1.    What is trademark?


Case law explains that "[t]rademarks deal with the psychological function of symbols and the effect of these symbols on the public at Jarge."47 It is a merchandising short-cut, and, "[w]hatever the means employed, the aim is the same -to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears."


2.    What are the functions of trademark?


As viewed by modem authorities on trademark law, trademarks perform three (3) distinct functions: (1) they indicate origin or ownership of the articles to which they are attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3) they advertise the articles they symbolize.


3.    On December 2, 2005, Starwood filed before the IPO an application for registration of the trademark "W" for Classes 436 and 447 of the International Classification of Goods and Services for the Purposes of the Registration of Marks8 (Nice Classification). On February 26, 2007, Starwood' s application was granted and thus, the "W" mark was registered in its name. However, on April 20, 2006, W Land applied for the registration of its own "W" mark for Class 36, which thereby prompted Starwood to oppose the same. In a Decision dated April 23, 2008, the BLA found merit in Starwood's opposition, and ruled that W Land's "W" mark is confusingly similar with Starwood's mark, which had an earlier filing date. W Land filed a motion for reconsideration on June 11, 2008, which was denied by the BLA in a Resolution17 dated July 23, 2010.

On May 29, 2009, W Land filed a Petition for Cancellation18 of Starwood's mark for non-use under Section 151.1 of Republic Act No. 8293 or the "Intellectual Property Code of the Philippines" (IP Code), claiming that Starwood has failed to use its mark in the Philippines because it has no hotel or establishment in the Philippines rendering the services covered by its registration; and that Starwood' s "W" mark application and registration barred its own '"W" mark application and registration for use on real estate.

In its defense, Starwood denied having abandoned the subject mark on the ground of non-use, asserting that it filed with the Director of Trademarks a notarized Declaration of Actual Use (DAU) with evidence of use on December 2, 2008, which was not rejected. In this relation, Starwood argued that it conducts hotel and leisure business both directly and indirectly through subsidiaries and franchisees, and operates interactive websites for its W Hotels in order to accommodate its potential clients worldwide. According to Starwood, apart from viewing agents, discounts, promotions, and other marketing fields being offered by it, these interactive websites allow Philippine residents to make reservations and bookings, which presuppose clear and convincing use of the "W" mark in the Philippines.

Decide with reason.


The petition must be denied.

To be sure, Starwood's "W" mark is registered for Classes 43, i.e., for hotel, motel, resort and motor inn services, hotel reservation services, restaurant, bar and catering services, food and beverage preparation services, cafe and cafeteria services, provision of conference, meeting and social function facilities, under the Nice Classification. Under Section 152.3 of the IP Code, "[t]he use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class." Thus, Starwood's use of the "W" mark for reservation services through its website constitutes use of the mark which is already sufficient to protect its registration under the entire subject classification from non-use cancellation. This, notwithstanding the absence of a Starwood hotel or establishment in the Philippines.

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