The Supreme Court has affirmed the decisions of the Intellectual Property Office rejecting the application for the trademark “Papa Boy & Device” on the grounds that “Papa” is owned by UFC Philippines Inc., which has been manufacturing catsup and other condiments for decades.
In a 35-page decision, the SC’s First Division through Associate Justice Teresita J. Leonardo-de Castro granted the petition of UFC, now merged with Nutri-Asia Inc., to set aside the June 23, 2011 decision and Oct. 4, 2011 resolution of the Court of Appeals.
The high court ruled that the CA erred in applying the holistic test and in reversing and setting aside the March 26, 2008 decision of the Bureau of Legal Affairs of the Intellectual Property Office and the Jan. 29, 2009 decision of the director general of the IPO, both of which rejected respondent’s application for the mark “Papa Boy & Device.”
“The findings of fact of the highly technical agency, the Intellectual Property Office, which has the expertise in this field, should have been given great weight by the Court of Appeals,” the tribunal stressed.
In 2002, respondent Barrio Fiesta Manufacturing Corp. filed application for the mark for goods under Class 30, specifically for lechon sauce. Nutri-Asia opposed the said application, contending that “Papa Boy & Device” is confusingly similar with its “Papa” marks, considering that its ketchup product and respondent’s lechon sauce product are related articles that fall under the same Class 30.
The mark “Papa” for use on banana catsup and other similar goods was first used in 1954 by Neri Papa, taken from his surname. Mr. Papa used the mark “Papa” for about 27 years until he assigned the said mark to Hernan D. Reyes, who subsequently filed an application to register the mark.
In ruling against Barrio Fiesta, the SC noted that a scrutiny of both petitioner’s and respondent’s respective marks would show that the IPO-BLA and the IPO director general correctly found the word ‘Papa’ as the dominant feature of petitioner’s mark ‘Papa Ketsarap.’ Contrary to respondent’s contention, ‘Ketsarap’ cannot be the dominant feature of the mark as it is merely descriptive of the product. Furthermore, it is the ‘Papa’ mark that has been in commercial use for decades and has established awareness and goodwill among consumers.
The SC sided with the IPO-BLA, saying that the word “Papa” is also the dominant feature of respondent’s “Papa Boy & Device” mark subject of the application, such that the word “Papa” is written on top of and before the other words such that it is the first word/figure that catches the eyes. The SC added, as correctly pointed out by the IPO Director General, that the part of respondent’s mark which appears prominently to the eyes and ears is the phrase ‘Papa Boy’ and that is what a purchaser of respondent’s product would immediately recall, not the smiling hog in the logo.
