In 2001, Jolliville Holdings (Jolliville) filed an application with the Intellectual Property Office (IPO) to register the mark JOLLIVILLE for “leasing, management services, property development and land banking” and most recently, “a local municipal waterworks system. Jolliville was able to successfully register the mark in September 2004 when the IPO issued a Certificate of Registration. However, it failed to file its 5th year Declaration of Actual Use in 2010, and their mark was removed by the IPO from the register.
In 2012, Jolliville filed an application for the same JOLLIVILLE mark for use on “real estate affairs - leasing of realty”. When the IPO published the mark on 2013, Jollibee Foods Corporation (Jollibee) opposed the application.
In its opposition, Jollibee claims that it is the registered owner and first user of the internationally-well known JOLLIBEE mark, and other related JOLLIBEE trademarks. It alleges that JOLLIVILLE is confusingly similar with its marks, claiming that it will be damaged by the registration of JOLLIVILLE. Being an internationally well-known trademark which enjoys substantial goodwill and recognition in the Philippines and worldwide, the unauthorized use of the JOLLIVILLE mark constitutes unfair competition. The dominant word element in JOLLIVILLE, which is JOLLI, is similar in appearance and sound with JOLLIBEE’s marks. Jollibee further claims that as the owner of a registered trademark, it is protected not only for the goods and services covered by its registration, but also for those covered by the normal potential expansion of its business. Jollibee claims that it is already involved in the real estate industry as a logical consequence of its main restaurant business.
Jolliville contends that JOLLIVILLE is not confusingly similar to “JOLLIBEE” contending that the marks possess substantial visual differences. First, the Jolliville and Jollibee’s marks deal with unrelated goods and services, while confusing similarity occurs only when visually similar marks are used on identical or closely related goods or services. Second, JOLLIBEE cannot claim exclusive ownership over the term “JOLLI” as there are numerous registered trademarks that use the term “JOLLY” and Jollibee has failed to prove that JOLLIBEE is well-known under well-settled jurisprudential standards. Finally, it claims that Jollibee is guilty of laches and can no longer question the registration of JOLLIVILLE.
The Office of the Director General of the IPO on June 8 2017, upheld the right of Jolliville to have their mark “JOLLIVILLE” registered on the following grounds:
First, Jolliville’s mark is not confusingly similar to Jollibee’s marks. In determining similarity and likelihood of confusion, case law has developed the Dominancy and Holistic or Totality tests. The Dominancy Test focuses on the similarity of the dominant features and visual impressions created by the marks that might cause confusion, mistake and deception in the mind of an ordinary purchaser. Whereas, the Holistic or Totality Test the entirety of the marks including labels and packaging, and focuses not only on the predominant words and elements appearing on both labels to determine whether one is confusingly similar to the other as to mislead the ordinary purchaser.
In this case, Jolliville’s mark is composed of both words and a design or logo. The logo is a stylized small letter “j” framed by a square written above the center of word elements JOLLIVILLE HOLDINGS CORPORATION. At first glance, one is easily attracted to the logo more than the words that accompany it. In contrast, Jollibee’s main mark is “JOLLIBEE” and the ”bee” mascot device.
The only common element of the contending marks is the use of the word ‘JOLLI’. The perceived similarity in sound between the marks, and the use of the common prefix is not sufficient to conclude that Jolliville’s mark is confusingly similar with any of Jollibee’s marks.
Second, the IPO found that Jollibee Corporation is barred by laches. Between Jolliville’s incorporation of JOLLIVILLE Realty & Development Co on September of 1986 and the time of Jollibee’s filing of opposition in 2013, 27 years had passed. Furthermore, when Jolliville became a publicly-listed company under the name JOLLIVILLE Holdings Corporation on 2002 to the filing of opposition, 11 years had gone by. All this time, Jollibee had the opportunity to allege confusing similarity, but it chose to remain silent.
Lastly, The Director General also found that Jollibee’s evidence was insufficient to prove that JOLLIBEE is an internationally well-known mark to prevent the registration of JOLLIVILLE. Neither had it proven and that Jolliville Holdings is guilty of unfair competition. Jollibee is evidently in the food business and no sufficient evidence was presented to prove that it had its marks registered under the same class of goods (realty) for which the JOLLIVILLE mark is sought to be registerd.
In the absence of the likelihood of confusion between the JOLLIVILLE and the JOLLIBEE marks, the IPO Director General found no grounds to prohibit the registration of JOLLIVILLE in the name of Jolliville Holdings Corporation.