SECOND DIVISION
[ G.R. No. 190065. August 16, 2010 ]
DERMALINE, INC., PETITIONER, VS. MYRA PHARMACEUTICALS, INC.,
RESPONDENT.
D E C I S I O N
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. Myra said that the registration of
Dermaline's trademark will violate Section 123[5] of Republic Act (R.A.) No. 8293 (Intellectual Property Code
of the Philippines). It further alleged that Dermaline's use and
registration of its applied trademark will diminish the distinctiveness and
dilute the goodwill of Myra's "DERMALIN," registered with the IPO way
back July 8, 1986, renewed for ten (10) years on July 8, 2006. Myra has
been extensively using "DERMALIN" commercially since October 31, 1977,
and said mark is still 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).
Myra also pointed out that Dermaline applied for the same mark
"DERMALINE" on June 3, 2003 and was already refused registration by
the IPO. By filing this new application for registration, Dermaline
appears to have engaged in a fishing expedition for the approval of its
mark. Myra argued that its intellectual property right over its trademark
is protected under Section 147[6] of R.A. No. 8293.
Myra asserted that the mark "DERMALINE DERMALINE, INC." is aurally
similar to its own mark such that the registration and use of Dermaline's
applied mark will enable it to obtain benefit from Myra's reputation, goodwill
and advertising and will lead the public into believing that Dermaline is, in
any way, connected to Myra. Myra added that even if the subject
application was under Classification 44[7] for various skin treatments, it could still be connected to
the "DERMALIN" mark under Classification 5[8] for pharmaceutical products, since
ultimately these goods are very closely related.
In its Verified Answer,[9] Dermaline countered that a simple comparison of the
trademark "DERMALINE DERMALINE, INC." vis-à-vis Myra's
"DERMALIN" trademark would show that they have entirely different
features and distinctive presentation, thus it cannot result in confusion,
mistake or deception on the part of the purchasing public. Dermaline contended
that, in determining if the subject trademarks are confusingly similar, a
comparison of the words is not the only determinant, but their entirety must be
considered in relation to the goods to which they are attached, including the
other features appearing in both labels. It claimed that there were
glaring and striking dissimilarities between the two trademarks, such that its
trademark "DERMALINE DERMALINE, INC." speaks 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 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 Myra's
opposition pursuant to Section 123.1(d) of R.A. No. 8293. It disposed--
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 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 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 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.
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 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. This is
because they are almost spelled in the same way, except for Dermaline's mark
which ends with the letter "E," and they are pronounced practically
in the same manner in three (3) syllables, with the ending letter "E"
in Dermaline's mark pronounced silently. Thus, when an ordinary purchaser, for
example, hears an advertisement of Dermaline's applied trademark over the
radio, chances are he will associate it with Myra's registered mark.
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.
Carpio, (Chairperson), Peralta, Abad, and Mendoza, JJ.,
concur.
[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] Id. at 32.
[4] Id. at 78-86.
[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] Id. at 37-50.
[12] Id. at.26.
[13] Id. at 52-53.
[14] Id. at 34-35.
[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 Sterling Products
International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, et al., 137
Phil 838, 852 (1969).
[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.