Berris Agricultural Co., Inc., Petitioner, VS. Norvy Abyadang, Respondent

BERRIS AGRICULTURAL CO., INC.
, PETITIONER, Trademarks of the IPO on April 25, 2003,[40] and which

VS. NORVY ABYADANG, RESPONDENT. stated that it had an attachment as Annex "B" sales
invoices and official receipts of goods bearing the mark.
G.R. No. 183404, October 13, 2010 Indeed, the DAU, being a notarized document,
especially when received in due course by the IPO, is
FACTS: evidence of the facts it stated and has the presumption
of regularity, entitled to full faith and credit upon its
Abyadang filed a trademark application for the mark face.
“NS-D-10-PLUS” for use in connection with Fungicide.
Petitioner Berris opposed arguing that “NS-D-10-PLUS” Furthermore, even the FPA Certification dated October
is similar to its registered trademark “D-10 80 WP”, also 11, 2005, stating that the office had neither
used for Fungicide. encountered nor received reports about the sale of the
fungicide "D-10 80 WP" within Region I and the
The IPO Bureau of Legal Affairs (IPO-BLA) denied the Cordillera Administrative Region, could not negate the
application filed by Abadyang. fact that Berris was selling its product using that mark
in 2002, especially considering that it first traded its
The Office of the Director General Intellectual Property goods in Calauan, Laguna, where its business office is
Philippines (IPPDG) affirmed the decision. located, as stated in the DAU.
However, the CA reversed the IPPDG decision saying Therefore, Berris, as prior user and prior registrant, is
that 1) petitioner's mark "NS D-10 PLUS" is not the owner of the mark "D-10 80 WP." As such, Berris
confusingly similar with respondent's trademark "D-10 has in its favor the rights conferred by Section 147 of
80 WP" and 2) respondent failed to establish its R.A. No. 8293.
ownership of the mark "D-10 80 WP".
II.
Hence, the instant petition.
Comparing Berris' mark "D-10 80 WP" with Abyadang's
ISSUES: mark "NS D-10 PLUS," as appearing on their respective
packages, one cannot but notice that both have a
1. Who owns the subject mark? common component which is "D-10." On Berris'
2. Is Abyadang's mark `NS D-10 PLUS' package, the "D-10" is written with a bigger font than
confusingly similar to that of Berris' `D-10 80 the "80 WP." Admittedly, the "D-10" is the dominant
WP' such that the latter can rightfully prevent feature of the mark. The "D-10," being at the beginning
the IPO registration of the former? of the mark, is what is most remembered of
it. Although, it appears in Berris' certificate of
RULING: registration in the same font size as the "80 WP," its
dominancy in the "D-10 80 WP" mark stands since the
I. difference in the form does not alter its distinctive
character.[45]
The ownership of a trademark is acquired by its
registration and its actual use by the manufacturer or Applying the Dominancy Test, it cannot be gainsaid that
distributor of the goods made available to the Abyadang's "NS D-10 PLUS" is similar to Berris' "D-10
purchasing public. Section 122 of R.A. No. 8293 80 WP," that confusion or mistake is more likely to
provides that the rights in a mark shall be acquired by occur. Undeniably, both marks pertain to the same type
means of its valid registration with the IPO. A certificate of goods - fungicide with 80% Mancozeb as an active
of registration of a mark, once issued, constitutes prima ingredient and used for the same group of fruits, crops,
facie evidence of the validity of the registration, of the vegetables, and ornamental plants, using the same
registrant's ownership of the mark, and of the dosage and manner of application. They also belong to
registrant's exclusive right to use the same in the same classification of goods under R.A. No.
connection with the goods or services and those that 8293. Both depictions of "D-10," as found in both
are related thereto specified in the certificate. R.A. No. marks, are similar in size, such that this portion is what
8293, however, requires the applicant for registration or catches the eye of the purchaser. Undeniably, the
the registrant to file a declaration of actual use (DAU) likelihood of confusion is present.
of the mark, with evidence to that effect, within three
(3) years from the filing of the application for This likelihood of confusion and mistake is made more
registration; otherwise, the application shall be refused manifest when the Holistic Test is applied, taking into
or the mark shall be removed from the register. consideration the packaging, for both use the same type
of material (foil type) and have identical color schemes
Berris was able to establish that it was using its mark (red, green, and white); and the marks are both
"D-10 80 WP" since June 20, 2002, even before it filed predominantly red in color, with the same phrase
for its registration with the IPO on November 29, 2002, "BROAD SPECTRUM FUNGICIDE" written underneath.
as shown by its DAU which was under oath and
notarized, bearing the stamp of the Bureau of Considering these striking similarities, predominantly
the "D-10," the buyers of both products, mainly
farmers, may be misled into thinking that "NS D-10
PLUS" could be an upgraded formulation of the "D-10
80 WP."

Berris Agricultural Co., Inc., Petitioner, VS. Norvy Abyadang, Respondent

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Berris Agricultural Co., Inc., Petitioner, VS. Norvy Abyadang, Respondent

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BERRIS AGRICULTURAL CO., INC.

, PETITIONER, Trademarks of the IPO on April 25, 2003,[40] and which

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