TAPE able to prove ‘actual and continuous use’ of Eat Bulaga trademark, says IPOPHL
The Intellectual Property Office of the Philippines (IPOPHL) confirmed granting approval to TAPE Inc.’s 10-year renewal of “Eat Bulaga” trademark after the production company was able to prove its “actual and continuous use of the mark.”
The IPOPHL released a statement through its Facebook page on Tuesday, Aug. 22, confirming its approval last June 14 of TAPE’s request to “extend the term of registration over EAT BULAGA AND EB covered by TM Reg. No. 42011005951, for Nice Classes 16, 18, 21 and 25 for another 10 years.”
“The renewal process strictly observes an ex-parte nature prescribed by Republic Act 8293 or the Intellectual Property Code. Under the law, requests for renewal should be granted primarily if the registrant can prove the actual and continuous use of the mark,” the statement read.
The government agency then noted that the renewal requests at the Bureau of Trademark (BOT) “are separate from the trademark cancellation case at the Bureau of Legal Affairs (BLA),” hence the renewal “does not affect the BLA’s disposition of the merits of the trademark cancellation case.”
IPOPHL was apparently referring to the petition for trademark cancellation filed by original “Eat Bulaga” mainstays Tito Sotto, Vic Sotto and Joey de Leon (TVJ), which is pending before the agency’s legal department.
In response to IPOPHL’s confirmation, TAPE Inc. lawyer Maggie Abraham-Garduque reiterated that the production company has maintained its stand that it is the prior registrant and “the one in actual and continuous use” of “Eat Bulaga” trademark.
“[TAPE] is the prior registrant and the one in actual and continuous use of the trademark ‘Eat Bulaga.’ Hence under Section 123, Par. F of RA 8293 or the Intellectual Property Code, no one should be applied use or register it other than TAPE Inc,” Abraham-Garduque said in a statement sent to INQUIRER.net.
As per Section 123 of IPO law, “A mark cannot be registered if it: F) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-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.”
Earlier, TVJ through their lawyer, claimed the IPOPHL’s act of granting TAPE a 10-year renewal of registration for the “Eat Bulaga” trademark was a mere “ministerial act” on the part of the agency.
TAPE Inc. received the certification of renewal of registration for “Eat Bulaga” trademark amid the copyright infringement and unfair competition complaints filed by TVJ against the production company and GMA Network.
TVJ also filed a petition for the issuance of a writ of preliminary injunction to stop TAPE and GMA from using the name, logo and other devices in the new “Eat Bulaga” while the copyright infringement and unfair competition case is pending. EDV