iPINTELLECTUAL PROPERTYPHI LIP PINES

-versus-

GERARDO DIWA and / orRED HOUSE MUSIC PRODUCTION,

Opposer

}}}}}}

HAROLD P. SOLOMON, }Respondent-Applicant }

x----------------------------------------------------x

Inter Partes Case No. 14-2007-00174Opposition to:

Appl 'n Serial No.. : 04-2006-007131Date Filed : 06 July 2006Trademark : "RAKRAKAN"

Decision No. 2008- i¥~

DECISION

This case pertains to an opposition to the registration of the mark "RAKRAKAN" bearingApplication No. 4-2006-007131 filed on 06 July 2006 covering the services "entertainmentservices namely live music concerts, concert booking" falling under class 41 of the InternationalClassification of goods or services.

The Opposer in the instant opposition is "GERARDO DIWA and/or RED HOUSE MUSICPRODUCTION" a Filipino national, with address at Unit 3301, 33 Floor Cityland Pasong TamoTower, 2210 Don Chino Roces Avenue, Makati City.

On the other hand, Respondent-Applicant is "HAROLD P. SOLOMON" a Filipinonational residing at No. 11 Capalad Street, Marulas, Valenzuela Cuty..

The grounds of the opposition are as follows:

"1. This opposition is being filed based on Section 8 of Republic Act No. 166,in relation to Section 134 of Republic Act No. 8293, on the ground that theregistration of the mark "RAKRAKAN" in the name of Respondent­Applicant will cause damage to the Opposer. In support of thisOpposition, attached is the affidavit of Opposer , as Annex "A".

"2. Respondent-Applicant seeks the registration of the mark "RAKRAKAN"for use on entertainment services (live music concerts and concertbookings) under class 41. On the other hand, Opposer has been usingthe same mark since 1995 on similar goods and services, such asconcert productions, radio and television programs, magazines,streamers, r.dvertlslnq, t-shirts, caps and other promotional items.

"3. Since the marks of Respondent-Applicant and Opposer are identical andused on similar services, confusion is likely to occur. More specifically,confusion of services will arise because " [t]he ordinary prudent purchaserwould be induced to purchase one product or service because of thesimilarity of the marks or trade names used thereon. In other words , aperson's goods or services are purchased as those of another person,and the poorer quality of the former reflects adversely on the latter'sreputation . In confusion of goods or services, the confusingly Similar;rmarks or trade names are used on the same kind of products or

Republic of the Philippines !INTELLECTUAL PROPERTY OFFICE 1

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines· www.ipophi1.gov.ph •Telephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

services." [Sterling Products International, Inc., vs. FarbenfabriknBayer Aktiengesellschaft, 27 SCRA 1214 (1969)].

"4. In addition to services, Opposer is also using the mark "RAKRAKAN" ondifferent kinds of products such as magazines, t-shirts and other items.When taken in relation to the services of Respondent-Appl icant,confusion of business or of origin is likely to occur because a "[p]arty'sproduct or service, though different from that of another , is such as mightreasonably be assumed to originate from the latter, and the public wouldthen be deceived into the belief that there is some connection or businessassociat ion between the parties which, in fact is absent. In confusion ofbusiness or origin, the goods or services on which the identical or similarmarks or trade names are employed are different in kind or are non­competing". [Ang vs. Teodoro, 74 Phil., 50 (1942); Sterling ProductsInternational, Inc., vs. Farbenfabriken Bayer Aktiegesellschaft, 27SCRA 1214 (1969)]

"5. Since confusion is likely to occur, Respondent-Applicant's application forregistration should not be allowed. Confusion of goods or services , or ofbusiness or origin, causes damage to the owner of the older mark ortrade name and to the consumers as well. "[T]he risks of damage is notlimited to a possible confusion of goods but also to confusion ofreputation if the public could reasonably assume that the goods orservices of the parties originated from the same source". [ConverseRubber Corp., vs. Universal Rubber Products, Inc., 147 SCRA 154(1987)].

"6. Opposer has been engaged in the business of concert production sincethe early 1990's. He puts up live music performances, markets theconcerts and takes charge of booking the bands, venues, sound systemsand events . Opposer likewise commercializes musical events.

"7. Opposer started producing concerts focusing on rock music in 1995. Todistinguish his business or services from those of other concertproducers, Opposer coined the term "RAKRAKAN", an arbitrary orsuggestive term which when taken in relation to the business of concertproductions and similar services.

"8. Opposer's concert productions featured the most popular local rockbands, such as Soul Dredgers, Del Pilar, Hubris, Domino's Cross, Datu'sTribe and Marshmallow. These bands successfully performed in sold-outconcerts not only because of their popularity but also because of thepromotional efforts of Opposer. Some of the "RAKRAKAN" concertsproduced by Opposer since 1995 and held in various clubs in MetroManila and nearby provinces include:

a .b.c.

Rakrakan sa Club Dred on April 20, 1995Rakrakan sa Club Dred on May 18, 1995Rakrakan sa Club Dred on July 15, 199~.

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d. Rakrakan sa Club Dred on August 31, 1995e. Rakrakan sa Club Dred on September 16, 1995f. Rakrakan sa Club Dred on October 30, 1995g. Rakrakan sa Club Dred on November 27, 1995h. Rakrakan sa Band's Avenue on November 29, 1995i. Rakrakan sa Bottomline on Niovember 30, 1995j. Rakrakan sa San Pablo City on December 2, 1995k. Rakrakan sa Club Dred on December 11, 1995I. Rakrakan sa Club Dred on December 16, 1995m. Rakrakan The First Anniversary Specials on January 18 to 20,

1996

"9. Opposer's long, open and continuous use of the domain namewww .rakrakan.com as a source identifier since March 2000 firmlyestabl ishes his ownership over the mark "RAKRAKAN". [see CamarSpA vs. OMGE Trading Corporatio, fPC No. 14-2004-00141, DecisionNo. 2006-08 dated January 31, 2006, where the Opposition wassustained based on Opposer's evidence, one of which was the use of thedomain name www.camar.itj.

The Respondent-Applicant filed a response to the opposition of which he denied all thematerial allegations in the Notice of Opposition and further alleged that he has a true, more validand legal right to the mark "RAKRAKAN".

During the preliminary conference, the parties were encouraged to settle the caseamicably, however, they failed to reach a settlement.

The Opposer submitted the following in support of his opposition:

Annex Description

Annex "A" Affidavit of Gerardo P. Diwa

Department of Trade & Industry BusinessAnnex "B" Name Registration for Red House Music

Production .

Annex "C" to "C-19" Flyers and tickets for series of concertssponsored by Red House Music Productions

Annex "0" to "0-1" Photos of the sample promotional t-shirts

Annex "E""Rakrakan" first anniversary special magazinesissued January 1996

Annex "F" Acknowledgment issued by the then Bureau ofPatents , Trademarks and Technology Transfer.

Annex "G" Sample poster with sponsors of "Rakrakan"

Annex "H" Photo print-out of the rakrakan.com web page.

Annex "I" to "1-7" Photos of the performing artist for the

"Rakrakan" concert.

Trademark Search print-out of Respondent-Annex "J" Applicant's trademark "RAKRAKAN"

application.

Annex "K"Trademark Search print-out of Respondent-Applicant's trademark "RAKISTA" application.

Annex "L" Web print-out of www.rakista.com

Annex "M" Affidavit of Jose Eric S. Maglanque

Annex "N" Affidavit of Allan Christopher C. Carlos

Annex "0" Sample promotional t-shirt of "RAKRAKAN"

Respondent-Applicant on the other hand submitted the following in support of histrademark application being opposed .

Exhibit« : Description

Exhibit "1" Affidavit of Harold P. Solomon

Department of Trade & Industry BusinessExhibit "2" Name Certificate for "Rakista Media

Production".

Exhibit "3"Rakista Media Production Original Applicationform

Exhibits "4" to "8" Rakrakan Posters NO.1 to 5

Exhibits "9" to "13" Rakrakan Concert Pictures Nos . 1 to 5

Exhibit "14" Rakrakan Tickets and pin photo .

Exhibit "15"Web page print-out of "Rakrakan Befo reChristmas" concert.

Exhibits "16" to "21" Web page print-out

Exhibits "22" to "24" Web page print-out of WHOIS registryScreenshot 1 to 3

Exhibit "25" Affidavit of Malbin Hung

Exhibit "26" Affidavit of Edgar E. Bravo

Exhibit "27" Affidavit of Irene A. Rama

Exhibit "28" Affidavit of Melvin Macataig

Exhibi t "29" Compact Disc of Rakrakan videos

The only issue to be reso lved in this particular case is:

WHETHER OR NOT RESPONDENT-APPLICANT IS ENTITLE~

TO THE REGISTRATION OF THE TRADEMARK "RAKRAKAN". / f#.4

The applicable provision of the law is, Section 123 (d) of Republic Act No. 8293, whichprovides:

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

(d) Is identical with a registered mark belonging to adifferent proprietor or mark with an earlier filing orpriority 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 tobe likely to deceive or cause confusion;

In order to arrive at a just and fair conclusion, whether the contending marks areconfusingly similar , both are reproduced below for comparison and scrutiny.

Opposer's Mark

A.I(ft AKAN

Respondent-Applicant's Mark

Considering that the contending marks are the same in spelling, pronunciation as wellas in meaning, the only question to be resolved is "WHO BETWEEN THE TWO PARTIES HASA BETTER RIGHT OVER THE TRADEMARK "RAKRAKAN".

Records will show that Opposer has started using the mark "RAKRAKAN " in 1995 byproducing concerts through "RED HOUSE MUSIC PRODUCTION" of which he was the soleowner and proprietor. (Exhibit "A") Affidavit of Gerardo Diwa, the Opposer and (Exhibits "B" to"B-1") Certificate of Registration of Business Name "RED HOUSE MUSIC PRODUCTION"Certificate No. 95062024 issued on September 7,1995.

The Rakrakan concert of the Opposer were performed in different clubs in Metro Manilain the year 1995 (Annexes "C" to "C-25").

Likewise Opposer has filed an application for the registration of the mark "RAKRAKAN"with the then Bureau of Patents, Trademarks and Technology Transfer on March 20, 1996.(Annex "F" to "F-1") However, this trademark application has been declared abandoned fO~failure to file a reply to the Examiner's action. ~ I

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In the year 2006, Opposer have produced a Rakrakan concert in Makati City and inQuezon City. Annexes "I" to "1_9" are photographs showing the use of the mark "RAKRAKAN"in banners.

On the other hand, the Respondent-Applicant have an application for the registrat ion ofthe mark "RAKRAKAN" with the Intellectual Property Philippines (IPP) on July 3, 2006. In hisresponse filed to the opposition , he stated therein that he began using the mark "RAKRAKAN"in 2005.

It cannot be denied that on the basis of evidence presented by the contending partiesthe Opposer is the prior user and adopter of the mark "RAKRAKAN".

Respondent-Applicant claims that Opposer's trademark application filed in 1996 hasbeen abandoned, such abandonment can hardly qualify as an existing right.

The fact that the Opposer's trademark application was declared abandoned for failureonly to comply with the requirement of the Examiner, is not an act of abandonment of the use ofthe mark under the law.

Abandonment, which is in the nature of forfeiture of a right, must be shown byclear and convincing evidence (74 Am. Jur. 20, p. 722). To work an abandonment, thedisuse must be permanent and not ephemeral; it should be international and voluntaryand not involuntary or even compulsory (Philippine Nut vs. Standard Brands, Inc., 65SeRA 575).

Moreover , the evidence on record show that Opposer has not abandoned the use of histrademark "RAKRAKAN" contrary to Respondent-Applicant's claim. The Bureau of LegalAffairs finds substantial evidence indicating that Opposer has used his mark even after histrademark application was abandoned such as, poster for "RAKRAKAN" concert sponsored bymany companies including Pepsi Cola (Annex "G"). Opposer likewise put up a website andregister the domain name (www.rakrakan.com)inMarch2000.printout of the main webpage ofthe "RAKRAKAN" website is marked as (Annex "H" to "H-2"). The "RAKRAKAN" concertsrecently produced in 2006 by the Opposer in Makati City and Quezon City respectively provethe use and intention of the Opposer to continuously use the mark.

Most importantly, the filing by the Opposer of an Opposition to the registration of themark "RAKRAKAN" filed by Respondent-Applicant in the instant case indicates his intention topreserve and assert his right to the trademark. All the foregoing circumstances establishOpposer's non-abandonment of the use of his mark "RAKRAKAN".

Respondent-Applicant advances his theory that under Republic Act No. 8293,registration confers ownership of a trademark . The Bureau of Legal Affairs disagrees .

The Philippines implemented the Agreement on Trade Related Aspects of IntellectualProperty Rights (TRIPS Agreement) when Republic Act No. 8293 took into force and effect onjfJ--

01 January 1998. / I It.Article 15 of TRIPS Agreement reads: j.

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Section 2: Trademarks

Article 15

Protectable Subject Matter

1. Any sign, or any combination of signs, capable of distinguishing thegoods or services of one undertaking from those of other undertakings,shall be capable of constituting a trademark. Such signs, in particularwords including personal names, letters, numerals, figurative elementsand combinations of colours as well as any combination of such signs,shall be eligible for registration as trademarks. Where signs are notinherently capable of distinguishing the relevant goods or services,members may require, as a condition of registration, that signs be visuallyperceptible.

2. Paragraph 1 shall not be understood to prevent a member from denyingregistration of a trademark on other grounds, provided that they do notderogate from the provisions of the Paris Convention (1967).

3. Members may make registrability depend on use. However, actual useof a trademark shall not be a condition for filing an application forregistration. An application shall not be refused solely on the ground thatintended use has not taken place before the expiry of a period of three (3)years from the date of application.

4. The nature of the goods or services to which a trademark is to be appliedshall in no case form an obstacle to registration of the trademark.

5. Members shall publish each trademark either before it is registered orpromptly after it is registered and shall afford a reasonable opportunity forpetition to cancel the registration. In addition, members may afford anopportunity for the registration of a trademark to be opposed.

Article 16 (1) of the TRIPS Agreement states:

Article 16

Rights Conferred

1. The owner of a registered trademark shall have the exclusive rightto prevent all third parties not having the owner's consent from using inthe course of trade, identical or similar signs for goods or services whichare identical or similar to those in respect of which the trademark isregistered where such word would result in a likelihood of confusion. Incase of the use of an identical sign for identical goods or services e~likelihood of confusion shall be presumed. The right described abovi'l_

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shall not prejudice any existing prior rights, nor shall they affect thepossibility of members making rights available on the basis of use.

Significantly , Republic Act No. 8293 adopted the definition of the mark under RepublicAct No. 166, to wit:

"121.1 "Mark" means any visible sign capable of distinguishing thegoods or services of an enterprise and shall include a stamped or markedcontainer of goods (Sec. 38, Republic Act No. 166)"

and provides:

"Sec. 138. Certificate of Registration - A certificate of registrationof a mark shall be prima facie evidence of the validity of the registration,the registrant's ownership of the mark, and of the registrant's exclusiveright to use the same in connection with the goods or services and thosethat are related thereto specified in the certificate."

From this legal backdrop it is plain that, in this jurisdiction , it is not the registration thatconfers ownership of trademark; rather, it is ownership of the trademark that gives rise to theright to cause its registration and enjoys exclusive use thereof for the goods associated with it.While Republic Act No. 8293 does not contain express references to ownership of marks as abasis for their registration, the definition of the term "mark" implies that the right of registrationbelongs to the owner.

Although Opposer's trademark application for the mark "RAKRAKAN" which was filed in1996 has been declared abandoned for failure to comply to the trademark Examiner's actionwhich is a mandatory requirement of law, there are clear and convincing evidence showing thatOpposer continued the lawful and use of his mark such as (Annex "8"), Poster for "RakrakanConcert" sponsored by many companies including Pepsi-Cola. Opposer, likewise put up awebsite and register the domain name (www.rakrakan.com)inMarch2000.print-out of the mainwebpage of "Rakrakan" website is mark (Annex "H" to "H-2").

The right of the Opposer over the mark "RAKRAKAN" was acquired in the year 1995,under Republic Act No. 166, as amended, which was the law in force and effect when Opposerused the trademark RAKRAKAN in 1995, such right has been preserved and continued to thisdate by express provision of Section 236 of Republic Act No. 8293.

"Section 236 - Preservation of Existing Rights - Nothing hereinshall adversely affect the right on the enforcement of rights inpatents, utility models, industrial designs, marks and works,acquired in good faith prior to the effective date of this act."

It is clear from the above quoted provisions of the Intellectual Property Code, that theRepeal of Republic Act No. 166, as amended, did not terminate the trademark rights acquiredby actual use in commerce under and pursuant to said law. Republic Act No. 166 has beenrepealed by the Intellectual Property Code (Republic Act No. 8293) but the rights acquiredthereunder remain vested rights. It is wrong for the Respondent-Applicant to assume tha~

because of the repeal of Republic Act No. 166, as amended, the ownership rights of the

8 J.

Opposer to the mark "RAKRAKAN" also ceased and were terminated and that Respondent­Applicant is now free to claim and apply for its registration in his name.

Respondent-Applicant insisted that his trademark application be approved simplybecause he was the first to file as Opposer's trademark RAKRAKAN applied for in 1996 wasdeclared abandoned for failure to comply with the requirement of the Examiner.

To follow applicant's line of reasoning is to assume that in enacting the IntellectualProperty Code of the Philippines (IP Code), congress intended to allow any body to acquirerights in a mark by simply seeing to it that his application for registration was filed ahead of allother applications. The so-called first-to-file rule could not have been intended to justify theapproval of an application just because it was the first application to be filed regardless ofwhether somebody else has a better or superior right to the mark applied for. The rulecould not be used to commit/or perpetuate an unjust and unfair claim. A trademark is anindustrial property and the owner thereof has property rights over it. The privilege of beingissued a registration for exclusive use thereof, should be based on the concept of ownership.Republic Act No. 8293 implements the TRIPS Agreement and therefore, the idea of "registeredowner" does not mean that ownership is established by mere registration but that registrationmerely establishes a presumptive right of ownership. That presumption of ownership yieldsto superior evidence of actual and real ownership of the trademark and the TRIPSAgreement requirement that no existing prior rights shall be prejudiced.

To sum up, the "tirsi-io-tile" rule is the general rule for trademark application filed underand governed by Republic Act No. 8293, otherwise known as the Intellectual Property Code ofthe Philippines (IP Code). The rule will not be applied if there is a determination in appropriateproceedings.

1. That the "first-to-fiIe" is not the owner of the trademark or is notauthorized by the owner to procure registration of the trademark inhis /her, or its favor; or

2. That the adoption and/or use by the "first filer' of thetrademark, even in good faith, is preceded by an actual useby another, also in good faith, prior to the taking into forceand effect of Republic Act No. 8293.

WHEREFORE, in the light of all the foregoing, the instant opposition is, as it is herebySUSTAINED. Consequently, trademark Application No. 4-2006-007131 filed on July 6, 2006for the registration of the mark "RAKRAKAN" by "HAROLD P. SOLOMON" is, as it is herei1Y'!rREJECTED.

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Let the filewrapper of the trademark "RAKRAKAN" subject matter of this case togetherwith a copy of this DECISION be forwarded to the Bureau of Trademarks (BOT) for appropriateaction.

SO ORDERED.

Makati City, 09 April 2008.

PUSI/jojo/09-Apr-08

Atty. T ELLITA BELTRAN ABELARDODirector

Bureau of legal Affairs