ABS-CBN Publishing, Inc. vs. Director of the Bureau of Trademarks

Factual Background

The petitioner filed an application to register the trademark "METRO" in class 16 for magazines in 2004. Examiner Arlene M. Icban refused registration on the ground that the applicant mark was identical or confusingly similar to three earlier-registered marks: "Metro" (word), "Metro" (logo), both owned by Metro International S.A., and "Inquirer Metro" owned by Philippine Daily Inquirer, Inc. Examiner Icban issued an Official Action Paper reiterating the refusal and later a Final Rejection, finding identity in sound, spelling, meaning and overall commercial impression and concluding that confusion as to source was likely. The petitioner appealed to the Director of the Bureau of Trademarks, who sustained Examiner Icban's Final Rejection. The petitioner then appealed to the Office of the Director General (ODG) of the IPO. On September 19, 2013, the ODG denied the appeal, finding that the marks were identical and confusingly similar, that the petitioner's prior application under the old Trademark Law had been deemed abandoned, and that the applicant mark had not acquired secondary meaning.

Proceedings Below

The petitioner received a copy of the ODG Decision on October 9, 2013. On the same day it filed a motion for extension of time to file a petition for review with the Court of Appeals, seeking until November 8, 2013. On October 25, 2013, the petitioner filed a second motion seeking further extension to November 23, 2013. The Court of Appeals granted only the first motion by resolution dated October 25, 2013, and set the deadline at November 8, 2013, warning against further extension. The petitioner filed its petition for review on November 11, 2013, three days late. The Court of Appeals denied the petition for lack of compliance with the reglementary period and denied the petitioner's motion for reconsideration in a resolution dated April 15, 2015. The petitioner then filed the present petition for review on certiorari under Rule 45.

The Issues Presented

The petition pressed two principal issues. First, a procedural question whether the Court of Appeals erred in dismissing the petition for review because the petitioner failed to file within the time prescribed by the Court of Appeals. Second, a substantive question whether the ODG erred in refusing registration on the ground that the applicant mark was identical with and confusingly similar to earlier-registered marks.

The Petitioner’s Contentions

On procedure, the petitioner urged that the Court of Appeals improperly dismissed its petition because it had sought and relied upon a second extension that the appellate court did not act upon, and asserted the lateness was excusable due to delayed receipt of the October 25 resolution, suspension of offices in the National Capital Judicial Region in view of Typhoon Yolanda, and intervening weekend days. On substance, the petitioner argued that it had acquired vested rights in the mark through prior application and long use under the old Trademark Law; that confusion was unlikely because the cited foreign Metro mark was used only on the internet while the petitioner used the mark in printed magazines; and that the cited registrations had since been de-registered or cancelled, removing any bar to registration.

The Respondent’s Position and Agency Findings

The IPO, through Examiner Icban, the Bureau Director, and the ODG, uniformly found that the dominant feature of the applicant mark was the word "METRO", identical in spelling and pronunciation to the cited marks. The agency determinations emphasized the dominancy test and concluded that the identity of the dominant element created a likelihood of confusion for identical goods classified as magazines. The ODG also relied on the fact that the petitioner's earlier 1994 application was deemed abandoned under the old Trademark Law, hence no vested right survived to block later registrants.

The Court’s Procedural Ruling

The Court affirmed the Court of Appeals' dismissal. It reiterated that an appeal is a statutory privilege and that compliance with reglementary periods is mandatory and jurisdictional. The Court cited Banez v. Social Security System and related authorities for the principle that failure to perfect an appeal within the prescribed period renders the questioned decision final and deprives the appellate court of jurisdiction. The Court noted that a party may file only one motion for reconsideration and that further requests for extension must present compelling reasons. The petitioner’s proffered reasons — heavy workload and attendance at an international conference — did not constitute exceptional circumstances. The Court held that counsel bears the duty to monitor filing periods and that personal obligations or heavy caseload do not excuse neglect. The Court further warned against permitting litigants to assume favorable rulings on discretionary extension motions. For these reasons, the Court concluded that the Court of Appeals did not abuse its discretion in denying relief and dismissing the petition.

The Court’s Substantive Ruling

On the substantive issue, the Court upheld the ODG's refusal to register the mark under Section 123.1(d) of RA 8293. The Court explained that the law bars registration of a mark that is identical with a registered mark belonging to a different proprietor or with an earlier filing date in respect of the same or closely related goods or when it nearly resembles such a mark as to be likely to deceive or cause confusion. The Court endorsed the dominancy test as the proper analytic approach, noting the statutory reference to a dominant feature in Section 155.1 and relevant jurisprudence such as McDonald’s Corporation v. L.C. Big Mak Burger, Inc. and Co Tiong Sa v. Director of Patents. Applying the dominancy test, the Court found that the dominant word "METRO" in the petitioner’s mark was identical visually and aurally to the cited registered marks. The Court accepted Examiner Icban's factual findings that the marks shared the same dominant word, covered substantially the same goods, and flowed through the same channels of trade, and concluded that likelihood of confusion was presumed under Rule 18, Sec. 3 of the Rules of Procedure for Intellectual Property Cases where identical signs are used for identical goods. The Court emphasized that the agency's determinations were the product of considered examination and deserved respect in the absence of strong justification for reversal.

Treatment of the Petitioner’s Secondary Arguments

The Court rejected the petitioner's claim of a vested right arising from prior use under the old Trademark Law because the petitioner's 1994 application had been deemed abandoned. The Court observed that abandonment withdraws protection and cited precedents such as Birkenstock Or