Second Division (G.R. No. 222366, December 04, 2017)

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SECOND DIVISION
[ G.R. No. 222366, December 04, 2017 ]
W LAND HOLDINGS, INC., PETITIONER, V. STARWOOD HOTELS

AND RESORTS WORLDWIDE, INC., RESPONDENT.
DECISION
PERLAS-BERNABE, J.:
Assailed in this petition for review on certiorari[1] are the Decision[2] dated June 22,
2015 and the Resolution[3] dated January 7, 2016 of the Court of Appeals (CA) in CA-
G.R. SP No. 133825 affirming the Decision[4] dated January 10, 2014 of the
Intellectual Property Office (IPO) - Director General (IPO DG), which, in turn, reversed
the Decision[5] dated May 11, 2012 of the IPO Bureau of Legal Affairs (BLA) in Inter
Partes Case No. 14-2009-00143, and accordingly, dismissed petitioner W Land
Holdings, Inc.'s (W Land) petition for cancellation of the trademark "W" registered in
the name of respondent Starwood Hotels and Resorts, Worldwide, Inc. (Starwood).
The Facts
On December 2, 2005, Starwood filed before the IPO an application for registration of
the trademark "W" for Classes 43[6] and 44[7] of the International Classification of
Goods and Services for the Purposes of the Registration of Marks[8] (Nice
Classification).[9] On February 26, 2007, Starwood's application was granted and thus,
the "W" mark was registered in its name.[10] However, on April 20, 2006, W Land
applied[11] for the registration of its own "W" mark for Class 36,[12] which thereby
prompted Starwood to oppose the same.[13] In a Decision[14] dated April 23, 2008, the
BLA found merit in Starwood's opposition, and ruled that W Land's "W" mark is
confusingly similar with Starwood's mark,[15] which had an earlier filing date. W Land
filed a motion for reconsideration[16] on June 11, 2008, which was denied by the BLA
in a Resolution[17] dated July 23, 2010.
On May 29, 2009, W Land filed a Petition for Cancellation[18] of Starwood's mark for
non-use under Section 151.1[19] of Republic Act No. 8293 or the "Intellectual Property
Code of the Philippines" (IP Code),[20] claiming that Starwood has failed to use its
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mark in the Philippines because it has no hotel or establishment in the Philippines

rendering the services covered by its registration; and that Starwood's "W" mark
application and registration barred its own "'W" mark application and registration for
use on real estate.[21]
In its defense,[22] Starwood denied having abandoned the subject mark on the ground
of non-use, asserting that it filed with the Director of Trademarks a notarized
Declaration of Actual Use[23] (DAU)[24] with evidence of use on December 2, 2008,[25]
which was not rejected. In this relation, Starwood argued that it conducts hotel and
leisure business both directly and indirectly through subsidiaries and franchisees, and
operates interactive websites for its W Hotels in order to accommodate its potential
clients worldwide.[26] According to Starwood, apart from viewing agents, discounts,
promotions, and other marketing fields being offered by it, these interactive websites
allow Philippine residents to make reservations and bookings, which presuppose clear
and convincing use of the "W'' mark in the Philippines.[27]
The BLA Ruling
In a Decision[28] dated May 11, 2012, the BLA ruled in W Land's favor, and accordingly
ordered the cancellation of Starwood's registration for the "W" mark. The BLA found
that the DAU and the attachments thereto submitted by Starwood did not prove actual
use of the "W" mark in the Philippines, considering that the "evidences of use" attached
to the DAU refer to hotel or establishments that are located abroad.[29] In this regard,
the BLA opined that "the use of a trademark as a business tool and as contemplated
under [Section 151.1 (c) of RA 8293] refers to the actual attachment thereof to goods
and services that are sold or availed of and located in the Philippines."[30]
Dissatisfied, Starwood appealed[31] to the IPO DG.
The IPO DG Ruling
In a Decision[32] dated January 10, 2014, the IPO DG granted Starwood's appeal,[33]
thereby dismissing W Land's Petition for Cancellation. Contrary to the BLA's findings,
the IPO DG found that Starwood's submission of its DAU and attachments, coupled by
the acceptance thereof by the IPO Bureau of Trademarks, shows that the "W" mark still
bears a "registered" status. Therefore, there is a presumption that Starwood
sufficiently complied with the registration requirements for its mark.[34] The IPO DG
likewise held that the absence of any hotel or establishment owned by Starwood in the
Philippines bearing the "W" mark should not be equated to the absence of its use in the
country, opining that Starwood's pieces of evidence, particularly its interactive website,
indicate actual use in the Philippines,[35] citing Rule 205[36] of the Trademark
Regulations, as amended by IPO Office Order No. 056-13.[37] Finally, the IPO DG
stressed that since Starwood is the undisputed owner of the "W" mark for use in hotel
and hotel-related services, any perceived damage on the part of W Land in this case
should be subordinated to the essence of protecting Starwood's intellectual property
rights. To rule otherwise is to undermine the intellectual property system.[38]
Aggrieved, W Land filed a petition for review[39] under Rule 43 of the Rules of Court
before the CA.
The CA Ruling
In a Decision[40] dated June 22, 2015, the CA affirmed the IPO DG ruling. At the onset,
the CA observed that the hotel business is peculiar in nature in that the offer, as well as
the acceptance of room reservations or bookings wherever in the world is an
indispensable element. As such, the actual existence or presence of a hotel in one place
is not necessary before it can be considered as doing business therein.[41] In this
regard, the CA recognized that the internet has become a powerful tool in allowing
businesses to reach out to consumers in a given market without being physically
present thereat; thus, the IPO DG correctly held that Starwood's interactive websites
already indicate its actual use in the Philippines of the "W" mark.[42] Finally, the CA
echoed the IPO DG's finding that since Starwood is the true owner of the "W" mark - as
shown by the fact that Starwood had already applied for the registration of this mark
even before W Land was incorporated - its registration over the same should remain
valid, absent any showing that it has abandoned the use thereof.[43]
Unperturbed, W Land moved for reconsideration,[44] but was denied in a Resolution[45]

dated January 7, 2016; hence, this petition.
The Issue Before the Court
The essential issue for the Court's resolution is whether or not the CA correctly
affirmed the IPO DG's dismissal of W Land's Petition for Cancellation of Starwood's "W''
mark.
The Court's Ruling
The petition is without merit.
The IP Code defines a "mark" as "any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise."[46] Case law explains that "
[t]rademarks deal with the psychological function of symbols and the effect of these
symbols on the public at large."[47] It is a merchandising short-cut, and, "[w]hatever
the means employed, the aim is the same to convey through the mark, in the minds of
potential customers, the desirability of the commodity upon which it appears."[48]

Thus, the protection of trademarks as intellectual property is intended not only to
preserve the goodwill and reputation of the business established on the goods or
services bearing the mark through actual use over a period of time, but also to
safeguard the public as consumers against confusion on these goods or services.[49] As
viewed by modern authorities on trademark law, trademarks perform three (3) distinct
functions: (1) they indicate origin or ownership of the articles to which they are
attached; (2) they guarantee that those articles come up to a certain standard of
quality; and (3) they advertise the articles they symbolize.[50]
In Berris Agricultural Co., Inc. v. Abyadang,[51] this Court explained that "[t]he
ownership of a trademark is acquired by its registration and its actual use by the
manufacturer or distributor of the goods made available to the purchasing public. x x x.
A certificate of registration of a mark, once issued, constitutes prima facie evidence of
the validity of the registration, of the registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in connection with the goods or services
and those that are related thereto specified in the certificate."[52] However, "the prima
facie presumption brought about by the registration of a mark may be challenged and
overcome, in an appropriate action, by proof of[, among others,] non-use of the
mark, except when excused."[53]
The actual use of the mark representing the goods or services introduced and
transacted in commerce over a period of time creates that goodwill which the law seeks
to protect. For this reason, the IP Code, under Section 124.2,[54] requires the
registrant or owner of a registered mark to declare "actual use of the mark" (DAU) and
present evidence of such use within the prescribed period. Failing in which, the IPO DG
may cause the motu propio removal from the register of the mark's registration.[55]
Also, any person, believing that "he or she will be damaged by the registration of a
mark," which has not been used within the Philippines, may file a petition for
cancellation.[56] Following the basic rule that he who alleges must prove his case,[57]
the burden lies on the petitioner to show damage and non-use.
The IP Code and the Trademark Regulations have not specifically defined "use."
However, it is understood that the "use" which the law requires to maintain the
registration of a mark must be genuine, and not merely token. Based on foreign
authorities,[58] genuine use may be characterized as a bona fide use which results
or tends to result, in one way or another, into a commercial interaction or
transaction "in the ordinary course of trade."[59]
What specific act or acts would constitute use of the mark sufficient to keep its
registration in force may be gleaned from the Trademark Regulations, Rule 205 of
which reads:
RULE 205. Contents of the Declaration and Evidence of Actual Use. — The
declaration shall be under oath, must refer to only one application or
registration, must contain the name and address of the applicant or
registrant declaring that the mark is in actual use in the Philippines,
list of goods where the mark is attached; list the name or names and the
exact location or locations of the outlet or outlets where the products
are being sold or where the services are being rendered, recite
sufficient facts to show that the mark described in the application or
registration is being actually used in the Philippines and, specifying
the nature of such use. The declarant shall attach five labels as actually
used on the goods or the picture of the stamped or marked container visibly
and legibly showing the mark as well as proof of payment of the prescribed
fee. [As amended by Office Order No. 08 (2000)] (Emphases supplied)
The Trademark Regulations was amended by Office Order No. 056-13. Particularly, Rule
205 now mentions certain items which "shall be accepted as proof of actual use of the
mark:"
RULE 205. Contents of the Declaration and Evidence of Actual Use.—
(a) The declaration shall be under oath and filed by the applicant or
registrant (or the authorized officer in case of a juridical entity) or the
attorney or authorized representative of the applicant or registrant. The
declaration must refer to only one application or registration, shall contain
the name and address of the applicant or registrant declaring that the mark
is in actual use in the Philippines, the list of goods or services where the
mark is used, the name/s of the establishment and address where the
products are being sold or where the services are being rendered. If the
goods or services are available only by online purchase, the website must
be indicated on the form in lieu of name or address of the establishment or
outlet. The applicant or registrant may include other facts to show that the
mark described in the application or registration is actually being used in
the Philippines. The date of first use shall not be required.
(b) Actual use for some of the goods and services in the same class shall
constitute use for the entire class of goods and services. Actual use for one
class shall be considered use for related classes. In the event that some
classes are not covered in the declaration, a subsequent declaration of
actual use may be filed for the other classes of goods or services not
included in the first declaration, provided that the subsequent declaration is
filed within the three year period or the extension period, in case an
extension of time to file the declaration was timely made. In the event that
no subsequent declaration of actual use for the other classes of goods and
services is filed within the prescribed period, the classes shall be
automatically dropped from the application or registration without need of
notice to the applicant or registrant.
(c) The following shall be accepted as proof of actual use of the

mark: (1) labels of the mark as these are used; (2) downloaded pages
from the website of the applicant or registrant clearly showing that
the goods are being sold or the services are being rendered in the
Philippines; (3) photographs (including digital photographs printed on
ordinary paper) of goods bearing the marks as these are actually used or of
the stamped or marked container of goods and of the establishment/s
where the services are being rendered; (4) brochures or advertising
materials showing the actual use of the mark on the goods being sold or
services being rendered in the Philippines; (5) for online sale, receipts of
sale of the goods or services rendered or other similar evidence of
use, showing that the goods are placed on the market or the
services are available in the Philippines or that the transaction took
place in the Philippines; (6) copies of contracts for services showing the
use of the mark. Computer printouts of the drawing or reproduction of
marks will not be accepted as evidence of use.
(d) The Director may, from time to time, issue a list of acceptable
evidence of use and those that will not be accepted by the Office.
(Emphases and underscoring supplied)
Office Order No. 056-13 was issued by the IPO DG on April 5, 2013, pursuant to his
delegated rule-making authority under Section 7 of the IP Code.[60] The rationale for
this issuance, per its whereas clauses, is to further "the policy of the [IPO] to
streamline administrative procedures in registering trademarks" and in so doing,
address the need "to clarify what will be accepted as proof of use." In this regard, the
parameters and list of evidence introduced under the amended Trademark Regulations
are thus mere administrative guidelines which are only meant to flesh out the types of
acceptable evidence necessary to prove what the law already provides, i.e., the
requirement of actual use. As such, contrary to W Land's postulation,[61] the same
does not diminish or modify any substantive right and hence, may be properly applied
to "all pending and registered marks,"[62] as in Starwood's "W" mark for hotel / hotel
reservation services being rendered or, at the very least, made available in the
Philippines.
Based on the amended Trademark Regulations, it is apparent that the IPO has now
given due regard to the advent of commerce on the internet. Specifically, it now
recognizes, among others, "downloaded pages from the website of the applicant or
registrant clearly showing that the goods are being sold or the services are being
rendered in the Philippines," as well as "for online sale, receipts of sale of the goods or
services rendered or other similar evidence of use, showing that the goods are placed
on the market or the services are available in the Philippines or that the transaction
took place in the Philippines,"[63] as acceptable proof of actual use. Truly, the Court
discerns that these amendments are but an inevitable reflection of the realities of the
times. In Mirpuri v. CA,[64] this Court noted that "[a]dvertising on the Net and
cybershopping are turning the Internet into a commercial marketplace:"[65]
The Internet is a decentralized computer network linked together through

routers and communications protocols that enable anyone connected to it to
communicate with others likewise connected, regardless of physical
location. Users of the Internet have a wide variety of communication
methods available to them and a tremendous wealth of information that
they may access. The growing popularity of the Net has been driven in large
part by the World Wide Web, i.e., a system that facilitates use of the Net by
sorting through the great mass of information available on it. Advertising
on the Net and cybershopping are turning the Internet into a
commercial marketplace.[66] (Emphasis and underscoring supplied)
Thus, as modes of advertising and acquisition have now permeated into virtual zones
over cyberspace, the concept of commercial goodwill has indeed evolved:
In the last half century, the unparalleled growth of industry and the rapid
development of communications technology have enabled trademarks,
tradenames and other distinctive signs of a product to penetrate regions
where the owner does not actually manufacture or sell the product itself.
Goodwill is no longer confined to the territory of actual market
penetration; it extends to zones where the marked article has been
fixed in the public mind through advertising. Whether in the print,
broadcast or electronic communications medium, particularly on the
Internet, advertising has paved the way for growth and expansion
of the product by creating and earning a reputation that crosses
over borders, virtually turning the whole world into one vast
marketplace.[67] (Emphasis and underscoring supplied)
Cognizant of this current state of affairs, the Court therefore agrees with the IPO DG,
as affirmed by the CA, that the use of a registered mark representing the owner's
goods or services by means of an interactive website may constitute proof of actual use
that is sufficient to maintain the registration of the same. Since the internet has turned
the world into one vast marketplace, the owner of a registered mark is clearly entitled
to generate and further strengthen his commercial goodwill by actively marketing and
commercially transacting his wares or services throughout multiple platforms on the
internet. The facilities and avenues present in the internet are, in fact, more prominent
nowadays as they conveniently cater to the modern-day consumer who desires to
procure goods or services at any place and at any time, through the simple click of a
mouse, or the tap of a screen. Multitudinous commercial transactions are accessed,
brokered, and consummated everyday over websites. These websites carry the mark
which represents the goods or services sought to be transacted. For the owner, he
intentionally exhibits his mark to attract the customers' interest in his goods or
services. The mark displayed over the website no less serves its functions of indicating
the goods or services' origin and symbolizing the owner's goodwill than a mark
displayed in the physical market. Therefore, there is no less premium to recognize
actual use of marks through websites than their actual use through traditional means.
Indeed, as our world evolves, so too should our appreciation of the law. Legal
interpretation - as it largely affects the lives of people in the here and now - never
happens in a vacuum. As such, it should not be stagnant but dynamic; it should not be
ensnared in the obsolete but rather, sensitive to surrounding social realities.
It must be emphasized, however, that the mere exhibition of goods or services over the
internet, without more, is not enough to constitute actual use. To reiterate, the "use"
contemplated by law is genuine use - that is, a bona fide kind of use tending towards a
commercial transaction in the ordinary course of trade. Since the internet creates a
borderless marketplace, it must be shown that the owner has actually
transacted, or at the very least, intentionally targeted customers of a
particular jurisdiction in order to be considered as having used the trade mark
in the ordinary course of his trade in that country. A showing of an actual
commercial link to the country is therefore imperative. Otherwise, an
unscrupulous registrant would be able to maintain his mark by the mere expedient of
setting up a website, or by posting his goods or services on another's site, although no
commercial activity is intended to be pursued in the Philippines. This type of token use
renders inutile the commercial purpose of the mark, and hence, negates the reason to
keep its registration active. As the IP Code expressly requires, the use of the
mark must be "within the Philippines." This is embedded in Section 151 of the IP
Code on cancellation, which reads:
SECTION 151. Cancellation. — 151.1. A petition to cancel a registration of a

mark under this Act may be filed with the Bureau of Legal Affairs by any
person who believes that he is or will be damaged by the registration of a
mark under this Act as follows:
(a) Within five (5) years from the date of the registration of the
mark under this Act.
(b) At any time, if the registered mark becomes the generic
name for the goods or services, or a portion thereof, for
which it is registered, or has been abandoned, or its
registration was obtained fraudulently or contrary to the

provisions of this Act, or if the registered mark is being used
by, or with the permission of, the registrant so as to
misrepresent the source of the goods or services on or in
connection with which the mark is used. If the registered
mark becomes the generic name for less than all of the goods
or services for which it is registered, a petition to cancel the
registration for only those goods or services may be filed. A
registered mark shall not be deemed to be the generic name
of goods or services solely because such mark is also used as
a name of or to identify a unique product or service. The
primary significance of the registered mark to the relevant
public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the
generic name of goods or services on or in connection with
which it has been used.
(c) At any time, if the registered owner of the mark
without legitimate reason fails to use the mark within
the Philippines, or to cause it to be used in the
Philippines by virtue of a license during an uninterrupted
period of three (3) years or longer. (Emphasis and
underscoring supplied)
The hotel industry is no stranger to the developments and advances in technology. Like
most businesses nowadays, hotels are utilizing the internet to drive almost every
aspect of their operations, most especially the offering and accepting of room
reservations or bookings, regardless of the client or customer base. The CA explained
this booking process in that the "business transactions commence with the placing of
room reservations, usually by or through a travel agent who acts for or in behalf of his
principal, the hotel establishment. [The] reservation is first communicated to the
reservations and booking assistant tasked to handle the transaction. After the
reservation is made, the specific room reserved for the guest will be blocked and will
not be offered to another guest. As such, on the specified date of arrival, the room
reserved will be available to the guest."[68]
In this accord, a hotel's website has now become an integral element of a hotel
business. Especially with the uptrend of international travel and tourism, the hotel's
website is now recognized as an efficient and necessary tool in advertising and
promoting its brand in almost every part of the world. More so, interactive websites
that allow customers or clients to instantaneously book and pay for, in advance,
accommodations and other services of a hotel anywhere in the world, regardless of the
hotel's actual location, dispense with the need for travel agents or hotel employees to
transact the reservations for them. In effect, the hotel's website acts as a bridge or
portal through which the hotel reaches out and provides its services to the
client/customer anywhere in the world, with the booking transaction completed at the
client/customer's own convenience. It is in this sense that the CA noted that the "actual
existence or presence of a hotel in one place is not necessary before it can be
considered as doing business therein."[69]
As earlier intimated, mere use of a mark on a website which can be accessed anywhere
in the world will not automatically mean that the mark has been used in the ordinary
course of trade of a particular country. Thus, the use of mark on the internet must be
shown to result into a within-State sale, or at the very least, discernibly intended to
target customers that reside in that country. This being so, the use of the mark on
an interactive website, for instance, may be said to target local customers
when they contain specific details regarding or pertaining to the target State,
sufficiently showing an intent towards realizing a within-State commercial
activity or interaction. These details may constitute a local contact phone number,
specific reference being available to local customers, a specific local webpage, whether
domestic language and currency is used on the website, and/or whether domestic
payment methods are accepted.[70] Notably, this paradigm of ascertaining local details
to evince within-state commercial intent is subscribed to by a number of jurisdictions,
namely, the European Union, Hong Kong, Singapore, Malaysia, Japan, Australia,
Germany, France, Russia, and the United Kingdom.[71] As for the U.S. - where most of
our intellectual property laws have been patterned[72] - there have been no decisions
to date coming from its Trademark Trial and Appeal Board involving cases challenging
the validity of mark registrations through a cancellation action based on the mark's
internet use. However, in International Bancorp LLC v. Societe des Bains de Mer et du
Cercle des Etrangers a Monaco,[73] it was ruled that mere advertising in the U.S.
combined with rendering of services to American customers in a foreign country
constituted "use" for the purpose of establishing trademark rights in the U.S.
In this case, Starwood has proven that it owns Philippine registered domain names,[74]
i.e., www.whotels.ph, www.wreservations.ph, www.whotel.ph, www.wreservation.ph,
for its website that showcase its mark. The website is readily accessible to Philippine
citizens and residents, where they can avail and book amenities and other services in
any of Starwood's W Hotels worldwide. Its website also readily provides a phone
number[75] for Philippine consumers to call for information or other concerns. The
website further uses the English language[76] - considered as an official language in
this country[77] - which the relevant market in the Philippines understands and often
uses in the daily conduct of affairs. In addition, the prices for its hotel accommodations
and/or services can be converted into the local currency or the Philippine Peso.[78]
Amidst all of these features, Starwood's "W" mark is prominently displayed in the
website through which consumers in the Philippines can instantaneously book and pay
for their accommodations, with immediate confirmation, in any of its W Hotels.
Furthermore, it has presented data showing a considerably growing number of internet

users in the Philippines visiting its website since 2003, which is enough to conclude that
Starwood has established commercially-motivated relationships with Philippine
consumers.[79]
Taken together, these facts and circumstances show that Starwood's use of its "W"
mark through its interactive website is intended to produce a discernable commercial
effect or activity within the Philippines, or at the very least, seeks to establish
commercial interaction with local consumers. Accordingly, Starwood's use of the "W"
mark in its reservation services through its website constitutes use of the mark
sufficient to keep its registration in force.
To be sure, Starwood's "W" mark is registered for Classes 43, i.e., for hotel, motel,
resort and motor inn services, hotel reservation services, restaurant, bar and
catering services, food and beverage preparation services, cafe and cafeteria services,
provision of conference, meeting and social function facilities, under the Nice
Classification.[80] Under Section 152.3 of the IP Code, "[t]he use of a mark in
connection with one or more of the goods or services belonging to the class in respect
of which the mark is registered shall prevent its cancellation or removal in respect of all
other goods or services of the same class." Thus, Starwood's use of the "W" mark for
reservation services through its website constitutes use of the mark which is already
sufficient to protect its registration under the entire subject classification from non-use
cancellation. This, notwithstanding the absence of a Starwood hotel or establishment in
the Philippines.
Finally, it deserves pointing out that Starwood submitted in 2008 its DAU with evidence
of use which the IPO, through its Director of Trademarks and later by the IPO DG in the
January 10, 2014 Decision, had accepted and recognized as valid. The Court finds no
reason to disturb this recognition. According to jurisprudence, administrative agencies,
such as the IPO, by means of their special knowledge and expertise over matters falling
within their jurisdiction are in a better position to pass judgment on this issue.[81]
Thus, their findings are generally accorded respect and finality, as long as they are
supported by substantial evidence. In this case, there is no compelling basis to reverse
the IPO DG's findings - to keep Starwood's registration for the "W" mark in force - as
they are well supported by the facts and the law and thus, deserve respect from this
Court.
WHEREFORE, the petition is DENIED. The Decision dated June 22, 2015 and the
Resolution dated January 7, 2016 of the Court of Appeals in CA-G.R. SP No. 133825
are hereby AFFIRMED.
SO ORDERED.
Peralta (Acting Chairperson), Caguioa, and Reyes, Jr., JJ., concur.

Jardeleza,[*] J., on leave.
[*] Designated Additional Member per Raffle dated November 27, 2017; on leave.
[1] Rollo, pp. 10-63.
[2] Id. at 70 and 76-87. Penned by Associate Justice Carmelita Salandanan-Manahan
with Associate Justices Japar B. Dimaampao and Franchito N. Diamante, concurring.
[3] Id. at 75, 71-73.
[4] Id. at 168-175. Penned by Director General Ricardo R. Blancaflor.
[5] Id. at 758-767. Penned by Director IV Atty. Nathaniel S. Arevalo.
[6] CLASS 43 - Services for providing food and drink; temporary accommodation.
Explanatory Note: Class 43 includes mainly services provided by persons or

establishments whose aim is to prepare food and drink for consumption and
services provided to obtain bed and board in hotels, boarding houses or
other establishments providing temporary accommodation. (See also id. at
76.)
[7] CLASS 44 - Medical services; veterinary services; hygienic and beauty care for
human beings or animals; agriculture, horticulture and forestry services.
Explanatory Note: Class 44 includes mainly medical care, hygienic and

beauty care given by persons or establishments to human beings and
animals; it also includes services relating to the fields of agriculture,
horticulture and forestry. (See also id. at 76.)
[8] World Intellectual Property Organization, Geneva, 8th Edition, published in 2001
(January 2002).
[9] Rollo, p. 76.
[10] See id. at 21.
[11] See Trademark Application Form; id. at 189.
[12] CLASS 36 - Insurance; financial affairs; monetary affairs; real estate affairs.
Explanatory Note: Class 36 includes mainly services rendered in financial

and monetary affairs and services rendered in relation to insurance
contracts of all kinds. (See also id. at 77.)
[13] See id. at 77.
[14] Id. at 148-164. Docketed as IPC No. 14-2007-00084 and penned by BLA Director
Estellita Beltran-Abelardo.
[15] See id. at 163-164.
[16] Not attached to the rollo.
[17] Rollo, p. 315. Penned by BLA Director Nathaniel S. Arevalo.
[18] Dated May 12, 2009. Id. at 177-184.
[19] The provision is cited on pages 12-13 of this ponencia.
[20]Entitled "AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND

ESTABLISHING THE INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS POWERS
AND FUNCTIONS, AND FOR OTHER PURPOSES'' (January 1, 1998).
[21] See rollo, pp. 180-183. See also id. at 76-78.
[22] See Verified Answer dated October 23, 2009; id. at 317-334.
[23] Dated April 3, 2008. Id. at 250.
[24] Required by Section 124.2 of the IP Code and Rule 204 of the "Rules and
Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped

Containers" or the "Trademark Regulations" as amended, approved on October 29,
1998.
[25] See rollo, p. 325.
[26] See id. at 325-326.
[27] See id. at 326. See also id. at 78.
[28] Id. at 758-767.
[29] Id. at 766.
[30] Id. at 767.
[31] See Memorandum (Respondent-Appellant) dated August 7, 2013; id. at 509-533.
[32] Id. at 168-175.
[33] Id. at 175.
[34] Id. at 172.
[35] See id. at 172-173.
[36] RULE 205. Contents of the Declaration and Evidence of Actual Use.—
(a) The declaration shall be under oath and filed by the applicant or
registrant (or the authorized officer in case of a juridical entity) or the
attorney or authorized representative of the applicant or registrant. The
declaration must refer to only one application or registration, shall contain
the name and address of the applicant or registrant declaring that the mark
is in actual use in the Philippines, the list of goods or services where the
mark is used, the name/s of the establishment and address where the
products are being sold or where the services are being rendered. If the
goods or services are available only by online purchase, the website
must be indicated on the form in lieu of name or address of the
establishment or outlet. The applicant or registrant may include
other facts to show that the mark described in the application or
registration is actually being used in the Philippines. The date of first
use shall not be required.
x x x x (Emphasis supplied)
[37] Entitled "AMENDMENT OF THE PROVISIONS ON DECLARATION OF ACTUAL USE OF
THE TRADEMARK REGULATIONS" (April 5, 2013).
[38] Rollo, p. 174.
[39] Dated February 18, 2014. Id. at 89-140.
[40] Id. at 70, 76-87.
[41] See id. at 82.
[42] Id. at 82-83.
[43] Id. at 85-86.
[44] See motion for reconsideration dated July 30, 2015; id. at 546-582.
[45] Id. at 75, 71-73.
[46] Section 121.1, Part III, RA 8293.
Section 38, paragraph 2 of RA 166, entitled "AN ACT TO PROVIDE FOR THE
REGISTRATION AND PROTECTION OF TRADE-MARKS, TRADE-NAMES AND
SERVICE-MARKS, DEFINING UNFAIR COMPETITION AND FALSE MARKING
AND PROVIDING REMEDIES AGAINST THE SAME, AND FOR OTHER
PURPOSES," otherwise known as "THE TRADEMARK LAW'' (June 20, 1947),
defines "trade-mark" as including "any word, name, symbol, emblem, sign
or device or any combination thereof adopted and used by a manufacturer
or merchant to identify his goods and distinguish them from those
manufactured, sold or dealt in by others."
[47] Mirpuri v. CA, 376 Phil. 628, 665 (1999).
[48] Philip Morris, Inc. v. Fortune Tobacco Corporation, 546 Phil. 300, 310 (2006),
citing Mishawaka Mfg. Co. v. Kresge Co., 316 U.S. 203, 53 USPQ (1942).
[49] UFC Philippines, Inc. v. Barrio Fiesta Manufacturing Corporation, G.R. No. 198889,
January 20, 2016, 781 SCRA 424, 456, citing Berries Agricultural Co., Inc. v.
Abyadang, 647 Phil. 517, 533 (2010).
[50] Mirpuri v. CA, supra note 47, at 645-646.
[51] Supra note 49.
[52] Id. at 525.
[53] Id. at 526; emphasis and underscoring supplied.
[54] Section 124.2. The applicant or the registrant shall file a declaration of actual
use of the mark with evidence to that effect, as prescribed by the Regulations within
three (3) years from the filing date of the application. Otherwise, the application shall
be refused or the mark shall be removed from the Register by the Director.
(Emphases and underscoring supplied)
[55] Rule 204 of the Trademark Regulations reads:
RULE 204. Declaration of Actual Use. - The Office will not require any proof
of use in commerce in the processing of trademark applications. However,

without need of any notice from the Office, all applicants or
registrants shall file a declaration of actual use of the mark with
evidence to that effect within three years, without possibility of
extension, from the filing date of the application. Otherwise, the
application shall be refused or the mark shall be removed from the
register by the Director motu propio. (Emphases and underscoring
supplied) See also Section 124.2 of the IP Code.
[56] Section 151 of the IP Code reads:
Section 151. Cancellation. - 151.1. A petition to cancel a registration of

a mark under this Act may be filed with the Bureau of Legal Affairs
by any person who believes that he is or will be damaged by the
registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the registration of the mark under
this Act.
(b) At any time, if the registered mark becomes the generic name for
the goods or services, or a portion thereof, for which it is registered, or has
been abandoned, or its registration was obtained fraudulently or contrary
to the provisions of this Act, or if the registered mark is being used by, or
with the permission of, the registrant so as to misrepresent the source of
the goods or services on or in connection with which the mark is used. If
the registered mark becomes the generic name for less than all of the
goods or services for which it is registered, a petition to cancel the
registration for only those goods or services may be filed. A registered mark
shall not be deemed to be the generic name of goods or services solely
because such mark is also used as a name of or to identity a unique product
or service. The primary significance of the registered mark to the relevant
public rather than purchaser motivation shall be the test for determining
whether the registered mark has become the generic name of goods or
services on or in connection with which it has been used.
(c) At any time, if the registered owner of the mark without

legitimate reason fails to use the mark within the Philippines, or to
cause it to be used in the Philippines by virtue of a license during an
uninterrupted period of three (3) years or longer. (Emphases supplied)
[57] Lim v. Equitable PCI Bank, 724 Phil. 453, 454 (2014).
[58] International Trademark Association, 2003 Europe Legislation Analysis

Subcommittee Report, What constitutes use of a registered trademark in the European
Union (including New Member States), (May 2004). <

http://www.inta.org/Advocacy/Documents/INTATrademarkUseEurope2004.pdf > (last
visited October 25, 2017), provides, among others:
CTM laws recognize that use of a CTM must be genuine: the reason for this
is 'that it is only the position on the market actually held by the trademark
proprietor that should be protected, and not a mere register right that is not
supported by any actual or potential goodwill. Furthermore, requiring use of
a mark as a condition for enforcing rights will reduce the number of conflicts
between marks and eventually also reduce the number of marks maintained
on the register without actually having been used' (see. OHIM Opposition
Guidelines, part VI, Guidelines on Proof of Use). (The CTM is the unified
trademark registration system in Europe established under the EU; see p.
44 of the Article)
The article likewise provides the definition, interpretation, or understanding of "use" in

the various jurisdictions in the European Union. For example: in Spain, its Trademark
Act 17/2001 requires that the "use" should be effective and real, with "real use" being
interpreted as a real, unequivocal, not disguised use (Decision of the Provincial Court of
Barcelona, 24 March 1998), and an existing and true use, contrary to merely formal
use whose sole purpose is to avoid revocation (Decision of the Provincial Court of
Barcelona, 7 March 1995); while "effective use" "consists in the continuous and
relevant introduction into the market of the goods or services bearing the mark, or
advertisement as a serious step in the production or selling process of the product.
Merely internal use, insignificant, economical use and occasional use are excluded"
(Decision of the Provincial Court of Barcelona, 7 March 1995). (See pp. 37-38 of the
Article).
In Germany, "use' under Section 26 (1) of MarkenG, German courts is understood as

referring only to "serious use," with the German courts having developed a three (3)-
element test, i.e., the duration, the extent, and the kind of use, all of which are taken
into account as objective criteria to establish use within the meaning of Section 26
MarkenG (cf. BGH GRUR 1980, 52 - Contiflex and BGH GRUR 1980, 289- Trend). (See
pp. 15-16 of the Article).
In the United Kingdom, whether there has been "use" of trademark requires the
application of the "genuine use" test, i.e., a factual test of intent to be satisfied through
examination of the facts and not requiring commercial success (Gerber Products Co v.
Gerber Foods International Ltd. [2002] RPC 637). (See p. 43 of the Article).
In the Benelux Countries (Belguim, Netherlands, and Luxembourg), the "use" to

effectively maintain the trademark rights, refers to "normal use", i.e., the use must
take place: with commercial intent; outside the company of the user; clearly related to
the products sold or offered by the user, which products are distinguished from the
products of others through such use; and normal (Decision by the Benelux Court of
Justice in Winston v. Whiston (BenCJ January 27, 1981, NJ 1981, 333, BIE 1981, p.
151). Whether use can be considered "normal' depends on the facts and circumstances
of the case, i.e., nature, scope, frequency, regularity and duration of the use; the
nature of the goods; and the nature and size of the company; while "use" can be
considered "commercial" if: a trademark or sign is used other than for merely scientific
purposes, as part of a company's or a professional's activities, or any other activity not
conducted in the private sphere; and if economic profit is intended with such use (See
pp. 5-6 of the Article).
In France, the "use" to protect a trademark registration from cancellation, must be

serious and regular, i.e., use occurred with the trademark owner's consent or, in case of
collective trademarks, in accordance with applicable statutes; use of the mark in a
modified form which does not alter its distinctive character; and affixing the mark on
products or their packaging solely for export (Article L.714-5 of the Intellectual
Property Code). Their case law also provides the following requirements governing uses
deemed serious and regular: the use must relate to products and services covered by
registration; must consist of a public use, i.e., not restricted to a strictly private use
(Paris, 25 May 1989); cannot consists of a single use, but can take the form of a single
advertisement (Versailles 27 May 1989); cannot be a sporadic or accidental use (TGI
Paris, 28 Nov. 1990, Ritz PIBD 1991 III 207) nor consist of preparatory or purely
experimental use, i.e., small-scale product trials conducted in hospitals, where such
products are not made available to patients as a whole (Regional Court of Paris, 16
December 1986, RPDI n° 10 p 131); use is determined according to quality and not
quantity (Paris, 18 February 1980); must be unambiguous, that is, trademark has to be
used as a trademark and not as a tradename or business name; a trademark can be
used by a licensee, or by anyone authorized by the legal trademark owner (Paris, 24
March 1998); the existence of a licence agreement, in itself does not constitute
evidence of serious and regular use of the trademark (CA Paris, 14 January 1998,
Gaz.Pal. 1998, 2, som.544); the manufacture of trademarked labels in France to be
affixed on items intended for export does not constitute a serious and regular use if the
labels were not actually affixed on the products in France (L'Oreal v. Loreen Paris, CA
Paris 4em4 B, 20 September 2002). (See pp. 13-14 of the Article).
[59] Under the United States (U.S.) Trademark Law of 1946, as amended (or the
Lanham Act), "use [of the mark] in commerce" is defined as the "bona fide use of a
mark in the ordinary course of trade", and, with particular reference to services, "when
it is used or displayed in the sale or advertising of services and the services are
rendered in commerce and the person rendering the services is engaged in commerce
in connection with the services." The pertinent provision reads:
TITLE X- CONSTRUCTION AND DEFINITIONS

§ 45 (15 U.S.C. § 1127).
In the construction of this chapter, unless the contrary is plainly apparent

from the context—
xxxx
Use in commerce. The term "use in commerce" means the bona fide
use of a mark in the ordinary course of trade, and not made merely to
reserve a right in a mark. For purposes of this chapter, a mark shall be
deemed to be in use in commerce —
xxxx
(2) on services when it is used or displayed in the sale or

advertising of services and the services are rendered in commerce,
or the services are rendered in more than one State or in the United States
and a foreign country and the person rendering the services is engaged
in commerce in connection with the services. (Emphases supplied)
[60] Section 7. The Director General and Deputies Director General. - 7.1. Functions. -
The Director General shall exercise the following powers and functions:
a) Manage and direct all functions and activities of the Office, including
the promulgation of rules and regulations to implement the
objectives, policies, plans, programs and projects of the Office:
Provided, That in the exercise of the authority to propose policies and
standards in relation to the following: (1) the effective, efficient, and
economical operations of the Office requiring statutory enactment; (2)
coordination with other agencies of government in relation to the
enforcement of intellectual property rights; (3) the recognition of attorneys,
agents, or other persons representing applicants or other parties before the
Office; and (4) the establishment of fees for the filing and processing of an
application for a patent, utility model or industrial design or mark or a
collective mark, geographic indication and other marks of ownership, and
for all other services performed and materials furnished by the Office, the
Director General shall be subject to the supervision of the Secretary of
Trade and Industry[.]
xxxx
[61] See rollo, pp.51-55.
[62] See Office Order No. 056-13, which states that "[t]his Office Order shall apply to
all pending and registered marks."
[63] See Rule 205 (c), items (2) and (3) of Office Order No. 056-13.
[64] Supra note 47.
[65] Id. at 649.
[66] Id.; citing Maureen O'Rourke, Fencing Cyberspace: Drawing Borders in a Virtual
World, Minnesota Law Review, vol. 82: 609-611, 615-618 [Feb. 1998].
[67] Id. at 648-649.
[68] Rollo, p. 82.
[69] Id.
[70] See also the Joint Recommendation Concerning Provisions on the Protection of
Marks, And Other Industrial Property rights in Signs, on the Internet (adopted by the
Assembly of the Paris Union for the Protection of Industrial Property and the General
Assembly of the World Intellectual Property Organization (WIPO) [September 24 to
October 3, 2001]) which provides that use of the sign on the internet constitutes use
within the Member State if such use produces commercial effect within that State
(Article 2). To determine whether the use has produced commercial effect, the
following factors can be considered: doing, or plans to do, business within the State;
level and character of commercial activity within, i.e., actually serving customers within
or has entered into other commercially motivated relationships with persons within the
Member State; connection of the offer of services with the Member State, i.e., delivery
of goods or services; prices are indicated in local currency; interactive contact
accessible to internet users within the Member State; indication of an address, phone
number, etc.; text used in conjunction with the use of the sign is in a language
predominantly used within the Member State; and use of the sign in connection with a
domain name (Article 3). <
http://www.wipo.int/edocs/pubdocs/en/marks/845/pub845.pdf > (last visited October
25, 2017)
[71] See Online Trademark Use. Particularly: European Union - 800-FLOWERS EU
[2000] FSR 697, affirmed [2001] EWCA Civ 721 (by the URC Munich, Decision of June
16, 2005, file no. 29 U 5456/04) (pp. 7-8); Hong Kong - applying the rulings in the
United Kingdom cases of 800 Flowers Trade mark [2000] FSR 697 and Euromarket
Designs Inc v. Peters [2000] FSR 20 (pp. 10-11); Singapore- Weir Warman Lrd. V.
Research & Development Pty Ltd [2007] (2 SLR 1073) (pp. 19-20); Malaysia - "[i]f the
website is intended to be used to seek worldwide trade with a view towards commercial
gain x x x its activities fall squarely within the category of 'doing business over the
internet' and may constitute for the purpose of trademark proceedings" (Abercrombie &
Fitch Co v. Fashion Factory Outlet KL Sdn Bhd [2008] 7 CLJ 413) (pp. 16-17); India-
'"use' of a trademark as understood under Indian law may not necessarily be use upon
or in physical relation to goods x x x to constitute use there is no requirement for the
goods bearing the mark to be physically present and made available in India." (Hardie
Trading Ltd V. Addison Paint and Chemicals Ltd. reported in 2003 [27] PTC 241,
decided on September 12, 2003) (p. 13); Korea- "[a]dvertisement over the internet
may be regarded as use of the trademark if the requirements of Article 2 of the Korean
Trademark Act x x x are satisfied, i.e., indicating the trademark on advertisement, price
lists, business papers, signboards or labels and displaying or distributing them." (p.
16); United Kingdom - Euromarket Designs Inc v. Peter & Another [2000] ETMR 1025,
and KK Sony Computer Entertainment v. Pacific Game Technology (Holding) Limited
[2006] EWHC 2509 (Pat.) (p. 22); Germany - "[t]he use of a trademark in the Internet
can be considered as use of the trademark in Germany if that use has a commercial
effect in Germany (German Court of Justice [BGH], published in GRUR 2005, 431, 432
'HOTEL MARITIME')" (p. 9); and France - "provided the website can be proven to be
directed at French consumers" (Decision of French Supreme Court "Cour de Cassation"
of January 11, 2005) (p. 9). <
http://www.inta.org/Advocacy/Documents/Online%20Trademark%20Use.pdf > (last
visited October 25, 2017).
See however, Canada: A brick-and-mortar presence in Canada is required for hotel

services. Website advertising and even offering reservation services online, may be
insufficient to maintain a TM registration for "hotel services" without an actual hotel
presence in Canada. (Bellagio Limousines v. Mirage Resorts Inc., 2012 TMOB 220 and
Strikeman Elliott LLP v. Millenium & Copthorne International Limited, 2017 TMOB 34).
Performance of ancillary or other related services in Canada do not constitute the
"performance" of "hotel services" in Canada (Miller Thompson LLP v. Hilton <
Worldwide Holding LLP, 2017 TMOB 19). http://www.bereskinparr.com/index.cfm?
cm=Doc&ce=downloadPDF&primaryKey=913 > (last visited October 25, 2017).
[72] See Sponsorship Speech of Senator Raul Roco; RECORD OF THE SENATE, Vol. II,
No. 29, October 8, 1996, p. 128. See also Nicandro, Rogelio. The Use of Prosecution
History in Post-Grant Patent Proceedings, pp. 5 and 9 (May 18, 2012) <
http://aippi.org/wp Content/uploads/committees/229/GR229philippines.pdf > (visited
October 28, 2017).
[73] 329 F. ed 359 (4th Cir. 2003).
[74] A domain name is defined as a "[u]nique address of a computer on the internet,
made up of three parts: (1) name of the entity, followed by (2) type of the entity,
followed by, if located outside the US, (3) entity's geographical location. Domain names
provide an easy way to remember internet address which is translated into its numeric
address (IP address) by the domain name system (DNS)." (See <
http://www.businessdictionary.com/definition/domain-name.html > (visited October

25, 2017). Each website has a domain name that serves as an address, which is used
to access the website. < https://techterms.com/definition/domain_name > (visited
October 25, 2017). A domain name is a "unique identifier with a set of properties
attached to it so that computers can perform conversions. A typical domain name is
"icann.org". Most commonly the property attached is an IPaddress, like
"208.77.188.103", so that computers can convert the domain name into an IP address.
However the DNS is used for many other purposes. The domain name may also be a
delegation, which transfers responsibility of all sub-domains within that domain to
another entity." < https://www.icann.org/resources/pages/glossary-2014-02-04-en >
(visited October 25, 2017). Domain name registration pertains to the "act of reserving
a name on the internet for a certain period, usually one year." <
https://www.siteground.com/kb/domain_name_registration/ > (visited October 25,
2017).
[75] In particular, Starwood designates the contact number +80032525252 for the
Philippines. See <

https://www.starwoodhotels.com/whotels/support/contact/worldwide.html?country=PH
> (visited October 25, 2017).
[76] In its website, when pointing to the language icon, a drop down box will appear
which lists English, among others, as one of the language the Starwood website uses.
See < http://www.starwoodhotels.com/whotels/index.html?
EM=DWR_WH_WHOTELS.PH > (visited October 25, 2017).
[77] See Article XIV, Section 7 of the 1987 Constitution.
[78] In booking hotel reservations, the website offers clients the option to view
accommodation rates and pay for the same according to the client's local currency
through the "currency converter" icon. See <
https://www.starwoodhotels.com/whotels/search/results/detail.html?
brand=WH&country=HK&city=
Hong+Kong&numberOfChildren=0&numberOfRooms=1&numberOfAdults=l&arrivalDate=2017-
11-15&departureDate=2017-11-16¤cyCode=PHP > (visited October 25, 2017).
[79] See rollo, p. 662.
[80] The Nice Classification is a classification of goods and services for the purpose of
registering trademarks and service marks, based on a multilateral treaty administered

by the World Intellectual Property Organization. The Treaty is called the Nice
Agreement Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks concluded in 1957. <
http://www.wipo.int/treaties/en/classification/nice/ > (visited October 25, 2017). Class
43 of the Nice Classification also includes the following services: accommodation

bureau services (hotels, boarding houses); bar services; boarding house services and
bookings; boarding for animals; providing campground facilities; rentals of chairs,
tables, table linen, glassware; rental of cooking apparatus; day-nursery services; rental
of drinking water dispensers; food and drink catering; food sculpting; holiday camp
services; rental of lighting apparatus; rental of meeting rooms; retirement home
services; self-service restaurant services; snack-bar services; rental of temporary
accommodation; temporary accommodation services; rental of tents; tourist homes
services; and rental of transportable buildings. See Nice Classification, 11th Edition <
http://web2.wipo.int/classifications/nice/nclpub/en/fr/home.xhtml > (visited October
25, 2017). See also rollo, p. 76.
[81] See Summit One Condominium Corp. v. Pollution Adjudication Board, G.R. No.
215029, July 5, 2017.
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[ G.R. No. 222366, December 04, 2017 ]

W LAND HOLDINGS, INC., PETITIONER, V. STARWOOD HOTELS

mark in the Philippines because it has no hotel or establishment in the Philippines

The BLA Ruling

Dissatisfied, Starwood appealed[31] to the IPO DG.

The IPO DG Ruling

Unperturbed, W Land moved for reconsideration,[44] but was denied in a Resolution[45]

The Issue Before the Court

The Court's Ruling

The petition is without merit.

potential customers, the desirability of the commodity upon which it appears."[48]

RULE 205. Contents of the Declaration and Evidence of Actual Use.—

(c) The following shall be accepted as proof of actual use of the

The Internet is a decentralized computer network linked together through

SECTION 151. Cancellation. — 151.1. A petition to cancel a registration of a

registration was obtained fraudulently or contrary to the

Furthermore, it has presented data showing a considerably growing number of internet

Peralta (Acting Chairperson), Caguioa, and Reyes, Jr., JJ., concur.

[1] Rollo, pp. 10-63.

[2] Id. at 70 and 76-87. Penned by Associate Justice Carmelita Salandanan-Manahan

with Associate Justices Japar B. Dimaampao and Franchito N. Diamante, concurring.

[3] Id. at 75, 71-73.

[4] Id. at 168-175. Penned by Director General Ricardo R. Blancaflor.

[5] Id. at 758-767. Penned by Director IV Atty. Nathaniel S. Arevalo.

Explanatory Note: Class 43 includes mainly services provided by persons or

human beings or animals; agriculture, horticulture and forestry services.

Explanatory Note: Class 44 includes mainly medical care, hygienic and

[9] Rollo, p. 76.

[10] See id. at 21.

[11] See Trademark Application Form; id. at 189.

Explanatory Note: Class 36 includes mainly services rendered in financial

[13] See id. at 77.

[15] See id. at 163-164.

[16] Not attached to the rollo.

[17] Rollo, p. 315. Penned by BLA Director Nathaniel S. Arevalo.

[18] Dated May 12, 2009. Id. at 177-184.

[19] The provision is cited on pages 12-13 of this ponencia.

[20]Entitled "AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND

[21] See rollo, pp. 180-183. See also id. at 76-78.

[23] Dated April 3, 2008. Id. at 250.

Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped

[25] See rollo, p. 325.

[26] See id. at 325-326.

[27] See id. at 326. See also id. at 78.

[28] Id. at 758-767.

[29] Id. at 766.

[30] Id. at 767.

[31] See Memorandum (Respondent-Appellant) dated August 7, 2013; id. at 509-533.

[32] Id. at 168-175.

[33] Id. at 175.

[34] Id. at 172.

[35] See id. at 172-173.

[37] Entitled "AMENDMENT OF THE PROVISIONS ON DECLARATION OF ACTUAL USE OF

THE TRADEMARK REGULATIONS" (April 5, 2013).

[38] Rollo, p. 174.

[39] Dated February 18, 2014. Id. at 89-140.

[40] Id. at 70, 76-87.

[41] See id. at 82.