Case Summary (G.R. No. L-21587)
Applicable Law
The case is governed by the Intellectual Property Code and relevant doctrines regarding trademark registration and protection, particularly the principle against confusing similarity between trademarks as outlined in Philippine jurisprudence. The applicable law for this case is based on the 1973 Constitution as the decision was rendered prior to the 1987 Constitution.
Trademark Registration and Opposition
United American Pharmaceuticals first utilized the trademark "BIOFERIN" in the Philippines on August 13, 1957, and submitted the application for registration shortly thereafter. Bristol Myers filed an opposition to this application on January 6, 1959, arguing that registration of "BIOFERIN" would violate their trademark rights due to the alleged confusing similarity with their earlier registered trademark "BUFFERIN," which was used in the Philippine market since May 13, 1953. Both trademarks fall under Class 6 and relate to "Medicines and Pharmaceutical Preparations."
Submission and Director of Patents' Decision
Following the submission of a joint petition by both parties on January 18, 1961, where they stipulated the facts of the case, the Director of Patents ruled on June 21, 1963, in favor of United American Pharmaceuticals, concluding that there was no confusing similarity between "BIOFERIN" and "BUFFERIN". This decision was based on an analysis of various factors that distinguished the two trademarks adequately enough to prevent consumer confusion.
Sole Issue on Appeal
The primary question on appeal was whether the trademarks "BIOFERIN" and "BUFFERIN" are confusingly similar as presented on their product labels. Bristol Myers argued against the registration of "BIOFERIN," noting the similarities in sound and spelling, asserting that such resemblances would mislead consumers regarding the source of the goods.
Comparative Analysis of Trademarks
The court emphasized the importance of a holistic comparison of the trademarks as they appear on their respective labels, not merely on word level. This involved considering the entire context and layout of the labels in relation to the products they represent. Precedent established in prior cases underlines that the overall impression created by the trademarks, including visual elements, should be considered to determine the likelihood of confusion among consumers.
Findings and Affirmation of the Decision
Upon comparing the trademarks, the court found several distinguishing features: the labels of "BIOFERIN" and "BUFFERIN" differed significantly in aspects such as color, shape, layout, and specifics regarding the presentation of product information. For instance, "BIOFERIN" utilizes a predominantly yellow label, while "BUFFERIN" employs a predominantly white one, and
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Case Overview
- The case involves a petition for the registration of the trademark "BIOFERIN" filed by United American Pharmaceuticals, Inc. on October 21, 1957.
- The trademark "BIOFERIN" pertains to a medicinal preparation designed to treat common colds, influenza, and febrile diseases, featuring antihistamic, analgesic, antipyretic properties, along with vitamin C and Bioflavenoid.
- The product is classified under Class 6, which encompasses Medicines and Pharmaceutical Preparations.
- Bristol Myers Company, the petitioner, opposed the application on January 6, 1959, claiming potential confusion with its registered trademark "BUFFERIN."
Background of the Parties
- United American Pharmaceuticals, Inc.
- First used the trademark "BIOFERIN" in the Philippines on August 13, 1957.
- Bristol Myers Company
- Owner of the trademark "BUFFERIN," first used in the Philippines on May 13, 1953, and registered under Certificate of Registration No. 4578 issued on March 3, 1954.
- The trademark "BUFFERIN" is also registered in the United States.
Opposition Claims
- Bristol Myers contended that the registration of "BIOFERIN" would infringe upon its trademark rights and potentially mislead consumers regarding the source of the products due to similarities in spelling, pronunciation, and overall appearance of the trademarks.
- The products involved are both classified under Class 6, indicating they are intended for medicinal use.
Proceedings and Decision
- On January 18, 1961, both parties submitted a joint petition, stipulating the relevant facts and agreeing to submit the case based on mem