Page 5-7
Page 5-7
114508)
Facts: Moreover, the cancellation of petitioner’s
certificate registration for failure to file the affidavit of
use arose after IPC 686. This gave respondent another
Lolita Escobar applied for the registration of the
cause to oppose the second application.
trademark ‘Barbizon’ for her products such as brassieres
and ladies undergarments. Respondent Barbizon
It is also to be noted that the oppositions in the first and
Corporation, an American corporation, opposed alleging
second cases are based on different laws. Causes of
that petitioner’s mark is confusingly similar to its own
action which are distinct and independent from each
trademark ‘Barbizon.’ Escobar’s application was given
other, although out of the same contract, transaction,
due course and her trademark was registered. Later,
or state of facts, may be sued on separately, recovery
Escobar assigned all her rights to petitioner Mirpuri who
on one being no bar to subsequent actions on others.
failed to file an Affidavit of Use resulting in the
The mere fact that the same relief is sought in the
cancellation of the trademark. Petitioner then applied
subsequent action will not render the judgment in the
for registration of the trademark to which respondent
prior action operating as res judicata, such as where the
Barbizon again opposed, now invoking the protection
actions are based on different statutes.
under Article 6bis of the Paris Convention. This time it
alleged (1) that the said trademark was registered with
the US Patent Office; (2) that it is entitled to protection Issue:
as well-known mark under Article 6 bis of the Paris
Convention, EO 913 and the two Memoranda of the Whether or not respondent may invoke the protection
Minister of Trade and Industry and (3) that its use on under Article 6bis of the Paris Convention.
the same class of goods amounts to a violation of the
Trademark Law and Art. 189 of the RPC. The Director of
Ruling: YES.
Patents declaring respondent’s opposition was already
barred, petitioner’s application was given due course.
CA reversed the judgment. etitioner raised the defense The Convention of Paris for the Protection of Industrial
of Res Judicata. Property, otherwise known as the Paris Convention, is a
multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial
Issue: One of the requisites of res judicata is identical designs, trademarks, service marks, trade names and
causes of action. Do IPC No. 686 and IPC No. 2049 indications of source or appellations of origin, and at
involve the same cause of action? the same time aims to repress unfair competition. The
Convention is essentially a compact among various
countries which, as members of the Union, have
Held: No. The issue of ownership of the trademark was pledged to accord to citizens of the other member
not raised in IPC 686. IPC 2049 raised the issue of countries trademark and other rights comparable to
ownership, the first registration and use of the those accorded their own citizens by their domestic
trademark in the US and other countries, and the laws for an effective protection against unfair
international recognition of the trademark established competition. Art. 6bis is a self-executing provision and
by extensive use and advertisement of respondents does not require legislative enactment to give it effect
products for over 40 years here and abroad. These are in the member country. It may be applied directly by
different from the issues of confessing similarity and the tribunals and officials of each member country by
damage in IPC 686. The issue of prior use may have the mere publication or proclamation of the
been raised in IPC 686 but this claim was limited to prior Convention, after its ratification according to the public
use in the Philippines only. Prior use in IPC 2049 stems law of each state and the order for its execution.
from the respondents claims originator of the word and
symbol “Barbizon”, as the first and registered user of
the mark attached to its products which have been sold
and advertised would arise for a considerable number
of years prior to petitioner’s first application. Indeed,
these are substantial allegations that raised new issues
and necessarily gave respondents a new cause of action.
Coffee Partners v. San Francisco Coffee & Roastery Issue:
(G.R. No. 169504)
Whether or not petitioner’s trademark would infringe
Facts: respondent’s tradename.
Ruling of the Office of the Director General- (3) The infringing mark or trade name is used in
connection with the sale, offering for sale, or advertising
Intellectual Property Office of any goods, business or services; or the infringing
In its 22 October 2003 Decision, the ODG-IPO reversed mark or trade name is applied to labels, signs, prints,
the BLA-IPO. It ruled that petitioner’s use of the packages, wrappers, receptacles, or advertisements
trademark "SAN FRANCISCO COFFEE" did not infringe intended to be used upon or in connection with such
on respondent's trade name. The ODG-IPO found that goods, business, or services;
respondent had stopped using its trade name after it (4) The use or application of the infringing mark or trade
entered into a joint venture with Boyd Coffee USA in name is likely to cause confusion or mistake or to
1998 while petitioner continuously used the trademark deceive purchasers or others as to the goods or
since June 2001 when it opened its first coffee shop in services themselves or as to the source or origin of
Libis, Quezon City. It ruled that between a subsequent such goods or services or the identity of such business;
user of a trade name in good faith and a prior user who and
had stopped using such trade name, it would be
inequitable to rule in favor of the latter. (5) It is without the consent of the trademark or trade
name owner or the assignee thereof.
The Ruling of the Court of Appeals
RA 8293, which took effect on 1 January 1998, has
In its 15 June 2005 Decision, the Court of Appeals set dispensed with the registration requirement. Section
aside the 22 October 2003 decision of the ODG-IPO in 165.2 of RA 8293 categorically states that trade names
so far as it ruled that there was no infringement. It shall be protected, even prior to or without registration
reinstated the 14 August 2002 decision of the BLA-IPO with the IPO, against any unlawful act including any
finding infringement. The appellate court denied subsequent use of the trade name by a third party,
respondent’s claim for actual damages and retained the whether as a trade name or a trademark likely to
award of attorney’s fees. In its 1 September 2005 mislead the public.
Resolution, the Court of Appeals denied petitioner’s
motion for reconsideration and respondent’s motion for It is the likelihood of confusion that is the gravamen of
partial reconsideration. infringement. Applying the dominancy test or the
holistic test, petitioner’s “SAN FRANCISCO COFFEE”
trademark is a clear infringement of respondent’s “SAN The Supreme Court held that the language of the
FRANCISCO COFFEE & ROASTERY, INC.” trade name. The Intellectual Property Code of the Philippines (“IP Code”)
descriptive words “SAN FRANCISCO COFFEE” are clearly provides that ownership of a mark is acquired
precisely the dominant features of respondent’s trade through registration. Furthermore, the Supreme Court
name. Petitioner and respondent are engaged in the stated that the intention of the lawmakers was to
same business of selling coffee, whether wholesale or abandon the rule that ownership of a mark is acquired
retail. The likelihood of confusion is higher in cases through prior use, and that the rule on ownership used
where the business of one corporation is the same or in Berris Agricultural Co., Inc. v. Abyadang (“Berris”)
substantially the same as that of another corporation. In [5]and E. Y. Industrial Sales, Inc. et al. v. Shen Dar
this case, the consuming public will likely be confused as Electricity and Machinery Co., Ltd. (“E. Y Industrial Sales,
to the source of the coffee being sold at petitioner’s Inc.”)[6] is inconsistent with the IP Code regime of
coffee shops. acquiring ownership through registration.
Landmark Decision: Ownership of Trademarks may be Section 122 of the IP Code provides how marks are
Acquired through Good Faith Use acquired:
On 08 September 2020, the Supreme Court of the SECTION 122. How Marks are Acquired. -The rights in a
Philippines (“Supreme Court”) promulgated its decision mark shall be acquired through registration made
in the case of Zuneca Pharmaceutical v. Natrapharm validly in accordance with the provisions of this law.
Inc. (“Decision”) which clarified that ownership over a (Sec. 2-A, R.A. No. 166a) (Emphasis and underscoring
trademark may also be acquired through prior use in supplied)[7]
good faith versus registration[1]. This ruling is of stark
The language of the IP Code as to the acquisition of
difference from the previous rulings of the Supreme
ownership of a mark provides for a stark contrast with
Court where the first person or entity to register a
that of the old Trademark Law, which provided that
trademark defeats the right of the first person or entity
prior use and non-abandonment of a mark banned
to use the trademark in good faith.
future registration of an identical or confusingly similar
Facts mark by a different proprietor. Such a change effectively
connotes that prior use no longer determines
The case involves a dispute between the use and
acquisition.[8]
ownership of the confusingly similar marks “ZYNAPS”
and “ZYNAPSE”. While doubts have been expressed by Associate Justices
Leonen and Lazaro-Javier over the supposed
Zuneca Pharmaceutical (“Zuneca”) has been engaged in
abandonment of the requirement of actual use, the
the sale of “ZYNAPS”, an anti-convulsant used to control
Supreme Court clarified that the filing of the Declaration
all types of seizure disorders like epilepsy [2] as early as
of Actual Use (“DAU”) is not a prerequisite for the
2004. Natrapharm, Inc. (“Natrapharm”), on the other
acquisition of ownership of a mark as it is only
hand, has also been engaged in the sale of “ZYNAPSE”
necessary to maintain ownership over the registered
for the treatment of cerebrovascular disease or stroke [3],
Trademark. On the other hand, the prima facie nature
and is the registrant of the “ZYNAPSE” mark which was
of the Certificate of Registration (“COR”) is only meant
registered with the Intellectual Property Office of the
to recognize the instances when the COR is no longer
Philippines (“IPO”) on 24 September 2007.[4]
reflective of the ownership of the holder thereof, such
On 29 November 2007, Natrapharm filed a Trademark as, but not limited to, cases when the first registrant
Infringement case against Zuneca, alleging that subsequently lost its ownership due to non-use or
“ZYNAPS” is confusingly similar to its registered abandonment.[9]
trademark “ZYNAPSE”. While Zuneca argued that as the
Rule on Ownership – Berris and E. Y. Industrial Sales,
first entity to use the mark in good faith, it was the
Inc.
rightful owner of the mark “ZYNAPS”.
3. YES. EYIS is the actual owner of the mark. Under Abyadang filed a trademark application with the IPO for
Sec. 123.1 of R.A 8293 the registration of a mark is the mark "NS D-10 PLUS" for use in connection with
prevented with the filing of an earlier application for Fungicide. Berris Agricultural Co., Inc. filed an
registration. This must not, however, be interpreted to opposition against the trademark citing that it is
mean that ownership should be based upon an earlier confusingly similar with their trademark, "D-10 80 WP"
filing date. Proof of prior and continuous use is which is also used for Fungicide also with the same
necessary to establish ownership of a mark. Such active ingredient.
ownership constitutes sufficient evidence to oppose the
The IPO ruled in favor of Berries but on appeal with the
registration of a mark.
CA, the CA ruled in favor of Abyadang.
The court ruled that the prior and continuous use of a
ISSUE: Whether there is confusing similarity between
mark may even overcome the presumptive ownership
the trademarks.
of the registrant and be held as the owner of the mark.
As aptly stated by the Court in Shangri-la International
Hotel Management, Ltd. v. Developers Group of
RULING:
Companies, Inc.:
Yes. The SC found that both products have the General, rendered a Decision denying the appeal on the
component D-10 as their ingredient and that it is the ground that there was no proof on record that Mattel
dominant feature in both their marks. Applying the had ventured into the production of chocolates and
Dominancy Test, Abyadang's product is similar to Berris' confectionary products under the trademark "Barbie" to
and that confusion may likely to occur especially that enable it to prevent Uy from using an identical "Barbie"
both in the same type of goods. Also using the Holistic trademark on said goods; that the records were bereft
Test, it was more obvious that there is likelihood of of the fact that the Director of the Bureau of
confusion in their packaging and color schemes of the Trademarks (BOT) had already declared the subject
marks. The SC states that buyers would think that trademark application abandoned due to the non-filing
Abyadang's product is an upgrade of Berris'. of the Declaration of Actual Use (DAU) by Uy. Mattel,
Inc. vs. Emma Francisco
Mattel, Inc. vs. Emma Francisco
GR No. 166886, July 30 2008
ISSUE:
FACTS:
Whether or not the application is deemed withdrawn or
abandoned for failure to file the Declaration of Actual
Jimmy A. Uy (Uy) filed a trademark application with the
Use.
Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) for registration of the trademark "BARBIE" for
HELD:
use on confectionary products, such as milk, chocolate,
candies, milk bar and chocolate candies. Mattel, Inc. vs.
The petition is dismissed for being moot and academic.
Emma Francisco
Uy's declaration in his Comment and Memorandum
before this Court that he has not filed the DAU as
Mattel, Inc. (Mattel), filed a Notice of Opposition against
mandated by pertinent provisions of R.A. No. 8293 is a
Uy's "Barbie" trademark as the latter was confusingly
judicial admission that he has effectively abandoned or
similar to its trademark on dolls, doll clothes and doll
withdrawn any right or interest in his
accessories, toys and other similar commercial
trademark. Mattel, Inc. vs. Emma Francisco
products.
Section 124.2 of R.A. No. 8293 provides:
FACTS:
2. For pending applications prosecuted under R.A. 166
we distinguish as follows:2.1. Based on use – must
submit DAU and evidence of use on or before Petitioner McDonald’s Corporation is a corporation
December 1, 2001, subject to a single six (6) month organized under the laws of Delaware, United States.
extension. (Sec. 3.2, Final Provisions of the Trademark McDonald’s operates a global chain of fast-food
Regulations, R.A. 8293, IPO Fee Structure and MC. No. restaurants. McDonald’s own a family of marks
BT Y2K-8-02) including the “Big Mac” mark for its double-decker
Uy's admission in his Comment and Memorandum of hamburger sandwich.
non-compliance with the foregoing requirements is a
judicial admission and an admission against interest
combined. Mattel, Inc. vs. Emma Francisco McDonald’s registered this trademark with the United
Read: Coffee Partners, Inc. vs. San Francisco Coffee and States Trademark Registry on 16 October 1979. Based
Roastery, Inc. on this Home Registration, McDonald’s applied for the
registration of the same mark in the Principal Register
A judicial admission binds the person who makes the of then then Philippine Bureau of Patents, Trademarks
same. In the same vein, an admission against interest is and Technology (PBPTT) – now the Intellectual Property
the best evidence which affords the greatest certainty Office (IPO).
of the facts in dispute.
The rationale for the rule is based on the presumption Pending approval of its application, McDonald’s
that no man would declare anything against himself introduced its “Big Mac” hamburger sandwiches in the
unless such declaration is true. Philippine market in September 1981. On 18 July 1985,
the PBPTT allowed registration of the “Big Mac” mark in
Thus, it is fair to presume that the declaration the Philippine Register based on its Home Registration
corresponds with the truth, and it is his fault if it does in the United States. From 1982 to 1990, McDonald’s
not. Mattel, Inc. vs. Emma Francisco spent P10.5 million in advertisement for “Big
Mac” hamburger sandwiches alone.
In the present case, Mattel is seeking a ruling on
whether Uy's "Barbie" trademark is confusingly similar
to it's (Mattel's) "Barbie" trademark. Given Uy's Respondent L.C. Big Mak Burger, Inc. is a domestic
admission that he has effectively abandoned or corporation which operates fast-food outlets and snack
withdrawn any rights or interest in his trademark by his vans in Metro Manila and nearby provinces. Its menu
non-filing of the required DAU, there is no more actual includes hamburger sandwiches and other food items.
controversy, or no useful purpose will be served in
passing upon the merits of the case.
On 21 October 1988, respondent corporation applied
It would be unnecessary to rule on the trademark with the PBPTT for the registration of the “Big
conflict between the parties. Mattel, Inc. vs. Emma Mak” mark for its hamburger sandwiches.
Francisco
2. Is the “Big Mac” mark valid and does McDonald’s With regard to unfair competition, RA 166, Section 29
have rightful ownership to the same? defines the same as any person who will employ
deception or any other means contrary to good faith by
which he shall pass off the goods manufactured by him
RULING: or in which he deals, or his business, or services for
those of the one having established such goodwill, or
1. YES. who shall commit any acts calculated to produce said
Trademark Infringement result.
RA 166 defines trademark infringement as “any person Unfair competition is broader than trademark
who (1) shall use, without the consent of the registrant, infringement and includes passing off goods with or
any reproduction, counterfeit, copy or colorable without trademark infringement. Trademark
imitation of any registered mark or trade-name in infringement is a form of unfair competition. Trademark
connection with the sale, offering for sale, or advertising infringement constitutes unfair competition when there
of any goods, business or services on or in connection is not merely likelihood of confusion, but also actual or
with which use is likely to CAUSE CONFUSION or probable deception on the public because of the
otherwise mistake or to deceive purchasers or others as general appearance of the goods.
to the source or origin of such goods or services or
identity of such business; or (2) reproduce, counterfeit,
copy, or colorably imitate any such mark or trade-name L.C. Big Mak tried to pass off their goods as though it
and apply such reproduction, counterfeit, copy, or were connected to “Big Mac.” The mark “B[ig] M[ac]” is
colorable imitation to labels, signs, prints, packages, used by plaintiff McDonald’s to identify its double
wrappers, receptacles or advertisements intended to be decker hamburger sandwich. The packaging material is
used upon or in connection with such goods, business a styrofoam box with the McDonald’s logo and
or services.” trademark in red with block capital letters printed on it.
All letters of the “B[ig] M[ac]” mark are also in red and
Clearly, there is cause for confusion in the case at bar. block capital letters. On the other hand,
By using the “Big Mak” mark on the same goods, i.e. defendants’ “B[ig] M[ak]” script print is in orange with
hamburger sandwiches, that petitioners’ “Big only the letter “B” and “M” being capitalized and the
Mac” mark is used, they have unjustly created the packaging material is plastic wrapper. x x x x Further,
impression that its business is approved and sponsored plaintiffs’ logo and mascot are the
by, or affiliated with plaintiffs. umbrella “M” and “Ronald McDonald’s,” respectively,
Furthermore, using the dominancy test (rather than the compared to the mascot of defendant Corporation
holistic test), wherein the dominant features in the which is a chubby boy called “Macky” displayed or
competing marks are considered, Big Mak failed to printed between the words “Big” and “Mak.”(Emphasis
show that there could be no confusion. The Court found supplied)
that respondents’ use of the “Big Mak” mark results in
likelihood of confusion. First, “Big Mak” sounds exactly
the same as “Big Mac.” Second, the first word in “Big
Respondents point to these dissimilarities as proof that name ‘Converse Rubber Corporation’ and will likely
they did not give their hamburgers the general deceive purchasers and cause irreparable injury to its
appearance of petitioners’ “Big Mac” hamburgers. reputation and goodwill in the Philippines. Respondent
argued that the trademarks petitioner uses on its
rubber shoes are ‘Chuck Taylor’ and ‘All Star Device.’
The dissimilarities in the packaging are minor compared The Director of Patents gave due course to respondent’s
to the stark similarities in the words that give application. MR was denied.
respondents’ “Big Mak” hamburgers the general
Issue:
appearance of petitioners’ “Big Mac” hamburgers.
Section 29(a) expressly provides that the similarity in Whether or not there is confusing similarity between
the general appearance of the goods may be in the two trademarks.
the “devices or words” used on the wrappings.
*Click here for the Corpo Law issue
Respondents have applied on their plastic wrappers and
bags almost the same words that petitioners use on Ruling: YES.
their styrofoam box. What attracts the attention of the
buying public are the words “Big Mak” which are almost The trademark of respondent “UNIVERSAL CONVERSE
the same, aurally and visually, as the words “Big and DEVICE” is imprinted in a circular manner on the
Mac.” The dissimilarities in the material and other side of its rubber shoes. In the same manner, the
devices are insignificant compared to the glaring trademark of petitioner which reads “CONVERSE CHUCK
similarity in the words used in the wrappings. TAYLOR” is imprinted on a circular base attached to the
side of its rubber shoes. The determinative factor in
YES. ascertaining whether or not marks are confusingly
similar to each other “is not whether the challenged
A mark is valid if it is “distinctive” and thus not barred
mark would actually cause confusion or deception of
from registration under Section 4 of RA 166. However,
the purchasers but whether the use of such mark
once registered, not only the mark’s validity but also the
would likely cause confusion or mistake on the part of
registrant’s ownership of the mark is prima
the buying public. It would be sufficient, for purposes of
facie presumed.
the law that the similarity between the two labels is
such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the new brand
Respondents contend that of the two words in the “Big
for it.” Even if not all the details just mentioned were
Mac” mark, it is only the word “Mac” that is valid
identical, with the general appearance alone of the two
because the word “Big” is generic and descriptive
products, any ordinary, or even perhaps even [sic] a not
(proscribed under Section 4[e]), and thus “incapable of
too perceptive and discriminating customer could be
exclusive appropriation.”
deceived … “
The contention has no merit. The “Big Mac” mark,
But even assuming, arguendo, that the trademark
which should be treated in its entirety and not dissected
sought to be registered by respondent is distinctively
word for word,is neither generic nor descriptive.
dissimilar from those of the petitioner, the likelihood of
confusion would still subsists, not on the purchaser’s
Converse Rubber Corporation v. Universal Rubber perception of the goods but on the origins thereof. By
Products (G.R. No. L-27906) appropriating the word “CONVERSE,” respondent’s
products are likely to be mistaken as having been
Facts: produced by petitioner. “The risk of damage is not
Respondent Universal Rubber applied for the limited to a possible confusion of goods but also
registration of the trademark ‘Universal Converse and includes confusion of reputation if the public could
Device’ used on its rubber shoes and rubber slippers. reasonably assume that the goods of the parties
Petitioner Converse opposed on the ground that the originated from the same source.
trademark sought to be registered is confusingly similar
to the word ‘Converse’ which is part of its corporate
UFC PHILIPPINES VS. FIESTA BARRIO the consuming public to believe that said lechon sauce
product originates from or is authorized by petitioner,
and that the "PAPA BOY & DEVICE" mark is a variation
Avg. Rating: or derivative of petitioner's "PAPA" marks. Petitioner
argued that this was especially true considering that
Summary: petitioner's ketchup product and respondent's lechon
The SC upheld the finding of the IPP in denying sauce product are related articles that fall under the
petitioner's prayer for registration for finding same Class 30.
probability of confusing similarity. The SC applied the
Dominancy Test in the instant case.
Petitioner alleged that the registration of respondent's
Doctrine: challenged mark was also likely to damage the
Under the Dominancy Test, the dominant features of petitioner, considering that its former sister company,
the competing marks are considered in determining Southeast Asia Food, Inc., and the latter's predecessors-
whether these competing marks are confusingly similar. in-interest, had been major manufacturers and
Greater weight is given to the similarity of the distributors of lechon and other table sauces since
appearance of the products arising from the adoption of 1965, such as products employing the registered "Mang
the dominant features of the registered mark, Tomas" mark.
disregarding minor differences. The visual, aural, Issues Ratio:
connotative, and overall comparisons and impressions
engendered by the marks in controversy as they are Issue:
encountered in the realities of the marketplace are the
main considerations
Whether “PAPA BOY & DEVICE” is confusingly similar
Facts:
with “PAPA BANANA KETSUP”.
Petitioner Nutri-Asia, Inc. (petitioner) is a corporation
duly organized and existing under Philippine laws. It is
the emergent entity in a merger with UFC Philippines, Ruling:
Inc. that was completed on February 11, 2009.
Respondent Barrio Fiesta Manufacturing Corporation
(respondent) is likewise a corporation organized and There is confusing similarity. The guideline for courts in
existing under Philippine laws. determining likelihood of confusion is found in A.M. No.
10-3-10-SC, or the Rules of Procedure for Intellectual
Property Rights Cases, Rule 18, which provides:
On April 4, 2002, respondent filed Application No. 4-
2002-002757 for the mark "PAPA BOY & DEVICE" for
goods under Class 30, specifically for "lechon sauce." SECTION 3. Presumption of Likelihood of Confusion.
The Intellectual Property Office (IPO) published said Likelihood of confusion shall be presumed in case an
application for opposition in the IP Phil. e-Gazette identical sign or mark is used for identical goods or
released on September 8, 2006. services.
SECTION 4. Likelihood of Confusion in Other Cases. In
In its verified opposition before the IPO, petitioner determining whether one trademark is confusingly
contended that "PAPA BOY & DEVICE" is confusingly similar to or is a colorable imitation of another, the
similar with its "PAPA" marks inasmuch as the former court must consider the general impression of the
incorporates the term "PAPA," which is the dominant ordinary purchaser, buying under the normally
feature of petitioner's "PAPA" marks. Petitioner averred prevalent conditions in trade and giving the attention
that respondent's use of "PAPA BOY & DEVICE" mark for such purchasers usually give in buying that class of
its lechon sauce product, if allowed, would likely lead goods. Visual, aural, connotative comparisons and
overall impressions engendered by the marks in "PAPA" is the dominant feature: In Opposer's marks, the
controversy as they are encountered in the realities of word "PAPA" is either the mark by itself or the
the marketplace must be taken into account. Where predominant word considering its stylized font and the
there are both similarities and differences in the marks, conspicuous placement of the word "PAPA" before the
these must be weighed against one another to see other words. In Respondent-applicant's mark, the word
which predominates. "PAPA" is written on top of and before the other words
such that it is the first word figure that catches the eyes.
In determining likelihood of confusion between marks The visual and aural impressions created by such
used on non-identical goods or services, several factors dominant word "PAPA" at the least is that the
may be taken into account, such as, but not limited to: respective goods of the parties originated from the
other, or that one party has permitted or has been given
a) the strength of plaintiff s mark; license to the other to use the word "PAPA" for the
other party's product, or that there is a
b) the degree of similarity between the plaintiffs and the relation/connection between the two parties when, in
defendant's marks; fact, there is none. This is especially true considering
that the products of both parties belong to the same
c) the proximity of the products or services; class and are closely related: Catsup and lechon sauce
or liver sauce are both gravy-like condiments used to
d) the likelihood that the plaintiff will bridge the gap; spice up dishes. Thus, confusion of goods and of
business may likely result.
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark; Under the Dominancy Test, the dominant features of
the competing marks are considered in determining
g) the quality of defendant's product or service; and/or whether these competing marks are confusingly similar.
h) the sophistication of the buyers. Greater weight is given to the similarity of the
appearance of the products arising from the adoption of
the dominant features of the registered mark,
In trademark controversies, each case must be disregarding minor differences. The visual, aural,
scrutinized according to its peculiar circumstances, such connotative, and overall comparisons and impressions
that jurisprudential precedents should only be made to engendered by the marks in controversy as they are
apply if they are specifically in point. encountered in the realities of the marketplace are the
main considerations
Dermaline, INC vs. MYRA PHARMACEUTICALS, INC.,
The SC likewise agree with the IPO-BLA that the word
"PAPA" is also the dominant feature of respondent's Facts: Dermaline filed before the IPO an application for
"PAPA BOY & DEVICE" mark subject of the application, registration of the trademark DERMALINE DERMALINE,
such that "the word 'PAPA' is written on top of and INC. Myra filed an Opposition alleging that the
before the other words such that it is the first trademark sought to be registered by Dermaline so
word/figure that catches the eyes." Furthermore, as the resembles its trademark DERMALIN and will likely cause
IPO Director General put it, the part of respondent's confusion to the purchasing public. Myra claimed that,
mark which appears prominently to the eyes and ears is despite Dermalines attempt to differentiate its applied
the phrase "PAPA BOY" and that is what a purchaser of mark, the dominant feature is the term DERMALINE,
respondent's product would immediately recall, not the which is practically identical with its own DERMALIN,
smiling hog. 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
A careful examination of Opposer's and Respondent- both marks are identical. Further, both marks have
applicant's respective marks shows that the word three (3) syllables each, with each syllable identical in
sound and appearance, even if the last syllable of cognizant that the registered trademark owner enjoys
DERMALINE consisted of four (4) letters while protection in product and market areas that are
DERMALIN consisted only of three (3). the normal potential expansion of his business. Thus,
the public may mistakenly think that Dermaline is
Myra also pointed out that Dermaline applied for
connected to or associated with Myra, such that,
the same mark DERMALINE on June 3, 2003 and was
considering the current proliferation of health and
already refused registration by the IPO. By filing this
beauty products in the market, the purchasers would
new application for registration, Dermaline appears to
likely be misled that Myra has already expanded its
have engaged in a fishing expedition for the approval of
business through Dermaline from merely carrying
its mark. In its Verified Answer, Dermaline contended
pharmaceutical topical applications for the skin to
that its trademark DERMALINE DERMALINE, INC. speaks
health and beauty services.
for itself (Res ipsa loquitur). Dermaline further argued
that there could not be any relation between its
trademark for health and beauty services from Myra’s
trademark classified under medicinal goods against skin
disorders. the IPO-Bureau of Legal Affairs sustained
Myra’s opposition. Director General of the IPO
dismissed the appeal of Dermaline. CA affirmed the
rejection of the latter’s trademark application
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