Professional Documents
Culture Documents
Mendiola, Manila
COLLEGE OF LAW
SUBMITTED BY:
Section 3S
GROUP 5 MEMBERS
Macapintal, Hanna Nazria
Maderazo, Cristine Mysel
Mari, Ruel Nico
Mayor, Kerwin Rey
Molina, Maritoni
SUBMITTED TO:
Atty. Barbra Jill Clara Aranilla
Professor
CONTENTS:
1. Application Form
2. Examiners Report Denying the Application for Registration of the
Group 6s Trademark
3. Reply to the Examiners Report Denying Approval of the Application
for Registration of the Group Trademark
4. ANNEX A: Application Form for the Registration of the Group
Trademark
5. ANNEX B: Group 6s Examiners Report Denying the Application for
Registration of the Group5s Trademark
EXAMINERS REPORT
The application for registration of the trademark "POREBER for use on
batteries is
hereby DENIED for the following defects:
1. The trademark "POREBER" is geographically misdescriptive.
POREBER is a name of a municipality in Slovenia, a European country, to
which the applicant has not proven itself to be related in any way.
Section 123.1 of R.A. No. 8293 (The Intellectual Property Code) provides:
Section 123.1 A mark cannot be registered if it:
x
x
x
x
(g) Is likely to mislead the public, particularly as to the nature,
quality, characteristics or GEOGRAPHICAL ORIGIN of the
goods or services;
x
x
x
x
(Emphasis supplied.)
Applying again the dominancy test and the principle of idem sonan,
"POREBER" is confusingly similar in sound with the "FOREVER" trademark of the
said Polish Company. The injury to be caused to the prior registrant is made more
apparent by the fact that the products on which both trademarks are used are
similar.
NOTE:
The applicant is given four (4) months in which to reply or amend its
application which shall then be re-examined.
REPLY
We respectfully would like to ask your good office for a RE-EXAMINATION of
the application for registration of our trademark Meet Your Garden which was
denied for an alleged substantial defect under the law. The grounds for the reexamination sought are herein set forth.
Contrary to the principal basis of the denial of the application for registration
by the Examiner, Meteor Garden is NOT A REGISTERED TRADEMARK as per
records of the Intellectual Property Office. A diligent preliminary search in the IPO
Trademark Records through its online database would have confirmed this basic
fact.
If any, the IPO database on registered trademarks only reveals that Meteor
Garden has in fact been registered in 2003 for use on mixed snacks, but its
current trade status is already marked as withdrawn. (See image on the next
page.)
Hence, there is currently no existing registered Meteor Garden trademark
which can be the source of any better right against the trademark herein sought to
be registered.
Even assuming arguendo, as claimed by the examiner, that "Meteor Garden"
is a well-known mark, based on the provisions of R.A. No. 8293, it is still subject to
particular requisites in order that it be entitled to protection under our laws. Section
123.1 (f) of R.A. No. 8293 provides:
Section 123.1 A mark cannot be registered if it:
x
x
x
x
(f) Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with
the preceding paragraph, which is registered in the
Philippines with respect to goods or services which are
not similar to those with respect to which registration is
applied for: Provided, That use of the mark in relation to those
goods or services would indicate a connection between those
goods or services, and the owner of the registered mark:
Provided further, That the interests of the owner of the
registered mark are likely to be damaged by such use;
x
x
x
x
(Emphasis supplied.)
The goods involved in this case are DISSIMILAR and therefore requires that the
well-known mark be registered in the IPO before Section 123.1 (f) finds application.
While the Meteor Garden trademark is used on the electronic copies of the
popular Taiwanese TV drama series and all sorts of merchandise, accessories, and
other collectibles featuring the images related to the said drama series, the
applicants trademark Meet Your Garden on the other hand, is confined solely to
use on flowers, plants, seedlings, and gardening essentials. That the Meteor
Garden trademark is already being used on the same goods as those of the
applicant is yet to be proven.
From the foregoing, there is no need to argue on the rest of the issues raised in the
examiners report.