ABS-CBN Publishing, Inc. v. Director of the Bureau of Trademarks
REITERATIONFacts
The Antecedents: In 2004, ABS-CBN Publishing, Inc. (petitioner) applied with the Intellectual Property Office of the Philippines (IPO) to register the trademark "METRO" for use with "magazines." The application was refused by Examiner Arlene M. Icban, who found the mark identical to three existing registered marks: "Metro" (word) and "Metro" (logo) by Metro International S.A., and "Inquirer Metro" by Philippine Daily Inquirer, Inc. The examiner cited Section 123.1(d) of the Intellectual Property Code (IPC), which prohibits the registration of marks identical or confusingly similar to registered marks for related goods or services. The petitioner's subsequent appeal to the Director of the Bureau of Trademarks and then to the Office of the Director General (ODG) of the IPO were both denied, with the latter affirming the refusal based on the identical nature and confusing similarity of the marks, the petitioner's abandonment of a prior application, and the lack of secondary meaning. Procedural History: The petitioner appealed the ODG's decision to the Court of Appeals (CA). However, the petitioner filed two motions for extension of time to file its petition for review. The CA granted the first motion but warned against further extensions. Despite this, the petitioner failed to file its petition for review within the extended deadline. The CA subsequently denied the petitioner's second motion for extension and dismissed the petition for being filed out of time. The CA also denied the petitioner's motion for reconsideration. This denial by the CA is the subject of the present petition for review on certiorari before the Supreme Court. The Petition: The petitioner seeks review of the Court of Appeals' resolutions under Rule 45 of the Rules of Court. The petition raises two main issues: first, whether the CA erred in dismissing the petition for review on procedural grounds due to the petitioner's failure to file within the reglementary period, and second, whether the ODG correctly refused to register the petitioner's mark on substantive grounds, specifically for being identical and confusingly similar to existing registered marks. The petitioner argues that it has vested rights and that confusion is unlikely, while the respondent maintains the correctness of the refusal based on the IPC and established jurisprudence on trademark registration and procedural rules.
Issue(s)
Whether the Court of Appeals erred in dismissing the petition outright for the petitioner's failure to file its petition for review within the time prescribed. Whether the Office of the Director General (ODG) was correct in refusing to register the applicant mark for being identical and confusingly similar with the cited marks already registered with the IPO.
Ruling
The Supreme Court affirmed the Resolutions of the Court of Appeals dated May 20, 2014, and April 15, 2015, dismissing the petition for review. The Court found no merit in the petition, both on procedural and substantive grounds. The dismissal of the petition was affirmed without prejudice to the petitioner's refiling of its application for the registration of the trademark "METRO" before the Intellectual Property Office.
Ratio Decidendi
On the procedural issue: The Court reiterated that appeal is a statutory privilege, not a constitutional right, and strict compliance with reglementary periods is mandatory and jurisdictional. Failure to perfect an appeal within the statutory period renders the decision final and executory. Section 4, Rule 43 of the Rules of Court clearly provides a 15-day period for appeal. While exceptions exist for compelling reasons, the petitioner's cited reasons—heavy workload and attendance at a conference—were deemed insufficient to justify a second extension, especially since the petitioner could not assume the grant of its motion. The Court emphasized that lawyers have a responsibility to monitor filing deadlines, and personal obligations or heavy workloads do not excuse non-compliance. The CA's dismissal was considered a proper exercise of discretion, not a misuse or abuse thereof. On the substantive issue: The Court applied Section 123.1(d) of the Intellectual Property Code (IPC), which prohibits the registration of a mark identical or confusingly similar to a registered mark for the same or closely related goods or services. The Court affirmed the use of the dominancy test, which focuses on the dominant features of the marks. In this case, the dominant feature of the applicant mark "METRO" is identical, both visually and aurally, to the cited marks. The Court found that the concurrent use of the word "METRO" for magazines is likely to cause confusion among purchasers as to the source or origin of the goods. The findings of the IPO officials, based on judicious examination, were given great respect and were not overturned due to the lack of strong justification. The Court also addressed the petitioner's claim of vested rights, noting that its predecessor's application was "deemed abandoned" under the old Trademark Law, thereby forfeiting any rights and necessitating a new application under the IPC. The argument that the cited marks were no longer valid was dismissed as the alleged de-registration or cancellation occurred after the ODG had ruled on the case, and the Court, not being a trier of facts, could not pass upon the validity of these claims based on the records presented.
Main Doctrine
Failure to file a petition for review within the reglementary period, absent exceptional circumstances, warrants dismissal. Furthermore, a trademark mark cannot be registered if it is identical or confusingly similar to a registered mark for the same or closely related goods or services, applying the dominancy test. Abandonment of a prior trademark application due to non-compliance with legal requirements forfeits any vested right.