An Indonesian citizen engaged in the manufacture, production and sale of knapsack sprayers in the Philippines and Indonesia was using the trade mark. On 25 July 2006, this individual filed trade mark application No. 4-2006-008112 for sprayers in class 8 of the International (Nice) Classification of Goods and Services with the Intellectual Property Office of the Philippines (IPOPHL). Registration was granted for this trade mark on 25 June 2007.
After discovering the existence of registered trade mark in a local newspaper, Tien Hung Agro-Industrial Corporation (Tien Hung Company) filed a petition for the cancellation of trade mark registration No. 4-2006-008112 on 11 May 2010. In its petition, Tien Hung Company requested the cancellation of the trade mark registration for various reasons. Firstly, Tien Hung Company alleged that they were the true and rightful owner of the trade mark (which was adopted in 1977 for its manufacturing business and continuously used since then). Secondly, they claimed that the trade mark registration was fraudulently obtained by an individual applicant (the Petitioner) who was not entitled to register the trade mark (as a junior user thereof). Thirdly, Tien Hung Company holds several trade marks protecting both ‘TH’ and ‘TUNGHO’, and, notably, filed trade mark application No. 4-2010-004532 on 27 April 2010 (covering agricultural sprayers in class 8). Lastly, Tien Hung Company added that the trade mark registration in question was harming its business and its reputation in Indonesia. The petition was filed alongside a long list of evidence (28 exhibits).
On 28 September 2010, the Petitioner filed a response to the cancellation petition, alleging that Tien Hung Company was not the true and actual owner of the ‘TUNG HO’ trade mark. The Petitioner also claimed that he was the true and rightful owner of the trade mark due to his real, actual and absolute use of it as an owner, and because he was the first one to file an application for the trade mark in the Philippines. The response also sought to dismiss each allegation made by Tien Hung Company and was supported by a long list of evidence (12 exhibits).
After the review of the appropriate records, and an evaluation of both parties’ arguments and evidence, the Director of the Bureau of Legal Affairs (BLA) ruled in favour of Tien Hung Company and ordered the cancellation of trade markregistrationNo. 4-2006-008112 . In its decision, the BLA stated that the registered trade mark was confusingly similar to the trade marks owned by Tien Hung Company andthat the Petitioner had no right to register ‘TUNG HO’ as a trade mark, nor any trademark including these words. The BLA also examined all the evidence filed by each party and ruled that the trade mark ‘TUNG HO’ had been used in the Philippines by Tien Hung Company long time before the individual applicant decided to file a trade mark application.
The Petitioner decided to keep fighting the case and filed an appeal, first before the Director General of the IPOPHL and then before the Court of Appeals. Both appeals were unsuccessful and the cancellation of trade mark registration No. 4-2006-008112 was reconfirmed twice. Despite the Petitioner’s claims, the Court of Appeals recognised that even though Tien Hung Company was merely the importer, seller and distributor of the goods bearing the ‘TUNG HO’ trade mark in the Philippines, they had the necessary legal standing to file the petition for cancellation.
Bad-faith trade mark registration occurswhen a third party (for example, a trade mark squatter or local company) intentionally registers a trade mark that is either identical or confusingly similar to the existing trade mark of a different third party (the official owner). The intention behind this behaviour is to benefit from the reputation and brand created by the official owner, without their prior authorisation or consent. Unfortunately, this is quite a common issue in South-East Asia (SEA) and SMEs are strongly advised to regularly monitor trade mark databases and the internet (especially new websites and social media channels) in order to detect potential infringements. The early detection of suspicious activity should enable you to undertake the appropriate action in a timely manner.
Anyone (even a mere importer, seller or distributor of goods) that believes the registration of a trade mark is harming (or will harm) their interests is allowed to file a petition for the cancellation of a registered trade mark in the Philippines. If you are facing the same issue, please contact the SEA IP SME Helpdesk for some initial advice, or directly contact a local IP expert who will be able to legally represent you.