Friday, December 16, 2011

Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., GR No. 190065, August 16, 2010

Facts: Dermaline filed with the IPO an application to register the trademark “Dermaline.” Myra opposed this alleging that the trademark resembles its trademark “Dermalin” and will cause confusion, mistake and deception to the purchasing public. “Dermalin” was registered way back 1986 and was commercially used since 1977. Myra claims that despite attempts of Dermaline to differentiate its mark, the dominant feature is the term “Dermaline” to which the first 8 letters were identical to that of “Dermalin.” The pronunciation for both is also identical. Further, both have 3 syllables each with identical sound and appearance.

Issue: W/N the IPO should allow the registration of the trademark “Dermaline.” NO

Held: As Myra correctly posits, 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 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. 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. Relative to the question on confusion of marks and trade names, jurisprudence 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.

Using this test, the IPO declared that both confusion of goods and service and confusion of business or of origin were apparent in both trademarks. While it is true that the two marks are presented differently, 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. 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.

 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.

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