FACTS:

Respondent Norvy A. Abyadang filed a trademark application for the mark "NS D-10 PLUS" for use in connection with Fungicide (Class 5) with active ingredient 80% Mancozeb, which was published in the IPO e-Gazette for opposition. Petitioner Berris Agricultural Co., Inc. filed a notice of opposition, claiming that "NS D-10 PLUS" is confusingly similar to its registered trademark "D-10 80 WP" used for the same product. The IPO-BLA sustained the opposition and rejected Abyadang's trademark application. Abyadang filed a motion for reconsideration, but it was denied. Abyadang then appealed to the Office of the Director General, which affirmed the IPO-BLA's decision. Abyadang subsequently filed a petition for review with the Court of Appeals (CA). The CA reversed the decision of the Director General, finding that there was no confusing similarity between the marks, and ordered the cancellation of Berris' trademark registration. Berris filed a motion for reconsideration, which the CA denied. Thus, Berris filed a petition for review before the Supreme Court.

Republic Act (R.A.) No. 8293, the Intellectual Property Code of the Philippines, is the basic law on trademarks, infringement, and unfair competition. It took effect on January 1, 1998, and repealed R.A. No. 166, the previous applicable law. However, R.A. No. 8293 did not expressly repeal R.A. No. 166 in its entirety but only repealed acts and parts of acts inconsistent with it.

R.A. No. 8293 defines a "mark" as a visible sign that can distinguish the goods or services of an enterprise. It also defines a "collective mark" as a visible sign capable of distinguishing the origin or common characteristics of goods or services of different enterprises under the control of the registered owner of the collective mark.

On the other hand, R.A. No. 166 defines a "trademark" as any distinctive word, name, symbol, emblem, sign, or device used by a manufacturer or merchant on goods to identify and distinguish them from others.

Ownership of a trademark is acquired through registration and actual use by the manufacturer or distributor. The certificate of registration of a mark serves as prima facie evidence of the registration's validity, the registrant's ownership of the mark, and the registrant's exclusive right to use it. However, the applicant or registrant must file a declaration of actual use within three years from the filing of the application or the mark will be refused or removed from the register.

The determination of priority of use of a mark is a question of fact. Adoption of the mark is not enough; it must be actual use in trade and commerce. Evidence such as receipts, sales invoices, testimonies of customers, or orders from buyers are necessary to prove actual use.

In the present case, both parties presented evidence to support their claim of ownership of their respective trademarks. Berris, the oppositor to Abyadang's application for trademark registration, presented its trademark application, certificate of registration, packaging bearing the mark, sales invoices, and official receipts.

ISSUES:

1. Whether Berris or Abyadang is the prior user of their respective marks.

2. Whether Berris' DAU is fraudulent.

3. Is Abyadang's mark "NS D-10 PLUS" confusingly similar to Berris' mark "D-10 80 WP"?

4. Can Berris prevent the IPO registration of Abyadang's mark?

5. Whether the cancellation of a registered mark may be done absent a petition for cancellation.

RULING:

1. The Supreme Court ruled in favor of Berris, stating that it was able to establish its prior use of the mark "D-10 80 WP" since June 20, 2002. Berris presented evidence such as a notarized and duly authenticated DAU, sales invoices, and official receipts, proving the actual use of the mark in trade and commerce during the specified period of time. Abyadang's evidence, on the other hand, did not sufficiently establish his prior use of the mark "NS D-10 PLUS."

2. The Supreme Court rejected Abyadang's contention that Berris' DAU is fraudulent based on the assumption that Berris could not have legally used the mark in the sale of its goods in 2002 because it registered the product with the Fertilizer and Pesticide Authority (FPA) only in 2004. The question of whether Berris violated P.D. No. 1144 by selling its product without prior registration with the FPA is a separate matter that falls outside the jurisdiction and concern of the Intellectual Property Office (IPO). The DAU, being a notarized document received in due course by the IPO, has the presumption of regularity and authenticity, and the burden of proof to overcome this presumption lies on the party contesting it. Abyadang's assumption does not constitute clear, strong, and convincing evidence to prove the falsity of the DAU.

3. Yes, Abyadang's mark "NS D-10 PLUS" is confusingly similar to Berris' mark "D-10 80 WP." The Dominancy Test and the Holistic or Totality Test were applied to determine similarity and likelihood of confusion. Both marks have a common component, "D-10," which is considered the dominant feature. They pertain to the same type of goods, belong to the same classification, and have similar depictions of "D-10." The likelihood of confusion is present.

4. Yes, Berris can prevent the IPO registration of Abyadang's mark. Berris, as the prior user and prior registrant of the mark "D-10 80 WP," is the owner of the mark. Berris has exclusive rights conferred by the law to prevent third parties from using identical or similar signs for goods or services that would result in a likelihood of confusion.

5. The Court held that the cancellation of a registered mark may be done even without a petition for cancellation. The Court emphasized that the primary purpose of the Trademarks Law is to protect not only the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time, but also to safeguard the public as consumers against confusion on these goods. The Court recognized the expertise of administrative agencies, such as the Intellectual Property Office (IPO), in matters falling under their jurisdiction and accorded great respect, if not finality, to their findings of fact, as long as they are supported by substantial evidence. The ownership of the mark "D-10 80 WP" properly belongs to the petitioner, and the cancellation of the mark by the Court of Appeals (CA) was reversed and set aside.

PRINCIPLES:

• Priority of use of a mark is a question of fact.

• Adoption of a mark alone is not sufficient to establish ownership; actual use and sale of goods bearing the mark to the public are necessary.

• Notarized documents, such as a Declaration of Actual Use (DAU), have the presumption of regularity, authenticity, and due execution.

• The burden of proof to overcome the presumption of authenticity and due execution of a notarized document rests on the party contesting it.

• Violation of a separate law, such as the requirement of registration with a regulatory agency, does not negate the fact of prior use of a trademark.

• Section 123.1(d) of R.A. No. 8293 prohibits the registration of a mark that is identical with a registered mark belonging to a different proprietor with an earlier filing or priority date, with respect to the same goods or services, closely related goods or services, or near resemblance of such mark as to likely deceive or cause confusion.

• The Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion in the mind of the purchasing public.

• The Holistic or Totality Test necessitates a consideration of the entirety of the marks as applied to the products, including labels and packaging, in determining confusing similarity.

• The owner of a registered mark has the exclusive right to prevent third parties from using identical or similar signs or containers for goods or services that are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion.

• The cancellation of a registered mark may be done even without a petition for cancellation.

• The primary purpose of the Trademarks Law is to protect the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time and to safeguard the public as consumers against confusion on these goods.

• Administrative agencies, such as the IPO, are in a better position to pass judgment on matters falling under their jurisdiction and their findings of fact are generally accorded great respect, if not finality, by the courts, as long as they are supported by substantial evidence.