{"id":1568,"date":"2019-01-29T00:30:57","date_gmt":"2019-01-29T00:30:57","guid":{"rendered":"https:\/\/www.veralaw.com\/?p=1568"},"modified":"2024-04-23T03:30:44","modified_gmt":"2024-04-23T03:30:44","slug":"costa-limited-successfully-turn-down-third-party","status":"publish","type":"post","link":"https:\/\/www.veralaw.com\/?p=1568","title":{"rendered":"COSTA LIMITED SUCCESSFULLY TURN DOWN THIRD PARTY"},"content":{"rendered":"\t\t
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COSTA VS. LIBRARY CAF\u00c9 BY COSTA<\/strong><\/p>

COSTA LIMITED, the owner of the internationally well-known \u201cCOSTA\u201d marks, opposed the trademark application of a Philippine company, SEA AND SIERRA VISTA, INC., for the mark\u00a0\u00a0 \"\"\u00a0 . COSTA LIMITED is known for its coffee shops and the company operates in more than 3000 locations, with 11 stores in the Philippines. COSTA Limited argued that LIBRARY CAF\u00c9 BY COSTA is confusingly similar to its registered mark \"\" <\/strong>and its variants and that the dominant element of both marks is the word COSTA which is registered in various jurisdictions. COSTA LIMITED argued that the word COSTA was added to LIBRARY CAF\u00c9 to create in the mind of the public that it is related to the company\u2019s well-known\u00a0\u201cCOSTA\u201d trademark. In fact, the local company actually identifies itself as a subsidiary of COSTA LIMITED when it added the word \u201cBY\u201d and therefore, it seeks to associate itself as an adjunct of COSTA LIMITED. As such, anyone who is familiar with the goods of the Opposer would have the impression that the mark\u00a0\u00a0 \"\"\u00a0 <\/strong>is affiliated with or connected to COSTA LIMITED, which is both false and misleading.\u00a0
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Respondent-Applicant, a company engaged in the hotel and restaurant services, countered that the mark LIBRARY CAF\u00c9 BY COSTA is a restaurant caf\u00e9 within the hotel\u2019s premises and that COSTA has become its house mark, acquired through extensive marketing and promotional activities.<\/p>

\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 The Bureau of Legal Affairs (BLA) debunked the local company\u2019s claim as follows:<\/p>

\u201cThe Respondent-Applicant states that it used the mark in 2013. Records show that as early as 2011, the Opposer filed an application for the registration of the mark and was issued Reg. No. 4-2011-500966. Albeit, removed from the register, as seen from the IPO trademark database, the Opposer has existing COSTA marks, i.e. 4-2008-0033497. It has proved to be the owner and prior adopter of the mark COSTA for services under 43 and goods under 30, through earlier registration and use abroad.\u201d<\/em><\/p>

Furthermore, the BLA also observed that when applying the dominancy test, Respondent-Applicant appropriated the Opposer\u2019s whole mark. An assessment of both marks reveals uncanny similarity between the two because the Respondent-Applicant\u2019s mark contains the main, essential, central feature of Opposer\u2019s mark COSTA. Adding the word CAF\u00c9 is of no moment because it has been disclaimed. LIBRARY CAF\u00c9 BY COSTA implies a caf\u00e9 created by COSTA. Taking into consideration that the Opposer is famous for coffee, confusion about affiliation, sponsorship and connection of the Respondent-Applicant with the Opposer comes to play. Also, the two marks are used on similar, if not identical service and\/or goods. The Bureau of Legal Affairs further held:<\/p>

\u201cThe Opposer is in the business of sale of coffee or operation of a coffee store. According to the \u00a0 Opposer, it began operations in the Philippines in 2014. Evidence show that it opened its first store in June 2015 at Eastwood Quezon City. In terms of promotion, it is seen in the social media, through facebook and twitter and has advertised worldwide. Both marks are used in the same industry or channels of business. Given the similarity with the Respondent-Applicant\u2019s mark, confusion or mistake is a likelihood, among the buying public, taking into account the identity of the word COSTA. Even if the Respondent-Applicant is in the hotel business that incidentally offers food and drinks, its mark LIBRARY CAF\u00c9 BY COSTA, evokes a connection with the Opposer when in fact there is none. Succinctly, because the Respondent-Applicant uses the mark on goods that are \u00a0\u00a0 identical or closely related to the Opposer\u2019s, it is likely that the consumers will have the impression that these goods originate from a single source or origin. Xxx\u201d.<\/em><\/p>

Finally, the BLA also acknowledged that \u201cCOSTA\u201d is also the Opposer\u2019s company name, COSTA LIMITED or trade name. Such corporate name is protected from unauthorized appropriation as held by the Supreme Court in Philips Export B.V v. Court of Appeals.<\/em><\/p>

(IPO BLA Decision, December 21, 2018).<\/em><\/p>\t\t\t\t\t\t\t\t<\/div>\n\t\t\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t<\/section>\n\t\t\t\t<\/div>\n\t\t","protected":false},"excerpt":{"rendered":"

COSTA VS. LIBRARY CAF\u00c9 BY COSTA COSTA LIMITED, the owner of the internationally well-known \u201cCOSTA\u201d marks, opposed the trademark application of a Philippine company, SEA AND SIERRA VISTA, INC., for the mark\u00a0\u00a0 \u00a0 . COSTA LIMITED is known for its coffee shops…<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[31],"tags":[],"class_list":["post-1568","post","type-post","status-publish","format-standard","hentry","category-ip"],"_links":{"self":[{"href":"https:\/\/www.veralaw.com\/index.php?rest_route=\/wp\/v2\/posts\/1568","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.veralaw.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.veralaw.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.veralaw.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.veralaw.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1568"}],"version-history":[{"count":4,"href":"https:\/\/www.veralaw.com\/index.php?rest_route=\/wp\/v2\/posts\/1568\/revisions"}],"predecessor-version":[{"id":3862,"href":"https:\/\/www.veralaw.com\/index.php?rest_route=\/wp\/v2\/posts\/1568\/revisions\/3862"}],"wp:attachment":[{"href":"https:\/\/www.veralaw.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1568"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.veralaw.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1568"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.veralaw.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1568"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}