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

The perfection of an appeal within the reglementary period is mandatory and jurisdictional; a second motion for extension of time to file a petition for review may be granted only for the most compelling reasons, and heavy pressure of professional work or attendance at a conference does not constitute such a reason. Under Section 123.1(d) of the Intellectual Property Code, a mark is unregistrable if it is identical with a registered mark belonging to a different proprietor with an earlier filing or priority date; identity and confusing similarity are determined using the dominancy test, and likelihood of confusion is presumed when an identical mark is used for identical goods.

Petitioner ABS-CBN Publishing, Inc. filed an application in 2004 to register the trademark “METRO” under Class 16 of the Nice Classification, specifically for “magazines.” IPO Examiner Arlene M. Icban refused registration on the basis that the applicant mark was identical with three prior marks: “Metro” (word) and “Metro” (logo) owned by Metro International S.A., and “Inquirer Metro” owned by Philippine Daily Inquirer, Inc. The Director of the Bureau of Trademarks affirmed, and the Office of the Director General (ODG) subsequently upheld the rejection. Petitioner then elevated the matter to the Court of Appeals via a petition for review, but the appellate court dismissed the petition for having been filed beyond the extended deadline.

• The Trademark Application: In 2004, petitioner ABS-CBN Publishing, Inc. applied for registration of the mark “METRO” under Class 16 for “magazines.” The application was assigned to Examiner Arlene M. Icban.

• The IPO Examiner’s Rejection: Examiner Icban refused registration, identifying three prior cited marks already on file: (1) “Metro” (word) by Metro International S.A., Application No. 42000002584; (2) “Metro” (logo) by the same applicant, Application No. 42000002585; and (3) “Inquirer Metro” by Philippine Daily Inquirer, Inc., Application No. 42000003811. Examiner Icban determined that the applicant mark was identical to the cited marks, and that registration was barred under Section 123.1(d) of the Intellectual Property Code. In her Final Rejection, she found that METRO constituted the dominant word, causing remarkable similarity in sound, spelling, meaning, connotation, and overall commercial impression, and that the concurrent use was likely to cause confusion as to source or origin.

• Proceeding before the IPO Director General: Petitioner appealed to the Director of the Bureau of Trademarks, who affirmed the examiner’s findings, emphasizing that the marks were confusingly similar and could cause confusion as to goods and origin. The Office of the Director General (ODG), in a decision dated September 19, 2013, upheld the rejection, ruling that: (i) the applicant and cited marks are identical and confusingly similar; (ii) the petitioner’s earlier trademark application filed in 1994 by its predecessor, Metro Media Publishers, Inc., had been deemed abandoned under the old Trademark Law, and thus no vested right survived under the Intellectual Property Code; and (iii) the applicant mark had not acquired secondary meaning.

• Appeal to the Court of Appeals and Dismissal: Petitioner received the ODG decision on October 9, 2013. On the same day, it filed a first motion for extension of time before the Court of Appeals, requesting an additional 15 days from October 24, 2013, or until November 8, 2013. On October 25, 2013, it filed a second motion seeking a further extension until November 23, 2013. The Court of Appeals granted the first motion in a resolution dated October 25, 2013, but explicitly warned against any further extension and set the deadline on November 8, 2013.

• Events Justifying Late Filing (as alleged): Petitioner claimed that it received the October 25, 2013 resolution only on November 8, 2013 at 11:30 a.m. On that same day, the Supreme Court’s Public Information Office suspended work in the National Capital Judicial Region due to Typhoon Yolanda, and November 9 and 10, 2013 fell on a Saturday and Sunday. The petition for review was nevertheless filed only on November 11, 2013—three days after the extended deadline. The Court of Appeals dismissed the petition on May 20, 2014, ruling that the late filing violated Section 4, Rule 43 of the Rules of Court and the court’s own warning. Petitioner’s motion for reconsideration was denied on April 15, 2015.

• Petitioner’s Claim of Prior Rights and Abandonment: Petitioner asserted that its predecessor-in-interest, Metro Media Publishers, Inc., filed an application for “METRO” on November 3, 1994 (Application No. 4-1994-096162) and had actually used the mark in commerce since 1989. Petitioner conceded, however, that this earlier application had been “deemed abandoned.”

• Procedural Lapse Justified by Force Majeure and Counsel’s Workload: Petitioner maintained that the three-day delay was excusable because it received the Court of Appeals’ resolution only on the deadline day, work was suspended due to a typhoon, and the following days were a weekend. It further asserted that the second motion for extension was prompted by the heavy pressure of other professional work and the necessary attendance of its lawyers at an international conference.

• No Likelihood of Confusion; Different Trade Channels: Petitioner argued that confusion between the marks was highly unlikely because its “METRO” mark was used exclusively for printed magazines sold in various retail outlets in the Philippines, whereas the cited “Metro” (word) mark was used only on the internet without any printed circulation. Consequently, the channels of trade and the consuming public differed.

• Vested Right from Prior Use and Old Trademark Law: Petitioner asserted that, having first used the “METRO” mark in commerce as early as 1989 and having filed an application in 1994 under the old Trademark Law (R.A. 166), it acquired ownership rights that should be preserved even after the enactment of the Intellectual Property Code in 1998. Actual use in commerce, it claimed, automatically conferred trademark rights.

• Appeal Period Mandatory; No Exceptional Circumstances: The Director of the Bureau of Trademarks (IPO), as respondent, countered that the right to appeal is a mere statutory privilege and must be exercised strictly in accordance with the rules. Petitioner’s reasons—heavy workload and attendance at a conference—did not constitute the “most compelling reasons” required to justify a second extension. The Court of Appeals had expressly warned against a further extension, and petitioner acted at its own risk in assuming the second motion would be granted.

• Identity of Marks and Presumption of Confusion: Respondent argued that the mark “METRO” is identical both visually and aurally to the cited marks, and that all the marks cover magazines. Under Section 3, Rule 18 of the Rules of Procedure for Intellectual Property Cases, likelihood of confusion is presumed when an identical mark is used for identical goods. The IPO examiner’s finding—that the marks share the same dominant word, spelling, and pronunciation—was correct.

• Abandonment of Earlier Application Extinguished Any Vested Right: Respondent pointed out that petitioner’s predecessor’s 1994 application was “deemed abandoned” under the old law, which extinguished any right that could have been preserved under the Intellectual Property Code. Petitioner therefore had to re-apply under the current law and could not invoke a non-existent vested right.

• Procedural Issue: Whether the Court of Appeals committed reversible error in dismissing the petition outright for petitioner’s failure to file its petition for review within the extended deadline set by the court, despite the alleged justifications of force majeure and heavy workload.

• Substantive Issue: Whether the Office of the Director General correctly refused registration of the mark “METRO” on the ground that it is identical with and confusingly similar to prior registered marks under Section 123.1(d) of the Intellectual Property Code, applying the dominancy test and the presumption of likelihood of confusion.

• Procedural Issue: The dismissal was proper. The perfection of an appeal within the reglementary period is mandatory and jurisdictional; failure to do so renders the questioned decision final and executory and deprives the appellate court of jurisdiction. A second motion for extension of time to file a petition for review may be granted only for “the most compelling reasons.” The reasons advanced—heavy pressure of other professional work and attendance at an international lawyers’ conference—did not rise to that level. Personal obligations and heavy workload do not excuse a lawyer from timely filing pleadings; a litigant cannot assume that a motion for extension will be granted, especially after a specific warning against further extension has been issued. The Court of Appeals correctly exercised its discretion in dismissing the petition under prevailing jurisprudence.

• Substantive Issue: The IPO’s refusal to register “METRO” was correct. Under Section 123.1(d) of the Intellectual Property Code, a mark cannot be registered if it is identical with a registered mark with an earlier filing or priority date in respect of the same or closely related goods, or if it so nearly resembles such a mark as to be likely to deceive or cause confusion. The dominancy test governs; the dominant feature of the applicant mark is the word “METRO,” which is visually and aurally identical to the dominant feature of the cited marks. Small deviations elsewhere do not avoid infringement. Because an identical sign is used for identical goods—magazines—Section 3, Rule 18 of the Rules of Procedure for Intellectual Property Cases establishes a presumption of likelihood of confusion. The factual findings of the IPO Examiner, reviewed and affirmed twice by the Bureau Director and the Director General, are entitled to great respect and were not shown to be tainted by any grave abuse of discretion. Petitioner’s claim of vested rights under the old Trademark Law was defeated by the admission that its predecessor’s 1994 application had been deemed abandoned; an abandoned trademark confers no right capable of being preserved under the Intellectual Property Code. The alleged differences in trade channels did not overcome the identity of the marks and the goods.

• Dominancy Test in Trademark Infringement and Registration — Infringement and registrability under Section 155.1 and Section 123.1(d) of the Intellectual Property Code are determined by examining the dominant features of the competing marks. If the competing mark contains the main, essential, or dominant features of an earlier registered mark, and confusion or deception is likely to result, registration is proscribed. The most successful form of imitation employs enough points of similarity to confuse the public, with enough points of difference to confuse the courts. The test is explicitly incorporated in the Intellectual Property Code, which defines infringement as the colorable imitation of a registered mark “or a dominant feature thereof.”

• Presumption of Likelihood of Confusion for Identical Marks on Identical Goods — Under Section 3, Rule 18 of the Rules of Procedure for Intellectual Property Cases, likelihood of confusion is presumed when an identical sign or mark is used for identical goods or services. The absolute certainty of confusion, or proof of actual confusion, is not required; the mere likelihood is sufficient to refuse registration.

• Mandatory and Jurisdictional Nature of Appeal Periods — The right to appeal is a statutory privilege, not a constitutional right. The perfection of an appeal within the reglementary period is mandatory and jurisdictional; failure to do so renders the decision final and executory by operation of law and deprives the appellate court of jurisdiction. Extension of the period to file a petition for review beyond the statutory 15 days is allowed, but a second motion for extension may be granted only for the most compelling reasons. Counsel’s heavy workload or personal commitments do not qualify as compelling.

• Effect of Trademark Abandonment — Once a trademark application or registration is deemed abandoned under the applicable Trademark Law (e.g., for failure to file the required declaration of actual use), all rights conferred by the law are withdrawn. An abandoned mark cannot serve as the basis for a claim of vested rights under the subsequent Intellectual Property Code.

• “[T]he test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines infringement as the ‘colorable imitation of a registered mark x x x or a dominant feature thereof.’” — This passage confirms the legislative imprimatur of the dominancy test and its controlling application in the case.

• “The most successful form of copying is to employ enough points of similarity to confuse the public, with enough points of difference to confuse the courts.” — Restates the rationale behind the dominancy test, emphasizing that minor variations do not defeat a finding of confusing similarity.

• “It requires no stretch of imagination that a likelihood of confusion may occur.” — Applied to the identity of the word “METRO” and the identical classification of goods (magazines), warranting the refusal of registration.

• “In the absence of, or in the event of a party’s failure to receive, any resolution from the courts which specifically grants a motion for extension of time to file the necessary pleading, the parties are required to abide by the reglementary period provided for in the Rules of Court. Failure to comply thereto would result to a dismissal or denial of the pleadings for being filed beyond the reglementary period.” — A rule laid down for the guidance of the bench and the bar.

• Bañez v. Social Security System, 739 Phil. 148 (2014) — Cited for the rule that appeal is a statutory privilege, that perfection within the reglementary period is mandatory and jurisdictional, and that meritorious cases may exceptionally excuse late filing only to serve substantial justice.

• Spouses Dycoco v. Court of Appeals, 715 Phil. 550 (2013) — Upheld the Court of Appeals’ discretion to dismiss a petition filed beyond the extended period, holding that the application of the rules on reglementary periods is not a misuse or abuse of discretion.

• Hernandez v. Agoncillo, 697 Phil. 459 (2012) — Reiterated that lawyers must handle only as many cases as they can efficiently manage, and that repeated extensions of time and failure to file pleadings within the granted period constitute inexcusable negligence.

• McDonald’s Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402 (2004) — Established that the dominancy test is explicitly incorporated in Section 155.1 of the Intellectual Property Code.

• Co Tiong Sa v. Director of Patents, 95 Phil. 1 (1954) — Seminal case teaching that differences in details are not the legally accepted test of similarity; infringement is determined by the test of dominancy.

• Birkenstock Orthopaedie GMBH and Co. KG. v. Philippine Shoe Expo Marketing Corporation, 721 Phil. 867 (2013) — Applied to hold that a trademark owner whose mark was abandoned for failure to file the declaration of actual use acquires no right that can be invoked thereafter.

• Mattel, Inc. v. Francisco, 582 Phil. 492 (2008) — Rendered a petition moot and academic because the cited mark had been abandoned, and thus presented no legal obstacle to registration.

• Section 123.1(d), Intellectual Property Code (R.A. 8293) — A mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date in respect of the same goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion. Applied to bar registration of “METRO” because it is identical with prior cited marks covering magazines.

• Section 155.1, Intellectual Property Code — Defines infringement as the use of a colorable imitation of a registered mark or a dominant feature thereof. Serves as the statutory anchor for the dominancy test.

• Section 4, Rule 43, Rules of Court — Prescribes a 15-day period to appeal from the decision of a quasi-judicial agency to the Court of Appeals. The petitioner’s failure to file within the extended period set by the court warranted dismissal.

• Section 3, Rule 18, Rules of Procedure for Intellectual Property Cases (A.M. No. 10-3-10-SC) — States that likelihood of confusion shall be presumed in case an identical sign or mark is used for identical goods or services. Applied to presume confusion where both the applicant and cited marks used “METRO” for magazines.

• Section 12, Republic Act No. 166 (old Trademark Law) — Required the registrant to file an affidavit of use within the fifth, tenth, and fifteenth anniversaries of the certificate of registration; failure resulted in cancellation. The petitioner’s predecessor’s application was deemed abandoned under this provision, negating any claim of vested rights.

Peralta, J. (Acting Chairperson), Del Castillo, J., Perlas-Bernabe, J., and Caguioa, J.