Title
American Cyanamid Co. vs. Director of Patents
Case
G.R. No. L-23954
Decision Date
Apr 29, 1977
Cyanamid sought to cancel Tiu Chian's "SULMETINE" trademark, alleging similarity to its "SULMET." Court ruled no confusion, upheld registration, citing distinct labels, product forms, and lack of proven damages.
trademark cancellation
labels
confusion

Case Summary (G.R. No. L-23954)

Factual Background

Petitioner alleged that it owned the trademark SULMET, which it had used in the United States since 1946 and registered there on August 12, 1947 under U.S. Registration No. 431929. Petitioner claimed it first used SULMET in the Philippines on May 25, 1950, and filed an application for registration on May 3, 1956, which was approved on July 8, 1958. A certificate of registration No. 6894 issued on October 30, 1958 for SULMET.

Petitioner’s SULMET was described as a veterinary product for purposes including the control of outbreaks of cecal and intestinal coccidiosis and infectious coryza (colds) in chicken flocks, coccidiosis in turkeys, and reducing mortality in pullorum disease in baby chicks, acute fowl cholera in chickens, turkeys and ducks, and anatipestifer disease in ducks.

Petitioner further claimed that, despite its established use and reputation fostered by advertising and promotion, respondent fraudulently applied for registration of SULMETINE for a veterinary product used for the same purposes. Petitioner supported its cancellation petition with samples of the labels. It presented as evidence Exhibit B the label for its SULMET product and as Exhibit C the label used by respondent for SULMETINE. Petitioner also submitted several purchase orders from F.E. Zuellig, Inc. showing sales and distribution of petitioner’s “Sulmet Solution.” Respondent opposed the petition for cancellation.

Decision of the Director of Patents

The Director of Patents denied the petition for cancellation on June 9, 1964. The denial rested on several findings. First, the Director found that petitioner’s SULMET label was used for preparations for practically all domesticated animals such as fowl, cattle, pigs, horses, and sheep, while SULMETINE was limited only to chicken and other domesticated birds. The Director treated this distinction as evident from the printed matter appearing on the parties’ labels: petitioner’s label indicated coverage extending beyond birds, whereas respondent’s label indicated use for birds and chicken.

Second, the Director found substantial differences in the labeling of the manufacturers or sources. Petitioner’s label prominently printed “CYANAMID” and “AMERICAN CYANAMID COMPANY, NEW YORK 20, N.Y.” Respondent’s label displayed pictorial representations of two roosters and the word “HENRY’S,” followed by “HENRY’S LABORATORIES PHILIPPINES,” clearly indicating its source.

Third, the Director found a marked difference in the form of the product as presented to buyers. Petitioner’s preparation was a drinking water solution, stated prominently on its label. Respondent’s preparation consisted of tablets for veterinary use, indicated prominently in red letters.

Fourth, the Director reasoned that the differences in the physical appearance of the labels were substantial enough to prevent confusing similarity that could lead buyers to confuse one product with the other. The Director also addressed petitioner’s claim that respondent’s trademark appropriated the two syllables “SULMET,” by explaining that the syllables “SUL” and “MET” were derived from chemical terms (SUL from “SULFA” and MET from methyl), and thus could not be monopolized by either party. The Director held that respondent’s addition of the syllable “INE” created a marked distinction.

Finally, the Director found that petitioner failed to show material damage during the period of respondent’s use of SULMETINE, pointing to sales figures of petitioner’s SULMET product from 1959 to 1962.

The Issues Framed on Appeal

On appeal, American Cyanamid Company assigned five errors. The Supreme Court treated the second assigned error—whether SULMETINE was confusingly similar to SULMET—as the issue central to the litigation. Accordingly, the Court resolved the appeal by determining whether the claimed copying of petitioner’s mark by respondent resulted in confusing similarity in violation of Republic Act 166. The disposition of this question would render other assigned errors unnecessary.

The Parties’ Positions

Petitioner maintained that respondent’s trademark SULMETINE was copied from SULMET and that the similarity violated the Trade-Mark Law because it could confuse buyers. Petitioner insisted that the dominant features of its mark were appropriated through similarity in the principal syllables and that respondent’s registration should be cancelled.

Respondent, by implication through the Director of Patents’ ruling and the opposition filed before the administrative proceeding, defended the registration of SULMETINE by emphasizing differences in labeling, product form, and overall presentation to the purchasing public. Respondent’s position was supported by the findings that the labels were sufficiently distinct to avoid confusion.

Legal Basis and Reasoning of the Supreme Court

The Supreme Court held that petitioner’s submissions were devoid of merit and that there was no infringement of trademark that could justify cancellation. It affirmed the Director of Patents’ conclusion that the parties’ labels, Exhibits B and C, showed striking differences that precluded confusion.

The Court emphasized that the labels were distinct in overall appearance, including size, background, colors, contents, and pictorial arrangement. The Court considered these distinctions decisive in showing that petitioner could not assert that dominant features of its trademark were appropriated by respondent.

The Court then enumerated specific differences. It noted the coloring scheme: petitioner’s label had a white background with “SULMET” printed in dark green, while respondent’s label used dark yellow, with “SULMETINE” in dark blue, resulting in different dominant color combinations. It also pointed to pictorial representation: respondent’s label depicted two roosters with “HENRY’S” between them, whereas petitioner’s label contained no such pictorial feature and instead displayed “CYANAMID” in prominent green letters.

The Court further considered the contents printed on the labels as important. Petitioner’s label described its product as a “Drinking Water Solution,” and indicated use for chicken flocks, turkeys, ducks, and certain conditions for other domesticated animals. Respondent’s label printed in bold red letters that its product was “Tablets Veterinary,” and did not indicate that respondent’s preparation could be used for turkeys or ducks or other domesticated animals listed on petitioner’s label, save for references to “Adult birds” and “Small chicks.”

In addressing the practical realities of trademark perception for veterinary medicines, the Court treated caution by buyers as a significant factor. It reasoned that because the product was a medicinal preparation for veterinary use, prospective purchasers would examine the contents of the label with greater care than ordinary consumers of non-medicinal goods, making it unlikely that a buyer would mistake a water solution for tablets or vice versa. It therefore concluded that confusion based on similar syllables was unlikely in the light of the labels’ overall presentation.

The Court also found that each label clearly indicated the source. Petitioner’s label disclosed American Cyanamid’s foreign origin through prominent display of “AMERICAN CYANAMID COMPANY, NEW YORK 20, N.Y.” Respondent’s label clearly displayed “HENRY’S LABORATORIES PHILIPPINES” above which “HENRY’S” appeared. The Court regarded this feature as strongly contradicting petitioner’s claim of plain copying intended to pass the goods as coming from petitioner’s source.

With these considerations, the Court rejected the second assigned error and held that it “threw out” petitioner’s claim of confusing similarity.

The Court also discussed petitioner’s invocation of Lim Hoa vs. Director of Patents (L-8072, October 31, 1956). It ruled that Lim Hoa was not controlling because the goods there were food seasoning products, generally purchased by cooks and household help who might be guided by pictorial representations, and where roosters and hens belonged to the same family of chicken such that confusion could be expected. By contrast, in the present case, the goods were veterinary medicines. The Court thus held that the factual context in Lim Hoa did not justify a finding of confusion in the present matter.

The Court found support in Mead Johnson & Co. vs. N.V.J. Van Dorp, Ltd., et al. (L-17501, April 27, 1963), where despite similarity in spelling and sound between ALACTA and ALASKA, the Court upheld registration because the trademarks in their entirety displayed glaring differences, including label sizes and color schemes, and because the overall presentation would not likely cause confusion. The Supreme Court in this case relied on analogous reasoning: even if syllables or parts of words shared chemical derivations, the marks must be assessed in their entirety as they appear on labels, and the overall dissimilarities could negate confusion.

The Court likewise invoked Ethepa vs. the Director of Patents (Westmont Pharmaceutical, Inc.), where the Court had affirmed registration by applying a practical whole-mark approach and by considering that the displayed labels were entirely different in color, contents, word arrangement, size, shape, and general appearance, while also noting descriptive or generic components that could be used by others. Applying those principles, the Court held that the addition of the syllable “INE” in respondent’s SULMETINE was sufficient to distinguish the trademarks.

The Court further addressed petitioner’s argument that the trademarks were used on identical goods and for identical purposes. It disagreed that the trademarks were used on identical goods because petitioner’s label indicated a drinking water solution while respondent’s indicated tablets. It admitted only that both products were used for similar veterinary purposes such as treating or preventing infectious coryza and coccidiosis. However, the Court emphasized that

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