Friday, March 18, 2016

Saucy trademark battles in the Philippines

Image result for papa boy lechon sauce
In 2002 Barrio Fiesta Manufacturing Corp. applied for “Papa Boy & Device” for its lechon sauce (class 30). Lechon sauce is a Filipino favorite made from pork liver. Apparently “Papa Boy” was a Barrio Fiesta founder's nickname. 
UFC Philippines Inc, (now merged with NutriAsia Inc), makes the popular Papa banana ketchup. NutriAsia filed an opposition on the grounds of similarity to its own “Papa” marks, as ketchup and lechon sauce were similar. Their mark “Papa” was first used on sauces in 1954 by Neri Papa, taken from his surname. Papa used the mark “Papa” for about 27 years until it was sold on ultimately to UFC.

The IPO made a decision in 2008 that the two marks were similar and the appeal to the Director General confirmed this. Then the case went on appeal to the courts. The Court of Appeals rejected the decision and the Supreme Court stepped in last week and overruled the Court of Appeals. Importantly they said that the technical agency, the IPO, has expertise in this field, so its decision should have been given greater weight by the Court of Appeals. The Court of Appeals decision was based around the assertion that one party could not claim IP rights in a common word "Papa".

The Supreme Court upheld the IPO's findings that the “Papa” trademark has been in long use so had a strong consumer reputation. “Papa” was the dominant feature of Barrio Fiesta’s “Papa Boy & Device” mark since that appeared on top and caught the eye first. Imperfect consumer recollection meant that the marks could be confused. They also pointed out that sauces were too close in the grocery category to be anything but similar. The addition of extra features on the label, even Barrio Fiesta's name, did not remove the similarity.  

Frequent multi stage appeals in Philippines IP cases make for time consuming battles. Most IPO decisions are high quality and it is good to see the Supreme Court affirming this.

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