Canon Kabushiki Kaisha v. Court of Appeals
REITERATIONFacts
The Antecedents: Private respondent NSR Rubber Corporation (NSR) filed an application for registration of the mark CANON for sandals. Petitioner Canon Kabushiki Kaisha (Canon), a Japanese corporation, filed an opposition, alleging it would be damaged by the registration. Procedural History: Petitioner moved to declare NSR in default for failure to file an answer, which the Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) granted, allowing petitioner to present evidence ex-parte. Petitioner presented certificates of registration for the mark CANON in various countries and the Philippines, covering goods in class 2 (paints, chemical products, toner, and dyestuff). The BPTTT dismissed the opposition and gave due course to NSR's application. Petitioner appealed to the Court of Appeals, which affirmed the BPTTT's decision. The Petition: Petitioner seeks to set aside the Court of Appeals' decision, arguing it is entitled to the exclusive use of the mark CANON because it is its trademark and is used for footwear, and that allowing NSR to register it would prevent petitioner's normal expansion of business and cause confusion of business and origin. Petitioner also invokes protection under the Paris Convention for its tradename.
Issue(s)
Whether petitioner is entitled to the exclusive use of the mark CANON for footwear. Whether the registration of the mark CANON for sandals by private respondent would cause confusion of goods or business. Whether petitioner's tradename CANON is protected under Article 8 of the Paris Convention, irrespective of the similarity of goods.
Ruling
The petition is denied for lack of merit. The Court of Appeals' decision affirming the BPTTT's ruling is upheld.
Ratio Decidendi
On the entitlement to exclusive use of the mark CANON for footwear: The Court held that while trademark ownership is a property right, protection is generally limited to the goods specified in the certificate of registration. Petitioner's certificates of registration for the mark CANON covered class 2 products (paints, chemical products, toner, dyestuff), not footwear. The Court found no evidence that petitioner had actually embarked in the production of footwear, and thus, the claim that NSR's registration would prevent petitioner's normal expansion of business was unsubstantiated. The Court cited Faberge, Incorporated vs. Intermediate Appellate Court to emphasize that a senior user cannot claim invasion of its exclusive domain if it has not ventured into the production of the goods in question. On the likelihood of confusion of goods or business: The Court reiterated that the likelihood of confusion is a relative concept determined by the specific circumstances of each case. It found that the products of petitioner (paints, chemical products, toner, dyestuff) and private respondent (sandals) are so dissimilar and flow through different channels of trade (special chemical stores vs. grocery stores, sari-sari stores, department stores) that the public would not be misled into thinking there is any connection between the parties. This dissimilarity renders unfounded petitioner's apprehension of confusion of business or origin, aligning with the doctrine in Esso Standard Eastern, Inc. vs. Court of Appeals. On the protection of the tradename CANON under Article 8 of the Paris Convention: The Court affirmed the BPTTT's and Court of Appeals' reliance on the doctrine established in Kabushi Kaisha Isetan vs. Intermediate Appellate Court. This doctrine clarifies that Article 8 of the Paris Convention does not automatically grant protection to a tradename used as a trademark in another country without considering the specific guidelines for well-known marks, which include the mark being used for identical or similar goods. The Court noted that petitioner failed to comply with the requirement that the mark must be for use in the same or similar kinds of goods, as its mark was for class 2 products while NSR's was for class 25 (sandals). The Court found petitioner's argument that the Isetan case was inapplicable due to factual differences to be without merit, as the pronouncement regarding Article 8 was made independently of the factual finding that the petitioner in Isetan had not conducted business in the Philippines.
Main Doctrine
The ownership of a trademark or tradename is a property right that the owner is entitled to protect. However, when a trademark is used by a party for a product in which the other party does not deal, the use of the same trademark on the latter's product cannot be validly objected to, absent evidence of intent to expand into that line of business or likelihood of confusion.