INTELLECTUAL PROPERTYPHILIPPINES

- versus -

SANOFI-AVENTIS,Opposer,

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YUNG SHIN (PHILS.), INC., }Respondent-Applicant. }x --------------------------------------x

IPC No. 14-2007-00110Case Filed: April 24, 2007Opposition to:

Serial No. 4-2005-006445Date Filed: 11 July 2005

Trademark: "TRENAXIN"D ec iSiol'\ No. 0(',( - g/

DECISION

This pertains to a Verified Opposition filed on 24 April 2007 by hereinopposer, Sanofi-Aventis, formerly known as Sanofi-Synthelabo, a corporation dulyorganized and existing under and by virtue of the laws of France, with businessaddress at 174 Avenue de France, 75013 Paris, France, against the application filedon 11 July 2005 bearing Serial No. 4-2005-006445 for the registration of thetrademark "TRENAXIN" used for goods in Class 5 of the Classification of Goods, forpharmaceutical preparations namely, haemostatics drug, which application waspublished in the Intellectual Property Office's Official Gazette, officially released forcirculation on 05 January 2007.

The respondent-applicant in this instant opposition is Yung Shin (Phils.) Inc.with registered office address at 4th floor, Cacho Gonzales Bldg., 101 Aguirre cor.Trasierra Sts. Legaspi Village, Makati City.

The grounds for the opposition are as follows:

"1. The trademark TRENAXIN being applied for byRespondent-Applicant is confusingly similar to Opposer'strademark TRANXENE, as to be likely, when applied to orused in connection with the goods of Respondent-Applicant,to cause confusion, mistake and deception on the part of th~

purchasing public." / /

1Republic of the Philippines

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

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

"2. The registration of the trademark TRENAXIN in thename of Respondent-Applicant will violate Section 123.1,subparagraph (d) and (e) of Republic Act No. 8293,otherwise known as the Intellectual Property Code of thePhilippines and Section 6bis and other provisions of the ParisConvention for the Protection of Industrial Property to whichthe Philippines and France are parties."

"3. The registration and use by Respondent-Applicant ofthe trademark TRENAXIN will diminish the distinctivenessand dilute the goodwill of Opposer's trademark TRANXENE."

"4. The registration of the trademark TRENAXIN in thename of Respondent-Applicant is contrary to other provisionsof the Intellectual Property Code of the Philippines."

The following are the allegations of facts, to wit:

"1. Opposer is the owner of and/or registrant of and/orapplicant in many trademark registrations and/orapplications of the trademark TRANXENE around the worldunder International Class 5, more particularly for"pharmaceutical, veterinary, sanitary and dietetic products".

"2. In the Philippines, Opposer is the owner/registrant ofthe trademark TRANXENE, as follows:

TrademarkCertificate of Reg. No.Date IssuedRegistrantGoods

veterinary,

TRANXENE026977March 2, 1979Sanofi-SynthelaboPharmaceutical,

sanitary and dietaticproducts"

"3. By virtue of Opposer's prior application and/orregistration of the trademark TRANXENE in the Philippinesand its prior application and/or registration and ownership 0;rthis trademark around the world, said trademark hajj

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therefore become distinctive of Opposer's goods andbusiness."

"4. The mark TRENAXIN is confusingly similar toOpposer's mark TRANXENE for the following reasons:

a) Both marks have the common first two (2) letters,namely, T and R, and likewise use the common letters A, N,X, and E.

b) Both marks consist of eight (8) letters. Hence, viewedfrom a distance, both marks "appear" alike.

c) The last four (4) letters of the mark TRANXENE, i.e., X­E-N-E, and the last three (3) letters of the mark TRENAXIN,i.e., X-I-N, are similar in sound. Thus, the two marks soundalike when pronounced as both the start and the end of thewords phonetically similar. For all intents and purposes,therefore, the two marks are identical."

"5. By adopting the confusingly similar mark TRENAXIN forexactly the same goods, i.e., pharmaceutical preparations,that Sanofi-Aventis is internationally known for, it is obviousthat Respondent-Applicant's intention is to "ride-on" thegoodwill of Sanofi-Aventis and "pass-off" its goods as those ofSanofi-Aventis."

"6. Likewise, there is also no doubt that an ordinaryand/or casual purchaser buying under normal prevalentconditions in trade is not expected to exercise a carefulscrutiny between two (2) products bearing confusingly similartrademarks as in Opposer's trademark TRANXENE vis-a-visRespondent-applicant's trademark TRENAXIN and will mostlikely be confused and deceived to buy one product for theother."

"7. A boundless choice of words, phrases and symbols areavailable to a person who wishes to have a trademarksufficient unto itself to distinguish her product form those ofothers. There is no reasonable explanation therefore forRespondent-Applicant to use the word TRENAXIN in its markwhen the field for its selection was so broad. Responde~

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Applicant obviously intends to trade and is trading onOpposer's goodwill."

"8. The registration and use of the trademark TRENAXINby Respondent-Applicant will deceive and/or confusepurchasers into believing that Respondent-Applicant's goodsand/or products bearing the trademark TRENAXIN emanatefrom or are under the sponsorship of Opposer Sanofi-Aventis,owner/registrant of the trademark TRANXENE. This willtherefore diminish the distinctiveness and dilute the goodwillof Opposer's trademark."

"9. The allowance of Application Serial No. 4-2005-006445in the name of Respondent-Applicant will be in violation ofthe treaty obligations of the Philippines under the ParisConvention for the Protection of Industrial Property, to whichthe Philippines and France are member-states."

Subsequently, this Bureau issued a Notice to Answer dated 07 May 2007 toherein respondent-applicant Jerome Ramos of Yung Shin Phils., Inc., directing thefiling of Answer within fifteen (15) days from receipt. Said Notice was personallyreceived by Jerome Ramos on 28 May 2007. After sufficient lapse of time,respondent-applicant did not file an Answer nor any motion related thereto. Thus,pursuant to Section 11 of Office Order No. 79, series of 2005, this instantopposition case is deemed submitted for decision on the basis of the opposition,the affidavits of witnesses and the documentary evidence submitted by hereinopposer, consisting of Exhibits "A", "A-1" to "A-6". As regards Exhibits "B" to "F"with sub-markings, they are mere photocopies of the original documents.Therefore, they are inadmissible in evidence for non-compliance to Office OrderNo. 79, series of 2005 or the Amendments to the Regulations on InterPartes Proceedings, to wit:

"Section 7. Filing ofPetition or Opposition -7.1 The petition or opposition, together with theaffidavits of witnesses and originals of the documents andother requirements, shall be filed with the Bureau,provided, that in case of public documents, certifie~

copies shall be allowed in lieu of the originals. x x x"(Emphasis Supplied)

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The issue -

WHETHER OR NOT THERE IS CONFUSING SIMILARITYBETWEEN OPPOSER'S REGISTERED TRADEMARK"TRANXENE" AND RESPONDENT-APPLICANTS APPLIEDMARK "TRENAXIN", BOTH COVERING CLASS 5 GOODS.

Section. 123.1 Cd) of the Intellectual Property Code or R.A. 8293 providesthe criteria for the registration of a trademark, to wit:

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

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(d) Is identical with a registered mark belonging toa different proprietor or a mark with an earlier filing orpriority 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;(Emphasis Ours.)

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In a contest involving registration of trademark, the determinative factor isnot whether the challenged mark would actually cause confusion or deception ofthe purchasers but whether the use of the mark would likely cause confusion ormistake on the part of the buying public.

It does not require that the competing trademarks must be so identical as toproduce actual error or mistake. It is rather sufficient that the similarity betweenthe two trademarks is such that there is a possibility or likelihood of the older brandmistaking the newer brand for it.

The existence of confusion of trademark or the possibility of deception to thepublic hinges on "colorable irnttstiort', which has been defined as "such similarity i~~

form, content, words, sound, meaning, special arrangement or general appearanc~ f

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of the trademark or trade name in their overall presentation or in their essentialand substantive and distinctive parts as would likely to mislead or confuse personsin the ordinary course of purchasing the genuine article." (Emerald GarmentMfg. Corp. vs Court of Appeals, 251 SCRA 600)

In resolving the issue of confusing similarity, the law and jurisprudence hasdeveloped two kinds of tests - the Dominancy Test as applied in a litany ofSupreme Court decisions including Asia Brewery, Inc. v Court of Appeals, 224SCRA 437; Co Tiong v Director of Patents, 95 Phil. 1; Lim Hoa v Directorof Patents, 100 Phil. 214; American Wire & Cable Co. v Director ofPatents, 31 SCRA 544; Philippine Nut Industry, Inc. v Standard Brands,Inc., 65 SCRA 575; Converse Rubber Corp. v Universal Rubber Products,Inc., 147 SCRA 154; and the Holistic Test developed in Del MonteCorporation v Court of Appeals, 181 SCRA 410; Mead Johnson & Co. vN.V.J. Van Dorp, Ltd., 7 SCRA 771; Fruit of the Loom, Inc. v Court ofAppeals, 133 SCRA 405.

As its title implies, the Test of Dominancy focuses on the similarity of theprevalent features, or the main, essential and dominant features of the competingtrademarks which might cause confusion or deception.

The Holistic Test on the other hand, requires that the entirety of the marksin question be considered in resolving confusing similarity. Comparison of words isnot the only determining factor. In the case of Mighty Corporation vs E & JGallo Winery, 434 SCRA 473, "the discerning eye of the observer must focusnot only on the predominant words but also on the other features appearing inboth labels in order that he may draw his conclusion whether one is confusinglysimilar to the other.

The Honorable Supreme Court has consistently relied on the Dominancy Testin determining questions of infringement of trademark. In fact, the test ofdominancy is now explicitly incorporated into law in Section 155.1 of theIntellectual Property Code which defines infringement as the "colorableimitation of a registered mark x x x or a dominant feature thereof."

Now, as to what constitutes a dominant feature of a label, no set of rules canbe deduced. Usually, these are signs, color, design, peculiar shape or name, orsome special, easily remembered earmarks of the brand that easily attracts andcatches the eye of the ordinary consumer.

Relatively, in Marvex Commercial Co. Inc. vs Petra Hawpia & Co., 1~

SeRA 1178, the Supreme Court held: , (/

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"The following random list of confusingly similar sounds in the matterof trademarks, culled from Nims, Unfair Competition and TradeMarks, 1947, vol. 1, will reinforce our view that "SALONPAS" and"LIONPAS" are confusingly similar in sound: "Gold Dust" and "GoldDrop", "Jantzen" and "Jazz-Sea"; "Silver-splash" and "Supper-Flash";"Cascarete" and "Celborite", "Celluloid" and "Cellonite", "Charteuse"and "Charseurs", "Cutes and "Cuticlean"; "Hebe" and "Meje"; "Kotex"and "Femetex"; "Zuso" and "Hoo-hoo" Leon Amdur, In his book"Trademark Law and Practice", pp. 419-421, cites, as coming withinthe purvies of the idem sonans rule. "Yusea" and "U-C-A", "SteinwayPianos" and "Stienberg Pianos" and "Seven-Up" and "Lemon-Up". InCo Tiong vs Director of Patents, this Court unequivocally said that"Celdura" and "Condura" are confusingly similar in sound; this Courtheld in Sapolin Co. vs Balmaceda, 67 Phil. 795 that the name"Lusolin" is an infringement of the trademark "Sapolin", as the soundof the two names is almost the same.

In the instant case, this Bureau agrees with opposer's opinion on theconfusing similarity between the contending marks: (1) both marks start withletters T and R; (2) both marks consist of eight letters with common letters A, N,X, and E; (3) the last syllable, opposer's XENE and respondent-applicant's XIN arenot photographically identical but produces the same aural effect. The auralsimilarities between the marks are patently obvious producing the same cadencewhen pronounced. The flyspeck difference do not create much distinction becauseof the dominant features of similarity retained in the purchasers mind.

This is an application of the idem sonams rule as held in the case of SapolinCo. vs Balmaceda, 67 Phil. 795, which provides that confusion is likely to arisebetween contending marks which when pronounced sounds alike.

Records further reveal that the contending marks cover the same class 5 ofgoods classification: opposer's "TRANXENE" covers "pharmaceutical, veterinary,sanitary and dietetic products; whereas, respondent-applicant's "TRENAXIN"covers pharmaceutical preparations namely, haemostatics drug. They arecompeting goods because they serve the same purpose and they flow through thesame channels of trade, as they are marketed in drugstores which do not alwaysrequire doctor's prescription when dispensed. As a practical observation, acustomer is likely to be confused with the similarity of medicine brands perceivingits same benefits in an ailment or probably, that it originates from the same sourceas the other. Under these circumstances~ the damage that can be incurrediY th1

opposer to the business it has created since its application and the subsequentissuance of registration in its favor way back in 1990 is not far-fetched.

Jurisprudence has not disregarded the fact that differences in contendingmarks still exist. But these differences appear insignificant by reason of evidentsimilarity in the dominant feature and the overall appearance of the marks. In thisregard, the Supreme Court said:

"It is not necessary, to constitute trademark 'infringement', thatevery word of a trade-mark should be appropriated, but it issufficient that enough be taken to deceive the public in the purchaseof a protected article." (Bunte Bros. vs Standard Chocolates,D.C. Mass, 45 F. Supp. 478, 481)."Infringement ' of trade-mark does not depend on the use of

identical words, not on the question whether they are so similar thata person looking at one would be deceived into the belief that it wasthe other, it being sufficient if one mark is so like another in form,spelling, or sound that one with not a very definite or clearrecollection as to the real mark is likely to be confused or misled."(Northam Warren Corporation vs Universal Cosmetic C.,C.C.A III, 18 F.2d 714, 775) (Philippine Nut Industry, Inc. vsStandard Brands Incorporated, 65 SCra 575)

Moreover, Respondent-applicant's non-submission of answer merited itsfailure to prove better right over the opposer nor dislodge the superior right ofopposer over the mark.

Anent the allegation of opposer that its trademark "TRANXENE" is well­known and therefore, be protected under subsection (e), Section 123 (d), supra.,this Bureau cannot agree. Basic is the rule that opposer has the onus probandi inestablishing and proving that its mark is well-known internationally and in thePhilippines.

In the case at bar, opposer failed to submit eloquent proof to prove that themark has actually gained and enjoyed a worldwide reputation internationally and inthe Philippines, in accordance to the Rules and Regulations on Trademarks,Service Marks, Trade Names and Marked or Stamped Containers,particularly Rule 102, which enshrines the criteria to determine a well-knownmark, to wit:

"Rule 102. Criteria for determining :hether a mark is well-known.{ - In r

determining whether a mark is well-known, the following criteria or anycombination thereof may be taken into account:

(a) the duration, extent and geographical area of any use of the mark, inparticular, the duration, extent and geographical area of anypromotion of the mark, including advertising or publicity and thepresentation, at fairs or exhibitions, of the goods and/or services towhich the mark applies;

(b) the market share, in the Philippines and in other countries, of thegoods and/or services to which the mark applies;

(c) the degree of the inherent or acquired distinction of the mark;

(d) the quality-image or reputation acquired by the mark;

(e) the extent to which the mark has been registered in the world;

(f) the exclusivity of registration attained by the mark in the world;

(g) the extent to which the mark has been used in the world;

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

(j) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the issue of whether the markis a well-known mark; and

(I) the presence or absence of identical or similar marks validly regis­tered for or used on identical or similar goods or services and ownedby persons other than the person claiming that his mark is a well­known mark."

Opposer failed to meet the enumerated criteria or any combination thereofof a well-known mark. It has not presented sufficient evidence to substantiate itsallegation. In the case of Prescilla Nedia, et al vs Celsa D. Lavina, et ai,September 26, 2005, the Honorable Supreme Court ruled that, "Mere allegationis not evidence and is not equivalent to proof." Thus, the allegation of opposer's"TRANXENE" mark as well-known has no leg to stand on.

Considering however, that as previously discussed,

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Respondent-Ai'icant''i

TRENAXIN is confusingly similar to Opposer's TRANXENE, the registration of themark TRENAXINE cannot therefore, be allowed.

WHEREFORE, premises considered the Verified Notice of Opposition filedby SANOFI-AVENTIS, is as it is hereby SUSTAINED. Accordingly, ApplicationSerial No. 4-2005-006445 filed by respondent-applicant, YUNG SHIN (PHILS.), INC.on 11 July 2005 for the mark "TRENAXINE" under Class 5, is as it is hereby,REJECTED.

Let the file wrapper of "TRENAXIN", subject matter of this case be forwardedto the Bureau of Trademarks for appropriate action in accordance with thisdecision.

SO ORDERED.

Makati City, 02 May 2008.

ES LITA BELTRAN-ABELARDODire tor, Bureau of Legal Affairs

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