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INTELLECTUAL PROPERTY

PEDIAIRICA, INC., PHI LIP j I N E IPC NO. 14-2008-000199 Opposer, } Case filed on: September 4, 2008

} -versus- } Opposition to:

} Application No. 4-2007-010593 CEE-NERGY CORPORAliON, } Date filed: September 24, 2007

Respondent-Applicant. } 1M: "C3PLUS" }

x--------------------------------------------------------------x Decision No. 2009- 182

DECISION

Before us is a Verified Notice of Opposition against the application for registration of the mark "C3PLUS" used for Vitamin C (ascorbic acid) under Class 05 of the international classification of goods bearing Application Serial No. 4-2007-010593 which was published in the Intellectual Property Office Electronic Gazette on 06 June 2008.

Opposer, PEDIATRICA, INC., is a corporation organized and existing under the laws of the Philippines with principal office located at 3rd Floor Bonaventure Plaza, Ortigas Avenue Mandaluyong City. Respondent-Applicant, CEE-NERGY CORPORATION is also a domestic corporation with address at Ground Floor, Roscar Building, 81 EDSA, Mandaluyong City.

Accordingly, the grounds for opposition are as follows:

1. The trademark C3PLUS so resembles ZEEPLUS trademark owned by Opposer, registered with this Honorable Office prior to the publication for opposition of the mark C3PLUS. The trademark C3PLUS, which is owned by the Respondent, will likely cause confusion, mistake and deception on the part of the purchasing public, most especially, considering that the opposed trademark C3PLUS is applied to the same class of goods as that of trademark ZEEPLUS, i.e., Class 05; vitamin preparation (ascorbic acid).

2. The registration of the mark C3PLUS in the name of the Respondent­Applicant will violate Section 123 of Republic Act No . 8293, otherwise known as the "Intellectual Property Code of the Philippines", which provides, in part, that a mark cannot be registered if it:

"(d) Is identical with a registered mark belonging to a different proprietor or a~

mark with an earlier filing or priority date, in respect of: I I #' i. The same goods or services, or f '

Republic of the Philippines

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ii. Closely related goods or services, or

iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion;"

Under the above-quoted provIsIOn, any mark which is similar to a registered mark shall be denied registration in respect or similar or related goods or if the mark applied for nearly resembles a registered mark that confusion or deception in the mind of the purchasers will likely result.

3. Respondent's use and registration of the trademark C3PLUS will diminish the distinctiveness and dilute the goodwill of Opposer's trademark ZEEPLUS.

The Opposer relied on the following facts to support its opposition:

1. Opposer, the registered owner of the trademark ZEEPLUS, is engaged in the marketing, and sale of a wide range of pharmaceutical products. The trademark Application for the trademark ZEEPLUS was originally filed with the Intellectual Property Office on 11 May 2006 by Opposer and was approved for registration by this Honorable Office on 28 May 2007 and valid for a period of ten (10) years. Hence, Opposer's registration of the ZEEPLUS trademark subsists and remains valid to date.

2. The trademark ZEEPLUS has been extensively used in commerce in the Philippines.

2.1 Opposer dutifully filed Affidavits of Use pursuant to the requirements of law, to maintain the registration of ZEEPLUS in force and effect.

2.2. A sample of product label bearing the trademark ZEEPLUS actually used in commerce is hereto attached.

2.3. In order to legally market, distribute and sell these pharmaceutical preparations in the Philippines, the products using the mark ZEEPLUS were registered with the Bureau of Food and Drugs (BFAD).

3. There is no doubt that by virtue of the above-mentioned Certificate of Registration, the uninterrupted use of the trademark ZEEPLUS, and the fact that it is well known among consumers, the Opposer has acquired exclusive~

ownership over the ZEEPLUS marks to the exclusion of all others. / I!. 2

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4. C3PLUS is confusingly similar to ZEEPLUS

4.1. Applying the dominancy test, it can be readily concluded that the trademark C3PLUS, owned by Respondent, so resembles the trademark ZEEPLUS, that it will likely cause confusion, mistake and deception on the part of the purchasing public.

4.1.1. First, C3PLUS sounds almost the same as ZEEPLUS;

4.1.2. Second, the last four (4) letters of both marks are the same, i.e., "PLUS";

4.1.3. Third, the first syllable of both marks sound the same;

4.1.4. Clearly, the Respondent adopted the dominant features of the Opposer's mark ZEEPLUS.

4.2. The trademark ZEEPLUS and Respondent's trademark C3PLUS are practically identical marks in sound and appearance that they leave the same commercial impression upon the public.

4.2. Thus, the two marks can easily be confused for one over the other, most especially considering that the opposed trademark C3PLUS is applied for the same class and goods as that of the trademarks ZEEPLUS, i.e. Class 5; vitamin preparation (ascorbic acid), to the Opposer's extreme damage and prejudice.

4.3. Yet, Respondent still filed a trademark application for C3PLUS despite its knowledge of existing trademark registration of ZEEPLUS which is confusingly similar thereto in both its sound and appearance.

5. Moreover, Opposer's intellectual property right over its trademark is protected under Section 147 of Republic Act No. 8293, otherwise known as the "Intellectual Property Code ("IP Code").

6. To allow Respondent-Applicant to continue to market its products bearing the C3PLUS mark undermines Opposer's right to its mark. As the lawful owner of the mark ZEEPLUS, Opposer is entitled to prevent the Respondent-Applicant from using a confusingly similar mark in the course ofiJl':' trade where such would likely mislead the public. I'I~ .

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6.1. Being the lawful owner of ZEEPLUS, Opposer has the exclusive right to use and/or appropriate the said marks and prevent all third parties not having its content from using in the course of trade identical or similar marks, where such would resul t in a likelihood of confusion.

6.2 By virtue of Opposer's ownership of the trademark ZEEPLUS, it also has the right to prevent third parties, such as Respondent, from claiming ownership over Opposer's marks or any depiction similar thereto, without its authority or consent.

6.3. To allow Respondent to use its C3PLUS mark on its product would likely cause confusion or mistake in the mind of the public or deceive purchasers into believing that the C3PLUS product of the Respondent originate from or is being manufactured by Opposer, or at the very least, is connected or associated with the ZEEPLUS products of Opposer, when such connection does not exist.

6.4. In any event, as between the newcomer, Respondent, which by the confusion loses nothing and gains patronage unjustly by the association of its products bearing the C3PLUS mark with the well-known ZEEPLUS mark, and the first user and actual owner of the well-known mark, Opposer, which by substan tial investment of time and resources and by honest dealing has already achieved favor with the public and already possesses goodwill, any doubt should be resolved against the newcomer, Respondent, considering that Respondent, as the latter entrant in the market had a vast range of marks to choose from which would sufficiently distinguish its products from those existing in the market.

7. By virtue of Opposer's prior and continued use of the trademark ZEEPLUS, the same has become well known and established valuable goodwill to the consumers and the general public as well. The registration and use of Respondent-Applicant's confusingly similar mark on its goods will enable the latter to obtain benefit from the Opposer's reputation, goodwill and advertising and will tend to deceive and/or confuse the public into believing that Respondent-Applicant is in any way connected with the Opposer.

8. Likewise, the fact that Respondent-Applicant seeks to have its mark C3PLUS registered in the same class (Nice Classification 5) as the trademark ZEEPLUS of Opposer plus the fact that both are Vitamin preparations (ascorbic acid) will undoubtedly add to the likelihood of confusion among the purchasersJ/#::

of these two goods. I I~ . 4

8. Likewise, the fact that Respondent-Applicant seeks to have its mark UMERAN registered in the same class (Nice Classification 5) as the trademark TUSERAN of Opposer will undoubtedly add to the likelihood of confusion among the purchasers of these two goods.

9. Thus, Opposer's interests are likely to be damaged by the registration and use of the Respondent-Applicant of the trademark ZEEPLUS.

Together with the verified Notice of Opposition, Opposer submitted the following evidence:

Exhibits Description uA' Print-out from the IPa E-Gazette released fro

circulation on June 6, 2008 showing the mark C3PLUS being allowed for opposition Certificate of Registration No. 4-2006-004978 issued on May 28, 2007 for the mark ZEEPLUS under Class 5. Declaration ad Actual Use of the mark ZEEPLUS filed on 11 December 2007 Sample packaging of the product bearing the mark ZEEPLUS Certificate of Product Registration for ZEEPLUS issued by BFAD Copy of the Certification and Sales Performance of brand ZEEPLUS

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On 15 September, 2008, a Notice to Answer was issued by this Bureau and the same was served personally on 24 September 2008 to Respondent-Applicant's representative, Mr. Jaime I Tagle, Jr. On 11 November 2008, Respondent filed its Verified Answer alleging the following Affirmative Defenses:

1. The trademark C3PLUS does not resemble the Opposer's trademark ZEEPLUS and will not likely cause confusion, mistake and deception even though it is applied for the same class of goods.

1.1. It is apparent from its spelling and pronouncement that the trademark C3PLUS and ZEEPLUS sounds almost the same but the manner of selling and distribution of these two similar products are not the same.

C3PLUS is intended to be distributed through a direct selling scheme and not like the way ZEEPLUS is marketed which is thru selling in Pharmaceutica~

stores, groceries and the likes.

1.2. By analogy, confusion, mistake and deception do not lie if the distribu tion method, marketing method and target consumers of the similar goods are not the same. Consumers of these products are more discerning and intelligent in buying this kind of product considering that the health of their family is their primordial consideration.

1.3. Conversely, Respondent find support in his claim in the case of Etepha vs. Director of Patents (16 SCRA 495) wherein the Court allowed the registration of the brand Attusin despite the opposition by Pertussin both cough remedies in consideration that the purchasers of this product is considered more intelligent and discerning, similarity in sound would not deceive him.

1.4. Moreover, comparing herewith the packaging of C3PLUS and ZEEPLUS there is a mile difference that it would likely sow confusion, mistake or deception of the consumer.

2. The registration of the C3PLUS does not violate any provision of Sec 123 of the Intellectual Property Code. Contrary to the claim of the oppositor C3PLUS is not a mark that would resemble or nearly resemble the trademark of the oppositor ZEEPLUS that would likely cause confusion or would likely deceive consumers. It is not identical nor confusingly similar to the product ZEEPLUS.

3.Respondent-Applicant's use of and registration of the trademark C3PLUS will not diminish the distinctiveness and dilute the goodwill of Opposer's trademark ZEEPLUS.

3.1. The Respondent-Applicant does not rely nor is riding with the success of ZEEPLUS in the market. They do not intend to diminish the distinctiveness and has no deliberate intention to dilute the goodwill of Opposer's trademark ZEEPLUS.

3.2. They solely rely on the effectiveness of their products and patronage of their targeted consumer and the industriousness of their sales force by direct selling to them C3PLUS right at the consumer's doorstep.

3.3. Compared to ZEEPLUS, C3PLUS is not readily available in the open market but would only be available through accredited sellers of the product.

3.4. Through this method of selling it would readily be incomprehenSibl~

that the trademark C3PLUS would diminish the distinctiveness and dilute the goodwill of the trademark ZEEPLUS.

In support of its defenses, Respondent submitted its only evidence, which is a sample packaging of its product bearing the C3PLUS mark.

The issues having been joined, this Bureau issued a Notice of Preliminary Conference. On 14 September 2009, the preliminary conference was terminated and the parties were directed to submit position papers. Opposer filed its Position Paper on 05 October 2009 while Respondent filed its Position Paper on 23 October 2009.

The sole issue to be resolved in this case is: WHETHER OR NOT RESPONDENT· APPLICANT'S MARK "C3PLUS" IS CONFUSINGLY SIMILAR TO OPPOSER'S MARK "ZEEPLUS".

As per the evidence submitted by Opposer in this case, it is unquestionable that Opposer is the registered owner of the mark ZEEPLUS as disclosed by its Certificate of Registration No. 4-2006-004978 issued in 28 May 2007. Thus, pursuant to Section 138 of the IP Code, being a holder of a certificate of registration, such "certificate of registration is a prima facie evidence of the registrant's ownership of the mark, and of the exclusive right to use the same in connection with the goods or services specified in the certificate and those that are related thereto."

In conjunction with the protection accorded by law to registered owner specifically the right to exclusively use the mark in connection with the goods or services specified in the certificate and those that are related thereto, Section 123.1 provides for standards as to what mark should be allowed registration. Under Section 123.1 (d) thereof, it provides:

"SEe. 123. Registrability. - 123.1 A mark cannot be registered if it:

xxxx

(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority 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;"

From the above provision, it is clear that aside from being identical to a registered mark or a mark with an earlier filing or priority date, the said section also prohibits registration of a mark which nearly resembles such a mark as to be likely to deceive or cause confusion. Otherwise stated, the above cited proviso prohibits registration of a mark when it is confusingly similar to a previously registered mark or a mark with an earlier filing or priority date.

To better appreciate the distinguishing appearances of the marks of the parties, the~ are reproduced hereunder: '!IJ

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Opposer's Mark Respondent-Applicant's Mark

ZEEPLUS

In determining whether a mark subject of an application for registration is confusingly similar to another mark, jurisprudence is replete with cases on what constitute confusing similarity or colorable imitation.

In the case of Societe Des Produits Nestle vs. Court of Appeals.' the Supreme Court stated that:

"Confusing similarity exists when there is such a close or ingenuous imitation as to be calculated to deceive ordinary persons, or such resemblance to the original as to deceive ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other. "

In the case of Emerald Garments Manufacturing Corporation vs. Court of Appeals, it was enunciated that: "Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all the details be literally copied. Colorable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or trade name with that of the other mark or trade name in their over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article."

The determinative factor in a contest involving registration of trademark is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of the mark would likely cause confusion or mistake on the part of the buying public. The law does not require tllat the competing marks must be so identical as to produce actual error or mistake. It would be sufficient that the similarity between the two marks is such that there is possibility of the older brand mistaking the newer brand for it.

In analyzing the two competing mark taking into consideration the spelling, sound and ~ronunciation of the two words, it is our considered view that the trademarks "ZEEPLUS" anlf:

G.R. No. 112012. Apnl4, 2001 J. G.R. No. 100098. December 29,1995.

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"C3PLUS" are confusingly similar in sound. The letters "Z-E-E" in the mark "ZEEPLUS" and the letter "C" in Respondent's "C3PLUS" mark as well as the suffix "PLUS" appearing on both marks when pronounced, are aurally and phonetically the same, that one can be hardly distinguished from the other. Even if Respondent's mark contain a number "3", the same is unnoticeable when the mark is pronounced. As such, this Bureau finds that the marks are confusingly similar in sound or pronunciation.

In the case of MARVEX COMMERCIAL CO. INC. V5. PETRA HAWPIA & CO., and THE DIRECTOR OF PATENTS3

, the Supreme Court held in this wise:

"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 (Co Tiong Sa vs. Director of Patents, 95 Phil. I, citing Nims, The Law of Unfair Competition and Trademarks, 4th ed., Vol. 2, pp. 678-679). "The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of the help of our eyes and must depend entirely on the ear" (Operators, Inc. vs. Director of Patents, supra).

The following random list of confusingly similar sounds in the matter of trademarks, culled from Nims, Unfair Competition and Trade Marks, 1947, Vol. 1, will reinforce our view that "SALONPAS" and "LIONPAS" are confusingly similar in sound: "Gold Dust" and "Gold Drop"; "Jantzen" and "[ass-Sea": "Silver Flash" and "Supper Flash"; "Cascarete" and Celborite"; "Celluloid" and "Cellonite": "Chartreuse" and "Charseurs"; "Cutex" and "Cuticlean"; "Hebe" and "Meje": "Kotex" and "Femetex"; "Zuso" and "Hoo Hoo'', Leon Amdur, in his book "Trade-Mark Law and Practice", pp. 419-421, cities, as coming within the purview of the idem sonans rule, "Yusea" and "U-C-A", "Steinway Pianos" and "Steinberg Pianos", and "Seven-Up" and "Lemon-Up". In Co Tiong vs. Director of Patents, this Court unequivocally said that "Celdura" and "Cordura" are confusingly similar in sound; this Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the name "Lusolin" is an infringement of the trademark "Sapolin", as the sound of the two names is almost the same.

In the case at bar, "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 (see Celanese Corporation of America vs. E. 1. DuJY Pont, 154 F. 2d. 146, 148)." {'/ ~.

G.R. No. L-19297. December 22,1966 3

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Again in another case, the High Court enunciated that:

"The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not only are the initial letters and the last half of the appellations identical, but the difference exists only in two out of the eight literal elements of the designations. Coupled with the fact that both marks cover insulated flexible wires under class 20. "4

Aggravating the confusion is the fact that both marks are used on goods belonging to the same class, i.e., Class 05.

Furthermore, even if the goods are circulated or sold in different channels of trade the possibility of confusion is not obliterated. The fact that the marks are confusingly similar and the goods belong to the same class and pertains to vitamins, it is not farfetched that confusion of source or origin is likely to occur. The purchasers would likely be misled into believing that the vitamin C3PLUS originated or is sponsored by the Opposer.

WHEREFORE, premises considered, the Notice of Verified Opposition filed by Opposer, PEDIATRICA, INC. against Respondent-Applicant CEE-NERGY CORPORATION is, as it is hereby SUSTAINED. Consequently, the trademark application for mark IC3PLUS" bearing Serial No. 4-2007-010593 filed on 24 September 2007 by Respondent-Applicant used for Vitamin C (ascorbic acid) under Class 05 of the international classification of goods is, as it is hereby, REJECTED.

Let the filewrapper of "C3PLUS" subject matter of the instant case together with a copy of this Decision be forwarded to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

Makati City, 17 December 2009.

EST L1TA BELTRAN-ABELARDO Dir ctor, Bureau of Legal Affairs

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4 American Wire and Cable Company vs. Director ofPatents, G.R. No. L-26557. February 18, 1970 [31 SCRA 544].

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