Green Cab Pizza held liable for infringement of YELLOW CAB PIZZA mark
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The director general of the Intellectual Property Office of the Philippines has dismissed Green Cab Pizza Haus's appeal from a decision of the Bureau of Legal Affairs in which the latter had held that Green Cab was liable for trademark infringement and unfair competition (September 15 2008).
Yellow Cab Pizza Co (located in New York, United States) owns a chain of restaurants specializing in New York-style pizzas. Yellow Cab has been operating in the Philippines for several years and has earned renown among pizza lovers.
Green Cab, which was established in 2001, operates a chain of pizza restaurants in the Philippines under the trademark GREEN CAB PIZZA. Yellow Cab sued Green Cab for trademark infringement and unfair competition.
The Bureau of Legal Affairs considered that although Green Cab used a different trade name and trademark, the difference between the marks GREEN CAB PIZZA and YELLOW CAB PIZZA was so insignificant that it did not prevent consumer confusion. The bureau considered that the GREEN CAB PIZZA mark constituted an imitation of the dominant features of Yellow Cab’s trademark (ie, the combination of a colour and the word 'cab'). Therefore, Green Cab's use of a similar trademark for identical goods infringed Yellow Cab's trademark rights.
On appeal, Yellow Cab cited instances where callers had been misled into believing that Green Cab was associated with Yellow Cab. The director general of the Intellectual Property Office held that Yellow Cab had built goodwill in its pizza business through the use of its trademark. Therefore, Green Cab's use of a similar trademark constituted an attempt to free-ride on the goodwill associated with Yellow Cab’s mark.
The director general concluded that Green Cab was liable for trademark infringement and unfair competition, and ordered it to pay Ps300,000 in damages and Ps100,000 in attorneys' fees.
Vicente B Amador, SyCip Salazar Hernandez & Gatmaitan, Manila
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