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INTEUECTUAl PROPERTY OFfiCE OF mE PHILIPPINES

BIOFEMME, INC., } IPC No. 14-2020-00325 Opposer, }

} Opposition to: -versus - } App. Ser. No. M11411062

} Date Filed: 1 May 2018 ARROWHEAD } TM:TRIM PHARMACEUTICALS, INC. }

Respondent-Applicant. } )(- ­ .._--­ -----­ ----------------..._------------------------ ...)( Decision No. 20213{

DECISION

BIOFEMME, INC. ("Opposer") 1 filed an opposition to the Trademark Application with Serial No. Ml1411062. The application filed by ARROWHEAD PHARMACEUTICALS, INC. ("Respondent-Applicant") 2, covers the mark "TRIM" for use on "pharmaceutical and medicinal preparations to treat intractable diseases in humans" under Class 05 and "deuelopment. of pharmaceutical preparations and medicines; pharmaceutical products development; pharmaceutical research and development" under Class 42 of the International Classification of Goods."

Opposer alleges the following grounds in support of the opposition:

"7. The mark "TRIM" applied for by Respondent-Applicant so resembles the trademark "TRIMYCIN" owned by Opposer and duly registered with the IPO prior to the publication of the application for the mark "TRIM".

"8. The mark "TRIM" will likely cause confusion, mistake and deception on the part of the purchasing public, most especially considering that the opposed mark "TRIM" is applied for the same/similar class and goods as that of Opposer's trademark "TRIMYCIN", i.e., Class 05 of the International Classification of Goods for topical treatment of infectious diseases.

"9. The registration of the mark "TRIM" in the name of the Respondent­Applicant will violate Sec. 123.l.(d) of the IP Code, which provides, in part, that a mark cannot be registered if it:

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I A corporation duly organized and existing under the laws of the Philippines. 2 A corporation organized and existing under the laws of Pasadena CA 91105, United States of America. 3 The Nice Classification is a classification of goods and services for the purpose of registering trademarks and service marks based on a multilateral treaty administered by the World Intellectual Property Organization. This Treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of Registration of Marks concluded in 1957.

www.ipophil.gov.ph Intellectual Prop erty #28 Upp er McKinle Road e mail@ipophil.gOv.ph McKinley Hill Town Center o +63 2-2386300 Fort Bonifacio. Tagu ig City

+632-5539480 1634 Philippin es

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"10. Under the above-quoted prOVISIon, any mark, which is similar to a registered mark, shall be denied registration in respect of similar or related goods or if the mark applied for nearly resembles a registered mark that confusion or deception in the mind of the purchasers will likely result.

" 11. Respondent-Applicant's use and registration of the mark "TRIM" will diminish the distinctiveness of Opposer's trademark "TRIMYCIN"."

Opposer's evidence consists of the following:

1. A print-out of the pertinent page of the Intellectual Property Office E-Gazette released on 28 May 2020;

2. A certified true copy of Principal Register No. 39576 for the trademark "TRIMYCIN".

3. A certified true copy of the Assignment of Registered Trademark between United American Pharmaceuticals, Inc. and Biofemme, Inc. filed with the IPO on 16 June 2005.

4. A certified true copy of Certificate of RENEWAL of Registration No. 34979 for the trademark "TRIMYCIN".

5. A certified tr ue copy of Certificate of RENEWAL of Registration No. 4/1979/00034979 for the trademark "TRIMYCIN".

6. Certified true copies of the Affidavits of Use. 7. A certified true copy of Certificate of Product Registration No.

DR-6751 for a product with the brand name "TRIMYCIN" registered with the Food and Drug Administration.

8. A picture of a product label/packaging bearing the trademark "TRIMYCIN" actually used in commerce.

9. Original copy of the Certification and sales performance issued by the IQVIA.

On 02 September 2020, the Bureau issued a Notice to Answer (NTA) and personally served it to Respondent-Applicant's representative on 14 September 2020. Despite receipt of the NTA, the Respondent-Applicant did not file the answer. On 20 January 2021, this Bureau issued an Order No. 2021-115 declaring Respondent-Applicant in default for failure to file the answer.

The sole issue to be resolved in this case is whether Respondent­Applicant's TRIM mark should be registered.

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others. It is intellectual property deserving protection by law, and susceptible to registration if it is crafted fancifully or arbitrarily and is capable of identifying and distinguishing the goods of one

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manufacturer or seller from those of another." Once a person or entity is granted registration of a mark, the certificate of registration becomes prima facie evidence of the ownership of the mark, and the exclusive right to use the same in connection with the goods or services specified in the certificate and those that are related thereto.f

Opposer is the registered owner of the mark TRIMYCIN as evidenced by the Certificate of Registration No. 4/1979/00034979 which was granted registration on 17 December 1985. The registration of the mark has been renewed and is valid and existing up to this date. Opposer has also continuously used the TRIMYCIN mark up to the present. As a registered owner of the mark, it is also conferred exclusive rights. Section 147 .1 of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines, as amended, states:

Section 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 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 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.

It is pursuant to this exclusive right that Opposer filed this opposition to the registration of herein subject mark in relation to Section 1346 of the IP Code.

Opposer also relies on Section 123.1 of the IP Code in opposing the registration of Respondent-Applicant's TRIM mark, which provides:

Section 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:

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.

The first condition of the proscription requires resemblance or similarity between a prospective mark and an earlier mark. Similarity does not mean absolute identity of marks. To be regarded as similar to an earlier mark, it is

, Wilton Dy, et. AI. v. Koninklijke Philips Electronics, N.Y., G.R. No. 186088, March 22, 2017 citing Dermaline Inc. v. Myra Pharmaceuticals, 642 Phil. 503 (20 10), UFC Philippines v . Fiesta Barrio Manufacturing Corp., G .R. No. J98889, January 20, 2016 and Great White Shark Enterprises v. Danilo M. Caralde Jr., 699 Phil. 196 (2012).

IP Code. Section 138. Certificates of Registration. - A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. 6 Supra. Section 134. Opposition. - Any person who believes that he would be damaged by the registration of a mark may, upon ~ayment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, tile with the Office an opposition to the

application.

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enough that a prospective mark be a colorable imitation of the former. Colorable imitation denotes such likeness in form, content, words, sound, meaning, special arrangement or general appearance of one mark with respect to another as would likely mislead an average buyer in the ordinary course of purchase."

This view has been laid by the Supreme Court in the earlier case of Emerald Garment Manufacturing Corporation u. Court of Appeals", where it stated:

Proceeding to the task at hand, the essential element of infringement is colorable imitation. This term has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.

Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all the details be literally copied. Colorable imitation refers to such similarity in form, content, words , sound, meaning, special arrangement, or general appearance of the trademark or trade name with that of the other mark or trade name in their over-all presentation or in their essential , substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article."

In the case of Mighty Corporation Et. Al. us. E. & J. Gallo WinerylO, the High Court enunciated in this wise:

A crucial issue in any trademark infringement case is the likelihood of confusion, mistake or deceit as to the identity , source or origin of the goods or identity of the business as a consequence of using a certain mark . Likelihood of confusion is admittedly a relative term, to be determined rigidly according to the particular (and sometimes peculiar) circumstances of each case . Thus , in trademark cases, more than in other kinds of litigation, precedents must be studied in the light of each particular case.

There are two types of confusion in trademark infringement. The first is "confusion of goods" when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another, in which case defendant's goods are then bought as the plaintiffs and its poor quality reflects badly on the plaintiffs reputation. The other is "confusion of business" wherein the goods of the parties are different but the defendant's product can reasonably (though mistakenly) be assumed to originate from the plaintiff, thus deceiving the public into believing that there is some connection between the plaintiff and defendant which, in fact , does not exist.

1 Mang lnasal Philippines, Inc. v. IFP Manufacturing Corporation, G.R. No. 221717. 19 June 20 17, citing Emerald Garment Manufacturing v. Court of Appeals, G.R. No. )00098, December 29, 1995,251SCRA600 and Clark v. Manila Candy Company, 36 Phil. 100(19 17).

8 G.R. No. 100098 December 29, 1995 9 G.R. NO.100098, December 29, 1995, 251 SCRA 600, citing Etepha v. Director of Patents, 16 SCRA 495 (1966). 10 G.R. No. 154342. July 14,2004

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In determining the likelihood of confusion, the Court must consider: [a] the resemblance between the trademarks; [b] the similarity of the goods to which the trademarks are attached; [c] the likely effect on the purchaser and [d] the registrant's express or ,implied consent and other fair and equitable considerations.

In Prosource International, Inc., u. Horphag Research Management SA, 11

the Court ruled:

In determining similarity and likelihood of confusion, jurisprudence has developed two tests : the Dominancy Test and the Holistic or Totality Test. 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.

In contrast, 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. The discerning eye of the observer must focus not only on the predominant words 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.

In Dermaline, Inc. u. Myra Pharmaceuticals, Inc.I2 the Court mentioned again the two tests. It held:

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. It is applied when the trademark sought to be registered contains the main, essential and dominant features of the earlier registered trademark, and confusion or deception is likely to result. Duplication or imitation is not even required; neither is it necessary that the label of the applied mark for registration should suggest an effort to imitate. The important issue is whether the use of the marks involved would likely cause confusion or mistake in the mind of or deceive the ordinary purchaser, or one who is accustomed to buy, and therefore to some extent familiar with , the goods in question. Given greater consideration are the aural and visual impressions created by the marks in the public mind , giving little weight to factors like prices, quality, sales outlets,

II G.R. No. 180073, November 25,2009 12 Dermaline, Inc. vs . Myra Pharmaceut icals , Inc., GR No. 190065, August 16,2010

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and market segments. The test of dominancy is now explicitly incorporated into law in Section 155.1of R.A. No. 8293 which provides­

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive xxx.

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Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2) types of confusion, viz.: (I) confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other; and (2) confusion of business (source or origin confusion), where, although the goods of the parties are different, the product, the mark of which registration is applied for by one party , is such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, though inexistent.

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We agree with the findings of the IPQ . As correctly applied by the IPQ in this case, while there are no set rules that can be deduced as what constitutes a dominant feature with respect to trademarks applied for registration; usually, what are taken into account are signs, color, design, peculiar shape or name, or some special, easily remembered earmarks of the brand that readily attracts and catches the attention of the ordinary consumer.

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Further, Dermaline's stance that its product belongs to a separate and different classification from Myra's products with the registered trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with the latter, especially considering that both classifications pertain to treatments for the skin.

Indeed, the registered trademark owner may use its mark on the same or similar products, in different segments of the market, and at different price levels depending on variations of the products for specific segments of the market. The Court is cognizant that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion ofhis business. Thus, we have held-

Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties, but extends to all cases in which the use

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by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of source, as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field (see 148 ALR 56 et seq; 53 Am Jur. 576) or is in any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his business (v. 148 ALR 77, 84; 52 Am. Jur. 576,577).

Thus, the public may mistakenly think that Dermaline is connected to or associated with Myra, such that, considering the current proliferation of health and beauty products in the market, the purchasers would likely be misled that Myra has already expanded its business through Dermaline from merely carrying pharmaceutical topical applications for the skin to health and beauty services.

Verily, when one applies for the registration of a trademark or label which is almost the same or that very closely resembles one already used and registered by another, the application 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 is intended not only to avoid confusion on the part of the public, but also to protect an already used and registered trademark and an established goodwill.

We now come to the marks of the parties:

TRIMYCIN TRIM Opposer's Mark Respondent-Applicant's Mark

A perusal of the marks of the parties would show that the apparent similarity is the use by Respondent-Applicant of the letters "T-R-I-M" which compose its mark itself and which letters appear in Opposer's mark TRIMYCIN. However, the adoption of similar words does not automatically make the marks confusingly similar as shown in the many cases decided by the Supreme Court.

In the Emerald Case!", the Court did not find confusing similarity between the marks "LEE" and "STYLISTIC MR. LEE" although both marks use the word "LEE". In ruling so, the court said that the issue of confusing similarity between trademarks is resolved by considering the distinct characteristics of each case . The similarities in the trademarks in "LEE" and "STYLISTIC MR. LEE" were not sufficient as to likely cause deception and confusion tantamount to infringement.

IJ Emerald Garment Manufacturing v, Court of Appe als, G.R . No. 100098, Decemb er 29,1995

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In the earlier case of Fruit of the Loom, Inc. u. Court of Appeals, et. AI.14, the Court also did not find similarity between the marks FRUIT OF THE LOOM and FRUIT FOR EVE even if they both contain the word FRUIT. It held:

In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is FRUIT. We agree with the respondent court that by mere pronouncing the two marks, it could hardly be said that it will provoke confusion, as to mistake one for the other. Standing by itself, FRUIT OF THE LOOM is wholly different from FRUIT FOR EVE. We do not agree with petitioner that the dominant feature of both trademarks is the word FRUIT for even in the printing of the trademark in both hang tags, the word FRUIT is not at all made dominant over the other words .

In Seri Somboonsakdikul u. Orlane S.A.,15 the Supreme Court also used the dominancy test but ruled that LOLANE and ORLANE are not confusing similar even if the competing marks used the identical suffix "lane". The Court held:

However, while we agree with the CA's use of the dominancy test, we arrive at a different conclusion. Based on the distinct visual and aural differences between LOLANE and ORLANE, we find that there is no confusing similarity between the two marks. The suffix LANE is not the dominant feature of petitioner's mark. Neither can it be considered as the dominant feature of ORLANE which would make the two marks confusingly similar.

First , an examination of the appearance of the marks would show that there are noticeable differences in the way they are written or printed as shown below:

As correctly argued by petitioner in his answer before the BLA, there are visual differences between LOLANE and ORLANE since the mark ORLANE is in plain block upper case letters while the mark LOLANE was rendered in stylized word with the second letter L and the letter A co-joined.

Second, as to the aural aspect of the marks, LOLANE and ORLANE do not sound alike. Etepha v. Director of Patents, et al. finds application in this case. In Etepha, we ruled that there is no confusing similarity between PERTUSSIN and ATUSSIN. The Court considered among other factors the aural differences between the two marks as follows:

5. As we take up Pertussin and Atussin once again, we cannot escape notice of the fact that the two words do not sound alike-when pronounced. There is not much phonetic similarity between the two. The Solicitor General well-observed that in Pertussin the pronunciation

IJ G.R. No. L-32747. November 29, 1984. 15 G.R. No. 188996 , February 1,2017.

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of the prefix "Per", whether correct or incorrect, includes a combination of three letters

P, e and r,' whereas, in Atussin the whole starts with the single letter A added to suffix "tussin" , Appeals to the ear are dissimilar. And this, because in a word combination, the part that comes first is the most pronounced. An expositor of the applicable rule here is the decision in the Syrocol-Cheracol controversy. There, the ruling is that trademark Syrocol (a cough medicine preparation) is not confusedly similar to trademark Cheracol (also a cough medicine preparation). Reason: the two words "do not look or sound enough alike to justify a holding of trademark infringement" , and the "only similarity is in the last syllable, and that is not uncommon in names given drug compounds".

Similar to Etepha, appeals to the ear in pronouncing ORLANE and LOLANE are dissimilar. The first syllables of each mark, i.e., OR and LO do not sound alike, while the proper pronunciation of the last syllable LANE-"LEYN" for LOLANE and "LAN" for ORLANE, being of French origin, also differ. We take exception to the generalizing statement of the Director General, which was affirmed by the CA, that Filipinos would invariably pronounce ORLANE as "ORLEYN." This is another finding of fact which has no basis, and thus, justifies our reversal of the decisions of the IPO Director General and the CA. While there is possible aural similarity when certain sectors of the market would pronounce ORLANE as "ORLEYl\J," it is not also impossible that some would also be aware of the proper pronunciation--especially since, as respondent claims, its trademark ORLANE has been sold in the market for more than 60 years and in the Philippines, for more than 40 years.

Respondent failed to show proof that the suffix LANE has registered in the mind of consumers that such suffix is exclusively or even predominantly associated with ORLANE products. Notably and as correctly argued by petitioner, the IPO previously allowed the registration of the mark GIN LANE for goods also falling under Class 3, i.e., perfume, cologne, skin care preparations, hair care preparations and toiletries .

We are mindful that in the earlier cases of Mighty Corporation and Emerald, despite a finding that there is no colorable imitation, we still discussed the nature of the goods using the trademark and whether the goods are identical, similar, competing or related. We need not belabor a similar discussion here considering that the essential element in determining likelihood of confusion, i.e.. colorable imitation by LO LANE of the mark ORLANE, is absent in this case. Resemblance between the marks is a separate requirement from, and must not be confused with, the requirement of a similarity of the goods to which the trademarks are attached. In Great White Shark Enterprises, Inc v. Caralde , Jr., after we ruled that there was no confusing similarity between Great White Shark's "GREG NORMAN LOGO" and Caralde's "SHARK. & LOGO" mark due to the visual and aural dissimilarities between the two marks, we deemed it unnecessary to resolve whether Great White Shark's mark has gained recognition as a well-known mark.

Finding that LOLANE is not a colorable imitation of ORLANE due to distinct visual and aural differences using the dominancy test, we no longer find it necessary to discuss the contentions of the petitioner as to the appearance of the marks together with the packaging, nature of the goods represented by the marks and the price difference, as well as the applicability of foreign judgments. We rule that the mark LOLANE is entitled to registration.

In this case , the marks of the parties are both word marks that appeal to the visual sense. While Respondent-Applicant's mark is the word "T-R-I-M" itself which is identical to first four (4) letters of Opposer's mark, they can be distinguished from one another. Opposer's mark consists of eight (8) letters divided into three (3) syllables "TRI-MY-CIN". The word TRIM means "to remove by or as if by cutting". 16 On the other hand, the word TRIMYCIN is a skin antibiotic that contains neomycin, bacitracin, and polymyxin where the mark was derived from. 17 Thus, the similarity is lost in the substantial differences in the spelling and meaning of the marks . The ordinary purchaser must be thought of as having, and credited with, at least a modicum of intelligence to be able to see the obvious differences between the two trademarks in question.

In addition, the Respondent-Applicant's TRIM mark is also aurally different from that of Opposer's mark such that even if the marks are advertised over the radio , the public will not confuse one from the other. In actual trade , buyers do not merely rely on the visual representation of a mark but also on its phonetic articulation. The sound or verbalization of a mark plays an important part in its recognition by the public. Aside from visual advertising, most businesses rely on word of mouth in building its goodwill and reputation. Loyal and satisfied customers often recommend a product by word of mouth . Thus, the goodwill created by trademarks likewise spreads, transfers and is conveyed by word of mouth, as applied in the actual conditions in the market.P In this case , customers who are familiar with TRIMYCIN will not be misled into thinking that TRIM is associated with Opposer.

Anent the second condition of the proscription which is the similarity of goods or services, both Opposer's and Respondent-Applicant's goods belong to Class 5. However, even if they belong to the same class, they are different as they as used for different purposes. Opposer TRIMYCIN is a topical medicine used for skin diseases while that of Respondent-Applicant's TRIM mark will be used for intractable disease. When the pharmaceutical products are prescribed by doctors and purchased in drugstores or pharmacies, confusion and mistake is unlikely because they treat different disease. Even if they are available as an OTC drug, the buyer will not be confused into buying TRIM if what he has in mind is Opposer's TRIMYCIN.

16 hnps :llwww .merri am-webster.comldictionary /trim <last accessed 12 April202J > 17 hnps:llwww.webmd.comJdrugs /2/drug-61242/trimycin-topical/details <last accessed 12 April 2021>

18 Decision No. 2017-382, IPe NO. 14-2016-000681 , 16 November 2017 , page 4.

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Aptly, the essence of trademark registration is to give protection to the owners of trademarks. 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. Respondent-Applicant's mark met this function and therefore can be registered.

WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the filewrapper of Trademark Application Serial No. M11411062, together with a copy of this Decision, be returned to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

Taguig City, ~ 1 ~I\\{ 1\J'2.'

MAR ~~~litL.M' Bureau of Legal Affairs

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