· ;;\\•INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

MEDICHEM PHARMACEUTICALS, INC., } IPC No. 14-2016-00591 Opposer, } Opposition to:

} Application No. 4-2016-00007945 } Date Filed: 07 July 2016 } TM: "RENOVIT" }

-versus­ } } } } }

XAVIER MARLON A. RIVERA, } Respondent- Applicant. }

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NOTICE OF DECISION

OCHAVE & ESCALONA Counsel for Opposer No. 66 United Street Mandaluyong City

RONILYN S. MEDINA Respondent-Applicant's Representative 98 B 18TH Avenue, Murphy Cubao, Quezon City

GREETINGS:

Please be informed that Decision 1\10. 2019 -~ dated 11 April 2019 (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, 11 April 2019.

~ Atty. MA IANNE A. ISABEDRA IPRS IV, ~ureau of Legal Affairs

@ www.ipophil.gov.ph Intellectual Property Center

e mail@ipophil.gov.ph #28 Upper McKinley Road Mckinley Hill Town Center

Q +632-2386300 Fort Bonifacio. Taguig City

+632-5539480 1634 Philippines

· ;\\•INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES

MEDICHEM PHARMACEUTICALS, INC., Opposer,

IPC No . 14-2016-00591 Opposition to:

Appln. No. 4-2016-00007945 Date Filed: 07 July 2016 Trademark: "RENOVIT"

- versus ­

XAVIER MARLON A. RIVERA, Respondent-Applicant. Decision No. 2019-l2L­x ----------------------------==-------------------- x

DECISION

MEDICHEM PHARMACEUTICALS, INC. ("Opposer"),l filed a Verified Opposition to Trademark Application Serial No. 4-2016-00007945. The application, filed by XAVIER MARLON A. RIVERA ("Respondent-Applicant")2, covers the mark "RENOVIT" for use on "pharmaceutical and veterinary preparations " under Class 05 of the International Classification of Goods.'

The Opposer alleges the following grounds for opposition:

"7. The mark 'RENOYIT' filed by Respondent-Applicant so resembles the trademark 'RENUYIE' owned by Opposer and duly registered with the IPO prior to the publication for opposition of the mark' RENOYIT'.

"8 . The mark ' RENOYIT' will likely cause confusion, mistake and deception on the part of the purchasing public, most especially considering that the opposed mark ' RENOYIT' is appl ied for the same class and goods as that of Opposer' s trademark ' REN UV IE' , i.e. Class 05 as Pharmaceutical Preparations.

"9. The registration of the mark 'RENOYIT' in the name of the Respondent-Applicant will violate Sec. 123 of the lP Code, which provides, in part, that a mark cannot be registered if it:

A domestic corporation duly organized and existing under the laws of the Philippines, with office address at No. 132 Pioneer Street, Mandaluyong City, Philippines. An individu al with address at 117 Mariano Ponce Street, Bagong Barrio , Caloocan City, Metro Manila, Philippines. The Nice Class ification is a classifi cation of goods and services for the purpose of regist ering trademark and ser vice marks, based on the multilateral treaty adm inistered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration o f Marks concluded in 1957.

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www.ipophil.gov.ph Intellectu al prop r

e mail@ipophil.gov.ph #28 Upper McKinley Road Mckinley Hill Town Cent er e +632-2386300 Fort Bonifacio. Taguig City

+632-5539480 1634 Philippines

(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; (Emphasis supplied)

x x x

Under the above-quoted provision, any mark , which is similar to a registered mark shall be denied registration in respect of 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. "

The Opposer 's evidence consists of the following:

1. Copy of pertinent page of the IPO E-Gazette showing publication of Respondent­Applicant 's trademark application for "RENOVIT";

2. Certified true copy (Ctc) of Certificate of Registration No. 4-2009-004991 for the trademark "RENUVIE";

3. Ctc of the Declarations of Actual Use of the trademark "RENUVIE" . 4. Sample product label bearing the trademark "RENUVIE"; 5. CTC of the Certificate of Product Registration issued by the Food and Drug

Administration; and, 6. Certification and sales performance report issued by the Intercontinental Marketing

Services ("IMS").

This Bureau issued a Notice to Answer" and served a copy thereof upon the Respondent­Applicant on 16 November 2016. Respondent-Applicant failed to file an Answer, instead filed a Letter/Manifestation for further evaluation of his pending trademark application. Thus, this Bureau directed Respondent-Applicant to submit or file the complete requirements of the said Answer.' The latter , however, did not comply with the same . Thus, this Bureau issued an order declaring the Respondent-Applicant in default.

This case is deemed submitted for decision.

Should the Respondent-Applicant be allowed to register the trademark "RENOVIT"?

It is emphasized that the essence of trademark registration is to give protection to the owners of trademarks. The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him , who has been instrumental in bringing out into the

Dated09 November 201 6. Order No . 20 17-24 1; Recei ved Order on 07 Feb ruary 2017.

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market a superior genuine article ; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product.v

Sec. 123.1 (d) R.A. No . 8293, also known as the Intellectual Property Code ("IP Code") provides:

A mark cannot be registered if it:

x x x

(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) Ifit nearly resembles such a mark as to be likely to deceive or cause

confusion;

The records and evidence sho w that at the time the Respondent-Applicant filed its trademark application on 07 July 2016 7 for the trademark "RENOVIT", the Opposer has already an existing trademark registration for the mark "RENUVIE" bearing Registration No. 4-2009-004991 issued on 01 November 2009 8 in the Philippines. Unquestionably, the Opposer's application and registration preceded that of Respondent-Applicant's.

But, are the contending marks, depicted below, resemble each other such that confusion, even deception, is likely to occur?

Re uvle !R EN O V IT

Opposer's Trademark Respondent-Applicant's Trademark

It appears that the competing marks both contain the first three (3) letters "R", "E" and "N". However, the Opposer's mark REN UVIE has the suffix "VIE", which makes it distinct from Respondent-Applicant's mark RENOVIT which bears the suffix "VIT". The stress on the respective suffixes negates the allegation of aural similarity of the marks. The presence of middle letters "U" and "0" in the competing marks, respectively stands out and gives the said marks visual and aural independent character that easily distinguishes one from the other. Thus, there is no likelihood of confusion of RENUVIE and RENOVIT in commerce.

6 Pribhdas J. Mirpuri v. Court of Appeal s, G.R. No . 114508, 19 Nov . 1999. See also Article 15, par . (I ), Art. 16, par. 91 of the Trade-related Aspect of Intellectual Property (TRIPS Agreement).

7 File wrapper record s. 8 Exhibit "8" of Oppo ser .

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This Bureau also underscores the fact that the foregoing marks cover distinct goods and/or pharmaceutical products. The registration of Opposer's RENUVIE particularly covers antipsychotic pharmaceutical preparation; whereas, Respondent-Applicant's RENOVIT covers pharmaceutical and veterinary preparations. The former is more specific in the illness it is intended to treat - psychotic disorders.

Corollarily, the likelihood of the consumers being deceived, mistaken or confused is remote because of the highly sensitive nature of the Opposer's pharmaceutical product. In this instance, a drugstore or pharmacy would require a physician's prescription before dispensing medicines such as RENUVIE, which are not considered as over-the-counter drugs. Psychotic medications are considered as such because of the complicated illness it intends to treat and the medical care and need of psychiatric patients. The sheer disparity in the nature and purposes of the goods and the manner by which the goods are sold or dispensed precludes the probability of confusion or mistake. In fact , there is a heavy regulation requiring the issuance of specific licenses by the Philippine Drug Enforcement Agency (PDEA) for various sectors, including the medical practitioner (S-2 license) or prescriber of the medicine and the retail distributor or dispenser in order to properly prescribe and dispense drug preparations containing controlled chemicals, dangerous substances, and the like with the highest degree of care". This include medicine for the treatment of psychiatric patients.

Finally, because of the difference in the goods or pharmaceutical products, the Respondent­Applicant cannot be said to have the intent to ride in the goodwill of the mark RENUVIE. It is unlikely for one when confronted with the mark RENUVIE to be reminded of the mark RENOVIT and vice versa.

WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the file wrapper of Trademark Application Serial No. 4-2016-00007945 be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

Taguig City . l"APR. 20\~ '

Atty. GI ALYN S. BADlOLA, LL.M. Adjudication Officer, Bureau ofLegal Affairs

Prescribing Dangerous Drugs and the Law, available at hnps://www.pcp.org.ph/fil es/PJ IM%20 VoI54%20No2/Legal_Prescription_2nd_~2016.pd[

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