Berris Vs Abyadang
Berris Vs Abyadang
Berris Vs Abyadang
Supreme Court
Manila
Organic Fertilizer, with address at No. 43 Lower QM, Baguio City, filed with the Intellectual
Property Office (IPO) a trademark application for the mark NS D-10 PLUS for use in
connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. The application,
SECOND DIVISION
under Application Serial No. 4-2004-00450, was given due course and was published in the
BERRIS AGRICULTURAL
CO., INC.,
Present:
- versus -
NORVY ABYADANG,
On August 17, 2005, petitioner Berris Agricultural Co., Inc. (Berris), with business address in
Promulgated:
for Fungicide (Class 5) with active ingredient 80% Mancozeb. The opposition was docketed
Respondent.
Barangay Masiit, Calauan, Laguna, filed with the IPO Bureau of Legal Affairs (IPO-BLA) a
Verified Notice of Opposition[4] against the mark under application allegedly because NS D-10
PLUS is similar and/or confusingly similar to its registered trademark D-10 80 WP, also used
x------------------------------------------------------------------------------------x
After an exchange of pleadings, on April 28, 2006, Director Estrellita Beltran-Abelardo
DECISION
(Director Abelardo) of the IPO-BLA issued Decision No. 2006-24 [5] (BLA decision), the
dispositive portion of which reads
NACHURA, J.:
This petition for review[1] on certiorari under Rule 45 of the Rules of Court seeks the reversal
of the Decision dated April 14, 2008 [2] and the Resolution dated June 18, 2008 [3] of the Court
of Appeals (CA) in CA-G.R. SP No. 99928.
The antecedents
IPL-TRADEMARK
Undeterred, Abyadang filed a petition for review[11] before the CA.
Abyadang filed a motion for reconsideration, and Berris, in turn, filed its opposition to the
In its Decision dated April 14, 2008, the CA reversed the IPPDG decision. It held
motion.
On August 2, 2006, Director Abelardo issued Resolution No. 2006-09(D) [7] (BLA resolution),
denying the motion for reconsideration and disposing as follows
IN VIEW OF THE FOREGOING, the Motion for Reconsideration
filed by the Respondent-Applicant is hereby DENIED FOR LACK OF
MERIT. Consequently, Decision No. 2006-24 dated April 28,
2006 STANDS.
Let the filewrapper of the trademark NS D-10 PLUS subject
matter under consideration be forwarded to the Bureau of Trademarks for
appropriate action in accordance with this Resolution.
SO ORDERED.[8]
Aggrieved, Abyadang filed an appeal on August 22, 2006 with the Office of the Director
General, Intellectual Property Philippines (IPPDG), docketed as Appeal No. 14-06-13.
Berris filed a Motion for Reconsideration, but in its June 18, 2008 Resolution, the CA denied
the motion for lack of merit. Hence, this petition anchored on the following arguments
I.
With the filing of the parties respective memoranda, Director General Adrian S. Cristobal, Jr.
of the IPPDG rendered a decision dated July 20, 2007,[9] ruling as follows
II.
Wherefore, premises considered[,] the appeal is hereby
DENIED. Accordingly, the appealed Decision of the Director is hereby
AFFIRMED.
Let a copy of this Decision as well as the trademark application
and records be furnished and returned to the Director of Bureau of Legal
Affairs for appropriate action. Further, let also the Directors of the Bureau
of Trademarks, the Administrative, Financial and Human Resources
Development Services Bureau, and the library of the Documentation,
Information and Technology Transfer Bureau be furnished a copy of this
Decision for information, guidance, and records purposes.
III.
SO ORDERED.[10]
IPL-TRADEMARK
The basic law on trademark, infringement, and unfair competition is Republic Act
(R.A.) No. 8293
[14]
valid registration with the IPO. A certificate of registration of a mark, once issued,
constitutes prima facie evidence of the validity of the registration, of the registrants ownership
170 thereof. It took effect on January 1, 1998. Prior to its effectivity, the applicable law was
of the mark, and of the registrants exclusive right to use the same in connection with the
[15]
goods or services and those that are related thereto specified in the certificate. [21] R.A. No.
as amended.
8293, however, requires the applicant for registration or the registrant to file a declaration of
Interestingly, R.A. No. 8293 did not expressly repeal in its entirety R.A. No. 166, but
actual use (DAU) of the mark, with evidence to that effect, within three (3) years from the filing
merely provided in Section 239.1 [16] that Acts and parts of Acts inconsistent with it were
of the application for registration; otherwise, the application shall be refused or the mark shall
repealed. In other words, only in the instances where a substantial and irreconcilable conflict
be removed from the register.[22] In other words, the prima facie presumption brought about by
is found between the provisions of R.A. No. 8293 and of R.A. No. 166 would the provisions of
proof of the nullity of the registration or of non-use of the mark, except when excused.
[23]
Moreover, the presumption may likewise be defeated by evidence of prior use by another
R.A. No. 8293 defines a mark as any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
[17]
as such in the application for registration and capable of distinguishing the origin or any other
common characteristic, including the quality of goods or services of different enterprises
which use the sign under the control of the registered owner of the collective mark. [18]
On the other hand, R.A. No. 166 defines a trademark as any distinctive word, name,
the goods bearing the mark are sold to the public in the market. Accordingly, receipts, sales
symbol, emblem, sign, or device, or any combination thereof, adopted and used by a
invoices, and testimonies of witnesses as customers, or orders of buyers, best prove the
manufacturer or merchant on his goods to identify and distinguish them from those
actual use of a mark in trade and commerce during a certain period of time. [25]
In the instant case, both parties have submitted proof to support their claim of
ownership of their respective trademarks.
registration of his trademark, presented the following evidence: (1) its trademark application
the manufacturer or distributor of the goods made available to the purchasing public. Section
dated November 29, 2002[26] with Application No. 4-2002-0010272; (2) its IPO certificate of
122[20] of R.A. No. 8293 provides that the rights in a mark shall be acquired by means of its
registration dated October 25, 2004, [27] with Registration No. 4-2002-010272 and July 8, 2004
IPL-TRADEMARK
as the date of registration; (3) a photocopy of its packaging [28] bearing the mark D-10 80
WP; (4) photocopies of its sales invoices and official receipts;
[29]
dated April 23, 2003,[30] stating that the mark was first used on June 20, 2002, and indicating
WP was registered by Berris on November 12, 2004; and (7) receipts from Sunrise Farm
Supply[39] in La Trinidad, Benguet of the sale of Abyadangs goods referred to as D-10 and D10+.
that, as proof of actual use, copies of official receipts or sales invoices of goods using the
mark were attached as Annex B.
Based on their proffered pieces of evidence, both Berris and Abyadang claim to be
the prior user of their respective marks.
On the other hand, Abyadangs proofs consisted of the following: (1) a photocopy of
the packaging[31] for his marketed fungicide bearing mark NS D-10 PLUS; (2) Abyadangs
Affidavit dated February 14, 2006,[32] stating among others that the mark NS D-10 PLUS was
his own creation derived from: N for Norvy, his name; S for Soledad, his wifes name; D the
Berris was able to establish that it was using its mark D-10 80 WP since June 20,
first letter for December, his birth month; 10 for October, the 10 th month of the year, the month
2002, even before it filed for its registration with the IPO on November 29, 2002, as shown by
of his business name registration; and PLUS to connote superior quality; that when he
its DAU which was under oath and notarized, bearing the stamp of the Bureau of Trademarks
applied for registration, there was nobody applying for a mark similar to NS D-10 PLUS; that
of the IPO on April 25, 2003, [40] and which stated that it had an attachment as Annex B sales
he did not know of the existence of Berris or any of its products; that D-10 could not have
invoices and official receipts of goods bearing the mark. Indeed, the DAU, being a notarized
been associated with Berris because the latter never engaged in any commercial activity to
document, especially when received in due course by the IPO, is evidence of the facts it
sell D-10 80 WP fungicide in the local market; and that he could not have copied Berris mark
stated and has the presumption of regularity, entitled to full faith and credit upon its
because he registered his packaging with the Fertilizer and Pesticide Authority (FPA) ahead
face. Thus, the burden of proof to overcome the presumption of authenticity and due
[33]
execution lies on the party contesting it, and the rebutting evidence should be clear, strong,
10 PLUS is owned and distributed by NS Northern Organic Fertilizer, registered with the FPA
and convincing as to preclude all controversy as to the falsity of the certificate. [41] What is
since May 26, 2003, and had been in the market since July 30, 2003; (4) Certification dated
more, the DAU is buttressed by the Certification dated April 21, 2006 [42] issued by the Bureau
October 11, 2005[34] issued by the FPA, stating that, per monitoring among dealers in Region I
and in the Cordillera Administrative Region registered with its office, the Regional Officer
neither encountered the fungicide with mark D-10 80 WP nor did the FPA provincial officers
from the same area receive any report as to the presence or sale of Berris product; (5)
fraudulent based only on his assumption that Berris could not have legally used the mark in
Certification dated March 14, 2006[35] issued by the FPA, certifying that all pesticides must be
the sale of its goods way back in June 2002 because it registered the product with the FPA
[36]
only on November 12, 2004. As correctly held by the IPPDG in its decision on Abyadangs
1144[37] and Section 1, Article II of FPA Rules and Regulations No. 1, Series of 1977; (6)
appeal, the question of whether or not Berris violated P.D. No. 1144, because it sold its
[38]
product without prior registration with the FPA, is a distinct and separate matter from the
IPL-TRADEMARK
jurisdiction and concern of the IPO. Thus, even a determination of violation by Berris of P.D.
No. 1144 would not controvert the fact that it did submit evidence that it had used the mark D-
identical with a registered mark belonging to a different proprietor with an earlier filing or
priority date, with respect to: (1) the same goods or services; (2) closely related goods or
Furthermore, even the FPA Certification dated October 11, 2005, stating that the
services; or (3) near resemblance of such mark as to likely deceive or cause confusion.
office had neither encountered nor received reports about the sale of the fungicide D-10 80
WP within Region I and the Cordillera Administrative Region, could not negate the fact that
Berris was selling its product using that mark in 2002, especially considering that it first traded
teststhe Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the
its goods in Calauan, Laguna, where its business office is located, as stated in the DAU.
similarity of the prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public. Duplication or
Therefore, Berris, as prior user and prior registrant, is the owner of the mark D-10
imitation is not necessary; neither is it required that the mark sought to be registered
80 WP. As such, Berris has in its favor the rights conferred by Section 147 of R.A. No. 8293,
suggests an effort to imitate. Given more consideration are the aural and visual impressions
which provides
created by the marks on the buyers of goods, giving little weight to factors like prices, quality,
sales outlets, and market segments.[43]
Sec. 147. Rights Conferred.
beginning of the mark, is what is most remembered of it. Although, it appears in Berris
certificate of registration in the same font size as the 80 WP, its dominancy in the D-10 80 WP
mark stands since the difference in the form does not alter its distinctive character.[45]
IPL-TRADEMARK
with the IPO. Therefore, Berris properly opposed and the IPO correctly rejected Abyadangs
Applying the Dominancy Test, it cannot be gainsaid that Abyadangs NS D-10 PLUS
is similar to Berris D-10 80 WP, that confusion or mistake is more likely to occur. Undeniably,
both marks pertain to the same type of goods fungicide with 80% Mancozeb as an active
preserve the goodwill and reputation of the business established on the goods bearing the
ingredient and used for the same group of fruits, crops, vegetables, and ornamental plants,
mark through actual use over a period of time, but also to safeguard the public as consumers
using the same dosage and manner of application. They also belong to the same
against confusion on these goods. [47] On this matter of particular concern, administrative
classification of goods under R.A. No. 8293. Both depictions of D-10, as found in both marks,
agencies, such as the IPO, by reason of their special knowledge and expertise over matters
are similar in size, such that this portion is what catches the eye of the purchaser. Undeniably,
falling under their jurisdiction, are in a better position to pass judgment thereon. Thus, their
findings of fact in that regard are generally accorded great respect, if not finality by the courts,
as long as they are supported by substantial evidence, even if such evidence might not be
This likelihood of confusion and mistake is made more manifest when the Holistic
overwhelming or even preponderant. It is not the task of the appellate court to weigh once
Test is applied, taking into consideration the packaging, for both use the same type of
more the evidence submitted before the administrative body and to substitute its own
material (foil type) and have identical color schemes (red, green, and white);and the marks
judgment for that of the administrative agency in respect to sufficiency of evidence. [48]
are both predominantly red in color, with the same phrase BROAD SPECTRUM FUNGICIDE
written underneath.
Inasmuch as the ownership of the mark D-10 80 WP fittingly belongs to Berris, and
because the same should not have been cancelled by the CA, we consider it proper not to
Considering these striking similarities, predominantly the D-10, the buyers of both
products, mainly farmers, may be misled into thinking that NS D-10 PLUS could be an
belabor anymore the issue of whether cancellation of a registered mark may be done absent
a petition for cancellation.
2008 and Resolution dated June 18, 2008 of the Court of Appeals in CA-G.R. SP No. 99928
component of the trademark, created for the sole purpose of functioning as a trademark, and
are REVERSED and SET ASIDE. Accordingly, the Decision No. 2006-24 dated April 28, 2006
does not give the name, quality, or description of the product for which it is used, nor does it
and the Resolution No. 2006-09(D) dated August 2, 2006 in IPC No. 14-2005-00099, and the
describe the place of origin, such that the degree of exclusiveness given to the mark is
Decision dated July 20, 2007 in Appeal No. 14-06-13 are REINSTATED. Costs against
closely restricted,[46] and considering its challenge by Abyadang with respect to the meaning
respondent.
he has given to it, what remains is the fact that Berris is the owner of the mark D-10 80 WP,
inclusive of its dominant feature D-10, as established by its prior use, and prior registration
SO ORDERED.