iP

INTELLECTUAL PROPERTY
PHILIPPINES

VALENTINO SHOES, INC. } IPC NO. 3824 & 3966

Opposer/Respondent-Applicant } Cases Filed: Oct 23, 1992
} Jan. 18, 1994
- versus- } Appln. Serial Nos. 74377
} 44183
} Date Filed: Dec. 13, 1990
} March 5, 1981
}
} Trademark: "VALENTINO
} GARAVANI & V LOGO"
VALENTINO S.P.A } & "VALENTINO"
Respondent-Applicant/Opposer }
x---------------------------------------------------------x Resolution No. 2008- 2JJ-

RESOLUTION

For resolution is the Motion for Reconsideration To Set Aside Order No.
2008-715 filed by the Respondent-Applicant/Opposer through counsel on June 2,
2008 and the Comment thereto, likewise filed through counsel by the
Opposer/Respondent-Applicant.

Respondent-Applicant/Opposer adduced two grounds, to wit: (1)

Compromise Agreement is not contrary to law, morals, good customs, public
order or public policy; and, (2) Co-existence of trademarks under the
Compromise Agreement is valid and should be allowed in the same way the IPO
has allowed other identical marks to co-exist.

By way of Comment on Motion for Reconsideration, Opposer/Respondent-

Applicant stated that contrary to the claim stated in paragraph 5.1 and Annexes
"1" and "2" thereof, Registration No. 4-1991-078659 issued on May 4, 2001 for
the trademark "GIOVANNI VALENTINO" in favor of Florence Fashions (Jersey)
Limited, does not include shoes, as shown in the attached copy of Certificate of
Registration No. 4-1991-078656 which in turn was issued pursuant to Order No.
2001-17 (D) promulgated in IPC Nos. 4322 and 4285.

On June 13, 2008, Respondent-Applicant/Opposer filed its Counter-

Comment to Opposer/Respondent-Applicant's Comment. In its Counter-
Comment, Respondent-Applicant/Opposer stated that: (1) The alleged
exclusion of "shoes" in "GIOVANNI VALENTINO" registration is unknown to the
general public and never indicated in the IPO website; (2) Co-existence of
trademarks openly allowed and tolerated by the IPO, in direct contrast to th~ .

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Republic of the Philippines
INTELLECTUAL PROPERTY OFFICE
351 Sen . Gil Puyat Ave., Makati City 1200 Philippines • www.ipophil.gov.ph
Telephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail @ipophil.gov.ph
position of the BLA and; (3) The Bureau of Legal Affairs (BLA) cannot
disapprove the Compromise Agreement and in effect, disallow the withdrawal of
Opposition by Valentino Shoes, Inc. in IPC No. 3824 as such act is already
beyond its jurisdiction; with the withdrawal of said Opposition under the
compromise Agreement, the Bureau of Trademarks (BOT), which published
Valentino S.P.A.'s Application No. 74377, reacquires jurisdiction to allow its
registration.

After a careful review of the arguments raised by both parties and

considering further that subject marks are not identical i.e. "VALENTINO
GARAVANNI & V LOGO is a composite mark while VALENTINO is a single word
mark, this Bureau finds that there is cogent reason to set aside Order No. 2008-
715 dated May 12, 2008.

WHEREFORE, in view of the foregoing, the Motion for Reconsideration

dated 2 June 2008 is as it is hereby, GRANTED. Accordingly, Order No. 2008-
715 is hereby REVERSED and SET ASIDE. Consequently, finding the parties'
Compromise Agreement to have been duly executed and signed by the parties
and the terms and conditions thereof to be in consonance with law, morals, good
customs, public policy, public order, the same is hereby APPROVED.
Accordingly, Application Serial No. 74377 filed by Respondent-
Applicant/Opposer, Valentino S.P.A. on December 13, 1990 for the trademark
"VALENTINO GARAVANI & V LOGO" and Application Serial No. 44183
filed by Opposer/Respondent-Applicant, Valentino Shoes Inc., on March 5, 1981
for the trademark "VALENTINO," are hereby GIVEN DUE COURSE subject to
the terms and conditions of the Compromise Agreement. Consequently, the
parties are hereby enjoined to faithfully comply with the terms and conditions of
the Compromise Agreement, failure of which shall cause for the erring party to
be cited for indirect contempt after proper charge and hearing.

Let the filewrapper of the trademarks "VALENTINO GARAVANI & V LOGO"

and "VALENTINO" subject matter under consideration together with a copy of
this Decision be forwarded to the Bureau of Trademarks (BOT) for appropriate
action in accordance with this Decision.

SO ORDERED.

Makati City, 11 June 2008.

EST E LITA BELTRAN-ABELARDO

Direct r, Bureau of Legal Affairs

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