Dermaline, Inc. V Myra Pharmaceuticals, Inc

DERMALINE, INC. v MYRA PHARMACEUTICALS, INC.
Date: August 16,

Docket Number: 190065 Ponente: Nachura, J:
2010
Facts of the Case
Petitioner filed an application for registration of the trademark “Dermaline Dermaline, Inc.”.
The application was published for Opposition in the IPO E-Gazette on March 9, 2007. On
May 8, 2007, respondent filed a Verified Opposition alleging the trademark resembles its
trademark “Dermalin” and will likely cause confusion, mistake and deception to the
purchasing public. Myra’s Dermalin has been registered since 1986 and is valid and
subsisting. Myra claimed that, despite Dermaline's attempt to differentiate its applied mark,
the dominant feature is the term "DERMALINE," which is practically identical with its own
"DERMALIN," more particularly that the first eight (8) letters of the marks are identical, and
that notwithstanding the additional letter "E" by Dermaline, the pronunciation for both marks
are identical. Further, both marks have three (3) syllables each, with each syllable identical in
sound and appearance, even if the last syllable of "DERMALINE" consisted of four (4) letters
while "DERMALIN" consisted only of three (3).
Rulin
Issues
g
whether the CA erred in upholding the IPO's rejection of Dermaline's application for
No.
registration of trademark.
Rationale/Analysis/Legal Basis
As Myra correctly posits, as a registered trademark owner, it has the right under Section 147
of R.A. No. 8293 to prevent third parties from using a trademark, or similar signs or
containers for goods or services, without its consent, identical or similar to its registered
trademark, where such use would result in a likelihood of confusion.
In rejecting the application of Dermaline for the registration of its mark "DERMALINE
DERMALINE, INC.," the IPO applied the Dominancy Test. It declared that both confusion of
goods and service and confusion of business or of origin were apparent in both trademarks. It
also noted that, per Bureau Decision No. 2007-179 dated December 4, 2007, it already
sustained the opposition of Myra involving the trademark "DERMALINE" of Dermaline under
Classification 5. The IPO also upheld Myra's right under Section 138 of R.A. No. 8293, which
provides that a certification of registration of a mark is prima facie evidence of the validity of
the registration, the registrant's ownership of the mark, and of the registrant's exclusive right
to use the same in connection with the goods and those that are related thereto specified in
the certificate. Dermaline's insistence that its applied trademark "DERMALINE DERMALINE,
INC." had differences "too striking to be mistaken" from Myra's "DERMALIN" cannot,
therefore, be sustained. While it is true that the two marks are presented differently —
Dermaline's mark is written with the first "DERMALINE" in script going diagonally upwards
from left to right, with an upper case "D" followed by the rest of the letters in lower case, and
the portion "DERMALINE, INC." is written in upper case letters, below and smaller than the
long-hand portion; while Myra's mark "DERMALIN" is written in an upright font, with a capital
"D" and followed by lower case letters — the likelihood of confusion is still apparent. Further,
Dermaline's stance that its product belongs to a separate and different classification from
Myra's products with the registered trademark does not eradicate the possibility of mistake on
the part of the purchasing public to associate the former with the latter, especially considering
that both classifications pertain to treatments for the skin.
Verily, when one applies for the registration of a trademark or label which is almost the same
or that very closely resembles one already used and registered by another, the application
should be rejected and dismissed outright, even without any opposition on the part of the
owner and user of a previously registered label or trademark. This is intended not only to
avoid confusion on the part of the public, but also to protect an already used and registered
trademark and an established goodwill.
Disposition
WHEREFORE, the petition is DENIED. The Decision dated August 7, 2009 and the
Resolution dated October 28, 2009 of the Court of Appeals in CA-G.R. SP No. 108627 are
AFFIRMED. Costs against petitioner. aTADcH
SO ORDERED.

Dermaline, Inc. V Myra Pharmaceuticals, Inc

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Dermaline, Inc. V Myra Pharmaceuticals, Inc

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DERMALINE, INC. v MYRA PHARMACEUTICALS, INC.

Date: August 16,

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