September 12, 2024

Alo, LLC, the entity behind the leading lifestyle brand ALO, and premium athletic apparel retailer ALO YOGA, recently secured a win in an opposition against the application for trademark registration of the confusingly similar mark ALODERMA. The Bureau of Legal Affairs applied the Dominancy Test, and found that ALODERMA contains the entirety of the client’s highly distinctive ALO mark. ALO is a fanciful mark coined from “air, land, and ocean.”

Alo, LLC was founded in 2007 and started as a company with a mission to bring yoga to the world, and inspire wellness and community through its activewear line. Since then, Alo, LLC has evolved to become a “360-degree lifestyle brand” expanding beyond athletic wear, and into skin care, cosmetics, and fragrance.

The BLA further held that the addition of the term “DERMA” to ALODERMA does little to distinguish the Respondent’s mark from the Opposer’s ALO mark since DERMA when used as a suffix such as in the Respondent’s mark means “skin or skin ailment of a (specified type).” DERMA is merely descriptive of the Respondent’s cosmetic goods in Class 3. Its presence in ALODERMA is negligible, and does not negate the likelihood of confusion with the Opposer’s mark.

The BLA also found the goods covered by the contending marks to be similar or related.  The resemblance between the parties’ marks and the prospective use of the Respondent’s mark for the same goods satisfy the conditions for applying the proscription on registration under the IP Code, as enunciated by the Supreme Court in Mang Inasal Philippines, Inc. vs. IFP Manufacturing Corp. (G.R. No. 221717, June 19, 2017).

Allowing the registration of ALODERMA will also violate Sec. 165.2 of the IP Code, as well as Article 8 of the Paris Convention, which provide for the protection of trade names and business names. However, the BLA, did not address or mention the aspect of trade name protection, despite it being a key issue raised by Alo, LLC in the opposition.

September 11, 2024

Worldwide, GoPro, Inc. is known for its series of adventure and action cameras, lauding image and video quality, versatility, and durability of its products. GoPro has sold millions and millions of its cameras around the world. In 2019, GoPro launched MAX which features a 360-degree camera that allows the user to shoot creative and immersive shots using two separate lenses.

In an opposition filed against a third party’s attempt to register ZOMAX, the Bureau of Legal Affairs held that GoPro’s MAX trademark is a word mark with no other elements standing more prominent, resulting in the words themselves being protected in relation to its goods specified.

The BLA ruled that Respondent’s stylization and additional letters in ZOMAX do not change the fact that its mark contains the entirety of GoPro’s registered MAX; that the stylization of a mark does not change its aural impression.

The goods involved under ZOMAX were also found to be related to that of MAX. ZOMAX was sought to be registered in connection to Class 9 goods involving mobile phone accessories, web cameras, and web cameras embedded with microphones, among others. The BLA declared that the goods were related to GoPro’s MAX, as they involve accessories, hardware, and software geared towards the use, storage, transmission, and recordation of data.

On 15 March 2022, lawyers of Federis & Associates accompanied agents of the National Bureau of Investigation’s Intellectual Property Rights Division in searching and raiding the premises of HYX Enterprises, suspected seller of counterfeit SHIMANO products located in Guiguinto, Bulacan.

The raid yielded thousands of of SHIMANO-marked bike parts, accessories and fittings, which were later confirmed to be counterfeit by product experts from SHIMANO’s authorized local distributor, Neo Zigma Cycle Corporation.

The counterfeit products included the following:

1. FIVE THOUSAND SEVEN HUNDRED (5,700) pieces of (Altus) Shifter Lever;
2. THREE THOUSAND EIGHT HUNDRED (3,800) pieces of Rear Derailer;
3. FIFTY PIECES OF (50) pieces of Front Derailer;
4. NINE HUNDRED TWENTY-ONE (921) pieces of Chain;
5. THIRTY-FIVE (35) Shopee Pouches containing assorted bike parts and accessories.

A complaint for trademark infringement will soon be filed against Mark Mendoza, owner/proprietor of HYX Enterprises.

Following President Duterte’s declaration of state of public health emergency and the imposition of an “enhanced community quarantine” for Metro Manila effective March 15, 2020 to April 14, 2020, the Philippine Intellectual Property Office (IPOPHIL) announced changes in the way it will operate during the quarantine period. These are:

• All new applications for patents, utility models, industrial designs and trademarks will only be accepted if filed online.
• Due dates falling within the quarantine period for annuities and maintenance fees, responses to office actions, declarations of use, renewals, motions for extensions, notices of opposition, answers to oppositions, cancellations, intellectual property violations, position papers, appeals, comments, and all other types of written submissions for the IPOPHIL are automatically extended for 30 calendar days counted from the due dates.
• All hearings, including mediations, preliminary conferences, and trials, that were scheduled during the quarantine period are suspended.
• Access to mailboxes at the IPOPHIL will be allowed during the quarantine period.
• All previously announced events at the IPOPHIL during the quarantine period will be rescheduled.

The Supreme Court has also suspended all hearings in all courts during the quarantine period. All written submissions that are due during this period are given an automatic extension of 30 days counted from April 15, 2020.

Based on the latest government announcement, everyone is mandated to stay home and all private businesses are mandated to close down operations until 12:00 A.M. on April 13, 2020.

Our firm will continue to deliver services to all our clients during the quarantine period.We have a system in place that would allow all the members of our firm to work from home. Once we are permitted to return to our office we will continue to implement our internal rules of conduct intended to keep our members and their families safe. We are happy to inform our friends and colleagues around the world that all of our members and their families are safe and doing well at this time.

Thank you for your support and understanding. We also hope for your health and safety in your respective countries during this challenging time.

We will continue to monitor the local situation and update you as necessary.  Please email us at [email protected]if you have any questions.

May 30, 2017

The Philippine Supreme Court has handed down to giant Dutch company, Koninklijke Philips Electronics N.V.  (KPENV), a win in the latter’s long battle to keep a local businessman from getting a registration for the trademark PHILITES and P Device.

PHILIPS has been a leading brand in lighting products and has had presence in the Philippines for many years.  In 2006, a business establishment operating as Philites Electronic and Lighting Products (PELP) applied to register PHILITES & P Device in connection with fluorescent bulbs and related products under Class 11.  KPENV opposed claiming that PHILITES is barred from registration under Section 123.1(d) of the IP Code because it is confusingly similar to PHILIPS, a trademark that as been previously registered and used in the Philippines. KPENV claimed that PHILIPS has been officially declared as a well-known trademark and is therefore protected against the copying of any parts or elements in the mark.

KPENV has separately filed a criminal complaint for trademark infringement and unfair competition against the same applicant.

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Please be advised that a directive has been issued by our Intellectual Property Office increasing the official fees by 20%. The increased fees will take effect on January 1, 2017. Below is a table showing the current rates of official fees, alongside with the corresponding increased fees for 2017.

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November 10, 2016

The essence of prior art as a bar to the registrability of a design lies not only in its similarity with the disputed design but also in the fact that it enjoys precedence. As the adage goes, “first in time, first in right”. The case of KPI Manufacturing, Inc. doing business under the name and style Key Largo Car Accessories Center v. Alwin T. Go (IPC Case No. 13-2015-00523) is instructive of the value of establishing priority in one’s bid to cancel a patented design on the ground of lack of novelty.

The controversy stemmed from a petition for cancellation filed by KPI Manufacturing, Inc. (“KPI”) against the “CAR MAT” design registered under Alwin T. Go (“Go”). KPI averred that Go is not the true and original designer of the disputed car mat product. To substantiate its claim, KPI presented images of actual car mats allegedly imported from another manufacturer in China, similar to that of Go’s car mat. KPI claimed that these car mats imported from China constitutes prior art, which effectively prove that the disputed design was not novel and thus, must not have been registered in the first place. KPI further questioned the novelty of the disputed design as it has alleged that Go committed a prejudicial disclosure to third persons when he bought the mold for his car mat design prior to its application.

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November 9, 2016

The Philippine Intellectual Property Office launched an electronic filing system for industrial design on November 2, 2016 called EIDFILE.

Under the system, applicants seeking protection for industrial design can file his application by the use of a computer terminal with latest versions of web browsers. Applicants may file applications for industrial design with any of the satellite offices of the Intellectual Property Office. Any applicant not yet familiar with the system can get assistance in those offices.

An applicant is not required to register to be able to file the application online.  A cover letter is also not needed for his online application.  Once the applicant proceeds with the online filing, he will be guided by the system on how to submit the application.

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November 8, 2016

The fashion house Stella McCartney Limited (“opposer”), known for its ready-to-wear apparel, accessories, lingerie, eyewear, and fragrances opposed the registration in the Philippines of the trademark ST ELLA owned by the Malaysian company, Melilea (“applicant”).

Melilea filed an application to register ST ELLA designating, among others, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices in Class 3, and leather goods in Class 18.

The opposer contended that ST ELLA is confusingly similar to its trademark STELLA and infringes its trade name Stella McCartney Limited.  The opposer claimed that it has used and registered STELLA in the Philippines long before the opposed application was filed; that STELLA is an internationally famous trademark, registered and successfully sold in many countries around the world; that the registration of ST ELLA will create a likelihood of confusion, mistake and deception among the consumers, and cause damage to opposer.

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November 5, 2016

Japanese company, Sumitomo Rubber Industries, Ltd. has once again successfully opposed an application to register FALCON trademark in the Philippines.  A Chinese national, Peng Tei Liu, applied to register FALCON for use on vehicles and apparatus for locomotion in Class 12. Sumitomo Rubber opposed claiming that FALCON is confusingly similar to its FALKEN trademark, which is used on tires, also in Class 12.

FALKEN is a known brand that is used for ultra high performance tires. FALKEN tires are popularly sold in North America by Sumitomo Rubber’s subsidiary company, Falken Tire Corporation.

This is not the first time that Sumitomo Rubber has opposed an application for FALCON trademark in the Philippines.  In this recent opposition, Sumitomo Rubber argued that not only is FALCON confusingly similar to FALKEN which is registered in Class 12, but is also an infringing copy of the company name of its subsidiary, Falken Tire Corporation.  As an important element of its subsidiary’s name, FALKEN enjoys legal protection under Section 165 of the Intellectual Property Code and Article 8 of the Paris Convention, according to Sumitomo Rubber.

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