BEVERLY HILLS MEDICAL GROUP INC (BHMG) V.

BEVERLY HILLS COSMETIC

SURGERY & SKIN INSTITUTE INC (BHCSI)
G.R. No. 201437, January 20, 2014

FACTS:

1. Respondent BHCSI is a domestic corporation registered with the SEC on Nov. 17,
2005. BHCSI discovered in September 2006 that petitioner BHMG was able to
register with the SEC on Sept 7, 2006.
2. BHCSI filed a petition for cancellation of Corporate Name Registration with the
SEC praying that BHMG’s company name be cancelled.
3. The general counsel of the SEC granted BHCSI’s petition, directing BHMG to
change or modify its corporate name within 30 days from receipt of a copy of the
said Order. According to the order, the first in time, first in right doctrine, BHCSI
acquired a prior right over the use of the contested corporate name. Since both
parties are engaged in the same business of cosmetic surgery and skin care, the
similarity in their corporate names will likely mislead a person using ordinary care
and discretion.
4. On appeal, the SEC em banc affirmed the questioned order and so BHMG filed a
petition for review with the CA and the CA denied such and affirmed the decision
of the SEC en banc.
5. Thus this instant petition BHMG contends that the corporate name of BHMG is not
identical or confusingly similar to that of BHCSI and that BHCSI has no propriety
right over the words “Beverly Hills.”

ISSUE: WON BHCSI acquired a prior right over the use of “BEVERLY HILLS”

RULING:

Yes. The court approves the pronouncement of the SEC en banc. The use of identical or
closely similar marks or trade names on non-competing goods may likely cause confusion
as to their source or origin where the non-competing goods or services are so related with
each other that it might reasonably be assumed that they originate from one and the same
manufacturer or service provider. The law protects prior registered corporations, which
have identical or similar names with subsequent registrants offering related, although
non-competing goods and services. Both BHCSI and BHMG are engaged in "competing
goods," and not merely related goods. The more reason that the mantle of protection be
given in favor of BHCSI.

BHMG deliberately used the words "Medical Group" to make it appear that it is engaged
in the practice of general medicine. Both corporations have identically the same primary
purpose, as indicated in their respective Articles of Incorporation.

The fact that there are certain services offered by BHMG, which are not offered by BHCSI
is not sufficient to dispel the possibility of confusion because of the obvious similarity not
only with respect to the services they provide, but also with respect to their target clientele.
The use of the terms "Medical Group" is inadequate to support the conclusion that
persons exercising ordinary care will unlikely be misled that there is a connection between
the two corporations.

The test in determining the existence of confusing similarity in corporate names is whether
the similarity is such as to mislead a person using ordinary care and discrimination.

BHCSI has acquired an exclusive right to the use of its corporate name which should be
protected against infringement, insofar as the cosmetics business is concerned. The right
to the exclusive use of a corporate name with freedom from infringement by similarity is
determined by priority of adoption.

The fact remains that respondent's registration of its corporate name was made prior to
that of petitioner's.

WHEREFORE, the instant petition is DENIED. The Decision of the Court of Appeals,
dated October 11, 2011, and its Resolution of April 10, 2012, both in CA-G.R. SP No.
111412, are AFFIRMED.