Republic of the Philippines

Intellectual Property Office of the Philippines

Bureau of Legal Affairs
No. 28 Upper McKinley Road, McKinley Hill Town Center
Fort Bonifacio, Taguig City, Metro Manila

ZESTO CORPORATION ] IPC No. 14-2019-__________

Opposer, ] Opposition to:
] Application/Serial No.
] : 4/2019/0005429
-versus- ] Date Filed : 1 April 2019
] Applicant : Ptc Foodsphere Asia Corporation
] Trademark :
Ptc Foodsphere Asia Corporation ]
Respondent-Applicant. ]
x ----------------------------------------------- x

VERIFIED NOTICE OF OPPOSITION

The Honorable Director

Bureau of Legal Affairs
Intellectual Property Office of the Philippines

In the matter of the application for registration of the mark (the “opposed mark”) in the
name of Ptc Foodsphere Asia Corporation with Application No. 4/2019/0005429 for goods under
Class 32 namely “FRUIT JUICE,” filed on 1 April 2019 and published for purposes of opposition in
the Electronic Gazette (E-gazette) of the Intellectual Property Office of the Philippines (IPOPHL) on 5
August 2019, herein Opposer ZESTO CORPORATION believes that it will be damaged by the
registration of said mark and thus hereby opposes its trademark application.

I
PARTIES

1. Opposer ZESTO CORPORATION (the “Opposer”) is a company organized and

existing under the laws of the Republic of the Philippines, with office address at 574 EDSA, Caloocan
City, Metro Manila, Philippines. It may be served with orders, notices, documents and other legal
processes of the Honorable Office through undersigned counsel at its address indicated below.

2. Respondent-applicant Ptc Foodsphere Asia Corporation (the “Respondent-applicant”),

according to the E-Gazette publication 1, is a company with address located in Brgy. 13, Gen. Segundo

1
The excerpt from the IPOPHL E-Gazette Publication of Application No. 4/2019/0005429 released on 5 August 2019 is
attached herewith as Exhibit “A”
Avenue, Laog City, Ilocos Norte, Philippines, where it may be served with orders, notices, documents
and other legal processes of the Honorable Office.

II
STATEMENT OF FACTS

3. Opposer ZESTO CORPORATION is a leading, proudly Filipino multinational food

and beverage company founded in 1981. It started out as a privately owned family enterprise by its
Chairman Mr. Alfredo M. Yao, and was initially known as Semexco Marketing Corporation. In 1995,
Semexco adopted the name of its flagship brand “Zesto” and since then, the food and beverage
conglomerate came to emerge as ZESTO CORPORATION.

4. Needless to state, it is Opposer who pioneered the introduction into the Filipino market of
the first ever ready-to-drink juice in flexible foil pouch or “doypack” packaging- the ZESTO Juice
Drink. With overwhelming zeal for innovation, product superiority and consumer driven attitude,
Opposer’s Zesto juice brand quickly became the most preferred and consumed ready-to-drink beverage
in the country. Fittingly, it earned for itself to be known as the No.1 juice drink in the Philippines.

5. To date, ZESTO CORPORATION operates five six (65) local manufacturing plants
located in Marilao, Bulacan, in Novaliches, Quezon City, in Mandaue City, Cebu, in Canlubang,
Laguna, and in Cagayan De Oro City, Misamis Orientalthe National Capital Region, and in Luzon,
Visayas and Mindanao. Two (2) additional integrated production plants were also put up in the
provinces of Pampanga and Davao in order to sustain the increasing consumer demand for Zesto
products. Opposer’s marketing network is laid out in thirteen (13) strategically located regional sales
and distribution centers across the Philippines. Notably, the domestic business operation of Opposer
translated to the creation of more than four thousand (4,000) jobs for the Filipino people.

6. With the vision of becoming the leading food and beverage Filipino company competing
with multinational companies, Opposer effortlessly penetrated the international market with steady
exports and global commercial presence in regional markets across forty-four (44) countries and
territories worldwide. This phenomenal feat for ZESTO CORPORATION felt the need for overseas
expansion in terms of production. For this reason, Opposer had substantially invested in facilities
acquisitions and in setting up cross-border manufacturing plants in China, Indonesia, Thailand, the
Middle East and in the United States of Americaneighboring Asian countries and in as far as North
America. It is thus apt to state that ZESTO CORPORATION’s business operation thrives vastly
across a worldwide production setting.

7. By virtue of its unwavering passion and commitment to bring high quality and value-for-
money products to both Filipino and international consumers, Opposer continued its expansion and
launched into the market a multitude of food and beverage products. Hence, aside from Zesto Juice
Drink, ZESTO CORPORATION multiplied its product line, and now currently offers forty (40) other
equally competitive brands. These brands firmly secured and consolidated ZESTO
CORPORATION’s product distribution nationwide, and gained for the company leading national
market shares reaching to a record high of eighty percent (80%) of the total ready-to-drink market.

2
 8. In 2003, Opposer’s product expansion led it to the acquisition of the Plus! brand. As
implied by the name, Plus! is a 250ml large-size juice drink brand which is an affordable and practical
alternative to the average size 200ml Zesto Juice Drink. Being the first large-size ready-to-drink brand
in the market, and by retaining the same quality and distinct fruity taste and goodness in each Plus!
juice drink, the Plus! brand appealed positively to the consuming public as the most economical and
reasonably priced doypack beverage available in the market. Furthermore, it cannot (cannot???) be
gainsaid that a very significant contribution to the acquired marketability of Plus! products is the fact
that these are also manufactured under the reputable name of ZESTO CORPORATION.

9. Opposer has relentlessly and aggressively taken steps in order to further increase Plus!
product awareness and strengthen brand recognition among Filipino consumers. It bears mentioning
that for the last four (4) years alone, Opposer spent nearly fifty million pesos (PhP 50,000,000.00)2 for
marketing campaigns of the Plus! brand. ZESTO CORPORATION has invested significant amounts of
resources to advertise the brand through various media, including television 3 and radio commercials,
outdoor advertisements, print publications4, promotional events (e.g. trade support, and product
sampling activities) and promotions online, via the internet and different social media platforms.

10. Since its launch up to the present, or for more than fifteen (15) years, the Plus! mark has
been extensively, exclusively and continuously marketed by Opposer. As a consequence, Plus!, in all
its variants and/or flavors, enjoys a prominent position in the national market share 5 and is presently
being sold in (will try to get an estimate #) grocery and retail stores in different parts of the
Philippines, as well as in some parts of neighboring South-East Asian nations namely, Malaysia and
Indonesia. Remarkably, Plus! has elicited a total estimated national sales volume of eleven billion,
and sixty million pesos (PhP 11,060,000,000.00)0 – do we need to mention this?) 6 from the year
2003 to July, 2019. Indubitably, Opposer has earned valuable goodwill on its Plus! brand, making it a
well-known brand, and one of the most popular Filipino juice products and staple local household
trademark in the country.

11. In order to protect its goodwill and reputation, ZESTO CORPORATION diligently
secures the trademark protection of its products in the Philippines and across the globe. Opposer
continues to file and maintain various trademark applications and registrations that are used for its
roster of food and beverage products being marketed and distributed locally and internationally under

its name. One of Opposer’s dutifully maintained registered trademarks is .

12. Opposer applied for the trademark registration of the mark as far back as 17
January 2003, with the following specification of goods under Class 32: “FRUIT DRINKS AND
JUICES”. This trademark application was subsequently granted registration on 17 January 2005 and
issued with Trademark Registration No. 4-2003-000380 by the Bureau of Trademarks of the IPOPHL.

A copy of the Certificate of Trademark Registration with Registration No. 4-2003-000380 for in
Class 32 is attached as Annex “D__” of Exhibit “B__”.
2
See certified copy of Ads, Trade Deals and Support Expenses marked as Annex “A” of Exhibit “B”
3
See Compact Disc recorded with the Video File of Plus television advertisement marked as Annex “B” of Exhibit “B”
4
See printed out advertisement marked as Annex “C” of Exhibit “B”
5

3
 13. Before the ten-year validity of the registration for the trademark lapsed, Opposer
timely filed the application for the renewal of its registration on ____________ with the Bureau of
Trademarks of the IPOPHL. This application for trademark registration renewal was granted on 17
January 2015, giving said trademark the continued validity of its registration for another period of ten
(10) years from 17 January 2015, or until 17 January 2025. The certified true copy of the Renewal

Certificate of Trademark Registration with Registration No. 4-2003-000380 for in Class 32 is

attached as Annex “E__” of Exhibit “B__”.

14. Recently, Opposer was alerted of trade check reports of numerous actual incidents of

trademark confusion involving Opposer’s trademark and Respondent’s . For this reason,
Plus! was immediately enlisted in Opposer’s trademark watch notice for any unauthorized third party
trademark application identical and/or similar to it.

15. It has come to Opposer’s attention the publication of Respondent Ptc Foodsphere Asia

Corporation’s Philippine trademark application for the mark . Said application bears trademark
Application No. 4/2019/005429 with filing date of 1 April 2019 for use on goods FRUIT JUICE under
Class 32 of the Nice Classification. The aforesaid publication was released in the IPOPHL E-gazette
for third party opposition on 5 Augusts 2019.

16. Due to the confusing similarity between the marks Plus! and , both covering
identical goods under the same Class 32, Opposer is constrained to file with this Honorable Office the

instant trademark opposition against Respondent’s with Trademark Application No.

4/2019/005429. Opposer suffered, has suffered and will continue to suffer damages due to Respondent-
applicant’s infringing use of its confusingly similar mark and its impending registration forof the

trademark .

17. A copy of Mr. Jeffrey S. Yao’s (please enlighten us on this) (CEO of ZESTO
CORPORATION) Affidavit, attesting to the facts above, is attached as Exhibit “B”.

III
TIMELINESS OF FILING

18. Pursuant to Section 134 of the Intellectual Property Code of the Philippines (R.A. 8293),
in relation to Rule ____________ 7 Section 2 of the Regulations on Inter Partes Proceedings, any
person who believes that he would be damaged by the registration of a mark may, within thirty (30)
days after from the publication, file with the IPOPHL an opposition to the application. The opposed
mark was published in the IPOPHL E-Gazette on 5 August 2019.

19. Hence, this Verified Notice of Opposition is timely filed.

4
 IV
GROUNDS FOR TRADEMARK OPPOSITION

A. Respondent-applicant’s trademark application should be barred because its

registration is proscribed under Section 123.1(d) of the Intellectual Property
Code of the Philippines, otherwise known as the “IP Code” (R.A. 8203).

a) The opposed mark and Plus! are confusingly similar in appearance,

sound, and commercial and conceptual impression , appearance, and
sound based on the Dominancy Test and idem sonans rule.

b) Confusion is likely since the described goods under Opposer’s Plus!

trademark registration and the opposed trademark application are
identical.

B. The registration of the opposed mark violates Opposer’s exclusive intellectual

property right as against third parties to use or register marks that are similar
to its Plus! trademark registration under Sections 138 and 147.1 of the IP Code.

C. The registration of the opposed mark applied for by Respondent causes and
continues to cause grave and irreparable damage and injury to the public and
to Opposer.

V
ARGUMENTS/DISCUSSION

A. Respondent-Applicant’s trademark application should be barred because its

registration is proscribed under Section 123.1(d) of the Intellectual Property
Code of the Philippines, otherwise known as the “IP Code” (R.A. 8203).

20. The exclusionary provision of the IP Code is clear, excluding unequivocally from
registration marks that are identical to and/or confusingly similar with prior trademark registrations.
Section 123.1(d) states:

Sec. 123. Registrability. - 123.1. A mark CANNOT be registered if it:

xxx
(d) ls identical with a registered mark belonging to a different proprietor or a mark with
an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services; or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause
confusion; (Emphasis supplied)

21. The corollary import of this provision is that the registrability of a mark under the IP
Code is not entirely based on objective grounds, but is correspondingly contingent on pre-existing

5
rights conferred to trademark registrants, like that which is granted to ZESTO CORPORATION by
virtue of its Plus! trademark registration.

22. Since Opposer has earlier filed and registered the Plus! trademark in the years 2003 and
2005, respectively, whereas Respondent filed its Plus50 trademark application more than sixteen (16)
years later from the time Opposer sought and obtained protection of its trademark, Opposer is stronger
in right as against Respondent and the whole world over all marks that are identical to or similar with
Plus!.

23. Thus, in this case, Opposer respectfully submits that the opposed mark squarely falls
under the non-registrable trademark provision of Section 123.1(d). The prior 17 January 2005
trademark registration (can we state the exact registration date?) for the mark Plus! by Opposer
effectively bars the grant of protection of the mark applied for by Respondent. These contending marks
are similar, if not identical. There exists resemblance between them as to the commercial and
conceptual impression, appearance, and sound that would tend to cause deception or confusion of the
consuming public.

24. Opposer’s position is predicated on account of the following sub-arguments:

a. The opposed mark and Plus! are confusingly similar in

commercial and conceptual impression, appearance, and
sound based on the Dominancy Test and idem sonans rule.

25. For comparison are Opposer’s Plus! registered trademark and Respondent’s Plus50:

6
 Opposer’s Trademark Respondent-Applicant’s Mark
Use colored logo of Plus

Visual Similarity Resulting in Confusion

26. The opposed mark’s “Plus” verbal component is basically what makes it confusingly
similar with Opposer’s prior trademark registration. The word “Plus” appears plainly and
conspicuously in Respondent-Applicant’s mark, due to which even when there are other verbal
elements added, its totality and overall impression can be easily identified with Opposer’s trademark
registration.

27. “Plus” is the central and dominant element in Opposer’s trademark.

Opposer’s Trademark Registration

28. The word “Plus” can easily be read, understood and memorized. Semantically, it
positively means desirable, in addition, a bonus, an advantage. An ordinarily intelligent purchaser
would recall principally the verbal element “Plus”, and would rely only secondarily to the mental

picture of the figurative element in identifying the particular goods emanating from herein
Opposer- FRUIT DRINKS AND JUICES.

29. The verbal element “Plus” in Opposer’s trademark has a stronger visual and mental
consumer recollection as opposed to its figurative element. Conclusively then, as between the verbal

element “Plus!” and the figurative element , it is the former which is the main, prevalent or
dominant feature of Opposer’s trademark registration.

30. On the other hand, parallel to the main component of Opposer’s trademark registration,
“Plus50” is the main, prevalent or dominant feature of the opposed mark.
7
 Respondent-Applicants Mark

31. We note that “Golden Coolers” is the house mark/brand of Respondent-aApplicant. The
addition thereof in the opposed mark, however, does not operate to alleviate the finding of likelihood of
confusion because the words GOLDEN and COOLERS are respectively descriptive and generic of the
goods covered. For this reason, “Golden” and “Coolers” are merely negligible indications which draw
less attention to consumer’s visual perception. Hence, the house mark “Golden Coolers” is merely a
non-dominant feature that should be appropriately discounted. It is but a weak designation which does
not diffuse the dominating impression created by “Plus50”.

32. Whereas, “Plus50” forming part of the opposed mark is written largely, noticeably and
acclamatory. It is the dominant verbal component of the mark applied for that fully captures consumer
attention and recall because of its arbitrary nature. Accordingly, it is in “Plus50” where the overall
commercial impression of the opposed mark is concentrated to a great extent. Undeniably, “Plus50” is
the dominant feature of the opposed mark.

33. Moreover, it is well settled that in the assessment of trademarks that the addition of a
house mark does not avoid confusingly similarity between contending marks when the dominant
elements in both are by all means alike. The pPersuasive verdict7 of the US Federal Court, affirming
the ruling of the United States Patent and Trademark Office (USPTO) has this to say:

“Likelihood of confusion is not necessarily avoided between otherwise confusingly

similar marks merely by adding or deleting a house mark, other distinctive matter, or a
term that is descriptive or suggestive of the named goods or services; if the dominant
portion of both marks is the same, then the marks may be confusingly similar
notwithstanding peripheral differences.” (Emphasis supplied)

34. This entails that for purposes of applying the dominancy test, the dominant element
“Plus!” in Opposer’s trademark registration should be evaluated for similarity as against “Plus50” of
the opposed trademark application.

35. While jurisprudence has developed two tests in determining likelihood of confusion—the
Dominancy Test and the Holistic or Totality Test—the Supreme Court has applied the Dominancy Test
in recent cases with similar factual milieus as in this case. In Dermaline, Inc. v. Myra Pharmaceuticals,
Inc.,8 the Court ruled that the Test of Dominancy is “applied when the trademark sought to be
registered contains the main, essential and dominant features of the earlier registered trademark, and
confusion or deception is likely to result.”

7
See. e.g., In re Detroit Athletic Co., ___ F3d ___, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018
8
Ibid.
8
 36. The Test of Dominancy focuses on the similarity of the main, prevalent or essential
features of the competing trademarks that might cause confusion. Applying this test, infringement takes
place when the competing trademark contains the essential features of another. Imitation or an effort to
imitate is unnecessary; neither is it required that the mark sought to be registered suggests an effort to
imitate.9

37. In Philippine Nut Industry, Inc. vs. Standard Brands Inc., 10 the Supreme Court
emphasized this principle, stating:

In cases involving infringement of trademark brought before the Court, it has been
consistently held that there is infringement of trademark when the use of the mark
involved would be likely to cause confusion or mistake in the mind of the public or to
deceive purchasers as to the origin or source of the commodity; that whether or not a
trademark causes confusion and is likely to deceive the public is a question of the
fact which is to be resolved by applying the "test of dominancy", meaning, if the
competing trademark contains the main or essential or dominant features of
another by reason of which confusion and deception are likely to result, then
infringement takes place; that duplication or imitation is not necessary, a similarity in
the dominant features of the trademarks would be sufficient. (Emphasis supplied)

38. In the more recent case of McDonald's Corporation, et al. vs. L.C. Big Mak Burger,
11
Inc., the Supreme Court again emphasized that the criterion for determining confusing similarity
between marks is the dominant features of registered mark, disregarding minor differences:

This Court, however, has relied on the dominancy test rather than the holistic test.
The dominancy test considers the dominant features in the competing marks in
determining whether they are confusingly similar. Under the dominancy test, courts
give greater weight to the similarity of the appearance of the product arising from the
adoption of the dominant features of the registered mark, disregarding minor differences.
Courts will consider more the aural and visual impressions created by the marks in
the public mind, giving little weight to factors like price, quality, sales outlets and
market segments.

Thus, in the 1954 case of Co Tiong Sa v. Director of Patents12, the Court ruled:

xxx It has been consistently held that the question of infringement of a trademark is
to be determined by the test of dominancy. Similarity in size, form and color, while
relevant, is not conclusive. If the competing trademark contains the main or essential or
dominant features of another, and confusion and deception is likely to result,
infringement takes place. Duplication or imitation is not necessary; nor is it necessary that
the infringing label should suggest an effort to imitate. (G. Heilman Brewing Co. vs.
Independent Brewing Co., 190 F., 489,495, citing Eagle White Lead Co. vs Pflugh FCC]
180 Feb. 579).The question at issue in cases of infringement of trademarks is whether the

9
Ibid.
10
G.R. No. L-23035, 31 July 1975.
11
Supra.
12
G.R. No. L-5378, 24 May 1954
9
 use of the marks involved would be likely to cause confusion or mistakes in the mind of
the public or deceive purchasers. (Auburn Rubber Corporation vs. Hanover Rubber Co.,
107 F. 2d 588;xxx) (Emphasis supplied)

xxx

The test of dominancy is now explicitly incorporated into law in Section 155.1 of the
Intellectual Property Code which defines infringement as the "colourable imitation
of a registered mark xxx or a dominant feature thereof." (Emphasis supplied)

39. Notably, consistent with the application of the dominancy test in assessing the likelihood
of confusion between marks, the Honorable Director General had decided with finality an Appeal, 13
rendering that it is of no moment that there are other elements forming the below contending marks:

Here, it is evident that one is a composite mark and the other is a wordmark. However, the presence of
other elements in both of these marks is not consequential to allow their coexistence. The Honorable
Director General adjudged that the common term SANYO is sufficient to infer confusing similarity
between them. As a consequence, the mark applied for is denied of registration.

40. In the same vein, the Bureau of Legal Affairs, in the case of San Miguel PureFoods Co.
Inc. v. King Sue Ham & Sausages Co., Inc., finds colorable imitation against the MALINAMHAM
trademark application. The contending marks in said case appears as follows:

Opposer’s trademark Respondent-Applicant’s Mark

This Honorable Office ratiocinated in this wise:

“It is of no moment that other elements are contained in the Opposer’s label, such as
“PUREFOODS” or “STAR”. Similarly, the label of Respondent-Applicant
indicates, “KING SUE”. These words are brand names that appear in the labels,
yet, clearly, the Respondent-Applicant’s mark, is confusingly similar to the
dominant element of Opposer’s mark. The Supreme Court in American Wire & Cable
Company v. Director of Patents held:

In short, to constitute an infringement of an existing trademark patent and

warrant a denial of an application for registration, the law does not require
that the competing trademarks must be so identical as to produce actual
error or mistake; it would be sufficient, for purposes of the law, that the

13
Sanyo Seiki Stainless Steel Corp. vl LENY B. RAZ, Appeal No. 4-2016-0001, March 14, 2019.
10
 similarity between the two labels is such that there is a possibility or
likelihood of the purchaser of the older brand mistaking the newer brand
for it.

xxx (Emphasis supplied)

41. To reiterate, the Test of Dominancy focuses on the similarity of the main, prevalent or
essential features of the competing trademarks that might cause confusion. By applying this
authoritative jurisprudential standard, we find it absolutely unnecessary to delve lengthily on how the
dominant feature “Plus!” of Opposer’s registered trademark is identical or similar with the dominant
feature in the opposed mark “Plus50”. Obviously, these respective dominant features are confusingly
the same, alike, and similar with each other, thus warrants the denial of the opposed trademark
application of the Respondent-Applicant.

Phonetic Similarity Resulting in Confusion

42. The tendency of aural confusion between the marks in comparison should be entirely
affirmed as Opposer’s prior trademark registration, which is composed solely of the verbal element
“Plus” and a device, is expressed orally in absolute similarity with Respondent-aApplicant’s dominant
feature which is “Plus50”.

43. It is common practice in the marketplace that products are called in its abbreviated form.
Hence, a merchant would not mention “Golden Coolers Plus50” when requesting for the product of Ptc
Foodsphere Asia Corporation. Most likely, that merchant would only request simply for “Plus”. Thus,
when a person hears the utterance of the word “Plus” in a marketplace or in a radio advertisement, he
has every opportunity to mistake ZESTO CORPORATION’s “Plus!” for that of the opposed mark
“Plus50”, and vice versa. Therefore, we cannot doubt the possibility of aural confusion because the
contending marks share the very same dominant phonetic and aural articulation.

44. With the above dominant phonetic similarity between the two trademarks, the difference
which consists of other elements becomes negligible. Under the jurisprudential standard of aural
similarity in trademarks - the idem sonans rule, there is infringement when the sound of another mark is
almost the same as that of the registered trademark. Applying this principle, the Supreme Court in the
recent case of McDonalds Corporation v. L.C. Big Mak Burger, Inc., citing Marvex Commercial Co.,
Inc. v. Petra Hawpia & Co., et al. , held:

“The following random list of confusingly similar sounds in the matter of trademarks,
culled from Nims, Unfair Competition and Trade Marks, 1947, Vol. 1, will reinforce
our view that SALONPAS and LIONPAS are confusingly similar in sound: Gold
Dust and Gold Drop; Jantzen and Jass-Sea; Silver Flash and Supper Flash;
Cascarete and Celborite; Celluloid and Cellonite; Chartreuse and Charseurs;
Cutex and Cuticlean; Hebe and Meje; Kotex and Femetex; Zuso and Hoo Hoo.
Leon Amdur, in his book Trade-Mark Law and Practice, pp. 419-421, cites, as coming
within the purview of the idem sonans rule, Yusea and U-C-A, Steinway Pianos and
Steinberg Pianos, and Seven-Up and Lemon-Up. In Co Tiong vs. Director of Patents,
this Court unequivocally said that Celdura and Cordura are confusingly similar in
11
 sound; this Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the name
Lusolin is an infringement of the trademark Sapolin, as the sound of the two
names is almost the same.” (Emphasis supplied)

45. Therefore, Plus! and Plus50 are obviously idem sonans, or confusingly alike, and similar
in sound, which further warrants the denial of the opposed trademark application by the Respondent-
aApplicant.

Confusing Similarity in Commercial Impression

46. Viewing from the perspective of an ordinarily intelligent consumer, there is identifiable
and recognizable conceptual impact evoked by the imitated use of the concept “Plus” of Opposer’s
trademark by Respondent-aApplicant. The recollection of the average purchaser favors the general and
overall commercial impression created by the original “Plus!” brand, that undeservingly spills over
Respondent-aApplicant’s “Plus50”.

47. It cannot be doubted that the trademark “Plus!” by Opposer is a well-known mark in the
Philippines because of its long, exclusive and continued use in the market. It should be stressed that
well-known marks should be afforded a broader scope of legal protection because they are more likely
to be remembered and associated in the public mind than a weaker mark. Hence, while there may be
additional elements in the opposed mark, namely the house mark “Golden Coolers” and the numeric
element “50”, their presence does not negate the fact that conceptually, “Plus”, as part of the opposed
mark, highlights the long, distinct and original commercial impression evoked byon Opposer’s “Plus!”
trademark registration.

48. For this reason, the apparent idea likely to be generated in the public mind by the fact that
Opposer’s mark “Plus” is contained in Respondent-Applicant’s trademark application is that “Plus50”
is a successive mark or a series mark by Opposer, or a variant of the Plus! brand. The well-known
status of the Plus! brand therefore, plays a significant factor in analyzing the confusing similarity
between the marks in issue, and the finding of conceptual confusing similarity in this case is
unmistakably proven and confirmed by actual brand confusion in the market.

49. Replicated below is an excerpt in the Affidavit of Ms. Monina Dizon, the
_____________ South Luzon Area Sales Manager of ZESTO CORPORATION, which
enumeratesshows the verbatim responses of consumers during a trade check conducted by Opposer
between the period from 3-8 August of 2019:

“Sample from Tess & Raffy store from Binan when asked why he is not carrying
Plus King anymore, he said that “Sa inyo rin naman yung plus 50 kaya ito na ang
kinukuha ko and mas mura, maintain na lang naming ang Big 250’.”

“from Neptune Store “paorder naman ako ng bago nyong product, yung strawless
na plus 50”.

“from Nida Public Market stall from Binan “bakit pa ako oorder ng plus eh mas
mura yung plus 50 na product nyo at parehas lang din naman ng laki”.
12
 “Teacher Ann from Cardines Elementary School, Atimonan “mam maganda po
yung bago nyong produkto na walang straw, yung plus 50 mas mura pa po”

The Affidavit of Ms. Dizon is attached herewith and referred to herein as Exhibit “C”.

50. With foregoing consumer reactions, we cannot help but conclude that Respondent-
applicant’s act to make use of the system of trademark registration in appropriating for itself the

confusingly similar mark is an obvious attempt to imitate, and ride on the hard-earned and
established goodwill and reputation of Opposer on its “Plus!” trademark. Respondent-aApplicant’s
trademark application and use of its “Plus50” mark for the same class of goods is brazenly meant to
confuse or deceive the consumers and/or the public as to the source or origin of the product and to give
the impression that it is the same product of Opposer. This unscrupulous practice should not be
countenanced and the refusal of the subject trademark application is called for.

b. Confusion is likely since the described goods under

Opposer’s Plus! trademark registration and the opposed
trademark application are identical.

51. Furthermore, in evaluating the goods covered by the contending marks, we note that
Plus! is an arbitrary mark coined to identify Opposer’s goods covered under Classes 32. 14 Opposer’s
goods, as described constitutes: Class 32 FRUIT DRINKS AND JUICES. On the other hand,

Respondent-applicant’s infringing mark is applied for goods likewise under the same Class
32, and these goods as described in the objected application are identical with those covered by
Opposer’s well-known Plus! trademark; Respondent-applicant’s goods being FRUIT JUICES.

52. To recall, proscription against confusing similarity under Section 123.1(d) of R.A. 8293
applies to identical and closely related goods. In the present case, the goods covered by Plus! and the
opposed mark are exactly the same. Clearly, the goods covered by Respondent-Applicant’s mark and
those of Opposer’s registered trademark are identical such that they fall under the same Nice
Classification in Class 32. This fact alone relegates these goods covered to the same channels of
business and trade, bringing forth the likelihood of confusion and deception in the minds of the buying
public.

53. As an original intellectual creation by Opposer’s predecessor-in-interest, which has

been aggressively and continuously used by Opposer through the years, (fyi, the brand was
acquired from Columbus Foods Inc in the early 90s, therefore the brand is not our original
intellectual creation of the opposer), it would not be difficult to identify the products as originating
from ZESTO CORPORATION and differentiate these goods from those which are manufactured or
supplied by other manufacturing entities or groups within the same product line.

54. The resultant complication now arises when Respondent-aApplicant uses an identical
Plus50 mark which is directly identifiable to Opposer’s Plus! because of the latter’s prior use and
acquired fame, recognition, and reputation in the market. It is therefore completely egregious and
14
See Annex “ “ of Exhibit “B”
13
disingenuous for Respondent-aApplicant to apply for registration of an identical mark intended for use
on the very same goods that are already covered by a mark that has already earned a valuable
reputation and consumer recognition.

55. In this light, Respondent-aApplicant should be precluded from registering its infringing

mark because the co-existence of both marks in the market will result in dilution of the well-
known “Plus!” mark, and confusion and deception on the part of the purchasing public.

56. The Supreme Court has expounded on two aspects of confusion to which the buying
public is exposed should Respondent-aApplicant’s mark be registered and used on the goods which it
applies for registration. In the case of Sterling Products International, Inc. vs. Farbenfabriken Bayer
Aktiengesellschaft15, the Supreme Court held:

Callmann notes two types of confusion. The first is the confusion of goods "in which
event the ordinarily prudent purchaser would be induced to purchase one product
in the belief that he was purchasing the other." In which case, "defendant's goods are
then bought as the plaintiff's, and the poorer quality of the former reflects adversely on
the plaintiff's reputation." The other is the confusion of business: "Here though the
goods of the parties are different, the defendant's products are such might
reasonably assumed to originate with the plaintiff, and the public would then be
deceived either into that belief or into the belief that there is some connection
between the plaintiff and defendant which, in fact does not exist." (emphasis
supplied)

57. Despondently, both types of above-mentioned confusion are now happening in view of
the herewith submitted Affidavit.16

58. Considering the long, prior and uninterrupted existence and use in the market of the
“Plus!” mark for Opposer’s products, purchasers are mistaken in buying Respondent-Applicant’s
product for that of ZESTO CORPORATION’s goods. Verily, the subsequent introduction into the
market of the goods under the opposed mark causes and will continue to cause deception and mistake
on the purchasers, because both of Opposer’s and Respondent-Applicant’s goods flow from the same
channels of trade. More so, the target consumers for both the goods covered by the contending marks
are alike.

59. At the same time, confusion of business or confusion as to the source of goods is now a
reality. As the distinctiveness of the Opposer’s “Plus!” mark is diminished, the public has been
deceived into thinking that Respondent-Applicant’s goods come from, or are associated with or
licensed by Opposer.

B. The registration of the opposed mark violates Opposer’s exclusive intellectual

property right as against third parties to use or register marks that are similar
to its Plus! trademark registration under Sections 138 and 147.1 of the IP Code.

15
G.R. No. L-19906, 30 April 1969.
16

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 60. While Section 123.1(d) of the IP Code operates to impose proscription of registration
against identical and confusingly similar marks in favor of trademark registration holders, Sections 138
and 147.1 of the same law recognize the superior rights of trademark owners by virtue of trademark
registration.

61. Having established that use of Respondent-Applicant’s mark will result in a

likelihood of confusion, Opposer, as the registered trademark owner of Plus!, has the exclusive and
prevailing right under Section 147.1 to prevent Respondent-Applicant from registering and using
“Plus50” without its consent. As pronounced in UFC Philippines, Inc. v. Barrio Fiesta Manufacturing
Corporation17:

“Verily, when one applies for the registration of a trademark or label which is
almost the same or that very closely resembles one already used and registered by
another, the application should be rejected and dismissed outright, even without
any opposition on the part of the owner and user of a previously registered label or
trademark. This is intended not only to avoid confusion on the part of the public, but
also to protect an already used and registered trademark and an established goodwill.”
(Emphasis supplied)

62. Considering Respondent-Applicant’s (shouldn’t it be Opposer’s?) original conception

of the distinctive trademark Plus! for its goods, its significant effort in applying and securing trademark
registrations for the same in the Philippines and abroad, while dutifully maintaining the registrations
thereof, not to mention its unparalleled investment in advertising and promoting the mark, Opposer as
proprietor, registered owner and prior user of the trademark Plus! has every justification under
Philippine law to exclude any third party without its consent, from using, much less registering a
similar mark in order to protect itself from undue and unfair advantage. Opposer’s diligent effort in
protecting and enriching its goodwill and reputation should not be put in vain.

63. Nevertheless, the law is clear. Opposer’s Plus! trademark registration alone is sufficient
to confer unto Opposer superior rights to bar and object any application for identical and similar marks
that would conflict with Opposer’s established goodwill and reputation based on its Plus! trademark
registration.

64. Under Section 138 of the R.A. 8293, a certificate of registration is a prima facie evidence
of the validity of the registration, the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the same in connection with the goods or services and those that are related
thereto specified in the certificate.

65. In addition, as provided in Sec. 147.1 of the R.A. 8293, the ownership of a registered
trademark confers to the registered owner exclusive rights to prevent all third parties not having the
former's consent from using in the course of trade, identical or similar signs or containers for goods or
services which are identical or similar to those in respect of which the trademark is registered where
such use would result in a likelihood of confusion. Clearly, Opposer is entitled under the law to the
17

15
ownership, use and registration of the trademark Plus! in relation to the goods under Class 32 to which
it has been registered, to the exclusion of all others.

66. Respondent-Applicant's attempt to register its mark covering goods under the
same Class 32, which no doubt would likely cause confusion to the buying public, is the exact situation
which Sec.147.1 of R.A. 8293 protects Opposer from. Opposer’s superior and exclusive trademark
rights on its Plus! trademark is safeguarded under the law from unwarranted incursion by Respondent-
Applicant of Opposer’s intellectual property rights. – can we verify if we are fully covered by the
initial trademark registration of the brand?

C. The registration of the opposed mark applied for by Respondent-Applicant

will cause grave and irreparable damage and injury to the public and to Opposer.

67. Section 134 of R.A. 8293 provides,

Sec. 134. Opposition. - Any person who believes that he would be damaged by the
registration of a mark may, …, file with the Office an opposition to the application.
(emphasis supplied)

68. The law states that if a person has a reasonable belief of sustaining damage by reason of
the registration of a trademark, then he has the right to oppose. He has a valid claim to challenge an
application. In other words, an opposer’s cause of action arises out of the necessity to avert an actual or
anticipated damage incurred or about to be incurred against his interest.

69. In this regard, it is worthy to note the peculiarity of the circumstances obtaining in this
case- the goods involved are beverages and thus are prone to health and sanitary issues. Consumer
preference which is influenced by confusion or deception in the market would inevitably and
negatively affect the established goodwill and reputation of a food and beverage manufacturer. Thus,
should the required health and sanitary standards are not complied with, a mistaken purchase by a
consumer spells the fall of the business of a manufacturer and at the same time compromises the buying
public’s safety and protection.

70. The reality is that the expensiveness of raw materials and high production costs
discourage the manufacture of food and beverage products that meet the exacting sanitary
requirements. Unfortunately, the prevalence of products that are non-compliant with rigid health and
sanitary standards can surely victimize an unwary purchaser since most of these products in the market
fraudulently make claims of compliance.

71. In this light, the selling point of Plus! juice drinks is the long, established reputation in its
packaging, taste and goodness in each and every doypacked juice product. The guarantee of quality
behind each product is borne by its being produced by ZESTO CORPORATION- the leading Filipino
beverage manufacturer. The Honorable Office, therefore, should not allow Respondent-Applicant’s
registration and/or use of an identical and infringing Plus50 mark, especially when it could be applied
on inferior and substandard goods that are manufactured without observing essential health and sanitary
standards. The approval of Respondent-Applicant’s registration will not only tarnish and degrade the
distinctive quality of Opposer’s trademark, but most importantly expose the public to high risk of peril.
16
 72. Moreover, Opposer believes that its interest as the true and lawful owner of a well-
known mark has been and/or will be unduly prejudiced by the trademark registration of Respondent-
Applicant’s identical or confusingly similar mark to be applied on goods under Class 32. The Plus!
mark is Opposer’s exclusive intellectual property. Opposer has neither authorized nor consented
Respondent-Applicant to use and/or register a confusingly similar mark. For this reason, ZESTO
CORPORATION seeks to prevent Respondent-Applicant from securing a grant of prima facie

ownership over the mark through registration.

73. As overwhelmingly supported by evidence in this Opposition, ZESTO CORPORATION,

by maintaining the exceptional quality of its goods, has built for itself a solid foundation for its image,
business reputation, and goodwill. Section 168.1 of the IP Code affirms that goodwill shall be protected
in the same manner as other property rights. On the other hand, Respondent-Applicant’s act of filing a
trademark application is a cunning attempt to make use of the legal processes of trademark registration
for usurping the goodwill established by the Opposer. Thus, it cannot be gainsaid that the grant of
Respondent-Applicant's application would result in the taking of undue advantage of the established
goodwill and reputation of the Opposer on its trademark. It will also result in the gradual diminution or
whittling away of the value of the Plus! brand, constituting an invasion of Opposer's intellectual
property right and goodwill in its trademark.

74. The grant of registration of the Respondent-Applicant’s mark will not only transgress on
the rights and interest of herein Opposer over its well-known Plus! mark of long standing. It will tend
to mislead the general public into believing that Respondent-Applicant’s products are of the same
quality as Opposer’s product or they originated from the latter or that they are being manufactured
under license from the Opposer. All to the damage and injury to both the interests of Opposer and the
public at large and on the other hand, to the unlawful and undeserved gain of Respondent-Applicant.

75. Accordingly, the Supreme Court has reminded in the case of Ecole De Cuisine Manuelle
(Cordon Bleu of the Philippines), Inc., vs. Renaud Cointreau & Cie and Le Cordon Bleu Int’l., B.V. 18
the function of a trademark and that is to give due recognition to the originality and efforts of the true
and lawful owners of trademarks, to wit:

As a final note, "the function of a trademark is to point out distinctly the

origin or ownership of the goods (or services) to which it is affixed; to secure to him,
who has been instrumental in bringing into the market a superior article of
merchandise, the fruit of his industry and skill; to assure the public that they are
procuring the genuine article; to prevent fraud and imposition; and to protect the
manufacturer against substitution and sale of an inferior and different article as his
product." As such, courts will protect trade names or marks, although not registered or
properly selected as trademarks, on the broad ground of enforcing justice and protecting
one in the fruits of his toil. (emphasis supplied)

77. Hence, the guiding principle of registration of trademark follows the plight of the true
and lawful owner of a mark-- the mark’s first adopter and first user. In the present case, the true and

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G.R. No. 185830, June 5, 2013
17
lawful owner of the Plus! mark is none other than Opposer herein. Only to Opposer, therefore, belongs
the right to trademark registration of identical or similar marks for its Plus! brand.

PRAYER

WHEREFORE, the foregoing premises considered, Opposer, ZESTO CORPORATION,

respectfully prays before the Honorable Office that the application for registration of the mark

with Application No. 4/2019/0005429 for goods under Class 32 namely “FRUIT JUICE,”
filed on 1 April 2019 in the name of Respondent-Applicant Ptc Foodsphere Asia Corporation be
DENIED.

Opposer prays for such other reliefs as may be deemed just and equitable under the premises.

Quezon City for Taguig City, __ August 2019.

PADLAN GETIGAN and PARTNERS

Counsel for Petitioner
Unit 1212, 12/F Corporate 145 Bldg.
145 Mother Ignacia St. South Triangle
Quezon City 1103, Metro Manila Philippines

By:

KATHLEEN L. VALERIO
Roll of Attorneys No. 67819
PTR No. 0088999/04-04-2019/Makati City
IBP No. 079693/04-05-2019/Makati City
MCLE Comp. No. V-0026539
Email: ip@peglegal.com

Copy furnished:

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