Opposer are very much different in terms of presentati on,


in t he manner by which the goods represented respectively by the
part ies are sold or disposed of or passed to the buying public, and
by the specialized and exclusive counters over which th e goods
represent ed by each of the marks are sold or offered for sale.
In compl iance to Office Order No.79, series of 2005 (Amendments to th e
Regulations of I nter Partes Proceedings), prescribing the summary rules, listed
hereunder are the pieces of evidence submitted in support of the Opposition, and
admitted by thi s Office , to wit:
Ex hibit

Description

"A"

List of countries where trad emark PAN PI ZZA


is used

"B"

Philippine Registration Cert ificate


trademark PAN PIZZA & Design

"C

List of othe r count ries where PI ZZA HUT LLC


has registrations or pending application for
registrations of its trad emar ks

Respondent- Applicant 's compliance , has the following


documentary evidence submitted and admitted herein, to wit:
Exhibit

of

pieces

th e

of

Description

" 1", "l-A"

USPTO Internet printouts of Trademark


Electronic Sea rch System for word mark
Super Pan Pizza

"2 ", "2-A"

Application for tradema rk and service mark


of Shakey's Incorporated Corporation

This instant case was set for Preliminary Conference. Parti es however,
failed to settle into mutua l te rms and conditions which caused the termination of
the Conference and submitting this instant case into resolution of the issue
posed, to wit:

WHETHER OR NOT RESPONDENT-APPLICANT'S


MARK "SUPER PAN PIZZA" MAY BE ALLOWE ~

REGISTRATION.

i .f

Aft er consideration and review of the records, t his Bureau find s


Respondent -Applicant's mark "Super Pan Pizza" not allowable for registrat ion.
It has been always emphasized that in tradema rk cases questioning
regist ration of th e mark, it is apropos to ascertain whet her one t rademark is
confusingly similar to or is a colorable imitation of another. Actually, no set of
rules can be deduced, as each case is decided on its own merit s.
The likelihood of confusion of goods or business is a relative concept. Its
determinati on must be in accordance to the particula r, and sometimes peculiar
facts of each case.
In fact, "t he complexities attend ant to an accurate
assessment of likelihood of such confusion requires that t he entire panoply of
elements constituting the relevant factual landscape be comprehen sively
examined." (Societe Des Produits Nestle, S.A., et. al vs CA, et. ai, GR No.
112012, 04 April 2001)
Juris prudence has developed two kinds of test to det ermine whet her marks
are confu singly or deceptively similar - the Dominancy and t he Holistic Tests.
Confusing similarity is to be determined on the basis of visual, aural, connotati ve
comparisons and overall impressions engendered by the marks in controversy as
t hey are encounte red in the realities of the marketplace. The test of dominancy
focuses on the similarity of the prevalent features of the competi ng trademarks,
which might cause confusion or deception and thus constitutes infringement. This
test relies not only on visual but also on connotative compar isons and overall
impre ssion between the marks. The holistic test, on th e other hand, mandat es
t hat th e entirety of the marks in question must be considered in determining
w het her or not confusing similarity exists. (Societes Des Produits Nestle, S.A.,
et.al vs CA, et. aI., supra)
Opposer's alleged that Respondent-Applicant's "SUPER PAN PIZZA" is
ident ical or so resembles its mark " PAN PIZZA" and " PAN PIZZA and DESIG N", as
to cause confusion, deception and mistake to the purchasing public. This was
refut ed by Respondent-Applicant, stating that its subject mark is entirel y different
as it is a coined word being the product of creative imagination of its client and
not patterned f rom any exist ing trademark except that it was used by its
predecessor in th e United States of America.
This Bureau shares the view of the Opposer. In fact, whet her t his Bureau
applies t he dom inancy or holist ic test, the conclusion arrived would be a fi nding of
conf using simi larity between the contending marks.
Admittedly, th e contending marks have no exact visual similariti es.

Obviously however, said marks have the same connotations and overa~y
impressions that the viewing public would likely be confused or a ssociation~

mar k from another. Fir50 the last two composite words are exactly the same,
" PAN PIZZA", and the word "PAN" is a registered mark of t he Opposer. Second.
the mar ks cover t he same kind of goods, pizza, cooked and served in a pan.
Thir~ t hey are catered to the same kind, level and class of consumers and
flow ing thro ugh the same channels of trade. Fourth the only word which sets
apart Respondent-Applicant's mark is "SUPER", which do not produce a
remar kable difference and effect, because it is merely a superlative description of
t he composite words " PAN PIZZA", to which the consumer's purchasing memory is
focused to.
Grant ing in arguendo that the contending goods are sold or disposed of or
passed to the buying public in different manners by th e specialized and exclusive
counters of t he Opposer and the Respondent-Applicant, does not necessarily
negate th e fact of the likelihood of confusion . It has to bear in mind th at a
t rademark is a distinctive mark of authenticity through which the merchandise of
a particu lar producer or manufacturer may be distinguished from t hat of othe rs.
(Arce Sons & Co. vs Selecta Biscuit Co., 110 Phil. 858) Thu s, a registered
mark is a special property of the registrant which is exclusively own ed and not
subje ct to use or appropriation of another, especially if it involves similar or
related products of a competitor in the market. What posed as danger is th e
confusion of association of marks and its products.
Verily, records show that Opposer has Philippine Trad emar k Registrat ion
No. 4-1999-06 547 for the mark PAN PIZZA and Design, (Exhibit "A")
disclaiming the wo rd " Pizza." Respondent-Applicant's application for registration
is for t he mark SUPER PAN PIZZA, disclaiming the words " Pan Pi zza."
The word " Pizza" in both the contending marks is not an issue of markappropr iat ion. It is a "common or generic name of an art icle or a word of phrase
w hich is merely descriptive of the character, qualities or composition of an article
cannot be monopolized as a trademark or trade name."
(East Pacifi c
Merchandising Corp. vs Director of Patents, 110 Phil. 443; Masso
Hermanos, S.A. vs Director of Patents, 94 Phils 136) It cannot be
registered although it may be made a part of a composite mark. The use of a
generic wo rd forming part of a trademark or trade name is always subject to th e
limitation that th e regist ration does not acquire th e exclusive right to th e
descriptive or generic term or word.
On a different vista , the word " Pan" which is present in th e contending
marks is already of exclusive ownership and use of herein Opposer, evidenced by
Opposer's aforementioned Exhibit " A".
The registrati on of Opposer's mark " PAN PIZZA and Design" is a " prima
facie evidence of the validity of the registration, the registrant's ownership of th~

()

mar k, and of the registrant's exclusive right to use the same in connect ion with
the goods or services and those that are related thereto specified in t he
cert ificat e." ( Sect ion 138, R.A. 8293)
Again, this Bureau is mindful that the word " Pan" is actu ally disclaimed by
Responde nt -Applicant. It holds no water however as th e word " Pan" is owned by
t he Opposer. It cannot be appropriated or used without t he consent of th e
ow ner . Th e fact that it was disclaimed does not mean that it w ill not be used. To
disclaim means not to seek protection for. To disclaim is to use w ith out exclusive
ownership th ereof. Disclaimer therefore, in this inst ant case, is not necessary . In
fact, it is impro per.
However, as Opposer further asserted its right over t he t radem ark by
securing the prot ecti ve mantle of a well-known mar k, t his Bureau is not convinced
th at mere ma rk registrations and use in other fore ign cou ntries and in th e
Philipp ines ( Exhib its " A", "B" and "("), have sufficed th e requ irements of a wellknow n mark.
As a requirement of the law, Opposer has to establish and prove that its
mark is well -k now n internationally and in the Philippines in accord ance to t he

Rules and Regulations on Trademarks, Service Marks, Trade Names and


Marked or Stamped Containers, particularly Rule 102 t hereof whi ch
enshri nes th e criteria to determine a well-known mark, to wit:
" 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 appli es;

(c)

the degree of the inherent or acquired distinction of the mark;

(d)

the quality-i mage or reputation acquired by the mark;

(e )

the extent to which the mark has been registered in the world;

(f)

the exclusivity of registration attained by the mark in the world;

(g)

the extent to which the mark has been used in the world;

(h)

t he exclusivity of use attained by the mark in the world;

(i)

the commercial value attributed to th e mark in the world;

U)

t he record of successful protection of the rights in t he mark;

(k)

t he outcome of litigations dealing wit h the issue of wheth er the


mark is a well-known mark; and

(I)

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." (Underscoring Ours.)

Opposer wh o has the onus probandi in establishing and provin g t hat his
mark is well- know n internationally and in the Ph ilippines has failed to submit
eloquent proof to prove that the mark has gained a wor ldwide and local fame and
reputat ion, exclusivity of use, successful outcome of well- known mark litig ations
and th e like.
Finally, as this Bureau finds Respondent-Applicant's subj ect mark " SUPER
PAN PIZZA" not entitled to registration, both foreign authority and our most
Honorable Supreme Court in several occasions ruled, thus :

"Those who desire to distinguish their goods fro m the


goods of another have a broad field from which to
select a trademark for their wares and there is no
such poverty in the English language or paucity of
signs, symbols, numerals etc., as to justify one who
really wishes to distinguish his products from those of
all ot hers entering the twilight zone of a field already
appropriated by another." (WECO PRODUCTS CO.
VS MILTON RAY CO., 143 F. 2d 985, 32 C.C.P.A.
Patents 1214.)
" Why, of the million of terms and combinati ons of
letters and designs available, the appellee had to
choose those closely similar to another's trad emark if
th ere was no intent to take advantage of t he goodwill
generated by the other mark. " (AMERICAN WIRE~
& CABLE CO. VS DIRECTOR OF PATENTS, 31
SeRA S44)

Furth ermore, "a boundless choice of words, phrases and symbols is


available to one w ho wishes a trademark sufficient unto itself 0 distingu ish his
produ cts from th ose of others.
When, however, the re is no reasonable
explan ation for th e defendant's choice of such a mark though th e fiel d for his
selection was so broad, the inference is inevitable that it was chosen deliberately
to deceive," ( III, Callman, Unfair competition, 2 nd Ed., pp. 1527-1528 )
The trademark applied for by the Respondent-Ap plicant appears confusingl y
simila r with that of Opposer's mark over the same goods. The reason of choice
and adopti on of which does not convince this Bureau.
WHEREFORE, the Opposition is hereby SUSTAINED. Consequent ly,
t rademark application serial no. 4-2002-007433 for the t radema rk "SUPER PAN
PI ZZA" under Class 30 filed on 03 September 2002 is hereby REJECTED.
Let the filewrappe r of "SUPER PAN PIZZA" subject matter of th is case
together with a copy of this Decision be forwarded to th e Bureau of Trademarks
( BOT) fo r appropriate action.
SO ORDERED.
Makati City, 16 July 2007.

ES
LLITA BELTRAN-ABELARDO
Di ector, Bureau of Legal Affairs

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