03-canon Kabushiki Kaisha Vs. Ca

Topic: TRADE NAME vs TRADE MARK; Definition of Marks Title: CANON KABUSHK KASHA vs! COURT O" A##EA$S Citation: %!R! No! &'()((; *+l, '(- '((( "ACTS "AC TS:: On January January 15, 1985, 1985, private private respond respondent ent NSR Rubber Rubber Corpora Corporation tion (private (private respondent) filed an application for reistration of t!e "ar# C$NON for sandals in t!e %ureau of &atents, 'rade"ar#s, and 'ec!noloy 'ransfer (%&''') $ erified Notice of  Opposition *as filed by petitioner, a forein corporation duly orani+ed and eistin under t!e la*s of Japan, allein t!at it *ill be da"aed by t!e reistration of t!e trade"ar# C$NON in t!e na"e of private respondent On Nove"ber 1-, 199., t!e %&''' issued its decision dis"issin t!e opposition of peti petiti tion oner er and and ivi ivin n due due cour course se to priv privat ate e resp respon onde dent nt/s /s appl applic icat atio ion n for for t!e t!e reistration of t!e trade"ar# C$NON On 0ebruary 1, 1992, petitioner appealed t!e decision of t!e %&''' *it! public respondent Court of $ppeals t!at eventually affir"ed t!e decision of %&''' 3ence, t!is petition for revie* SSU S SUE E4 !et!er t!e trade"ar# Canon filed by t!e &rivate Respondents could be reistered6 RU$ RU $N% N% 4 7S, t!e co"panys oods are different fro" t!e products of t!e petitioner '!e '!e %&'' %&''' ' and and t!e Court Court of $ppeal $ppeals s s!ar s!are e t!e opin opinion ion t!at t!at t!e t!e trade trade"ar "ar# # :C$NON: as used by petitioner for its paints, c!e"ical products, toner, and dyestuff, can be used by private respondent for its sandals because t!e products of t!ese t*o parties parties are dissi"i dissi"ilar lar &etition &etitioner er protests protests t!e appropr appropriati iation on of t!e "ar# C$NON C$NON by private respondent on t!e round t!at petitioner !as used and continues to use t!e trade"ar# C$NON on its *ide rane of oods *orld*ide  $lleedly  $lleedly,, t!e corporate corporate na"e or tradena"e tradena"e of petitioner petitioner is also used as its trade"ar# on diverse oods includin foot*ear and ot!er related products li#e s!oe polis!er and polis!in aents 'o lend credence to its clai", petitioner points out t!at it !as branc!ed out in its business based on t!e various oods carryin its trade"ar# C$NON, includin foot*ear *!ic! petitioner contends covers sandals, t!e oods for  *!ic! private respondent sou!t to reister t!e "ar# C$NON 0or petitioner, t!e fact alone t!at its trade"ar# C$NON is carried by its ot!er products li#e foot*ear, s!oe polis!er and polis!in aents s!ould !ave precluded t!e %&''' fro" ivin due course to t!e application of private respondent Ordinarily, the ownership of a trademark or tradename is a property right that the owner  is entitled to protect as mandated by the Trademark Law. However, when a trademark is used by a party for a product in which the other party does not deal, the use of the same trademark on the latter's product cannot be validly objected to. '!e %&''' correctly ruled t!at since t!e certificate of reistration of petitioner for  t!e trade"ar# C$NON covers class . (paints, c!e"ical products, toner, dyestuff), private respondent can use t!e trade"ar# C$NON for its oods classified as class .5 (sandals) Clearly, t!ere is a *orld of difference bet*een t!e paints, c!e"ical products, toner, and dyestuff of petitioner and t!e sandals of private respondent ven in t!is instant petition, ecept for its bare assertions, petitioner failed to attac! evidence t!at *ould convince t!is Court t!at petitioner !as also e"bar#ed in t!e production of foot*ear products '!e Court reiterated t!e principle t!at t!e certificate of  reistration confers upon t!e trade"ar# o*ner t!e eclusive ri!t to use its o*n sy"bol only to those goods specified in the certificate , sub;ect to t!e conditions and li"itations stated t!erein '!us, t!e eclusive ri!t of petitioner in t!is case to use t!e trade"ar# C$NON is li"ited to t!e products covered by its certificate of reistration '!e li#eli!ood of confusion of oods or business is a relative concept, to be deter"ined only accordin to t!e particular, and so"eti"es peculiar, circu"stances of  eac! case
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Topic: TRADE NAME vs TRADE MARK; Definition of Marks

Title: CANON KABUSHIKI KAISHA vs. COURT OF APPEALS
Citation: G.R. No. 120900; July 20, 2000

FACTS:
On January 15, 1985, private respondent NSR Rubber Corporation (private
respondent) filed an application for registration of the mark CANON for sandals in the
Bureau of Patents, Trademarks, and Technology Transfer (BPTTT). A Verified Notice of
Opposition was filed by petitioner, a foreign corporation duly organized and existing
under the laws of Japan, alleging that it will be damaged by the registration of the
trademark CANON in the name of private respondent.

On November 10, 1992, the BPTTT issued its decision dismissing the opposition
of petitioner and giving due course to private respondent's application for the
registration of the trademark CANON. On February 16, 1993, petitioner appealed the
decision of the BPTTT with public respondent Court of Appeals that eventually affirmed
the decision of BPTTT. Hence, this petition for review.

ISSUE:
Whether the trademark Canon filed by the Private Respondents could be registered?

RULING:
YES, the company’s goods are different from the products of the petitioner.

The BPTTT and the Court of Appeals share the opinion that the trademark
"CANON" as used by petitioner for its paints, chemical products, toner, and dyestuff,
can be used by private respondent for its sandals because the products of these two
parties are dissimilar. Petitioner protests the appropriation of the mark CANON by
private respondent on the ground that petitioner has used and continues to use the
trademark CANON on its wide range of goods worldwide.

Allegedly, the corporate name or tradename of petitioner is also used as its

in trademark law cases. petitioner failed to attach evidence that would convince this Court that petitioner has also embarked in the production of footwear products. Thus. chemical products. . except for its bare assertions. the goods for which private respondent sought to register the mark CANON. The Court reiterated the principle that the certificate of registration confers upon the trademark owner the exclusive right to use its own symbol only to those goods specified in the certificate. To lend credence to its claim. the fact alone that its trademark CANON is carried by its other products like footwear. to be determined only according to the particular. chemical products. toner. For petitioner. The BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark CANON covers class 2 (paints. when a trademark is used by a party for a product in which the other party does not deal. the exclusive right of petitioner in this case to use the trademark CANON is limited to the products covered by its certificate of registration. However. the use of the same trademark on the latter's product cannot be validly objected to. circumstances of each case. even more than in other litigation. there is a world of difference between the paints. Clearly. including footwear which petitioner contends covers sandals. private respondent can use the trademark CANON for its goods classified as class 25 (sandals). and dyestuff of petitioner and the sandals of private respondent. dyestuff). the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law. shoe polisher and polishing agents should have precluded the BPTTT from giving due course to the application of private respondent. toner.trademark on diverse goods including footwear and other related products like shoe polisher and polishing agents. Ordinarily. petitioner points out that it has branched out in its business based on the various goods carrying its trademark CANON. and sometimes peculiar. subject to the conditions and limitations stated therein. Even in this instant petition. Indeed. The likelihood of confusion of goods or business is a relative concept.

and the product of respondent. Ana vs. when it noted that the two classes of products in this case flow through different trade channels. In cases of confusion of business or origin. in Esso Standard Eastern. the facts of this case will show that the cases of Sta. the product of private respondent. . Thus. the question that usually arises is whether the respective goods or services of the senior user and the junior user are so related as to likely cause confusion of business or origin. Universal Rubber Products. Inc. Ang vs. if not identical. Court of Appeals. vs. the products involved are so unrelated that the public will not be misled that there is the slightest nexus between petitioner and the goods of private respondent. the paints. The just cited cases involved goods that were confusingly similar. the fact that the goods involved therein flow through different channels of trade highlighted their dissimilarity. Here. We agree with the BPTTT. Maliwat. when they possess the same physical attributes or essential characteristics with reference to their form. chemical products. Inc. Goods are related when they belong to the same class or have the same descriptive properties. Inc. They may also be related because they serve the same purpose or are sold in grocery stores. Undoubtedly.. Teodoro and Converse Rubber Corporation vs. Universal Rubber Products. cigarettes are "so foreign to each other as to make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's goods". composition. as in the case of Converse Rubber Corporation vs. this Court ruled that the petroleum products on which the petitioner therein used the trademark ESSO. are hardly in point. Contrary to petitioner's supposition. and thereby render the trademark or tradenames confusingly similar.precedent must be studied in the light of the facts of the particular case. following the Esso doctrine. toner and dyestuff of petitioner that carry the trademark CANON are unrelated to sandals. Moreover. texture or quality.