INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

UL SKIN SCIENCES, INC., } IPC No. 14-2018-00654 Opposer, } Opposition to:

} Appln. Serial No. 4-2018-503023 } Date Filed: 04 July 2018 } TM: "SOFRESH" }

-versus­ } } } } }

KELVIN TAN, } Respondent- Applicant. }

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NOTICE OF DECISION

OCHAVE & ESCALONA Counsel for Opposer 66 United Street Mandaluyong City

BARANDA & ASSOCITES Counsel for Respondent-Applicant Suite 1002-B Fort Legend Towers 3rd Avenue corner 3151 Street Bonifacio Global City, Tagu ig City

GREETINGS:

Please be informed that Decision No. 2019 - !Do dated 30 May 2019 (copy enclosed) was promulgated in the above entitled case.

Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of 2016 , any party may appeal the decision to the Director of the Bureau of Legal Affairs with in ten (10) days after receipt of the decision together with the payment of applicable fees.

Taguig City, 30 May 2019.

AttY.M~~~DRA IPRS IV, Bureau of Legal Affairs

@l www.ipophil.gov.ph Inte llectual Properly Center #28 Upp er McK inley Road e mail@ipophil.gov.ph Mckinley Hill Town Cent er o +632-2386300 Fort Bonifacio. Taguig City

+632 -5539480 1634 Philippines

".

INTELLECTUALPROPERTY OFFICEOF THE PHILIPPINES

UL SKIN SCIENCES, INC. } IPC No. 14-2018-00654 Opposer, }

} Opposition to: -versus­ } Appln. Ser. No. 4-2018- 503023

} Date Filed: 04 July 2018 KELVIN TAN, } TM: SOFRESH

Respondent-Applicant. } x--------------------------------------------------------------x Decision No. 2019 ­ IPS­

DECISION

UL SKIN SCIENCES, INC. ("Opposerll)l filed an Opposition to Trademark Application Serial No. 4-2018-00503023. The application filed by KELVIN TAN2 ("Respondent-Applicant"), covers the mark "SOFRESH" for use on "surgical, medical, dental apparatus and instruments, artificial teeth; orthopaedic articles; suture materials; all the aforesaid goods falling under Class 10" under Class 10 and "brushes (except paintbrushes); toothbrushes; brush-making materials; articles for cleaning purposes; glassware, porcelain; all the aforesaid goods falling underin class 21" under Class 21 of the International Classification of Coods.'

Opposer alleges, among others, the following:

"7. The mark SOFRESH applied for by the Respondent-Applicant so resembles the mark SUREFRESH owned by Opposer and duly registered with the IPO more than ten (10) years prior to the publication of the application for the mark SUREFRESH.

"8. The mark SOFRESH will likely cause confusion, mistake and deception on the part of the purchasing public, most especially considering that the opposed mark SOFRESH is applied for a similar/related class and goods as that of the Opposer's trademark SUREFRESH, i.e. Class 03 of the International Classification of Goods for non-antiseptic mouthwash, mouth rinse, breath fresheners, cosmetic tooth whiteners, tooth whitening strips, breath freshening dissolving strips and toothpaste.

"9. The registration of the mark SOFRESH in the name of Respondent­Applicant will violate Section 123.1 (d) of the IP Code.

I A domestic corporationwith principal address at 299-335 g. Araneta Avenue, Quezon City. 2 An individual residing at 736 Vitales Street, Malibay, PasayCity. 3The Nice Classification is a classification of goods and services for the purpose of registering trademarks and service marks based on a multilateral ~ Classificationof Goods and Services for the Purposesof Registration of Marks concluded in 1957.

www.ipophil.gov.ph Intellectual Property Center

e mail@ipophil.gov.ph 1128 Upper McKinley Road Mckinley Hill Town Cent er e +632-2386300 Fort Bonifacio. Taguig City

+632-5539480 1634 Philippin es

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"10. Under the above-quoted provision, any mark which is similar to a registered mark, shall be denied registration in respect of the same, similar or related goods of if the mark applied for nearly resembles a registered mark that confusion or deception in the mind of the purchasers will likely result.

To support its opposition, Opposer submitted the following documentary evidence:

1. Printout of the IPOPHL E-Gazette publication on 22 October 2018; 2. Certified copy of Certificate of Reg. No. 4-2008-002920 for the trademark

SUREFRESH issued on 22 September 2008; 3. Certified copy of Assignment of Registered Trademark between Innovitelle, Inc.

and UL Skin Sciences, Inc. on 05 September 2018 for the mark SUREFRESH; 4. Certified copy of Request for Renewal of Trademark filed on 06 September 2018

for the mark SUREFRESH; 5. Declaration of Actual Use for the mark SUREFRESH filed on 11 March 2011; 6. Declaration of Actual Use for the fifth anniversary the mark SUREFRESH filed

on 22 August 2013; 7. Sample product information bearing the mark SUREFRESH; and 8. Certification issued by the IQVIA.

On 29 November 2018, a Notice to Answer was issued and served to Respondent­Applicant's counsel on 10 December 2018. Despite the receipt of the Notice, Respondent­Applicant failed to file the answer. Consequently, he was declared in default. Accordingly, this case is deemed submitted for decision on the basis of the opposition, documentary and testimonial evidence, if any, of the Opposer.

Should Respondent-Applicant's mark SOFRESH be registered?

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others.' Inarguably, it is an intellectual property deserving protection by law. In trademark controversies, each case must be scrutinized according to its peculiar circumstances, such that jurisprudential precedents should only be made to apply if they are specifically in point.>

Section 134 of Republic Act No . 8293, also known as the Intellectual Property Code of the Philippines ("IP Code"), as amended, provides:

Section 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an

, Prosource International, Inc. v. Horphag Resear ch Management SA, G.R. No. 180073, November 25, 2009, 605 SCRA 523, 528; McDonalds Corporation v , Macloy Fastfood Corporation, G.R. No. 166115, February 2, 2007, 514 SCRA 95, J07 . I Philip Morris , Inc. v. Fortune Toba cco Corporation, G.R. NO.1 58589, June 27, 2006, 493 SCRA 333, 356.

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opposition to the application.

Records will show that at the time Respondent-Applicant filed its application for registration of its mark "SOFRESH" on 04 July 2018, Opposer's mark SUREFRESH, assigned to it by Innovitelle, Inc. on 05 September 2018, was already registered as early as 22 September 2008. As such, pursuant to Section 1386 of the IP Code, Opposer's certificate of registration is a prima facie evidence of the its ownership of the mark, and its exclusive right to use the same in connection with the goods or services specified in the certificate and those that are related thereto. And further, pursuant to Section 1477 of the IP Code, it has a right to oppose the herein subject application for registration of Respondent-Applicant's "SOFRESH" mark as it may stand to be damaged and prejudiced if and when it is determined that Respondent-Applicant's mark is confusingly similar to its SUREFRESH mark.

Corollary, Section 123.1 (d) of the IP Code provides:

Section 123.Registrability. - 123.1. A mark cannot be registered if it:

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(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:

i. The same goods or services, or ii. Closely related goods or services, or iii. If it nearly resembles such a mark as to be likely to deceive or cause

confusion;

The most important element in determining the registrability of trademark is the existence of resemblance (colorable imitation) of such mark to an already registered mark or to one which enjoys priority as to filing date, as to likely cause confusion, mistake or deception on the part of the public. Absent any finding of its existence, there can be no likelihood of confusion.f

Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all the details be literally copied. Colorable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or trade name with that of the other mark or trade name in their over-all

6 Section 138. Certificates of Registration . • A certificate of registrationof a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are related theretospecified in the certificate. 7 Section 147.Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner'sconsent from using in the course of trade identicalor similar signs or containers for goods or services which are identical or similar to those in respectof which the trademark is registeredwheresuch use would result in a likelihoodof confusion . In case of the use of an identical sign for identical goodsor services, a likelihoodof confusion shall be presumed. 147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.I(e) which is registered in the Philippines, shall extend to goods and serviceswhich are not similar to those in respect of which the mark is registered: Provided,That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of ~ the owner of the registeredmark are likely to be damaged by such use. s Seri Somboonsakdikul v. Orlane SA, Gr. No. 188996, promulgated on 01 February2017.

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presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article."

The Supreme Court also held in one case that in determining the likelihood of confusion, the Court must consider: [a] the resemblance between the trademarks; [b] the similarity of the goods to which the trademarks are attached; [c] the likely effect on the purchaser and [d] the registrant's express or implied consent and other fair and equitable considerations.l"

In American Wire and Cable Co. v. Director of Patents et al.t', it was also held that the determinative factor in a contest involving trademark registration is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark will likely cause confusion or mistake on the part of the buying public. To constitute an infringement of an existing trademark, patent and warrant a denial of an application for registration, the law does not require that the competing trademarks must be so identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that the similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it.

The representative images of Opposer's and Respondent-Applicant's mark as culled from the IPOPHL Trademark Database are reproduced below:

Surefresh SOFRESH Opposer's Mark Respondent-Applicant's Mark

In determining similarity or dissimilarity, the Court's ruling in Etepha v. Director of Patents'? is instructive when it stated that lithe practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of the prospective buyer. The trademark complained of should be compared and contrasted with the purchaser IS memory (not in juxtaposition) of the trademark said to be infringed. Some such factors as "sound; appearance; form, style, shape, size or format; color; ideas connoted by marks; the meaning, spelling and pronunciation, of words used; and the setting in which the words appear" may be considered."

Thus, a mark is considered similar to another mark only if their overall presentation as to sound, appearance or meaning would make it possible for consumers to believe that

9 Emerald Garments Manufacturing Corporation vs. Court of Appeals, G.R. No.1 00098. December 29, 1995

10 MightyCorporation v, E. & J Gallo Winery, G.R. No. 154342, July 14,2004,434 SCRA473.

II C.R. No. L-26557, 18 Feb. 1970

12 G.R. No. L-20635, 31 March 1966

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the goods or products, to which the marks are attached, comes from the same source or are connected or associated with each other.

Opposer's and Respondent-Applicant's marks are word marks that appeal to the visual sense. The manifest similarity in the contending marks is the use of the word "FRESH". The word "fresh" is commonly used as a standalone mark or in combination with other terms or even graphics which makes it a weak mark. However, in this case, the letters or words attached to it do not effectively make the marks distinguishable from each other. Their overall visual impression is such that the consumers would likely assume that they are one and the same. When pronounced, they also sound similar.

Nonetheless, these similarities are not sufficient to disallow the registration if Respondent-Applicant's mark. The Supreme Court has ruled that similarity in the marks do not automatically prevents one from registering a mark when such mark is used on unrelated, dissimilar or non-competing goods. In Philippine Refining Co., Inc. VS. Ng Sam and The Director of Patents'>, it stated:

A rudimentary precept in trademark protection is that the right to a trademark is a limited one, in the sense that others may use the same mark on unrelated goods. Thus, as pronounced by the United States Supreme Court in the case of American Foundries vs. Robertson, "the mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on articles of a different description.

Again, in Canon Kabushiki Kaisha v. CourtofAppeals'», it was held that similarity in the marks does not automatically prevents one from registering its mark when such mark is used on unrelated, dissimilar or non-competing goods. The Court held:

Ordinarily, the ownership of a trademark or trade name is a property right that the owner is entitled to protect as mandated by the Trademark Law. However, when a trademark is used by a party for a product in which the other party does not deal, the use of the same trademark on the latter's product cannot be validly objected to.

Corollary, the Supreme Court had the occasion to rule on what are related goods or non-competing goods, to wi t:

Non-competing goods may be those which, though they are not in actual competition, are so related to each other that it might reasonably be assumed that they originate from one manufacturer. Non-competing goods may also be those which, being entirely unrelated, could not reasonably be assumed to have a common source. In the former case of related goods, confusion of business could arise out of the use of similar marks; in the latter case of non-related goods, it could not. The vast majority of courts today follow the modem theory or concept of "related goods" which the Court has likewise adopted and uniformly recognized and applied.

Goods are related when they belong to the same class or have the same descriptive

13 G.R. No. L·26676 , July 30, 1982 I. G.R. No. 120900. July 20, 2000

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properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores. Thus, biscuits were held related to milk because they are both food products. Soap and perfume, lipstick and nail polish are similarly related because they are common household items nowadays. The trademark "Ang Tibay" for shoes and slippers was disallowed to be used for shirts and pants because they belong to the same general class of goods. Soap and pomade, although non-competitive, were held to be similar or to belong to the same class, since both are toilet articles. But no confusion or deception can possibly result or arise when the name "Wellington" which is the trademark for shirts, pants, drawers and other articles of wear for men, women and children is used as a name of a department store. "

Several factors come into play when determining whether the goods of the parties are related, such as: (a) the business (and its location) to which the goods belong; (b) the class of product to which the goods belong; (c) the product's quality, quantity, or size, including the nature of the package, wrapper or container; (d) the nature and cost of the articles; (e) the descriptive properties, physical attributes or essential characteristics with reference to their form, composition, texture or quality; (f) the purpose of the goods; (g) whether the article is bought for immediate consumption, that is, day-to-day household items; (h) the fields of manufacture; (i) the conditions under which the article is usually purchased; and G) the channels of trade through which the goods flow, how they are distributed, marketed, displayed and sold.l" The Court clearly ruled that even if the applicant's mark is identical or similar to a registered mark and is even used on goods under the same classification, it can still be registered if the goods belong to different sub­classification because they are considered as different goods or unrelated goods.

In this case, Opposer's non-antiseptic mouthwash, mouth rinse, breath fresheners, cosmetic tooth whiteners, tooth whitening strips, breath freshening dissolving strips and toothpaste under Class 03 is different and non-competing from Respondent-Applicant's surgical, medical, dental apparatus and instruments, artificial teeth; orthopaedic articles; suture materials under Class 10. Furthermore, brushes (except paintbrushes); toothbrushes; brush-making materials; articles for cleaning purposes; glassware, porcelain under Class 21 is remotely related to Opposer's goods also. The products are likewise sold in different channels of trade. Thus, the goods or businesses of the parties are non-competitive and their products so unrelated that the use of a similar trademark will not likely give rise to confusion, mistake or deception the public, much less cause damage to Opposer.

Accordingly, the registration of the mark SOFRESH is not proscribed by the IP Code.

WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the filewrapper of Trademark Application Serial No. 4-2018- 503023, together with a

15 Esso Standard Eastern, Inc. v. Hon. Court of Appeals, G.R. No. L-2997 I. August31, 1982 16 Taiwan Kolin Corporation, Ltd . v. Kolin Electronics Co., Inc., G.R. No. 209843, March25, 20I5 citing MightyCorporationv. E. &

J Gallo Winery.

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, .·.

copy of this Decision, be returned to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

3 GMAY 2019Taguig City, _

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