GR 180073; (November, 2009) (Digest)
G.R. No. 180073 ; November 25, 2009
PROSOURCE INTERNATIONAL, INC., Petitioner, vs. HORPHAG RESEARCH MANAGEMENT SA, Respondent.
FACTS
Respondent Horphag Research Management SA, a Swiss corporation, is the registered owner of the trademark “PYCNOGENOL” for a food supplement. It discovered that petitioner Prosource International, Inc. was distributing a similar product under the mark “PCO-GENOLS” starting in 1996. Respondent sent a demand letter in June 2000. Without notifying respondent, petitioner discontinued using “PCO-GENOLS” and changed its mark to “PCO-PLUS” as of June 19, 2000.
On August 22, 2000, respondent filed a Complaint for Trademark Infringement, praying for an injunction and damages. Petitioner contended that respondent was not the registered owner, the marks were not confusingly similar, and it had discontinued use prior to the suit. The parties admitted during pre-trial that respondent’s mark was registered with the Intellectual Property Office, petitioner’s product was registered with the BFAD, and petitioner had withdrawn the “PCO-GENOLS” product.
ISSUE
Whether petitioner’s use of the mark “PCO-GENOLS” constituted trademark infringement of respondent’s registered mark “PYCNOGENOL.”
RULING
Yes, the Supreme Court affirmed the findings of infringement. The applicable laws were Republic Act No. 166 for acts until December 31, 1997, and the Intellectual Property Code ( R.A. No. 8293 ) for acts from January 1, 1998, to June 19, 2000. The test for infringement is whether the defendant’s mark is likely to cause confusion, mistake, or deception among purchasers.
Applying the dominancy test, the Court found the marks “PYCNOGENOL” and “PCO-GENOLS” to be confusingly similar. The dominant feature “GENOL” is common to both marks. Considering the products are identical food supplements, the similarity in sound and appearance creates a likelihood of confusion as to the origin of the goods. The act of pulling the product from the market did not negate liability for the infringement that occurred from 1996 to June 2000. The award of attorney’s fees was upheld as respondent was compelled to litigate. The petition was denied for lack of merit.