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--------- I j I ~iP INTELLECTUAL PROPERTY PHILIPPINES i OFFICE OF THE DIRECTOR GENERAL SPECIFIQUE GARMENTS Appeal No. 14-08-44 MANUFACTIJRING, INC., Opposer-Appellee, Inter Partes Case No. 14-2006-00107 Opposition to: -versus- Application No. 4-2004-005782 Date Filed: 30 June 2004 LT2, LLC, Respondent-Appellant, Trademark: Le TIGRE & Design x-------------------------------------x DECISION LT2, LLC ("Appellant") appeals Decision No. 2007-87, dated 29 June 2007, and Resolution No. 2008-17 (D), dated 31 October 2008, of the Director of the Bureau of Legal Affairs ("Director") sustaining the opposition filed by SPECIFIQUE GARMENTS MANUFACTURING, INC. ("Appellee") to the Appellant's application for the registration of the mark "Le TIGRE & Design)". Records show that the Appellant filed on 30 June 2004 its trademark application covering goods falling under Class 25 of the Nice Classification I namely: clothing, which includes men's, women's, and children's apparel, sweaters, sweater shirts, sport shirts, athletic shirts, knit shirts, t shirts, jackets, sport coats, all-weather coats, raincoats, pants, slack jeans, trousers, jump suits, track suits, shorts, boxer shorts, swim trunks, robes; headwear, namely: knitted ski hats, hats, caps, visors; shoes, boots, sneakers and sandals. The application was published in the "IPO e-Gazette" for Trademarks on 12 April 2006. On 10 August 2006, the Appellee filed its "NOTICE OF OPPOSITION" alleging the following: 1. It manufactures and sells garments bearing the mark Le TIGRE & Design to Shoe mart, Ever Plaza, Inc. and other business entities and it assigns employees to Shoemart to oversee the sales of "Le Tigre" shirts; 2. It has adopted and used Le TIGRE & Design since 1982 or for about 24 years now; 3. The mark sought to be registered by the Appellant is identical to the mark earlier adopted and used by the Appellee, and, thus, cannot be registered; I The Nice Classification is a classification of goods and services for the purpose of registering trademarks and service marks, based on a multilateral treaty administered by the World Intellectual Property Organization. This treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957. Republic of the Philippines T1\.TT..... T I7'£"'T"TT'" T v n D r l . D v n ....... I"'l.DDT£'lD r i 4. It worked to promote and create goodwill for Le TIGRE & Design by placing advertisements on different media, namely, radio and print ads; and 5. To allow a junior user, such as the Appellant, to be the registered owner of Le TIGRE & Design would cause damage to it and the goodwill and reputation acquired by Le TIGRE & Design because of its efforts and resources will go for naught, and instead, a third person will reap the benefits thereof. The Appellee submitted the following evidence to support its opposition: 1. Letter of the Sales Manager of the Appellee, dated 13 October 1987;2 2. Affidavit of Evangeline Natad Bernal, executed on 09 August 2006;3 3. Affidavit of Estelita Ramirez, executed on 09 August 2006;4 4. Sales Invoices:" 5. Affidavit of Valentino Madriaga, executed on 10 August 2006;6 6. Affidavit of James Ong, executed on 09 August 2006;7 I 1 7. 8. Affidavit of Henry Go, executed on 10 August 2006;8 Advertising contracts and related official receipts." and 9. Patches and labels used by the Appellee." f I i The Appellant filed its "ANSWER" on 04 January 2007 alleging the following: i I l 1. Rep. Act No. 8293 ("IP Code") adopts the "First-to-File" system in the protection of intellectual property rights and vacated the reliance on the first to invent system in patents and the prior use in the case of trademarks; 2. There was no attempt on the Appellee's part to register Le TIGRE & Design which is a glaring and clear indication that it did not own, much less, create, concoct or make it; 3. It made, concocted and owned Le TIGRE & Design and it filed applications and obtained registrations thereof not only in the Philippines but in other countries; 4. Its applications/registrations in various countries are reflected in the websites of the trademark offices of some of these countries, and which evidently shows that the Appellee has no basis under the IP Code to file the opposition and that the Appellee 2 Annex "A". 3 Annex "B". ~ Annex "C", 5 Annexes "0" to "I". 6 Annex "J". 7 Annex "K". 8 Annex "L". 9 Annexes "M" to "Q". 10 Annex "R". J./ brazenly, unlawfully, illegally, fraudulently and deceitfully appropriated, adopted and used the mark; and S. It would be in the height of injustice to invalidate the registration of its mark based on the opposition of the Appellee who unlawfully, illegally, fraudulently and deceitfully appropriated, adopted and used the subject mark without its knowledge and consent causing incalculable damage, prejudice and injury to its intellectual property rights on Le TIGRE & Design. The Appellant's evidence consists of the Trademark Status Report for the Appellant's marks in various countries" and printouts from the websites of the trademark offices in various countries. 12 In sustaining the opposition, the Director ruled that the Appellee's actual and continuous use of the subject mark has resulted to its ownership thereof under Rep. Act No. 166, as amended" ("RA 166") and that the Appellee has gained vested rights as provided in Sec. 236 of the IP Code. She held that the repeal of RA 166 did not terminate all trademark rights acquired under and pursuant thereto. According to her, Sec. 236 of the IP Code draws a conclusion that the rights referred therein include the rights of owners and prior users of unregistered marks that were acquired in good faith before the IP Code took effect and includes the right to appropriate exclusive use of the mark and the right to oppose or prevent the registration of the mark in favor of others. She also held that the Appellee satisfactorily proved its superior right through actual sales in local commerce way back in 1982 by presenting sales invoices and affidavits of its employees and other disinterested persons. The Director also denied the Appellant's "MOTION FOR RECONSIDERATION" treating it as "mere scrap of paper" for lack of notice and hearing. Dissatisfied, the Appellant filed the instant appeal through registered mail on 19 November 2008. c In its "NOTICE OF APPEAL", the Appellant maintains its arguments before the Director and asserts that the Appellee cannot acquire by prior use a mark already owned by another. The Appellant points out that it owns and used Le TIGRE & Design since 20 September 1979 while the Appellee has used it only on 13 December 1991, at the earliest. According to the Appellant, mere use of a mark without registration under RA 166 will not be converted into ownership for if it so, then there will be no need for registration under RA 166 based on local use. The Appellant also alleges that the Appellee has not applied for registration based on local use under RA 166 although it allegedly used the mark in 1982 up to 1998, or for a period of 16 years, because it knows it does not own it and that if it applies for registration there will be a chance that its illegal, fraudulent, unlawful, deceitful and even its criminal act may be found out. Thus, says the Appellant, the Appellee not having secured any registration under RA 166, it has not gained for itself any vested rights under Sec. 236 of the IP Code and therefore is bereft of any protection from the new law. In 11 Exhibit "1". 12 Exhibits "2" to "9". 13 AN ACT TO PROVIDE FOR THE REGISTRATION AND PROTECTION OF TRADEMARKS, TRADE-NAMES AND SERVICE MARKS, DEFINING UNFAIR COMPETITION AND FALSE MARKING AND PROVIDING REMEDIES AGAINST THE SAME, AND FOR OTHER PURPOSES. .V f contrast, the Appellant contends, its trademark applications or registrations in 38 countries should be considered as a very strong if not irrefutable proof of ownership of the mark. On 12 December 1998, this Office issued an Order calling the attention of the Appellant to the requisites for the filing and perfecting an appeal to the Director General and required the said party to submit within 3 days from receipt thereof a legible copy of the NOTICE OF APPEAL, proof that it served copies of the appeal upon the Director and the Appellee, 3 legible copies of the appealed decision, and a valid certification of non-forum shopping. The Appellant was warned in the Order that failure to comply therewith would cause the dismissal of the appeal. The Appellant filed a "COMPLIANCE" on 18 December 2008. Upon evaluation of the submission, this Office issued the Order of 15 January 2009, stating that the Appellant failed to attach to the COMPLIANCE copies of the appealed decision and that the certificate of non-forum shopping was not signed by the Appellant but by its counsel, and that in the interest of justice, this Office was giving the Appellant a final period of 3 days from receipt thereof to submit a copy of the assailed decision and proof that it has authorized its counsel to execute the certificate of non-forum shopping. The Order cautioned the Appellant that failure to comply shall cause the dismissal of the appeal. On 23 January 2009, the Appellant filed, through its counsel, a "COMPLIANCE AND MANIFESTATION'. Consequently, on 05 February 2009, this Office issued another Order that with the filing of the COMPLIANCE AND MANIFESTATION on 23 January 2009, the Appellee and the i J Director are required to file within 30 days from receipt thereof comment to the appeal and to ! ] 1 forward records ofthe case, respectively. On 03 March 2009, the Appellee filed its "COMMENT (To the Appeal)" alleging that the the decision of the Director is final and executory as it was filed out of time and not signed by a duly authorized representative. According to the Appellee, the Appellant's COMPLIANCE AND MANIFESTATION must be stricken off the records because it does not bear the required information of the Appellant's counsel's compliance to the Mandatory Continuing Legal Education ("MCLE"). Also, the Appellant asserts that it has duly acquired ownership of Le TIGRE & Design by prior use even without a registration thereof and has a vested right therein. It argues that the law on trademarks adheres to the principle of nationality and territoriality and the registration in foreign countries is not registration in the Philippines. The repeal of RA 166, the Appellee contends, did not terminate all trademark rights acquired under and pursuant to the said law and that it has proven its superior right through actual sales in local commerce way back in 1982 while the Appellant has not presented a single evidence on its actual use of the mark either in the Philippines or abroad. Meanwhile, on 05 March 2009, the Director forwarded the records of the case. Thus, this Office issued its Order of 09 March 2009 giving the parties 15 days from receipt thereof to file their respective memorandum. On 30 March 2009, the Appellant filed a motion for extension to file memorandum, while the Appellee filed its memorandum the following day. Finally, on 03 April 2009, this Office issued an Order granting the Appellant's motion for extension or until 09 April 2009. The Appellant did not file its memorandum. r i \ .... This Office noted that the Appellee has raised two pivotal technical issues: first, that the appeal was filed out of time, and second, that the Appellant's counsel did not comply with the Supreme Court's requirement regarding the disclosure of compliance with MCLE in the pleadings filed in this appeal proceeding. On the first issue, records show that the Appellant received a copy of Decision No. 2007-87 on 06 July 2007. Pursuant to Sec. 2 of the Uniform Rules on Appeal, the deadline for the Appellant to file a motion for reconsideration or an appeal was on 05 August 2007. Considering however, that 05 August 2007 was a Sunday, the Appellant filed its motion for reconsideration on the next working day on 06 August 2007. In addition, the records show that the Appellant received on 18 November 2008 a copy of Resolution No. 2008-17 (D) which denied its motion for reconsideration. Contrary to the Appellee's allegations, the Appellant filed the instant appeal not on 18 December 2008 but on 19 November 2008. It is settled in our jurisprudence that when a party files a motion for reconsideration on the last day to perfect an appeal, the appellant still has one day from )' receipt of the denial of the motion within which to perfect an appeal." Going now to the second issue, it is the Appellee's argument that the Appellant's COMPLIANCE AND MANIFESTATION filed on 23 January 2009 must be stricken off the records i as the same does not bear the information regarding the MCLE Compliance of the Appellant's counsel, hence, the appeal should be dismissed. In this regard, the Supreme Court Resolution on Bar Matter No. 1922, dated 03 June 2008, explicitly provides, among other things: The Court further Resolved, upon the recommendation of the Committee on Legal Education and Bar Matters, to REQUIRE practicing members of the bar to INDICATE in all pleadings filed before the courts or quasi-judicial bodies, the number and date of issue of their MCLE Certificate of Compliance or Certificate of Exemption, as may be applicable, for the immediately preceding compliance period. Failure to disclose the required information would cause the dismissal of the case and the expunction ofthe pleadings from the records. (Underscoring supplied) Following its publication for 60 days in a newspaper of general circulation, Bar Matter No. 1922 was supposed to take effect on 25 August 2008. However, in its Resolution En Bane, dated 02 September 2008, the Court resolved to amend the effectivity date of the implementation of Bar Matter No. 1922 to 01 January 2009. The requirement under Bar Matter No. 1922 covers all pleadings filed in courts and quasi judicial bodies. Based on the clear and unequivocal wordings of the Supreme Court, the dismissal of the case and expunction of the pleadings from the records for non-compliance are mandatory. Hence, the Appellant's counsel in all the pleadings filed on behalf of the Appellant from 01 January 2009 onwards was required to indicate the information regarding said counsel's MCLE Certificate of Compliance or Certificate of Exemption. 14 See Lloren, et al us. De Veyra, et al, G. R. No. L-13929. 28 Mar. 1962. • I J I A scrutiny of the records shows that none of the pleadings submitted or filed by the iI Appellant starting January 2009 bear the required information on its counsel's compliance to MCLE. ! This Office also noticed that while the issue was raised by the Appellee in its comment to the 1 appeal, a copy of which was duly served upon the Appellant, the Appellant did not exert effort to I address such deficiency and submit the required information nor indicate or disclose them in its I subsequent pleadings. I Thus, pursuant to the Supreme Court Resolution on Bar Matter No. 1922, this Office is constrained to strike out the Appellant's COMPLIANCE AND MANIFESTATION, filed on 23 January 2009 and other subsequent pleadings. I 1 Consequently, it is deemed that there has been no compliance by the Appellant to this Office's Order of 15 January 2009. This notwithstanding the amendments to the Uniform Rules on Appeal which took effect on 25 February 2009. 15 Although the amendments apply retroactively to all pending appeals in the Director General as of 25 February 2009, and dispensed with the requirement of certification of non-forum shopping and reduced the number of copies of the I appealed decision to be attached to the appeal memorandum from three to two, among other things, the deadline for the Appellant to submit compliance to the Order of 15 January 2009 had lapsed before the amendments took effect. Moreover, the expunction of the Appellant's COMPLIANCE AND MANIFESTATION means that the Appellant is still to be considered to have failed to submit the required number of copies of the appealed decision. t J 1 WHEREFORE, premises considered, the appeal is hereby DISMISSED for the reasons 1 discussed above. Let a copy of this Decision as well as the trademark applications and records be furnished and returned to the Director of the Bureau of Legal Affairs for appropriate action. 1 1 Further, let also the Director of the Bureau of Trademarks and the library of the Documentation, I 1 Information and Technology Transfer Bureau be furnished a copy of this Decision for information, 1 guidance, and records purposes. I \ ! SO ORDERED. DEC 0 82881 Makati City ! i I I I I 15 Promulgated though Office Order No. 12, S. 2009.
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