Trademark Applications assigned for examination by the Philippine Intellectual Property Office as of 31 July 2003

   As of 31 July 2003, trademark applications numbered 4-2003-0002468 and below, and which were filed not later than the first (1st) week of March 2003, have been assigned for examination by the IPO.

List of Marks Published for Opposition

   On 20 June 2003, the IPO released the Volume VI, No. 3 issue of the IPO Gazette, which contains the list of marks published for opposition. This list, which our Firm is offering as a service to our clients free of charge, may be viewed at our website at www.cvclaw.com.

   Interested parties have up to thirty (30) days from the date of release of the IPO Gazette to file their opposition to the marks published therein. If no opposition is filed against a given application within the said period or in the event that the opposition filed is denied, the IPO shall then issue the corresponding Certificate of Registration in due course.

   Food, drug and cosmetic products may only be manufactured, sold, distributed and/or imported into the Philippines upon approval by, and registration with, the Philippine Bureau of Food and Drugs (BFAD). The BFAD is the Philippine government agency established to ensure the safe and good quality supply of food, drug and cosmetic products, and to regulate the production, sale, distribution and/or importation thereof.

   No person or entity may manufacture, sell, offer for sale, import, export, distribute or transfer food, drug or cosmetics into the Philippines without first securing a License to Operate (LTO) with the BFAD.

   Thereafter, cosmetics either for sale, distribution, import and/or production require either a Certificate of Product Listing (CPL) or a Certificate of Product Registration (CPR). A CPL is required for cosmetic products that do not have active ingredients in them, while a CPR is required for cosmetic products that retain active ingredients.

   For food and drugs, the applicant only needs to secure a CPR.

   For any questions or assistance regarding BFAD registrations, you may e-mail us at ip.department@cvclaw.com.

   The Philippine Supreme Court denied the application of CFC Corporation (“CFC”) for registration of its trademark “Flavor Master” for instant coffee upon the opposition of Societe Des Produits Nestle, S.A. (“Nestle S.A.”) and its licensee Nestle Philippines, Inc. [Societe Des Produits Nestle, S.A. and Nestle Philippines, Inc. v. Court of Appeals and CFC Corporation, 356 SCRA 207 (2001)] Nestle, S.A. and Nestle Philippines had opposed CFC Corporation’s application on the ground that consumers would be likely to confuse “Flavor Master” with Nestle’s products “Master Roast” and “Master Blend”. All three trademarks refer to coffee and coffee extracts.

   In denying CFC’s application, the Supreme Court applied the dominancy or holistic test on the ground that the products involved were inexpensive and common household items bought off the shelf by “undiscerningly rash” purchasers who would not have the time nor the inclination to carefully distinguish among the trademarks. The Supreme Court noted that a buyer would be easily attracted to the word “Master” than to existing dissimilarities among the labels, and that the word “Master” was a suggestive term that had already acquired a certain connotation brought about by Nestle’s advertising scheme.

   The Philippine Supreme Court upheld the registration of Cluett Peabody Co., Inc. (“Cluett”) for its trademark “Gold Toe” over that of Amigo Manufacturing, Inc. (“Amigo”) for its mark “Gold Top”. [Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc., 354 SCRA 434 (2001)] Both marks pertain to men’s socks, show a representation of a man’s foot wearing a sock, and are printed in identical lettering.

   The Supreme Court found that Cluett had used “Gold Toe” and its device in the Philippines prior to Amigo’s use of its mark “Gold Top”, as indicated by various registrations pertaining to the mark and its device. The Supreme Court said that such registrations constituted prima facie evidence of prior use, which Amigo was not able to overturn. The Supreme Court likewise pointed out that an application not just of the idem sonans rule but also of the dominancy or holistic test clearly showed that colorable imitation existed between the two marks.

   The Supreme Court also pointed out that under the Paris Convention, Cluett, as a domiciliary of the United States, which was a party to said Convention, was entitled to protection against infringement or unfair competition.

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