G.R. No.

166115

February 2, 2007

SO ORDERED. In ti3e, the respondent 3oved for a reconsideration 9ut the IPO denied the 3otion in its Order5 of .anuar/ ,4, *000. ;herefro3, the respondent went to the C$ via a Petition for Review with pra/er for Preli3inar/ In1unction C under Rule 4= of the Rules of Court, whereat its appellate recourse was doc"eted as C$'(.R. SP No. 5)*4). 2indin# no confusin# si3ilarit/ 9etween the 3ar"s 4 $C.O54 and 4 CDON$AD!S,4 the C$, in its herein assailed Decision ) dated .ul/ *-, *004, reversed and set aside the appealed IPO decision and order, thus+ EFERE2ORE, in view of the fore#oin#, 1ud#3ent is here9/ rendered 9/ us RE7ERSIN( and SE;;IN( $SIDE the Decision of the IPO dated *B Dece39er ,--B and its Order dated ,4 .anuar/ *000 and ORDERIN( the IPO to #ive due course to petitioner!s $pplication Serial No. )5*)4. SO ORDERED. E?plains the C$ in its decision+ ???, it is clear that the IPO 9rushed aside and rendered useless the #larin# and drastic differences and variations in st/le of the two trade3ar"s and even decreed that these pronounced differences are 43iniscule4 and considered the3 to have 9een 4overshadowed 9/ the appearance of the predo3inant features4 such as 4 ,4 4 c,4 and 4 ac4 appearin# in 9oth CDON$AD!S and $C.O5 3ar"s. Instead of ta"in# into account these differences, the IPO unreasona9l/ shru##ed off these differences in the device, letters and 3ar"s in the trade3ar" sou#ht to 9e re#istered. ;he IPO 9rushed aside and i#nored the followin# irrefuta9le facts and circu3stances showin# differences 9etween the 3ar"s of $C.O5 and CDON$AD!S. ;he/ are, as averred 9/ the petitioner Gnow respondentH+ ,. ;he word 4 ac.o/4 is written in round script while the word 4 cDonald!s4 is written in sin#le stro"e #othic8 *. ;he word 4 ac.o/4 co3es with the picture of a chic"en head with cap and 9owtie and win#s sproutin# on 9oth sides, while the word 4 cDonald!s4 co3es with an arches 4 4 in #old colors, and a9solutel/ without an/ picture of a chic"en8 =. ;he word 4 ac.o/4 is set in deep pin" and white color sche3e while 4 cDonald!s4 is written in red, /ellow and 9lac" color co39ination8 4. ;he faIade of the respective stores of the parties are entirel/ different. E?hi9its , and ,'$, show that Grespondent!sH restaurant is set also in the sa3e 9old, 9rilliant and noticea9le color sche3e as that of its wrappers, containers, cups, etc., while Gpetitioner!sH restaurant is in /ellow and red colors, and with the 3ascot of 4Ronald cDonald4 9ein# pro3inentl/ displa/ed therein.4 %Eords in 9rac"ets supplied.& Petitioner pro3ptl/ filed a 3otion for reconsideration. Fowever, in its si3ilarl/ challen#ed ResolutionB of Nove39er ,*, *004, the C$ denied the 3otion, as it further held+ Ehether a 3ar" or la9el of a co3petitor rese39les another is to 9e deter3ined 9/ an inspection of the points of difference and rese39lance as a whole, and not 3erel/ the points of rese39lance. ;he articles and trade3ar"s e3plo/ed and used 9/ the GrespondentH ac1o/ 2astfood Corporation are so different and distinct as to preclude an/ pro9a9ilit/ or li"elihood of confusion or deception on the part of the pu9lic to the in1ur/ of the trade or 9usiness of the GpetitionerH cDonald!s Corporation. ;he 4 ac1o/ 6 Device4 3ar" is dissi3ilar in color, desi#n, spellin#, si>e, concept and appearance to the cDonald!s 3ar"s. %Eords in 9rac"ets supplied.& Fence, the petitioner!s present recourse on the followin# #rounds+ I. ;FE CO@R; O2 RESPONDEN;!S 4 CON2@SIN(A5 SI $RJS.4 I; 2$IAED ;ES; EFICF F$S $PPE$AS ERRED IN R@AIN( ;F$; $C.O5 6 DE7ICE4 $RJ IS NO; IA$R ;O PE;I;IONER!S 4 cDON$AD!S ;O CORREC;A5 $PPA5 ;FE DO IN$NC5 :EEN CONSIS;EN;A5 $PPAIED :5 ;FIS

McDONALDS CORPORAT ON, Petitioner, vs. MAC!O" FASTFOOD CORPORAT ON, Respondent. DECISION GARC A, J.: In this petition for review on certiorari under Rule 45 of the Rules of Court, herein petitioner cDonald!s Corporation see"s the reversal and settin# aside of the followin# issuances of the Court of $ppeals %C$& in C$'(.R. SP No. 5)*4), to wit+ ,. Decision dated *- .ul/ *004, reversin# an earlier decision of the Intellectual Propert/ Office %IPO& which re1ected herein respondent ac.o/ 2ast2ood Corporation!s application for re#istration of the trade3ar" 4 $C.O5 6 DE7ICE48 and *. Resolution dated ,* Nove39er *004* den/in# the petitioner!s 3otion for reconsideration. $s culled fro3 the record, the facts are as follows+ On ,4 arch ,--,, respondent ac.o/ 2astfood Corporation, a do3estic corporation en#a#ed in the sale of fast food products in Ce9u Cit/, filed with the then :ureau of Patents, ;rade3ar"s and ;echnolo#/ ;ransfer %:P;;&, now the Intellectual Propert/ Office %IPO&, an application, thereat identified as $pplication Serial No. )5*)4, for the re#istration of the trade3ar" 4 $C.O5 6 DE7ICE4 for fried chic"en, chic"en 9ar9e<ue, 9ur#ers, fries, spa#hetti, pala9o", tacos, sandwiches, halo'halo and stea"s under classes *- and =0 of the International Classification of (oods. Petitioner cDonald!s Corporation, a corporation dul/ or#ani>ed and e?istin# under the laws of the State of Delaware, @S$, filed a verified Notice of Opposition= a#ainst the respondent!s application clai3in# that the trade3ar" 4 $C.O5 6 DE7ICE4 so rese39les its corporate lo#o, otherwise "nown as the (olden $rches or 4 4 desi#n, and its 3ar"s 4 cDonalds,4 cChic"en,4 4 ac2ries,4 4:i# ac,4 4 cDo,4 4 cSpa#hetti,4 4 cSnac",4 and 4 c,4 %hereinafter collectivel/ "nown as the CDON$AD!S 3ar"s& such that when used on identical or related #oods, the trade3ar" applied for would confuse or deceive purchasers into 9elievin# that the #oods ori#inate fro3 the sa3e source or ori#in. Ai"ewise, the petitioner alle#ed that the respondent!s use and adoption in 9ad faith of the 4 $C.O5 6 DE7ICE4 3ar" would falsel/ tend to su##est a connection or affiliation with petitioner!s restaurant services and food products, thus, constitutin# a fraud upon the #eneral pu9lic and further cause the dilution of the distinctiveness of petitioner!s re#istered and internationall/ reco#ni>ed CDON$AD!S 3ar"s to its pre1udice and irrepara9le da3a#e. ;he application and the opposition thereto was doc"eted as Inter Partes Case No. =BC,. Respondent denied the afore3entioned alle#ations of the petitioner and averred that it has used the 3ar" 4 $C.O54 for the past 3an/ /ears in #ood faith and has spent considera9le su3s of 3one/ for said 3ar"!s e?tensive pro3otion in tri'3edia, especiall/ in Ce9u Cit/ where it has 9een doin# 9usiness lon# 9efore the petitioner opened its outlet thereat so3eti3e in ,--*8 and that its use of said 3ar" would not confuse affiliation with the petitioner!s restaurant services and food products 9ecause of the differences in the desi#n and detail of the two %*& 3ar"s. In a decision4 dated Dece39er *B, ,--B, the IPO, ratiocinatin# that the predo3inance of the letter 4 ,4 and the prefi?es 4 acD c4 in 9oth the 4 $C.O54 and the 4 CDON$ADS4 3ar"s lead to the conclusion that there is confusin# si3ilarit/ 9etween the3 especiall/ since 9oth are used on al3ost the sa3e products fallin# under classes *- and =0 of the International Classification of (oods, i.e., food and in#redients of food, sustained the petitioner!s opposition and re1ected the respondent!s application, vi>+ EFERE2ORE, the Opposition to the re#istration of the 3ar" $C.O5 6 DE7ICE for use in fried chic"en and chic"en 9ar9ecue, 9ur#ers, fries, spa#hetti, pala9o", tacos, sandwiches, halo'halo, and stea"s is, as it is here9/, S@S;$INED. $ccordin#l/, $pplication Serial No. )5*)4 of the herein Respondent'$pplicant is RE.EC;ED. Aet the filewrapper of $C.O5 su91ect 3atter of this case 9e sent to the $d3inistrative, 2inancial and Fu3an Resources Develop3ent :ureau for appropriate action in accordance with this Decision, with a cop/ to 9e furnished the :ureau of ;rade3ar"s for infor3ation and to update its record.

FONOR$:AE CO@R; IN DE;ER ININ( ;FE EKIS;ENCE O2 CON2@SIN( SI IA$RI;5 :E;EEEN CO PE;IN( $RJS. $. ;he cDonald!s ar"s 9elon# to a well'"nown and esta9lished 4fa3il/ of 3ar"s4 distin#uished 9/ the use of the prefi? 4 c4 andDor 4 ac4 and the corporate 4 4 lo#o desi#n. :. ;he prefi? 4 c4 andDor 4 ac4 is the do3inant portion of 9oth Petitioner!s cDonald!s ar"s and the Respondent!s 4 ac1o/ 6 Device4 3ar". $s such, the 3ar"s are confusin#l/ si3ilar under the Do3inanc/ ;est. C. Petitioner!s cDonald!s ar"s are well'"nown and world' fa3ous 3ar"s which 3ust 9e protected under the Paris Convention. II. ;FE CO@R; O2 $PPE$AS ERRED IN R@AIN( ;F$; ;FE DECISION O2 ;FE IPO D$;ED *B DECE :ER ,--B $ND I;S ORDER D$;ED ,4 .$N@$R5 *000 EERE NO; :$SED ON S@:S;$N;I$A E7IDENCE. In its Co33ent,- the respondent asserts that the petition should 9e dis3issed outri#ht for 9ein# procedurall/ defective+ first, 9ecause the person who si#ned the certification a#ainst foru3 shoppin# in 9ehalf of the petitioner was not specificall/ authori>ed to do so, and second, 9ecause the petition does not present a reviewa9le issue as what it challen#es are the factual findin#s of the C$. In an/ event, the respondent insists that the C$ co33itted no reversi9le error in findin# no confusin# si3ilarit/ 9etween the trade3ar"s in <uestion. ;he petition is i3pressed with 3erit. Contrar/ to respondent!s clai3, the petitioner!s ana#in# Counsel, Sheila Aehr, was specificall/ authori>ed to si#n on 9ehalf of the petitioner the 7erification and Certification ,0 attached to the petition. $s can 9e #leaned fro3 the petitioner!s :oard of Director!s Resolution dated Dece39er 5, *00*, as e39odied in the Certificate of the $ssistant Secretar/ dated Dece39er *,, *004,,, Sheila Aehr was one of those authori>ed and e3powered 4to e?ecute and deliver for and on 9ehalf of Gthe petitionerH all docu3ents as 3a/ 9e re<uired in connection with ? ? ? the protection and 3aintenance of an/ forei#n patents, trade3ar"s, trade'na3es, and cop/ri#hts owned now or hereafter 9/ Gthe petitionerH, includin#, 9ut not li3ited to, ? ? ? docu3ents re<uired to institute opposition or cancellation proceedin#s a#ainst conflictin# trade3ar"s, and to do such other acts and thin#s and to e?ecute such other docu3ents as 3a/ 9e necessar/ and appropriate to effect and carr/ out the intent of this resolution.4 Indeed, the afore'stated authorit/ #iven to Aehr necessaril/ includes the authorit/ to e?ecute and si#n the 3andatoril/ re<uired certification of non'foru3 shoppin# to support the instant petition for review which ste33ed fro3 the 4opposition proceedin#s4 lod#ed 9/ the petitioner 9efore the IPO. Considerin# that the person who e?ecuted and si#ned the certification a#ainst foru3 shoppin# has the authorit/ to do so, the petition, therefore, is not procedurall/ defective. $s re#ards the respondent!s ar#u3ent that the petition raises onl/ <uestions of fact which are not proper in a petition for review, suffice it to sa/ that the contradictor/ findin#s of the IPO and the C$ constrain us to #ive due course to the petition, this 9ein# one of the reco#ni>ed e?ceptions to Section ,, Rule 45 of the Rules of Court. ;rue, this Court is not the proper venue to consider factual issues as it is not a trier of facts.,* Nevertheless, when the factual findin#s of the appellate court are 3ista"en, a9surd, speculative, con1ectural, conflictin#, tainted with #rave a9use of discretion, or contrar/ to the findin#s culled 9/ the court of ori#in,,= as here, this Court will review the3. ;he old ;rade3ar" Aaw, Repu9lic $ct %R.$.& No. ,CC, as a3ended, defines a 4trade3ar"4 as an/ distinctive word, na3e, s/39ol, e39le3, si#n, or device, or an/ co39ination thereof adopted and used 9/ a 3anufacturer or 3erchant on his #oods to identif/ and distin#uish the3 fro3 those 3anufactured, sold, or dealt in 9/ others.,4 @nder the sa3e law, the re#istration of a trade3ar" is su91ect to the provisions of Section 4 thereof, para#raph %d& of which is pertinent to this case. ;he provision reads+ Section 4. Re#istration of trade3ar"s, trade'na3es and service'3ar"s on the principal re#ister. L ;here is here9/ esta9lished a re#ister of trade3ar"s, tradena3es and service'3ar"s which shall 9e "nown as the principal re#ister. ;he owner of the trade'3ar", trade'na3e or service'3ar" used to distin#uish his #oods, 9usiness or services of others shall have the ri#ht to re#ister the sa3e on the principal re#ister, unless it+

??? ??? ??? %d& Consists of or co3prises a 3ar" or trade'na3e which so rese39les a 3ar" or trade'na3e re#istered in the Philippines or a 3ar" or trade' na3e previousl/ used in the Philippines 9/ another and not a9andoned, as to 9e li"el/, when applied to or used in connection with the #oods, 9usiness or services of the applicant, to cause confusion or 3ista"e or to deceive purchasers8 ??? ??? ??? Essentiall/, the issue here is whether there is a confusin# si3ilarit/ 9etween the CDON$AD!S 3ar"s of the petitioner and the respondent!s 4 $C.O5 6 DE7ICE4 trade3ar" when applied to Classes *- and =0 of the International Classification of (oods, i.e., food and in#redients of food. In deter3inin# si3ilarit/ and li"elihood of confusion, 1urisprudence has developed two tests, the do3inanc/ test and the holistic test. ,5 ;he do3inanc/ test focuses on the si3ilarit/ of the prevalent features of the co3petin# trade3ar"s that 3i#ht cause confusion or deception.,C In contrast, the holistic test re<uires the court to consider the entiret/ of the 3ar"s as applied to the products, includin# the la9els and pac"a#in#, in deter3inin# confusin# si3ilarit/. ,) @nder the latter test, a co3parison of the words is not the onl/ deter3inant factor.,B 1awphi1.net Fere, the IPO used the do3inanc/ test in concludin# that there was confusin# si3ilarit/ 9etween the two %*& trade3ar"s in <uestion as it too" note of the appearance of the predo3inant features 4 4, 4 c4 andDor 4 ac4 in 9oth the 3ar"s. In reversin# the conclusion reached 9/ the IPO, the C$, while see3in#l/ appl/in# the do3inanc/ test, in fact actuall/ applied the holistic test. ;he appellate court ruled in this wise+ $ppl/in# the Do3inanc/ test to the present case, the IPO should have ta"en into consideration the entiret/ of the two 3ar"s instead of si3pl/ fi?in# its #a>e on the sin#le letter 4 4 or on the co39inations 4 c4 or 4 ac4. $ 3ere cursor/ loo" of the su91ect 3ar"s will reveal that, save for the letters 4 4 and 4c4, no other si3ilarit/ e?ists in the su91ect 3ar"s. Ee a#ree with the GrespondentH that it is entirel/ unwarranted for the IPO to consider the prefi? 4 ac4 as the predo3inant feature and the rest of the desi#ns in Grespondent!sH 3ar" as details. ;a"in# into account such para3ount factors as color, desi#ns, spellin#, sound, concept, si>es and audio and visual effects, the prefi? 4 c4 will appear to 9e the onl/ si3ilarit/ in the two co3pletel/ different 3ar"s8 and it is the prefi? 4 c4 that would thus appear as the 3iniscule detail. Ehen pitted a#ainst each other, the two 3ar"s reflect a distinct and disparate visual i3pression that ne#ates an/ possi9le confusin# si3ilarit/ in the 3ind of the 9u/in# pu9lic. %Eords in 9rac"ets supplied.& Petitioner now vi#orousl/ points out that the do3inanc/ test should 9e the one applied in this case. Ee a#ree. In trade3ar" cases, particularl/ in ascertainin# whether one trade3ar" is confusin#l/ si3ilar to another, no set rules can 9e deduced 9ecause each case 3ust 9e decided on its 3erits. ,- In such cases, even 3ore than in an/ other liti#ation, precedent 3ust 9e studied in the li#ht of the facts of the particular case. *0 ;hat is the reason wh/ in trade3ar" cases, 1urisprudential precedents should 9e applied onl/ to a case if the/ are specificall/ in point.*, Ehile we a#ree with the C$!s detailed enu3eration of differences 9etween the two %*& co3petin# trade3ar"s herein involved, we 9elieve that the holistic test is not the one applica9le in this case, the do3inanc/ test 9ein# the one 3ore suita9le. In recent cases with a si3ilar factual 3ilieu as here, the Court has consistentl/ used and applied the do3inanc/ test in deter3inin# confusin# si3ilarit/ or li"elihood of confusion 9etween co3petin# trade3ar"s.** Nota9l/, in cDonalds Corp. v. AC :i# a" :ur#er, Inc., *= a case where the trade3ar" 4:i# a"4 was found to 9e confusin#l/ si3ilar with the 4:i# ac4 3ar" of the herein the petitioner, the Court e?plicitl/ held+ ;his Court, ???, has relied on the do3inanc/ test rather than the holistic test. ;he do3inanc/ test considers the do3inant features in the co3petin# 3ar"s in deter3inin# whether the/ are confusin#l/ si3ilar. @nder the do3inanc/ test, courts #ive #reater wei#ht to the si3ilarit/ of the appearance of the product arisin# fro3 the adoption of the do3inant features of the re#istered 3ar", disre#ardin# 3inor

differences. Courts will consider 3ore the aural and visual i3pressions created 9/ the 3ar"s in the pu9lic 3ind, #ivin# little wei#ht to factors li"e prices, <ualit/, sales outlets and 3ar"et se#3ents. oreover, in Societe Des Produits Nestle, S.$. v. C$ *4 the Court, appl/in# the do3inanc/ test, concluded that the use 9/ the respondent therein of the word 4 $S;ER4 for its coffee product 42A$7OR $S;ER4 was li"el/ to cause confusion with therein petitioner!s coffee products! 4 $S;ER RO$S;4 and 4 $S;ER :AEND4 and further ruled+ ???, the totalit/ or holistic test is contrar/ to the ele3entar/ postulate of the law on trade3ar"s and unfair co3petition that confusin# si3ilarit/ is to 9e deter3ined on the 9asis of visual, aural, connotative co3parisons and overall i3pressions en#endered 9/ the 3ar"s in controvers/ as the/ are encountered in the 3ar"etplace. ;he totalit/ or holistic test onl/ relies on visual co3parisons 9etween two trade3ar"s whereas the do3inanc/ test relies not onl/ on the visual 9ut also on the aural and connotative co3parisons and overall i3pressions 9etween the two trade3ar"s. $ppl/in# the do3inanc/ test to the instant case, the Court finds that herein petitioner!s 4 CDON$AD!S4 and respondent!s 4 $C.O54 3ar"s are confusin#l/ si3ilar with each other such that an ordinar/ purchaser can conclude an association or relation 9etween the 3ar"s. ;o 9e#in with, 9oth 3ar"s use the corporate 4 4 desi#n lo#o and the prefi?es 4 c4 andDor 4 ac4 as do3inant features. ;he first letter 4 4 in 9oth 3ar"s puts e3phasis on the prefi?es 4 c4 andDor 4 ac4 9/ the si3ilar wa/ in which the/ are depicted i.e. in an arch'li"e, capitali>ed and st/li>ed 3anner.*5 2or sure, it is the prefi? 4 c,4 an a99reviation of 4 ac,4 which visuall/ and aurall/ catches the attention of the consu3in# pu9lic. 7eril/, the word 4 $C.O54 attracts attention the sa3e wa/ as did 4 cDonalds,4 4 ac2ries,4 4 cSpa#hetti,4 4 cDo,4 4:i# ac4 and the rest of the CDON$AD!S 3ar"s which all use the prefi?es c andDor ac. :esides and 3ost i3portantl/, 9oth trade3ar"s are used in the sale of fastfood products. Indisputa9l/, the respondent!s trade3ar" application for the 4 $C.O5 6 DE7ICE4 trade3ar" covers #oods under Classes *- and =0 of the International Classification of (oods, na3el/, fried chic"en, chic"en 9ar9e<ue, 9ur#ers, fries, spa#hetti, etc. Ai"ewise, the petitioner!s trade3ar" re#istration for the CDON$AD!S 3ar"s in the Philippines covers #oods which are si3ilar if not identical to those covered 9/ the respondent!s application. ;hus, we concur with the IPO!s findin#s that+ In the case at 9ar, the predo3inant features such as the 4 ,4 4 c,4 and 4 ac4 appearin# in 9oth cDonald!s 3ar"s and the $C.O5 6 DE7ICE4 easil/ attract the attention of would'9e custo3ers. Even non' re#ular custo3ers of their fastfood restaurants would readil/ notice the predo3inance of the 4 4 desi#n, 4 cD ac4 prefi?es shown in 9oth 3ar"s. Such that the co33on awareness or perception of custo3ers that the trade3ar"s cDonalds 3ar" and $C.O5 6 DE7ICE are one and the sa3e, or an affiliate, or under the sponsorship of the other is not far'fetched. ;he differences and variations in st/les as the device depictin# a head of chic"en with cap and 9owtie and win#s sproutin# on 9oth sides of the chic"en head, the heart'shaped 4 ,4 and the st/listic letters in 4 $C.O5 6 DE7ICE84 in contrast to the arch'li"e 4 4 and the one' st/led #othic letters in cDonald!s 3ar"s are of no 3o3ent. ;hese 3inuscule variations are overshadowed 9/ the appearance of the predo3inant features 3entioned hereina9ove. ;hus, with the predo3inance of the letter 4 ,4 and prefi?es 4 acD c4 found in 9oth 3ar"s, the inevita9le conclusion is there is confusin# si3ilarit/ 9etween the trade3ar"s c Donald!s 3ar"s and 4 $C.O5 $ND DE7ICE4 especiall/ considerin# the fact that 9oth 3ar"s are 9ein# used on al3ost the sa3e products fallin# under Classes *- and =0 of the International Classification of (oods i.e. 2ood and in#redients of food. Eith the e?istence of confusin# si3ilarit/ 9etween the su91ect trade3ar"s, the resultin# issue to 9e resolved is who, as 9etween the parties, has the ri#htful clai3 of ownership over the said 3ar"s. Ee rule for the petitioner. $ 3ar" is valid if it is distinctive and hence not 9arred fro3 re#istration under the ;rade3ar" Aaw. Fowever, once re#istered, not onl/ the

3ar"!s validit/ 9ut also the re#istrant!s ownership thereof is pri3a facie presu3ed.*C Pursuant to Section =)*) of R.$. No. ,CC, as a3ended, as well as the provision re#ardin# the protection of industrial propert/ of forei#n nationals in this countr/ as e39odied in the Paris Convention *B under which the Philippines and the petitioner!s do3icile, the @nited States, are adherent'3e39ers, the petitioner was a9le to re#ister its CDON$AD!S 3ar"s successivel/, i.e., 4 cDonald!s4 in 04 Octo9er, ,-),*- 8 the corporate lo#o which is the 4 4 or the #olden arches desi#n and the 4 cDonald!s4 with the 4 4 or #olden arches desi#n 9oth in =0 .une ,-))=0 8 and so on and so forth.=, On the other hand, it is not disputed that the respondent!s application for re#istration of its trade3ar" 4 $C.O5 6 DE7ICE4 was filed onl/ on arch ,4, ,--, al9eit the date of first use in the Philippines was Dece39er ), ,-B).=* Fence, fro3 the evidence on record, it is clear that the petitioner has dul/ esta9lished its ownership of the 3ar"Ds. Respondent!s contention that it was the first user of the 3ar" in the Philippines havin# used 4 $C.O5 6 DE7ICE4 on its restaurant 9usiness and food products since Dece39er, ,-B) at Ce9u Cit/ while the first cDonald!s outlet of the petitioner thereat was opened onl/ in ,--*, is downri#ht un3eritorious. 2or the re<uire3ent of 4actual use in co33erce ? ? ? in the Philippines4 9efore one 3a/ re#ister a trade3ar", trade'na3e and service 3ar" under the ;rade3ar" Aaw== pertains to the territorial 1urisdiction of the Philippines and is not onl/ confined to a certain re#ion, province, cit/ or 9aran#a/. Ai"ewise wantin# in 3erit is the respondent!s clai3 that the petitioner cannot ac<uire ownership of the word 4 ac4 9ecause it is a personal na3e which 3a/ not 9e 3onopoli>ed as a trade3ar" as a#ainst others of the sa3e na3e or surna3e. $s stated earlier, once a trade3ar" has 9een re#istered, the validit/ of the 3ar" is pri3a facie presu3ed. In this case, the respondent failed to overco3e such presu3ption. Ee a#ree with the o9servations of the petitioner re#ardin# the respondent!s e?planation that the word 4 $C.O54 is 9ased on the na3e of its president!s niece, Scarlett 5u Carcell. In the words of the petitioner+ 2irst of all, Respondent failed to present evidence to support the fore#oin# clai3 which, at 9est, is a 3ere self'servin# assertion. Secondl/, it cannot 9e denied that there is a9solutel/ no connection 9etween the na3e 4Scarlett 5u Carcel4 and 4 ac.o/4 to 3erit the coina#e of the latter word. Even assu3in# that the word 4 ac.o/4 was chosen as a ter3 of endear3ent, fondness and affection for a certain Scarlett 5u Carcel, alle#edl/ the niece of Respondent!s president, as well as to supposedl/ 9rin# #ood luc" to Respondent!s 9usiness, one cannot help 9ut wonder wh/ out of all the possi9le letters or co39inations of letters availa9le to Respondent, its president had to choose and adopt a 3ar" with the prefi? 4 ac4 as the do3inant feature thereof. $ 3ore plausi9le e?planation perhaps is that the niece of Respondent!s president was fond of the food products and services of the Respondent, 9ut that is 9eside the point.4 =4 :/ reason of the respondent!s i3plausi9le and insufficient e?planation as to how and wh/ out of the 3an/ choices of words it could have used for its trade'na3e andDor trade3ar", it chose the word 4 $C.O5,4 the onl/ lo#ical conclusion deduci9le therefro3 is that the respondent would want to ride hi#h on the esta9lished reputation and #oodwill of the CDON$AD!s 3ar"s, which, as applied to petitioner!s restaurant 9usiness and food products, is undou9tedl/ 9e/ond <uestion. ;hus, the IPO was correct in re1ectin# and den/in# the respondent!s application for re#istration of the trade3ar" 4 $C.O5 6 DE7ICE.4 $s this Court ruled in 2a9er#e Inc. v. I$C, =5 citin# Chuanchow So/ 6 Cannin# Co. v. Dir. of Patents and 7illapanta+=C Ehen one applies for the re#istration of a trade3ar" or la9el which is al3ost the sa3e or ver/ closel/ rese39les one alread/ used and re#istered 9/ another, the application should 9e re1ected and dis3issed outri#ht, even without an/ opposition on the part of the owner and user of a previousl/ re#istered la9el or trade3ar", this not onl/ to avoid confusion on the part of the pu9lic, 9ut also to protect an alread/ used and re#istered trade3ar" and an esta9lished #oodwill. EFERE2ORE, the instant petition is (R$N;ED. $ccordin#l/, the assailed Decision and Resolution of the Court of $ppeals in C$'(.R. SP NO. 5)*4), are RE7ERSED and SE; $SIDE and the Decision of the Intellectual Propert/ Office in Inter Partes Case No. =BC, is REINS;$;ED.

No pronounce3ent as to costs. SO ORDERED.