G.R. No. L-21587 - Bristol Myers Co. vs. Director of Patents

United American Pharmaceuticals, Inc. filed a petition for registration of the trademark "BIOFERIN" on October 21, 1957.
The trademark "BIOFERIN" was first used in the Philippines on August 13, 1957.
It covers a medicinal preparation composed of antihistamic, analgesic, antipyretic with vitamin C and bioflavenoid intended for the treatment of common colds, influenza, and other febrile diseases with capillary hemorrhagic tendencies.
The product falls under Class 6: "Medicines and Pharmaceutical Preparations" as per the official classification.

Bristol Myers Company, a corporation of the State of Delaware, USA, filed an opposition to this trademark application on January 6, 1959.
Bristol Myers is the owner in the Philippines of the trademark "BUFFERIN", registered under Certificate of Registration No. 4578 (issued March 3, 1954), and it is also registered in the United States (Certificate No. 566190, issued November 4, 1952).
"BUFFERIN" was first used in the Philippines on May 13, 1953.
The trademark "BUFFERIN" covers a product classified in Class 6, identified as "Antacid, analgesic," intended for the relief of simple headaches, neuralgia, colds, menstrual pain, and minor muscular aches.
The oppositor argued that granting registration for "BIOFERIN" would violate its rights over "BUFFERIN" and mislead the public due to the alleged similarity in spelling, pronunciation, and design, potentially causing confusion regarding the source and origin of the goods.

On January 18, 1961, both parties filed a joint petition stipulating the facts of the case.
The case was submitted primarily for the determination of whether the two trademarks, when considered in their entirety as they appear on the labels, are confusingly similar to the average consumer.
Issues discussed in the memoranda included comparing not only the words but also the overall design elements and contextual features of the trademarks.

On June 21, 1963, the Director of Patents issued a decision granting registration of the trademark "BIOFERIN" and dismissed the opposition.
The decision was based on a comprehensive evaluation which concluded that, when all factors were considered, the trademarks were not confusingly similar.
The evidence was weighed regarding various design features such as color, layout, size, and label composition, which differentiated the two trademarks.

Dissatisfied with the Director's decision, Bristol Myers Company appealed by filing a petition for review on July 24, 1963.
The central issue raised on appeal was whether "BIOFERIN" and "BUFFERIN," as presented to the public on their respective labels, were confusingly similar.

Whether the trademarks "BIOFERIN" and "BUFFERIN," in their respective overall presentations, are confusingly similar such that they could deceive the purchasing public.

Whether the minor similarities in spelling and pronunciation between "BIOFERIN" and "BUFFERIN" are significant when compared against the overall design and layout of the labels.
Whether additional factors such as the differences in label dimensions, color schemes, background hues, placement of the trademarks, and additional product information (e.g., prescription requirement) reduce the potential for consumer confusion.
The adequacy of considering the context in which each trademark appears in relation to the goods covered by the marks.