GR 248021 Leonen (Digest)
G.R. No. 248021 , September 30, 2020
PROSEL PHARMACEUTICALS & DISTRIBUTORS, INC., PETITIONER, VS. TYNOR DRUG HOUSE, INC., RESPONDENT.
FACTS
This case involves a trademark infringement dispute. Respondent Tynor Drug House, Inc. is the registered owner of the trademark “CEFER,” used for pharmaceutical preparations containing iron. Petitioner Prosel Pharmaceuticals & Distributors, Inc. uses the brand name “CEEGEEFER” for its similar pharmaceutical product. Respondent filed a complaint for infringement and unfair competition, alleging that petitioner’s mark is confusingly similar to its registered trademark. The Court of Appeals ruled in favor of the respondent, enjoining petitioner from using “CEEGEEFER” and awarding damages. The Supreme Court’s ponencia affirmed this decision.
ISSUE
Whether the Court of Appeals committed reversible error in finding trademark infringement by petitioner’s use of “CEEGEEFER” against respondent’s registered mark “CEFER.”
RULING
In his dissenting opinion, Justice Leonen argued that the Court of Appeals erred. For trademark infringement under Section 155 of the Intellectual Property Code, three elements must concur: (1) a valid mark owned by the plaintiff, (2) ownership thereof, and (3) the defendant’s use of a mark or its colorable imitation results in a likelihood of confusion. The dissent emphasized that the core test is the “likelihood of confusion.” The analysis must compare the competing marks in their entirety as they appear in their respective registrations and actual use, considering the distinctiveness of the plaintiff’s mark, the similarity of the goods, and the purchasing public’s perception. The dissent posited that a holistic comparison of “CEFER” and “CEEGEEFER” shows significant visual, aural, and conceptual differences. “CEEGEEFER” is a descriptive term hinting at its components (Vitamin C and Iron), whereas “CEFER” is arbitrary. Given these distinctions and the nature of pharmaceutical buyers who exercise a higher degree of care, there is no likelihood of confusion. Therefore, the essential element for infringement is absent, and the injunction and award of damages constitute reversible error.