CA turns down retail giant's suit on use of 'My Choice' mark

By Benjamin Pulta

October 28, 2021, 1:04 pm

<p>Portion of the CA decision denying the petition for the use of the "My Choice" mark filed by Robinsons Convenience Stores, Inc., (RCSI) <em>(Screengrab from CA decision)</em></p>

Portion of the CA decision denying the petition for the use of the "My Choice" mark filed by Robinsons Convenience Stores, Inc., (RCSI) (Screengrab from CA decision)

MANILA – The Court of Appeals (CA) has turned down a petition filed by a subsidiary of retail giant Robinsons for the use of the "My Choice" food and beverage products in its Ministop convenience stores.

In a 13-page decision dated Oct. 20 written by Associate Justice Emily R. Aliño-Geluz, the CA's 15th Division dismissed the petition filed by Robinsons Convenience Stores, Inc., (RCSI).

RCSI, the operator of the Ministop stores, had questioned before the CA the December 2019 decision of the Philippine Intellectual Property Office (IPO)'s Bureau of Trademarks which denied its application filed in March 2015 for the use of the "My Choice" mark on a number of its products sold in its stores.

The IPO examiner had ruled that the "My Choice" mark may not be registered as it is identical with a registered mark for the same goods belonging to a different entity, Central Food Retail Co. Ltd., which was registered on October 17, 2013.

In its appeal, RCSI said its goods with the "My Choice" mark were to be sold exclusively in Ministop convenience stores and that since the goods will belong to an "in house" brand, the channels of commerce through which the Ministop merchandise will pass are different from the goods of Central Food Retail and there cannot be any likelihood of confusion among customers as the said Central products are not sold by any of the Ministop stores.

RCSI also claimed that it had a prior registration of the My Choice mark albeit for products falling under "Class 3" international classification which includes personal care cosmetics, health and beauty products and other related items.

The RCSI's denied application was for the use of My Choice mark for "Class 30" and "Class 32" items which include food products such as coffee, sugar, rice, salt, as well as water, fruit drinks and fruit juices.

Similarly, Central Food registered in 2013 the "My Choice" mark for its Class 30 products including ready-to-drink green team peanuts, coffee, and the like.

Ruling against RCSI's appeal, the CA said it "becomes clear that the goods are identical and competing products which may be found in the same channels of trade and appeal to the same purchasers...notwithstanding RCSI's claim that its goods shall only be sold in Ministop branches".

"It cannot be overly emphasized that RCSI's mark is not entitled to be registered as it will possibly raise instances of confusion or deception on the part of the public, and will likely result to infringing Central's “My Choice”. Thus, the mark of RCSI is not entitled to be registered as its usage will likely cause deception or confusion on the part of the purchasing public, and would also likely infringe the previously registered mark of Central," the CA said.

RCSI, is a part of the Robinsons Retail Holdings Inc. group through the Robinsons Supermarket Corp. and Robinsons Inc. (PNA)