W Land Holdings, Inc. Vs. Starwood Hotels and Resorts
Worlwide, Inc.
G.R. No. 222366. December 4, 2017
G.R. No. 222366. December 4, 2017
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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