G.R. No. 141221-36 - People vs. Spouses Reichl

Antecedent Facts
On 12 April 2000 petitioner Wilton Dy and/or Philites Electronic & Lighting Products (“PHILITES”) filed Trademark Application Serial No. 4-2000-002937 for the mark “PHILITES & LETTER P DEVICE” covering fluorescent bulbs, incandescent lights, starters and ballasts under Class 11.
On 17 March 2006 respondent Koninklijke Philips Electronics, N.V. (“PHILIPS”) filed a Verified Notice of Opposition alleging that the approval of the application violated Sections 123.1(d), (i), (iii), 123.1(e), 147 and 168 of Republic Act No. 8293 (IP Code); would mislead the public; constitute fraud; dilute and tarnish PHILIPS’s well-known mark; and unfairly profit from PHILIPS’s goodwill.

Administrative Proceedings
On 9 November 2006 the Intellectual Property Philippines Bureau of Legal Affairs (IPP-BLA) Director Abelardo rendered a Decision denying PHILIPS’s Opposition and granting registration of PHILITES. The IPP-BLA found:

The marks differ visually (device, shield emblem, stars, wavy lines) and aurally (long vs short vowel in the last syllable).
Packaging colors and descriptive phrases differ; color alone is not registrable as a trademark.

On 16 April 2008 the IPP Office of the Director General (IPP-DG) affirmed the IPP-BLA Decision, dismissing PHILIPS’s appeal for lack of merit and directing registration of PHILITES.

Judicial Proceedings
On 7 October 2008 the Court of Appeals (CA) in CA-G.R. SP No. 103350 reversed and set aside the IPP-DG Decision, dismissed PHILITES’s application, and awarded costs against it. The CA held that:

The mark as drawn differs from the actual packaging, causing confusing similarity with PHILIPS’s packaging.
PHILITES is not an arbitrary coinage but deliberately adopted the dominant letters “PHILI” to ride on PHILIPS’s goodwill.

On 18 December 2008 the CA denied PHILITES’s Motion for Reconsideration. PHILITES then filed a Petition for Review on Certiorari before the Supreme Court.

Whether respondent’s mark PHILIPS is a registered and well-known mark in the Philippines.
Whether petitioner’s mark PHILITES is identical with or confusingly similar to respondent’s mark, thus barred from registration under Section 123 of the IP Code.