Marvex Commercial Co., Inc. vs. Petra Hawpia & Co.
No. L-19297. December 22, 1966.
Petra Hawpia & Co., a partnership duly organized under the laws of the Philippines filed a petition for the registration of the trademark “LIONPAS” used on medicated plaster, with the Philippine Patent Office, asserting its continuous use in the Philippines since June 9, 1958. The Marvex Commercial Co., Inc. filed an opposition thereto, alleging that the registration of such trademark would violate its right to and interest in the trademark “SALONPAS” used on another medicated plaster and that both trademarks when used on medicated plaster would mislead the public as they are confusingly similar.
The Director of Patents in his decision gave due course to the petition, stating in part that “confusion, mistake, or deception among the purchasers will not likely and reasonably occur.
The Marvex Commercial argued that the application be rejected on the ground that (a) the applicant is not the owner of the trademark “LIONPAS” and (b) “LIONPAS” confusingly similar to the trademark “SALONPAS”.
(A) Whether the applicant is the owner of the trademark “LIONPAS?”
(B) Whether “LIONPAS” confusingly similar to the trademark “SALONPAS”.
(C) Whether the Court should not disturb any finding made by the Director of Patents on appeal.
(A) No. The right to register trademarks is based on ownership. The applicant has the burden of proving ownership. Where the applicant’s alleged ownership is not shown in any notarial document and the applicant appears to be merely an importer or distributor of the merchandise covered by said trademark, its application cannot be granted.
(B) “SALONPAS” and “LIONPAS”, when spoken sound very much alike. Similarity of sound is sufficient ground for this Court to rule that the-two marks are confusingly similar when applied to merchandise of the same descriptive properties. The registration of “LIONPAS” cannot therefore be given due course.
Both these words have the same suffix, “PAS”, which is used to denote a plaster that adheres to the body with curative powers. “Pas, being merely descriptive, furnishes no indication of the origin of the article and therefore is open for appropriation by anyone and may properly become the subject of a trademark by combination with another word or phrase.
Two letters of “SALONPAS” are missing in “LIONPAS”; the first letter a and the letter s. Be that as it may, when the two words are pronounced, the sound effects are confusingly similar. And where goods are advertised over the radio, similarity in sound is of especial significance. The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of help of our eyes and must depend entirely on the ear”
(C) NO. Although the Director of Patents is the official vested by law with the power to administer the registration of trademarks and tradenames, his opinion on the matter of similarity or dissimilarity of trademarks and tradenames is not conclusive upon this Court which may pass upon such determination.
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