Title
ABS-CBN Publishing, Inc. vs. Director of the Bureau of Trademarks
Case
G.R. No. 217916
Decision Date
Jun 20, 2018
ABS-CBN Publishing's "METRO" trademark application was denied for being identical to existing marks. Appeals were dismissed due to procedural non-compliance and failure to prove distinctiveness, affirming IPO's decision.
A

Case Digest (G.R. No. 11490)

Facts:

  • Application and Examination
  • In 2004, petitioner ABS-CBN Publishing, Inc. filed IPO Trademark Application No. 4-2004-004507 for “METRO” under Nice Class 16 (magazines).
  • Examiner Arlene M. Icban refused registration under Section 123.1(d) of the IP Code, citing three prior registrations: “Metro” (word) Nos. 42000002584 and 42000002585 by Metro International S.A., and “Inquirer Metro” No. 42000003811 by Philippine Daily Inquirer, Inc.
  • Administrative Appeals
  • The examiner’s Final Rejection was sustained by the IPO Bureau Director for confusing similarity, abandonment under the old Trademark Law, and lack of secondary meaning.
  • On September 19, 2013, the IPO Director General (ODG) denied petitioner’s appeal; petitioner received the decision on October 9, 2013 and filed two motions for extension of time to file its petition for review: first until November 8, 2013 (granted), second until November 23, 2013 (unacted upon).
  • Court of Appeals Proceedings
  • Petitioner failed to file its petition for review by the November 8, 2013 deadline and instead filed on November 11, 2013.
  • On May 20, 2014, the Court of Appeals denied the second extension and dismissed the petition for untimeliness; on April 15, 2015 it denied the motion for reconsideration.

Issues:

  • Procedural Issue
  • Whether the Court of Appeals erred in dismissing petitioner’s petition for review for failure to file within the prescribed period and in granting only one extension of time.
  • Substantive Issue
  • Whether the IPO Director General correctly refused registration of “METRO” under Section 123.1(d) for being identical with or confusingly similar to existing registered marks.

Ruling:

  • (Subscriber-Only)

Ratio:

  • (Subscriber-Only)

Doctrine:

  • (Subscriber-Only)

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