Plea eee |e sSaaase Lae ae” InreuscTuas proverry OMNCEGF THE PMLIPP ES CELGENE CORPORATION, } IPCNo. 14-2016-00380 ‘Opposer, } Opposition to: } ‘Appin. No, 4-2016-502303 } Date fled: 04 May 2016 } TM: AZACYTIN } ~versus- } } } DR. REDDY'S LABORATORIES } UMITED, } Respondent-Applicant } [eneeeeeneee nena rennnnn neta nnennnenneenssaK NOTICE OF DECISION ‘CASTILLO LAMAN TAN PANTALEON & SAN JOSE ‘Counsel for Opposer 2, 3%, 4", 5" & 9" Floors, The Valero Tower 422 Valero Street, Salcedo Village Makati City HECHANOVA BUGAY VILCHEZ & ANDAY'A-RACADIO Counsel for Respondent-Applicant Ground Floor, Salustiana D. Ty Tower 104 Paseo de Roxas Avenue Makati City GREETINGS: Please be informed that Decision No. 2020 - [25° dated 07 September 2020 (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 within ten (10) days after receipt of the decision together with the payment of applicable fees. Taguig City, 18 September 2020. Atty. MARIANNE A. ISABEDRA IPRS IV, Bureau of Legal Affairs Tye Nice Clsifeaion of goods and services is for registering trademark and service mak Irlblatal weatyatninistered by the WIPO, called the Nice Agreement Concerning the Cesifcadon of Goods and Services for Region of Marks conclsed in 1957 AED TR, we ‘e, gsrative ONES Burécu of Legal Affars Carle oo tae santas: & San Jose Law Firmsubstances name, which is used as a simple means of identifying pharmaceutical products for the benefit of patients and doctors alike compared to chemical names and formulas which are known primarily only to chemists and the like. According to the Opposer, The INN system also allows medical practitioners, pharmacists or anyone dealing with pharmaceuticals to recognize that a particular substance belong to a group of substances having similar pharmacological activity or effect. INNs have to be distinctive in sound and spelling and should not be liable to confusion with other names in common use. To make INNs universally available, they are formally placed by the WHO in the public domain, hence their designation as nonproprietary. ‘The Opposer sets forth the following grounds in this instant opposition 1 AZACYTIN is a virtual replication of and is confusingly similar with the INN AZACITIDINE and the INN stem -tidine, in violation of the WHO Guidelines and to the detriment of Celgene, health professionals, patients and consumers. AZACITIDINE is non-registrable for being generic and descriptive. To allow its registration would be to unlawfully grant Respondent-Applicant virtual monopoly over a generic name, to the damage and prejudice of Celgene and the public. The Opposer submitted the following evidence: ‘eI 2, mee ena ay FS 13. 14, 15. 16. 17. 18. Printout of the details of Opposer’s corporate information in Opposer's official website; Original authenticated Power of Attorney and General Authorization dated 08 June 2016; Printout of Ceigene’s 2015 Corporate Responsibility Report; Printout of Celgene’s Story; : Printout of Celgene’s Clinical Trials; Printout of Celgene’s Areas of Research; Printout of Azacitidine’s Drug Information; Printout of Patient’s Guide to VIDAZA; Printout of Information about Azacitidine as an active ingredient of VIDAZA; Printout of Fact Sheet of VIDAZA; Printout of VIDAZA as new treatment for elderly patients with Acute Myeloid Leukemia; : Printout of World Health Organization, Medicines - Guidance on INN; Printout of the seanned INN List 19, Supplement to WHO Chronicle, Vol. 33, No. 10 (1979); Printout of the webpage of Cimetidine; Printout of the webpage of WHO on the use of stems in the selection of INN for pharmaceutical substances (2013); Printout of the trademark registrations of VIDAZA in Singapore, New Zealand, Australia, Brunei, Papua New Guinea and Mexico; Printout of the trademark registrations of VIDAZA in the Philippines; ‘The third year and fifth year Declaration of Actual Use of VIDAZA;19, Certified true copy of the international trademark registration of VIDAZA in the Philippines; 20, Printout of the General Principles for Guidance in Devising INN for Pharmaceutical Substances, WHO Technical Report; 21. Printout of the 46% World health Assembly Resolution dated 12 May 1993; 22. Printout of Phonetics; The Sounds of Language; 23. Printout of the Webpage indicating that AZACYRIN is used on AZACITIDINE; 24, Certified true copy of the BLA Decision No. 2007-142 and its Entry of Judgment; 23. Centified true copy of BLA Decision No. 2010-33 dated 29 June 2013 and its Entry of Judgment; 26. Judicial Affidavit of Camille M. Miller; and, 27. Judicial Affidavit of Atty. Dave Oliver P. Anastacio. This Bureau issued Notice to Answer‘ and served a copy thereof upon the Respondent- Applicant on 07 October 2016. The latter, however, did not file an Answer within the prescribed period. Thus, this Bureau declared Respondent-Applicant in default.* This case is submitted for decision. Should the Respondent-Applicant be allowed to register the trademark AZACYTIN? Sec. 123 of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines ("IP Code) provides, in part, that a mark cannot be registered if it: "(h) Consist exclusively of signs that are generic for the goods or services that they seek to identify; @ Consist exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and establishes trade practice; Consists exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services," Generic terms are those which constitute "the common descriptive name of an article or substance", or comprise the "genus of which the particular product is a species", or are commonly use as the "name or description of a kind of goods”, or imply reference to "every member of a ‘genus and the exclusion of individuating characters", or "refer to the basic nature of the wares of ‘services provided rather than to the more idiosyncratic characteristics of a particular product”, and are not legally protectable. On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in its normal and natural sense, it "forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and + Dated 28 September 2016. s 5 Order of Default dated 10 April 2017. ate? TRUp | Affaiesdoes not know what it is", or it if clearly denotes what goods or services are provided in such a way that the customer does not have excise powers of perception or imagination. ‘The Opposer alleges that “AZACITIDINE” is a generic name and one of the Intemational ‘Non-Proprietary Names ("INN") as recommended by the World Health Organization ("WHO"). In support of this instant opposition, the Opposer submitted an electronic print-out of the World Health Organization (WHO) Guidance on INN of Medicines.” It confirms that the word “azacytidine” is an International Nonproprietary Name used to identify pharmaceutical substances or active pharmaceutical ingredients. In fact, it was cited as a Recommended INN in the List 19 of the World Health Organization’s List of INN for Pharmaceutical Substances.* A scrutiny of the said documents show that the generie name “AZACITIDINE” is listed among the recommended international non-proprietary names. As such, this generic name or any name confusingly similar to it cannot be appropriated as trademark for any pharmaceutical product, in order to avoid confusion to the buying public. An examination of the competing marks shows that Respondent-Applicant’s “AZACYTIN” was obviously derived from the generic name “AZACITIDINE”. “AZACYTIN” covers “pharmaceutical and medicinal preparations, as far as included in Class 05 and not in other classes”. “AZACYTIN’s” coverage is extensive and wide-reaching that may include the treatment for various infections and/or illnesses. Apparently, the marks have similarity in sounds which make it not easy for one to distinguish ‘one mark from the other. Trademarks are designed not only for the consumption of the eyes, but also to appeal to the other senses, particularly, the faculty of hearing. Thus, when one talks about the Opposer's trademark or conveys information thereon, what reverberates is the sound made in pronouncing it. The same sound, however, is practically replicated when one pronounces the Respondent-Applicant's mark. Therefore, applying the WHO Guidelines and Mission of the INN, in order to avoid confusion, which could also jeopardize the safety of patient, trademarks should neither be derived from INNs nor contain common stems used in INNS. In this instant case, this Bureau finds that the Respondent-Applicant's trademark application is proscribed by the aforementioned provisions of the IP Code. It must be emphasized that the Respondent-Applicant was given opportunity to defend its trademark application. It, however, failed to do so. Finally, 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 Des Produits Nestle, S.A. vs. Court of Appeals (356 SCRA 207, 222-225) 2001. Exhibit “L” of Opposer. Exhibits “M" and “M-1" of Opposer. Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No. 114508, 19 November 1999, Adminisfrative Officer Ili Buread of Legal Affairsfee PEE eee WHEREFORE, premises considered, the instant opposition is hereby SUSTAINED. Let the file wrapper of Trademark Appli Serial No. 4-2016-502303 be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action. SO ORDERED. Togug Civ. OT SEP 2000 Atty. GINAILYN S. BADIOLA, LLM. Adjudication Officer, Bureau of Legal Affairs