Petition to cancel trademark filed by importer, seller or distributor
THIRD DIVISION [G.R. No. 229340, April 26, 2017] DJOHAR TOBING VS. TIEN HUNG AGRO-INDUSTRIAL CORPORATION.
This is a Petition for Review on Certiorari under Rule 45 of the Rules of Court, which seeks to reverse and set aside the Decision[1] dated June 10, 2016 of the Court of Appeals (CA) and its Resolution dated November 28, 2016 in CA-G.R. SP No. 138175 that affirmed the Decision dated September 28, 2011 of the Office of Director General of the Intellectual Property Office of the Philippines (ODG-IPO), sustaining the cancellation of the trademark registration of petitioner Djohar Tobing's trademark "TUNG HO, TH & Device."
The Facts
The facts, as culled from the records of the CA, are as follows:
The Ruling of the Director of the Bureau of Legal Affairs
The Director of the Bureau of Legal Affairs (BLA) ruled in favor of respondent Tien Hung Agro-Industrial Corporation (Tien Hung) and ordered the cancellation of the registration of petitioner's trademark. Aside from ruling that petitioner's "TUNG HO, TH & Device" is confusingly similar to respondent Tien Hung's registered mark "TH and Logo design," the BLA also held that petitioner has no right to register the mark "TUNG HO" or a mark that contains these words because he is not the owner of the same.[3] Based on the evidence submitted in the case, the BLA explained that it appeals that the mark "TUNG HO" has been used in the Philippines for sprayers by parties other than petitioner long before he filed his trademark application.[4] The dispositive portion of the Decision dated September 28, 2011 reads:
The Ruling of the Director General of the Intellectual Property Office
The ODG-IPO dismissed the appeal and affirmed the cancellation of the registration of petitioner's trademark. The dispositive portion of the Decision dated August 28, 2015 reads:
The Ruling of the CA
In its assailed Decision dated June 10, 2016, the CA dismissed the petition and affirmed the findings of the Director General. The CA ruled that respondent Tien Hung has legal standing to file a petition for cancellation of trademark registration because even a mere importer of the goods bearing a mark similar to the trademark being sought to be cancelled can file a petition to cancel the registration of the mark under Section 151.1 of Republic Act No. 8293[7] (R.A. No. 8293) if he/she believes that he/she will, incur some damage by the registration of the mark sought to be cancelled. The dispositive portion of the Decision reads:
The Issue
The only issue raised by petitioner is whether or not a mere importer, seller or distributor of goods has the standing to bring a petition for cancellation of a trademark registration.
The Ruling of the Court
The petition is unmeritorious.The CA committed no reversible error in affirming the Decision of the ODG-IPO. Petitioner's contention that respondent Tien Hung has no legal standing to petition the cancellation of the registration of petitioner's mark because respondent Tien Hung is just an importer deserves scant consideration. Section 151 of R.A. No. 8293 provides the rule on the cancellation of trademark registration, viz:
Petitioner further posits that to declare respondent Tien Hung to have legal standing to file a petition for cancellation of trademark registration would violate the rule on real party in interest under Section 2, Rule 3 of the 1997 Rules of Civil Procedure.
We are not persuaded.
By virtue of Section 151 of R.A. No. 8293, any person who believes that he is or will be damaged by the registration of a mark is considered a real party in interest who may file a petition for cancellation of a trademark registration. The said provision is the governing law on who may file a petition for cancellation. As such, even a mere importer, seller or distributor of goods may be considered a real party in interest.
Therefore, We find no cogent reason to deviate from the findings of the CA as it has been proven that respondent Tien Hung has legal standing to file for a petition for cancellation of trademark registration. Furthermore, it is well-settled that factual findings of administrative agencies charged with a specific field of expertise are afforded great weight and respect by the courts, and are generally binding and final so long as they are supported by substantial evidence found in the records of the case.[13]
WHEREFORE, finding no reversible error in the assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 138175, the Court resolves to DENY the petition and, thus, AFFIRM said Decision and Resolution.
SO ORDERED.
[1] Penned by Associate Justice Romeo F. Barza and concurred in by Associate Justice Manuel M. Barrios and Associate Justice Agnes Reyes-Carpio.
[2] Rollo, pp. 45-46.
[3] Id. at 46.
[4] Id. at 46-47.
[5] Id. at 47.
[6] Id.
[7] An Act prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, providing for its Powers and Functions, and for Oilier Purposes.
[8] Id. at 54.
[9] Id. at 21.
[10] Milagros E. Amores v. House of Representatives Electoral Tribunal and Emmanuel Joel J. Villanueva, G.R. No. 189600. June 29, 2010.
[11] G.R. No. 74851, December 9, 1999, 320 SCRA 279, 289.
[12] Rollo, p. 50.
[13] Isabelita vda. de Dayao and Heirs of Vicente Dayao v. Heirs of Gavino Rabies, G.R. No. 174830, July 31, 2009.
This is a Petition for Review on Certiorari under Rule 45 of the Rules of Court, which seeks to reverse and set aside the Decision[1] dated June 10, 2016 of the Court of Appeals (CA) and its Resolution dated November 28, 2016 in CA-G.R. SP No. 138175 that affirmed the Decision dated September 28, 2011 of the Office of Director General of the Intellectual Property Office of the Philippines (ODG-IPO), sustaining the cancellation of the trademark registration of petitioner Djohar Tobing's trademark "TUNG HO, TH & Device."
The facts, as culled from the records of the CA, are as follows:
Herein petitioner Djohar Tobing (petitioner), an Indonesian citizen, is engaged in the manufacture, production and sale of knapsack sprayers in the Philippines as well as in Indonesia. Petitioner uses the mark "TUNG HO, TH DEVICE" in selling his knapsack sprayers and to protect his intellectual property rights to the said mark, he filed on July 5, 2002 an application with the Bureau of Trademarks for the registration of the wordmark "TUNG HO" for hand sprayers. The said application, however, was eventually denied for petitioner's failure to submit the requisite notarized declaration and proofs of actual use of the aforesaid mark within three years from the filing of his application for the registration of the same.
On July 25, 2006, petitioner filed a new application to register the composite trademark "TUNG HO TH & Device" for sprayers in International Class 8 of the Nice International Classification of Goods and Services. The said application was docketed as Application No. 4-2006-008113 and was eventually granted on May 16, 2008.
After discovering from a newspaper that there was a trademark registration in favor of petitioner for the trademark "TUNG HO TH & Device" for agricultural sprayers, herein respondent filed on May 11, 2010 its Verified Petition for Cancellation of Trademark Registration to cancel the registration of the aforesaid mark of petitioner. In the said petition, Tien Hung alleged that the registration of petitioner's mark should be cancelled because: it was fraudulently obtained; it is the true and rightful owner of the mark "TUNG HO, TH & Device;" it has been using "TUNG HO, TH & Device" in its manufacturing business since 1977; it has obtained a certification of registration for the mark "TH and Logo design;" it filed a trademark application for "Tung Ho and Device" on April 27, 2010 for use on agricultural sprayers; and, it has been damaged and will continue to be damaged by the registration of the said mark in favor of petitioner.
In response thereto, petitioner filed his Answer wherein he alleged that he has every right to use the mark "TUNG HO, TH & Device" in the Philippines because he is the true and rightful owner of the same by reason of his real, actual, and absolute use of the said mark in the concept of owner and for being the senior-registrant and the first to file for the registration of the same in the Philippines. More importantly, petitioner argued that Tien Hung has no standing to file its petition for cancellation of his trademark because Tien Hung is judicially barred from ever acquiring ownership of the trademark "TUNG HO" after having been declared to be a mere importer, seller, and/or distributor of sprayers bearing the said trademark. Not. being the true and actual owner of the trademark "TUNG HO," petitioner argues that Tien Hung cannot claim that it will suffer any damage by the continued registration of the trademark "TUNG HO, TH & Device" in his name.[2]
The Director of the Bureau of Legal Affairs (BLA) ruled in favor of respondent Tien Hung Agro-Industrial Corporation (Tien Hung) and ordered the cancellation of the registration of petitioner's trademark. Aside from ruling that petitioner's "TUNG HO, TH & Device" is confusingly similar to respondent Tien Hung's registered mark "TH and Logo design," the BLA also held that petitioner has no right to register the mark "TUNG HO" or a mark that contains these words because he is not the owner of the same.[3] Based on the evidence submitted in the case, the BLA explained that it appeals that the mark "TUNG HO" has been used in the Philippines for sprayers by parties other than petitioner long before he filed his trademark application.[4] The dispositive portion of the Decision dated September 28, 2011 reads:
WHEREFORE, the instant Petition for Cancellation is hereby GRANTED for the reasons stated above. Let the filewrapper of the Trademark Registration No. 4-2006-008112 be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action.Petitioner, thus, filed an appeal to the ODG-IPO.
SO ORDERED.[5]
The ODG-IPO dismissed the appeal and affirmed the cancellation of the registration of petitioner's trademark. The dispositive portion of the Decision dated August 28, 2015 reads:
WHEREFORE, premises considered, the instant appeal is hereby dismissed. Let a copy of this Decision as well as the trademark application and records be furnished and returned to the Director of the Bureau of Legal Affairs for appropriate action. Further, let also the Director of the Bureau of Trademarks and the library of the Documentation, Information, and Technology Transfer Bureau be furnished a copy of this decision for information, guidance, and records purposes.Aggrieved, petitioner filed a petition for review under Rule 43 of the Rules of Court before the CA.
SO ORDERED.[6]
In its assailed Decision dated June 10, 2016, the CA dismissed the petition and affirmed the findings of the Director General. The CA ruled that respondent Tien Hung has legal standing to file a petition for cancellation of trademark registration because even a mere importer of the goods bearing a mark similar to the trademark being sought to be cancelled can file a petition to cancel the registration of the mark under Section 151.1 of Republic Act No. 8293[7] (R.A. No. 8293) if he/she believes that he/she will, incur some damage by the registration of the mark sought to be cancelled. The dispositive portion of the Decision reads:
WHEREFORE, petition is hereby DENIED. The Decision dated September 28, 2011 of the Office of the Director General of the Intellectual Property Office of the Philippines, in Appeal No. 14-2011-0018, is hereby AFFIRMED.The Motion for Reconsideration filed by petitioner was denied by the CA in a Resolution[9] dated November 28, 2016. Hence, this petition on the sole ground that respondent Tien Hung has no legal standing to file a petition for cancellation of trademark registration.
SO ORDERED.[8]
The only issue raised by petitioner is whether or not a mere importer, seller or distributor of goods has the standing to bring a petition for cancellation of a trademark registration.
The petition is unmeritorious.The CA committed no reversible error in affirming the Decision of the ODG-IPO. Petitioner's contention that respondent Tien Hung has no legal standing to petition the cancellation of the registration of petitioner's mark because respondent Tien Hung is just an importer deserves scant consideration. Section 151 of R.A. No. 8293 provides the rule on the cancellation of trademark registration, viz:
SECTION 151. Cancellation. —It is clear from the aforecited provision that a petition to cancel a registration of a mark may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark. Contrary to petitioner's interpretation of the said provision, the law does not limit the filing of a petition to cancel a registration of a mark by the true and rightful owner only. A cardinal rule in statutory construction is that when the law is clear and free from any doubt or ambiguity, there is no room for construction or interpretation. There is only room for application.[10] In Rizal Commercial Banking Corporation v. Intermediate Appellate Court,[11] the Court enunciated:
151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows; a. Within five (5) years from the date of the registration of the mark under this Act. b. At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used, x x x (emphasis supplied)
It bears stressing that the first and fundamental duty of the Court is to apply the law. When the law is clear and free from any doubt or ambiguity, there is no room for construction or interpretation. As has been our consistent ruling, where the law speaks in clear and categorical language, there is no occasion for interpretation; there is only room for application (Cebu Portland Cement Co. v. Municipality of Naga, 24 SCRA 708 [1968])As aptly stated by the CA, the allegation by respondent Tien Hung that it has been damaged and will continue to be damaged by the registration of petitioner's mark is meritorious even if, assuming arguendo, it is merely an importer of sprayers bearing the mark "TUNG HO."[12] There is likelihood that the public will be confused between the product imported by respondent Tien Hung and the products manufactured and sold by petitioner since both of them use the same mark.
Where the law is clear and unambiguous, it must be taken to mean exactly what it says and the court has no choice but to see to it that its mandate is obeyed (Chartered Bank Employees Association v. Ople, 138 SCRA 273 [1985]; Luzon Surety Co., Inc. v. De Garcia, 30 SCRA 111 [1969]; Ouijano v. Development Bank of the Philippines, 35 SCRA 270 [1970]).
Only when the law is ambiguous or of doubtful meaning may the court interpret or construe its true intent. Ambiguity is a condition of admitting two or more meanings, of being understood in more than one way, or of referring to two or more things at the same time. A statute is ambiguous if it is admissible of two or more possible meanings, in which case, the Court is called upon to exercise one of its judicial functions, which is to interpret the law according to its true intent.
Petitioner further posits that to declare respondent Tien Hung to have legal standing to file a petition for cancellation of trademark registration would violate the rule on real party in interest under Section 2, Rule 3 of the 1997 Rules of Civil Procedure.
We are not persuaded.
By virtue of Section 151 of R.A. No. 8293, any person who believes that he is or will be damaged by the registration of a mark is considered a real party in interest who may file a petition for cancellation of a trademark registration. The said provision is the governing law on who may file a petition for cancellation. As such, even a mere importer, seller or distributor of goods may be considered a real party in interest.
Therefore, We find no cogent reason to deviate from the findings of the CA as it has been proven that respondent Tien Hung has legal standing to file for a petition for cancellation of trademark registration. Furthermore, it is well-settled that factual findings of administrative agencies charged with a specific field of expertise are afforded great weight and respect by the courts, and are generally binding and final so long as they are supported by substantial evidence found in the records of the case.[13]
WHEREFORE, finding no reversible error in the assailed Decision and Resolution of the Court of Appeals in CA-G.R. SP No. 138175, the Court resolves to DENY the petition and, thus, AFFIRM said Decision and Resolution.
SO ORDERED.
[1] Penned by Associate Justice Romeo F. Barza and concurred in by Associate Justice Manuel M. Barrios and Associate Justice Agnes Reyes-Carpio.
[2] Rollo, pp. 45-46.
[3] Id. at 46.
[4] Id. at 46-47.
[5] Id. at 47.
[6] Id.
[7] An Act prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, providing for its Powers and Functions, and for Oilier Purposes.
[8] Id. at 54.
[9] Id. at 21.
[10] Milagros E. Amores v. House of Representatives Electoral Tribunal and Emmanuel Joel J. Villanueva, G.R. No. 189600. June 29, 2010.
[11] G.R. No. 74851, December 9, 1999, 320 SCRA 279, 289.
[12] Rollo, p. 50.
[13] Isabelita vda. de Dayao and Heirs of Vicente Dayao v. Heirs of Gavino Rabies, G.R. No. 174830, July 31, 2009.
