INTELLEcnJAL PROPERTY OFFICEOF THEPHILIPPINES

OFFICE OF THE DIRECTOR GENERAL

JOlLiBEE FOODS CORPORATION., Opposer-Appellant,

- versus ­

HUAN SIEK SY, Respondent-Appellee.

x-----------·····---------------------------------x

Appeal No. 14-2016-0057

IPC No. 14-2011-00009 Opposition to: Application No. 4-2010-002983 Filed On: 18 March 2010

Trademark: JB JOllY BEAR & A REPRESENTATION OF A BEAR

DECISION

JOlLiBEE FOODS CORPORATION ("Appellant") appeals the decision' of the Director of Bureau of Legal Affairs "(Director") dismissing the Appellant's opposition to the application for registration of the mark "JB JOLLY BEAR & A REPRESENTATION OF A BEAR" ("JB JOLLY BEAR") filed by HUAN SIEK SY ("Appellee").

The Parties and the Marks

The Appellant secured on 10 March 2006 the registration of the mark "JOLLlBEE" for use on the following goods falling under Classes 29 and 30 of the Nice Classification:"

"cooked and frozen preparations containing ham, hamburger, chicken, pork , tuna, beef, eggs; other dairy products;"

"ice cream and sherbet, coffee, tea, cocoa."

The Appellant also secured on 22 July 2010 the registration of the mark "JOLLIBEE & Device" for use on goods and services under Classes 293

, 304 and 43 5.

1 Decision No. 2016-148dated 16 May 2016. 2The 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. 3 Class 29- beef, fish , poultry; milk ; fast food products containing meat, fast food products containing fish, fast food products containing poultry, fast food products containing game, fast food products containing seafood, fast food products containing eggs, fast food products containing vegetables, fast food products containing edible fats, fast food products containing edible oils , fast food products containing dairy products , fast food products containing fruits fast food products containing nuts 4 Class 30- bread , pastries, pasta and ice-based products. 5 Class 43- services for providing food and drink; restaurant services.

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The Appellee, on the other hand filed on 18 March 2010 an application for registration of the mark "JB JOllY BEAR" for goods under Classes 296 and 307 of the Nice Classification.

Below are the illustrations of the marks of the Appellant and the Appellee:

A ellant's marks

JOLLIBEE

A ellee's mark

The Notice of Opposition

In filing the notice of opposition against the registration of "JB JOllY BEAR", the Appellant maintained that the registration of the opposed mark is contrary to the provisions of Section 123.1 (d), (e), and (f) of Republic Act No. 8293 or otherwise known as the Intellectual Property Code of the Philippines ("IP Code"). The Appellant claimed that it is the owner and first user of the internationally well-known mark "JOl LiBEE" mark and related JOlLlBEE" and "JOllY" marks which have been registered with the Intellectual Property Office of the Philippines ("IPOPHl") for various food and food products in Classes 29 and 3D, as well as related classes. The Appellant also maintained that the Appellee's mark "JOl l Y BEAR" is visually and phonetically identical with the Appellant's JOlLiBEE marks as to be likely to deceive or cause confusion. The Appellant averred that the use of the Appellee of its "JOllY BEAR" mark will mislead the consumers into believing that the Appellee's goods are produced by, originate from, or under the sponsorship of the Appellant. lastly, the Appellant claimed that its marks are well-known and world-famous trademarks. Hence, the registration of the mark "JB JOllY BEAR" will constitute violation of Sections 123.1 (e) and (f) of the IP Code.

Thereafter, the Bureau of legal Affairs issued a notice to the Appellee to answer the opposition within thirty (30) days from receipt thereof. The Appellee did not file his answer and the case was deemed submitted for decision.

The Ruling of the Director

The Director issued a decision dismissing the opposition against the registration of the Appellee's mark "JB JOllY BEAR".

6 Class 29- snack foods, namely, processed peanuts, processed corn, green peas, milk powder and ~ellies

Class 30- snack foods, namely, corn chips, cookies, biscuits, crackers, candies, wafer sticks, polvoron, chocolate powder

P age214

The Instant Appeal

The Appellant appealed to this Office seeking the reversal and setting aside of the decision of the Director. The Appellant maintains that the mark "JB JOllY BEAR & A REPRESENTATION OF A MARK" is confusingly similar to its well-known "JOlLlBEE" marks and cites the following assignment of error:

GROUNDS FOR THE APPEAL

I. THE BLA DIRECTOR ERRED IN RULING THAT APPEllEE'S TRADEMARK "JB JOllY BEAR" SUFFICIENTLY MET THE REQUIREMENT OF THE LAW FOR TRADEMARK REGISTRATION.

II. THE BLA DIRECTOR FAilED TO DECLARE THAT JOlLiBEE IS AN INTERNATIONAllY WELL-KNOWN TRADEMARK , WHICH ENJOYS SUBSTANTIAL GOODWill AND RECOGNITION IN THE PHILIPPINES AND WORLDWIDE.

III. APPEllEE'S UNAUTHORIZED USE OF THE MARK "JB JOllY BEAR" WOULD LIKEWISE CONSTITUTE UNFAIR COMPETITION AND WOULD LIKELY CAUSE DAMAGE TO APPELLANTS GOODWill AND REPUTATION.

On 02 November 2016, the Appellee filed his Ex Parte Manifestation stating therewith that he failed to file the requisite 3rd Year Declaration of Actual Use (DAU) of the mark. Hence, the Appellee prayed that the instant appeal be dismissed for being moot and academic.

On 28 November 2016, the Appellant filed its Comment to Appellee's Ex Parte Manifestation. The Appellant maintains that despite the abandonment of the Appellee of his trademark application, the instant appeal should not be dismissed because according to the Appellant , the Decision issued by the BLA Director poses a serious hazard to the trademark rights of the Appellant and creates a confusing precedent for similar cases in the future. The Appellant also maintains that if the BLA Decision is not reversed, it will gravely damage its exclusive trademark rights. lastly, the Appellant points out that in the instant case, there is still a pending justiciable controversy, i.e. the issue on the well-known status of the "JOlLlBEE" marks.

Our Ruling

With the Ex Parte Manifestation submitted by the Appellee , this Office, thus, requested information from the Bureau of Trademarks ("BOT") on whether the Appellee has indeed failed to file a DAU for the opposed mark." Subsequently, the BOT issued a "CERT1FICATION"s that no DAU has been filed for "JB JOllY BEAR" and that the application for registration of this mark is deemed refused.

In this regard, the Appellee's Trademark Application No. 4-2010-002983 for "JB JOllY BEAR" is considered abandoned or withdrawn because of the Appellee's failure to

8 MEMORANDUM dated 09 May 2019 . 9 CERTIFICATION was issued on 30 May 2019 .

Page3j4

file the required DAU. Section 124.2 of the Intellectual Property Code of the Philippines ("IP Code") states that:

124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

In view of the failure of Appellee to file the required DAU within the prescribed period, this omission shall be deemed a voluntary and final abandonment by the Appellee of the pending application. As the application is deemed finally abandoned, the application is necessarily refused. Consequently, this appeal is now deemed moot and academic and the Office need not decide this case on the merits.

The Appellant in filing the opposition to the registration of "JB JOllY BEAR" seeks to prevent the registration of this mark in favor of the Appellee. However, in view of the certification issued by the BOT showing the Appellee's failure to file the DAU and stating that the application for registration is deemed refused, the Appellant 's plea for the refusal of the Appellee's trademark application for "J8 JOllY BEAR" was practically granted.

In one case, the Supreme Court of the Philippines has ruled that:

For a court to exercise its power of adjudication, there must be an actual case or controversy - one which involves a conflict of legal rights, an assertion of opposite legal claims susceptible of judicial resolution; the case must not be moot or academic or based on extra-legal or other similar considerations not cognizable by a court of justice . A case becomes moot and academic when its purpose has become stale, such as the case before us."

In this instance, no practical or useful purpose would be served by resolving the issues and merits in this case when the Appellee's trademark application is now considered refused. It is unnecessary to indulge in academic discussion of a case presenting a moot question as a judgment thereon cannot have any practical legal effect or, in the nature of things, cannot be entorced."

WHEREFORE, premises considered, the appeal is hereby DISMISSED for the reasons discussed above, and this case is deemed closed and terminated. let a copy of this Decision as well as the records of this case be furnished and returned to the Director of the Bureau of legal Affairs for appropriate action. let also a copy of this decision be furnished the Bureau of Trademarks and the library of the Documentation , Information and Technology Transfer Bureau for their information and records purposes.

SO ORDERED.

1 5 JUN2020 Taguig City.

10 Dean Jose Joya , v. Presidential Commission on Good Government, G. R. No. 96541, 24 August 1993. 11 Gerardo O. Lanuza, Jr. v. Ma. Vivian Yuchengco, G.R. No. 157033,28 March 2005.

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