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Republic of the Philippines

Department of Trade and Industry
INTELLECTUAL PROPERTY OFFICE
Bureau of Legal Affairs
Taguig City
JEETENDAR N. NEBHWANI
Petitioner,
-vs-

IPC No. 14-2015-00235

PETITION
FOR

CANCELLATION
Registration No.4-2014005030
Date Issued:13-November
2014
PETER PARKASH MOTWANI
Respondent-Registrant
X- - - - - - - - - - - - - - - - - - - -X
POSITION PAPER
(For the Respondent-Registrant)

COMES NOW, the Respondent- Registrant in the

Above- entitled case by and through the Undersigned
Counsel and unto this Honorable Office, most respectfully
avers:

I
PRELIMINARY STATEMENT
Petitioner causes of action against herein respondent
are devoid of any merit both in fact and in law, hence, the
said causes of action are unfounded and frivolous, and
necessarily must fail.

II

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PARTIES
Respondent-Registrant, PETER PARKASH MOTWANI with
address at 625 Ronquillo Street Sta. Cruz Manila as party
respondent,

Petitioner JEETENDAR N. NEBHWANI with address at 97

Magallanes Avenue, MAgallanes Village, Makati, Metro
Manila as party petitioner.

III
STATEMENT OF THE CASE
This is Petition for Cancellation of trademark TRIDENT
filed by the petitioner on May 12, 2015 against herein
respondent.

IV
FACTS OF THE CASE

Petitioner JEETENDAR N. NEBHWANI alleged that

Registration of the of the mark TRIDENT was issued in
contravention of Section 151.1 of the Intellectual Property
Code and should be cancelled since respondent registration
was obtained fraudulently by the herein respondent on the
false representation that it is the owner of the mark
TRIDENT and such 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
o\with which the mark is used.

That Petitioner alleged that the registration of the

respondent mark TRIDENT
is contrary to the other
provision of Intellectual Property Code of the Philippines.
That the registration of the respondent mark TRIDENT will
cause confusion, mistake and deception on the part of the

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purchasing public when applied to or used in connection
with the goods of the herein respondent.

That Petitioner claim to be the first user of the mark

TRIDENT in the Philippines for goods under class 9 having
first used the mark in 2004 having first trademark
application on December 12,2006 under the name of his
company Sunil Sheila Enterprises Inc. is the owner, prior
user and the first to register the TRIDENT mark for goods
under class 09. That respondent appropriation and
registration of the TRIDENT mark is intended to ride on the
reputation and goodwill of the TRIDENT mark and to
mislead the Petitioners customer and the public in general
and such fraud and deceit is designed to compete unfairly
with the Petitioner.

On the other hand. Respondent firmly denies that he

obtained the Registration of TRIDENT
OBTAINED
FRAUDULENTLY, the truth being is that the Respondent
herein applied for the registration of said products and the
Intellectual Property Office has issued and GRANTED the
said registration. That thru Office of Intellectual Property
already published and nobody opposed within sixty (60)
days to hold the respondent to register the name
TRIDENT.

That respondent-registrant is the first user of TRIDENT

brand name in Manila with the Sales Invoice No. 227 issued
October 26,1984 under P.M. Metal Craft and Co. wherein
respondent manufactured Electronics items.

Furthermore, Respondent-Registrant shows the proofs

that he is the original TRIDENT brand holder with the Sales
invoices No. 228 issued October 26, 1984, Sales No. 229
issued November 2, 1984 and the other Sales Invoice are
Nos. 240 and 241. On the contrary it is the respondent who
should move for the cancellation of the Registration of the
Petitioner.

V
STATEMENT OF THE ISSUES

I.

WHETHER OR NOT THE PETITIONER HAVE

VALID GROUND TO FILE VERIFIED PETITION
FOR CANCELLATION OF TRADEMARK NAME
TRIDENT

II.

WHETHER OR NOT THE REGISTRATION

TRADEMARK
TRIDENT
OBTAINED
FRAUDULENTLY BY THE RESPONDENT.

VI
DISCUSSION/ARGUMENTS
I.

PETITIONER HAVE NO VALID GROUND TO FILE VERIFIED

PETITION FOR CANCELLATION OF TRADEMARK TRIDENT
The Petitioner is not the first user of the trade
mark TRIDENT. It is the respondent-registrant who
first user of TRIDENT Brand name in Manila. That the
Office of Intellectual Property granted the registration
by the respondent-registrant of the trademark
TRIDENT and that nobody opposed in sixty (60)
days to hold the respondent the name TRIDENT.
That Certificate of TRIDENT was certified by the
Director Office with Examiner signature.
That for purposes of argument if it is true that the
petitioner is the first user of the trademark
TRIDENT under the Intellectual Property Code of
the Philippines (IP Code), the duration of a trademark
registration is ten (10) years. In order to maintain the
trademark registration, a declaration of actual use
(DAU) of the mark together with evidence of use of
the mark must be filed with the Intellectual Property
Office within its prescribed period which the

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Petitioner failed to do so. Failure to file the
Declaration of Actual Use (DAU) within the
prescribed periods will result for removal of
the mark from the registry by operation of law.
Sec. 145 of the Intellectual property Code (R.A.
8293) provides the duration as:
Sec. 145. Duration.- A certificate of registration
shall
remain
in
force
for
ten
(10)
years: Provided, That the registrant shall file a
declaration of actual use and evidence to
that effect, or shall show valid reasons based on
the existence of obstacles to such use, as
prescribed by the Regulations, within one (1)
year from the fifth anniversary of the date
of the registration of the mark. Otherwise,
the mark shall be removed from the
Register by the Office.

The aforementioned provision clearly reveals that

failure to file the DAU within the requisite period
results in the automatic cancellation of registration of
a trademark. In turn, such failure is tantamount to
the abandonment or withdrawal of any right or
interest the registrant has over his trademark. ( See
Mattel, Inc. v. Francisco, G.R. No. 166886, July
30, 2008, 560 SCRA 504, 513-514.)
Therefore it is very clear that the petitioner have
no valid ground to file the Cancellation of
Registration of the Respondent Registrant of his
Trademark TRIDENT for the reason that he acquire
the said mark lawfully and nobody opposed his
application of the said trademark of hold the
respondent to register the name TRIDENT. The
respondent- registrant meets all the requirements for
registrability of marks under Sec 123.1 of the
Intellectual Property Code Part III The law of
Trademarks, Service Marks and Trade Names
(R.A.8293), to wit:
Sec. 123. Registrability.

123.1. A mark cannot be registered if it:

(a) Consists of immoral, deceptive or scandalous
matter, or matter which may disparage or falsely
suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia
of the Philippines or any of its political subdivisions, or
of any foreign nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying
a particular living individual except by his written
consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of
his widow, if any, except by written consent of the
widow;
(d) Is identical with a registered mark belonging to a
different proprietor or a mark with an earlier filing or
priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to
deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or
constitutes a translation of a mark which is considered
by the competent authority of the Philippines to be
well-known internationally and in the Philippines,
whether or not it is registered here, as being already
the mark of a person other than the applicant for
registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark
is well-known, account shall be taken of the knowledge
of the relevant sector of the public, rather than of the
public at large, including knowledge in the Philippines
which has been obtained as a result of the promotion of
the mark;
(f) Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered well-

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known in accordance with the preceding paragraph,
which is registered in the Philippines with respect to
goods or services which are not similar to those with
respect
to
which
registration
is
applied
for: Provided, That use of the mark in relation to those
goods or services would indicate a connection between
those goods or services, and the owner of the
registered mark: Provided further, That the interests of
the owner of the registered mark are likely to be
damaged by such use;
(g) Is likely to mislead the public, particularly as to the
nature, quality, characteristics or geographical origin of
the goods or services;
(h) Consists exclusively of signs that are generic for the
goods or services that they seek to identify;
(i) Consists exclusively of signs or of indications that
have become customary or usual to designate the
goods or services in everyday language or in bona fide
and established trade practice;
(j) Consists exclusively of signs or of indications that
may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin,
time or production of the goods or rendering of the
services, or other characteristics of the goods or
services;
(k) Consists of shapes that may be necessitated by
technical factors or by the nature of the goods
themselves or factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given
form; or
(m) Is contrary to public order or morality.
II.

RESPONDENT REGISTRATION TRADEMARK

WAS NOT OBTAINED FRAUDULENTLY.

TRIDENT

A trademark can be protected through valid

registration. Registration gives the trademark owner
exclusive right to use the mark and to prevent others
from using the same or similar marks on identical
goods and services and once acquired the registrant
have to comply the critical requirement for the

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perfection and maintenance of a trademark
registration in the Philippines. Consistent with the
commitment to provide the declaration and also
securing evidence to establish trademark use in the
Philippines through local and online market
inspections.
Under the Intellectual Property Code of the
Philippines, the respondent acquired the registration
trademark TRIDENT without any opposed from the
filing of the application to the Office of Intellectual
Property on April 25, 2014 and it was published for
Opposition IPO e-Gazette on
October 13, 2014
pursuant to Sec 133.2 of Republic Act No. 8293 and
that Certificate of Registration was issued to the
herein Respondent- Registrant by the Office of
Intellectual Property with no Opposition against the
application of the said trademark TRIDENT.
Again by the respondent-registrant attaching all
the evidence in his Verified Answer issued by P.M
Craft and Co. Respondent-Registrant is the first user
of the mark TRIDENT showing all the evidence as
attached in the verified answer of herein Respondent
the Sales Invoice Nos. 227,228,229,240 and 242
valid proof that respondent is the original Trident
Brand Holder and never obtained fraudulently
registration, that the Petition are to Generic and the
same devoid of Merit.
The respondent did not obtained the registration
fraudulently. The Petitioner admits he was not aware
to file the 3rd year Declaration Actual Use (DAU) for
their registration as evidence that they are the owner
of the said trademark. In turn, such failure is
tantamount to the abandonment or withdrawal of
any right or interest of the registrant has over his
trademark.
In the nutshell, that the certificate of registration
of trademark TRIDENT by the respondent-registrant
was not obtained fraudulently. That Petitioner failure
to file 3rd year DAU as mandated by pertinent
provision of R.A. No. 8293 is a

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