G.R. No. 166886 - Mattel, Inc. vs. Francisco

On November 14, 1991, Jimmy A. Uy filed a trademark application (Serial No. 78543) with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) for the registration of the trademark “BARBIE” to be used on confectionary products (e.g., milk, chocolate, candies, milkbar, and chocolate candies) under Class 30 of the International Classification of Goods.
The application was subsequently published in the March–April 1993 issue of the BPTTT Official Gazette (Vol. VI, No. 2), released on May 31, 1993.

On July 19, 1993, Mattel, Inc.—a corporation organized under the laws of Delaware, USA—filed a Notice of Opposition against Uy’s trademark, contending that his “BARBIE” mark was confusingly similar to its own well-known trademark used on dolls, doll clothes, doll accessories, and other similar commercial products.
Uy responded on August 26, 1993 by filing an Answer denying the allegations and asserting that there was no similarity between the two marks in respect to the differing goods.

Transition to the Intellectual Property Office (IPO) and Administrative Proceedings

The enactment of Republic Act (R.A.) No. 8293 (the Intellectual Property Code of the Philippines) on January 1, 1998, led to the abolition of the BPTTT and the transfer of its functions to the newly established Intellectual Property Office (IPO).
On May 18, 2000, the Director of the Bureau of Legal Affairs, IPO, rendered a Decision dismissing Mattel’s opposition, giving due course to Uy’s application on the premise that there was no confusing similarity between the marks because the goods were non-competing or unrelated.

Following the Decision, Mattel filed a Motion for Reconsideration on June 5, 2000. This was followed by the issuance of a Resolution on May 27, 2002, which denied the motion.
On June 24, 2002, Mattel filed an Appeal Memorandum with the Office of the Director General, IPO. Despite due notice, Uy did not file any comment, and on October 7, 2002, he was deemed to have waived his right to do so.
On September 3, 2003, the Director General, Emma Francisco, issued a Decision denying the appeal, primarily on the grounds that there was no evidence of Mattel’s venture into confectionary products and noting that Uy’s trademark application had been abandoned due to his failure to file the required Declaration of Actual Use (DAU).
Mattel subsequently filed a Motion for New Trial on September 12, 2003, based on “newly discovered evidence” (its own Trademark Application Serial No. 4-1997-124327 for a “BARBIE” mark for confectionaries), which was denied by an Order dated October 22, 2003.
A Petition for Review was then filed by Mattel with the Court of Appeals (CA) on November 12, 2003, which was processed without a comment from Uy. The CA, in its Decision on June 11, 2004, affirmed the Director General’s ruling.
A subsequent Motion for Reconsideration filed by Mattel on July 15, 2004 was denied by the CA in a Resolution dated January 19, 2005.

Mattel raised several issues with the petition for review, including the question of whether the goods offered by the parties were sufficiently related to cause confusion, the propriety of deeming Uy’s application as withdrawn for failure to file the DAU, the inference of an intent to trade on its goodwill due to the identical nature of the marks, and the admissibility of its Trademark Application Serial No. 4-1997-124327 as “newly discovered evidence.”
Uy, on the other hand, argued that the case had become moot and academic since his failure to file the DAU represented a judicial admission of abandonment of his trademark rights.

Whether it is grave error for the Court of Appeals to rule that the goods offered by Mattel (dolls, doll clothes, and related products) and those offered by Uy (confectionary products) are unrelated, thereby minimizing the likelihood of confusion when identical trademarks are used.
Whether it is erroneous to sustain the finding that it is premature to declare Uy’s trademark application withdrawn for non-filing of the DAU, given that the filing of the DAU is within the prerogative of the Director of Trademarks.
Whether Uy, by adopting an identical “BARBIE” mark in spelling and style, should be presumed to have intended to cash in on and ride the goodwill and widespread recognition of Mattel’s mark.
Whether Mattel’s Trademark Application Serial No. 4-1997-124327 should be considered “newly discovered evidence” in support of its claims.
Whether, given Uy’s judicial admission of abandonment by failing to file the DAU, there remains a live controversy justiciable before the court.