Case Summary (G.R. No. 91486)
Factual Background
UNITED AMERICAN PHARMACEUTICALS, INC. applied to register the trademark "BIOFERIN" in the Principal Register on October 21, 1957 for a medicinal product described as an antihistamic, analgesic, antipyretic with vitamin C and bioflavonoid used in treating common colds, influenza and other febrile diseases with capillary hemorrhagic tendencies, classified in Class 6, "Medicines and Pharmaceutical Preparations." The record shows that the applicant first used "BIOFERIN" in the Philippines on August 13, 1957. BRISTOL MYERS COMPANY opposed the application on January 6, 1959, asserting priority of interest in the registered trademark "BUFFERIN," which it owned in the Philippines under Certificate of Registration No. 4578 issued March 3, 1954 and in the United States under Certificate of Registration No. 566190 issued November 4, 1952, and which it first used in the Philippines on May 13, 1953. The product covered by "BUFFERIN" also belonged to Class 6 and was designated "Antacid-analgesic" for relief of headaches, neuralgia, colds, menstrual pain and minor muscular aches.
Procedural History
The parties stipulated as to facts and agreed to submit the case on the single issue whether the trademarks "BIOFERIN" and "BUFFERIN," considering all factors and as they appear on their respective labels, were confusingly similar so as to deceive the purchasing public. The Director of Patents heard memoranda and on June 21, 1963 dismissed the opposition and granted registration of "BIOFERIN," concluding that the marks were not confusingly similar. BRISTOL MYERS COMPANY appealed the Director's decision to the Supreme Court by petition for review filed July 24, 1963.
The Parties' Contentions
BRISTOL MYERS COMPANY argued that confusing similarity existed because both products were used primarily for relief of pains such as headaches and colds and because the words "BIOFERIN" and "BUFFERIN" shared practically the same spelling, pronunciation and letter-type design. UNITED AMERICAN PHARMACEUTICALS, INC. relied upon the presentation of its mark as it appeared on the label, including differences in color, layout and ancillary statements such as prescription requirements, and asserted that these factors eliminated any likelihood of public confusion.
Issue Presented
The sole issue presented to the Court was whether the trademarks "BIOFERIN" and "BUFFERIN," as presented to the public in their respective labels, were confusingly similar.
Legal Standard
The Court applied the established test that trademarks must be compared in their entirety as they appear on their respective labels and in relation to the goods to which they are attached, not solely by comparison of the words in isolation. The Court cited its prior pronouncement in Mead Johnson & Co. vs. N.V.J. Van Dorp, Ltd., L-17501, April 27, 1963, wherein it stated that the discerning observer must focus on predominant words and on other features appearing on the labels to determine whether confusion is likely.
Court's Analysis and Reasoning
The Court examined the labels as they would appear to a prospective purchaser and identified material differences in shape and size, predominant color, color background of the word-mark, overall layout, and statements as to form of the product and conditions of dispensing. The Court summarized those factual distinctions, noting that the "BIOFERIN" label was rectangular about 3-3/4" x 2-1/4", predominantly yellow with an olive-green background for the word-mark, featured the mark at the top center with the manufacturer's name below, listed contents and indications centrally, and expressly stated that the product was to be dispensed only by or on the prescription of a physician and consis
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Parties and Procedural Posture
- BRISTOL MYERS COMPANY, PETITIONER filed an opposition on January 6, 1959 to the trademark application of UNITED AMERICAN PHARMACEUTICALS, INC., RESPONDENT.
- UNITED AMERICAN PHARMACEUTICALS, INC. filed its application for registration of the trademark "BIOFERIN" on October 21, 1957 and first used the mark in the Philippines on August 13, 1957.
- The Director of Patents rendered a decision on June 21, 1963 dismissing the opposition and granting registration of "BIOFERIN".
- BRISTOL MYERS COMPANY appealed from the Director's decision by filing a petition for review on July 24, 1963.
- The parties filed a joint petition and stipulation of facts on January 18, 1961 and submitted the case on the single issue of confusing similarity.
Key Factual Allegations
- UNITED AMERICAN PHARMACEUTICALS, INC. described "BIOFERIN" as a medicinal preparation of antihistamic, analgesic, antipyretic with vitamin C and Bioflavenoid for common colds, influenza and other febrile diseases with capillary hemorrhagic tendencies.
- The applied-for product was classified under Class 6, "Medicines and Pharmaceutical Preparations."
- BRISTOL MYERS COMPANY owned the registered trademark "BUFFERIN" under Certificate of Registration No. 4578 issued March 3, 1954 and first used "BUFFERIN" in the Philippines on May 13, 1953.
- "BUFFERIN" covered Class 6 pharmaceutical preparations described as an antacid-analgesic intended for relief of simple headaches, neuralgia, colds, menstrual pain and minor muscular aches.
- BRISTOL MYERS COMPANY alleged that registration of "BIOFERIN" would infringe and cause confusion with its registered "BUFFERIN" because of substantial similarity in spelling, pronunciation and lettertype design.
Issue Presented
- The sole issue presented was whether the trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in their respective labels, were confusingly similar.
Contentions
- BRISTOL MYERS COMPANY contended that confusing similarity would obtain because both products treated similar pains and the words "BIOFERIN" and "BUFFERIN" were practically identical in spelling and pronunciation.
- The Director of Patents and UNITED AMERICAN PHARMACEUTICALS, INC. contended that the marks must be compared in their entirety as presented on labels and that significant differences in label design and product presentation prevented likely confusion.