INTELLECTUAL PROPERTYPHILIPP INES

ZUANG YONG PING, }Petitioner, }

}-versus- }

}}}

WANG RENGJIN, }Respondent-Registrant-Assignee, }

)(-----------------------------------------------){

IPC NO. 14-2007-00056Case Filed: May 11, 2007

Petition for Cancellation of:Registration No. 4-2002-003413Date Issued: April 16, 2004TM: "CATA"

DECISION NO. Of- /<f4

DECISION

This is a Petition for the Cancellation of the Certificate of Registration of the mark"CATA" under Registration No. 4-2002-003413 issued to John D. Baterna on April 16, 2004for use on light bulb falling under Class 11 and later on assigned to herein Respondent WangRengjin

On May 11, 2007, Zuang Yong Ping ("Petitioner" for brevity), a Filipino citizen withaddress at Eug-9, 11 Divisoria Mall, Tabora Street, San Nicolas, Manila filed a Petition forCancellation against Respondent, as the assignee of of Registration No. 4-2002-003413issued on April 16,2004. The grounds relied upon by Petitioner are herein reproduced:

1/3. On April 29, 2002, I submitted a trademark application of CATA at theIntellectual Property Office at Makati City.

4. On June 2, 2006, I found that an Assignment of Registration of Trademarkwas allegedly executed by me in favor of John D. Baterna which as a matter of truth Ihave not executed in favor of John D. Baterna and the signatu re appearing at thesecond page of the said Assignment of Application for Registration of trademark is notmy signature.

5. Further verification from the Intellectual Property Office a Certificate ofRegistration for the mark CATA was issued in the name of John D. Baterna.

6. Moreover, after the issuance of the said Certificate of Registration in favor ofJohn D. Baterna the same has been assigned to Wang Rengjin.

7. On July 7, 2006, I filed a criminal complaint before the City Prosecutor o~

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines- www.ipophil.gov.phTelephone: +632-7525450 to 65· Facsimile: +632-8904862· email: mail@ipophil.gov.ph

Makati City against John D. Baterna for Falsification of Public Document relative to theAssignment of Registration of Trademark CATA which wa s docketed as 15. No. 06G­10956.

8. Accord ingly, on August 28, 2006, the Honorable 3 rd Assistant City Prosecutor

of Makati City, An ton io T. Lim, Jr. issued a Resolution finding probable cau se,recommended that John D. Baterna, be indicted for Falsification of Public Document bya priva te individual punishable under Article 172 in relation to Article 171 (I) of the

Revi sed Penal Code."

Together with the Verified Petition for Cancellation, Petitioner submitted variousevidence to support its petition which are herein enumerated:

Exhibit Description

"An inclusive of sub- Certified true copy of Trademarks Appl ication formarkings the mark CATA under Serial No. 4-2002-003413

filed on April 29, 2002

"B" and "B-1" Certified copy of the Assignment of TrademarkApplication Serial No. 4-2002-003413 executed onDecember 3, 2003 in favor of John Baterna

Certified true copy of Cert ificate of Registration

"Gil No. 4-2002-003413 issued on April 16, 2004 toJohn Baterna

"0" Certified copy of the Assignment of TrademarkApplication Serial No. 4-2002-003413 executed onJune 3, 2005 in favor of Wang Rengjin

"E" Photocopy of the Affidavit-Complaint of ZhuangYong Ping executed on July 17,2006 and swornbefore 3rd Asst. City Prosecutor Hannibal V.Santillan of the Makati City Prosecutor's Office

"F" Photocopy of the Resolution issued by 3rd Asst.City Prosecutor, Antonio T. Lim, Jr., of the Makat iCity Prosecutor's Office in I.S. No. 06-G-10956

"G" Affidavit-Complaint of Zhuang Yong Ping executedon January 30, 2007

On June 8, 2007 Respondent was directed to file his Answer to the petition. Afterthree Motions for Extension of Time to file Answer, Respondent filed his Verified Answer onOctober 17, 2007 stating the following Affirmative and/or Special Defenses:

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/1 1. Th e Pet ition for Cancellation was filed prem aturely. Petitioner's evidence

shows that he charged John Baterna with Falsification of Public Document. Because ofthe failure of John Baterna to file hi s counter-affidavit as he had mo ved out of his given

address before he was served with subpoen a, the Investigating prosecutT (J

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recommended the filing of the corresponding information against said John Baterna;

2. The Petition for Cancellation is clearly defective and dismissable;

3. Respondent- Registrant has clear and superior right to the trademark CATA.

a. Respondent-Registrant adopted and first used the mark CATA for electricbulbs, among others, long before April 29, 2002 when the petitioner Zhuang Yong Pingfiled Application Serial No. 4-2002-003413;

b. The electric bulb bearing the trademark CATA were being manufactured inthe People' s Republic of China and exported into the Philippines by Respondent­Registrant.

c. The trademark CATA for use on electric bulbs, among others, has earnedreputation not only in the People's Republic of China but also in the Philippinesthrough the efforts of the Respondent-Registrant;

d. Through a friend, Xie Yong Lian of group 8 of Nanjiang Village, Jinjing Town,Jinjiang City, Fujian Province, People's Republic of China, the mark CATA for use onelectric bulb, white lamp, electric light socket, lighting appliance and installment, streetlamp, flourescent tube, water heater, refrigerators, air conditioner, drinking bowl wasapplied for registration and subsequently registered in the People's Republic of Chinaunder Registration No. 3173456 with validity from September 7, 2003 to September 6,2013;

e. Subsequently, Registration No. 3173456 was approved for transfer toRespondent-Registrant by the Trademark Office of the State Administration forIndustry and Commerce of the People's Republic of China;

f. Last April 29, 2002, without the knowledge and consent and in fraud ofRespondent-Registrant petitioner Zhuang Yong Ping, a Chinese national, filedApplication Serial No. 4-2002-003413 for the registration of the trademark CATA foruse on light bulb;

g. Petitioner did not create but merely copied the mark CATA of Respondent­Registrant which he applied for registration under Application Serial No . 4-2002­003413;

h. The mark CATA applied for registration by petitioner and subsequentlyassigned by him in favor of John Baterna, is identical to Respondent-Registrant'sregistered CATA under Exhibits "l-b" and "l-c". As a result, Respondent -Registranjt,hwas damaged by the issuance of Registration No. 4-2002-003413 to John D. Baterna /! r

4. After the filing of the Inter Partes Case No. 14-2005-00058, John D. Baternaoffered to assi gn to Respondent-Registrant by wa y of compromise settleme ntRegistration No . 4-2002-003413. Believing in good faith that John D. Baterna had agood title to, or at least a semblance of good title to, Registration No . 4-2002-003413,Respondent-Registrant acquired from John D. Batern said registration in good faith andfor valu able consideration."

Together with the Answer, Respondent-Registrantdocumentary exhibits:

submitted the following

Exhibit Description

.111" Certified true copy of the Petition for Cancellationfiled by Respondent for the cancellation ofRegistration No. 4-2002-003413 in the name ofJohn D. Baterna docketed as IPC NO. 14-2005-00058

"1-a" A sample of the carton box used by Respondent-Registrant for his CATA electric bulbs exportedinto the Philippines

"1-b" Certified true copy of the duly authenticatedCertificate of Registration No. 3173456 issued bythe People's Republic of China for the trademarkCATA with English translat ion

"1_c" Certified copy of the duly authenticated Approvalof Trademark Transfer of Registrat ion No.3173456 of the trademark CATA in favor of theRespondent-Registrant, with English translation

"2" Affidavit of Respondent-Registrant, Wang Rengjin

On October 18, 2007, this Bureau issued a Notice of Preliminary Conference. Duringthe preliminary Conference on January 14, 2008, only counsel for Respondent appeared.Consequently, Order No. 2008-187 was issued on January 28, 2008 waiving Petitioner'sright to submit Position Paper. On the other hand, Respondent filed its Position Paper onFebruary 14, 2008. Hence, this decision.

The main issue to be resolved in this case is: Whether or not Certificate ofRegistration No. 4-2002-3413 of the mark CATA should be canceled.

A perusal of the records of this case would show that herein Respondent-Registrantacquired the subject Certificate of Registration No. 4-2002-003413 of the mark CATA byvirtue of a Deed of Assiqnrnent' executed by the original registrant John Baterna on June 3ArfJI See filewrapper of the case ! I (iJ4

2005 in favor of Wang Rengjin pursuant to a compromise settlement arrived at by JohnBaterna and Wang Rengjin , parties to the Petition for Cancellation docketed as IPC No. 14­2005-0058. Said judgment based on compromise agreement became final and executory onNovember 15, 2005. 2 Through the assignment/transfer of the certificate of registration, hereinRespondent-Registrant stepped into the shoes of the assignee and acquired the ownersh ipof the mark CATA subject of the said registration . Consequently, having acquired theownership of the mark, Respondent-Registrant concom itantly acquired the rights of aregistrant and owner of a mark.

Section 138 of Republic Act No. 8293 specifically states that "the cert ificate ofregistration is a prima facie evidence of the registrant's ownership of the mark, and of theexclusive right to use the same in connection with the goods or services specified in thecertificate and those that are related thereto. " Thus , in cases of cancellation of registeredmark, the onus probandi is upon the petit ioner to prove that the registration of the mark wasinvalid and that the regist rant is not the owner of the mark.

In the presen t case , other than Petitioner's bare allegations, no independent evidencewas presented to show that the transfer of the application for trademark registrat ion wasinvalid. Wh ile Petitioner submitted a Resolution of the Asst. City Prosecutor Antonio Lim, Jr.(Exhibit "F") finding probab le cause for indictment of John Baterna for falsification of publicdocument, the same cannot dispel the presumption of validity of the herein subject cert ificateof registration. The Resolution was merely a photocopy and not a cert ified copy as requiredunder Office Order No. 79, particularly Section 7.1 thereof 3 . Consequently, pursuan t toSecti on 12.1 of Office Order the same cannot be admitted as evidence", Moreover, even ifthe Reso lution is admissible in evidence, it is not substantial proof that John Baterna hasforged Petit ioner's signature for he is still entitle to his constitutional right of being presumedinnocent until found guilty beyond reasonable doubt by a competent court .

Thus, having failed to overcome by substantial evidence the presumption accorded toa Certificate of Registration , the instant petition for cancella tion of registration of the hereinsubject mark CATA in the name of Wang Rengjin cannot be given due course.

WHEREFORE, considering the foregoing premises, the instant Petition forCancellation is hereby DENIED. Accordingly, Certificate of Registration No. 4-2005-003413

2 Supra.3"7. 1. The petition or opposition, together with the affidavits of witnesses a n d originals of thedocuments and other requirements, shall be filed with the Bureau, provided, that in case of publicdocuments, certified copies shall be allowed in lieu of the originals . The Bureau shall ch ec k ifthe petition or opposition is in d ue for m as provided in the Regula tion s particularly Rule 3 , Section 3;Rule 4, Section 2; Rule 5 , Section 3; Ru le 6, Section 9; Ru le 7, Sections 3 and 5; Rule 8 , Sections 3and 4 . For petition for cancellation of layout design (topography) of integrated circuits, Rule 3 ,Section 3 applies as to the form and requirements . The affidavits, documents and other eviden ceshall be marked consecutively as "Exhibits" beginning with the letter "A".412.1. The verified petition or oppos ition, repl y if any, duly marked affidavits of the witnesses, and the docume ntssubmit ted, sha ll co ns titu te the en tire evidence for the petitioner or oppos er. The verified answer, rejoinder if any,and the dul y marked affidavits and documen ts submitted shall con stitu te the evidence for the respon den/frbt.Affidavits, documents and other evi dence not su bm it te d an d d uly marked in accordance with the ~preceding sections shall no t be admitted as evi dence.

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issued on April 16,2004 for the mark CATA in the name of Wang Rengjin is hereby declaredVALID AND EXISTING until canceled by operation of law.

Let the filewrapper of CATA subject matter of the instant case be transmitted to theBureau of Trademarks (BOT) for appropriate action in accordance with this DECISION .

SO ORDERED.

Makati City, 22 August 2008.

Di ector, Bureau of Legal Affairs

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