Facts:

The case "Marvex Commercial Co., Inc. vs. Petra Hawpia & Co., and The Director of Patents" arose from a dispute regarding trademark registration. On October 14, 1958, Petra Hawpia & Co., a duly registered partnership in the Philippines and located at 543 M. de Santos (Botica Divisoria), Manila, filed a petition with the Philippine Patent Office seeking to register the trademark "LIONPAS" for its medicated plaster. Petra asserted its continuous use of the trademark in the Philippines since June 9, 1958. Marvex Commercial Co., Inc., a corporation also registered in the Philippines, filed an opposition on July 24, 1959, arguing that the registration of "LIONPAS" would infringe on its registered trademark "SALONPAS," which it claimed was being used for another medicated plaster and that both trademarks were confusingly similar.

The Director of Patents, after conducting hearings, dismissed the opposition on August 16, 1961, stating that

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Facts:

Background and Parties

• Petra Hawpia & Co. (the applicant), a partnership organized under Philippine laws, filed a petition on October 14, 1958 with the Philippine Patent Office seeking registration of the trademark "LIONPAS" for its medicated plaster. The petition asserted that the mark had been continuously used in the Philippines since June 9, 1958.
• Marvex Commercial Co., Inc. (the oppositor), a corporation duly organized under Philippine laws, opposed the registration on July 24, 1959. It argued that the registration of "LIONPAS" would infringe on its right and interest in the trademark "SALONPAS," which had already been registered under Certificate of Registration No. 5466, issued on September 29, 1956. The oppositor contended that both marks were confusingly similar when used on medicated plaster, potentially misleading the public.

Proceedings Before the Director of Patents

• The Director of Patents, after conducting a hearing, issued a decision on August 16, 1961 dismissing the oppositor’s contention. In his resolution, he stated that “confusion, mistake, or deception among the purchasers will not likely and reasonably occur” when both trademarks were applied to medicated plaster.
• Following this decision, the oppositor moved for reconsideration. The motion was denied by the Director of Patents in a resolution dated November 27, 1961, prompting the oppositor to file the present appeal.

Issues Raised in the Record

• The Director of Patents articulated three main issues in his decision, which were subsequently raised on appeal:
• Whether the applicant is the owner of the trademark "LIONPAS."
• Whether the application should be rejected on the ground that the applicant made false representations by placing the phrase “Reg. Phil. Pat. Off.” beneath the trademark on its cartons.
• Whether the trademark "LIONPAS" is confusingly similar to the registered trademark "SALONPAS."
• The court noted that the issue relating to false representation was of lesser importance and proceeded to resolve primarily the ownership and confusing similarity issues.

Evidence Pertaining to Ownership of the Trademark

• Exhibit 5 consisted of a letter dated June 20, 1958 from “OSAKA BOEKI KAISHA, LTD.” to the applicant. The letter purportedly assigned, ceded, and conveyed all rights, interests, and goodwill in the tradename “LIONPAS Medicated Plaster” for a token consideration of $1.
• Exhibit 6 was a joint “SWORN STATEMENT” allegedly executed by the presidents of “OSAKA BOEKI KAISHA, LTD.” and “ASUNARO PHARMACEUTICAL INDUSTRY CO.” Its purpose was to confirm the contents of Exhibit 5 by attesting to the assignment.
• Critical problems were noted in the evidence:
• In Exhibit 5, the sender, identified only as a representative from the “Sundries Dept.”, was not clearly authorized by the manufacturer, raising doubts as to whether the assignment was valid.
• In Exhibit 6, the accompanying certification was deficient – it was unmarked, unpaged, unsigned, undated, and unsealed, thus failing to meet the formal acknowledgment requirements prescribed by the Trade Mark Law.

Evidence Concerning the Applicant’s Role

• Other exhibits in the record (labeled Exhibits A, A-1, and B) revealed that the applicant functioned merely as the “exclusive distributor” or “sole distributor” in the Philippines of “LIONPAS” medicated plaster.
• These exhibits suggested that the applicant did not manufacture the product or own the trademark but was involved in its importation and distribution.

Issue:

Ownership Issue

• Is the applicant, Petra Hawpia & Co., the rightful owner of the trademark "LIONPAS" based on the evidence presented, especially in light of the requirements under Sections 2 and 2-A of the Trade Mark Law?

False Representation (Deemed Less Significant)

• Should the application be rejected because the applicant is alleged to have made false representations by placing the label “Reg. Phil. Pat. Off.” beneath the trademark on its cartons?

Confusing Similarity of Marks

• Are the trademarks “LIONPAS” and “SALONPAS” confusingly similar, thereby likely to mislead the public when applied to medicated plaster?

Ruling:

• (Subscriber-Only)

Ratio:

• (Subscriber-Only)

Doctrine:

• (Subscriber-Only)