Saturday, February 8, 2014

Case Digest: Mattel, Inc. vs. Emma Francisco, et al.

Petitioner’s Claims:

Mattel, Inc. alleges that Uy’s “Barbie” trademark of confectionary products was confusingly similar to its trademark on dolls, doll clothes and doll accessories.  Mattel argues that its products are items related to Uy’s products; hence, identical trademarks should not be used where the possibility of confusion as to source or origin of the products is certain and that by adopting an exactly identical mark, in spelling and style, Uy should be presumed to have intended to cash in or ride on the goodwill and widespread recognition enjoyed by Mattel’s mark.

Respondents’ Claims:

Jimmy Uy contends that there is no similarity between the two goods.  Emma Francisco, the Director General of IPO, stated that there was no proof on record that Mattel had ventured into the production of chocolates and confectionary products under the trademark “Barbie” to enable it to prevent Uy from using an identical “Barbie” trademark on said goods.  On the other hand, Uy submits that the case has become moot and academic since the records of the IPO will show that no DAU was filed on or before 01 December 2001; thus he is deemed to have abandoned his trademark application.

Issue:

Whether or not the case has become moot and academic

Ruling:


Yes. According to Section 124.2 of RA 8293, the applicant shall file a declaration of actual use of the mark with evidence to that effect with three years from filing date of the application.  Otherwise, the applicant shall be refused.  Moreover, the issues in the present case call for an appraisal of factual considerations which are peculiar only to the transactions and parties involved in the controversy.  The issues raised in this case do not call for a clarification unlike in the cases of David vs. Arroyo, Constantino vs. Sandiganbayan and others.  In the latter cases, moot and academic issues were still decided for these pertain to important and transcendental constitutional issues, which are not in line with this case.

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