iPINTELLECTUAL PROPERTYPHiliPPINES

} Inter Partes Case No. 14-2008-00010} Case Filed 14 January 2008} Opposition to:}}}}

SANOFIPASTEUR, }Respondent-Applicant. }

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TAKEDA PHARMACEUTICALCOMPANY LIMITED,

Opposer,

Appl'n. Serial No. : 4-2006-010999Date Filed 06 October 2006Trademark : "PREV AXIM"

Decision No. 200q - /Z..r-

This is an opposition to the registration of the mark "PREVAXIM" bearingapplication Serial No. 4-2006-010999 filed on 06 October 2006 covering the goods"pharmaceutical preparations in the form of pediatric vaccines" falling under class 5 ofthe International Classification of goods which trademark application was published foropposition in Intellectual Property Philippines (IPP) Electronic Gazette (E-Gazette),which was officially released for circulation on 14 September 2007.

The Opposer in the instant case is "TAKEDA PHARMACEUTICAL COMPANYLIMITED", a corporation duly organized and existing under and by virtue of the laws ofJapan with business address at 1-1, Doshomachi 4-chome, Chuo-ku, Osaka, Japan.

On the other hand, the Respondent-Applicant is "SANOFI PASTEUR", withaddress at NO.2 Avenue Pont Pasteur 69007 Lyon, France.

"1. The Respondent-Applicant's marlr PREV AXIM is confusinglysimilar, visually and aurally to Opposer's registered markPREVACID. The adoption by Respondent-Applicant of theidentical first and second syllable "Preva" as well as the overallsimilar pronunciation of the mark PREVAXIM to PREVACID islikely to create confusion to the public.

"2. The Opposer's mark PREVACID was adopted by Opposer evenprior to the filing of Respondent-Applicant's trademark forPREV AXIM in 2006. Moreover, both the Opposer's products andRespondent-Applicant's products fall under the same class 5 forpharmaceutical products. Hence, Opposer's mark should beprotected on the basis of Section 123.1 (d) of Repu blic Act NO-~8293, which states, to wit: / I

d·Republic of the Philippines

INTELLECTUAL PROPERTY OFFICE351 Sen. Gil Puyat Ave., Makati City 1200 Philippines· www.ipophil.gov.ph

Telephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

"Sec. 123. Registrability - 123.1. A mark cannot beregistered if it:

(d) Is identical with a registered mark belonging toa different proprietor or mark with an earlierfiling or priority date, in respect of:

(iii) If it nearly resembles such a mark asto be likely to deceive or causeconfusion;"

"3. The mark PREVACID is known in many countries to be owned bythe Opposer and its subsidiaries TAP Pharmaceuticals,Incorporated a U.S. Corporation and TAP HOLDINGS INC., a U.S.Corporation. It is registered in countries worldwide. Hence, theregistration of a confusingly similar trademark PREV AXIM forgoods in class 5 will be a breach of the clear provision of Section123.1 (f) of Republic Act No. 8293 on well-known marks. Section123.1 (f) of R.A. 8293 provides:

Section 123. Registrability. - 123.1. A markcannot be registered if it:

(e) Is identical with, or confusingly similar to, orconstitutes a translation of a mark which isconsidered by the competent authority of thePhilippines to be well-known internationally and in thePhilippines, whether or not it is registered here, asbeing already the mark of a person other than theapplicant for registration, and used for identical orsimilar goods or services: Provided, That indetermining whether a mark is well-known, accountshall be taken of the knowledge of the relevant sectorof the public, rather than of the public at large,including knowledge in the Philippines which hasbeen obtained as a result of the promotion of themark; (underscoring supplied)

(f) Is identical with, or confusingly similar to, orconstitutes a translation of a mark considered well~

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known in accordance with the preceding paragraph,which is registered in the Philippines with respect togoods or services which are not similar to those withrespect to which registration is applied for: Provided,That use of the mark in relation to those goods orservices would indicate a connection between thosegoods or services, and the owner of the registeredmark: Provided further, That the interests of the ownerof the registered mark are likely to be damaged bysuch use; (underscoring supplied)

Certified true copies of the trademark registrations and applicationsfor PREVACID in various countries will be presented as part ofOpposer's evidence.

"4. The adoption by Respondent-Applicant of the mark PREVAXIMcreates the same overall impression as Opposer's markPREVACID which diminishes and dilutes the distinctiveness ofOpposer's mark PREVACID.

"5. The appropriation by Respondent-Applicant of the confusinglysimilar mark PREVAXIM is also likely to cause on the part of themedical community or the consumers who may think that theRespondent-Applicant's products are related to or sponsored bythe Opposer because of the identical first and second syllables"Preva", which are identified to Opposer's line of pharmaceuticalproducts bearing the marks PREVACID and PREVACI FDT. Thepublic may, therefore, associate Respondent-Applicant'sPREV AXIM to be another line of Opposer's pharmaceuticalproducts, or that Opposer has branched out to pediatric vaccines.

Opposer is the owner of the mark PREVACID and is the proprietorof various trademark registrations and applications for PREVACIDin various countries, including the Philippines for "pharmaceuticalpreparations for the treatment of gastrointestinal disorders".

PREVACID has been approved for use for over 12 years now foracid related conditions, such as relief of heartburn associated withacid reflux diseases, the healing of erosive esophagitis; and thetreatment of certain types of ulcers.

PREVACID was first sold in the Philippines on October 17, 1994" kflv/while PREVACID FDT was first sold in the Philippines on January"f

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31, 2005 by Boie-Takeda Chemicals, Inc. under license of TakedaPharmaceuticals Co., Ltd.

"4. In the Philippines, Opposer is the owner of the valid and existingcertificates of trademark registration such as (a) Philippine TMRegistration No. 4-1995-099596 for PREVACID issued on 19 July2000 for pharmaceutical preparations in class 5; and (b) PhilippineTM Registration No. 4-2003-010800 for PREVACID FDT issued onMay 13, 2006 also for pharmaceutical preparations in class 5.

"5. The pharmaceutical products bearing the marks PREVACID andPREVACID FDT are used, advertised and promoted in thePhilippines and in other countries. Samples of the advertisementsand information showing worldwide sales will be part of Opposer'sevidence.

"6. Both Opposer's PREVACID and Respondent-Applicant'sPREV AXIM are used by pediatric patients. Hence, thelikelihood of confusion exists.

"7. PREVAXIM may also be considered to be another line ofOpposer's pharmaceutical products, or that Opposer has branchedout to pediatric vaccines because of the use of the identical firstand second syllables "Preva".

"8. PREVACID is an arbitrary coined word which was adopted by theOpposer, and which does not have any particular meaning in thepharmaceutical industry. Thus, as the original creator of the markPREVACID, Opposer is entitled to protection against a confusinglysimilar mark PREVAXIM.

Exhibit DescriptionCertified true copy of Thailand TM

Exhibit "A" Registration NO. 427316 for PREVACIDwith the verified English translation.

Certified true copy of Singapore TMExhibit "8" Registration No. T93103356A for

PREVACID

Exhibit "C" Notarization of the Affidavit Testimony ofAntionette Lachat.

Exhibit "0" List of trademark applications and/orregistrations for PREVACID

Certified true copy of Germany TMExhibit "0-1" Registration No. 2102269 for PREVACID

with its verified English translation

Certified true copy of Switzerland TM

Exhibit "0-2" Registration Certificate No. 390366 forPREVACID with its verified Englishtranslation

Certificate of the Philippines TrademarkExhibit "E" Registration Certificate No. 4-1995-099596

for PREVACID

Certificate of the Philippines TrademarkExhibit "F" Registration Certificate No. 4-2003-010800

for PREVACID FDT

Authenticated Affidavit of Hiroshi Akimoto,Exhibit "G" Managing Director of Takeda

Pharmaceutical Company Limited

Exhibits "H" to "H-5" Actual label and sample advertisementsfor PREVACID and PREVACID FDT

On May 30, 2008, Respondent-Applicant filed its Verified Answer whereby itdenied all the material allegations of the opposition and further alleged the following asits special and affirmative defenses

"1. Respondent-Applicant repleads and incorporate herein theforegoing denials by reference.

"2. Respondent-Applicant, SANOFI PASTEUR, is a company dulyorganized and existing under the laws of France having beenestablished since 1897.

"3. Being owner of the mark, PREVAXIM, Respondent-Applicant has,as early as 2006, sought the registration of the same of theattached list of countries (see portfolio).

"4. In the Philippines, the present application for registration of themark, PREVAXIM has been allowed by this Honorable Office.

"5. The Opposition should be dismissed and Respondent-Applicant'sApplication Serial No. 4-2006-010999 should be granted for thefollowing reasons:

(a) Respondent-Applicant's PREVAXIM mark is clearly andevidently dissimilar in sound and meaning to Opposer'sPREVACID mark definitely will not have the alleged effect Oft

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deceiving the public into believing that Respondent-Applicant's mark is associated with Opposer.

(b) In spelling, appearance, pronunciation and presentation, thetwo marks are easily set apart and distinguishable from eachother.

(c) The prefix, "PREV" or "PREVAil (see SAEGIS worldwidesearch report) which means "preventive" is common andusual in pharmaceutical products. In fact, the same isdescriptive of the kind and/or intention purpose of the goodson which it is used. As such, Opposer may not exclusivelyappropriate the same.

(d) Respondent-Applicant's goods bearing the mark PREVAXIMwith commercially distinguishable from those of theOpposer's goods which uses the mark PREVACID. WhileOpposer's goods cover pharmaceutical preparation for thetreatment of gastrointestinal disorders, Respondent-Applicant's PREV AXIM is used on pharmaceuticalpreparations in the form of pediatric vaccines.

(e) It has been held in numerous cases decided by the SupremeCourt that danger of confusion is remote or unlikely when thecompeting goods are pharmaceutical products becausepurchasers are more wary of the nature of goods wherewhat they are buying are medicines. (See Etepha vs.Director of Patents, 16 SCRA 495 and AmericanCyanamind Co., vs. Director of Patents, as cited in thebook, Trademark Law and Practice in the Philippines,Agpalo)

(f) Hence, no likelihood of confusion, whether or the goods or ofthe origin, exists or will exist.

(g) Through its future promotional efforts to establish its quality-built reputation and image coupled with the actual high-quality nature of its products, Respondent-Applicant will beable to promote its trademark PREVAXIM.

"6. To corroborate the truth of the foregoing and to further testify onRespondent-Applicant's right to the trademark PREVAXIM, Mr.Enguerrand Nardone, the Respondent-Applicant Company's(Corporate Trademark Director) has submitted his Affidavit~

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testimony which is attached and made an integral part hereof asExhibit "2".

Respondent-Applicant submitted the following as its exhibits in support of itstrademark application subject of the instant opposition.

-- ---Exhibit Description

Exhibit "1" Print-out of web address of theRespondent-Applicant

Exhibit "2" Affidavit-Testimony of Respondent-Applicant's witnessList of countries where Respondent-

Exhibit "3" Applicant has registrations and pendingapplications.SAEGIS Worldwide report to show that theprefix "PREV" or "PREVA" which mens

Exhibit "4" preventive is descriptive and commonwhich may not be exclusivelyappropriated.

WHETHER OR NOT THE THE MARK "PREVAXIM" OFTHE RESPONDENT-APPLICANT IS CONFUSINGLY SIMILARWITH THE MARK "PREVACID" OF THE OPPOSER.

The applicable provision of the law is Section 123.1 (d) of Republic Act No. 8293,which provides:

(d) Is identical with a registered mark belonging toa different proprietor or mark with an earlierfiling or priority date, in respect of:

If it nearly resembles such a mark a~to be likely to deceive or causeconfusion;

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The contending trademarks of the parties are reproduced below for comparisonand scrutiny.

PREVACID PREVAXI~

As can be gleaned from a side-by-side comparison of the competing trademarksabove, is the obvious similarity in their very salient prefix PREVA which forms the firstand second syllables of both marks and the suffix CID and XIM consisting of the middleletter "I" is identical for the two marks also

In the case "Etepha AG vs. Director of Patents and WestmontPharmaceuticals, Inc., (G.R. No. L-20635, March 31, 1966) the Supreme Court heldthat in a word combination the part that comes first is the most pronounced.

In the case at bar, the most pronounced and visible part of the two marks is theprefix PREVA, the first and second syllables in both trademarks, PREVACID andPREVAXIM.

The suffix of the Respondent-Applicant's mark "XIM" bears a striking auralresemblance to the suffix of the Opposer's trademark "CID" as both marks has thecommon letter "i" in the middle. In totality, the two competing trademarks has twoletters only that are not the same or identical. "X" and "M" for the Respondent-Applicant's marks "PREVAXIM" and "C" and "D" for the Opposer's mark "PREVACID".

With the circumstances stated above, the Bureau of Legal Affairs is convincedthat there are visual and aural similarities between the two contending trademarks,hence, would create a likelihood of confusion.

Another vital point to be taken into consideration is the fact that the contendingtrademarks are being used on goods falling under the same class 5 of the internationalclassification of goods particularly "pharmaceutical products and substances for humanuse and for pediatric patients."

The use by the Respondent-Applicant of the "PREVAXIM" which is visually andaurally similar to Opposer's mark "PREVACID" is likely to lead that the products of theRespondent-Applicant are either related to or sponsored by the Opposer due to theJ1A~similarities of the two trad emarks of the parties and the close relation of the goods. ~-i

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It is likewise worthy to be noted that the Opposer's mark "PREVACID" has beenregistered with the Intellectual Property Philippines (IPP) bearing Registration NO. 4-1995-099596 on July 19, 2000 covering the goods "medical products for treatingdisorders of the gastrointestinal tract," class 5 (Exhibit "E").

The Supreme Court in "Chuan ,chow Soy & Canning Co., vs. Director ofPatents and Villapanta (G.R. No. L-13947, 108 Phil. 833) held:

"When one applies for the registration of a trademark or labelwhich is almost the same or very closely resembles one alreadyused and registered by another, the application should be rejectedand dismissed outright, even without any opposition on the part ofthe owner and user of a previously registered label or trademark,this not only to avoid confusion on the part of the public, butalso to protect an already used and registered trademark andan established goodwill."

The determinative factor in a contest involving registration of trademark is notwhether the challenge mark would actually cause confusion or deception of thepurchasers, but whether the use of such mark would likely cause confusion or mistakeon the part of the buying public. In short, to constitute an infringement of an existingtrademark and warrant a denial of an application for registration, the law does notrequire that the competing trademarks must be so identical as to produce actual error ormistake, it would be sufficient, for purpose of the law, that the similarity between the twolabels is such that there is a possibility or likelihood of the purchaser of the older brandmistaking the newer brand for it. (American Wire & Cable Company vs. Director ofPatents et. aI., [31 SCRA 544][G.R. No. L-26557, February 18, 1970])

Considering therefore that Opposer's mark is a registered one with theIntellectual Property Philippines (IPP), the same should be protected and Section 138 ofRepublic Act No. 8293 provides:

"Section 138. Certificate of Registration - A certificate ofregistration of a mark shall be prima facie evidence of the validityof the registration, the registrant's ownership of the mark, and ofthe registrant's exclusive right to use the same in connection withthe goods and services and those that are related thereto specifiedin the certificate.

If Respondent-Applicant's trademark application for the mark "PREVAXIM" begranted and allowed its use on its goods, definitely would create a situation ofmisleading the public into believing that Respondent-Applicant's goods originate from,or are licensed or sponsored by Opposer or the said party is associated with or aWaffiliate of the Opposer. :0 I

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WITH ALL THE FOREGOING, the Opposition is, as it is, hereby SUSTAINED.Consequently, Trademark Application No. 4-2006-010999 filed on October 06, 2006 bySANOFI PASTEUR for the registration of the mark "PREVAXIM" is, as it is herebyREJECTED.

Let the filewrapper of the trademark "PREVAXIM" subject matter of this casetogether with a copy of this DECISION be forwarded to the Bureau of Trademarks(BOT) for appropriate action.

L ITA BELTRAN-ABELARDODirector

ureau of Legal Affairs

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