Sunday, August 17, 2008 High Court drops case vs. 'Barbie' sweets
THE Supreme Court (SC) has dismissed a petition filed by an American doll-maker to stop a local company from producing and distributing confectionery products under the brand name “Barbie.”
But the High Tribunal did not categorically side with Mattel, who at one time made rifles during the Vietnam conflict, in the decision penned by Associate Justice Ma. Alicia Austria-Martinez.
Instead, it took cognizance of how businessman Jimmy Uy withdrew his patent application for his products—milk, chocolate and candies—named Barbie, which he planned to distribute all over the country.
It called the issue “moot and academic.”
‘Confusingly similar’
“The issues raised in this petition do not call for a clarification of any constitutional principle,” the High Court said.
The ruling is drawing concern among lawyers doing intellectual property rights work for multinational companies, with one saying the High Court might be misconstrued as not giving much attention to the need to protect intellectual property rights, like brand names.
Uy, in 1991, filed a trademark application with the Bureau of Patents, Trademarks and Technology Transfer for the brand “Barbie” for use on confectionery products.
Two years later, Mattel Inc., based in Delaware in the United States, filed an opposition, saying Uy’s “Barbie” trademark was “confusingly similar” to the trademark on their dolls, doll clothes and doll accessories, toys and other similar commercial products that Mattel held.
Overtaken
Uy answered by explaining that there is no similarity between the two goods.
Before it could resolve the matter, the bureau was abolished with the enactment of Republic Act 8293, the Intellectual Property Code of the Philippines in 1998 and the creation of the Intellectual Property Office (IPO).
The agency took over the case. On May 18, 2000, the IPO Bureau of Legal Affairs issued a decision dismissing Mattel’s opposition and giving due course to Uy’s application for the registration of his trademark “Barbie” on confectionery products.
In the decision, the agency held that there was “no confusing similarity between the two competing marks because the goods were non-competing or unrelated.”
No Mattel sweets
Mattel filed a motion for reconsideration on June 5, 2000 but the IPO Bureau of Legal Affairs denied it on May 27, 2007, forcing the doll-maker to go to the IPO Director General.
But the Director General’s Office, on Sept. 3, 2003, upheld the findings of its legal affairs bureau and said there “was no proof on record that Mattel had ventured into the production of chocolates and confectionery products under the trademark ‘Barbie’ to enable it to prevent Uy from using an identical ‘Barbie’ trademark on said goods.”
In the ruling, the agency also announced that it had declared Uy’s trademark application “abandoned” due to the businessman’s failure to file a Declaration of Actual Use (DAU).
Seeking a more permanent protection, Mattel filed a motion for new trial last Sept. 12, 2003, citing “newly discovered evidence.” It said Mattel actually has an existing trademark application for the use of its registered trademark “Barbie” on “confectioneries, sweets and chewing gum.”
Related goods
The IPO denied it, declaring the matter closed.
Mattel then went to the CA but the appellate court affirmed the decision of the IPO Director General, forcing the American firm to bring its case all the way up to the Supreme Court.
In making its case, Mattel argued that its products are items related to Uy’s products. So, identical trademarks should not be used.
It asked the High Court to compel the IPO to make a categorical ruling on the subject to protect makers from people who intend to “cash in or ride on the goodwill and widespread recognition enjoyed by Mattel’s mark.”
Uy, on the other hand, manifested that his case has become moot and academic since the records of the IPO will show that he did not file the requisite declaration of actual use on or before the given deadline of Dec. 1, 2001.
Abandoned
He is deemed to have abandoned his trademark application.
The Office of the Solicitor General, representing the IPO before the High Court, also contended that the issue does not fall under the category of those closed cases which the High Court should still bother itself with.
Under Rule 45 of the Rules of Court, the SC can take on matters deemed “moot and academic” in order to “to formulate guiding and controlling constitutional principles, precepts, doctrines or rules for future guidance.”
At any rate, it said, Mattel failed to establish any grave error on the part of officials from the IPO, to warrant the grant of the present petition. (KNR)
