NORVY A.

ABYADANG,
Appellant,
-versusBERRIS AGRICULTURAL CO.,
Appellee.
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Appeal No. 14-06-13

IPC No. 14-2005-00099
Opposition to:
Application Serial No. 4-2004-000450
Date Filed: 16 January 2004
Trademark: NS D-10 PLUS

DECISION
NORVY A. ABYADANG (Appellant) appeals Decision No. 2006-24, dated 28 April 2006,
and Resolution No. 2006-09(D), dated 02 August 2006, rendered by the Director of the Bureau of
Legal Affairs (Director). The Director sustained the opposition of BERRIS AGRICULTURAL CO.
(Appellee) and rejected the Appellants application for registration of the mark NS D-10 PLUS.
Records show that the Appellant filed on 16 January 2004 his trademark application for
use on fungicide Mancozeb 80% WP (Agricultural Products Fungicide). The application was
published for opposition on 28 July 2005 in the Intellectual Property Office E-Gazette
Publications for Trademarks. On 17 August 2005 the Appellee filed its VERIFIED NOTICE OF
OPPOSITION alleging the following:
1. It filed on 29 November 2002 an application for the registration of the mark D_10
80WP, to be used in connection with the fungicide goods, designated as Application
Serial No. 4-2002-0010272;
2. It was issued Certificate of Registration No. 4-2002-010272 on 25 October 2004 for
the mark D-10 80WP;
3. Riding on the goodwill, popularity and name recall borne by D-10 80WP, the Appellant
belatedly applied for the registration of NS D-10 PLUS which is similar or confusingly
similar and has striking similarities to that of the Appellees;
4. The dominant feature of D-10 80 WP is the name D-10 which was unlawfully
appropriated by the Appellant;
5. The Appellants foil package and its overall design and layout, which includes NS D-10
PLUS, are similar, intended to be similar, or confusingly or deceptively similar to the
wrapping and overall design/layout of the Appellees;
6. The Appellants label, print and packaging materials of the NS D-10 PLUS fungicide
products, are misrepresented, intended, clothed and given the general appearance of
the Appellees D-10 80WP fungicide product;
7. The mark NS D-10 PLUS is intended to be attached to the same class of products as
that the Appellees which likely, if not definite, t o cause public confusion;
8. The marketing of the Appellant, Nr. Senly Loy, Jr., has been selling through his store
Sunrise Farm Supply the NS D-10 PLUS with the intention to pass the goods as that
the Appellee;
9. Ordinary purchasers will certainly, and not only likely, be influenced to believe that the
Appellants NS D-10 PLUS products are those of the Appellee;

10. The National Bureau of Investigation applied for and was granted Search Warrant
Nos. 05-6117 and 05-6118 which resulted in the seizure of the NS D-10 PLUS
products; and
11. The appropriate criminal cases have been filed at the Baguio City Prosecutors Office,
which were docketed as LS. Nos. 607-06-05 and 05-1502.
In its answer filed on 16 February 2006, the Appellant denied the material allegations in
the opposition. He claimed that the Appellee had already lost its right to claim the mark D-10 80
WP and D-10 as it had failed to file a Declaration of Actual Use (DAU) within three (3) years from
the filing date of the application for the mark D-10 80WP.
After the preliminary Conference and the submission by the parties of their respective
position papers, the Director rendered the assailed Decision. The Director relied on the
dominancy test and sustained the opposition, finding the Appellants mark confusingly similar to
the Appellees. The Director also brushed aside the Appellants contention that the Appellees
registration has been deemed cancelled because it allegedly failed to file the required DAU
within 3 years from the filing date of the trademark application. She cited the certification issued
by Director Leny B. Raz of the Bureau of Trademarks, to wit:
The Director of the Bureau of Trademark issued a certification submitted by the
Opposer on April 24, 2006 to the effect that the mark D-10 80WP issued on 8 July 2004
to BERRIS AGRICULTURAL CO., INC., is still valid and existing.
The Appellant filed a Motion for Reconsideration, which was denied by the Director in her
Resolution of 02 August 2006. Not satisfied, the Appellant filed the instant appeal alleging:
FIRST ASSIGNMENT OF ERROR
THE BLA ERRED IN FINDING THAT THE BERRIS TRADEMARK REGISTRATION NO.
4-2002-010272 FOR THE MARK D-10 80WP IS VALID.
SECOND ASSIGNMENT OF ERROR
THE BLA ERRED IN FINDING THAT ABYADANGS MARK NS D-10 PLUS IS
CONFUSINGLY SIMILAR WITH BERRIS TRTADEMARK D-10 80WP.
THIRD ASSIGNMENT OF ERROR
THE BLA ERRED IN NOT HOLDING THAT BERRIS TRADEMARK D-10 80WP IS
DEMMED CANCELLEED.
In his appeal, the Appellant claims that the Appellees registration of the mark D-10
80WP is not valid and ahs no force and legal effect to bar his trademark application. The
Appellant maintains that he is the actual owner and prior user of the mark NS D-10 PLUS which
has been registered in the FPA his NS D-10 PLUS products on 26 May 2003 ahead of the
Appellee who registered his product on 12 November 2004. The FPA, according to the Appellant,
regulates, among others, no pesticides, the manufacturer, sale distribution and use of pesticides
in the country; hence, no pesticides, fertilizer, or other agricultural chemical shall be exported,
imported, manufactured, formulated, stored, distributed, sold or offered for sale in the Philippines,
Registration with the FPA is required before any of the acts can be performed by any person or
corporation. The Appellee cannot legally engage in the sale of its products prior to its registration
in the FPA. The Appellant, therefore, having a valid FPA registration and selling products
thereafter, is the prior user of the mark D-10 PLUS.
The Appellant also insists that the Appellants trademark registration should be cancelled
arguing that the Director should have not relied on the Appellees DAU of the mark D-10 80WP in

June 2002 is fraudulent, as under the law, the Appellee cannot sell its fungicide products without
prior registration and license from the FPA. The Appellant, thus, posits that the Appellees
trademark registration should be deemed cancelled.
Moreover, the Appellant asserts that its mark is not confusingly similar to the Appellees
mark, D-10 not being dominant feature of the Appellees mark.
Commenting on the appeal, the Appellee contends that it is the holder of a validly issued
and maintained certificate of registration and that the validity thereof should be threshed out in a
petition for cancellation and not in the present case. The Appellee asserts that in applying either
the holistic or the dominant test, it is clear that the competing marks are confusingly similar.
A trademark serves a purpose. It is essentially a means, through distinctive mark of
authenticity, by which the goods of a particular producer or manufacturer may be distinguished
from those of competitors or others. Significantly, a trademark also guarantees a certain
standards of quality and warn against the imitation of faking of products, thus, preventing the
commission of fraud on the public. Further, a trademark is a form of advertisement.
Thus, the essence of trademark registration is to give protection to the owners of
trademarks. A trademark points 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. The right to register a
trademark belongs to an owner who is able to distinguish his goods or services using the
trademark. A certificate of registration is a prima facie evidence of the registrants ownership of
the mark.
Sec. 123.1(d) of Republic Act No. 8293, known as the Intellectual Property Code of the
Philippines (IP Code), states that:
SEC. 123. Registrability. 123.1. A mark cannot be registered if it:
xxx
(d) Is identical with a registered mark belonging to a different proprietor or a mark with a
filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it resembles such a mark as to be likely to deceive or cause confusion,
That the products of the parties are identical or closely related and that the Appellees
filing of its trademark application and registration were prior to the filing of the Appellees
trademark application undisputed.
Examining meanwhile, the feature of the competing marks, it can be gleaned that the
Appellants mark nearly resembles the Appellees. These marks are reproduced below for
comparison:

Appellants mark

D-10 80 WP
Appellees mark

Looking at these marks, even a quick glance, ones attention and focus is drawn to the
alphanumeric combination D-10. Without a doubt, D-10 is the dominant feature of both marks.
In this regard, both parties failed to explain what D-10 means or its significance in relation
to their respective products. D-10 looks like a code or a similar representation of something that,
by logic, should be associated with the parties chemical products. This Office, however, cannot
make this conclusion without established facts and reliable information in the case records nor
any that can be taken on judicial notice. D-10 therefore, appears to be a fanciful component of
the competing composite marks. The trademarks themselves, in their entirety, may even be
considered fanciful.
A financial trademark is one that created for the sole purpose of functioning as a trade
mark. They are the strongest trademarks because they are invented and few competitors may
claim that they accidentally adopted the same trademark. Accordingly, if D-10 is fanciful, that
both parties adopted D-10 as part of their respective trademarks was a mere coincidence is too
good to be true. It can be fairly inferred that one had copied the D-10 from the other. Considering
that the competing marks are applied to the same type of goods fungicide products, the
Appellants adoption is to be determined on the basis of visual, aural, connotative comparisons
and over-all impressions by the mark in controversy as they are. As correctly pointed out by the
Director in her Decision:
There is no doubt that the first impression coming in the minds of the public is to
the word/phrase D-10 which is the dominant feature of the competing marks and the
same word/phrase easily attracts and catches the eyes of the ordinary consumer and it is
that word and none other than sticks in his mind when he thinks of fungicide.
Confusing similarity could have been avoided had it not been for the phrase D10 including in the Respondent-Applicants mark has been appropriated and registered
by the Opposer and which registration is still valid and existing.
In the case (Philippine Nut industry, Inc. vs. Standard Brands, Inc. 65 SCRA
575), the Supreme Court rules that:
There is infringement of trademarks when the use of the mark involved would be
likely to cause confusion or mistake in the mind of the public or to deceive purchasers as
to the origin or source of the commodity. Whether or not a trademark causes confusion
and is likely to deceive the public is a question of fact which is to be resolved by applying
the test of dominancy, meaning, if the competing trademark contains the main or
essential or dominant features of another by reason of which confusion or deception are
likely to result, then infringement takes place; that duplication or imitation is not
necessary, a similar in the dominant features of the trademark would be sufficient.
Likewise, in connection with the issue of confusingly similar or identical mark,
both foreign and our Supreme Court on several occasion ruled thus:
Those who desire to distinguish their goods from 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 others entering the twilight zone
of a field already appropriated by another. (Weco Products Co.,. vs. Milton Ray Co.,
1434 F, 2d 985, 32 C C.P.A. Patents 1214)
Why of all the millions of terms and combinations of letters and designs
available, the Appellee had to choose those so closely similar to anothers trademark if
there was no intent to take advantage of the goodwill generated by the other mark.
(American Wire & Cable Co., vs. Director of Patents, 31 SCRA 544).

Thus, the Appellants trademark application is proscribed under Sec. 123 (d) of the IP
Code.
The Appellant, however, assails the validity of the Appellees trademark registration and
argues that it be cancelled. Appellant claims that he is the prior user of a mark bearing D-10
pointing out that he registered his product with the FPA ahead of the Appellee. He also contends
that the DAU filed by the Appellee was fraudulent because it was not possible for the Appellee to
use it earlier than the date of its products registration with FPA.
This Office, however, is of the view that the Appellant having registered its products in the
FPA ahead of the Appellee is of no consequence. This Office concurs with the Appelee when it
stated its COMMENT that:
14. Firstly, it must be pointed out that whether or not Opposer registered with the
FPA prior to or after Respondents registration is of no moment to the issue in the case at
bar. The FPA is another administrative agency, the function of which is to regulate, control
and develop the fertilizer industry. Its functions do not include the determination of rightful
ownership of a trademark, which is the sole jurisdiction of this Honorable Office.
What is relevant in this instance is who was the first to file a trademark application?
The IP Code adhere the First-to-File rule in the registration of trademarks. It did away
with the requirement of actual use before one can register trademarks. Instead, what is required
is intent to use, which is shown during the processing of the application by finding a DAU within 3
tears from the filing date. With respect to trademark applications that are filed, and which involve
competing trademarks that are used or intended to be used when the IP Code took effect, the
rule benefits the first filer, the applicant who possesses the mark in the concept of an owner.
In this case, both parties filed their respective trademark applications under the IP Code,
each claiming use when the IP Code is already in effect. Significantly, both parties use or assert
rights over their trademark in the concept of an owner. Their business of selling the fungicide
products are independent of each other, one is not a mere distributor of license of the other.
Considering, therefore, that the Appellee filed its trademark application ahead of the
Appellant, it can validly claim protection against the Appellants trademark application under the
First-to-File rule.
With respect to the Appellants claim that the Appellees registration should be cancelled
because the DAU filed the Appellee was fraudulent, the burden to prove it rested on the
Appellant. A certificate of registration of a mark shall be prima face evidence of the validity of the
registration, the registrants ownership of the mark, and of the registrants exclusive right to use
the same connection with the goods or services and those are related thereto specified in the
certificate.
Accordingly, to support its claim that the Appellee had through fraudulent means secured
the registration of its trademark, the Appellant had to present and offer substantial evidence to
overcome the validity of that registration. The Appellant failed to do so.
The IP Code and the Trademark Regulations requires the filing of the DAU within 3 years
from the filing date of the trademark application. If the period lapses without the applicant filing
the DAU, the application may be declared abandoned. In this case, since the Appellees
trademark application was filed in 2002, it had until 2005 to file the DAU.
Records show that the Appellee filed the DAU as early as 25 April 2003 as indicated by
the stamped mark of receipt by the Bureau of Trademarks. Moreover, the DAU was under oath or
notarized. Significantly, what the DAU had certified is the Appellees actual use of the trademark

and did not include any attestation that the sale of the products bearing the mark was in
accordance with the pertinent law for the matter Presidential Decree No. 1144.
In contrast, the Appellant did not present proof of submitted evidence to the contrary.
Particularly, that the Appellee did not use its trademark in 2002. The Appellants position rests on
assumption that the Appellee could not have used the mark in 2002 because its FPA registration
of the products was only in 2004. This assumption has to yield to the evidence on record.
Finally, whether or not the Appellee may have violated Presidential Decree No. 1144
because it used the product without prior registration in the FPA is a distinct and separate matter
that is outside the jurisdiction and concern of the Intellectual Property Office. On this, even a
determination that the Appellant violated Presidential Decree No. 1144 would not erase the fact
that the Appellee submitted evidence that it had used the mark earlier than 2004.
Wherefore, premises considered the appeal is hereby DENIED. Accordingly, the appeal
Decision of the Director is hereby AFFFIRMED.
Let a copy of this Decision as well as the trademark application and records be furnished
and returned to the Director of Bureau of Legal Affairs for appropriate action. Further, let also the
Director of the Bureau of Trademarks, the Administrative, Financial Documentation, Information
and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance,
and records purposes.
SO ORDERED.
July 20, 2007, Makati City

ADRIAN S. CRISTOBAL, JR.

Director General