THIRD DIVISION
|
PROSOURCE INTERNATIONAL,
INC., Petitioner, - versus - HORPHAG RESEARCH
MANAGEMENT SA, Respondent. |
G.R.
No. 180073
Present: Chairperson, CHICO-NAZARIO,
VELASCO,
JR., NACHURA,
and PERALTA,
JJ. Promulgated: November
25, 2009 |
x------------------------------------------------------------------------------------x
DECISION
NACHURA, J.:
This
is a petition for review on certiorari
under Rule 45 of the Rules of Court seeking to reverse and set aside the Court
of Appeals (CA) Decision[1]
dated
The
facts are as follows:
Respondent
Horphag Research Management SA is a corporation duly organized and existing
under the laws of
Without
notifying respondent, petitioner discontinued the use of, and withdrew from the
market, the products under the name PCO-GENOLS as of June 19, 2000. It, likewise, changed its mark from
PCO-GENOLS to PCO-PLUS.[9]
On
August 22, 2000, respondent filed a Complaint[10] for Infringement of Trademark with Prayer for
Preliminary Injunction against petitioner, praying that the latter cease and desist
from using the brand PCO-GENOLS for being confusingly similar with respondent’s
trademark PYCNOGENOL. It, likewise,
prayed for actual and nominal damages, as well as attorney’s fees.[11]
In
its Answer,[12] petitioner
contended that respondent could not file the infringement case considering that
the latter is not the registered owner of the trademark PYCNOGENOL, but one
Horphag Research Limited. It, likewise,
claimed that the two marks were not confusingly similar. Finally, it denied liability, since it
discontinued the use of the mark prior to the institution of the infringement
case. Petitioner thus prayed for the
dismissal of the complaint. By way of
counterclaim, petitioner prayed that respondent be directed to pay exemplary
damages and attorney’s fees.[13]
During
the pre-trial, the parties admitted the following:
1.
Defendant [petitioner] is a corporation duly organized and existing under the
laws of the Republic of the
2.
The trademark PYCNOGENOL of the plaintiff is duly registered with the
Intellectual Property Office but not with the Bureau of Food and Drug (BFAD).
3.
The defendant’s product PCO-GENOLS is duly registered with the BFAD but not with
the Intellectual Property Office (IPO).
4. The defendant corporation discontinued the
use of and had withdrawn from the market the products under the name of
PCO-GENOLS as of
5.
Plaintiff corporation sent a demand letter to the defendant dated
On
January 16, 2006, the RTC decided in favor of respondent. It observed that
PYCNOGENOL and PCO-GENOLS have the same suffix “GENOL” which appears to be
merely descriptive and thus open for trademark registration by combining it
with other words. The trial court, likewise, concluded that the marks, when
read, sound similar, and thus confusingly similar especially since they both
refer to food supplements. The court added that petitioner’s liability was not
negated by its act of pulling out of the market the products bearing the
questioned mark since the fact remains that from 1996 until June 2000,
petitioner had infringed respondent’s product by using the trademark PCO-GENOLS.
As respondent manifested that it was no longer interested in recovering actual
damages, petitioner was made to answer only for attorney’s fees amounting to P50,000.00.[15] For lack of sufficient factual and legal
basis, the court dismissed petitioner’s counterclaim. Petitioner’s motion for reconsideration was
likewise denied.
On
appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court explained that under the
Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar to
PYCNOGENOL. It also found just and
equitable the award of attorney’s fees especially since respondent was
compelled to litigate.[16]
Hence,
this petition, assigning the following errors:
I. THAT THE COURT OF APPEALS ERRED IN AFFRIMING THE RULING OF THE LOWER [COURT] THAT RESPONDENT’S TRADEMARK P[YC]NOGENOLS (SIC) WAS INFRINGED BY PETITIONER’S PCO-GENOLS.
II. THAT THE COURT OF APPEALS ERRED IN AFFIRMING THE AWARD OF ATTORNEY’S FEES IN FAVOR OF RESPONDENT HORPHAG RESEARCH MANAGEMENT S.A. IN THE AMOUNT OF Php50,000.00.[17]
The petition is without merit.
It must be recalled that respondent filed
a complaint for trademark infringement against petitioner for the latter’s use
of the mark PCO-GENOLS which the former claimed to be confusingly similar to
its trademark PYCNOGENOL. Petitioner’s
use of the questioned mark started in 1996 and ended in June 2000. The instant case should thus be decided in
light of the provisions of Republic Act (R.A.) No. 166[18]
for the acts committed until December 31, 1997, and R.A. No. 8293[19]
for those committed from January 1, 1998 until June 19, 2000.
A trademark is any distinctive word,
name, symbol, emblem, sign, or device, or any combination thereof, adopted and
used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others. Inarguably, a trademark
deserves protection.[20]
Section 22 of R.A. No. 166,
as amended, and Section 155 of R.A. No. 8293 define what constitutes trademark
infringement, as follows:
Sec. 22.
Infringement, what constitutes. – Any
person who shall use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or tradename in
connection with the sale, offering for sale, or advertising of any goods,
business or services on or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the source or
origin of such goods or services, or identity of such business; or reproduce,
counterfeit, copy of colorably imitate any such mark or tradename and apply
such reproduction, counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used
upon or in connection with such goods, business, or services, shall be liable
to a civil action by the registrant for any or all of the remedies herein
provided.
Sec. 155. Remedies;
Infringement. – Any person who shall, without the consent of the owner of
the registered mark:
155.1. Use in commerce any reproduction,
counterfeit, copy, or colorable imitation of a registered mark or the same
container or a dominant feature thereof in connection with the sale, offering
for sale, distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or services on
or in connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or
colorably imitate a registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or advertisements intended to be used
in commerce upon or in connection with the sale, offering for sale,
distribution, or advertising of goods or services on or in connection with
which such use is likely to cause confusion, or to cause mistake, or to
deceive, shall be liable in a civil action for infringement by the registrant
for the remedies hereinafter set forth: Provided,
That infringement takes place at the moment any of the acts stated in
Subsection 155.1 or this subsection are committed regardless of whether there
is actual sale of goods or services using the infringing material.
In accordance with Section 22 of R.A.
No. 166, as well as Sections 2, 2-A, 9-A, and 20 thereof, the following
constitute the elements of trademark infringement:
(a) A
trademark actually used in commerce in the
(b) [It] is used by another person in
connection with the sale, offering for sale, or advertising of any goods,
business or services or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the source or
origin of such goods or services, or identity of such business; or such
trademark is reproduced, counterfeited, copied or colorably imitated by another
person and such reproduction, counterfeit, copy or colorable imitation is
applied to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods,
business or services as to likely cause confusion or mistake or to deceive
purchasers[;]
(c) [T]he trademark is used for identical or
similar goods[;] and
(d) [S]uch act is done without the consent of
the trademark registrant or assignee.[21]
On the other hand, the elements of infringement under R.A. No.
8293 are as follows:
(1)
The trademark being infringed is registered in the Intellectual
Property Office; however, in infringement of trade name, the same need not be
registered;
(2)
The trademark or trade name is reproduced, counterfeited, copied,
or colorably imitated by the infringer;
(3)
The infringing mark or trade name is used in connection with the
sale, offering for sale, or advertising of any goods, business or services; or
the infringing mark or trade name is applied to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used upon or
in connection with such goods, business or services;
(4)
The use or application of the infringing mark or trade name is
likely to cause confusion or mistake or to deceive purchasers or others as to
the goods or services themselves or as to the source or origin of such goods or
services or the identity of such business; and
(5)
It is without the consent of the trademark or trade name owner or
the assignee thereof.[22]
In the foregoing
enumeration, it is the element of “likelihood of confusion” that is the
gravamen of trademark infringement. But “likelihood
of confusion” is a relative concept. The
particular, and sometimes peculiar, circumstances of each case are
determinative of its existence. Thus, in
trademark infringement cases, precedents must be evaluated in the light of each
particular case.[23]
In determining similarity
and likelihood of confusion, jurisprudence has developed two tests: the
Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity
of the prevalent features of the competing trademarks that might cause
confusion and deception, thus constituting infringement.[24]
If the competing trademark contains the main, essential and dominant features
of another, and confusion or deception is likely to result, infringement takes
place. Duplication or imitation is not
necessary; nor is it necessary that the infringing label should suggest an
effort to imitate. The question is
whether the use of the marks involved is likely to cause confusion or mistake
in the mind of the public or to deceive purchasers.[25]
Courts will consider more the aural and
visual impressions created by the marks in the public mind, giving little
weight to factors like prices, quality, sales outlets, and market segments.[26]
In contrast, the Holistic
Test entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing
similarity.[27] The
discerning eye of the observer must focus not only on the predominant words but
also on the other features appearing on both labels in order that the observer
may draw his conclusion whether one is confusingly similar to the other.[28]
The trial and appellate
courts applied the Dominancy Test in determining whether there was a confusing
similarity between the marks PYCNOGENOL and PCO-GENOL. Applying the test, the trial court found, and
the CA affirmed, that:
Both the word[s] PYCNOGENOL and PCO-GENOLS
have the same suffix “GENOL” which on evidence, appears to be merely descriptive
and furnish no indication of the origin of the article and hence, open for
trademark registration by the plaintiff thru combination with another word or
phrase such as PYCNOGENOL, Exhibits “A” to “A-3.” Furthermore, although the
letters “Y” between P and C, “N” between O and C and “S” after L are missing in
the [petitioner’s] mark PCO-GENOLS, nevertheless, when the two words are
pronounced, the sound effects are confusingly similar not to mention that they
are both described by their manufacturers as a food supplement and thus,
identified as such by their public consumers. And although there were
dissimilarities in the trademark due to the type of letters used as well as the
size, color and design employed on their individual packages/bottles, still the
close relationship of the competing products’ name in sounds as they were
pronounced, clearly indicates that purchasers could be misled into believing
that they are the same and/or originates from a common source and manufacturer.[29]
We find no cogent reason
to depart from such conclusion.
This is not the first
time that the Court takes into account the aural effects of the words and
letters contained in the marks in determining the issue of confusing
similarity. In Marvex Commercial Co.,
Inc. v.
The following random list of confusingly similar sounds in the matter of trademarks, culled from Nims,
Unfair Competition and Trade Marks, 1947, Vol. 1, will reinforce our view that
“SALONPAS” and “LIONPAS” are confusingly similar in sound: “Gold Dust” and
“Gold Drop”; “Jantzen” and “Jass-Sea”; “Silver Flash” and “Supper Flash”;
“Cascarete” and “Celborite”; “Celluloid” and “Cellonite”; “Chartreuse” and
“Charseurs”; “Cutex” and “Cuticlean”; “Hebe” and “Meje”; “Kotex” and “Femetex”;
“Zuso” and “Hoo Hoo.” Leon Amdur, in his book “Trade-Mark Law and Practice,”
pp. 419-421, cities, as coming within the purview of the idem
sonans rule, “Yusea” and “U-C-A,” “Steinway Pianos” and “Steinberg Pianos,”
and “Seven-Up” and “Lemon-Up.” In Co
Tiong vs. Director of Patents, this Court unequivocally said that “Celdura”
and “Cordura” are confusingly similar in sound; this Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795
that the name “Lusolin” is an infringement of the trademark “Sapolin,” as the
sound of the two names is almost the same.[32]
Finally, we reiterate
that the issue of trademark infringement is factual, with both the trial and
appellate courts finding the allegations of infringement to be
meritorious. As we have consistently
held, factual determinations of the trial court, concurred in by the CA, are
final and binding on this Court.[33]
Hence, petitioner is liable for trademark infringement.
We, likewise, sustain the
award of attorney’s fees in favor of
respondent. Article 2208 of the
Civil Code enumerates the instances when attorney’s fees are awarded, viz.:
Art. 2208. In the absence of
stipulation, attorney’s fees and expenses of litigation, other than judicial
costs, cannot be recovered, except:
1. When exemplary damages are
awarded;
2. When the defendant’s act or
omission has compelled the plaintiff to litigate with third persons or to incur
expenses to protect his interest;
3. In criminal cases of malicious
prosecution against the plaintiff;
4. In case of a clearly unfounded
civil action or proceeding against the plaintiff;
5. Where the defendant acted in
gross and evident bad faith in refusing to satisfy the plaintiff”s plainly
valid, just and demandable claim;
6. In actions for legal support;
7. In actions for the recovery of
wages of household helpers, laborers and skilled workers;
8. In actions for indemnity under
workmen’s compensation and employer’s liability laws;
9. In a separate civil action to
recover civil liability arising from a crime;
10. When at least double judicial
costs are awarded;
11. In any other case where the court
deems it just and equitable that attorney’s fees and expenses of litigation
should be recovered.
In all cases, the attorney’s fees
and expenses of litigation must be reasonable.
As a rule, an award of
attorney’s fees should be deleted where the award of moral and exemplary
damages is not granted.[34] Nonetheless, attorney’s fees may be awarded
where the court deems it just and equitable even if moral and exemplary damages
are unavailing.[35] In the instant case, we find no reversible
error in the grant of attorney’s fees by the CA.
WHEREFORE, premises considered, the petition is DENIED for lack of merit.
The Court of
Appeals Decision dated July 27, 2007 and its Resolution dated October 15, 2007
in CA-G.R. CV No. 87556 are AFFIRMED.
SO ORDERED.
ANTONIO
EDUARDO B. NACHURA
Associate
Justice
WE CONCUR:
RENATO C. CORONA
Associate
Justice
Chairperson
|
MINITA V. CHICO-NAZARIO Associate
Justice |
PRESBITERO J. VELASCO, JR. Associate
Justice |
DIOSDADO M. PERALTA
Associate
Justice
A T T E S T A T I O N
I attest that the conclusions in the above Decision were
reached in consultation before the case was assigned to the writer of the
opinion of the Court’s Division.
RENATO C. CORONA
Associate Justice
Chairperson, Third Division
C E R T I F I C A T I O N
Pursuant to Section 13, Article VIII of the Constitution
and the Division Chairperson's Attestation, I certify that the conclusions in
the above Decision had been reached in consultation before the case was
assigned to the writer of the opinion of the Court’s Division.
REYNATO S. PUNO
Chief Justice
[1] Penned by Associate Justice Vicente S.E. Veloso, with Associate Justices Juan Q. Enriquez, Jr. and Marlene Gonzales-Sison, concurring; rollo, pp. 38-47.
[2]
[3] Branch 167,
[4] Penned by Judge Alfredo C. Flores; rollo, pp. 230-234.
[5]
[6] Evidenced by Registration No. 62413 issued by the Bureau of Patents, Trademarks and Technology Transfer.
[7] Rollo, p. 39.
[8]
[9]
[10]
[11]
[12]
[13]
[15]
[16]
[17]
[18] Trademark Law.
[19] Intellectual Property Code.
[20] Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006, 493 SCRA 333, 345.
[21]
[22] Ruben E. Agpalo, The Law on Trademark, Infringement and Unfair Competition (2000), pp. 142-143.
[23] Philip Morris, Inc. v. Fortune Tobacco Corporation, supra note 20, at 356.
[24] Philip Morris, Inc. v. Fortune Tobacco Corporation, id; Mighty Corporation v. E. & J. Gallo Winery, G.R. No. 154342, July 14, 2004, 434 SCRA 473, 506.
[25] Mighty Corporation v. E. & J. Gallo Winery, supra note 24, at 506-507.
[26] McDonald’s
Corporation v. L.C. Big Mak Burger, Inc., G.R. No. 143993,
[27] Philip Morris, Inc. v. Fortune Tobacco Corporation, supra note 20, at 356-357.
[28] Mighty Corporation v. E. & J. Gallo Winery, supra note 24, at 507.
[29] Rollo, p. 45.
[30] 125 Phil. 295 (1966).
[31] Supra note 26.
[32] McDonald’s
Corporation v. L.C. Big Mak Burger, Inc., supra note 26, at 34.
[33] Philip Morris, Inc. v. Fortune Tobacco Corporation, supra note 20, at 361-362.
[34] Francisco v. Co, G.R. No. 151339, January 31, 2006, 481 SCRA 241; Ibaan Rural Bank, Inc. v. Court of Appeals, 378 Phil. 707 (1999).
[35] Villanueva
v. Court of Appeals, G.R. No. 132955, October 27, 2006, 505 SCRA 564; Carlos v. Sandoval, G.R. Nos. 135830,
136035 and 137743, September 30, 2005, 471 SCRA 266.