Case Summary (G.R. No. 190065)
Key Dates
• July 8, 1986 – Registration of Myra’s “DERMALIN” mark (renewed July 8, 2006)
• October 21, 2006 – Dermaline files Application No. 4-2006-011536 for “DERMALINE DERMALINE, INC.”
• March 9, 2007 – Publication for opposition in the IPO E-Gazette
• May 8, 2007 – Myra files verified opposition under Section 123.1(d), R.A. No. 8293
• April 10, 2008 – IPO Decision No. 2008-70 sustaining opposition and rejecting Dermaline’s application
• January 16, 2009 – IPO denies motion for reconsideration (Resolution No. 2009-12(D))
• April 17, 2009 – Director General dismisses Dermaline’s appeal as tardy
• August 7, 2009 & October 28, 2009 – Court of Appeals affirms IPO rulings
• August 16, 2010 – Supreme Court decision affirming CA
Applicable Law
• 1987 Philippine Constitution
• Republic Act No. 8293 (Intellectual Property Code)
– Section 123.1(d): Registrability bar for marks nearly resembling earlier marks likely to cause confusion
– Section 138: Certificate prima facie evidence of validity, ownership, and exclusivity of registered mark
– Section 147.1: Exclusive right to prevent third-party use of identical or similar signs causing likelihood of confusion
– Section 155.1: Prohibition on use in commerce of reproductions or dominant imitations of registered marks
Background of the Trademark Application and Opposition
Dermaline sought registration of “DERMALINE DERMALINE, INC.” for cosmetic and skin-care services (Class 44). Myra opposed, contending that the applied mark is confusingly similar to its long-standing “DERMALIN” mark (Class 5), sharing identical first eight letters, similar pronunciation (three syllables with a silent “E”), and thus likely to deceive consumers and dilute Myra’s goodwill.
IPO Decision and Subsequent Proceedings
After preliminary conference and position papers, the IPO Bureau of Legal Affairs, applying Section 123.1(d), found that Dermaline’s mark duplicated the dominant feature of Myra’s “DERMALIN” and would cause both product and source confusion. It sustained the opposition and rejected Dermaline’s application. Dermaline’s motion for reconsideration was denied, its appeal to the Director General dismissed as untimely, and the Court of Appeals—after hearing Dermaline’s arguments on presentation differences and distinct classifications—upheld the IPO’s decision and denied reconsideration.
Issues Before the Supreme Court
Whether the Court of Appeals erred in affirming the IPO’s rejection of Dermaline’s mark on grounds of likelihood of confusion, in light of the marks’ similarities, differing presentations, and classification of goods and services.
Trademark Law and the Dominancy and Holistic Tests
Under the Intellectual Property Code, likelihood of confusion is determined by:
- Dominancy Test – Focus on predominant features likely to mislead ordinary purchasers by aural or visual impressions.
- Holistic (Totality) Test – Consideration of the marks in their entirety, including labels and packaging.
Two forms of confusion are relevant: product confusion (mistaking one product for another) and source confusion (assuming common origin or connection).
Analysis of Confusion and Dominant Features
The Supreme Court agreed that Dermaline’s addition of a final “E” and script styling did not overcome the overwhelming similarity in spelling and pronunciation. Both marks share the dominant element “DERMALIN,” and an ordinary purchaser hearing Dermaline’s mark on radio would likely associate it with Myra’s established mark. Pr
...continue readingCase Syllabus (G.R. No. 190065)
Facts
- On October 21, 2006, Dermaline, Inc. filed Trademark Application No. 4-2006-011536 for “DERMALINE, DERMALINE, INC.” under Class 44 before the Intellectual Property Office (IPO).
- The application was published for opposition on March 9, 2007 in the IPO E-Gazette.
- On May 8, 2007, Myra Pharmaceuticals, Inc. filed a Verified Opposition, asserting that Dermaline’s mark so closely resembles its registered “DERMALIN” mark as to cause confusion, mistake, and deception.
- Myra’s “DERMALIN” mark was registered on July 8, 1986, renewed on July 8, 2006, and commercially used since October 31, 1977.
- Myra contended that the first eight letters of both marks are identical, the pronunciation and three-syllable structure are the same, and that the silent “E” in “DERMALINE” does not prevent confusion.
- Myra referenced Dermaline’s prior refused application for “DERMALINE” on June 3, 2003, arguing a pattern of “fishing expeditions” for approval.
- Dermaline’s application covered various skin treatments (Class 44), while Myra’s covered topical pharmaceutical preparations (Class 5).
Procedural History
- Dermaline filed its Verified Answer, disputing any confusing similarity and stressing label distinctions and different goods.
- A preliminary conference failed, leading to the submission of position papers by both parties.
- On April 10, 2008, the IPO-Bureau of Legal Affairs issued Decision No. 2008-70, sustaining Myra’s opposition and rejecting Dermaline’s application under Section 123.1(d) of R.A. No. 8293.
- Dermaline’s motion for reconsideration was denied by Resolution No. 2009-12(D) dated January 16, 2009.
- Dermaline’s appeal to the IPO Director General was dismissed as filed out of time in an Order dated April 17, 2009.
- Dermaline appealed to the Court of Appeals (CA), which affirmed the IPO’s orders and denied Dermaline’s motion for reconsideration on October 28, 2009.
- Dermaline then filed the present petition for review on certiorari before the Supreme Court.
Issue
- Whether the Court of Appeals erred in upholding the