Case Digest (G.R. No. L-23954)
Facts:
American Cyanamid Company v. The Director of Patents and Tiu Chian, G.R. No. L-23954, April 29, 1977, First Division, Munoz Palma, J., writing for the Court. Petitioner American Cyanamid Company sought cancellation of respondent Tiu Chian’s registered trademark SULMETINE by filing an Inter Partes petition on April 3, 1959, challenging Certificate of Registration No. 5348 (issued July 6, 1956). Cyanamid alleged prior ownership and use of the mark SULMET in the United States (first used 1946; U.S. Reg. No. 431929, Aug. 12, 1947) and in the Philippines (first use May 25, 1950; Philippine Reg. No. 6894, Oct. 30, 1958), and claimed that respondent’s SULMETINE was a fraudulent appropriation confusingly similar to its SULMET on veterinary medicinal products used for substantially overlapping purposes. Cyanamid submitted label samples and sales/indent documents in support.Respondent Tiu Chian opposed the petition. The Director of Patents, after receiving evidence (including label Exhibits B and C and sales figures), denied the petition in a decision promulgated June 9, 1964. The Director found material differences in the labels (coloring, pictorials, printed matter), differences in form of preparations (petitioner’s a drinking-water solution; respondent’s tablets), and clear indications of different sources/manufacturers on the labels; he also concluded the syllables “SUL” and “MET” were descriptive/chemical in origin and that the addition of “INE” sufficiently distinguished respondent’s mark. The Director further found no proof of material damage to Cyanamid.
Cyanamid appealed to this Court assigning five errors: (1) lack of priority finding; (2) erroneous holding that SULMETINE is not confusingly similar to SULMET; (3) failure to find respondent’s registration obtained by fraud; (4) misplacing on Cyanamid the burden to prove damages as a prerequisite to cancellation; and (5) improper delegation of hearing authority to a Hearing Officer depriving the Director of jurisdiction. The Court treated the second assignment (confusing similarity) as dispositiv...(Subscriber-Only)
Issues:
- Did petitioner establish that respondent’s trademark SULMETINE is confusingly similar to petitioner’s SULMET such that cancellation under Republic Act No. 166 is warranted?
- If not, does petitioner’s asserted priority in the use of SULMET entitle it to cancellation of SULMETINE?
- Was respondent’s registration of SULMETINE obtained by fraud warranting cancellation?
- Was petitioner legally obliged to prove actual damages as a condition precedent to cancellation?
- Did the Director of Patents lose jurisdiction by delegating the h...(Subscriber-Only)
Ruling:
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Ratio:
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Doctrine:
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