Pediatrica Inc. (‘Pediatrica’) filed an Opposition to the registration of Trade Mark Application No. 4-2012-011537 for the mark “MYCOFERM” filed in the name of Realvet Incorporated (‘Realvet’) in Class 5. Pediatrica based the Opposition on its registered mark “MYCODERM” registered under Trade Mark No. 4-2012-004045 in Class 5 as well. While Realvet’s mark had been applied for “veterinary product”, Pediatrica’s mark covered “topical corticosteroid,” . Both items are classified under Class 5.
The Opposition was based on Section 123.1 (d) of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines (“IP Code”), which states 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, in respect of:
- 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.
Pediatrica’s mark had been filed on 30 March 2012 while Realvet’s mark was filed on 19 September 2012, qualifying Pediatrica’s mark as the earlier mark. Realvet had failed to respond to the Notice to Answer. Under the Rules, in the event the Respondent fails to Answer, the Respondent will be considered in default and the Hearing Officer will resolve the issues based on the pleadings and evidence submitted.
It was held that the two marks were almost identical, and that the difference was merely in the fifth letter of both marks. Thus, the marks were deemed to look and sound alike to each other. It was further held that merely adding, removing or changing some letters of a registered trademark is not enough to avoid causing confusion. Such close similarity was held to cause confusion and would deceive the ordinary consumers.
Further, it was determined that the similarity would cause confusion between the goods provided under each mark, causing the consumer to purchase one’s product with the belief that he was purchasing that of the other, and would also cause confusion by allowing consumers to think that there is some connection between the proprietors of both marks which, in actual fact, does not exist.
Allowing such confusion and deception in this case was held to be dangerous to the health and safety and consumers. This is in light of the fact that “MYCOFERM” is not intended for human consumption.
It was also added that while one of the functions of a trademark registration is to give protection to the owners of the trademarks, it was held that Realvet’s subject mark fell short of meeting this function.
In light of all the above, the BLA found in favour of Pediatrica and sustained the Opposition.
This instant case shows how critical it is in the realm of pharmaceuticals that entities do not come up with brand names that are confusingly similar with others. As mentioned in this case, causing confusion could prove to be a very dangerous health risk to the average consumer who may not be discerning enough to tell the difference between products.
This article was first published in Law Lore & Practice, September 2015 Edition. For more information, visit http://ptmg.org/ .