Note: Classmates, dont expect this to be a very good nor a good position paper. Hehe! Thank you.

Please bear with me if there are some flaws in my grammar.

TOKYO TOKYO, INC. Opposer, -versusBRYANT JAMES LAO Applicant.

Tokyo Tokyo has been using the mark SHOGUN since 1992 to promote and market their Japanese fast food, restaurants and products. They extensively promote the use of said mark and subsequently associated the mark SHOGUN with Tokyo Tokyos restaurants and products. Moreover, Tokyo Tokyo has sustained considerable amounts to build substantial goodwill in the SHOGUN mark. The application of the respondent applicant of the mark SHOGUN FRY AND DEVICE will undoubtedly be prejudicial to the mark of the Tokyo Tokyo. While it is true that the mark of the former is being used on Japanese Fast Foods Take out Counter and the mark of the latter is being used on sales promotion and discount cards, these two marks could still be reasonably considered as similar, related, and competitive with each other. Both marks pertain to Japanese fast foods restaurants and products, it just so happened that Tokyo Tokyo used the said mark to the promotion of their goods and services and respondent applicant used their applied mark as a business name. Undeniably, the respondent-applicant mark is identical and confusingly similar with the oppositor SHOGUN word mark. The word SHOGUN is the very registered word of Tokyo Tokyos mark. In addition to this, they are both in connection with Japanese food that made these two marks more confusingly similar. A mark cannot be registered if it: x x x [I]s identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of x x
x [C]losely related goods or services [Sec.

123(d)(iii), Intellectual Property Code] The continuous use of Shogun Fry and Device mark by the applicant will tend to mislead the purchasing public that may cause injury of both the oppositor and the public. The applicant Laos Shogun Fry and Device mark will mislead the public into

believing that the products marketed and sold by opposer or originate from the same source. Considering the connotation of the two trademarks, it is clear and unmistakable that there is likelihood of confusion on the part of ordinary customers. They are not only similar but they also refer to goods sold within the same channels of trade and industry. Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, the Court distinguished the two types of confusion: The first is the confusion of goods IN WHICH EVENT THE ORDINARILY PRUDENT PURCHASER WOULD BE INDUCED TO PURCHASE ONE PRODUCT IN THE BELIEF THAT HE WAS PURCHASING THE OTHER. In which case, DEFENDANTS GOODS ARE THEN BOUGHT AS THE PLAINTIFFS, AND THE POORER QUALITY OF THE FORMER REFLECTS ADVERSELY ON THE PLAINTIFFS REPUTATION. The other is the confusion of business: Here though the goods of the parties are different, the defendants product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist. Tokyo Tokyo has been considerately recognized here in the Philippines with their promotion using SHOGUN by employing advertisements in all kinds of media. Tokyo Tokyo has gained more popularity because of their usage of SHOGUN mark and their customers continually patronized promos contained in the said mark. In short, we can aptly say that SHOGUN mark CARRIED the name of TOKYO TOKYO and vice versa. The subject mark of Opposer is used to promote and REPRESENT TOKYO TOKYO. Applicants mark also covers Japanese fast foods and directly competes with the products/restaurants promoted and represented by opposers SHOGUN mark. Hence, the application of the respondent applicant invades the good reputation that Tokyo Tokyo built for over two decades simply because of mere confusion among the two marks of both parties. In using dominancy in this case, the dominant feature of the two trademarks is the word Shogun.

The

Dominancy OF OF OR WHEN

Test

focuses

on

the

SIMILARITY FEATURES TRADEMARKS CONFUSION APPLIED

THE THE

PREVALENT COMPETING CAUSE It is

THAT

MIGHT

DECEPTION. THE

TRADEMARK

SOUGHT TO BE REGISTERED CONTAINS THE MAIN, ESSENTIAL AND DOMINANT FEATURES OF THE EARLIER REGISTERED TRADEMARK, DECEPTION IS AND CONFUSION TO OR LIKELY RESULT.

Duplication or imitation is not even required; neither is it necessary that the label of the applied mark for registration should suggest an effort to imitate. THE IMPORTANT ISSUE IS WHETHER THE USE OF THE MARKS INVOLVED WOULD LIKELY CAUSE CONFUSION OR MISTAKE IN THE MIND OF OR DECEIVE THE ORDINARY PURCHASER, OR ONE WHO IS ACCUSTOMED TO BUY, AND THEREFORE WITH, TO THE GIVEN SOME EXTENT IN GREATER FAMILIAR QUESTION. GOODS

CONSIDERATION ARE THE AURAL AND VISUAL IMPRESSIONS CREATED BY THE MARKS IN THE PUBLIC MIND, giving little weight to factors like prices, quality, sales outlets, and market segments. [The test of dominancy is now explicitly incorporated into law in Section 155.1 of R.A. No. 8293] Furthermore, we condone the contention of respondent applicant that SHOGUN and SHOGUN FRY deal with different customers or clients because customers of SHOGUN FRYs are those people who would like to buy/eat being served by the restaurant while the customers of SHOGUN are the people who would like TO BUY AND EAT THE PRODUCTS INCLUDED IN THE PROMO BEING SERVED BY TOKYO TOKYO.