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INTEUECTUAL PROPERTY OFFICE OF THE PHILIPPINES

UNITED LIFE SCIENCES PTE. LTD., IPC NO. 14-2019-000390 Opposer,

Opposition to: -versus- Appln. Serial No. 4-2019-005215

Date Filed: 28 March 2019 TM: ACEFLEM

LABMATE PHARMA INC. (PH), Respondent-Applicant.

x--------------------------------------------------------------x Decision No. 2021-S

DECISION

UNITED LIFE SCIENCES PTE. LTD. 1 ("Opposer") filed an opposition to Trademark Application Serial No. 4-2019-005215. The application filed by LABMATE PHARMA INC. (PH)2 ("Respondent-Applicant"), covers the mark"ACEFLEM" for use on "medicinal preparations for Mucolytic" under Class 05 of the International Classification of Goods.'

In opposing the application for registration of the subject mark, Opposer alleges the following:

"7. The mark "ACEFLEM" applied for by Respondent-Applicant so resembles the trademark "EXFLEM" owned by Opposer and duly registered with the IPO prior to the publication of the application for the mark "ACEFLEM".

"8.The mark "ACEFLEM" will likely cause confusion, mistake and deception on the part of the purchasing public, most especially considering that the opposed mark "ACEFLEM" is applied for the same class and goods as that of Opposer's trademark "EXFLEM", i.e., Class 05 of the International Classification of Goods for pharmaceutical preparations for cough relief.

"9. The registration of the mark "ACEFLEM" in the name of the Respondent­Applicant will violate Sec. 123.1.(d) of the IP Code, which provides, in part, that 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;

I A corporation organized and existing under the laws of Singapore. 2 A domestic corporation located in Quezon City. 'The Nice Classification is a classification of goods and services for the purpose of registering trademarks and service marks based on a multilater I treaty admini stered by the World Intellectual Property Organization. This treaty is called the Nice Agreement Concern ing the Internatio I Classification of Goods and Services for the Purposes of Registration of Marks concluded in 1957.

www.ipophil.gov.ph Intel lectual Property Center #28 Upper McKinley Road e mail@ipophil.gov.ph McKinley Hill Town Centero +632-2386300 Fort Bonifacio, Taguig City

+632-5539480 1634 Philippines

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\ , " 10. Under the above-quoted provision , any mark, which is similar to a registered mark, shall be denied registration in respect of similar or related goods or if the mark applied for nearly resembles a registered mark that confusion or deception in the mind of the purchasers will likely result.

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" l l.Respondent-Applicant's use and registration of the mark "ACEFLEM" will diminish the distinctiveness of Opposer's trademark "EXFLEM"." "

To support its claim, Opposer submitted the following pieces of evidence:

1. A print-out of the pertinent page of the Intellectual Property Office (IPO) E-Gazette;

2. A certified true copy of Certificate of Registration No. 4-2011-009659 for the-trademark "EXFLEM" issued by the IPO;

3. Certified true copies of the Declarations of Actual Use for the trademark "EXFLEM";

and

4. Original copy of the Certification and sales performance issued by the IQVIA

(formerly IMS Health & Quinteles).

This Bureau issued a Notice to Answer (NTA) on 03 August 2020 and served it to the Respondent-Applicant's representative on 05 September 2020. Despite the receipt of the Notice, Respondent-Applicant failed to file the answer. Consequently, Order No. 2020­2175 dated was issued on 04 December 2020 declaring Respondent-Applicant in default. On 08 January 2021, Opposer filed its Compliance with Manifestation.

The sole issue to be resolved in this case is whether Respondent-Applicant's mark ACEFLEM should be registered.

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, it is an intellectual property deserving protection by law. In trademark 2on'troversies, each case must be scrutinized according to its peculiar circumstances, such tH~t jurisprudential precedents should only be made to apply if they are specifically in p&int.5

Section 134 of Republic Act No. 8293, also known as the Intellectual Property Code of -the Philippines ("IP Code"), as amended, allows opposition to trademark application. It states:

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} ';/~sou rce International, Inc. v. Horphag Research Management SA., G.R. No. 180073, November 25, 2009, 605 SCRA 523, 528; McDonalds CorPoration v. MacJoy Fastfood Corporation, G.R. No. 166115, February 2.2007, 514 SCRA 95, 107. : .f-hiiip Morris, Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, June 27, 2006,493 SeRA 333, 356. . • ld

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Section 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application.

, Records will show that at the time Respondent-Applicant filed its application for registration of its mark ACEFLEM on 28 March 2019, Opposer already obtained Registration No. 4-2011-009659 for the mark EXFLEM issued in 05 January 2012. As such, pursuant to Section 1386 of the IP Code, Opposer's certificate of registration is a primafacie evidence of the its ownership of the mark, and its exclusive right to use the same in connection with the goods or services specified in the certificate and those that are related thereto. Accordingly, pursuant to Section 1477of the IP Code, it has a legal standing to oppose the herein subject application for registration of Respondent-Applicant's ACEFLEM mark.

. , In determining confusing similarity of marks, Section 123.1 paragraph (d)

enumerates the factors to be considered. It states:

Section 123.Registrability. - 123. I. A mark cannot be registered if it:

xxx (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earl ier filing or priority date, in respect of:

C. ': . ' i. The same goods or services, or ii. Closely related goods or services, or

1.. :D ~ l , iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion.

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A mark cannot be registered if it resembles a registered mark of another person or entity or a mark with an earlier filing date. The court has ruled that the most important element is the existence of resemblance (colorable imitation) of the subject mark to a mark already registered or which has priority rights, which would likely cause confusion, mistake or deception on the part of the public. Absent any finding of its existence, there can be no likelihood of confusion.f

Colorable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or trade name with that of the other mark or trade name in their over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article."9 The law does not require that the competing marks must en t

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6,~ec t ion 138.Certificates of Registration. - A certificate of registration of a mark shall be 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 or services and those that are relatedthereto specified in the certificate. 7 Section 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 identicalor similar to those in respect of which the trademark is registeredwhere such use would result in a likelihoodof confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusionshall be presumed. 147.2. The exclusive right of the owner ofa well-known mark defined in Subsection 123.I(e) which is registered in the Philippines, shall extend to 1l.0<? 9~ 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 ar·-services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of ~e owner of the registered mark are likely to be damaged by such use. Ws!:'d.Somboonsakdikul v, Orlane SA, Gr. No. 188996, promulgated on 01 February2017.

t lJm<,,1dG~,"" Manufacturing 0",,,,,,,, vs. C,," ofA""I" G.R. No 100098 December 29, 1995 3 I L1U :

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ge,~ so identical as to produce actual error or mistake. It would be sufficient that the ~A~lar ity between the two marks is such that there is possibility of the older brand i1Ustaking the newer brand for ipo

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In Mang Inasal Philippines, Inc. v. IFP Manufacturing Corporation," the Supreme Court held:

The concept of confusion, which is at the heart of the proscription, could either refer to confusion of goods or confusion of business. In Skechers U.S.A., Inc. v. Trendworks International Corporation, we discussed and differentiated both types of confusion, as follows :

Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2) types of confusion, viz.: (I) 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.

Confusion, in either of its forms, is, thus, only possible when the goods or services covered by allegedly similar marks are identical, similar or related in some manner.

Verily, to fall under the ambit of Sec. l23.I(d) (iii) and be regarded as likely to deceive or cause confusion upon the purchasing public, a prospective mark must be shown to meet two (2) minimum conditions:

I. The prospective mark must nearly resemble or be similar to an earlier mark ; and 2. The prospective mark must pertain to goods or services that are either identical, similar or

t . related to the goods or services represented by the earlier mark.

In determining resemblance of marks, the Supreme Court has adopted two tests: the Dominancy Test and the Holistic 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. If the competing trademark contains the main, essential and dominant features of another, and confusion or deception is likely to result, infringement takes place.v On the other hand, the Holistic Test considers the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity.P The Court stated that the test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code, which defines infringement as the "colorable imitation of a registered mark or a dominant feature thereof."14

Now, the images of Opposer's and Respondent-Applicant's as culled from ther (, IPOPHL Trademark Database are as follows: I

lO'Arnerican Wire & Cable Company Vs. Director Of Patents [G.R. No. L-26557. February l8, 1970. )l'G.R. No. 22l717, promulgated on 17 June 20l7. 12 Prosource International, Inc. v. Horphag Research Management SA., G.R. No. 180073, November 25, 2009, citing Mighty Corporation v. E. & J. Gallt Winery , G.R . No. 154342, July 14,2004,434 SCRA 473, 506; McDonald's Corporation v , L.C. Big Mak Burger, Inc., G.R . No. 143993, August l8 , ~004, 437 SCRA 10,32. lJ SJpra. Citing Philip Morris , lnc. v. Fortune Tobacco Corporation, supra note 20, at 356-357. ~J JInfMcDonald 's Corporation et AI. v. L.C. Big Mak Burger, 1nc.,G.R. No. 143993. August 18,2004

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EXFLEM ACEFLEM Opposer's Mark Respondent-Applicant's Mark

Applying the dominancy test, we can clearly see that Respondent-Applicant's adopted t~~ dominant feature of Opposer's mark which is the mark "EXFLEM" itself. Opposer's mark is a word mark that appeal to the visual and aural senses. It is composed of two syllables "EX" and "FLEM" written in plain uppercase letters. Respondent-Applicant adopted the second syllable "FLEM" of Opposer's mark and then replaced the first syllable "EX" with "ACE". However, adding, removing or changing some letters of a registered mark cannot avoid confusion.t> The difference in the letters does not make Respondent­Applicant's mark different from that of Opposer's to diminish the confusing similarity because the former's mark has a similar overall impression as that of latter's mark.

Respondent-Applicant's mark is likewise aurally similar to that of Opposer's. In actual trade, buyers do not merely rely on the visual representation of a mark but also on its phonetic articulation. The sound or verbalization of a mark plays an important part in its r~ ~ognition by the public. Aside from visual advertising, most businesses rely on word of h1.~u th in building its goodwill and reputation. Loyal and satisfied customers often recommend a product by word of mouth. Thus, the goodwill created by trademarks fi~ewise spreads, transfers and is conveyed by word of mouth, as applied in the actual conditions in the market.ls : \

. In this case, even when Respondent-Applicant's replaced the first syllable "EX" of Opposer's mark with"ACE", when pronounced, the mark ACEFLEM produces the same sound as that of Opposer's EXFLEM mark such that to the ears they are indistinguishable from one other. In Marvex Commercial Co. Inc. vs. Petra Hauipia & Co., and The Director of Patentsv, ttle-5upreme Court ruled: I' ;:C .

• i( Two letters of ' SALONPAS' are missing in ' LIONPAS' : the first letter a and the letter s. Be that as it may, when the two words are pronounced, the sound effects are confusingly similar. And where goods are advertised over the radio, sim ilarity in sound is of special significance lik: (Co Tiong Sa vs. Director of Patents, 95 Phil. I, citing Nims , The Law of Unfair Competition

(,(JI~ and Trademarks, 4th ed., Vol. 2, pp. 678-679). 'The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend entirely on the ear' (Operators, Inc. vs. Director of Patents, supra).

, ' The following random list of confusingly similar sounds in the matter of trademarks, culled

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from Nims, Unfair Competition and Trade Marks, 1947, Vol. I , will reinforce our view that I , ' i

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"Societe Des Produits Nestle, S.A v. Court of Appeals, G.R. NO.1 12012,4 Apr. 2001,356 SCRA 207. 217. 1(, Decision No. 2017-382, IPe NO. 14-2016-000681, 16 November 2017, page 4. 17·G.R. No. L-19297. 22 December 1966 , .

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'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 'Lemon­Up'. 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.

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In the case at bar, 'SALONPAS' and 'LIONPAS', when spoken, sound very much alike. Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties (see Celanese Corporation of America vs. E. I. Du Pont, 154 F. 2d. 146, 148).

Trademarks are designed not only for the consumption of the eyes, but also to appeal to the other senses, particularly, the faculty of hearing. Thus, when one talks about the Opposer's trademark or conveys information thereon, what reverberates is the sound made in pronouncing it. Where goods are advertised over the radio, similarity in sound is of special significance." The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend entirely on the ear.'? Thus, the first condition for finding confusing similarity of a mark has been met.

As to the goods, Respondent-Applicant's ACEFLEM mark is being applied for "medicinal preparations for Mucolytic goods" under Class 05 while Opposer's goods pertain to "pharmaceutical preparations for cough relief" also belonging to Class 05. Mucolytics are medicines that thin mucus, making it less thick and sticky and easier to c6ugh up. They are used to treat respiratory conditions characterized by excessive or ~kkened mucus, such as a chesty (productive) cough.P Thus, Respondent-Applicant's goods are similar or closely related to Opposer's. Since the Respondent-Applicant's goods are similar and/or related to Opposer's goods, there is likelihood that the public will be misled, confused or mistaken into believing that the goods of Respondent-Applicant comes or -originated from Opposer, when they actually are not. If allowed to co-exist, any impression or information that the public may have on Respondent-Applicant's goods may be unfairly attributed to the Opposer to its damage and prejudice. • 1 .. ~

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I)~.1 This is why, the Court has ruled in many cases that in cases of grave doubt between it:hewcomer who by the confusion has nothing to lose and everything to gain and one who by" honest dealing has already achieved favour with the public, any doubt should be r@solved against the newcomer in as much as the field from which he can select a desirable trademark to indicate the origin of his product is obviously a large one.P

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18. Co Tiong Sa vs. Director of Patents , 95 Phil., I , citing Nims, The Law of Unfair Competition and Trademarks, 4th ed., Vol. 2, pp. 678-679 r'10'perators , Inc. vs. Director of Patents , L-1790 I , oCI. 29, 1965 tuJ PJJPs://w\\,\\,drug,s.com/drug -c1ass/mllcplvlics tuml, last accessed on 07 March 2021. 21Del Monte Corporation et. al. v. Court of Appeals , GR No. 78325 ,25 Jan. 1990. 601'"

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Thus, in McDonald'5 Corporation v. McJoy Fastfood Corporation-s, the Court also held

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When one applies for the registration of a trademark or label which is almost the

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 is 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.

Accordingly, this Bureau finds that the registration of Respondent-Applicant's

t\SEFLEM mark is proscribed by Sec. 123.1 (d) of the IP Code.

WHEREFORE, premises considered, the instant opposition is hereby SUSTAINED. Let the filewrapper of Trademark Application Serial No. 4-2019-005215, together with a copy of this Decision, be returned to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

2Q APR 201\Taguig City, _

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Bureau of Legal Affairs

22 G.R. No. 166115. February 2, 2007 , citing Faberge Inc. v. lAC, 35 citing Chuanchow Soy & Canning Co. v. Dir. of Patents and Villapanta

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