Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., GR No.

190065, Auust
16, !010
Post under case digests, Commercial Law at Friday, December 16, 2011 Posted
by Schizohrenic !ind
"#D$%&'(C)(C
"acts* Dermaline +led with the ,P- an alication to register the trademar.
/Dermaline01 !yra oosed this alleging that the trademar. resembles its
trademar. /Dermalin1 and will cause con2usion, mista.e and decetion to the
urchasing ublic0 /Dermalin1 was registered way bac. 13$6 and was
commercially used since 13440 !yra claims that desite attemts o2 Dermaline
to di5erentiate its mar., the dominant 2eature is the term /Dermaline1 to which
the +rst $ letters were identical to that o2 /Dermalin01 6he ronunciation 2or both
is also identical0 Further, both ha7e 8 syllables each with identical sound and
aearance0
Issue* 9:) the ,P- should allow the registration o2 the trademar. /Dermaline01
)-
#el$* #s !yra correctly osits, it has the right under Section 1;4 o2 <0#0 )o0
$238 to re7ent third arties 2rom using a trademar., or similar signs or
containers 2or goods or ser7ices, without its consent, identical or similar to its
registered trademar., where such use would result in a li.elihood o2 con2usion0 ,n
determining con2usion, case law has de7eloed two =2> tests, the Dominancy
6est and the "olistic or 6otality 6est0
6he Dominancy 6est 2ocuses on the similarity o2 the re7alent 2eatures o2 the
cometing trademar.s that might cause con2usion or decetion0 Dulication or
imitation is not e7en re?uired@ neither is it necessary that the label o2 the
alied mar. 2or registration should suggest an e5ort to imitate0 <elati7e to the
?uestion on con2usion o2 mar.s and trade names, Aurisrudence noted two =2>
tyes o2 con2usion, 7iz* =1> con2usion o2 goods =roduct con2usion>, where the
ordinarily rudent urchaser would be induced to urchase one roduct in the
belie2 that he was urchasing the other@ and =2> con2usion o2 business =source or
origin con2usion>, where, although the goods o2 the arties are di5erent, the
roduct, the mar. o2 which registration is alied 2or by one arty, is such as
might reasonably be assumed to originate with the registrant o2 an earlier
roduct, and the ublic would then be decei7ed either into that belie2 or into the
belie2 that there is some connection between the two arties, though ineBistent0
Csing this test, the ,P- declared that both con2usion o2 goods and ser7ice and
con2usion o2 business or o2 origin were aarent in both trademar.s0 9hile it is
true that the two mar.s are resented di5erently, they are almost selled in the
same way, eBcet 2or DermalineDs mar. which ends with the letter E',E and they
are ronounced ractically in the same manner in three =8> syllables, with the
ending letter E'E in DermalineDs mar. ronounced silently0 6hus, when an
ordinary urchaser, 2or eBamle, hears an ad7ertisement o2 DermalineDs alied
trademar. o7er the radio, chances are he will associate it with !yraDs0 9hen one
alies 2or the registration o2 a trademar. or label which is almost the same or
that 7ery closely resembles one already used and registered by another, the
alication should be reAected and dismissed outright, e7en without any
oosition on the art o2 the owner and user o2 a re7iously registered label or
trademar.0
Further, DermalineDs stance that its roduct belongs to a searate and di5erent
classi+cation 2rom !yraDs roducts with the registered trademar. does not
eradicate the ossibility o2 mista.e on the art o2 the urchasing ublic to
associate the 2ormer with the latter, esecially considering that both
classi+cations ertain to treatments 2or the s.in0
%ase Diest& %om'ania General $e (a)acos $e "ili'inas an$ *a "lor $e
la Isa)ela, Inc. vs. #on. +irilio A. ,evan$al, et al.
Petitioners- %laims&
Petitioners claimed in its LetterFComlaint to the S'C that 6aba?ueria, owned by
its 2ormer General !anager, Gabriel <ioll, cannot be allowed to continue said
name because it will con2use and decei7e the ublic into belie7ing that
6aba?ueria is oerated and managed by, and art o2 6abacalera0 Comania
General, being a SainFbased comany, oerated under La Flor de la ,sabela in
the Philiines0 Petitioners +led with the D-% and the D6, a Comlaint 2or
,n2ringement and Cn2air Cometition0 Petitioners alleged that 6aba?ueria
deliberately sought to adot the 6abacalera trademar.s to con2use the ublic
that the 6aba?ueria cigars are the same or are somehow connected with the
6abacalera roducts0 #s such, the Petitioners +led 2or a !otion to grant Cease
and Desist -rder in order to enAoin 6aba?ueria 2rom 2urther roducing cigars0
Res'on$ents- %laims&
<ioll, now the Directing !anager o2 6aba?ueria, alleged that there is insuHcient
e7idence to issue a Cease and Desist -rder against him on the ground o2 un2air
cometition and in2ringement o2 trademar.0 !oreo7er, they mo7ed to dismiss
the case on the ground o2 2orum shoing0 Further, the -Hce o2 Legal #5airs o2
the D6, ruled that there was no similarity in the general aearance o2 the
roducts o2 the arties and consumers would not be misled0 D6, 2urther 2ound
that the cometing roducts, in their totality, are easily distinguishable through
their brand and logos0 /6#I#C#L'<#1 is the brand o2 the 6abacalera roducts,
while /FL-< D' !#),L#1 is the brand o2 the Petitioners0 ,n 2act, er Certi+cation
o2 I,< in 133;, /Flor de !anila1 is the brand registered by the latter with said
bureau0 #s er insection, none o2 their boBes e7en show the word
/6#I#JC'<,#10
Issue&
9hether or not there is substantial similarity between the two arties as to
amount to un2air cometition and trademar. in2ringement, and are there2ore
entitled to a writ o2 reliminary inAunction0
Rulin&
)o0 6he Sureme Court uheld the decision o2 the Court o2 #eals and the
D6,0 ,nAuncti7e relie2 may only be issued when the right o2 the comlainant is
clear and unmista.able@ when the in7asion o2 the right sought to be rotected is
material and substantial@ and there is an urgent and aramount necessity 2or the
writ to re7ent serious damage0 6he Court 2ound that there is no urgent and
aramount necessity 2or the writ0 6he Petitioners has not shown, at least
tentati7ely, that there eBists a 2raudulent and malicious entry into the mar.et
and as a result thereby, their sales droed by 2&K0
"re$co v. #arvar$ .niversity, G.R. No. 1/5910, 1une 1, !011
"acts&
,n 200&, Fredco !anu2acturing Cororation +led a etition 2or cancellation be2ore
the Iureau o2 Legal #5airs o2 the Philiine ,ntellectual Proerty -Hce against
the President and Fellows o2 "ar7ard College 2or the registration o2 its mar.
/"ar7ard Leritas Shield Symbol1 under the Classes 16, 1$, 21, 2& and 2$ o2 the
)ice ,nternational Classi+cation o2 Goods an Ser7ices alleging that its
redecessorFinFinterest, )ew Mor. Garments !anu2acturing N 'Bort Co0, ,nc0,
has been already using the mar. /"ar7ard1 since 13$& when it registered the
same mar. under Class 2& o2 the )ice Classi+cation0 6hus, "ar7ard Cni7ersity is
not a rior user o2 the mar. in the Philiines and, there2ore, has no right to
register the mar.0
-n the other hand, "ar7ard Cni7ersity claimed that the mar. /"ar7ard1 has
been adoted by "ar7ard Cni7ersity in Cambridge, !assachusetts, CS# since
16830 Furthermore, it alleges that the name and mar. /"ar7ard1 and /"ar7ard
Leritas Shield Symbol1 is registered in more than &0 countries, including the
Philiines, and has been used in commerce since 1$420 ,n 2act, the name and
mar. is rated as one o2 the to brands o2 the world, being worth between O4&0!
and O1I0
Decision o2 IL#F,P-
6he Iureau o2 Legal #5airs, ,P- ruled in 2a7our o2 Fredco ordering the
cancellation o2 "ar7ard Cni7ersityDs mar. under Class 2& only because the other
classes were not con2usingly similar with resect to the goods and ser7ices o2
Fredco0
Decision o2 -DGF,P-
"ar7ard Cni7ersity aealed be2ore the -Hce o2 the Director General o2 ,P-
wherein -DGF,P- re7ersed the decision o2 IL#F,P-0 6he Director General ruled
that the alicant must also be the owner o2 the mar. sought to be registered
aside 2rom the use o2 it0 6hus, Fredco is not the owner o2 the mar. because it
2ailed to eBlain how its redecessor got the mar. /"ar7ard10 6here was also no
e7idence o2 the ermission o2 "ar7ard Cni7ersity 2or Fredco to use the mar.0
Decision o2 the Court o2 #eals
Fredco aealed the decision o2 the Director General be2ore the Court o2
#eals, which then aHrmed the decision o2 -DGF,P- considering the 2acts
2ound by the Director General0 C# ruled that "ar7ard Cni7ersity had been using
the mar.s way be2ore Fredco and the etitioners 2ailed to eBlain its use o2 the
mar.s bearing the words /"ar7ard1, /CS#1, 'stablished 13861 and /Cambridge,
!assachusetts1 within an oblong de7ice0
Issue&
9:) C# erred in aHrming the decision o2 -DGF,P-
#el$&
6he Petition has no merit0
#lthough <0#0 166 Section 2 states that be2ore a mar. can be registered, it must
ha7e been actually used in commerce 2or not less than two months in the
Philiines rior to +ling an alication 2or its registration, a trademar.
registered in a 2oreign country which is a member o2 the Paris Con7ention is
allowed to register without the re?uirement o2 use in the commerce in the
Philiines0 Cnder Section 84 o2 <0#0 166, registration based on home certi+cate
is allowed and does not re?uire the use o2 the mar. in the Philiines0
Furthermore, <0#0 $238 Section 28302 ro7ides that mar.s which ha7e been
registered under <0#0 166 shall remain in 2orce but shall be subAect to the
ro7isions o2 <0#0 $238, which does not re?uire the rior use o2 the mar. in the
Philiines0
9hy the etition must 2ailP
10 6he inclusion o2 the origin /Cambridge, !assachusetts1 in FredcoDs mar.
connotes that Fredco is associated with "ar7ard Cni7ersity, which is
really not true0 6he registration o2 FredcoDs mar. should ha7e been
reAected0
20 6he Philiines is a signatory o2 the Paris Con7ention, which ro7ides 2or
the rotection against 7iolation o2 intellectual roerty rights to all the
member countries regardless o2 whether the trademar.s is registered or
not in a articular country0
13$0, Luis Lilla2uerte issued a memo to the Director o2 Patents ordering the
latter to reAect all ending alications o2 mar.s which in7ol7es a wellF.nown
brand around the world by alicants other than the owner o2 the mar.0
13$8, <oberto -ngin aHrmed the memo o2 Lilla2uerte by commanding the
Director o2 Patents to imlement measures which will comly with the ro7isions
o2 the Paris Con7ention0 "e ro7ided criteria that should be considered to any
mar.s that are wellF.nown in the Philiines or mar.s that belong to ersons
subAect to the rotection o2 the Con7ention0
Currently, wellF.nown mar.s are rotected under Section 12801=e> o2 <0#0 $2380
#dditionally, <ule 102 o2 the <ules and <egulations on 6rademar.s, Ser7ice
!ar.s, 6rade )ames and !ar.ed or Stamed Containers ro7ides 2or the criteria
in determining a wellF.nown mar.0 6he use o2 the mar. in commerce is not
anymore re?uired because it is enough that /any combination1 o2 the criteria be
met in order 2or a mar. to be wellF.nown0
6he -DGF,P- traced the origin o2 the mar. /"ar7ard10 ,t ruled that "ar7ard
Cni7ersity had been using the mar. centuries be2ore Fredco although the latter
may ha7e used the mar. +rst in the Philiines be2ore the 2ormer0
Li.ewise, C# ruled that the name and mar. /"ar7ard1 and /"ar7ard Leritas
Shield Symbol1 were +rst used in the Cnited States since 13&8 under Class 2&0
Finally, the Sureme Court declared the mar. /"ar7ard1 to be wellF.nown
internationally, including the Philiines0
23I, +,. ,hen Dar
'M,S is a domestic cororation engaged in the roduction, manu2acture, sales
and distribution o2 air comressors, etc0 Shen Dar is a 6aiwanFbased 2oreign
cororation engaged in the manu2acture o2 air comressors0 Ioth comanies
claim to ha7e the right to register the trademar. /L'SP#1 2or
air comressors0 1334QShen Dar alied with ,P- to register /L'SP#, Chinese characters
and de7ise1 2or use on air comressors and welding machines@ 2004 aro7ed,
C-< recei7ed1333Q'M,S alied with ,P- to register /L'SP#1 2or use on air comressors@
200; aro7ed, C-< recei7ed Shen Dar thus +led a Petition 2or Cancellation o2 'M,SD C-<
with the IL#, arguing that 'M,S is a mere distributor o2 air comressors bearing t
he mar. /L'SP#1 which it imorted 2rom Shen Dar0 ,t 2urther argued that it had rior
and eBclusi7e right to use /L'SP#1 in the Philiines under the Paris Con7ention0

'M,S denied Shen DarDs claims, saying it has been the sole assembler and 2abricator o2 /L'SP#1
air comressors since the early 30s0 6hey 2urther contend that Shen Dar sulied them /SD1 air
comressors, and that Shen Dar is not the
owner o2 the mar. and thus could not see. rotection 2rom the Paris Con7ention
or the ,P Code0 IL#, ,P DirectorFGeneral, 2ound 2or 'M,S and cancelled Shen DarDs C-<0 C#
re7ersed ,P-0
Issue 1.

,2 ,P- Director General can 7alidly cancel Shen DarDs C-<0Q
Mes, SCuholds ,P-FDGDs statement* the interest o2 Austice re?uires that Certi+cate o2
<egistration )o0 ;F1334F121;32 be cancelled0 4hile the normal course
o5 'rocee$ins shoul$ have )een the 6lin o5 a 'etition 5or cancellation
o5 %erti6cate o5 Reistration No. 78199081!179!, that 9oul$ involve
critical 5actsan$ issues that have alrea$y )een resolve$ in this case. 6o
allow the #licant tostill maintain in the 6rademar. <egistry Certi+cate o2
<egistration )o0 ;F1334F121;32 would nulli2y the eBclusi7e rights o2 #ellee as
the true and registeredowner o2 the mar. L'SP# and de2eat the urose o2 the
trademar. registrationsystem0
Issue !.

-wnershi o2 the /L'SP#1 mar.
Iased on the e7idence, 'M,S owns the /L'SP#1 trademar.@ it has rior use, as shown by
7arious sales in7oices0
:9nershi' o5 a mar; or tra$e name may )e ac<uire$ not necessarily
)yreistration )ut )y a$o'tion an$ use in tra$e or commerce. As
)et9een actualuse o5 a mar; 9ithout reistration, an$ reistration o5
the mar; 9ithout actualuse thereo5, the 5ormer 'revails over the latter.
For a rule widely acceted and+rmly entrenched, because it has come down
through the years, is that actual usein commerce or business is a reFre?uisite to
the ac?uisition o2 the right o2 ownershi0 ,t is non se?uitur to hold that or?ue
'M,S is a distributor, it is nolonger the owner0