INTELLECTUAL PROPERTY PHILIPPINES

MERCK & CO. INC. } IPC No. 14-2008-00315 Opposer, } Opposition to:

} } Appln. Serial No. 4-2007-013328 } Date Filed: 04 December 2007 } TM: "ZOLIN"

-versus­ } } }

PHARMATRIX CORPORATION, } Respondent-Applicant. }

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NOTICE OF DECISION ~ CIP. SJ.l.LAL. n ,

SYCIP SALAZAR HERNANDEZ & GATMAITAN Counsel for the Opposer SSHG Law Center 105 Paseo de Roxas Avenue, Makati City

DE GUZMAN DIONIDO and ASSOCIATES Law Offices Counsel for the Respondent-Applicant 4th Floor, Executive Building Center Sen. Gil Puyat Avenue corner Makati Avenue Makati City

rl ERNAND Z 60 AlTAi

GREETINGS:

Please be informed that No. 2010 - .2!l:.... dated 12 May 2010 (copy enclosed) was promulgated in the above entitled case.

Makati City, 12 May 2010.

For the Director:

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Republic of the Philippines INTELLECTUAL PROPERTY D.FFICE

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INTELLECTUAL PROPERTY

PHI LIP PIN lPCNO.14-2008-00315MERCK & CO., INC. Opposer, Case Filed: 24 November 2008

Opposition to: -versus- Appln. Serial No. 4-2007-013328

Date Filed: 04 December 2007 Trademark: "ZOLIN"

PHARMATRlX CORPORATION, Respondent-Applicant. Decision No. ).!l

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DECISION

MERCK & CO., INC. ("Opposer"), a corporation organized and existing under the laws of the State of New Jersey, U.S.A, with principal office at One Merck Drive, Whitehouse Station, New Jersey, U.S.A. (PO Box 100), filed on 24 November 2008, an opposition to Trademark Application Serial No. 4-2007-013328.

The application, filed by Pharmatrix Corporation ("Respondent-Applicant"), with business address at Unit 2702 Jollibee Plaza, Emerald Avenue, Ortigas Center, Pasig City on 04 December 2007, covers the mark ZOLIN for use on pharmaceutical oral anti-diabetic preparation under Class 05 I

The Opposer alleged the following:

"Applicant's ZOLIN mark so resembles Merck's ZOLINZA mark, which has been registered in the Philippines and in other parts of the world also for Class 5 products and previously used in commerce in the United States of America and not abandoned, as to be likely to cause confu sion, mistake and deception on the part of the purchasing public.

"The registration of the ZOLIN mark in the name of the Applicant violates the pertinent provisions of Republic Act No . 8293, the Paris Convention for the Protection of Industrial Property, and the Agreement on Trade Related Aspects of Intellectual Property Rights.

"BACKGROUND

"Merck manufactures pharmaceutical products that are sold in more than 150 countries worldwide under very well known trademarks. One of Merck's newest products is Vorinostat, which is bein g manufactured and sold under the name ZOLINZA. It is cancer medicine for the treatment of cutaneous T cell lymphoma (CTCL).

"ZOLINZA was approved by the U.S. Food and Drug Administration (FDA) for the treatment of CTCL on October 6, 2006. ZOLINZA has recently been approved in Mexico, Puerto Rico, and Peru . Presently, ZOLINZA is being sold in the United States of America with total global revenues reaching over $9,000,000. Beginning in the year 2004 , Merck has

I The Nice Class ification is a classification of goods and serv ices for the purpose o f registering trademark and serv ice mark s, based o~ a multilateral treaty administered by the World Intellectual Property Org ani zation . The treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957 .

Republic of the Philippines '~T"" , ...rTIT A r PDllPJ<'I)TV llJ<'l<Tr....

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caused the registration of the trademark ZOLINZA in over 100 countries across the globe from Asia to Africa, including the Philippines.

"Attached as Exhibit A is a sample product label for ZOLINZA as used in the United States of America. Attached as Exhibit B is the notarized and duly authenticated affidavit executed by Ms. Debra A. Bollwage , Serior Assistant Secretary of Merck.

"DISCUSSION

"I

"Applicant's ZOLIN mark so resembles Merck 's ZOLINZA mark, which has been registered in the Philippines and in other parts of the world also for Class 5 products and previously used in commerce in the United States of America and not abandoned, as to be likely to cause confusion, mistake and deception on the part of the purcha sing public.

"Merck is the proprietor of various ZOLINZA marks (for Class 5) in different countries all over the world . Attached are the following authenticated certificates of registration for the ZOLINZA mark :

"1. As Exhibit C, United States Patent and Trademark Office Registration No . 3,230,286 dated April 17,2007 for Class 5.

"2 . As Exhibit D, Trademark Registration No. 183033 issued by the Ministry of Commerce and Industry of the Arab Republic of Egypt dated October 2,2007 for Class 5.

"3. As Exhibit E, Trademark Registration No. 84581 issued by the Ministry of Industry and Trade of the Hashemite Kingdom of Jordan dated December 5,2006 for Class 5.

"4 . As Exhibit F, Trademark No.300581526 issued by the Intellectual Property Department of Hong Kong S.A.R. dated July 7, 2006 for Class 5.

"5. As Exhibit G, Trademark Registration No. 150,184 issued by the Ministerio de Econornia of the Republic of Guatemala dated June 19, 2007 for Class 5.

"6. As Exhibit H, Trademark Registration No . 1059130 issued by the Register of Trade Marks of Australia dated June 7, 2005 for Class 5.

"7 . As Exhibit I, Trademark Registration No. 004215158 issued by the Trade Marks and Register Department, United Kingdom of Great Britain and Northern Ireland dated January 10,2006 for Class 5.

"8. As Exhibit J, Trademark Registration No. 2005-0005841 issued by the Registro de la Propiedad Industrial of the Republic of Costa Rica dated July 6, 2006.

"In the Phil ippines , Merck is the registered owner of the ZOLINZA mark under Registration No. 42005007846 for Class 5 dated July 16, 2006 . The Honorable Office ~ refer to the file wrapper of Merck's application for the ZOLINZA mark . .....'"

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"U nder Section 123(d) of the Intellectual Property Code, a mark calUlot be registered if it 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.

"Applying the dominancy test , it is apparent that Applicant's ZOLIN mark is confusingly mark to Merck's ZOLINZA mark because it appropriates the latter's dominant portion (i.e., ZOLIN). It must be emphasized that ZOLINZA is a distinctive word coined and developed by Merck for its new product, Vorinostat. Merck is not aware of any other product or business activity that uses his mark.

"In determining whether a trademark is confus ingly similar, the Supreme Court explained that the aural and visual impressions created by the mark in the public mind should be considered, giving little weight to factors like prices, quality, sales outlets and market segments. Likewise, in Societe Des Produits Nestle, S.A. v. CA (G.R. No. 112012, April 4, 2001), the Court, again applying the dominancy test, held that aural and connotative comparisons and overall impressions between the two trademarks should be considered in determining whether there is confusing similarity.

"The confusing similarity of ZOLIN to ZOLINZA is further underscored by the fact that the former is intended to be used by Applicant for Class 5 products too. Hen ce, given that ZOLINZA represents valuable source significance and an important facet of Merck's merchandising efforts to promote Vorinostat, Applicant's use and registration of a similar mark also for Class 5 goods will allow it to unfairly benefit from, and ride on, the goodwill of Merck's trademark.

"Because of ZOLIN' s confusing similarity to Merck 's Philippine-registered trademark, It IS respectfully submitted that Applicant's mark should be refused registration pursuant to Section 123 (d) of the Intellectual Property Code. As the Supreme Court held in Faberge Inc. v. lAC (G.R. No . 71189, November 4, 1992):

"When one applies for the registration of a trademark or label which is almost the same or very closely resembles one already used and registered by another, the appli cation should be rejected and dismissed outright, even without any opposition on the part of the owner and user of a previously registered label or trademark, this not only to avoid confusion on the part of the publi c, but also to protect an already used and registered trademark and an established goodwill.

"Finally, under Section 147 of the Intellectual Property Code, Merck, as owner of a registered mark, has the exclusive right to prevent Applicant and all other third parties not having its consent from 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 mark is registered.

"II

"The registration of the ZOLIN mark in the name of the Applicant violates the pertinent provisions of Republic Act No. 8293, the Paris Convention for the Protection of Industrial Property, and the Agreement on Trade Related Aspects ~ Intellectual Property Rights . ~

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"As borne out by the foregoing facts, Merck has previously used the ZOLINZA mark and has caused the registration of this mark all over the world, including the Philippines. In fact, as evidenced by its large portfolio of registrations and applications for the ZOLINZA mark in over 100 countries across the globe, Merck jealously guards the image and goodwill that attach to this mark.

"It is, therefore, undeniable that the ZOLINZA mark may already be regarded as a well­known trademark within the meaning of Articles 6bis of the Paris Convention and Rule 102 of the Philippine Trademark Rules and Regulations, even prior to Applicant's filing date. Under Section 123.1 of Republic Act No. 8293 (the IP Code), a mark that is confusingly similar to another mark that is already well known internationally and in the Philippines, whether or not it is registered here, cannot be registered:

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"This embodies Article 6bis of the Paris Convention, which obligates member States to undertake "to refuse or cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, imitation or a translation, liable to create confusion, or a mark considered by competent authority of the country of registration or use to be well-known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods.

"Article 6bis of the Paris Convention was expressly adopted under Article 16 of the Agreement on Trade Related Aspects of Intellectual Property Aspects of Intellectual Property Rights. In tum, the foregoing undertakings are explicitly recognized in Section 3 of the Intellectual Property Code, thus:

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"As explained by the Supreme Court in Shangri-La International Hotel Management Ltd., et al. vs. Developers Group of Companies (G.R. No. 159938, March 31, 2006):

'The new Intellectual Property Code (IPC), Republic Act No . 8293, undoubtedly shows the fum resolve of the Philippines to observe and follow the Paris Convention by incorporating the relevant portions of the Convention such that persons who may question a mark (that is, oppose registration, petition for the cancellation thereof, sue for unfair competition) include persons whose internationally well-known mark, whether or not registered, is identical with or confusingly similar to or constitutes a translation of a mark that is sought to be registered or is actually registered.' "

The Opposer submitted the following pieces of evidence:

I. Exhibit "A" - Sample of Opposer's ZOLINZA label mark; 2. Exhibit "B" - Affidavit of Opposer's Senior Assistant Secretary; 3. Exhibit "C" - USPTO Trademark Registration No. 3,230,286; 4. Exhibit "D" - Trademark Registration No. 183033 issued by the Egypt

Ministry of Commerce and Industry; 5. Exhibit HE" - Trademark Registration No. 84581 issued by the Ministry of

Industry and Trade of the Hashemite Kingdom of Jordan; 6 . Exhibit "F" - Trade Mark No. 300581526 issued by the Intellectual Property

Department of Hong Kong S.A.R.; ~

7. Exhibit "G" - Trademark Registration No. 150,184 issued by the Ministerio de

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Economia of the Republic of Guatemala; 8. Exhibit "H" - Trademark Registration No.1 059130 issued by the Register of

Trade Marks of Australia; 9. Exhibit "I" - Trademark Registration No. 004215158 issued by the Trade

Marks and Register Department, United Kingdom of Great Britain and Northern Ireland; and

10. Exhibit "J" - Trademark Registration No . 2005 -0005841 issued by the Registro de la Propiedad Industrial of the Republic of Costa Rica.

This Bureau issued and served upon the Respondent-Applicant a Notice to Answer on 29 January 2009. The Respondent-Applicant, however, did not file an Answer. Thus, Rule 2, Sec. 11 of the Regulations on Inter Partes Proceedings, as amended, provides:

Sec. 11. Effect of failure of to fil e Answer - In case the respondent fails to file an answer, or if the answer is filed out of time, the case shal1 be decided on the basis of the petition or opposition, the affidavits of the witnesses and the documentary evidence submitted by the petitioner or oppose.

Should the Opposer's opposition to Respondent-Applicant's trademark application be sustained?

Sec. 134, IP Code, states in part that:

Sec. 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 opposition to the application. x x x

This provision allows any party to file an opposition to a trademark application if that person believes that he would be damaged by the registration. Once filed, the opposition proceeding becomes, basically, a review of the trademark application in question to determine if the legal requirements for registration have been satisfied. The entire proceeding is not necessarily a "contest" between the opposer and the applicant as to which of them has an earlier trademark application or the better right to register the mark. In fact, any party who believes that he will be damaged by the registration of the mark may oppose the application, even if the opposer himself does not own, or apply for the registration of an identical or confusingly similar mark in the Philippines?

Sees. 131.3 and 134 of the IP Code provide: 131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed

prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well­known mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided under the law.

xxx 134. 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 opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows that facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of eertifieates Ofregistratio~

marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together wit the translation in English, if not in the English language. For good cause shown and upon payment of the required surcharge, the tim

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Having conferred registration of the trademark "ZOLINZA" in the Philippines and in other parts of the world ahead of the filing date of the Respondent-Applicant's application, the Opposer stands to incur damage if the Respondent-Applicant's application is allowed. In this regard, the Opposer submitted evidence that it has been using the mark for a substantial number of years prior to the filing of the Respondent­Applicant's application, consisting of legalized documents showing the said party's registration of its mark in U.S .A., Egypt, Jordan, Australia, Guatemala, Hongkong and Costa Rica, to wit:

1. USPTO Reg. No. 3,230,286 with registration date 17 April 2007 for use on pharmaceutical preparations for the treatment of cancer, in Class 05 (first use: 17 October 2006);

2. Egypt Trademark Reg. No. 183033 with registration date 02 October 2007, for use on pharmaceutical preparations in Class 05 (filing date: 21 February 2006);

3. Jordan Trademark Reg. No. 84581, with registration date 05 December 2006, for use on pharmaceutical preparations in Class 05 (filing date: 22 February 2006);

4. Hongkong Trademark No. 300581526, with registration date 07 July 2006, for use on pharmaceutical preparations in Class 05 (filing date: 15 February 2006);

5. Guatemala Trademark Reg. No . 150,184, with registration date 19 June 2007, for use on pharmaceutical preparations in Class 05;

6. Australia Trademark Registration No. 1059130, with registration date 07 June 2005 , for use on pharmaceutical preparations in Class 05;

7. United Kingdom Trademark Registration No. 004215158 , with registration date 10 January 2006, for use on pharmaceutical preparations in Class 05; and

8. Costa Rica Trademark Registration No. 2005-0005841, with registration date 06 July 2006, for use on pharmaceutical preparations in Class 05 (filing date: 04 August 2005.

The Opposer anchors its opposition on Sec. 123 .1(d) and (e) of Rep. Act No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code"), to wit:

"Section 123. Registrability. - 123.1. A mark cannot be regi stered 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;

---------------------------------~ for filing an oppos ition may be extended by the Director o f Legal Af fairs , who sh all notify the applican t of such ext ension . Regulations shall fix the maximum period of time within wh ich to file the opposition . (Sec . 8, R.A. No . 165a)

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(e) Is identical with or confusingly similar to, or constitutes a translation of mark which is considered by the competent authority to be well-known internationally and in the Philippines."

Rule 102 of the Trademark Regulations sets forth the criteria for determining whether a mark is well-known, to wit:

Rule 102. Criteria for determining whether a Mark is Well-known. In determining whether a mark is well-known, the following criteria or any combination thereof may be taken into account.:

a. the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

b. the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;

c. the degree of the inherent or acquired distinction of the mark;

d. the quality-image or reputation acquired by the mark;

e. the extent to which the mark has been registered in the world;

f. the exclusivity of registration attained by the mark in the world;

g. the extent to which the mark has been used in the world;

h. the exclusivity of use attained by the mark in the world;

I. the commercial value attributed to the mark in the world;

J. the record of successful protection of the rights in the mark;

k. the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and

I. the presence or absence if identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his mark is a well-known mark.".

This Bureau noticed that the Opposer only submitted proof of the registration of its mark in the U.S.A., Egypt, Jordan, Australia, Guatemala, Hongkong and Costa Rica. No other evidence was submitted to show concurrence of at least a combination of the criteria under Rule 102 of the Trademark Regulations.

However, the foregoing finding notwithstanding, the Respondent-Applican9 should not be allowed to register its mark. The competing marks are shown below: ~

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Z<::>LINZ~ ZOLIN Opposer's ZOLINZA trademark Respondent-Applicant 's ZOLIN mark

The only difference between the marks is the syllable "ZA". Obviously, there was no ingenuity or originality on the part of the Respondent-Applicant in coining the mark ZOLrN. What it did , or attempts, to make its mark appear different from ZOLrNZA is just to remove or delete the syllable "ZA". At any angle, this modification made by the Respondent-Applicant failed to confer a character on its mark that is distinct from the Opposer's. Without a doubt, it is likely that the registration of the Respondent­Applicant's mark would cause damage to the Opposer. The Respondent-Applicant's products bearing the "ZOLrN" marks will be associated to the Opposer. This is so because aside from the marks being so similar, the Respondent-Applicant's application covers goods which are similar to the Opposer's. The Respondent-Applicant's trademark application covers pharmaceutical products under Class OS, specifically for "pharmaceutical oral anti-diabetic preparation." The Opposer's trademark registration in the Philippines, No . 92005007846 issued on 16 July 2006, covers pharmaceutical products under Class OS, including preparation for the treatment of diabetes. It must be stressed that this Bureau in resolving disputes involving trademarks can and should take judicial notice of subjects found in the Trademark Registry, including the list of registered trademarks, applications and the statuses, among other things . This Bureau also noted that the Opposer's "ZOLrNZA" trademark is used to treat diabetes in Egypt, Jordan and Hongkong, to wir':

Pharmaceut ical preparations for the treatment of addiction, urinary incontinence, diabetes, card iovascular diseases and disorders, cerebrovascular diseases and disorders, anxiety, depression, insomnia, cognitive disorders, diseases and disorders of the central nervous system, gastrointestinal diseases and disorders, cancer, obesity, inflammation and inflammatory diseases, respiratory diseases and disorders, musculo-skeletal disorders, osteoporosis, menopausal symptoms and disorders, anti-infective prep arations, anti-viral preparations, inununological preparations, analgesic preparations, ophthalmic preparations and antiemetic preparations.

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 product."

The Respondent-Applicant's attempt to register a mark that is a colorabl7 imitation of the Opposer's mark is anathema to the abovecited principles and rationale o~

3 Exhibits " 0 " , "E", "F" "G " and "J", Opposer.

4 Pribhdas 1. Mirpuri v. Court 01Appeals, G.R. No.1 14508, 19 Nov . 1999.

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the trademark registration system. Indeed, as held by the Supreme Court in American Wire & Cable Co. vs. Director ofPatents: 5

"Why of the million of terms and combination of letters and designs available the appellee had to choose a mark so closely similar to another 's trademark if there was no intent to take advantage of the goodwill generated by the other mark"

To conclude, the Respondent-Applicant's application is proscribed under Sec. 123.1(d) of the IP Code.

WHEREFORE, premises considered, the Notice of Opposition is, as it is hereby SUSTAINED. Let the filewrapper of Trademark Application No. 4-2007-013328 be returned together with a copy of this Decision to the Bureau of Trademarks for information and appropriate action .

SO ORDERED.

Makati City, 12 May 2010 .

LS.AREVALO eau of Legal Affairs~

5 3 1 SCRA 544.

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