INTELLECTUAL PROPERTY

OFFICE OF THE PHILIPPINES

RECKITT & COLMAN (OVERSEAS) LIMTED,

Opposer,

-versus-

NEW MARKETLINK PHARMACEUTICAL CORP.,

Respondent-Applicant

IPCNo. 14-2014-00033

Opposition to:

Appln. Serial No. 4-2013-009290

Date Filed: 05 August 2013

TM:THROATSIL

V——

NOTICE OF DECISION

BARANDA & ASSOCIATES

Counsel for Opposer

Suite 10020B Fort Legend Towers,

3rd Avenue corner 31st Street,

Bonifacio Global City, Taguig City 1634

ATTY. ALLAN D. BUSMENTE

Counsel for Respondent- Applicant

19th Floor, Citibank Tower,

8741 Paseo de Roxas, Makati City

GREETINGS:

Please be informed that Decision No. 2017 - dated 09 November 2017

(copy enclosed) was promulgated in the above entitled case.

Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007

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, 10 November 2017.

MARILYN F. RETUTAL

IPRS IV

Bureau of Legal Affairs

@ www.ipophil.gov.ph

Q mail@ipophil.gov.ph

0 +632-2386300

■i +632-5539480

Intellectual Property Cer ter

tt?8 Upper McKinley Road

McKinloy Hill lown Center

f-ort Bonifacio, Poguiej Ci*y

1<x)4 Philippine;:.

INTELLECTUAL PROPERTY

OFFICE OF THE PHILIPPINES

RECKITT & COLMAN

(OVERSEAS) LIMITED,

Opposer,

■ versus ■

IPC NO. 14 - 2014 - 00033

Opposition 1x>

Trademark Application Serial

No.42013009290

NEW MARKETLINK

PHARMACEUTICAL

CORPORATION,TM: "THROATSIL"

Respondent-Applicant.

DECISION NO. 2017 ■

X" X

DECISION

RECKITT & COLMAN (OVERSEAS) LIMITED (Opposer)» filed an

Opposition to Trademark Application Serial No. 4-2013-009290. The trademark

application filed by NEW MARKETLINK PHARMACEUTICAL CORPORATION

(Respondent-Applicant)2, covers the mark "THROATSIL" for use on "indicated

for mouth and throat preparation; paper, cardboard and goods made from these

materials, not included in other classes,' printed matter,' stationery, plastic

materials for packaging (not included in other classes)" under Class 5 and 16 of

the International Classification of Goods and Services.3

The pertinent portion in the Opposition are as follows:

STREPSILS mark and

the STREPSILS orange

packaging are well known

trademarks.

42. The Application should be rejected since the mark THROATSIL is

visually and phonetically similar to the Opposer's registered STREPSILS

trademarks, which are well-known marks. Consumers encountering the mark

1 A company organized under the laws of England and Wales with business address at Dansom Lane, Hull,

HU8 7DS, United Kingdom.

2 A company organized under the laws of Philippines with address at 2291 Don Chino Roces Avenue

Extension, Makati City, Philippines

3 The Nice Classification of Goods and Services is for registering trademarks and service marks based on

multilateral treaty administered by the WIPO, called the Nice Agreement Concerning the International

Classification of Goods and Services for Registration of Marks concluded in 1957.

ig) www.ipophil.gov.ph

Q mail@ipophil.gov.ph

0 +632-2386300

dk +632-5539480

Intellectual Prodirty Comer

»?8 Upper MJIfinlcy RoadMcKmley Hiljpown C&ntc-r

ionifiK

j

l-ort lionifiK.'

1634 P

i'j City

THROATSIL or any mark similar to it would straight away attribute a

connection with the Opposer and its STREPSILS goods.

43. Distinctiveness is key to a trademark's value and for this reason,

the Opposer invests in creating marks that would be different from any other

in the market, x x x

44. Logically, the effectiveness of the STREPSILS mark to distinguish

the Opposer and its products would be diminished by the registration and/or

use of a similar mark by the Respondent-Applicant. The registration of the

mark by the Respondent-Applicant would thereby be diminished by the

registration and/or use of a similar mark by the Respondent-Applicant would

thereby cause damage to the interests of the owner by reducing the

distinctiveness of the Opposer's mark and is not only contrary to the provisions

of the IP Code but, perhaps more importantly, to the broader principles of

honesty, fairness and good faith.

XXX

46. It cannot be emphasized enough that STREPSILS is a coined word

created specifically for the Opposer and it is solely by virtue of the Opposer's

efforts that the STREPSILS brand now has the goodwill it enjoys all over the

world. It has achieved the status of a well known mark and should be protected

as a well-known mark due to the following, among others-

46.1. STREPSILS marks are registered in 197 countries and are the subject of

pending applications in several others.

46.2. STREPSILS is the world's leading sore throat medicine, present in nearly

100 countries in six (6) different continents.

46.3. STREPSILS was first used worldwide in 1958 or for more than 50 years

now.

46.4. In the Philippines, STREPSILS was used as early as 1965 and now has

an expansive reach as it is sold in hundreds of stores nationwide.

46.5. STREPSILS Orange Vitamin C Flavor has been used since the 1980s. The

popular foil blister cartons were also introduced in the 1980s.

46.5. Based on a 2012 report, STREPSILS is said to be the most popular

medicated throat lozenge and is identified as the leader in several other

countries such as Great Britain, France, Holland, Thailand, Malaysia, New

Zealand and Saudi Arabia. It is further reported that it remains a leading

brand in just about every country where it is sold.

46.7. STREPSILS products are widely advertised around the world on

television and radio, in trade and consumer magazines, outdoor print

advertising and point of sale materials as well as on the Internet and in social

media.

46.8 STREPSILS products own a very high market share in about 58 countries

worldwide in since 2007 to 2012.

46.9 STREPSILS product have been heavily advertised in the Philippines

which made the mark one of the most recognized and reputable brands in its

category in the country.

46.10 The Opposer has been vigilant in protecting its mark STREPSILS from

similar marks like THROATSIL, for example, in Singapore.

47. Considering the goodwill attached to STREPSILS trade mark, it would

therefore be unfair to allow the Respondent-Applicant to register THROATSIL

which is similar to the Opposer's STREPSILS mark.

48. The Respondent also gets to ride-on the advertising for the Opposer's

STREPSILS mark by adopting a similar mark and possibly a label similar to

the Opposer's label as we have found in other countries as shown below, x x x

49. Not only is the trademark STREPSILS well-known, the packaging for its

ornage-flavoured lozenge is also well-known since it was adopted in the 1980s.

The packaging for its ornage-flavoured lozenge shows an orange circle with the

lower half of the tin can or foil pack in orange color. The actual lozenge is also

in ornage color. Consumers therefore relate an ornage-coloured lozenge in

blister packs to orange-flavoured STREPSILS lozenge, x x x

50. By using a mark similar to Opposer's STREPSILS, the Respondent unduly

benefits from the Opposer's advertisements and promotions. Consumers are

likely to assume that the Opposer's STREPSILS is related to the Respondent's

THROATSIL as it is the Opposer who is openly advertising the STREPSILS

mark.

Respondent's THROATSIL is

confusingly similar to Opposer's

STREPSILS mark

51. Whichever test is applied, the existence of confusing similarity in this case

is unmistakable. Not only is the application for the mark THROATSIL similar

to the Opposer's registered well-known mark STREPSILS, it is also filed for

goods that are similar to the goods covered by the Opposer's registrations.

52. The Respondent-Applicant's THROATSIL is phonetically and conceptually

similar to STREPSILS. Not only is the suffix SIL in the marks identical, also

the prefix STREP in the Opposer's mark connote the same concept as the prefix

THROAT in the Respondent-Applicant's mark.

52.1. The mark STREPSILS was coined after Type A Streptococcus bacterium,

which is commonly found in the throat and skin and infections caused by Type

A Streptococcus bacteria result in Strep Throat and impetigo. Strep Throat is a

disease that causes sore throat or pharyngitis and symptoms include having a

swollen throat, difficulty swallowing, headache, nausea, loss of appetite and

fever. STREP and THROAT therefore connotes the same concept considering

the foregoing.

52.2. Strep Throat is one of the common disease experienced by the general

populace. Hence, it is not unlikely that consumers, especially in cases like this

which involve an over the counter medication, will mistakenly associate

THROATSIL as related to or a variation of the famous brand STREPSILS.

52.3 What is evident from the foregoing is that the Opposer's STREPSILS

mark is highly distinctive and has established fame and reputation, and that

consumers would automatically attribute a relation between STREPSILS and

THROATSIL. Both incorporate the suffix SIL and are derivations from Strep

Throat.

xxx

56. The public will most likely assume a connection between the goods and

allow Respondent-Applicant to unfairly take advantage of the substantial

goodwill attached to Opposer's STREPSILS mark. Confusion and/or association

is likely given the similarity between the trademarks, the identical goods

covered, packaging and presentation, and most importantly, the considerable

reputation attached to the Opposer's STREPSILS mark,

xxx

58. The Opposer's STREPSILS mark is used for pharmaceutical preparations

and substances, preparations for the treatment of cough and the alleviation of

coughing! medicated confectionery, which is identical to the the Respondent-

Applicant's THROATSIL mark which is used for mouth or throat preparation.

Consumer are thus likely to mistake the goods of the Respondent-Applicant as

those of the Opposer's. The public may be mistaken that one is just a variation

of the other and that both came from the same manufacturer.

The Opposer submitted the following evidence to supports its

Opposition:

Exhibit "A" - Verified Notice of Opposition!

Exhibit "B" - Power of Attorney confirming the appointment of Baranda & Associates

as counsel of Opposer — Annex A of the Verified Notice of Opposition!

Exhibit "C" - Affidavit of Rosina Baxter!

Exhibit "D" - Print out of the website

httpV/www.rb.com/documentdownload.axd?documentresourceid=1776!

Exhibit "E" - Print out of the websites http://www.rb.com/rb-worldwide/rb-history and

http://www.referenceforbusiness.com/history2/21/Reckitt-Benckiser-

pic.html;

Exhibit "F" - Print out of the website

http://www.mustardshopnorwich.co.uk/20Q-years-ofcolmanspgidl5.html

and http://www.hullwebs.co.uk/content/20c/industry/reckitts/reckitts.htm!

Exhibit "G" - Print out of the website

http://www.forbes.com/global2000/list/#page:4_sort:Q_direction:asc_search

:filter_All%20industries_filter:All%20countries filter:All%20states!

Exhibit "H" - Print out of the website http://www,rb.com/awards/corporate!

Exhibit "I" - Print out of the website http://www.forbes.com/innovative-

companies/list/#page:l sort:Q direction:asc search: filter:All%20regions

filter:AU%20industries !

Exhibit "J" - Print out of the websitehttp://www.rb.com/awards/innovation

and http://www.rb.com/investors-media/category-performance!

Exhibit "K" - Print out of the website http://www.rb.com/media-investors/category-

performance/hygiene!

Exhibit "L" - Print out of the website http7/www.rb.com/media-investors/category-

performance/home;

Exhibit "M" - Print out of the website http7/www.rb.com/media-investors/category-

performance/health;

Exhibit "N" - Copy of the 1 September 1958 article taken from "The Bulletin";

Exhibit "O" - Copy of IMS Chemlndex data showing the launch dates of the brand in

Netherlands, Sweden and New Zealand!

Exhibit "P" - Document culled from the Boots database detailing the history and

evolution of STREPSILS;

Exhibit "Q" - Copy of the website printout from

httpV/innovationleaders.org/rb company profile.html;

Exhibit "R" - Print out of the websites httpV/www.rb.com/rb-worldwide/rb-history;

Exhibit "S" - Print out of the websites http7/superbrands.com.au/index.php/al-

volumes/79-volume-2/284-strepsils-vol2;

Exhibit "T" - Copy of articles from Boots' "Communication Publication dated

September 1998 to December 2005 referring to STREPSILS;

Exhibit "U" - Sample advertising and merchandising materials "STREPSILS

Healthcare Marketing Materials dated July 2006";

Exhibit "V" - Sample advertising and merchandising materials "STREPSILS

Healthcare Marketing Materials dated October 2006";

Exhibit "W" - Document evidencing that STREPSILS is sold in hundreds of stores

nationwide;

Exhibit "X" - Copy of the earliest STREPSILS trademark registration together with

certificates of renewal of the mark;

Exhibit "Y" - List of the STREPSILS applications and registrations worldwide;

Exhibit "Z" - Copy of Australian Registration 152548 for STREPSILS in Class 5 issued

on 5 February 1959;

Exhibit "AA" - Copy of Australia Registration 787109 for STREPSILS ZINC COLD

RELIEF in class 5 issued on 1 March 1999;

Exhibit "BB" - Copy of Australia Registration 1045015 for STREPSILS SMOOTH &

SOOTHE in classes 5 and 30 issued on 8 March 2005;

Exhibit "CC" - Copy of Australian Registration 1201397 for STREPSILS in class 5 issued

on 27 September 2007;

Exhibit "DD" - Copy of OHIM Registration 005914429 for STREPSILS in classes 5 and

30 issued on 24 April 2008;

Exhibit "EE" - Copy of OHIM Registration 005920517 for STREPSILS COOL in classes 5

and 30 issued on 5 May 2008;

Exhibit "FF" - Copy of OHIM Registration 00860011 for STREPSILS FIRST AID FOR

SORE THROATS in classes 5 and 30 issued on 5 May 2008;

Exhibit "GG" - Copy of OHIM Registration 008624355 for STREPSILS ANYTIME,

ANYWHERE in class 5 issued on 16 March 2010;

Exhibit "HH" - Copy of OHIM Registration 005920517 for STREPSILS FIRST SIGNS in

class 5 issued on 6 February 2012;

Exhibit "II" - Copy of Hong Kong Registration 19590668 for STREPSILS in class 5

issued on 19 June 1959;

Exhibit "JJ" - Copy of Hong Kong Registration 200001339 for STREPSILS in class 5

issued on 20 January 2000!

Exhibit "KK" - Copy of Hong Kong Registration 200201775 for STREPSILS in class 30

issued on 20 January 2000;

Exhibit "LL" - Copy of Hong Kong Registration 300267985 for STREPSILS in classes 5

and 30 issued on 13 August 2004;

Exhibit "MM" - Copy of Hong Kong Registration 300278532 for STREPSILS in classes 5

and 30 issued on 1 February 2005;

Exhibit "NN" - Copy of Hong Kong Registration 300875520 for STREPSILS in classes 5

and 30 issued on 20 January 2000;

Exhibit "OO" - Copy of Hong Kong Registration 3949992 for STREPSILS in class 5

issued on 26 April 2011;

Exhibit "PP" - Copy of Philippine Registration 4-1997-122881 for STREPSILS in class 30

issued on 15 January 2002;

Exhibit "QQ" - Copy of Philippine Registration 4-2004-002242 for STREPSILS in class 5

issued on 20 January 2000;

Exhibit "RR" - Copy of Philippine Registration 036171 for STREPSILS in class 5 issued

on 14 November 1986;

Exhibit "SS" - Copy of Philippine Registration 4-2009-009926 for STREPSILS

(STYLIZED) in class 5 issued on 8 April 2010;

Exhibit "TT" - Copy of Philippine Registration 4-2007-005432 for STREPSILS in classes

5 and 30 issued on 16 May 2013;

Exhibit "UU" - Copy of Philippine Registration 4-2012-503052 for STREPSILS MAX in

class 5 issued on 16 May 2013;

Exhibit "W" - Copy of the Undertaking executed by Apotheca Marketing;

Exhibit "WW" - Print out of the New York Department of Health website;

Exhibit "XX" - Print out of the United States National Library of Medicine website;

Exhibit "YY" - Copy of Philippine Registration 4-1997-122881 for STREPSILS in Class

30 issued on 15 January 2002;

Exhibit "ZZ" - Copy of the Philippine Registration 4-2004-002242 for STREPSILS in

class 5 issued on 18 February 2006;

Exhibit "AAA" - Copy of Philippine Registration 036171 for STREPSILS in class 5 issued

on 14 November 1986;

Exhibit "BBB" - Copy of Philippine Registration 4-2009-009926 for STREPSILS

(STYLIZED) in class 5 issued on 8 April 2010;

Exhibit "CCC" - Copy of Philippine Registration 4-2007-005432 for STREPSILS COOL

LABEL IN COLOUR in classes 5 and 30 issued on 15 June 2009; and

Exhibit "DDD" - Copy of Philippine Registration 4-2012-503052 for STREPSILS MAX in

class 5 issued on 16 May 2013;

This Bureau issued a Notice to Answer dated 8 April 2014 and served to

the Respondent-Applicant on 14 April 2014. On 14 July 2014, the Respondent-

Applicant filed its Verified Answer denying the pertinent allegations in the

Verified Opposition. The Respondent-Applicant further averred that:

THROATSIL is not confusingly

similar to STREPSILS

XXX

12.Respondent-Applicant's mark THROATSIL is not confusingly similar with

Opposer's mark STREPSILS. x x x

Difference in Origin

Difference in Spelling

Difference in Pronunciation

Difference in Appearance

THROATSIL is a fanciful or coined

mark, which derived from the words

"throat" and "tonsil" which is related

to its indication, treatment of

tonsilitis and sore throat.

Obviously THROATSIL starts with

the letter "T" and ends with an "L."

While STREPSILS starts and ends

with the letter "S."

THROATSIL is pronounced in Two

(2) syllables, which is THR6T -SIL.

While STREPSILS is obviously

pronounced as STREP-SILS.

In Paragraph 42 to 50 of the

Opposition, Opposer cites packaging

of a product which is allegedly sold

in other countries. However, the

mark of the Respondent-Applicant is

not related to such alleged product.

Therefore, the allegations of

Opposer are misleading With all due

respect..

13. Therefore, the mark THROATSIL contains a unique cadence and

rhythm that strengthens the perception of the mark as a whole.

STEPSILS (sic) is not well-known mark

14. The Opposer has not given sufficient proof that STREPSILS is a well-

known mark.

XXX

16. The lengthy discussion of Opposer miserly failed to prove that it is a

well-known mark. It merely alleged that it is selling the brand STEPSILS (sic) in

several countries but has not materially proved that it is a known mark here in

the Philippines that will necessarily and clearly confuse the mind of the

Ordinary Purchaser.

Trademark right are Territorial

xxx

22. It is axiomatic that a compromise agreement is binding only between

its privies and could not affect the rights of third persons who were not parties to

the agreement.

23. Besides, trademark rights are territorial because the intrinsic

purpose of trademark law suggests extending (and limiting) rights to the

geographic reach of goodwill.

24. In fact, the International Trademark Association said that a mark

can be registered to different parties in the same country. This is possible in

most countries as long as the mark is used in connection with goods and services

that are easily distinguishable, and consumer confusion will not happen in the

marketplace.

xxx

Concurrent Registration is recognized in the United

States of America

Philippine Intellectual Property Code is derived from American Law

xxx

29. Concomitantly, there are numerous pharmaceutical products that bear the

generic name "GESIC", and registered under different applicants that have been

allowed by the United States Patent and Trademark Office (the "USPTO'O.x x x

30. To bolster our claim of concurrent jurisdiction, here are other trademarks

which bear generic name that have been allowed concurrent registration.

Zyloprim and Aloprim

31. ZYLOPRIM and ALOPRIM which have a generic name of "ALLOPURINOL"

(which is used to reduce the production of uric acid in the body. Allopurinol is

used treat gout or kidney stones, and to decrease levels of uric acid in people who

are receiving cancer treatment) have both been allowed to be registered.

xxx

Theo-24 and Theo-Dur

33. Trademarks "THEO-24" and "THEO-DUR" have a generic name

THEOPHYLLINE (is a bronchodilator. It works by relaxing muscles in the lungs

8f

and chest, making the lungs less sensitive to allergens and other causes of

bronchospasm.) Theophylline, also known as dimenthylxanthine, is a

methylxanthine drug used in therapy for respiratory disease such as COPD and

asthma.

XXX

Concurrent Registration is recognized by this Honorable Office

34. Even this Honorable Office support concurrent registration of trademarks.

35. To support the Applicant-Respondent's claim, this Honorable Office has

allowed the concurrent registration of the marks that have adopted the generic

name "GESIC" in its registered mark x x x

36. It also bears stressing that the Honorable Intellectual Property Office has

allowed several trademarks of Pharmaceuticals with similar suffixes to have

concurrent registration, x x x

THROATSIL is distinct

XXX

38. Concomitantly, THROATSIL is apparently distinct and original from

STREPSILS.

The Respondent-Applicant's evidence consist of the following:

Annex "1-A" - Print out of USPTO Trademark Electronic Search System for Lidogesic!

Annex "1-B" - Print out of USPTO Trademark Electronic Search System for Thergesic;

Annex "1-C" - Print out of USPTO Trademark Electronic Search System for ChirogesicJ

Annex "I'D" - Print out of USPTO Trademark Electronic Search System for Orthogesicl

Annex "1-E" - Print out of USPTO Trademark Electronic Search System for LeggesicJ

Annex "1"F" - Print out of USPTO Trademark Electronic Search System for Acetagesk;

Annex "1-G" - Print out of USPTO Trademark Electronic Search System for Monogesic;

Annex "1"H" - Print out of USPTO Trademark Electronic Search System for Cogesic;

Annex "IT - Print out of USPTO Trademark Electronic Search System for ZyloprimJ

Annex "1-J" - Print out of USPTO Trademark Electronic Search System for Aloprim;

Annex "1"K" - Print out of USPTO Trademark Electronic Search System for Theo-24;

Annex "1-L" - Print out of USPTO Trademark Electronic Search System for Theo-dur;

Annex "2" - Print out of IPOPHL trademark search for Norgesici

Annex "2-A" ■ Print out of IPOPHL trademark search for Opigesic APAP;

Annex "2-B" - Print out of IPOPHL trademark search for Durogesic;

4

Annex "2-C" - Print out of IPOPHL trademark search for Tylenol;

Annex "2-D" ■ Print out of IPOPHL trademark search for Siverol;

Annex "2-E" - Print out of IPOPHL trademark search for Rexidol;

Annex "2-F" - Print out of IPOPHL trademark search for Rhinotapp;

Annex "2"G" - Print out of IPOPHL trademark search for PediatappI

Annex "2"H" - Print out of IPOPHL trademark search for Nasatapp!

Annex "2-1" ■ Print out of IPOPHL trademark search for Tetract-HIB; and

Annex "2-J" - Print out of IPOPHL trademark search for Pentact-HIB.

The Preliminary Conference was terminated on 24 June 2015. The parties

then filed their respective Position Papers. Consequently, this case was

submitted for decision.

The issue to be resolved in the instant case is whether Respondent-

Applicant's trademark THROATSIL should be allowed to be registered.

Our Intellectual Property Code under Section 123.1 specifically provides

that a mark cannot be registered if it is identical with a registered mark

belonging to a different proprietor or a mark with an earlier filing or priority

date with respect to the same goods or services or closely related goods or

services, or if it nearly resembles such a mark as to be likely to deceive or cause

confusion.

The records will show that the Opposer has an existing trademark

registration for variations of "STREPSILS" marks used for pharmaceutical

preparations for the treatment of cough and alleviation of coughing, medicated

and non-medicated confectionery under Classes 5 and 30 of the International

Classification of Goods, when the Respondent-Applicant filed its application for

the trademark "THROATSIL" to be used for similar mouth or throat

preparations and packaging materials.

The question now is whether the competing trademarks resemble each

other such that likelihood of confusion would occur.

Strepsils Throatsil

Opposer's Trademark Respondent-Applicant's Trademark

lOf

Upon careful examination of the competing trademarks and the evidence

submitted by the parties, this Bureau answers the above question in the

affirmative.

At the outset, both of the trademark shared a common suffix "-SIL" which

this office finds to be the dominant feature on the contending two-syllable

wordmarks. It is the distinguishing portion that will draw the eyes and ears of

the consuming public. It is the mark that will be easily identified by the

consumers.

In addition to the above, public confusion or even deception is very

probable because the goods or products of the contending trademarks are similar

or closely related goods. It is therefore not far-fetched for the consumers to

associate the Respondent-Applicant's product with the earlier registered

Opposer's mark. This is especially true since the Opposer's mark has already

gained goodwill for being registered in the Philippines as early as 19804 and

marketed in the country since 1965.5

This Bureau is not persuaded by the argument of the Respondent-

Applicant that concurrent registrations of trademarks with similar suffixes are

being recognized by the office and thus Respondent-Applicant's mark should be

allowed. The presence of the said trademarks would not readily support the

position of the Respondent-Applicant because the marks may have been allowed

or registered with the consent of the prior trademark registrant. Moreover, most

of the suffixes cited by the Respondent-Applicant are related to their generic

names, which is not the same in the instant case.

At this juncture, it is noteworthy to reiterate the pronouncement of the

Supreme Court which is similarly cited by Respondent-Applicant in its Position

Paper, to wit: "In trademark cases, particularly in ascertaining whether one

trademark is confusingly similar to another, no set rules can be deduced because

each case must be decided on its merits. In such cases, even more than in any

other litigation, precedent must be studied in the light of the facts of the

particular case."6

Succinctly, the field from which a person may select a trademark is

practically unlimited. As in all other cases of colorable imitation, the unanswered

riddle is why, of the millions of terms and combination of design available, the

Respondent-Applicant had to come up with a mark so closely similar to another's

mark if there was no intent to take advantage of the goodwill generated by the

other mark.7

4 Philippine Trademark Registration No. 36171

5 Exhibit "C" of the Opposer

6 Diaz vs. People of the Philippines and Levi Strauss Inc. G.R. No. 180677,18 February 2013.

7 American Wire & Cable Company vs. Dir. Of Patent, G.R. No. L-26557, February 18,1970.

llf

WHEREFORE, premises considered, the instant Opposition to Trademark

Application Serial No. 42013009290 is hereby SUSTAINED. Let the filewrapper

of Trademark Application Serial No. 42013009290 be returned together with a

copy of this Decision to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

n. s 9 nqv zatrTagmg City, J_I

Atty. Betfrk&fSoJyiiver Limbo

Adjudication Officer

Bureau of Legal Affairs

12