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SC tells Barrio Fiesta to drop ‘Papa Boy’ as name for lechon sauce

High court says use of 'Papa' infringes on the copyright of UFC's Papa banana ketchup
By: - Reporter / @JeromeAningINQ
/ 11:41 AM March 02, 2016

MANILA — Reinstating the decision of the Intellectual Property Office, the Supreme Court has ruled that the application of Barrio Fiesta Manufacturing Corp. for the use of the name “Papa Boy” for its lechon sauce infringed on the trademark rights of UFC Philippines Inc., the manufacturer of the popular Papa banana ketchup.

In a 35-page ruling dated Jan. 20 and released on Tuesday, the high court’s first Division granted the petition of UFC, which later merged with NutriAsia Inc., to set aside the adverse decisions of the Court of Appeals in 2011.

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The Supreme Court ruled that the appeals tribunal erred in applying the holistic test and in reversing and setting aside the March 2008 decision of the IPO’s bureau of legal affairs and the January 2009 decision of the IPO director-general, both of which rejected Barrio Fiesta’s application for “Papa Boy & Device.”

“The findings of fact of the highly technical agency, the IPO, which has the expertise in this field, should have been given great weight by the Court of Appeals,” the high court said in the decision written by Justice Teresita Leonardo-De Castro.

In 2002, Barrio Fiesta filed an application for the mark for goods under Class 30 of the international classification of goods, specifically for a lechon sauce. NutriAsia opposed the application, contending that “Papa Boy & Device” was confusingly similar with its “Papa” marks, considering that its ketchup product and Barrio Fiesta’s lechon sauce product were related articles that fall under the same class.

The mark “Papa” for use on banana catsup and other similar goods was first used in 1954 by Neri Papa, taken from his surname. Papa used the mark “Papa” for about 27 years until he assigned the mark to Hernan Reyes, who registered the mark in 1983.

Two years later, UFC acquired the mark and re-registered it. The company also acquired the Papa banana catsup label from Reyes in 1983 and also registered the mark “Papa Ketsarap” in 1985.

Barrio Fiesta, on the other hand, stated that the mark “Papa Boy” came from the nickname of one of its incorporators, Bonifacio Ongpauco Sr., husband of Sixta “Mami Chit” Evangelista, who established the first Barrio Fiesta restaurant in Caloocan City in the 1950s. The couple are the grandparents of actress Heart Evangelista.

The high court noted that the “Papa” mark that has been in commercial use for decades and has established awareness and goodwill among consumers. It agreed with the IPO that the “Papa” was the dominant feature of Barrio Fiesta’s “Papa Boy & Device” mark as the “Papa” was written on top of and before the other words such that it would be the first word/figure that would catch the eyes.

The court said the IPO was correct in pointing out that the part of Barrio Fiesta’s mark which appeared prominently to the eyes and ears was the phrase ‘Papa Boy’ and a purchaser of respondent’s product would immediately recall that, not the smiling hog in the logo.

The court has also agreed that “Papa Boy & Device” could not be registered because it is related to a product, lechon sauce, an everyday all-purpose condiment and sauce, that is not subjected to great scrutiny and care by the casual purchaser, who knows from regular visits to the grocery store under what aisle to find it, in which bottle it is contained, and approximately how much it costs.

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Since NutriAsia’s product, catsup, is also a household product found on the same grocery aisle, in similar packaging, the public could think that petitioner has expanded its product mix to include lechon sauce, and that the “Papa Boy” lechon sauce has become part of the “Papa” family of sauces, according to the court.

If “Papa Boy & Device” were allowed registration, confusion of business might set in, and NutriAsia’s hard-earned goodwill would be associated to the newer product introduced by Barrio Fiesta, all because of the use of the word “Papa,” the court reasoned.

It noted that the words “Barrio Fiesta” were not included in the mark, and although printed on the label of its lechon sauce packaging, still did not remove the impression that “Papa Boy” was a product owned by the manufacturer of “Papa” catsup, by virtue of the use of dominant feature.

The court added that NutriAsia could expand its business to include lechon sauce, and that would be well within its rights, but the existence of “Papa Boy” lechon sauce would already eliminate this possibility and deprive it of its rights as an owner of a valid mark included in the Intellectual Property Code.

The Supreme Court also ruled that the Court of Appeals made a mistake in finding that “Papa,” being a common term of endearment for one’s father, was a word over which NutriAsia could not claim exclusive use and ownership.

“The Merriam-Webster dictionary defines ‘Papa’ simply as ‘a person’s father.’ True, a person’s father has no logical connection with catsup products, and that precisely makes ‘Papa’ as an arbitrary mark capable of being registered, as it is distinctive, coming from a family name that started the brand several decades ago,” the court explained.

It stressed that what was registered was not the word “Papa” as defined in the dictionary, but the word “Papa” as the last name of the original owner of the brand. In fact, being part of several of NutriAsia’s marks, there was no question that the IPO has found “Papa” to be a registrable mark, the court aded.

NutriAsia eventually registered Papa trademark and label design with the IPO in 2007.  SFM

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TAGS: Barrio Fiesta Manufacturing Corp., Business, copyright infringement, Court of Appeals, courts, Intellectual Property Office, IPO, IPO Bureau of Legal Affairs, Judiciary, lechon sauce, litigation, Nation, news, NutriAsia Inc., overturning of ruling, Papa banana ketchup, Papa Boy, Papa Boy & Device, Papa Boy lechon sauce, Supreme Court, Supreme Court justices, Supreme Court ruling, Teresita Leonardo de Castro, trials, UFC Philippines Inc.
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