Republic
of the
Supreme
Court
SECOND DIVISION
|
DERMALINE, INC., Petitioner, - versus - MYRA PHARMACEUTICALS, INC., Respondent. |
G.R.
No. 190065
Present: CARPIO, J.,
Chairperson, NACHURA, PERALTA, ABAD, and MENDOZA, JJ. Promulgated: August
16, 2010 |
x------------------------------------------------------------------------------------x
DECISION
NACHURA, J.:
This
is a petition for review on certiorari[1]
seeking to reverse and set aside the Decision dated August 7, 2009[2]
and the Resolution dated October 28, 2009[3] of
the Court of Appeals (CA) in CA-G.R. SP No. 108627.
The
antecedent facts and proceedings—
On
October 21, 2006, petitioner Dermaline, Inc. (Dermaline) filed before the
Intellectual Property Office (IPO) an application for registration of the
trademark “DERMALINE DERMALINE, INC.” (Application No. 4-2006011536). The application was published for Opposition
in the IPO E-Gazette on March 9, 2007.
On
May 8, 2007, respondent Myra Pharmaceuticals, Inc. (Myra) filed a Verified
Opposition[4]
alleging that the trademark sought to be registered by Dermaline so resembles
its trademark “DERMALIN” and will likely cause confusion, mistake and deception
to the purchasing public.
In
its Verified Answer,[9]
Dermaline countered that a simple comparison of the trademark “DERMALINE
DERMALINE, INC.” vis-à-vis
The
parties failed to settle amicably.
Consequently, the preliminary conference was terminated and they were
directed to file their respective position papers.[10]
On
April 10, 2008, the IPO-Bureau of Legal Affairs rendered Decision No. 2008-70[11]
sustaining
WHEREFORE,
the Verified Opposition is, as it is, hereby SUSTAINED. Consequently, Application Serial No.
4-2006-011536 for the mark ‘DERMALINE, DERMALINE, INC. Stylized Wordmark’ for
Dermaline, Inc. under class 44 covering the aforementioned goods filed on 21
October 2006, is as it is hereby, REJECTED.
Let
the file wrapper of ‘DERMALINE, DERMALINE, INC. Stylized Wordmark’ subject
matter of this case be forwarded to the Bureau of Trademarks (BOT) for
appropriate action in accordance with this Decision.
SO
ORDERED.[12]
Aggrieved,
Dermaline filed a motion for reconsideration, but it was denied under
Resolution No. 2009-12(D)[13]
dated January 16, 2009.
Expectedly,
Dermaline appealed to the Office of the Director General of the IPO. However, in an Order[14]
dated April 17, 2009, the appeal was dismissed for being filed out of time.
Undaunted,
Dermaline appealed to the CA, but it affirmed and upheld the Order dated April
17, 2009 and the rejection of Dermaline’s application for registration of
trademark. The CA likewise denied
Dermaline’s motion for reconsideration; hence, this petition raising the issue
of whether the CA erred in upholding the IPO’s rejection of Dermaline’s application
for registration of trademark.
The
petition is without merit.
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.[15] Inarguably, it is an intellectual property
deserving protection by law. In
trademark controversies, each case must be scrutinized according to its
peculiar circumstances, such that jurisprudential precedents should only be
made to apply if they are specifically in point.[16]
As
In
determining likelihood of confusion, case law has developed two (2) 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 or deception.[17] It is applied when the trademark sought to be
registered contains the main, essential and dominant features of the earlier
registered trademark, and confusion or deception is likely to result. Duplication or imitation is not even
required; neither is it necessary that the label of the applied mark for
registration should suggest an effort to imitate. The important issue is whether the use of the
marks involved would likely cause confusion or mistake in the mind of or deceive
the ordinary purchaser, or one who is accustomed to buy, and therefore to some
extent familiar with, the goods in question.[18] Given greater consideration are 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.[19] The test of dominancy is now explicitly
incorporated into law in Section 155.1 of R.A. No. 8293 which provides—
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; (emphasis supplied)
On the other hand, the Holistic Test
entails a consideration of the entirety of the marks as applied to the
products, including labels and packaging, in determining confusing
similarity. The scrutinizing eye of the
observer must focus not only on the predominant words but also on the other
features appearing in both labels so that a conclusion may be drawn as to
whether one is confusingly similar to the other.[20]
Relative to the question on confusion
of marks and trade names, jurisprudence has noted two (2) types of confusion, viz: (1) confusion of goods (product
confusion), where the ordinarily prudent purchaser would be induced to purchase
one product in the belief that he was purchasing the other; and (2) confusion
of business (source or origin confusion), where, although the goods of the
parties are different, the product, the mark of which registration is applied
for by one party, is such as might reasonably be assumed to originate with the
registrant of an earlier product, and the public would then be deceived either
into that belief or into the belief that there is some connection between the
two parties, though inexistent.[21]
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
We agree with the findings of the IPO. As correctly applied by the IPO in this case,
while there are no set rules that can be deduced as what constitutes a dominant
feature with respect to trademarks applied for registration; usually, what are
taken into account are signs, color, design, peculiar shape or name, or some
special, easily remembered earmarks of the brand that readily attracts and
catches the attention of the ordinary consumer.[22]
Dermaline’s
insistence that its applied trademark “DERMALINE DERMALINE, INC.” had
differences “too striking to be mistaken” from
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.
Indeed,
the registered trademark owner may use its mark on the same or similar products,
in different segments of the market, and at different price levels depending on
variations of the products for specific segments of the market. The Court is cognizant that the registered
trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. Thus, we have held –
Modern
law recognizes that the protection to which the owner of a trademark is
entitled is not limited to guarding his goods or business from actual market competition with identical
or similar products of the parties, but extends to all cases in which the use
by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of source, as where prospective
purchasers would be misled into thinking that the complaining party has
extended his business into the field (see 148 ALR 56 et seq; 53 Am Jur.
576) or is in any way connected with
the activities of the infringer; or when
it forestalls the normal potential expansion of his business (v. 148 ALR
77, 84; 52 Am. Jur. 576, 577).[23]
(Emphasis supplied)
Thus, the public may mistakenly think that Dermaline is
connected to or associated with Myra, such that, considering the current
proliferation of health and beauty products in the market, the purchasers would
likely be misled that Myra has already expanded its business through Dermaline
from merely carrying pharmaceutical topical applications for the skin to health
and beauty services.
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.[24]
Besides, the issue on protection of intellectual property,
such as trademarks, is factual in nature.
The findings of the IPO, upheld on appeal by the same office, and
further sustained by the CA, bear great weight and deserves respect from this
Court. Moreover, the decision of the IPO
had already attained finality when Dermaline failed to timely file its appeal with
the IPO Office of the Director General.
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.
SO ORDERED.
ANTONIO
EDUARDO B. NACHURA
Associate
Justice
WE CONCUR:
ANTONIO T. CARPIO
Associate
Justice
Chairperson
|
DIOSDADO M. PERALTA Associate
Justice |
ROBERTO A. ABAD Associate
Justice |
JOSE CATRAL
Associate
Justice
A T T E S T A T I O N
I attest that the conclusions in the above Resolution were
reached in consultation before the case was assigned to the writer of the
opinion of the Court’s Division.
ANTONIO
T. CARPIO
Associate
Justice
Chairperson, Second 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 Resolution had been reached in consultation before the case was
assigned to the writer of the opinion of the Court’s Division.
RENATO
C. CORONA
Chief
Justice
[1] Rollo, pp. 3-18.
[2] Penned by Associate Justice Martin S. Villarama, Jr. (now a member of this Court), with Associate Justices Vicente S.E. Veloso and Normandie B. Pizarro, concurring; id. at 19-32.
[3]
[4]
[5] SEC. 123. Registrability. – 123.1. A mark cannot be registered if it:
x x x
(d) Is
identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date, in respect of:
(i)
The same goods or services, or
(ii)
Closely related goods or services, or
(iii)
If it nearly resembles such a mark as to be likely to deceive or cause
confusion;
x x x (Emphasis supplied.)
[6] SEC.
147. Rights Conferred. — 147.1. The
owner of a registered mark shall have the exclusive right to prevent all third
parties not having the owner’s consent from using in the course of trade
identical or similar signs or containers for goods or services which are
identical or similar to those in respect of which the trademark is registered
where such use would result in a likelihood of confusion. In case of the use of an identical sign for
identical goods or services, a likelihood of confusion shall be presumed.
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use.
[7] “FACIAL, BACK CLEANING, ACNE TREATMENT AND CONTROL SKIN PEELING (FACE BODY, ARMPIT, ARMS AND LEGS), SLIMMING, HAIR GROWER TREATMENT, SKIN BLEACHING (FACE, BODY, ARMPIT, BODY & LEGS), DERMALIFT (FACE LIFTING, BODY TONING, EYEBAG REMOVAL), EXCESSIVE SWEATING, BODY ODOR TREATMENT AND CONTROL, OPEN PORES TREATMENT, STRETCH MARK TREATMENT, BODY MASSAGE, EYELASH PERMING, TATTOO (EYEBROW, UPPER AND LOWER LID, LIP), WOMEN’S HAIRCUT, MEN’S HAIRCUT, KID’S HAIRCUT, BLOW-DRY SETTING, UP-STYLE (LADIES), PERMING, TINT (TOUCH UP), HIGHLIGHTS (CAP), HIGHLIGHTS (FOIL), CELLOPHANE, HAIR COLOR, HAIR RELAXING, HAIR TREATMENT/SPA, HOT OIL, FULL MAKE-UP, EYE MAKE-UP, FOOT SPA WITH PEDICURE, FOOT SCRUB, MANICURE, EYEBROW THREADING, UPPER LIP THREADING, FULL BODY MASSAGE, HALF BODY MASSAGE, SAUNA.”
[8] “TOPICAL ANTIBACTERIAL, ANTIFUNGAL, ANTISCABIES PREPARATIONS FOR THE TREATMENT OF SKIN DISORDERS.”
[9] Rollo, pp. 87-93.
[10] Position Paper (For the Opposer), rollo, pp. 94-106; Position Paper for Dermaline, pp. 107-119.
[11]
[12]
[13]
[14]
[15] Prosource International, Inc. v. Horphag Research Management SA, G.R. No. 180073, November 25, 2009, 605 SCRA 523, 528; McDonald’s Corporation v. MacJoy Fastfood Corporation, G.R. No. 166115, February 2, 2007, 514 SCRA 95, 107.
[16] Philip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006, 493 SCRA 333, 356.
[17] Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc., 406 Phil. 905, 918 (2001).
[18] Philip Morris, Inc. v. Fortune Tobacco Corporation, supra at 359, citing Dy Buncio v. Tan Tiao Bok, 42 Phil 190, 196-197 (1921).
[19] McDonald’s Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402, 434 (2004).
[20] Mighty Corporation v. E. & J. Gallo Winery, 478 Phil. 615, 659 (2004).
[21] McDonald’s
Corporation v. L.C. Big Mak Burger, Inc., supra at 428, citing
[22] Rollo, p. 47.
[23] McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra at 432, citing Sta. Ana v. Maliwat, et al., 133 Phil. 1006, 1013 (1968).
[24] McDonald’s Corporation v. L.C. Big Mak Burger, Inc., supra at 406, citing Faberge Incorporated v. Intermediate Appellate Court, G.R. No. 71189, November 4, 1992, 215 SCRA 316, 320 and Chuanchow Soy & Canning Co. v. Dir. of Patents and Villapania, 108 Phil. 833, 836.