~iP' ''' n UCTY.. ,.o"u~'~""""'~l

JOLLIBEE FOODS CORPORATION,Oppose r,

-versus-

HAMBELS FOOD, INC.,Respondent-Applicant.

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

IPC No. 14-2006-00 165

Opposition to:Appln. Senal No. 4-2005-003283Date Filed: 12 April 2005Trademark : JOLlYDAY & DEVI CE

Decision No. 01· 14Y

DECISION

For resolution is the Opposition filed by romoee Foods Corporation (the"Opposer") against Application No. 4-2005-003283 filed by Hambels Food, Inc.(the "Respondent-Applicant') on 12 April 2005 for the registration of the markJOLLYDAY & DEVICE covering goods in Class 29, specifica lly but not limited tohotdogs, ham, patties & meatoat upon the ground that the mark JOLLYDAY &DEVICE resembles the JOLUBEE mark of Opposer.

Opposer, JOLLIBEE FOODS CORPORATION (hereafter, the "Opposer") isa corporation duly organized and existing under the laws of the Republic of thePhilipp ines, with principal place of business at 10'" Floor, Jollibee Plaza Building,#10 Emerald Avenue, Ortigas (enter, Pasig City, Philippines.

Respondent-Applicant, HAMBELS FOOD, INC., is a corporation organi zedand existing under the laws of Republic of the Philippines, with business addressat No. 12 Brgy. Banay-Banav, Cabuvao, Laguna.

On 14 November 2006, Opposer filed the instant Opposition againstRespondent-App licant's Application for registration of the trademark JOLLYDAY~DEVICE for goods under Class 29, specifically but not limited to hotdogs, r»:patties. meatloaf. , I

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On 2.1 November 2.006, this Bureau issued a Notice to Answer, copy ofwhich together with the Opposition was received by Respondent-Applicant on 11December 2.006. The Notice to Answer required Respondent-Applicant to submitits Verified Answer within thirty (30) days from receipt thereof,

On 10 January 2007, Respondent-Applicant fi led its Verified Answer to theOpposition after successive motions for extension of time to file the same weregranted.

Gro~nds for Oppositjon

Opposer filed the instant Oppcsmon based on the follOWing grounds:

1. "The registration of the mark subject of tms opposition IS contraryto the provisions of Section 123.1 (d) of Republic Act No. 8293, as amended,which prohibit the registration of a mark that:

(d) / s iden tiCifI wi th a registered mark belonging to a differentproprietor or a marl< wit h an earlier filing or priority date, i nrespect of :

(i) The same goods or services, or(ii) Closely related goods or servKes, or(Hi) If i t nearly resembles such a mark as t o be likely to

aecet ve or csuse confusion; ~

2. "The Opposer is the Owner and first user of the JOLUBEE markwhich has been used and registered in the Philippines and in other countries.

3, "The Respondent-Applicant's mark resembles tne JOLLIBEE markas to be likely to deceive or cause confusion, Hence, the registrat ion of theRespondent-Applicant's mark. will be contrary to Section 123.1 (d) of Republic ActNo. 8293. Clearly, the Respondent-Applicant intends to exploit the goodwillassociated with the JOLLIBEE mark.

4. "The Respondent-Applicant's use of the JOLLYDAY mark willmislead consumers into believinq that the Respondent-Applicant 's goods areproduced by, originate from, or are under the sponsorship of the Opposer.

5, "The Respondent-Applicant's use of the JOLLYDAY mark Wi ll".....mislead the public into believing that the Respondent-Applicant's goods ar~

associated with the Opposer, Therefore, potentia l damage to the Opposer willbe caused as a result of the Opposer's inability to control the quality of the 900d1'

,

put on the market by the Respondent-Applicant under the mark subject of thisopposition,

6, "The Respondent-Applicant's use of the JOLLYDAY mark will takeunfair advantage of, dilute and diminish the distinctive character or reputation ofthe JOLLIBEE mark,

7, "The denial of the application subject of this opposition isauthorized under other provisions of Republic Act No, 8293,

Opposer relied on the following facts to support its opposition: (1) TheOpposer owns the trademark JOLLIBEE with date of registration and use in thePhilippines and abroad prior to the filing date of the subject mark [see pars. 1, 6,,< 7, O/}f)osl!ion], (2) Respondent-Applicant's mark JOLLYDAY & DEVICE isVisually and phonetically similar to Opposer's JOLUBEE mark [see par, 2,Opposition], (3) Opposer did not consent to Respondent's use and applicationfor the registration of the mark in Issue [see J, Opposmon]: (4) That use ofRespondent-Applicant's JOLLYDAY mark is likely to deceive or cause confusionand will dilute the distinctiveness of Opposer's JOLLlBEE mark [see pars, 4 ({ 5­Opposition). (5) That due to continuous use, promotion and advertisement ofOpposer's JOLLIBEE mark, said mark has become popular and well -known [seepars. 8 & 9, Opposition).

Respondent, through Counsel, fiied its Answer and interposed thefollowing defenses, to wit:

1. "The mark JOLLYDAY as applied for registration by HarnbelsFood, Inc. per Applica tion No. 4-2005-003283 on 12 April 2005(Exhibit 1) is not identical with the registered mark JOLLlBEE asclaimed by the Opposer to be contrary to the provision ofSection 123.1 (d) of the Republic Act No. 829], as amended,on the following reasons :

a. the mark JOLLYDAY has a very different meaning with the markJOlLiBEE

Jollyday - means joyful day, whileJollibee - means joyful bee

b. ue mark JOLlYDAY is different in spelling and pronunciationwith the mark JOlLiBEE.

c. The mark and device of JOlLYDAY as filed to th is office iS~different and does not resemble the mark JOLUBEE. Thedevice of JOlLYDAY mark is "a sunshine with happy face ir

;

yellow and red peep behind the word JOLLYDAY" (Exhibit 2)while the devices of JOLU BEE mark, as registered andapproved by this honorable office per various Certificate ofRegistrations are represented by a word "Jclhbee" alone(Exhibit 3), "Joll ibee and Mascot Bee device" (Exhibit 3A) anc afanciful representation of a bee's head with a cup within il

square" (Exhibit 36).

2. "The Applicant has filed the mark JOllYDAY in good faith andhas no intention whatsoever to deceive or cause confusion Withany other existing and registered mark.

3. "The Applicant denied the allegation of the Opposer that theapplicant has intended to exploit the goodwill associated withJOlLIBEE mark. It is a well-known fact that the Opposer is afast food-chain commissary servicing directly its customers on adme-m service system similar to other fast food restaurantswhile Applicant is a registered manufacturer of processed foodproducts and cater Its dealers In wet market and supermarket.

4. "The Applicant believes that the JOl LYDAY mark as applied tothis Honorable Office will not mislead consumers into believingthat the applicant's products are produced by, originate from,or are under the sponsorship of the Opposer since thepackaging label of the Applicant's products bearing the markand device JOlLYDAY clearly bears the name of themanufacturer HAMBELS FOOD, I NC. which is duly registered inSecurities and Exchange Commission per Reg. # A200016458dated October 24, 2000 under the laws of the Republic of thePhilippines as a separate, distinct and juridica l person. (Exhbit4). Respondent Hambels Food, Inc. has a different saooresswith that of the Opposer, Jollibee Food Corp.

5. "The Applicant denied the allegation of the Opposer thatJOLLYDAY mark will mislead the public into believing that theApplicant's goods are associated with the Opposer. Applicant'srebutta l and justifiable reasons were already explained in item4 above. Furthermore, the Opposer claimed of potent ialdamage as a result of the Applicant's inability to control thequality of the goods produced by the Applicant is prejudicial,malicious and baseless. The Applicant as separate, distinct andj uridical personality is approved and licensed to operate by.Bureau of Food and Drugs (Exhibit 5) and other governmentagencies and has its own organizational set-up with systems,

policies and procedures in place to ensure that the quality ofapplicants' products released in the market has met thestandards set not only by the governing agencies but with theapplicant's internal pre-defined and established productspecifications.

6. "The Applicant refutes Opposer's allegation that applicant's useof the merx JOlLYDAY as applied to th is Honorable Off ice willdilute and diminish the distinctive character or reputation ofJOLU BEE mark. This is malicious, contemptuous and baselesssince the JOLLYOAY mark is very much different from JOLLIBEEmark. On the contrary the Applicant, Hernoets Food, tnc.. wtltake all measure and step to protect Its Integrity, credibility andreputat ion as a separate, distinct and juridical personrecoqmzeo under the eXisting laws of the Republic of thePhilippines.

7. "The denial of Applicant's application for the approval of themark JOLLYDAY will apparently distort the autherrtiotv of theprovision of Republic Act No. 829] particu larly Section 12] .1(0).

and further stated the following:

8. "The Applicant respectfully recognized that the Opposer is theregistered owner of JOLLIBEE mark.

9, "The Applicant denied tnat JOLLYDAY mark is visually andphonetically similar to JOLUBEE mark as it has differentmeaning, spelling and resembling sounds.

10. "The Applicant, Hembets Foods, Inc . has a separate anddistinct personality of its own and authorize to operate underthe existing laws of the Republic of the Philippines, is notrequired to ask consent from Opposer, Jollibee Foods, Corp. inapplying to this honorable office the mark "Jollvdav" asapplicant does not violate any provision of Republic Act No.829].

11. "The Applicant's use of its ownintended to deceive or causewhatsoever nature.

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12. "The Applicant's use of the mark JOLLYDAY will not dilutedistinctiveness of the JOLUBEE mark as it is clearly andobviously different from each other.

13. 'The Applicant recognized the long existence of JOLUBEE markand its use in the Philippines and in other countries butopposed any allegation that applicant's JOLLYDAY mark violatesany provision of its registration.

14. "The Applicant recognized that Opposer did not abandon Its useof JOLUBEE mark but the applicant's mark JOLLYDAY is not thesame as JOLUBEE mark.

15. "The Applicant recognized that Opposer JOLUBEE mark hadbecome popular and well-known and has established valuablegoodwill but not the JOLlYOAY mark as being applied by theapplicant to thiShonorable omce.

16, "The Applicant recognized the promotions and advertisementcontinuously undertaken by Opposer of its own trademarkJOLUBEE, but not of the JOLLYDAY mark.

Filed as evidence for the Opposer, based on the records, are thefollowing:

1. Verified Notice of Opposition2. AffidaVit of Luis Enrico Salvador3. Certification on authority of Luis Enrico

Salvador to verify the notice of oppositionand execute the certificate of non-forumshopping

4. Cert ified true copy of Philippine applicationNo. 4-2000-004772

5. Cert ified true copy of Philippine registrationno. 4-2000-007421

6. Certified true copy of Philippine applicationno, 4-2005-007558

7. Cert ified true copy of Philippine registrationno. 4-1995- 102456

8. certified tru e copy of Philippine registrationno. 4- 1995-100403

9. Certified true copy of Philippine registrationno. 4-1995-100404

10. Certi fied true copy of Philippine application

Exhibit ':4N

Exhibit "8"

Exhibit "C

Exhibit "ON

Exhibit "E"

Exhibit "G N

Exhibit "H~Yi:;

EXh'M"r(lV

;,

no. 4-2005-00245011. Certified true copy of Philippine application

no. 4-2003-008 178

Exhibit'T

Filed as evidence likewise for Respondent-Applicant were the following:TM Application No. 04-2004-003283 (Exhibit "1: Applicant; : Registrability Reportfor JOLLYDAY & DEVICE (Exhibit ':;: Applicant); Certificate of Registration No.4200000742 1 for the mark JOLUBEE (Exhibit '']: Applicant); Certificate ofRegistration No. 4 1995102456 for the mark JOLUBEE AND MASCOT DEVICE(Exhibit '']A: Applicant;: Certificate of Registration No, 41995100404 for themark ]O LLlBEE GREAT BURGERS GREAT CHICKEN & DEVICE (EKhlbtt "'J8 ';Applicant) .

Issues

The ISSUes to be resolved in the instant Opposition case are:

(al Whether or not Respondent-Applicant's trademark JOLLYDAY &DEVICE is confusingly similar to Opposer's JOLLlBEE trademar k such thatOpposer will be damaged by registration of JDLLYDAY & DEVICE mark in thename of Respondent-Applicant : and

(b) Whether or not Respondent-Applicant's trademark application forJOLLYDAY & DEVICE should be granted registrat ion.

From receipt of the Answer, a reply was subsequently filed by Opposeralleging, inter alia, that:

"The Answer Is Not veined And Should Thus Be ConsideredAs Not HaVing Been Filed"

Before dwelling on issues about confusing similarity and prior ity inadoption and registration in the case at bar, this Bureau finds it imperative todelve on or first determine the verification issue, As to the alleged inconsistencyin the date of execution of the Answer which was dated January 08, 2006 inrelation to the date of the notarization of the verification and certifi cationappearing as December 29, 2006, this Bureau is convinced that the same wasthe result of oversight or a typographical error in the light of attendantcircumstances Which does not materially alter or defeat the substance and meritof the assailed Answer of Respondent-Applicant. But if ever, what is controlling~

is t he date when the venncencwcemncetco was made and notarized because ""<-the verification referred to the pleading itself, the Answer, And on December 29, ~2006, it was signed before the notary public so the Signing happened at the time1

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it was notarized. This Bureau finds satisfactory the explanation given byRespondent-Applicant's representative, Mr. Abetardc Jimena, in the hearing on15 February 2007 that the error was not on the year but on the date itself:

MR. JIMENA, Your Honor, the question is whether thedate is a tyDOQraphical error or not. Thedate in our reply was oeted. apparently itwas dated January 8, 2006. So, It wasverified and notarized December 29, 2006.So, the question IS, where the typo errorlies, is It 0!1 the date or is It on the month'I rnamtest that the error was on the dateami not co tre year, your Honor ,

This Bureau quote the portion of the verification in Respondent-Applicant'sAnswer upon which Opposer based Its contention for considering the verificationas unsigned pleading:

"That I have caused the preparation of this foregoingenswer to Notice ofOpposuion and all allegations cootemea thereinare true and correct of my own personal knowleclge, informationand beliefand based on authentic documents. -

Although Respondent stressed that matters alleged in his Answer were obtainedfrom information and belief, he made particular mention of the fact that thesewere sourced and based from authentic documents, and therefore are true andcorrect of his knowledqe and not merely speculative, He cited likewise that otherthan information and belief, these matters were obtained from his own personalknowledge.

A Preliminary Conference of the instant suit was initially held on 15February 2007 but due to Opposer's motion to resolve the above proceduralissue, the scheduled conference was reset for 15 r-.-larch 2007 and finally on 12July 2007, after the subject procedural issue raised was resolved by virtue ofOrder No. 2007-1156 and for failure of Respondent-Applicant to appear on thescheduled preliminary conference, the same was terminated.

Considering that the case was mandatorily covered by the Summary Ru lesunder Office Order No. 79, this Bureau required Opposer through counsel tofile its position paper. Opposer filed its position paper on 07 August 2007.

Opposer filed its application for its trade mark JOLUBEE for Class 29 i~the Philippines on 09 February 1995 and was granted registration on i s May~

2000 under a duly issued Certificate of Registration No. 4· 1995· 100403 ( E Xhlbi~~

"H", Opposer). Respondent applied for the registrat ion or the mark JOLLYDAY ~ ,

x

on 12 April 2005, or more rnen a decade after Opposer filed its trademarkJOLU BEE for goods falling under Class 29, Although Opposer has shown priorregistration thereof, were the evidence sufficient to prove confusing similarity inboth trademarks?

This Bureau finds that the issue of confusing similarity can best beresolved by comparative examinat ion or analysis of the marks in Question , Acomparison of Opposer's and Respondent-Applicant's marks will show thatRespondent's JOLLYDAY & OEVICE is not confusingly similar to any of Opposer'sregistered JOLUBEE family of marks.

This Bureau reproduced Opposer's as well as Respondent-Applicant's marks forpurposes of comparison:

.JOLLIBEE

Opposer 's mark

as shown In TN reg/Wat'On no, 42{)()(){}()7421

Applicant's markas shown in Appl, SenalNo. 42005003283

The mark JOllYOM & DEVICE was printed and sty lized in completevariation to the Opposer's JOLLIBEE family of marks, Although aurally, theymay sound the same when uttered, JOLU vis-a-vis JOLLY, the presentation ofthe labels are totally different. A mere examination and comparison of thecompeting marks reveal that the letters J, 0, L, l are the letters appearing inboth marks. The records disclose however that apart from the use of the wordJOLLY/JOLU , there are other essential features composing Applicant 's JOLLYOAYmark Which included the use of a device consisting of the image of a sunshinewith happy face above the word JOLLYDAY. Underneath the sunshine deviceor design comprising Applicant's JOlLYDAY mark is written the word JOLlY DAYwith only the first letter J in UPDer case letter and printed in blue script~

Present in both t rademarks is the word JOLLY/JOLU, but the posit ion of th~

word JOLLY for Applicant is different in both designs, Applicant's JOLLYDAY ¥mark is in blue color with the sunshine device in yellow background. Opposer's1

"

JOLU BEE trademark is wri tten in horizontal form with all the letters capitalizedbut wider in font as against Applicant's JOUYDAY mark which is predominantlyof the cOlor blue/yellow and me letters In narrow print. Hence, both marks are~milar only in the use and adoption of the word JOllY/JOW with ApplicantUSing the gellenC word JOllY as against Opposer's JOW, they vary substantiallyas well In the composition and integration of the other main and essentialfeatures, In the general design and their overall appearance. It is observed thatan ordinary consumer's attention would not be drawn on the minute SimilantleSthat were noted but on the differences or dlsSim~anties of both service marksthat are glanr19 and strik ing to the eye.

In the case of Mead Johnson vs. N,V.]. Van Corp, uo., 7 SCRA 768, noless than the Supreme Court ruled that : while there are SimilaritIeS In spelling,appearance and sound between "AlACTA" and "AlASKA" the tredemarks In theirentirety as they appear In their respective labels show glaong and strikingdifferences or diSSImilarities such as ,n size of the contaroers. the colors of thelabels, inasmuch as one uses light blue, pmk, and white, while Van Dorpcontainers uses two color bands, veucwen white and red; furthermore the mark"ALACTA" has only the first letter ceprtenzed and is written m black while themark "AlASKA" has all the letters capitalized written in white except that of thecondensed full cream milk which IS ,n red.

Similarly, the Supreme Court reccqntzec the following as registrabletrademarks for medidn al products: BIOFERIN and BUFFERIN ( Bristol MyersCompany vs. The Director of Patents and United American Pharmaceuticals, Inc.,17 SCRA 128 ); and SULMET and SULMETINE ( American Cyanamid Companyvs Director of Patents, et. at. G.R. No. L·23954, Apn129, 1977);

The adoption of JOW in Opposer's JOLUBEE family of marks does notcreate for or cooter upon Opposer tre right to exdUSively appropriate the wordJOLLY. JOLLY is an ordinary and genelic word and no one has exdUSive useto it. The use of JOLLY may constitute a valid trademark particularly incombination With another word, SUCh as the word DAY in the case at bar. Thecombination of word s and syllables can be registered as traoerrwes for as longas it can individualize the goods of a trader from the goods of its competitors.Bolstering this observance is the pronouncement by the Court in the case ofEtrepa vs. the Director of Patents, Westmont Pharmaceutical, Inc., 16 SCRA 495,

M that while the word by itself anox be used exdusively to k!enbfy one's goodsIt fTliJY properly become a suaject of a trodemarlr by combinatiOn With anotherword or phrase; hence, Efhepa 's ~Pertussin~and Westmont 's MAt ussin·

~Opposer further argues that JOLUBEE family of marks are popular and/O~ JV

weft-known citing orovrsicn for the protection of well-known marks for goods 0;('"

services wh ich are either identical or simi lar as contained in Section 123,1 (el ofthe Intellectual Property Code of the Philippines ( R.A. 8293).

Before evidence showing well-knownness of the mark is assessed andevaluated, there must be shown or established confusing similarity of thetrademarks in question , I nasmuch as this Bureau finds no confusing similaritybetween the subject trademarks in the light of discussions on the evidenceadduced and/or presented to this Bureau, the issue of well-knownness of themark has become unnecessary.

All told, confusion or deception to the purchasing public or theapprehension, if at all, that the publ ic may be misled into believing that there issome connection or association between Opposer's goods and services using itsJOLLIBEE family of marks and Applicant 's JOllYDAY & DEVICE, the likelihoodthat these goods may be mistaken as coming from the same origin, is tar­fetched.

Based on the foregoing and despite allegation of prior use by Opposer inthe Philippines of JOlLiBEE fam ily of marks, this Bureau resolves to grantprotection to Respondent-Applicant's mark JOllYDAY & DEVICE, the two marksnot being confusingly similar.

WHEREFORE, based on the foregoing facts and the evidence, theNotice of Opposition flied by herein Opposer is, as it is hereby, DENI ED,Accordingly, application bearing Serial No. 4-2005-003283 for the mark" JOLLYDA'f & DEVICE ~ filed on 12 April 2005 for use on goods under Class29 is hereby GIVEN DUE COURSE,

l et the Illewrapper of JOllYDAY & DEVICE, subject matter of this casetogether with a copy of this Decision be forwarded to the Bureau of Trademarksfor appropriate action.

SO ORDERED.

15 October 2007, Makati City.

-~~El~L~ITA BELTRAN-ABELARD~or, Bureau of legal Affairs

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