Please be informed that Decision No dated June 29, 2018 (copy enclosed) was promulgated in the above entitled case.

Transcription

1 INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES SUYEN CORPORATION, Opposer, IPCNo Opposition to: Appln. No Date Filed: 09 December 2015 TM: "PUREDAY" -versus- MANDOM CORP., Respondent- Applicant. NOTICE OF DECISION MIGALLOS & LUNA LAW OFFICES Counsel for Opposer 7th Floor, the PHINMA Plaza 39 Plaza Drive, Rockwell Center Makati City E.B. ASTUDILLO & ASSOCIATES Counsel for Respondent-Applicant Citibank Center, 10th Floor 8741 Paseo de Roxas Makati City GREETINGS: Please be informed that Decision No dated June 29, 2018 (copy enclosed) was promulgated in the above entitled case. Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No 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, June 29, MARILYN F. RETUTAL IPRS IV Bureau of Legal Affairs mail@ipophil.gov.ph Intellectual Property Center #28 Upper McKinley Road McKinley Hill Town Center

2 INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES SUYEN CORPORATION, -versus- Opposer, } MANDOM CORP., } Respondent-Applicant. } } } -x IPC No Opposition to: Application No Date Filed: 09 December 2015 Trademark: "PUREDAY" Decision No DECISION SUYEN CORPORATION1 ("Opposer") filed an opposition to Trademark Application Serial No The application, filed by Mandom Corp.2 ("Respondent-Applicant"), covers the mark "PUREDAY" for use on "hair bleaches; hair colorants; hair dyes; hair care preparations; hair styling preparations; hair fixers; hair wax; hair setting foams; hair setting gels; hair setting water; hair mist; pomade for cosmetic purposes; hair pomades; hair lotions; hair tonics; hair creams; oils for hair conditioning; hair spray; hair shampoos; hair rinses; hair conditioners; perfumes; aromatics [essential oils]; room fragrances; scented room sprays; eau de cologne; essential oils; tissues impregnated with fragrance; talcum powser, for toilet use; cosmetics; antiperspirants [toiletries]; deodorants for personal use; cosmetic preparations for skin care; skin whitening creams; skin moisturizer; face wash foams; skin lotions; skin milks; skin creams; make-up preparations; lipstick and lip color preparations; mascara; eyebrow cosmetics; eyeliner; make-up powder; cheek colors; eye shadoxvs; beauty masks; make-up removing preparations; cleansing lotion for toilet purposes; facial cleanser for toilet purposes; nail polish; nail care preparations; nail polish removers; false nails; tissues impregnated with cosmetic lotions; paper sheet impregnated with deodorant skin lotions and body powder (non-medicated), depilatory preparations; soaps; dentrifices; non-medicated bath preparations, namely, bath liquid, bath gel, bath powder, bath salt and bath tablet; cologne water; roll-on deodorants for personal use; foot deodorant spray; soaps for body care; deodorant soaps; antiperspirant soap; soap for foot perspiration; after-shave preparations; shaving preparations; paper sheet impregnated with facial cleanser for toilet purposes; absorbent facial tissues; lip creams; nose pore strips; shower gels" under Class 3 of the International Classification of Goods and Services.3 The Opposer alleges: XXX 'With address at Bench Tower, 30th St., corner Rizal Drive, Crescent Park West 5, Bonifacio Global City, Taguig City. 2With address at 5-12, Juniken-Cho, Chuo-ku, Osaka, Japan. 3The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based on multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning th<p<^ International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in X Q mail@ipophil.gov.ph Intellectual Property Center #28 Upper McKinley Road McKinlev Hill Town Center

3 "4.1 Opposer Suyen has been the registered owner of the PURE PLAY trademark since 2 September It has continuously used the said trademark for over ten years. "4.2 As owner of the PURE PLAY mark, Suyen has the legal right to prevent all third parties from using without its consent, in the course of trade or business, a mark that is identical or similar thereto, Section of the Intellectual Property Code provides: xxx "4.3 Section (d) of the Intellectual Property Code provides that a mark cannot be registered if it: xxx "4.4 Based on the above-quoted provision, the PUREDAY mark should not be registered because it is confusingly similar to Suyen's PURE PLAY trademark. "4.5 In determining confusing similarity, the Supreme Court has applied the idem sonans rule. This provides that phonetic and aural similarities of words in the mark must be taken into account. In the case of McDonalds Corporation v. L.C. Big Mak Burger, Inc. xxx "4.6 Applying the foregoing idem sonans principle, it is clear that the PUREDAY mark is confusingly similar with the PURE PLAY mark. The first syllable of both marks use the same word: PURE. As to the second half of the marks, aurally, the '- AY' in the words 'DAY' and 'PLAY' are pronounced the same way. The marks actually only differ in one aspect: the letter 'D' and the consonant blend 'PL'. "4.7 In the case of Skechers, USA, Inc. v. Inter Pacific Industrial Trading Corp. 646 SCRA 448, 455 (28 March 2011), the Court noted the development of two tests to determine the similarity and likelihood of confusion of marks. These are the Dominancy Test and the Holistic Test, thus: xxx "4.8 Under the Dominancy test, there is infringement and likelihood of confusion in the market when there is similarity in the prevalent features of the competing trademarks (Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc., 354 SCRA 434 [2001]). The test 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, xxx provides: xxx "4.9 The Dominancy Test is part of the Intellectual Property Code which "4.10 The Supreme Court has held in numerous cases that '[w]here a trade mark contains a dominating or distinguishing word, and the purchasing public has come to know and designate the article by such dominating word, the use of such word by another in marking similar goods may constitute infringement though the marks aside from such dominating word may be dissimilar' xxx "4.11 Applying the Dominancy Test, it is clear that the PUREDAY mark infringes on the PURE PLAY mark of opposer Suyen. Under said test, as codified in the IP Code, even a colorable imitation is sufficient for trademark infringement xxx

4 "4.12 In this case, PUREDAY is a colorable imitation of PURE PLAY, as it copies the main, essential, dominant features of opposer Suyen's PURE PLAY mark. The difference between both marks, i.e. 'PLAY' and 'DAY' is insignificant. The two marks, even with the said difference, are similar visually and aurally. Indeed, in the market, especially where the PUREDAY and PURE PLAY products are set side-by-side with each other, the consumer cannot distinguish one from the other or cannot see that PUREDAY is not related to PURE PLAY and/ or Suyen. "4.13 The fact that the marks are not identical does not preclude the existence of trademark infringement, x x x "4.14 Even under the Holistic Test, where competing marks are compared as they appear in their respective labels or packaging, respondent-applicant's mark is confusingly similar with opposer's PURE PLAY mark, x x x "4.15 What is undeniable is the fact that when a manufacturer such as respondent-applicant prepares to package his product he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from others. When as in this case, respondent-applicant chose, without a reasonable explanation, to use the word PUREDAY though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive, x x x "4.16 It must be stressed that respondent-applicant seeks to register its mark under the same classification of goods (Class 3 eau de cologne; essential oils; tissues impregnated with fragrance, etc.) as Suyen's PURE PLAY trademark (Class 3 body spray, deo body spray, lotion, body cream, shower gel, eau de toilette, eau de cologne). The products covered by the competing marks are the same. This highlights the likelihood of confusion, if not actual confusion, created by the use of respondent-applicant's mark. Respondent-Applicant's mark will confuse the public and mislead them into thinking that the goods bearing the PUREDAY mark are among the PURE PLAY products of Suyen, or are a sub-collection or innovation of PURE PLAY under the Blue and Pink collections, or that they originated from or under the sponsorship of Suyen. "4.17 The two marks are not only very similar aurally and visually, they also refer to goods sold within the same channels of trade and industry. "4.18 There will be 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 products of opposer; and confusion of business (source or origin confusion), where, although the goods of the parties are different, the product bearing the mark PUREDAY might be reasonably assumed to originate from opposer, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, although inexistentx x x x "4.19 Opposer, as owner of the PURE PLAY, has the exclusive right to prevent all third parties, including respondent-applicant, from using in the course of trade all identical or similar marks. "4.20 Opposer has been using the PURE PLAY mark for over ten years, since February It applied for the registration of said mark on 15 March 2010, registration was granted on 2 September 2010.

5 "4.21 Opposer has also extensively used the PURE PLAY trademark as an integral part of its business and continues to exert substantial efforts and tremendous amounts for the promotion of PURE PLAY. "4.22 There is no doubt that opposer has been damaged and will continue to be damaged by the use of respondent-applicant's mark. It has acquired extensive goodwill through the continued use and promotion of the said mark. The registration of respondent-applicant's mark will cause substantial and irreparable damage to Suyen. "4.23 It must be stressed that it is the x x x "4.24 Section 168 of the Intellectual Property Code prohibits unfair competition, thus: x x x "4.25 The continued use of the PUREDAY mark will clearly confuse consumers into believing that it is part of opposer's product lines and/or are manufactured by or under the sponsorship of opposer. Even assuming that respondentapplicant has no intention to unfairly compete, the subject mark may be used for unfair competition and is unfairly competing with opposer's PURE PLAY mark and products. The Opposer's evidence consists of the Affidavit of Ms. Kristine Anne C. Lim, Suyen's Assistant Vice President-Brand Marketing; copy of the Certificate of Registration No for the PURE PLAY trademark; photos of the Suyen's PURE PLAY product as sold in the market; printouts of Suyen's webpages featuring the Blue and Pink Collection including the PURE PLAY deo body spray; printouts of Suyen's Facebook posts featuring the Blue and Pink Collection, including the PURE PLAY deo body spray; and copy of an advertisement of Suyen's PURE PLAY deo body spray.4 This Bureau issued a Notice to Answer and served a copy thereof upon Respondent-Applicant on 28 September Said Respondent-Applicant, however, did not file an Answer. PUREDAY? Should the Respondent-Applicant be allowed to register the trademark The Opposer anchors its opposition on the following provisions of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code"): Sec. 123.Registrability 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 'Marked as Exhibits "A" to "F", inclusive.

6 (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;" Sec. 147.Rights Conferred 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. Records show that at the time the Respondent-Applicant filed its trademark application on 9 December 2015, the Opposer has existing trademark registration for PURE PLAY under Trademark Reg. No issued on 2 September This registration covers "body spray, deo body spray, lotion, body cream, shower gel, eau de toilette, eau de cologne" in Class 3. This Bureau noticed that the goods indicated in the Respondent-Applicant's trademark application are similar and/or closely related to the Opposer's. The competing marks are reproduced below: PURE PLAY PUREDAY Opposer's trademark Respondent-Applicant's mark Confusion is likely in this instance because of the close resemblance between the marks and that the goods are the same or intimately related as they are both personal care products in Class 3. PUREDAY appears and sounds almost the same as Opposer's trademark PURE PLAY. Both PURE PLAY and PUREDAY marks have the same first syllable PURE. The six (6) letters of both marks are the same. Both have the word PURE and the same last two letters "AY". Respondent-Applicant merely changed the 5th letter "P" and 6th letter "L" in Opposer's PURE PLAY with the letter "D" to make a one-word mark and come up with the mark PUREDAY. It could result to mistake with respect to perception because the marks sound so similar. Under the idem sonans rule, the following trademarks were held confusingly similar in sound: "BIG MAC" and "BIG MAK"5, "SAPOLIN" and LUSOLIN"6, "CELDURA" and "CORDURA"7, "GOLD 5MacDonalds Corp, et. alv. L. C. Big MakBurger,G.R. No. L ,18 August2004. Sapolin Co. v. Balmaceda and Germann&Co,m 67 Phil, Co TiongSA v. Director ofpatents, G.R. No.L- 5378, 24 May 1954; Celanes Corporation ofamerica vs. E. 1. Du Pontde Nemours & (1946), 154F.2d )

7 DUST" and "GOLD DROP". The Supreme Court ruled that similarity of sound is sufficient ground to rule that two marks are confusingly similar, to wit: Two letters of "SALONPAS" are missing in "LIONPAS": the first letter a and the letter s. Be that as it may, when the two words are pronounced, the sound effects are confusingly similar. And where goods are advertised over the radio, similarity in sound is of especial significance..."salonpas" and "LIONPAS", when spoken, sound very much alike. Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties.8 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.9 This Bureau finds that the mark applied for registration by the Respondent-Applicant does not meet this function. In conclusion, the subject trademark application is covered by the proscription under Sec (d) (iii) of the IP Code. WHEREFORE, premises considered, the instant Opposition to Trademark Application No is hereby SUSTAINED. Let the filewrapper of the subject trademark application be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action. SO ORDERED. TaguigCitv. 5PHINE C. ALON Adjudication Officer, Bureau of Legal Affairs MarvexCommerical Co., Inc. v.petrahawpia& Co., et. al, G.R. No. L-19297,22 Dec Pribhdas J. Mirpuri v. Court ofappeals, G.R. No , 19 November 1999, citing Ethepa v. Director ofpatents, supra, Gabriel v. Perez, 55 SCRA 406 (1974). See also Article 15, par. (1), Art. 16, par. (1), of the Trade Related Aspects of Intellectual Property (TRIPS Agreement).