iPINTELLECTUAL PROPERTYPHILIPPINES

NISSAN JIDOSHA KABUSHIKI KAISHA(also trading as Nissan Motor Co., Ltd.)

Opposer,

-versus-

GEO PARTS SALES INC.Respondent-Applicant.

)(---------------------------------------------)(

DECISION

IPC No. 14-2007-00231Case Filed on: Aug. 13, 2007Opposition to:App Ser. No. 4-2004-001154Date filed: February 9, 2004Trademark: GTR and Design

DECISION NO. Oy - CfS"

For consideration is the Verified Notice of Opposition filed by NISSANJIDOSHA KABUSHIKI KAISHA (the "Opposer") against Application No. 4­2004-001154 filed by GEO PARTS SALES INC. (the "Respondent-Applicant")on 09 February 2004 for the registration of the mark "GTR and Design" usedfor automotive spare parts specifically brake disc pad and brake shoes withLining under Class 12 of the international classification of goods, which waspublished in the Intellectual Property Office Electronic Gazette, released forcirculation on April 20, 2007.

Opposer, Nissan Jidosha Kabushiki Kaisha (hereafter, the "Opposer")is a foreign corporation duly organized and existing under the laws of Japanwith principal office at No. 2 Takaracho, Kanagawa-ku, Yokohama-shi,Kanagawa-ken, Japan.

Respondent-Applicant Geo Parts Sales Inc. is a domestic corporationorganized and existing under the laws of the Republic of the Philippines withbusiness address at 2324 Severino Reyes St., Sta. Cruz, Manila.

The grounds for Opposition to the registration of the mark are asfollows:

1. Opposer has the exclusive right to use "GTR" for being theregistered owner of "GT-R" and "GTR", which are parts of itsregistered composite trademarks "INFINITI GT-R" and "NISSANGTR" by virtue of its Certificate of Registration No. 4-2004-005009issued on September 3, 2006 and Certificate of Registration No. 4~

2005-008405 issued on February 19, 2007, respectively; { I

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

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

2. In these registered composite trademarks, the "GTR" and "GT-R"letter combination are included in the coverage of the registration.Said ini tiaIs "GTR" and "GT-R" are therefore protected parts of theregistration;

3. The "GTR" in the challenged application is identical and/orconfusingly similar with the dominant word "GTR" in the"NISSAN GTR" trademark and "GT-R" in the "INFINITI GT-R"trademark of the Opposer. Accordingly:

a. The "GTR" in the "GTR and Design" in the challengedTrademark Application is rendered unregistrable pursuant toSection 123.1 (d) of the IP Code;

b. The presence of other words, designs, or features in a compositemark will not erase the offense of infringement, if the copying ofthe dominant word results in the two marks becomingconfusingly similar;

c. Even if the Respondent-Applicant disclaimed the "GTR" in itstrademark as required by the Bureau of Trademarks, thedisclaimed portion will still appear as a trademark for the goodsof the applicant. It remains part of the design of the compositemark that will be actually used in commerce and be seen by thenaked eye. And because the disclaimed mark will still be visibleto the public eye, then the issue of confusing similarity ordeception of such disclaimed mark can still arise;

4. As registered owner, Opposer can prevent the subject applicationby virtue of Section 147.1 of the IP Code;

5. The "GTR" marks of Opposer are already well-known and hence,under Section 123.1 (e) of the IP Code, it can no longer be registeredby Respondent-Applicant;

6. The "GTR" mark of Opposer is well-known based on the followingcriteria:a. The fame, notoriety or reputation acquired by the mark;b. The extent to which the mark has been registered in the world;c. The extent to which the mark has been used in the world; andd. The commercial value attributed to the mark in the world

7. Being well-known marks internationally and in the Philippines,an~rreproduction of the said marks using additional design an~ f

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checkered flag of Respondent-Applicant, constitutes dilution ofsuch well-known marks and therefore, is also prohibited fromregistration;

8. Opposer will be damaged by the registration of "GTR" in "GTRand Design";

The Opposer relied on the following facts to support its opposition:

1. Opposer is the world-famous car maker of NISSAN cars and it hasused the "GTR" trademark since 1969 in the cars it manufacturesand makes available to the public at large. The GTR mark has beenassociated with Nissan and is a proof of the quality, speed, safetyand technology of Nissan's standard. GTR is one of Opposer'smost valued trademarks used on its premium, high tech and highperformance race cars;

2. Opposer and its subsidiaries currently owns sixty-two (62)trademark registrations in more than 24 countries worldwide, ascontained in the list attached as Annex" A" of the authenticatedAffidavit-Testimony of Hiroshi Horie;

3. Opposer and its subsidiaries currently own approximately 27trademark applications in about 13 countries worldwide;

4. In the Philippines, Opposer owns two (2) trademark applications inconnection with goods in Class 12, to wit:

Mark Application Serial No. Date Filed ClassGT-R 4-2005-006509 July 11, 2005 12GTR 4-2005-006508 July 11, 2005 12

5. The presumption of likelihood of confusion pervades in the instantcase, given that the contending marks are identical, namely, "GTR",and the goods are identical, namely, automotive parts under Class12;

6. Because of the great success of Opposer's GT-R cars, the GT-R carsbecame immensely popular worldwide. Witness Hiroshi Horietestified that:

a. Said cars were featured in many video games depicting car rac;reand all these games have been patronized and played all overthe world;

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b. The Nissan Skyline GT-R has also appeared in numeroustelevision series and movies;

c. Said GT-R cars have also been subject of worldwide car forumswith participants coming from different countries all over theworld and various internet sites as well;

d . In the Philippines, car enthusiasts have been following theNissan GTR models in various forums. In addition, the NissanGTR has been featured and published in newspapers of generalcirculations such as the Philippine Daily Inquirer, BusinessWorld and the Manila Bulletin;

e. Local motoring magazines have also made mention andfea tured the GT-R;

On 31 August 2007, A Notice to Answer the Verified Notice ofOpposition was issued by this Office to the herein Respondent-Applicant.Respondent-Applicant filed its Answer on 12 December 2007 stating amongothers, the following defenses:

1. Respondent-Applicant does not seek for the registration of the"GTR" mark per se but of "GTR and Design" which is basically thedepiction of "the letters GTR inside an oval design and arepresentation of checkered flag beside the oval design.

2. Opposer's registered "INFINITI GT-R" and "NISSAN GTR" are notin any way similar to Respondent-Applicant's "GTR and Design"and will not result to confusion amongst the consuming public;

a. What are covered in Opposer's trademark registrations are thecompound "NISSAN GTR" and "INFINITI GTR"; not "GTR"per se. In addition, the component term, which Opposer isalluding to, in its trademark "INFINITI GT-R" is not evenexactly "GTR" but "GT-R" with a dash between the letters "GT"on one hand and "R" on the other;

b. "GTR and Design" is not confusingly similar to Opposer'sregistered trademarks "INFINITI GT-R" and "NISSAN GTR"because it has disclaimed the letters "GTR" in "GTR andDesign" and the appearance and design of the "GTR andDesign" is unique and not identical or confusingly similar to theregistered trademarks of Opposer, hence, registrable;

3. Opposer rationalizes that the "dominancy" test, instead of the"holistic" test should be applied in determining confusinglysimilarity in this case. Both tests are acceptable under PhiliPPiner

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jurisdiction and the applicability of each test depends on theattending circumstances and to a great extent to the discretion ofthe hearing officer or the judge;

4. Assuming arguendo that Opposer is correct in saying that the"dominancy" test should be applied, Opposer nonetheless fell shortof substantiating its claim that the dominant feature in its "NISSANGTR" and "INFINITI GT-R" is "GTR." It is quite obvious,however, that the dominant feature in "NISSAN GTR" is"NISSAN"; and in "INFINITI GT-R" is "INFINITL" It is hard tobelieve that "GTR," which is generic and descriptive, could be thedominant mark in Opposer's trademarks;

5. In this case, "GTR" translated as Great Tour Racing, is not exclusiveto Opposer but is widely used by other entities worldwide forsimilar products or goods;

6. "GTR" is generic as it refers to "Grand or Great Tour Racing,""Gran Tourer Racing" and "Gran Turismo Racing" used inperformance cars such as Mclaren FI, Mercedes Benz, Nissan, etc.Being generic, "GTR" cannot be appropriated exclusively byOpposer as its own;

7. No less than the Bureau of Trademarks recognized its non­registrability when it denied Opposer's applications for registrationof the "GTR" mark in Applications Nos. 4-2002-000257 and 4-2005­0006508. As correctly pointed out by the Bureau of Trademarks,"GTR" is used by a number of entities in the car and motorindustries, including Mercedes Benz, McLaren, Porsche, andKawasaki. These entities use "GTR" in conjunction with othermarks to form a single unitary trademark for various models orversions of cars, sports cars, race cars, and motor bikes. Use of thecomponent term "GTR" in those marks or trademarks has a specialconnotation that the car in which it is used is of high performanceand that it has the ability to compete in sports or motorbike races;

8. Clearly, "GTR" is a generic or descriptive term. When a mark isdescriptive, it cannot be appropriated by any person, even if it ispart of the proprietor's registered trademark;

9. There is no proof that Opposer will be damaged by the registrationof "GTR" in "GTR and Design";

10. That "GTR is well-known" is irreleVan~

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11. Assuming for the sake of argument that "GTR" is well-known, it is"well-known" in relation to numerous motor and car companieswho use it as a component of their respective marks;

12. There can be no dilution of the "GTR" mark by Respondent's useand registration of its "GTR and Design" trademark. The "GTR"mark is not distinct due to its extensive and worldwide use byvarious entities. Stated otherwise, the "GTR" mark is already a"diluted" mark to begin with. As such, it cannot be diluted further;

13. "GTR" is not exclusively associated with Opposer but with otherdifferent entities. If at all, "GTR" is distinctive vis-a-visperformance cars, irrespective of brand and source.

On 21 December 2007, Opposer filed its Reply to the Verified Answer.In due course, this Office conducted several preliminary conferences, and inits Order dated 28 February 2008, it directed the termination of preliminaryconference and directed the parties to submit their position papers. TheOpposer submitted its Position Paper on 14 March 2008 while theRespondent-Applicant submitted its Position Paper on 24 March 2008 . Hence,this case is now ripe for decision.

The main issue to be resolved in this case is: WHETHER OR NOTRESPONDENT-APPLICANT'S TRADEMARK "GTR AND DESIGN"SHOULD BE GRANTED REGISTRATION.

This Office rules in the affirmative.

The trademark application subject of opposition was filed during theeffectivity of Republic Act No. 8293, otherwise known as the IntellectualProperty Code of the Philippines (IP Code). Thus, the applicable provision oflaw in resolving the issue, as stated, is Section 123.1 (d) of the Republic ActNo. 8293, which provides:

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

x x x(a) Is identical with a registered mark belonging to a different

proprietor or mark with an earlier filing or priority date, in respectof:a) The same goods or services, orb) Closely related goods or services, orc) If it nearly resembles such a mark as to be likely to deceive orr--

cause confusion; I I6

x x x

The foregoing provIsIon is clear that the law does not allow theregistration of a mark which appears to resemble another registered mark if itwill cause confusion or deception to the purchasing public . Hence, thedetermining factor is whether the use of the competing marks in connectionwith the goods or business will likely cause confusion.

In this instant case, Opposer as the owner of the composite trademarks"NISSAN GTR" and "INFINITI GTR" has the right to oppose the registrationof any mark that is confusingly similar and/or identical to that mark alreadyregistered.

In ascertaining whether one trademark is confusingly similar to or is acolorable imitation of another, two kinds of test have been developed. The"Dominancq Test" applied in Asia Brewery, Inc., vs. Court of Appeals, 224SCRA 437; Co Tiong vs. Director of Patents, 95 Phil 1; Lim Hoa vs. Directorof Patents, 100 Phil. 214; American Wire & Cable Co., vs. Director of Patents,31 SCRA 544; Philippine Nut Industry, Inc. vs . Standard Brands, Inc., 5 SCRA575; Converse Rubber Corporation vs. Universal Rubber Products, Inc., 147SCRA 154; McDonald's Corporation v. Macjoy Fastfood Corporation GR No.166115 February 2, 2007 and the "Holistic Test" developed in Del MonteCorporation vs. Court of Appeals, 181 SCRA 410; Mead Johnson & Co., vs.N. V.J. Van D Corp., Ltd., 7 SCRA 771; Bristol Myers Co. vs. Director ofPatents, 17 SCRA 128; Fruits of the Looms vs. Court of Appeals, 133 SCRA405.

As its title implies, the test of dominancy focuses on the similarity ofthe prevalent essential or dominant features of the competing trademarkswhich might cause confusion or deception. On the other side of the spectrum,the Holistic Test mandates that the entirety of the mark in question must beconsidered in determining confusing similarity.

Applying the Dominancy Test in this particular case, the dominantfigures or letters in Opposer's trademarks, namely the "NISSAN GTR" and"INFINITI GT-R" are NISSAN and INFINITI respectively and not GTR asclaimed by the former. Thus, the use by the Respondent-Applicant of GTR inits trademark will not cause confusion and will not mislead the public intotaking its product as part of the Opposer's goods and services. Thus, whereno confusion exists, the Respondent-Applicant should be allowed to registerits trademark as ruled by the Honorable Supreme Court in the case ofPhilippine Refining Co., Inc., vs. Ng Sam (115 SCRA 476) stating that:

"x x x registration of a trademark which so resembles another alreadyregistered or in use should be denied, where to allow such registrationcould likely result in confusion, mistake or deception to the consumer~

Conversely, where no confusion is likely to arise, as in this case,registration of a similar or even identical mark may be allowed."

The competing marks are reproduced below for comparison:

INFINITI GT·R NISSAN ·GTR

Opposer's marks

Respondent-Applicant's mark

Even taking in its entirety, using the Holistic Test, the trademark ofRespondent-Applicant cannot be taken as related to or connected with thegoods and services of the Opposer. Respondent-Applicant's mark is differentand unique in that it contains the letters GTR inside an oval design and arepresentation of checkered flag beside the oval design totally different fromthe trademarks of the Opposer. There can be no dilution of the distinctivenessof the Opposer's marks.

Now going to the issue of whether or not the letters GTR is a generic ordescriptive mark that cannot be registered and appropriated by anyone, thisOffice resolves in the affirmative.

Generic Marks, as defined in the case of Societe Des Produits Nestle,Et. AI. vs. Court of Appeals, C.R. No. 112012, April 4, 2001, are commonwords that describe an entire class of goods or services. Generic terms are~

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those which constitute "the common descriptive name of an article orsubstance," or comprise the "genus of which the particular product is aspecies," or are "commonly used as the name or description of a kind ofgoods," or "imply reference to every member of a genus and the exclusion ofindividuating characters," or "refer to the basic nature of the wares or servicesprovided rather than to the more idiosyncratic characteristics of a particularproduct, " and are not legally protectable. On the other hand, a term isdescriptive and therefore invalid as a trademark if, as understood in itsnormal ingredients of a product to one who has never seen it and does notknow what it is," or "if it forthwith conveys an immediate idea of theingredients, qualities or characteristics of the goods," or if it clearly denoteswhat goods or services are provided in such a way that the consumer doesnot have to exercise powers of perception or imagination.

The Bureau of Trademarks in requiring the Respondent-Applicant todisclaim the mark "GTR" recognizes that fact that it is a generic or descriptivemark that cannot be registered and cannot be appropriated by anyone. TheBureau ruled in Paper No. 07 that the term GTR is customarily used inautomobile industry to refer to performance cars (Gran Turismo Racers, GranTourer Racing, Grand or Great Tour Racing). As a matter of fact, manycompanies use GTR like Mclaren Fl GTR, Mercedes Benz CLK GTR andNissan GTR.

Citing foreign authorities on the matter, the Supreme Court in the caseof Ong Ai Gui vs. Director of the Philippine Patent Office, G.R. No. L-6235March 28, 1955 explains:

"xxx A descriptive word may be admittedly distinctive, especially ifthe user is the first creator of the article. It will however, be deniedprotection, not because it lacks distinctiveness but rather becauseothers are equally entitled to its use." (2Callman, Unfair Competitionand Trademarks, pp. 869-870)

The Opposer did not specifically deny that the mark "GTR" is alsoused by other car manufacturers namely McLaren, Mercedes Benz, Porscheand Kawasaki to form a single unitary trademark for various models orversions of cars, sports cars, race cars, and motor bikes. This bolsters the factthat "GTR" is a descriptive or generic term that is used to refer to a specificclass or kind of performance cars and thus cannot be appropriated by theOpposer.

The use of a generic name in a trade mark is always conditional. i.e.subject to the limitation that the registrant does not acquire the exclusive rightto the descriptive or the generic term or word. " .. . A combination of marks o:y­words may constitute a valid trademark or (in case of words) a trade nam~ I

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even though some of the constituent portions thereof would not be subjectseparately, to exclusive appropriation as such. Thus, although a word maybe descriptive and not subject to exclusive use as a trademark, it mayproperly become subject of a trademark by combination with another wordor term which is non descriptive, although no exclusive right to the word orterm is created. (52 Am Jur 553)."

The fact that the Opposer was able to obtain registration of itstrademarks "NISSAN GTR" and "INFINITI GT-R" does not give the Opposerexclusive right to the use of the term GTR but only to the composite marks"NISSAN GTR" and "INFINITI GT-R" .

Also, as claimed by the Opposer, its trademarks have been registeredin many countries in the world, but this does not mean that its trademarks areprotected in the Philippines automatically.

The protection under foreign registrations could not extend to thePhilippines because "the law of trademarks rests upon the doctrine ofnationality or territoriality. The United States, from which our trademarklaw has been copied, and most other countries respect this basic premise.The scope of protection is determined by the law of the country in whichprotection is sought, and international agreement for the protection ofindustrial property are predicated upon the same principle. x x x" "The userequired as the foundation of the trademark rights refers to local use at homeand not abroad. x x x" (Callman, Unfair Competition and trademarks, par. 76­4, p. 1006).

Further, as held in Sterling Products International, Inc., vs.Farbenfabriken A.G., 44 SCRA 1226-1227.

"The United States is not the Philippines. Registration inthe United States is not registration in the Philippines. x x xPlaintiff itself concedes that the principle has beenrecognized in the Philippines. Accordingly, the registration inthe United States of the BAYER trademark would not of itselfafford plaintiff protection for use by the defendants in thePhilippines of the same trademark for the same or differentgoods."

In another decision, the Supreme Court held that a foreign companyselling a brand of shoes abroad but not in the Philippines has no goodwill thatwould be damaged by registration of the same trademark in favor of thedomestic corporation which has been using it for years here. (BATAj#/Industries LTD., vs. Court ofAppeals, 114 SCRA 318). / I

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Having resolved that the mark "GTR" is a generic or descriptive markthat cannot be registered as it is used by various car manufacturers to refer toa specific performance cars, the issue of whether or not the Opposer's marksis well-known is of no moment, and should no longer be delved into.

WHEREFORE, premises considered, the Notice of Verified Oppositionis, as it is hereby DENIED. Consequently, Application bearing Serial No. 4­2004-001154 filed by GEO PARTS SALES, INC. on February 9, 2004 for theregistration of the mark "GTR and Design" ("GTR" disclaimed) used onautomotive spare parts specifically brake disc pad and brake shoes withlining, under Class 12 namely is, as it is hereby, GIVEN DUE COURSE.

Let the filewrapper of "GTR and Design", subject matter of this casetogether with a copy of the decision be forwarded to the Bureau ofTrademarks for appropriate action.

SO ORDERED.

Makati City, May 22, 2008.

E LLITA BELTRAN-ABELARDODirector, Bureau of Legal Affairs

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