BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYA D A N G , G . R . N o .

1 8 3 4 0 4 , October 13, 2010 Facts: Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. Berris AgriculturalCo., Inc. (Berris), filed with the IPO Bureau of Legal Affairs (IPO-BLA) a Verified Notice of Opposition against the mark under application allegedly because "NS D-10 PLUS" is similar and/or confusingly similar to its registered trademark "D-10 80 WP," also used for Fungicide(Class 5) with active ingredient 80% Mancozeb.D i r e c t o r E s t r e l l i t a B e l t r a n Abelardo of the IPOB L A d e c i d e d i n f a v o r o f B e r r i s . H o w e v e r , Abyadang appealed to the CA which reversed the decision. Issues: 1.W/N there exists no confusing similarity between the marks2.W/N the cancellation of Petitioners duly registered and validly existing trademark in theabsence of a properly filed Petition for Cancellation before the Intellectual PropertyOffice is not in accord with the Intellectual Property Code and applicable Decisions of the Supreme Court. Held: First Issue The determination of priority of use of a mark is a question of fact. Adoption of the mark alonedoes not suffice. One may make advertisements, issue circulars, distribute price lists on certaing o o d s , b u t t h e s e a l o n e w i l l n o t i n u r e t o t h e claim of ownership of the mark until the g o o d s bearing the mark are sold to the public in the market. Accordingly, receipts, sales invoices, andtestimonies of witnesses as customers, or orders of buyers, best prove the actual use of a mark intrade and commerce during a certain period of time.In the instant case, both parties have submitted proof to support their claim of ownership of their respective trademarks. Berris pre sented the following evidence: (1) its trademark applicationd a t e d N o v e m b e r 2 9 , 2 0 0 2 w i t h A p p l i c a t ion No. 4-20020 0 1 0 2 7 2 ; ( 2 ) i t s I P O c e r t i f i c a t e o f registration dated October 25, 2004 and July 8, 2004 as the date of registration; (3) a photocopyo f i t s p a c k a g i n g b e a r i n g t h e m a r k " D - 1 0 80 WP"; (4) photocopies of its sales invoices a n d official receipts; and (5) its notarized DAU dated April 23, 2003, stating that the mark was firstused on June 20, 2002, and indicating that, as proof of actual use, copies of official receipts or sales invoices of goods using the mark were attached as Annex "B."Abyadangs proofs consisted of the following: (1) a photocopy of the packaging for his marketedf u n g i c i d e b e a r i n g m a r k " N S D 10 P LUS"; (2) Abyadangs Affidavit dated Febru a r y 1 4 , 2006, stating among others that the mark "NS D-10 PLUS" was his own creation derived from: N for Norvy, his name; S for Soledad, his wifes name; D the first letter for December, his birth month; 10 for October, the 10th month of the year, the month of his business nameregistration; and PLUS to connote superior quality; that when he applied for registration, therewas nobody applying for a mark similar to "NS D-10 PLUS" (3) Certification dated December 19, 2005 issued by the FPA, stating that "NS D-10 PLUS" is owned and distributed by NS Northern Organic Fertilizer,

registered with the FPA since May 26, 2003, and had been in themarket since July 30, 2003;Berris is the prior user of the mark. Berris was able to establish that it was using its mark "D-1080 WP" since June 20, 2002, even before it filed for its registration with the IPO on November 29, 2002, as shown by its DAU which was under oath and notarized, bearing the stamp of theBureau of Trademarks of the IPO on April 25, 2003, and the DAU, being a notarized document,especially when received in due course by the IPO, is evidence of the facts it stated and has the presumption of regularity, entitled to full faith and credit upon its face. The DAU is supported bythe Certification dated April 21, 2006 issued by the Bureau of Trademarks that Berris mark isstill valid and existing.According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if it is identicalwith a registered mark belonging to a different proprietor with an earlier filing or priority date,with respect to: (1) the same goods or services; (2) closely related goods or services; or (3) near resemblance of such mark as to likely deceive or cause confusion.Comparing Berris mark "D-10 80 WP" with Abyadangs mark "NS D-10 PLUS," as appearingon their respective packages, one cannot but notice that both have a common component whichis "D-10." On Berris package, the "D-10" is written with a bigger font than the "80 WP."Admittedly, the "D-10" is the dominant feature of the mark. The "D-10," being at the beginningof the mark, is what is most remembered of it. Although, it appears in Berris certificate of registration in the same font size as the "80 WP," its dominancy in the "D-10 80 WP" mark stands since the difference in the form does not alter its distinctive character.Applying the Dominancy Test, it cannot be gainsaid that Abyadangs "NS D-10 PLUS" issimilar to Berris "D-10 80 WP," that confusion or mistake is more likely to occur. Undeniably, both marks pertain to the same type of goods fungicide with 80% Mancozeb as an activeingredient and used for the same group of fruits, crops, vegetables, and ornamental plants, usingthe same dosage and manner of application. They also belong to the same classification of goodsunder R.A. No. 8293. Both depictions of "D-10," as found in both marks, are similar in size, suchthat this portion is what catches the eye of the purchaser. Undeniably, the likelihood of confusionis present.This likelihood of confusion and mistake is made more manifest when the Holistic Test isapplied, taking into consideration the packaging, for both use the same type of material (foiltype) and have identical color schemes (red, green, and white); a nd the marks are both predominantly red in color, with the same phrase "BROAD SPECTRUM FUNGICIDE" writtenunderneath. Considering these striking similarities, predominantly the "D10," the buyers of both products,mainly farmers, may be misled into thinking that "NS D-10 PLUS" could be an upgradedformulation of the "D-10 80 WP." As to the Second Issue IPO, by reason of their special knowledge and expertise over matters falling under their jurisdiction, are in a better position to pass judgment on matters regarding intellectual property. Thus, their findings of fact in that regard are generally accorded great respect, if notfinality by the courts, as long as they are supported by substantial evidence, even if suchevidence might not be overwhelming or even preponderant. It is not the task of the appellatecourt to weigh once more the evidence submitted before the administrative body and to substituteits own judgment for that of the administrative agency in respect to sufficiency of evidence.Inasmuch as the ownership of the mark D10 80 WP fittingly belongs to Berris, and because the same should not have been cancelled by the CA, we consider it proper not to belabor anymore the issue of whether cancellation of a registered mark may be done absent a petition for cancellation.

Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., GR No. 190065, August 16, 2010 Facts: Dermaline filed with the IPO an application to register the trademark Dermaline. Myra opposed this alleging that the trademark resembles its trademark Dermalin and will cause confusion, mistake and deception to the purchasing public. Dermalin was registered way back 1986 and was commercially used since 1977. Myra claims that despite attempts of Dermaline to differentiate its mark, the dominant feature is the term Dermaline to which the first 8 letters were identical to that of Dermalin. The pronunciation for both is also identical. Further, both have 3 syllables each with identical sound and appearance. Issue: W/N the IPO should allow the registration of the trademarkDermaline. NO Held: As Myra correctly posits, it has the right under Section 147 of R.A. No. 8293 to prevent third parties from using a trademark, or similar signs or containers for goods or services, without its consent, identical or similar to its registered trademark, where such use would result in a likelihood of confusion. In determining confusion, case law has developed two (2) 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 or deception. 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. Relative to the question on confusion of marks and trade names, jurisprudence noted two (2) types of confusion, viz: (1) 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 whichregistration 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. Using this test, the IPO declared that both confusion of goods and service and confusion of business or of origin were apparent in both trademarks. While it is true that the two marks are presented differently, they are almost spelled in the same way, except for Dermalines mark which ends with the letter "E," and they are pronounced practically in the same manner in three (3) syllables, with the ending letter "E" in Dermalines mark pronounced silently. Thus, when an ordinary purchaser, for example, hears an advertisement of Dermalines applied trademark over the radio, chances are he will associate it with Myras. 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. Further, Dermalines stance that its product belongs to a separate and different classification from Myras products with the registeredtrademark 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.

COFFEE PARTNERS, INC. VS. SAN FRANCISCO COFFEE AND ROASTERY, INC. G.R. No. 169504, March 3, 2010 FACTS: The petitioner holds a business in maintaining coffee shops in the Philippines. It is registered with the Securities and ExchangeCommission in January 2001. In its franchise agreement with CoffeePartners Ltd, it carries the trademark San Francisco Coffee. Respondent is engaged in the wholesale and retail sale of coffee that was registered in SEC in May 1995 under a registered business nameof San Francisco Coffee & Roastery, Inc. It entered into a joint venture with Boyd Coffee USA to study coffee carts in malls. When respondent learned that petitioner will open a coffee shop in Libis, Q.C. they sent a letter to the petitioner demanding them to stop using the name San Francisco Coffee as it causes confusion to the minds of the public. A complaint was also filed by respondents before the Bureau of Legal Affairs of the Intellectual Property Office for infringement and unfair competition with claims for damages. Petitioners contend that there are distinct differences in the appearance of their trademark and that respondent abandoned the use of their trademark when it joined venture with Boyd CoffeeUSA. The Bureau of Legal Affairs of the IPO held that petitioners trademark infringed on the respondents trade name as it registered its business name first with the DTI in 1995 while petitioner only registered its trademark in 2001. Furthermore, it ruled that the respondent did not abandon the use of its trade name upon its joint venture with Boyd Coffee USA since in order for abandonment to exist it must be permanent, intentional and voluntary. It also held that petitioners use of the trademark "SAN FRANCISCO COFFEE" will likely cause confusion because of the exact similarity in sound, spelling, pronunciation, and commercial impression of the words "SAN FRANCISCO" which is the dominant portion of respondents trade name and petitioners trademark. Upon appeal before the office of the Director General of the IPO, the decision of its legal affairs was reversed declaring there was no infringement. The Court of Appeals however set aside its decision and reinstated the IPO legal affairs decision. Petitioner contends that the respondents trade name is not registered therefore a suit for infringement is not available. ISSUE: Whether or not the petitioners use of the trademark "SANFRANCISCO COFFEE" constitutes infringement of respondents trade name "SAN FRANCISCO COFFEE & ROASTERY, INC." even if the trade name is not registered with the Intellectual Property Office (IPO). HELD: Petition denied. Registration of a trademark before the IPO is no longer a requirement to file an action for infringement as provided in Section 165.2 of RA 8293. All that is required is that the trade name is previously used in trade or commerce in the Philippines. There is no showing that respondent abandoned the use of its trade name as it continues to embark to conduct research on retailingcoffee, import and sell coffee machines as among the services for which the use of the business name has been registered. The court also laid down two tests to determine similarity and likelihood of confusion. The dominancy test focuses on similarity of the prevalent features of the trademarks that could cause deception and confusion that constitutes infringement. Exact duplication or imitation is not required. 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 consumers. 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.15 The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both marks in order that the observer may draw his conclusion whether one is confusingly similar to the other. Applying the dominancy test or the holistic test, petitioners "SANFRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SANFRANCISCO COFFEE" are precisely the dominant features of respondents trade name. And because both are involved in coffee business there is always the high chance that the public will get confused of the source of the coffee sold by the petitioner. Respondent has acquired an exclusive right to the use of the trade name "SAN FRANCISCO COFFEE & ROASTERY,INC." since the registration of the business name with the DTI in 1995.