Case Summary (G.R. No. 217916)
Petitioner
ABS-CBN Publishing, Inc. sought registration of the mark "METRO" for magazines (Nice Class 16) via application filed in 2004; it asserted prior use through its predecessor and earlier application under the old Trademark Law (R.A. 166) which was later deemed abandoned.
Respondent
The Director of the Bureau of Trademarks (IPO) affirmed the examiner’s refusal to register the "METRO" mark on grounds of identity/confusing similarity with earlier-registered marks belonging to Metro International S.A. and Philippine Daily Inquirer, Inc., and on related grounds including abandonment under the old Trademark Law and lack of acquired secondary meaning.
Key Dates
- Original administrative application: 2004.
- Petitioner’s earlier application under old law: November 3, 1994 (docketed as 4-1994-096162) and deemed abandoned.
- IPO Director and Director General decisions upholding rejection: culminated in ODG Decision dated September 19, 2013 (petitioner received copy October 9, 2013).
- Court of Appeals granted one extension until November 8, 2013; petitioner filed petition for review on November 11, 2013 (three days late).
- Court of Appeals resolutions denying extension and dismissing petition, and denying reconsideration, were promulgated May 20, 2014 and April 15, 2015 respectively.
- Supreme Court resolution affirmed those rulings (G.R. No. 217916).
Applicable Law
- Constitution: 1987 Philippine Constitution (applicable because the decision date is 1990 or later).
- Intellectual Property Code (R.A. No. 8293), in particular Section 123.1(d) (absolute bar to registration of marks identical with registered marks of another proprietor or earlier filing) and Section 155.1 (infringement defined by colorable imitation or reproduction or dominant feature thereof).
- Old Trademark Law: R.A. No. 166 provisions on duration and required affidavits of use (Section 12) — relevant to abandonment.
- Rules of Court: Rule 43, Section 4 (period of appeal—15 days) and related jurisprudence on motions for extension of time.
- Rules/Procedures for Intellectual Property Cases: A.M. No. 10-3-10-SC (Rule 18, Sec. 3 — presumption of likelihood of confusion where identical marks are used for identical goods).
Factual Background
Petitioner filed a trademark application for "METRO" (magazines). Examiner Arlene M. Icban refused registration, citing identity/confusing similarity with three registered marks: (1) "Metro" (word) — Metro International S.A. (Regn. No. 42000002584), (2) "Metro" (logo) — same registrant (Regn. No. 42000002585), and (3) "Inquirer Metro" — Philippine Daily Inquirer, Inc. (Regn. No. 42000003811). Petitioner responded; examiner reiterated refusal and issued a Final Rejection. Appeals to the Bureau Director and then to the Office of the Director General (ODG) of the IPO upheld the refusal.
Administrative Decisions and Grounds
The IPO examiners and reviewing officials found (a) identity/confusing similarity between the applicant mark and cited marks, (b) the petitioner’s earlier application under the old law was deemed abandoned and thus conferred no existing vested right under the IP Code, and (c) the applicant mark did not possess acquired secondary meaning. The ODG concluded the appeal had no merit and denied registration under R.A. 8293, Sec. 123.1(d).
Procedural History in the Courts
Upon receipt of the ODG decision (October 9, 2013), petitioner filed a motion for extension of time to file petition for review with the Court of Appeals, seeking 15 days (until November 8, 2013). Petitioner filed a second motion seeking further extension; the Court of Appeals granted only the first extension and warned against further extension. Petitioner nonetheless filed its petition for review on November 11, 2013, three days late. The Court of Appeals denied the second motion and dismissed the petition for failure to file within the reglementary period; its denial of reconsideration was later affirmed. Petitioner elevated the matter to the Supreme Court by Rule 45 petition.
Issues Presented
- Procedural: Whether the Court of Appeals erred in dismissing the petition for review for failure to file within the prescribed time and for denying the second motion for extension.
- Substantive: Whether the ODG and IPO correctly refused registration of the mark "METRO" as identical or confusingly similar to earlier-registered marks.
Supreme Court’s Procedural Analysis and Rationale
- Appeals are statutory privileges, not constitutional rights; they must comply with statutory or rule-based requisites (citing prior jurisprudence). Perfection of appeals within the reglementary period is mandatory and jurisdictional; failure to file within the period renders the questioned decision final and the appellate court without jurisdiction to entertain the appeal.
- Rule 43, Section 4 of the Rules of Court requires appeals to be taken within 15 days from notice of the resolution. Only one motion for extension of time is generally allowed (subject to payment requirements); additional extensions are discretionary and granted only for compelling reasons.
- The petitioner’s reasons for seeking a second extension (heavy workload and attendance at an international lawyers’ conference) were deemed insufficient and did not constitute the exceptional circumstances warranting relaxation of the reglementary period. The Court emphasized counsel’s duty to monitor deadlines and that personal obligations or heavy workload do not excuse noncompliance.
- The Court warned against assuming that a motion for extension will be granted; doing so undermines the discretionary power of the courts and risks setting an undesirable precedent. Existing jurisprudence supports the Court of Appeals’ discretionary denial of a second extension.
- Conclusion on procedure: No exceptional or meritorious circumstance justified excusing the delay; therefore, dismissal of the petition for review by the Court of Appeals was proper and was affirmed.
Supreme Court’s Substantive Analysis on Trademark Law
- Section 123.1(d) (R.A. 8293) bars registration of marks identical with registered marks of a different proprietor or with earlier filing/priority date for the same or closely related goods, or if the mark so nearly resembles another as to be likely to deceive or cause confusion.
- The Court applied the dominancy test (now emphasized under the IP Code and Section 155.1) focusing on dominant features of marks to determine identity or confusing similarity. The dominancy test rejects reliance on minor differences introduced by alleged infringers to avoid a finding of similarity. Jurisprudence recognizes that colorable imitation and retention of a dominant feature suffices to create likelihood of confusion.
- Here, the dominant and essential feature of the applicant mark is the word "METRO," which is identical visually and aurally to the cited registered marks. Even where the cited marks include devices or additional words (e.g., "Philippine Daily Inquirer"), the dominant element remains the word "METRO." The identity of that dominant word is likely to cause confusion as to origin and goods.
- The Rules of Procedure for IP Cases (A.M. No. 10-3-10-SC) presumes likelihood of confusion where identical marks are used for identical goods. Examiner Icban found the cited marks and the applicant mark covered substantially identical goods (magazines and printed publications under Nice Class 16), prompting the presumption. Actual confusion is not required; the mere likelihood suffices to justify refu
Case Syllabus (G.R. No. 217916)
Case and Decision Data
- Citation: 833 Phil. 791; 115 OG No. 7, 1547 (February 18, 2019); SECOND DIVISION; G.R. No. 217916, June 20, 2018.
- Parties: ABS-CBN Publishing, Inc. (petitioner) vs. Director of the Bureau of Trademarks (respondent).
- Nature of case before the Supreme Court: Petition for Review on Certiorari under Rule 45 of the Rules of Court, challenging Resolutions of the Court of Appeals dated May 20, 2014 and April 15, 2015 which denied petitioner’s "Motion for Extension of Time (To File Petition for Review)" and upheld the denial.
- Ponente: REYES, JR., J.
- Lower-court actions challenged: Court of Appeals Resolutions (May 20, 2014; April 15, 2015) which dismissed the petition for failure to file within the prescribed period and denied reconsideration.
Antecedent Facts — Application and Examination
- In 2004, petitioner filed with the Intellectual Property Office of the Philippines (IPO) an application to register the trademark "METRO" (applicant mark) under Class 16 (Nice classification), specifically for "magazines." (Rollo, Vol. I, p. 46; p. 10.)
- The application was assigned to Examiner Arlene M. Icban (Examiner Icban), who, after examination, refused registration on the ground that the applicant mark is identical with three cited marks and therefore unregistrable under Section 123.1(d) of the Intellectual Property Code (IPC). (Rep. Act No. 8293 (1997), as amended.)
- The three cited marks identified by Examiner Icban were:
- "Metro" (word) by Metro International S.A., Application No. 42000002584. (Rollo, Vol. I, p. 417.)
- "Metro" (logo) by Metro International S.A., Application No. 42000002585. (Rollo, Vol. I, p. 417.)
- "Inquirer Metro" by Philippine Daily Inquirer, Inc., Application No. 42000003811. (Rollo, Vol. I, p. 417.)
- On August 16, 2005, petitioner submitted a written response to Examiner Icban; Examiner Icban, through Official Action Paper No. 04, reiterated her refusal. (Rollo, Vol. I, pp. 420–423; Official Action Paper No. 04.)
- Examiner Icban’s "Final Rejection" stated: the mark subject of the application cannot be registered because it is identical with the cited marks METRO with Regn. No. 42000002584 and Regn. No. 42000003811; METRO being dominant word causes remarkable similarity in sound, spelling, meaning, connotation, overall commercial impression, covers identical goods and flows through the same channel of trade; concurrent use is likely to cause confusion and registration is proscribed under R.A. 8293, Sec. 123.1(d). (Rollo, Vol. I, p. 446.)
Administrative Appeals and Decisions (IPO)
- Petitioner appealed Examiner Icban’s refusal to the Director of the Bureau of Trademarks; the Director affirmed Examiner Icban’s findings, concluding applicant and cited marks were confusingly similar such that there may be confusion as to goods and source. The Director’s fallo read: "WHEREFORE, premises considered, the instant appeal is hereby DENIED and the Final Rejection contained in Official Action Paper No. 04, SUSTAINED." (Rollo, Vol. I, p. 472.)
- Petitioner sought reconsideration and thereafter appealed to the Office of the Director General (ODG) of the IPO. After memorandum submissions, the ODG, on September 19, 2013, rendered a Decision upholding Examiner Icban and the Bureau Director. The ODG’s conclusions included:
- (1) The applicant and cited marks are identical and confusingly similar.
- (2) The petitioner’s mark was deemed abandoned under the old Trademark Law, and prior use therefore did not create a vested right under the IPC.
- (3) The applicant mark has not acquired secondary meaning. (Rollo, Vol. I, pp. 107–110.)
- The fallo of the ODG decision reads: "Wherefore, premises considered, the appeal is hereby DENIED and the Decision dated 29 March 2010 and the Order denying the Appellant's Motion for Reconsideration, of the Director of the Bureau of Trademarks, are hereby SUSTAINED. The Appellant's Trademark Application No. 4-2004-004507 for METRO is likewise DENIED." (Rollo, Vol. I, p. 110.)
Post-ODG Procedural Steps, Motions and Court of Appeals Rulings
- Petitioner received a copy of the ODG decision on October 9, 2013. (Rollo, Vol. I, p. 122–126; Vol. II, pp. 624–628.)
- On October 9, 2013 (same day of receipt), petitioner filed with the Court of Appeals a "Motion for Extension of Time (To File Petition for Review)" requesting a 15-day extension from October 24, 2013 to November 8, 2013 to file its petition for review. (Rollo, Vol. I, pp. 122–126; Vol. II, pp. 624–628.)
- On October 25, 2013, petitioner filed a second motion for extension, seeking an extension from November 8 to November 23, 2013. (Rollo, Vol. I, pp. 127–130; Vol. II, pp. 629–632.)
- On October 25, 2013, the Court of Appeals issued a Resolution granting petitioner’s first motion for extension "subject to the 'warning against further extension,'" thereby extending the deadline only until November 8, 2013. (Rollo, Vol. II, p. 633.)
- Relying on the unacted-upon second motion, petitioner did not file its petition for review by November 8, 2013 and instead filed it on November 11, 2013 — three days late. (Rollo, Vol. I, p. 68.)
- Petitioner’s stated justifications for the delay included: (1) it received a copy of the October 25, 2013 Resolution only on November 8, 2013 at 11:30 a.m.; (2) that same day, public offices in the National Capital Judicial Region were suspended in view of Typhoon Yolanda through the Court’s Public Information Office; and (3) November 9 and 10, 2013 were Saturday and Sunday, respectively. (Rollo, Vol. I, pp. 15–16.)
- On May 20, 2014, the Court of Appeals rendered the assailed Resolution ruling that petitioner violated the October 25, 2013 Resolution and Section 4, Rule 43 of the Rules of Court regarding the period of appeal. The Court of Appeals denied petitioner’s second motion for extension and dismissed the petition for being filed beyond the reglementary period. (Rollo, Vol. I, pp. 58–61.)
- On April 15, 2015, the Court of Appeals denied petitioner’s motion for reconsideration. (Rollo, Vol. I, pp. 63–67.)
Issues Presented to the Supreme Court
- Procedural issue: Whether the Court of Appeals erred in dismissing the petition outright for petitioner’s failure to file its petition for review within the time prescribed by the Court of Appeals and Section 4, Rule 43 of the Rules of Court.
- Substantive issue: Whether the ODG was correct in refusing to register the applicant mark for being identical with and confusingly similar to the cited marks already registered with the IPO (Section 123.1(d), IPC).
Relevant Statutes, Rules and Authorities Cited
- Intellectual Property Code (Rep. Act No. 8293, 1997), as amended:
- Section 123.1(d): A mark cannot be registered if "identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date" with respect to the same or closely related goods/services or likely to deceive/cause confusion. (Rollo references IPC, Sec. 123.1(d).)
- Section 155.1 (Remedies; Infringement) — defines infringement as use in commerce of "any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof" likely to cause confusion. The Court emphasized the statutory incorporation of the dominancy test in Sec. 155.1. (Quoted in rollo.)
- Section 5(b): role of agency empowered to examine marks (referenced as reason to accord weight to Examiner’s findings).
- Section 236: referenced by ODG as not preserving rights where none were acquired under prior law (as cited by ODG in the record).
- Rules of Court (1997), Rule 43, Section 4: Appeal period — "The appeal shall be taken within fifteen (15) days from the notice of the award, judgment, final order or resolution..." (cited and applied).
- Rules of Procedure for Intellectual Property Cases (A.M. No. 10-3-10-SC, 2011), Rule 18, Section 3: "Likelihood of confusion shall be presumed in case an identical sign or mark is used for identical goods or services." (Cited by the Court.)
- Old Trademark Law (Rep. Act No. 166, 1947), Section 12 (Duration): Certificate of registration remains in force for twenty years but registrant must file affidavits of use on anniversaries or registration may be cancelled — legal basis for abandonment under the old law. (Quoted in the opinion.)
Precedents and Doctrines Relied Upon by the Court
- Procedural jurisprud