Nov 27, 2020 @ 13:27

Vans loses trademark case versus Venstar for mootness despite IPOPHL’s side comments

The Court of Appeals (CA) has affirmed the Intellectual Property Office’s (IPOPHL) dismissal of a bid by Vans, Inc., to block the trademark application for the “Venstar” brand of clothing, footwear and headgear.

In a recent 7-page decision, the CA Special 9th Division said the case was “moot and academic” because applicant Congyan Shi failed to file a declaration of actual use, resulting in the denial of the trademark application anyway.

Failure to submit the declaration within three years from the filing of the application would result in its denial as a matter of course, the CA pointed out.

Thus, the court denied Vans’s petition challenging the December 27, 2019 decision of Director-General Josephine Santiago to close and terminate the issue.

“This supervening event has consequently rendered Vans, Inc.’s opposition to the registration moot and academic. In turn, the resolution of the issue of whether or not confusing similarity exists between the competing marks became unnecessary and superfluous,” read the decision penned by Associate Justice Marlene Gonzales-Sison.

“This appeal has presented a moot question. A judgment on the merits would not have any practical legal effect,” it added.

The CA noted that Vans still questioned Santiago’s decision because she still gave “guidance on the issue of whether or not ‘Venstar’ is confusingly similar with the Appellant’s mark.”

Though the opposition was moot and academic, Santiago still held that the competing marks were visually distinct and would not likely cause mistake or confusion, especially since the public would be more cautious in buying products that were not ordinary consumable household items.

The court pointed out that the guidance was “not a final resolution of the issue that can be the subject of a petition for review.”

“If we were to exercise judicial review, the judgment of the court would amount to an advisory opinion,” read the decision.

While Vans raised the possibility of there being nothing to prevent Congyan Shi from refiling the registration, the CA still declined to address Santiago’s pronouncements because “the conflict suggested by petitioner is merely conjectural and anticipatory.”

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