101 Dermaline Vs Myra

Article 520 and 522 – Trademarks are governed by special laws
CASE TITLE FACTS RULING/DOCTRINE

Dermaline, Inc. PARTIES WHEREFORE, the petition is DENIED. The Decision dated August
 Dermaline, Inc. filed for an application for 7, 2009 and the Resolution dated October 28, 2009 of the Court of
Vs. registration of the trademark Dermaline Dermaline, Appeals in CA-G.R. SP No. 108627 are AFFIRMED. Costs against
Inc. petitioner.
Myra Pharmaceuticals,  Myra Pharmaceuticals, Inc. has a trademark named
Inc. Dermalin.  A trademark is any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof,
ON MAY 8, 2007, MYRA FILED AN OPPOSITION TO adopted and used by a manufacturer or merchant on his
THE REGISTRATION OF DERMALINE’S goods to identify and distinguish them from those
TRADEMARK manufactured, sold, or dealt by others. Inarguably, it is an
 Myra alleged the following: intellectual property deserving protection by law.
 That the trademark sought to be registered by  As Myra correctly posits, as a registered trademark owner, it
Dermaline so resembles its trademark has the right under Section 147 of R.A. No. 8293 to prevent
DERMALIN and will likely cause confusion, third parties from using a trademark, or similar signs or
mistake and deception to the purchasing containers for goods or services, without its consent,
public. identical or similar to its registered trademark, where such
 That the registration of Dermaline’s use would result in a likelihood of confusion.
trademark will violate Section 123 of  In determining likelihood of confusion, case law has
Republic Act (R.A.) No. 8293 (Intellectual developed two (2) tests, the Dominancy Test and the
Property Code of the Philippines). Holistic or Totality Test.
 That Dermaline’s use and registration of its  The Dominancy Test focuses on the similarity of the
applied trademark will diminish the prevalent features of the competing trademarks that
distinctiveness and dilute the goodwill of might cause confusion or deception. It is applied
Myras DERMALIN, registered with the IPO when the trademark sought to be registered contains
way back July 8, 1986, and still being used the main, essential and dominant features of the
now. earlier registered trademark, and confusion or
 Also, Dermaline had already applied for the deception is likely to result. The important issue is
same trademark and the registration was whether the use of the marks involved would likely
refused by the IPO. By filing this registration cause confusion or mistake in the mind of or
again, Dermaline is on a fishing expedition deceive the ordinary purchaser, or one who is
for the approval of its trademark. accustomed to buy, and therefore to some extent
 Lastly, Myra asserted that the mark familiar with, the goods in question.
DERMALINE DERMALINE, INC. is  The Holistic Test entails a consideration of the
aurally similar to its own mark such that the entirety of the marks as applied to the products,
registration and use of Dermalines applied including labels and packaging, in determining
mark will enable it to obtain benefit from confusing similarity. The scrutinizing eye of the
Myras reputation, goodwill and advertising observer must focus not only on the predominant
and will lead the public into believing that words but also on the other features appearing in
Dermaline is, in any way, connected to both labels so that a conclusion may be drawn as to
Myra. Myra added that even if the subject whether one is confusingly similar to the other.
application was under Classification 44 for  In rejecting the application of Dermaline for the registration
various skin treatments, it could still be of its mark DERMALINE DERMALINE, INC., the IPO
connected to the DERMALIN mark under applied the Dominancy Test. It declared that both confusion
Classification 5 for pharmaceutical products, of goods and service and confusion of business or of origin
since ultimately these goods are very closely were apparent in both trademarks. When an ordinary
related. purchaser, for example, hears an advertisement of
 Dermaline countered that a simple comparison of the Dermalines applied trademark over the radio, chances are he
trademark DERMALINE DERMALINE, INC. vis-- will associate it with Myras registered mark.
vis Myras DERMALIN trademark would show that  the public may mistakenly think that Dermaline is
they have entirely different features and distinctive connected to or associated with Myra, such that, considering
presentation, thus it cannot result in confusion, the current proliferation of health and beauty products in the
mistake or deception on the part of the purchasing market, the purchasers would likely be misled that Myra has
public. Dermaline contended that, in determining if already expanded its business through Dermaline from
the subject trademarks are confusingly similar, a merely carrying pharmaceutical topical applications for the
comparison of the words is not the only determinant, skin to health and beauty services.
but their entirety must be considered in relation to the  Verily, when one applies for the registration of a trademark
goods to which they are attached, including the other or label which is almost the same or that very closely
features appearing in both labels. It claimed that resembles one already used and registered by another, the
there were glaring and striking dissimilarities application should be rejected and dismissed outright, even
between the two trademarks, such that its trademark without any opposition on the part of the owner and user of
DERMALINE DERMALINE, INC. speaks for itself a previously registered label or trademark. This is intended
(Res ipsa loquitur). Dermaline further argued that not only to avoid confusion on the part of the public, but
there could not be any relation between its trademark also to protect an already used and registered trademark and
for health and beauty services from Myras trademark an established goodwill.
classified under medicinal goods against skin
disorders.
 On April 10, 2008, the IPO-Bureau of Legal Affairs
rendered Decision No. 2008-70 sustaining Myras
opposition.
 Dermaline’s motion for reconsideration, appeal to the
Office of the Director General of the IPO, and appeal
to the CA were all denied.
HENCE, THIS PETITION FOR REVIEW
ISSUE: WON the trademark of Dermaline should be

registered- NO

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Article 520 and 522 – Trademarks are governed by special laws

CASE TITLE FACTS RULING/DOCTRINE

HENCE, THIS PETITION FOR REVIEW

ISSUE: WON the trademark of Dermaline should be

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