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INTELLECTUAL PROPERTY
OFFICE OF THE PHILIPPINES
DAEWON PHARMACEUTICAL CO., LTD.
Opposer,
IPCNo. 14-2016-00056
Opposition to:
Appln. No. 1276429
Date Filed: 10 October 2015
TM: "ORAMIN-C"
-versus-
PACIFIC PHARMACEUTICALS USA, INC.,
Respondent- Applicant.
~x
NOTICE OF DECISION
ANGARA ABELLO CONCEPCION REGALA & CRUZ
Counsel for Opposer
22nd Floor, ACCRALAW Tower
Second Avenue corner 30th Street
Crescent Park West, Bonifacio Global City
Taguig
MUTIA TRINIDAD LAW OFFICES
Counsel for Respondent-Applicant
12th Floor, The Taipan PlaceF. Ortigas, Jr. Road, Ortigas Center
Pasig City
GREETINGS:
Please be informed that Decision No. 2018
enclosed) was promulgated in the above entitled case.
. m dated June 29, 2018 (copy
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 within ten
(10) days after receipt of the decision together with the payment of applicable fees.
Taguig City, June 29, 2018.
MARIUrTN F. RETUTAL
IPRS IV
Bureau of Legal Affairs
© www.ipophil.gov.ph
0 +632-2386300
«g +632-5539480
© Intellectual Property Center
#28 Upper McKinley RoadMcKinley Hill Town Center
Fort Bonifacio. Taguig City
1634 Philippines
INTELLECTUAL PROPERTY
OFFICE OF THE PHILIPPINES
DAEWON PHARMACEUTICAL CO., LTD.,
Opposer,
-versus-
PACIFIC PHARMACEUTICALS USA, INC.
Respondent-Applicant.
IPC No. 14-2016-00056
Opposition to:
Application No. 1276429
Date Filed: 10 October 2015
Trademark: "ORAMIN-C"
Decision No. 2018-
DEOSION
DAEWON PHARMACEUTICAL CO. LTD.* ("Opposer") filed an opposition to
Trademark Application Serial No. 1276429. The application, filed by Pacific
Pharmaceuticals USA, Inc.2 ("Respondent-Applicant"), covers the mark "ORAMIN-C"
for use on "dietary and nutritional supplements, composed in part or in whole of vitamin C"
under Class 5 of the International Classification of Goods and Services.3
The Opposer alleges:
XXX
"6.1. The fundamental purpose of affording legal protection to trademarks,
according to established jurisprudence, is 'to point out distinctly the origin or ownership
of the article to which it is affixed, to secure to him, who has been instrumental in
bringing into the market a superior article of merchandise, the fruit of his industry and
skill, and to prevent fraud and imposition.'
"6.2. To achieve this purpose, the Philippines has adopted the 'First-to-File
Rule' for trademark registration, which places the prior applicant for registration of a
mark in a superior and preferential position as against subsequent applicants or users of
the same or confusingly similar marks. The First-to-File Rule has been explicitly
incorporated in Section 123.1 (d) of the IP Code, which reads: x x x
"6.3. Because of the growing complexity of international trade, and the
concurrent effect that this has had on the protection of intellectual property, the
Philippines acceded to the Paris Convention for the Protection of Industrial Property
('Paris Convention'). One of the principal characteristics of the Paris Convention is the
recognition of a Right of Priority amongst member states, x x x
"6.4. The Philippines has likewise acceded to the Madrid Protocol, which
provides a simplified procedure for obtaining registration for a mark across several
'With address at 412 Amang Rodriguez Avenue, Manggahan, Pasig City.
2With address at 1211 McGaw Avenue, Irvine CA 92614, United States of America.
The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based on if
multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning
International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957.
1
@ www.ipophil.gov.ph
Q +632-2386300
■£ +632-5539480
Q Intellectual Property Center
#28 Upper McKinley Road
McKinley Hill Town Center
Fort Bonifacio, Taguig City
1634 Philippines
countries worldwide. Under the Madrid Protocol, an applicant may secure an
'international' trademark registration based on a 'home' or 'basic'
application/registration filed in a state which is a Contracting Party to the Protocol.
Similar to the Paris Convention trademark applications, an international application
under the Madrid Protocol may validly claim and utilize the right of priority provided
under the Paris Convention.
"6.5. The prevailing law in the Philippines may thus be summarized as
follows: xxx
"6.6. An examination of the published details of Respondent-Applicant's
International Registration No. 1276429 reveals an International Registration date of 10
October 2015, with no right of priority. In contrast, Opposer's International Registration
No. 129243 invokes a priority date of 04 August 2015, or more than two (2) months prior
to Respondent-Applicant's application date, x xx
"6.7. No less than the Supreme Court has taken judicial notice of the fact that
trademark infringers do not normally copy the infringed mark exactly, but only make
colorable changes thereto. In fact, the Supreme Court has noted that the most successful
form of copying often employs enough points of similarity to confuse the public, with
enough points of difference to confuse the courts, xxx
"6.8. As its name suggests, the Dominancy Test focuses on the similarity of the
prevalent, essential or dominant features of competing marks that might cause confusion
or deception, xxx
"6.9. Aside from being supported by a long line of jurisprudence, the
Dominancy Test has also been expressly incorporated into law under Section 155.1 of the
IP Code. Section 155.1 reads: xxx
"6.10. The contending marks' confusing similarity is immediately obvious
upon comparison of the visual representations of the marks. For reference, a side-by-side
comparison of the marks is placed below: xxx
"6.11. In this case, Respondent-Applicant's mark contains two elements,
namely the word 'ORAMIN' and the letter 'C. However, the letter 'C cannot be
considered as part of the dominant portion of the mark, considering that it is generic
and/or descriptive of the goods covered by the mark (i.e., Class 5: 'Dietary and
nutritional supplements, composed in part or in whole of vitamin C). Descriptive or
generic components, having little or no source identifying significance, are generally
recessive and less significant in the analysis.
"6.12. In fact, jurisprudence holds that such descriptive elements should not be
considered in determining the dominant element of a mark. As seen in the Supreme
Court decided case of Prosource International, Inc. v. Horphag Research Management
SA, confusing similarity was determined and upheld without giving any consideration to
the generic element (i.e., 'GENOL') of the marks involved, and instead only compared
the fanciful element (i.e., TYCO' vs. 'PCO'), to wit
xxx
"6.13. It is therefore clear that the dominant element of Respondent-Applicant's
mark, i.e., the word 'ORAMIN', is completely identical to the 'ORAMIN' mark, ove:
which Opposer's better right of priority has already been definitely established. The only
difference in Respondent-Applicant's mark is the addition of a hyphen and the letter 'C
to the end of Opposer's mark, which, as previously discussed, is generic of Vitamin C
products and should thus be disregarded for purposes of determining the similarity of
the marks.
"6.14. Even assuming, for argument's sake, that the letter 'C should be
considered in determining whether the contending marks are confusingly similar, this
minor difference, consisting of only a single letter, is still insufficient to distinguish
Respondent-Applicant's mark from that of Opposer. x xx
"6.15. The additional letter 'C in Respondent-Applicant's mark is so frivolous
that it cannot negate the likelihood of confusion, x x x
"6.16. Further, in Dermaline, Inc. v. Myra Pharmaceuticals, Inc., the Supreme
Court found confusing similarity between the marks 'DERMALIN' and 'DERMALINE'
even if the latter had an extra letter 'E', to wit: x x x
"6.17. In any event, even before Respondent-Applicant's application filing,
Opposer has registered and has been using variations of the 'ORAMIN' mark by adding
a single letter. Obviously, this 'additional letter' variation was copied by Respondent-
Applicant, thereby ensuring that consumers would be confused into thinking that its
products originate from Opposer. The table below shows these 'ORAMIN' variations:
XXX
"6.18. Additionally, the term 'ORAMIN' is a fanciful mark created by Opposer.
It was coined by Opposer by contracting the words 'ORAL' and 'VITAMIN'. Being a
fanciful mark , it is inconceivable that Respondent-Applicant would have independently
thought of the exact same mark, while also copying Opposer's 'additional letter'
variation, x x x
"6.19. It is thus clear that Respondent-Applicant's mark so nearly resembles
Opposer's 'ORAMIN' Marks that it is certain to deceive or cause confusion amongst
consumers, x x x
"6.20. As previously stated, the paramount purpose of a trademark is to
indicate a product's origin effectively and reliably. Thus, as held in the case of Gabriel v.
Perez decided by the Supreme Court, a trademark should 'point out distinctly the origin
or ownership of the goods to which it is affixed, to secure to him, who has been
instrumental in bringing into market a superior article of merchandise, the fruit of his
industry and skill, and to prevent fraud and imposition.'
"6.21. In keeping with the foregoing principle, the consumer must be provided
with an effective means through which he can identify the goods and services that please
him, and thereby reward the source with continued patronage, x x x
"6.22. It is precisely to prevent such an unjust situation that the registration of a
confusingly similar mark for identical, similar, or closely related goods and services is
prohibited by Section 123.1 (d) of the IP Code, x x x
"6.23. A comparison of the goods covered by the respective marks is placed
below: x x x
"6.24. As shown by the above comparison, the goods covered by the respective
marks are not just closely related, but are in fact are identical and are under the same
NICE Classification, x x x
"6.25. Considering the identity between the marks and the goods they cover, a
likelihood of confusion of goods is certain. This type of confusion was discussed by the
Supreme court in Dermaline, Inc. v. Myra Pharmaceuticals, Inc. as follows: x x x
"6.26. Confusion of business is also present in this case, which type of
confusion was explained by the Supreme Court in Mighty Corporation, et. al. v. E. & J.
Gallo Winery, et.al.: x x x
"6.27. This is where ordinary consumers would likely conclude that the two
products share a common source, affiliation, connection or sponsorship, x x x
"6.28. Further, the Related Goods and Services Rule holds that there is
confusion if consumers can conclude that the junior user's products and services are
affiliated or associated with the senior user, x x x
"6.29. In this case, Respondent-Applicant seeks to use the mark on identical,
similar, or closely related goods to those of Opposer. x x x
"6.30. Notably, another factor to be considered is that the goods involved in
this case are medicinal or pharmaceutical products. When the contending marks are
used on pharmaceutical products, confusion of source can lead to serious consequences,
and it becomes extremely important to avoid such confusion, x x x
"6.31. The word 'ORAMIN' is a fanciful term created by Opposer for the
specific purpose of serving as a trademark. It has been selling 'ORAMIN' branded
products at least as early as 1999. Its sales from 1999 to 2015 are as follows: x x x
"6.32. Further, as discussed above, Opposer has received numerous awards for
its 'ORAMIN' products, have spent substantial amounts on marketing and advertising
through various media, such as the Internet, billboards, posters, television commercials,
etc.
"6.33. Apart from creating and using the 'ORAMIN' mark, Opposer has
registered the mark worldwide, sample registrations/applications of which are as
follows: xxx
"6.34. With Opposer's prior use and registration/application of the ORAMIN
Marks, Opposer should be protected from Respondent-Applicant's attempt to ride upon
the goodwill that inheres in Opposer's ORAMINI Marks.
"6.35. It should be remembered that the Supreme Court has declared that the
senior user and applicant should be favored over the junior ones.
xxx
"6.36. The unjust act of unfair competition inflicts damage not only on the
trademark owner, who is deprived of a paying customer, but also on the innocent
consumer, who is fraudulently deceived into parting with his hard-earned money. In the
insightful words of the Supreme Court: x x x
"6.37. In view of its pernicious effects, unfair competition has been made
punishable by Section 168.2 of the IP Code, which reads: x x x
"6.38. While there is no inflexible rule as to what constitutes unfair
competition, the question to be determined in every case is whether or not a party is
engaging in conduct by which his goods or business are passed off as the goods or
business of another, x x x
"6.39. In this case, the factual circumstances clearly show that Opposer has
established goodwill in connection with the 'ORAMIN' mark, x x x
"6.40. Respondent-Applicant's unlawful appropriation of the 'ORAMIN' mark
would therefore invalidate all of the invaluable efforts and sizable investments made by
Opposer to develop the goodwill of the 'ORAMIN' mark, x x x
"6.41. It is only fair, therefore, to reject the registration of Respondent-
Applicant's mark, x x x
The Opposer's evidence consists of a print out of Respondent-Applicant's
opposed mark; the Affidavit executed by Opposer's Vice-Chairman SeungryelBaek with
the following attachments: copy of the "History" section of Opposer's official website,
photographs of Opposer's products, a print out of the "Export & Registration" section
of Opposer's website, copies of Opposer's trademark applications/registrations, print
out of the WIPO Global Brand Database showing the details of the Korean trademark
application, print out of the online Industrial Property Digital Library of the National
Office of Intellectual Property of Vietnam showing the details of the Vietnam trademark
registration, a copy of the International Registration Certificate No. 1292243, print out of
the WIPO's online ROMARIN database, copies of Certificates of Product Registration,
copy of the declaration of the worldwide sales of "ORAMIN" products, photographs of
worldwide advertising materials and displays, photographs of Opposer's promotional
materials, print out of Opposer's official web site, print out of the Facebook Account
"Oramin Cap", a USB drive containing sample television advertisements; and print out
of the "ORAMIN" web site.4
This Bureau issued a Notice to Answer and sent a copy thereof upon
Respondent-Applicant on28 April 2016. The Respondent-Applicant filed its Answer on
27 July 2016and avers the following:
XXX
"6. Respondent-Applicant filed its trademark application on 10 October
2015 for ORAMIN-C for goods under International Class 5, namely 'dietary and
nutritional supplements composed in part or in whole of vitamin C under the
'Marked as Exhibits "A" to "D", inclusive.
Madrid Protocol and was issued International Registration No. 1276429, where the
Philippines, China, Korea and Vietnam were designated, x x x
"6.1 The Intellectual Property Code espouses the First-to-File Rule,
meaning the registration of a mark is barred by an earlier filing or prior
registration of an identical mark, x x x
"6.2 The mark ORAMIN was assigned to respondent-applicant by
its predecessor, a member company of Pacific AA Group, which had first use of
the mark ORAMIN on July 1,1997 and commercial use of the mark ORAMIN
since September 10, 1997. Pacific AA Group started its pharmaceutical
business in 1992.
"6.3 The registration of a mark is prevented with the filing of an
earlier application for registration. This must not, however, be interpreted to
mean that ownership should be based upon an earlier filing date. While RA
8293 removed the previous requirement of proof of actual use prior to the filing
of an application for registration of a mark, proof of prior and continuous use is
necessary to establish ownership of a mark. Such ownership constitutes
sufficient evidence to oppose the registration of a mark.
"6.4 'A trade name is entitled to protection even prior to or without
registration against subsequent users of a similar name or mark.' Besides,
respondent-applicant has made earnest effort to file the required trademark
application to protect its rights over the exclusive use of the subject mark.
"6.5. Further, under the Philippine Regulations Implementing the
Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks, x x x
"7.1. Respondent-applicant is a corporation duly organized and
existing under and by virtue of the laws of the Republic of the Philippines, with
principal office address at 1211 Mcgraw Avenue, Irvine, California U.S.A.
92614-5536.
"7.2. Respondent-applicant is a pharmaceutical preparation
company founded and established in and under the laws of the State of
California, United States of America on February 15, 2012. Respondent-
applicant is a member of the Pacific AA Group, which consists of the following
affiliates and subsidiaries, to wit: x x x
"7.3 Some of its major business partners in the medical industry are
GlaxoSmithKline,U.K.; Hanmi Pharma, Korea Pharma, Daewon Pharma & Dae
Hwa Pharma, Korea; Zydus Cadila Healthcare Ltd, India; Becton Dickinson
and Company, U.S.A.; United Laboratories, Philippines; Kalbe Pharma and
Dankos Lab, Indonesia; Nipro, Japan; Roche Diagnostics, Switzerland, Roche
Diabetics, Switzerland.
"7.4. The mark ORAMIN was assigned to respondent-applicant by a
member company of Pacific AA Group. Pacific AA Group started its
pharmaceutical business in 1992. Respondent-Applicant, Pacific AA Group
and its overseas affiliates including its Singapore and Myanmar affiliates an
widely involved in manufacturing, distribution, export and marketing of
products such as dietary and nutritional supplements, medicines under the
marks ORAMIN-C, ORAMIN A-Z, ORAMIN-F, ORAMIN-G, ORAMIN-P,
ORAMIN-Kid and ORAMIN C Plus, x x x
"7.5. Oramin-G was registered with the US Patent Trademark Office
on November 24, 2015 with First Use date on July 1,1997, and commercial use
of the trademark commenced on September 10,1997. x x x
"7.6. ORAMIN is an invented word which means Oral Vitamin and
C stands for Vitamin C in Oramin; G stands for Gold in Oramin G; F stands for
Female in Oramini F; and P stands for Prenatal in Oramin P. These trademarks
were invented jointly by company board members, national sale managers and
marketing managers for and on behalf of the company group, x x x
"7.7. Respondent-applicant, Pacific AA Group and its
affiliates/subsidiaries sell its products in the United States, Singapore,
Myanmar. x x x
"7.8 Pacific AA Group its affiliates and subsidiaries commenced
sale of their pharmaceutical products in 1997 and has earned US$10,000,000.00
annual sale from year 2005. x x x
"7.9. Pacific AA Group, respondent-applicant and its affiliate Pacific
Pharmaceuticals Pte Ltd. have caused the registration of the trademarks x x x
"8. Respondent-Applicant, Pacific AA Group and its affiliates and
subsidiaries Pharmaceuticals Pte Ltd have invested not inconsiderable amount of
funds to market, advertise and mount promotional campaigns for the awareness of
the ORAMIN-C and products under the ORAMIN brand, x x x
"8.1. Through the years the Corporation invested substantial
amounts on the multi-media advertisements, specifically in print advertising
on health, lifestyle, magazines, medical journals; ORAMIN-C and ORAMIN
product launching events; organization and sponsoring of conferences and
media events, distribution of samples, leaflets, brochures of ORAMIN
products, signages and billboards for distributors, x x x
"8.2. That in view of respondent-applicant's, Pacific AA Group's
and its subsidiaries' extensive commercial use of the marks ORAMIN-C and
products under the ORAMIN brand, continuous investment in marketing and
advertising through the years, said marks have become well-known world
wide, and accessible to customers all over
"8.3. Further, reason to afford protection to respondent-applicant's
trademark is its registration in various jurisdiction such s the United States of
America, Singapore and Myanmar. x x x
"8.4. In the case of Sehwani Incorporated and/or Benita Frites, Inc.
vs. In-N-Out Burger, Inc. the Supreme Court has upheld that evidence of
registration, comprehensive advertisements, articles about the trademark
appearing on newspapers, magazines are proof that a trademark is well-
knowno. Pertinently stated: x x x
"8.5 Therefore, being a well known mark, it is clear that
respondent-applicant is entitled to protection. 'Famous marks enjoy a wide
latitude of protection because they are more likely to be remembered and
associated in the public mind than a weaker mark' x x x
"9. Respondent-Applicant has not only established that it has an earlier
filing date and was issued a WIPO certificate of registration, it has also proven that
Pacific AA Group and it have a just claim in the registration of its mark through
the adoption of the mark in good faith and prior use in trade and commerce since
1977, investment in the promotion of the goodwill and reputation of the products
under the mark.
"9.1. Respondent-applicant has explained how Pacific Group AA
invented the word ORAMIIN, and how it grew its market in the United States,
Singapore and Myanmar.
"9.2 That since 1997 the manufacture of the ORAMIN were
contracted to other manufacturers which allegedly included opposer. x x x
"9.3. Respondent-applicant's trademark is invested with goodwill
and reputation. Said goodwill is evidenced by expenses of not inconsiderable
amount of resources over a long period of time in advertismenets in print, x x x
"9.3. Under the Philippine Civil Code, the goodwill of business is a
proprietary right. The same cannot be more emphasized under Section 168.1 of
the Intellectual Property Code, pertinently: x x x
The Respondent-Applicant's evidence consists of the Affidavit of Subhransu K.
Tripathy, Chief Operation Officer of Respondent-Applicant; documents containing
information about Pacific AA Group; copy of the Certificate of Registration issued by
WIPO Madrid for ORAMIN-C; copies of certificates of registration and copies of
declarations of ownership; copies of Drug Registration Certificates; and photographs of
multi-media advertisements for ORAMIN.5
Should the Respondent-Applicant be allowed to register the trademark
ORAMIN-C?
The Opposer anchors its opposition on the following provisions of Republic Act
No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code"):
Sec. 123.Registrability. - 123.1. A mark cannot be registered if it:
xxx
(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:
Marked as Exhibits "1" to "145", inclusive.
(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;"
Sec. 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's consent form using in the course of
trade identical or similar signs or containers for goods or services which are identical or
similar to those in respect of which the trademark is registered where such use would result
in a likelihood of confusion. In case of the use, of an identical sign for identical goods or
services, a likelihood of confusion shall be presumed.
Records show that at the time the Respondent-Application filed its trademark
application for ORAMIN-C on 10 October 2015, the Opposer already has existing
trademark registration for the mark "ORAMIN" under International Reg. No. 1292243
with International Registration Date of 02 February 2016 and priority date of 04 August
2015. This registration covers dietary supplements/vitamins in Class 5. This Bureau
noticed that the goods indicated in Respondent-Applicant's trademark application, i.e.,
dietary supplements under Class 5 are similar to the Opposer's.
The competing marks, as shown below, are confusingly similar:
Oramin-C
Opposer's trademark Respondent-Applicant's mark
Respondent-Applicant's mark ORAMIN-C adopted the dominant features of
Opposer's mark consisting of the word "ORAMIN" or it appropriates Opposer's word
mark ORAMIN in its entirety. Respondent-Applicant merely added the letter "C" and a
hyphen (-) in Opposer's mark ORAMIN to come up with the mark ORAMIN-C.
ORAMIN-C appears and sounds almost the same as Opposer's trademark ORAMIN.
The fact that the Respondent-Applicant's mark incorporated the letter "C" with a
hyphen (-) is of no moment, without the letter "C" and a hyphen (-), the two marks are
perfectly identical. Likewise, the competing marks are used on similar goods,
particularly, dietary or food supplements. Thus, it is likely that the consumers will
have the impression that these goods originate from a single source or origin the
ORAMIN-C being a variation of the ORAMIN mark of Opposer, as if in launching a
new line of products. The Supreme Court has held:
Callman notes two types of confusion. The first is the confusion of goods in which event
the ordinary prudent purchaser would be induced to purchase one product in the belief
that he was purchasing the other. In which case, defendant's goods are then bought as
the plaintiff's and the poorer quality of the former reflects adversely on the plaintiff's
reputation. The other is the confusion of business. Here, though the goods of the parties
are different, the defendant's product is such as might reasonably be assumed to
originate with the plaintiff and the public would then be deceived either into that belief
or into belief that there is some connection between the plaintiff and defendant which, in
fact does not exist.6
Indeed, consumers may be led into a wrong belief that the parties have a
connection between them, such as in, but not limited to, a licensing or sponsorship
agreement.
Public interest therefore requires, that two marks, identical to or closely
resembling each other and used on the same and closely related goods, but utilized by
different proprietors should not be allowed to co-exist. Confusion, mistake, deception,
and even fraud, should be prevented. It is emphasized that the function of a trademark
is to point out distinctly the origin or ownership of the goods to which it is affixed; to
secure to him, who has been instrumental in bringing into the market a superior article
of merchandise, the fruit of his industry and skill; to assure the public that they are
procuring the genuine article; to prevent fraud and imposition; and to protect the
manufacturer against substitution and sale of an inferior and different article as his
article as his product.7
Succinctly, the field from which a person may select a trademark is practically
unlimited. As in all other cases of colorable imitations, the unanswered riddle is why of
the millions of terms and combinations of letters and designs available, the Respondent-
Applicant had to come up with a mark identical or so closely similar to another's mark
if there was no intent to take advantage of the goodwill generated by the other mark.8
The intellectual property system was established to recognize creativity and give
incentives to innovations. Similarly, the trademark registration system seeks to reward
entrepreneurs and individuals who through their own innovations were able to
distinguish their goods or services by a visible sign that distinctly points out the origin
and ownership of such goods or services.
In conclusion, the subject trademark application is covered by the proscription
under Sec. 123.1(d) (iii) of the IP Code.
WHEREFORE, premises considered, the instant Opposition to Trademark
Application No. 1276429 is hereby SUSTAINED. Let the filewrapper of the subject
6 Converse Rubber Corp. v. Universal Rubber Products, Inc. et. al, G.R. No. L-27906,08 Jan. 1987.
7 PribhdasJ. Mirpuriv. Court ofAppeals, G.R. No. 114508, 19 November 1999, citing Ethepav. Director ofPatents, supra, Gabriel v. Perez,SCRA 406 (1974). See also Article 15, par. (1), Art. 16, par. (1), of the Trade Related Aspects of Intellectual Property (TRIPS Agreement).
8 American Wire & Cable Company v. Director ofPatents, G.R. No. L-26557, 18 Feb. 1970.
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trademark application be returned, together with a copy of this Decision, to the Bureau
of Trademarks for information and appropriate action.
SO ORDERED.
JOSEPHINE (TALON
Adjudication Gftficer, Bureau of Legal Affairs
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