(3)CHUANCHOW SOY & CANNING CO. vs DIRECTOR OF PATENTS AND VILLAPANA Facts: Petitioner Chuanchow Soy & Canning Co. and respondent Rosario Villapania are engaged in the manufacture and sale of soy sauce. Since 1950, petitioner had been using as trade mark the words "Carp Brand Soy", printed in a distinctive style of lettering above the drawing of a fish to distinguish its product, on labels affixed directly to the bottles containing soy sauce, and on tissue paper in which these bottles were wrapped. The Patent Office issued Trademark Registration Certificate 4384 to it for its aforesaid trademark.
Respondent Villapania since 1956 19 56 had been using as trademark of her soy so y sauce the name of "Bangos Brand" written in the same distinctive style of lettering as that of the petitioner's "Carp Brand", above the drawing of the fish similar to the fish drawing on the trademark of petitioner, on labels also attached to the bottles containing her soy sauce, and the bottles were wrapped also in tissue paper bearing a similar design. On October 12, 1956, Villapania applied for registration of her trademark as above-described. Upon examination of the trademark, the examiner of the Office of the Director of Patents made the following ruling: 1. Examiner has taken into consideration a previously previously registered mark: CARP BRAND BRAND & fish representation for soy sauce of the Chuanchow Soy & Caning Co., Reg. No. 4384 dated October 27, 1953, and found that the fish representation closely resembles to applicant's mark as presented in the drawing. In view thereof, the applicant must submit new drawings and facsimiles for the word: "BANGOS BRAND" only as shown in the labels submitted, excluding SOY and fish representation. Respondent Villapania submitted a drawing of the word "Bangos Brand" only, the same was published in the Official Gazette. However, she continued and is supposedly still continuing to use the labels and wrappers Exhibits D and E on the bottles containing her product, which as already stated, included not only "Bangos Brand" but also the word "Soy" above the drawing of the fish. So, on October 9, 1957, petitioner company filed its opposition to respondent's application. The case was submitted on a stipulation of facts made verbally by them during the hearing. The case was submitted on a stipulation of facts made verbally by them during the hearing. Respondent Director of Patents rendered a decision dismissing petitioner's opposition to the application abovestated, which decision is now on appeal. Issue: W/N the application for registration of respondent must denied. Held: Yes, the application for registering Respondent’s trademark must be denied as it resembles to Petitioner’s trademark Petitioner’s trademark and would likely to cause confusion.
As in the present present case, one applies for the the registration registration of a trademark trademark or label which is almost almost the same same or 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 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. There should be no halfway measures, as was done in this case by the ruling of the examiner who directed the respondent to amend or modify the label or trademark she sought to register by eliminating some portions thereof. As a result, although the word "Soy" and the drawing of a fish were eliminated, still, the word "Bangos" and the word "Brand" which are similar to the style of lettering of the corresponding words in the label, Exhibit B, of petitioner, could still create confusion or doubt in the
mind of prospective purchasers, to say nothing of the fact that the words "Carp" and "Bangos" both indicate fish, and the additional fact that both trademarks and labels refer to or advertize the same product, namely, soy sauce. Why the respondent in the present case could not have selected as the principal figure in her label some animal living on the surface of the earth, like a dog, cat, monkey, etc., or an article or furniture, like a table, chair, or if she was determined to select a creature living in the sea, that of a crab, lobster, or octopus, is hard to understand. She had to select fish, which as already stated, she pictured in her label similar in size, shape and form as that appearing in the already used and registered label of petitioner. The Director of Patents should as much as possible discourage all attempts at imitation of labels already used and registered, as already stated, to avoid confusion, to protect the public from purchasing the wrong article or brand and also to give protection to those who have established goodwill, reputation and name in the manufacture and sale of their products by means of a label of long standing and use and duly registered. Another circumstance against the registration of the trademark or label of respondent is that she would appear not to have used the amended or modified label she presented for registration, but continued to use the original label or trademark which was refused registration by the Director of Patents. This indicates not only her desire to continue taking advantage of the goodwill acquired and established by the petitioner, but it equally shows that she had not used the label or trademark now being applied for by her, despite the fact that the law requires at least two months previous use prior to application for registration.
(8)BRISTOL MYERS CO. vs DIRECTOR OF PATENT Facts: Bristol Myers Co., a corporation of the State of Delaware, U.S.A., filed on January 6, 1959 an opposition to the application. Said oppositor is the owner in the Philippines of the trademark "BUFFERIN" under Certificate of Registration No. 4578 issued by the Philippine Patent Office on March 3, 1954. Its trademark is also registered in the United States under Certificate of Registration No. 566190 issued on November 4, 1952. It was first used in the Philippines on May 13, 1953. The product covered by "BUFFERIN" also belongs to Class 6, Medicines and Pharmaceutical Preparations. Designated as "Antacid analgesic", it is intended for relief in cases of "simple headaches, neuralgia, colds, menstrual pain and minor muscular aches."
The thrust of oppositor's contention was that the registration of the applicant's trademark "BIOFERIN would violate its rights and interests in its registered trademark "BUFFERIN" as well as mislead and confuse the public as to the source and origin of the goods covered by the respective marks, in view of the allegedly practically the same spelling, pronunciation and letter-type design of the two trademarks covering goods of the same class. Parties filed a joint petition stipulating as to the facts and submitting the case upon the issue of whether or not, considering all the factors involved, in both trademarks — as the parties would discuss in their memoranda, — there will be such confusing similarity between the two trademarks as will be likely to deceive the purchasing public. The Director of Patents rendered a decision granting the petition for registration and dismissing the opposition, on the ground that, all factors considered the trademarks in question are not confusingly similar, so that the damage feared by the oppositor will not result. Hence, this petition.
Issue: W/N trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in their respective labels, confusingly similar. Held: No, the trademarks are not confusingly similar.
In determining whether two trademarks are confusingly similar, the test is not simply to take their words and compare the spelling and pronunciation of said words. Rather, it is to consider the two marks in their entirety, as they appear in the respective labels, in relation to the goods to which they are attached. Applying this test to the trademarks involved in this case, it is at once evident that the Director of Patents did not err in finding no confusing similarity. For though the words "BIOFERIN" and "BUFFERIN" have the same suffix and similar sounding prefixes, they appear in their respective labels with strikingly different backgrounds and surroundings, as to color , size and design. Accordingly, taken as they will appear to a prospective customer, the trademark in question are not apt to confuse. Furthermore, the product of the applicant is expressly stated as dispensable only upon doctor's prescription, while that of oppositor does not require the same. The chances of being confused into purchasing one for the other are therefore all the more rendered negligible. Although oppositor avers that some drugstores sell "BIOFERIN" without asking for a doctor's prescription, the same if true would be an irregularity not attributable to the appli cant, who has already clearly stated the requirement of a doctor's prescription upon the face of the label of its product.
(13)AMERICAN WIRE & CABLE CO. vs DIRECTOR OF PATENTS Facts: Petitioner American Wire and Cable Company (American) is the owner of the registered trademark DURAFLEX and Device for electric wires. On June 1962, private respondent/applicant Central Banahaw (Central) sought to register the label DYNAFLEX for electric wires. Petitioner opposed on the ground that Central’s use of the trademark DYNAFLEX would confuse purchasers looking for DURAFLEX. The mark sought to be registered allegedly having practically the same spelling, pronunciation and sound, and covering the same good, but had not been in use continuously, unlike DURAFLEX which was in use since 1958.
Director of Patents held that DYNAFLEX was not similar to DURAFLEX, since the logo design was dissimilar, the DURAFLEX logo being in all caps while DYNAFLEX was in miniscule, and thus gave Central’s application to trademark DYNAFLEX due course. ISSUE: Whether or not the mark DYNAFLEX and Device is registrable as label for electric wires, class 20, considering that the trademark DURAFLEX and Globe representation also for electric wires, machines and supplies under class 20, has been registered more than 4 years earlier. HELD: NO, the mark sought to be registere d failed to “dominancy test”
The pertinent law, Republic Act 166, as amended, on registrability of trademarks, prescribes: SEC. 4. — The owner of a trademark, trade name or service-mark used to distinguish his goods, business or services from the goods, business or services of others shall have the right to register the same, unless it: (d) Consists of or comprises a mark or trade name which so resembles a mark or tradename registered in the Philippines by another and not abandoned, as to be likely, when
applied to or used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive purchasers. It is clear from the above-quoted provision that the determinative factor in a contest involving the registration of trademark is whether the use of such mark would likely cause confusion or mistake on the part of the buying public. The test of “likelihood” is the “dominancy test” or the assessment of the essential or dominant features in the competing labels to determine whether they are confusingly similar. In fact, even their similarity in sound is taken into consideration, where the marks refer to merchandise of the same descriptive properties, for the reason that trade idem sonans constitutes a violation of trade mark patents. The court found: The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not only are the initial letters and the last half of the appellations identical, but the difference exists only in two out of the eight literal elements of the designations. Coupled with the fact that both marks cover insulated flexible wires under class 20; that both products are contained in boxes of the same material, color, shape and size; that the dominant elements of the front designs are a red circle and a diagonal zigzag commonly related to a spark or flash of electricity; that the back of both boxes show similar circles of broken lines with arrows at the center pointing outward, with the identical legend "Cut Out Ring" "Draw From Inside Circle", no difficulty is experienced in reaching the conclusion that there is a deceptive similarity that would lead the purchaser to confuse one product with the other. The Director of Patents has predicated his decision mostly on the semantic difference and connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately forgetting that the buyers are less concerned with the etymology of the words as with their sound and the dominant features of the design. The court further explained that "unlike the pharmacists or druggists, the dispensers of hardware or electrical supplies are not generally known to pay as much concern to the brand of articles asked for by the customer and of a person who knows the name of the brand but is not acquainted with it is appearance, the likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote." Thus the request to register this trademark must be denied.
