Prosource Intl v.

Horphag Research,
GR 180073, Nov. 25, 2009
Topic: Confusing Similarity

FACTS:
Respondent is a corporation and owner of trademark PYCNOGENOL, a food.
Respondent later discovered that petitioner was also distributing a similar food
supplement using the mark PCO-GENOLS since 1996. This prompted respondent to
demand that petitioner cease and desist from using the aforesaid mark.
Respondent filed a Complaint for Infringement of Trademark with Prayer for
Preliminary Injunction against petitioner, in using the name PCO-GENOLS for being
confusingly similar. Petitioner appealed otherwise.
The RTC decided in favor of respondent. It observed that PYCNOGENOL and
PCO-GENOLS have the same suffix "GENOL" which appears to be merely descriptive
and thus open for trademark registration by combining it with other words and
concluded that the marks, when read, sound similar, and thus confusingly similar
especially since they both refer to food supplements.
On appeal to the CA, petitioner failed to obtain a favorable decision. The
appellate court explained that under the Dominancy or the Holistic Test, PCO-
GENOLS is deceptively similar to PYCNOGENOL.

ISSUE:
Whether or not the names PCO-GENOLS and PYCNOGENOL are confusingly
similar

RULING:
Yes. There is confusing similarity and the petition is denied. Jurisprudence
developed two test to prove such.
The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion and deception, thus constituting
infringement. If the competing trademark contains the main, essential and dominant
features of another, and confusion or deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the infringing
label should suggest an effort to imitate. The question is whether the use of the marks
involved is likely to cause confusion or mistake in the mind of the public or to deceive
purchasers. Courts will consider more the aural and visual impressions created by the
marks in the public mind, giving little weight to factors like prices, quality, sales
outlets, and market segments.
The Holistic Test entails a consideration of the entirety of the marks as applied
to the products, including the labels and packaging, in determining confusing
similarity. Not only on the predominant words should be the focus but also on the
other features appearing on both labels in order that the observer may draw his
conclusion whether one is confusingly similar to the other.
SC applied the Dominancy Test.Both the words have the same suffix "GENOL"
which on evidence, appears to be merely descriptive and furnish no indication of the
origin of the article and hence, open for trademark registration by the plaintiff through
combination with another word or phrase. When the two words are pronounced, the
sound effects are confusingly similar not to mention that they are both described by
their manufacturers as a food supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the trademark due to the type
of letters used as well as the size, color and design employed on their individual
packages/bottles, still the close relationship of the competing products’ name in
sounds as they were pronounced, clearly indicates that purchasers could be misled
into believing that they are the same and/or originates from a common source and
manufacturer.
Berries Agricultural v Abyadang
GR 183404, October 13, 2010

Topic: Confusing Similarity

FACTS:
Abyadang filed a trademark application with the IPO for the mark "NS D-10
PLUS" for use in connection with Fungicide. Berris Agricultural Co., Inc. filed an
opposition against the trademark citing that it is confusingly similar with their
trademark, "D-10 80 WP" which is also used for Fungicide also with the same active
ingredient.

The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of
Abyadang.

ISSUE:
Whether or not there is confusing similarity between the trademarks.

RULING:
Yes.
The Supreme Court found that both products have the component D-10 as
their ingredient and that it is the dominant feature in both their marks. Applying the
Dominancy Test, Abyadang's product is similar to Berris' and that confusion may
likely to occur especially that both in the same type of goods. Also using the Holistic
Test, it was more obvious that there is likelihood of confusion in their packaging and
color schemes of the marks. The SC states that buyers would think that Abyadang's
product is an upgrade of Berris'.
ROMA DRUG v. THE REGIONAL TRIAL COURT OF GUAGUA
G.R. NO. 149907
April 16, 2009

Topic: Limitations on the rights conferred

FACTS:
Roma Drug was raided by the NBI and BFAD and seized several important
medicines. It appears that Roma Drug is one of six drug stores which were raided on
or around the same time upon the request of SmithKline which was the duly
registered corporation to distribute such medicines. The medicines of Roma Drug was
purchased directly from abroad and not through SmithKline.

During preliminary investigation, Rodriguez challenged the constitutionality of

the law on Special Law on Counterfeit Drugs (SLCD) regarding the distribution of
their medicine that were considered counterfeit although they only bought it directly
and not from SmithKline.

ISSUE:
Whether granting third persons the right to import drugs or medicines whose
patent were registered in the Philippines by the owner of the product is correct.

RULING:
Yes. Section 7 of Rep. Act No. 9502 unequivocally grants third persons the right
to import drugs or medicines whose patent were registered in the Philippines by the
owner of the product. The unqualified right of private third parties such as petitioner
to import or possess “unregistered imported drugs” in the Philippines is further
confirmed by the “Implementing Rules to Republic Act No. 9502” promulgated on
November 4, 2008.

It may be that Rep. Act No. 9502 did not expressly repeal any provision of the
SLCD. However, it is clear that the SLCO’s classification of “unregistered imported
drugs” as “counterfeit drugs,” and of corresponding criminal penalties therefore are
irreconcilably in the imposition conflict with Rep. Act No. 9502 since the latter
indubitably grants private third persons the unqualified right to import or otherwise
use such drugs. Where a statute of later date, such as Rep. Act No. 9502, clearly
reveals an intention on the part of the legislature to abrogate a prior act on the subject
that intention must be given effect.