Case Digest (G.R. No. 222366)
Facts:
On December 2, 2005, Starwood Hotels and Resorts Worldwide, Inc. filed for registration of the trademark "W" for Classes 43 and 44, and the mark was registered on February 26, 2007; on April 20, 2006, W Land Holdings, Inc. applied for a "W" mark for Class 36, which Starwood successfully opposed before the BLA in April 2008. On May 29, 2009, W Land filed a Petition for Cancellation under Section 151.1 of RA 8293 for non-use; the BLA ordered cancellation on May 11, 2012, the IPO Director General reversed on January 10, 2014, the Court of Appeals affirmed on June 22, 2015, and the Supreme Court denied review in this petition.Issues:
- Did the Court of Appeals correctly affirm the IPO Director General's dismissal of W Land's Petition for Cancellation?
- Can the use of an interactive website and related online features constitute "actual use" of a mark in the Philippines sufficient to defeat a non-use cancellation under Section 151.1 and Rule 205?
Ruling:
The petition was denied Case Digest (G.R. No. 222366)
Facts:
- Parties and subject mark
- W Land Holdings, Inc. (Petitioner) sought registration of the trademark "W" for Class 36 on April 20, 2006.
- Starwood Hotels and Resorts Worldwide, Inc. (Respondent) filed an application for registration of the trademark "W" for Classes 43 and 44 on December 2, 2005, which was granted on February 26, 2007.
- Early proceedings and opposition
- Starwood opposed W Land's Class 36 application; the IPO Bureau of Legal Affairs (BLA) in IPC No. 14-2007-00084 found on April 23, 2008 that W Land's "W" mark was confusingly similar to Starwood's earlier-filed mark.
- W Land moved for reconsideration on June 11, 2008; the BLA denied the motion in a Resolution dated July 23, 2010.
- Petition for cancellation by W Land
- On May 29, 2009, W Land filed a Petition for Cancellation under Section 151.1 of Republic Act No. 8293 (the *Intellectual Property Code of the Philippines*), alleging non-use and abandonment of Starwood's "W" mark in the Philippines.
- W Land contended that Starwood had no hotel or establishment in the Philippines rendering the registered services and that Starwood's registration barred W Land's own application for real estate services.
- Starwood's defense and Declaration of Actual Use
- Starwood filed a notarized Declaration of Actual Use (DAU) dated April 3, 2008, with evidence of use submitted on December 2, 2008.
- Starwood asserted actual use in the Philippines through direct and indirect hotel operations, franchisees, and interactive websites allowing Philippine residents to make reservations and bookings.
- BLA decision on cancellation petition
- In a Decision dated May 11, 2012, the BLA granted W Land's petition and ordered cancellation of Starwood's registration, finding the DAU and attachments showed use only abroad and did not prove actual use within the Philippines.
- The BLA stated that use contemplated under Section 151.1(c) must attach the mark to goods or services sold or availed of and located in the Philippines.
- Appeal to the IPO Director General
- Starwood appealed to the IPO Director General (IPO DG).
- In a Decision dated January 10, 2014, the IPO DG reversed the BLA, accepted Starwood's DAU and attachmen...(Subscriber-Only)
Issues:
- Main legal question
- Whether the Court of Appeals correctly affirmed the IPO DG's dismissal of W Land's Petition for Cancellation of Starwood's "W" mark for non-use.
- Subsidiary factual-legal questions
- Whether interactive websites and related internet materials can constitute *actual use* of a mark *within the Philippines* under Section 151.1 and Rule 205.
- Whether Starwoo...(Subscriber-Only)
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)