GR 19297; (December, 1966) (Digest)
G.R. No. L-19297 December 22, 1966
MARVEX COMMERCIAL CO., INC., petitioner, vs. PETRA HAWPIA and CO., and THE DIRECTOR OF PATENTS, respondents.
FACTS
Petra Hawpia & Co. (applicant) filed a petition with the Philippine Patent Office for the registration of the trademark “LIONPAS” used on medicated plaster, claiming use since June 9, 1958. Marvex Commercial Co., Inc. (oppositor) opposed the registration, alleging it would violate its right to the trademark “SALONPAS” used on medicated plaster, which was registered in its name under Certificate of Registration 5486 issued on September 29, 1956. The oppositor contended the trademarks are confusingly similar and would mislead the public. The Director of Patents dismissed the opposition, finding no likelihood of confusion, and gave due course to the application. The oppositor’s motion for reconsideration was denied, prompting this appeal.
ISSUE
1. Is the applicant the owner of the trademark “LIONPAS”?
2. Is the trademark “LIONPAS” confusingly similar to the trademark “SALONPAS”?
RULING
1. No, the applicant is not the owner of the trademark “LIONPAS”. The evidence presented (Exhibits 5 and 6) to prove ownership was legally insufficient. Exhibit 5, a letter of assignment, was not acknowledged, and the signatory’s authority was not established. Exhibit 6, a sworn statement, lacked the proper acknowledgment required by the Trade Mark Law. Other evidence (Exhibits A, A-1, and B) indicated the applicant was merely an exclusive distributor or importer, not the owner. As a mere importer/distributor, the applicant is not entitled to register the trademark under the law.
2. Yes, the trademarks “SALONPAS” and “LIONPAS” are confusingly similar in sound. Both share the descriptive suffix “PAS”. When pronounced, their sound effects are confusingly similar, which is especially significant given radio advertising where reliance is on the ear. The Supreme Court, disagreeing with the Director of Patents, applied the idem sonans rule and cited precedents where similarity in sound was sufficient to find confusing similarity for goods of the same descriptive properties.
The decision of the Director of Patents was set aside, and the petition for registration by Petra Hawpia & Co. was dismissed.