DLSU Commercial Law Review Digest G02 (2015-2016)
024 American Cyanamid vs. Director of Patents 76 SCRA 568 (177! ".R. #o. $%2&54' Ari) 2* 177 +oic, -P$ Ponente, / PA$A* J. DC+R-#3, What the law prohibits is that one manufacturer labels his product in a manner strikingly identical with or similar to that of another manufacturer as to deceive or confuse the buying public into believing that the two preparations are one and come from the same source. In the case however of SULME and SULMEI!E it is satisfactorily shown from the evidence of the parties that while their products may be for a similar use" their presentation to the purchasing public come in totally different forms.
AC+S, his is an appeal from a decision decision of the #irector #irector of $atents $atents in Inter Inter Partes %ase !o. &'( entitled "American Cyanamid Company, petitioner, petitioner, versus Tiu Chian " respondent which denied the petition of )merican %yanamid %yanamid %ompany to cancel cancel the registration registration of the trademark trademark SULMEI!E SULMEI!E issued in favor of iu %hian. $etitioner %yanamid field on )pril *" &+,+" a petition to cancel certificate of registration !o. ,*'issued on uly /" &+,/" in favor of respondent iu %hian of the latter0s trademark SULMEI!E used on medicine medicine for the control control of infectio infectious us cory1a cory1a and for the prevention prevention of cold" cold" rhinitis rhinitis"" roup" roup" cecal cecal coccidiosis and intestinal coccidiosis of chicken and other domesticated domesticated birds. %yanamid claims that it is the owner of a trademark SULME which is the trademark of a veterinary product used" among other purposes" 2for the control of outbreaks of cecal and intestinal coccidiosis and infectious cory1a 3colds4 in chicken flocks5 coccidiosis in turkeys5 and for reducing mortality in pullorum disease in baby chicks" acute fowl cholera in chickens" turkeys and ducks and anatipestifer disease in ducks.2 hrough long use in the country" country" SULME SULME has become popular popular and well6known well6known and en7oys en7oys widespre widespread ad repu reputa tati tion on brou brough ghtt abou aboutt by e8te e8tens nsiv ive e adve advert rtis isem emen entt and and prom promot otio ion n thro throug ugh h the the medi media. a. !otwiths !otwithstand tanding ing the above" above" respond respondent ent filed filed an applicat application ion for registra registration tion of SULMEI! SULMEI!E E as is trademark on a veterinary product used for the same purposes thereby making respondent0s product confusingly with that of petitioner which is unfair and un7ust to the label. 9n une +" &+/'" the #irector of $atents rendered his decision denying the $etition for cancellation cancellation of respondent0s certificate of registration of the trademark SULMEI!E" based on the following findings: (1) Petitioner's trademark SU!T is used on a prep reparation #or practica$$y a$$ domesticated anima$s such as #o%$, catt$e, pi&s, horses and sheep, %hereas, SU!TI is $imited on$y to chicken and other domesticated irds (*) (*) +n the the top o# peti petiti tion oner ers s $ae$ $ae$,, the the %ord %ord "CA "CAA!I A!I-" -" is print printed ed in prom promin inen entt $ette $etters rs and at the ottom o# the $ae$ there appears in o$d $etters the %ords "A!.ICA CAA!IC+!PA, / +.0 *, " indicatin& the manu#acturer o# the product +n the other hand, at the top o# respondent's $ae$, 2hiit C, there appears the pictures o# t%o roosters %ith %ith the the %ord %ord "3. "3.' 'S" S" in4e in4et%e t%een en,, and and at the otto ottom m "3. "3.' 'S S A5+ A5+.A .AT T+.I +.IS S
1
[T!e te"t# P3IIPPIS" are c$ear$y printed indicatin& the source o# the product (6) Petitioner's preparation consists o# a drinkin& %ater so$ution and this is c$ear$y indicated in o$d $etters on the $ae$, %hereas, that o# respondent consists o# ta$ets #or veterinary use prominent$y indicated in red $etters on the $ae$, 2hiit C he above differences in the physical aspect or appearance of the respective labels were found by the #irector of $atents substantial and striking enough so as to prevent any confusing similarity between the two which may lead a buyer to confuse one with the other. With respect to $etitioner0s contention that respondent0s trademark bears the two syllables of petitioner0s SULME and that respondent merely added the syllable 2I!E2" the #irector of $atents reasoned out that the syllables 2SUL2 and 2ME2 are coined from a common source suggestive of chemical compounds which are attributes of the products of the parties herein" that is" 2SUL2 being derived from 2SUL;)2 and 2ME2 from methyl" so that neither party may claim e8clusive use to them" and that with the addition of the syllable 2I!E2 by respondent" a marked distinction is effected to distinguish the two trademarks.
-SS/3, Whether or not petitioner correctly claims that respondent0s trademark SULMEI!E was copied from its trademark SULME giving rise to a confusing similarity between the two in violation of
R/$-#", #. We find petitioner0s submittal devoid of merit and hold that there is no infringement of trademark which 7ustify a cancellation of respondent0s registered trademark SULMEI!E. he Supreme %ourt held that there is no infringement of trademark which 7ustify a cancellation of respondent0s registered trademark SULMEI!E. )n e8amination of the documentary evidence submitted by the parties confirms the findings of the #irector of $atents that there are striking differences between the two labels" E8hibits = and %" which preclude the possibility of the purchasing public confusing one product with the other. Said labels are entirely different in si1e" background" colors" contents" and pictorial arrangement5 in short. the general appearances of the labels bearing the respective trademarks are so distinct from each other that petitioner cannot assert that the dominant features" if any" of its trademark were used or appropriated in respondent0s own. Moreover" the word SULME is derived from a combination of the syllables 2SUL2 which is derived from Sulfa and 2ME2 from methyl both of which are chemical compounds present in the article manufactured by the contending parties and the addition of the syllable 2I!E2 in respondent0s label is sufficient to distinguish respondent0s product or trademark from that of petitioner. he Supreme %ourt cannot agree with petitioner that the trademarks are used on identical goods because as already indicated earlier" petitioner0s SULME label" E8hibit =" is used on a drinking water solution while that of respondent labels tablets. hat both products are for identical use may be admitted to the e8tent that respondent0s tablets are indicated for the treatment" control" and prevention in chicken of infectious cory1a 3also known as colds" rhinitis and roup4 and for the prevention of cecal and intestinal coccidiosis which is also indicated in petitioner0s SULME label. >owever" no one
2
DLSU Commercial Law Review Digest G02 (2015-2016) including petitioner can claim a monopoly in the preparation of a medicinal product for the use indicated above. he field is open for the manufacture of medicinal preparations for the same veterinary purposes. What the law prohibits is that one manufacturer labels his product in a manner strikingly identical with or similar to that of another manufacturer as to deceive or confuse the buying public into believing that the two preparations are one and come from the same source. In the case however of SULME and SULMEI!E it is satisfactorily shown from the evidence of the parties that while their products may be for a similar use" their presentation to the purchasing public come in totally different forms. )bsent a finding of confusing similarity between two trademarks" the priority in the use of the marks SULME by the petitioner will have no decesive effect in the granting of his petition for cancellation of the registration of respondent trademark.
D-SPS-+-3 PR+-#, 3R3R3" the petition is #ISMISSE#. he Sandiganbayan
$
