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OFFICE OF THE DIRECTOR G~NERAL 'll../ t ,L 4

BLUE SKY TRADING CO., INC., APPEAL NO. 14-08-06 ~ Appellant, IPC No. 14-2007-00119

Opposition to:

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-versus- Serial No. .4-2005-004859 Date Filed: 26 May 2005

WYETH HOLDINGS CORPORATION; Trademark: CALMATE Appellee.

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~NOTICE OF DECISION . . (

~. ; PEL.AEZ GREGO~!O GREGDRW 8< LIM I

PELAEZ GREGORIO'-&>t~UW-=QFF:Ip~:JI"i\ DIR"ECTOR:LENY B. RAZ Counsel for Appellant iii) ~--" ..,_·u.--.--·l''~I' Bureau of Legal Affairs. '

6th

Floor Padilla Bldg., F·.:9:r,:~gas Jr. ;)EG I ~J 2D03 " Intellectual Pr?perty Office Rd. (formerly Emerald'A!vej)L ' Makati City 1

Ortigas Center, Pasig Ci~ <J~~

SYCIP SALAZAR HERNA~· , ','to" IP PHILIPP NES LIBRARY & GATMAITAN ,<'. - , ' .r, .: ,~ Documentati ,Information

Counsel for Appellee' " ,\;-"'>-';:'~-I'rinfCfC \ and TechnolofYTransf~r Bureau SSHG Law Center ,". r " '\ Intellectual Prfperty Office 105 Paseo de R01:as, f:v1akati'cIJ#G--rr:ZrfDtt \1) . M'akati City I

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ESTRELLITA BELTRAN-A:i3ELARD0 Director, Bureau of Legal Affairs I

J .Intellectual Property Office

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Makati City

GREETINGS:

Please be informed that on 18 December 2008, the Office of the Director General rendered a Decision in the above-titled case (copy attached).

J Makati City, 18 December 20q8.

Very truly yours, I"

CERTIFIED TRUEC0PY: f F i

ATTY. 'A ANIE S, AREVALO ~ f Robert l'Jr.::rco B. Samson Attor y VI Head; Office of Legal Counsel

Attorney I V ,Of ce of the Director General Repu btlcotf h~ Phillppines . IOffice of the Dir~et\Jr Genera! INTELLECTUAL PROPERTY OFFICE, !

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INTELLECTUAL PROPERTY PHILIPPINES

OFFICE OF THE DIRECTOR GENERAL

BLUE SKYTRADING CO., INC., APPEAL NO. 14-08-06 Appellant, IPC No. 14-2007-00119

Opposition to:

-versus- Serial No. 4-2005-004859 Date Filed: 26 May 2005

WYETH HOLDINGS CORPORATION, Trademark: CALMATE Appellee.

x--------------------------------------------------x

NOTICE OF DECISION

PELAEZ GREGORIO & LIM LAW OFFICE DIRECTOR LENY B. RAZ Counsel for Appellant Bureau of Legal Affairs 6th Floor Padilla Bldg., F. Ortigas Jr. Intellectual Property Office Rd. (formerly Emerald Ave.) Makati City Ortigas Center, Pasig City f

SYCIP SALAZAR HERNANDEZ IP PHILIPPINES LIBRARY &GATMAITAN Documentation, Information Counsel for Appellee and Technology Transfer Bureau SSHG Law Center Intellectual Property Office 105 Paseo de Roxas, Makati City Makati City

~

ESTRELLITA BELTRAN-ABELARDO Director, Bureau of Legal Affairs Intellectual Property Office Makati City

GREETINGS:

Please be informed that on 18 December 2008, the Office of the Director General rendered a Decision in the above-titled case (copy attached).

Makati City, 18 December 2008.

Very truly yours,

ATTY. 'A Attor y VI Head, Office of Legal Counsel

' f h Ph'l' Of Ice of the Director General epublic 0 tel ippmesRINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil PuvatAve.. Makati City 1200 Philionines s www.inonhil.zovnh

I ~iP INTELLECTUAL PROPERTY PHILIPPINESI

OFFICE OF THE DIRECTOR GENERAL

I BLUESKYTRADING CO., INC., Appeal No. 14-08-06

Appellant, Inter Partes Case No. 14-2007-00119

I -versus- Opposition to: Application No. 4-2005-004859

J WYETH HOLDINGS CORPORATION, Date Filed: 26 May 2005 Appellee. Trademark: CALMATE

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DECISION

BLUE SKY TRADING CO., INC. ("Appellant") appeals Decision No. 2007-175,

dated 28 November 2007, of the Director of the Bureau of Legal Affairs ("Director"). The Director sustained the opposition of WYETH HOLDINGS CORPORATION ("Appellee") to the Appellant's application for the registration of the mark "CALMATE" for calcium supplement chewable tablet under Class 5'.

Records show that the Appellant filed on 26 May 2005 the subject trademark application. The application was published in the Intellectual Property Office E­Gazette for Trademarks on 05 January 2007. Consequently, the Appellee filed a "NOTICE OF OPPOSITION" on 07 May 2007 alleging the following:

1. It is the owner and originator of the mark "CALTRATE" used on calcium supplements and is the prior user and registrant of the mark in the Philippines and around the world;

2. It is a well-known manufacturer of a wide variety of products including vitamin and mineral supplements such as calcium supplements and has adopted and used CALTRATE for its calcium supplements in the Philippines and around the world, long before the Appellant's unauthorized appropriation of the closely and confusingly similar mark CALMATE ;

3. It has advertised and widely promoted its goods bearing the mark CALTRATE in the Philippines and around the world resulting in substantial sales and goodwill over the years;

I Under Class 5 of the Nice Classification. The Nice Classification is a classification of goods and services for the purpose

of registering trademarks and service marks, based on a multilateral treaty administered by the World Intellectual Property

Organization (WIPO). This treaty is called the Nice Agreement Concerning the lnterrutionsl Classification ot'Goods and

Services tor the Purposes ofthe Registmtion ofMarks concluded in 1957.

blucsky vs. wyeth page 1 of 8

Republic of the Philippines INTELLECTUAL PROPERTY OFFICE

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4. CALTRATE is a well-known mark within the meaning of Sees. 123.1

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(e) and 147.1 of the Intellectual Property Code of the Philippines ("IP Code"), Art. 6bis of the Paris Convention for the Protection of Industrial Property ("Paris Convention") and Art. 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement");

S. CALMATE, as used on identical calcium supplements, so resembles its mark as to be likely, when applied to or used in connection with the identical goods of the Appellant, to erroneously indicate a connection between the Appellant's and Appellee's goods, cause confusion, mistake and/or deception on the purchasing public;

6. The registration of CALMATE in the name of the Appellant will violate Sees. 123.1, pars. (d) and (e) of the IP Code, Art. 6bis of the Paris Convention and Art. 16 of the TRIPS Agreement;

7. The registration and use by the Appellant of CALMATE will diminish the distinctiveness and dilute the goodwill of the Appellee's mark which is an arbitrary mark when used in connection with calcium supplements; and

8. The Appellant's unauthorized appropriation and use of the mark CALMATE will infringe upon the Appellee's right to its locally registered and internationally well-known mark and will tend to deceive and/or confuse purchasers into believing that the Appellant's goods emanate from or are under the sponsorship of the Appellee, damaging the latter's interests.

The Appellant filed an "ANSWER (To Notice of Opposition)" on 03 July 2007 alleging that:

1. The opposition filed on 07 May 2007 is time barred having been filed outside the reglementary period from os January 2007;

2. The mark CALMATE cannot be considered as colorable imitation of CALTRATE under either the ""Holistic" or "Dorninancy" test on trademark infringement;

3. While the opposing marks have certain similarities, there are also glaring and striking differences or dissimilarities;

bluesky vs. wyeth page 2 of 8

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4. The manifest dissimilarities in the spelling, appearance and sound between the marks at once readily reject any colorable imitation between the two for one of them to be confused with the other in the eyes of the unknowing ordinary purchaser;

5. The label on the Appellant's product strikingly distinguishes and separates it from the Appellee's in appearance, size and spelling;

6. There can be no confusion as to the origin of the goods of both marks, particularly form the point ofview of the buying public; and

7. The opposition is baseless and unfounded.

The Appellee submitted the following evidence to support its opposition:

1. Affidavit of Mr. Bret I. Parker executed on 01 April 2007;2

2. Certification from the Bureau of Trademarks that the marks "ITS NEVER TOO LATE FOR CALTRATE" and "CALTRATE" are deemed registered in favor of the Appellee on 27 November 2006 and 08

January 2007, respectively:' 3. Copies ofSales Invoices for CALTRATE;4 4. A compact disc containing the local commercials for CALTRATE

products.' 5. Handouts, brochures, flyers, advertisements and survey findings for

CALTRATE;6 6. List of countries where CALTRATE is registered and/or has

trademark applications;' 7. Certified true copies of trademark registration for CALTRATE;8 and 8. Printouts from various websites of the Appellee."

On the other hand, the Appellant's evidence consists of a copy of the label of its products",

After the appropriate proceedings, the Director sustained the Appellee's opposition. According to her, a comparison of the competing marks would show that their prefix and suffix are similar and both are composed of two syllables and

2 Exhibit "A". 3 Exhibits "B" and "C". 4 Exhibit "D". 5 Exhibit "E". 6 Exhibits "F", "G", "J", and "K" inclusive of sub-markings. 7 Exhibit "H". 8 Exhibit "I", inclusive of sub-markings. 9 Exhibit "L". !O Exhibit "1".

blues!"), vs, wyeth rpage 3 of 8

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that when pronounced, both marks sound confusingly similar. She held that given that these marks are to be used on the same class of goods, namely calcium

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supplements, confusion would not be a remote occurrence. The Director also said that the Appellee had obtained an earlier registration for the mark CALTRATE and that the Appellant's registration is proscribed under Sec. 123.1 (d) of the IP Code.

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On 16 January 2008, the Appellant filed an "APPEAL MEMORANDUM". In its appeal, the Appellant alleges that CALMATE cannot be considered a colorable imitation of CALTRATE. The Appellant maintains that the marks must be considered in their entirety as they appear on their respective labels. The Appellant asserts that the appearances of CALMATE and CALTRATE are completely different and distinct from each other that cannot possibly create any confusion particularly

~ from the point of view of the public seeking to purchase the goods of the two trademark owners. According to the Appellant, the syllable "CAL" cannot by itself be legally appropriated by any person, much less by the Appellee so as to proscribe its use by others.

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The Appellee filed its comment to the appeal on 06 March 2008. In its comment, the Appellee maintains that CALMATE is confusingly similar to CALTRATE, the dominant features of the competing marks being the word elements and letters "CALTRATE" and "CALMATE". The Appellee asserts that CALMATE is visually and aurally similar to CALTRATE that when applied to or used in connection with the identical goods of the Appellant, will likely cause confusion, mistake and deception on the part of the purchasing public. The Appellee also contends that the registration and use by the Appellant of the mark CALMATE will diminish the distinctiveness and dilute the goodwill of the mark CALTRATE which is a well-known mark within the meaning of the Paris

1 Convention, the TRIPS Agreement and the provisions of the IP Code. According to J j the Appellee, the Appellant is not a prior user in good faith of the mark CALMATE 1 and is not entitled to any form of legal protection under the IP Code. ~

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 into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the 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."

Thus, Sec. 123.1(d) of the IP Code, states 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:

11 PribhdasJ. Mirpuri v. CA, G.R. No. 114508,19 November 1999.

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(i) The same goods or services, or j (ii) Closely related goods or services, or I (iii) If it nearly resembles such a mark as to be likely to deceive or cause I confusion;"I

j It is not disputed that the Appellee had a trademark application for

CALTRATE covering products under Class 5, with a filing date earlier than the1 Appellant's trademark application." On 08 January 2007, the Appellee was issued ~ l Cert. of Reg. No. 4-2003-00681413. The Appellee was also issued on 27 November

2007 Cert. of Reg. No. 4-2°°5-°°5588 for the mark IT'S NEVER TOO LATE FOR 1 CALTRATE, for use also on products under Class 5. ~ J

The contentious issue, therefore, is whether CALMATE so resembles f CALTRATE that would likely cause deception or confusion. i ~

~ In this regard, below is a reproduction of the competing marks: t ~

CALMATE Caltrate

Appellant's mark Appellee's mark

Obviously, the marks are aurally and visually similar. This Office concurs with the observations made by the Director, to wit:

"A comparison of the marks show that the prefix are identical and suffix of both marks are similar. They are likewise composed of two syllables. Both marks adopt the prefix 'CAL'. Both marks end with the letters 'ATE'. The difference lie only in the first letters of their suffix, one starts with 'm' while the other starts with 'tr'. Still, when pronounced, both marks sound confusingly similar. Phonetic similarity is a factor in considering whether marks may be confused with each other.?"

In McDonalds Corporation v. Macloy Fastfood Corporation'S, the Supreme Court citing the case of McDonalds Corporation, et al., v. L'C. Big Mak: Burqer" held:

"This Court, ... , has relied on the dominancy test rather than the holistic test. The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar. Under the dominancy test, courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences. Courts will consider more the aural and visual impressions created by the

12 Filing date of 30 July 2003. 1.1 Filed on 30 July 2003 and is deemed registered on 08 Jan. 2007. 14 Decision No. 2007-175, dated 28 Nov. 2007, page 4. 15 G. R. No. 166115,02 Feb. 2007. 16 G. R. No. 143993, 18 1\Ug. 2004.

blues")' vs, wyeth page 5 of 8

marks in the public mind, giving little weight to factors like prices, quality, sales outlets and market segments."

Also, the difference in the letters of the suffix of the competing marks would not prevent the likelihood of confusion, not only because the difference is negligible, but also because the competing marks are used on similar products, which are being sold and distributed through the same channels of trade.

The Appellee is the prior user and registered owner of the mark CALTRATE and to allow the Appellant to register the mark CALMATE on products similar to those of the Appellee will likely cause confusion and thus, damage to the interest of the Appellee. The Appellee being the first one to bring into the market the products bearing the mark CALTRATE should be given protection from possible deception or confusion. Records in fact show that the Appellee has been using CALTRATE as early as 1988 when it was granted Cert. of Reg. No. 038627.17

Moreover, the evidence submitted by the Appellee shows that CALTRATE is a well-known mark. It has trademark registrations for CALTRATE mainly for use on Class 5 in many countries, namely, Algeria, Angola, Antigua, Argentina, Aruba, Australia, Austria, Bahamas, Bahrain, Barbados, Bleize, Benelux, Bermuda, Bolivia, Bostwana, Brazil, Bulgaria, Canada, Cayman Islands, Chile, China, Colombia, Costa Rica, Croatia, Cuba, Czech Republic, Denmark, Dominica, Dominican Republic, Ecuador, Egypt, EI Salvador, Estonia, Finland, France, Gaza, Germany, Ghana, Great Britain, Greece, Grenada, Guatemala, Guyana, Haiti, Honduras, Hong Kong, Hungary, Iceland, India, Indonesia, Iran, Iraq, Ireland, Israel, Italy, Jamaica, Japan, Jordan, Kenya, Kuwait, Latvia, Lebanon, Lesotho, Libya, Lithuania, Macao, Malaysia, Mexico, Morocco, Namibia, Netherlands Antilles, New Zealand, Nicaragua, Nigeria, Norway, G.A.P.L, Pakistan, Panama, Peru, Philippines, Poland, Portugal, Puerto Rico, Romania, Russia, Saudi Arabia, Singapore, Slovak Republic, Slovenia, South Africa, South Korea, Spain, St. Kits-Nevis, St. Lucia, St. Vincent, Suriname, Swaziland, Sweden, Switzerland, Taiwan, Thailand, Trinidad, Tunisia, Turkey, United Arab Emirates, United States, Uruguay, Venezuela, Vietnam, West Bank, Zambia, Zimbabwe." It submitted representative samplings of these registrations. 19

The Appellee also adduced documentary evidence regarding the extent and scope of the advertisement and promotion of the mark CALTRATE in the Philippines", Canada, Central America, Germany, Hong Kong, Mexico, and Taiwan". It is also maintaining several websites which advertise and promote the

17 This certificate of registration was however canceled for failure by the Appellee to file the 10 t h anniversary maintenance requirements. IR Exhibit "H:. 19 Exhibit "I". zo Exhibit "F" and "G" (including sub-markings). ~\ Exhibit "K".

bluesky vs. wyeth page 6 of 8

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brand or mark CALTRATE.22 And, in addition to the documents showing the extent of sales of CALTRATE products in the Philippines, Bret I. Parker, Assistant Secretary of the Appellee corporation also stated in his Affidavit the Appellee's worldwide sales and advertising expenses for products bearing the mark CALTRATE. In 2006 alone, the Appellee's worldwide sales and advertising expenses totaled in excess of US0194,000,000 and USO 24,000,000, respectively."

Thus, CALTRATE is deemed a well-known mark under the criteria set forth by Rule 102 of the Trademark Regulations. Hence, it is also entitled to protection under Sec. 123.(e) and (f) of the IP Code, which state that a mark shall not be registered if it:

"(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

"(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;"

It is emphasized that the mark CALTRATE was created by the Appellee to distinguish its products. It is a distinctive mark such that it is very remote the possibility that another party by coincidence, will adopt a similar mark to be used on the same class of goods. It can be fairly inferred that the Appellant knew of the mark CALTRATE when it adopted CALMATE, it being a member of the industry. As correctly pointed out by the Appellee:

"26. Again, it must be emphasized that Opposer-Appellee's trademark CALTRATE is an arbitrary trademark when used on its goods in Class 5. It is therefore

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and goodwill of Opposer-Appellee's trademark CALTRATE prior to its appropriation, and application for registration, of the mark CALMATE. When an applicant, without a reasonable explanation, uses the same elements which are dominant features in

22 Exhibit "L". 23 Exhibit "A", pars. 15-16.

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surprising that notwithstanding a boundless choice of words, phrases and symbols, Respondent-Appellant has chosen a mark that closely resembles Opposer-Appellee's mark for use on exactly identical goods. In the absence of a plausible explanation from the Respondent-Appellant as to how this happened, it is not far-fetched to conclude that Respondent-Appellant is aware of the existence, prior use and registration in the Philippines for a considerable period of time, international renown

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another person's mark, though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive. (Del Monte Corporation vs. Court of Appeals, 181 SCRA 410) Respondent-Appellant's adoption of the mark CALTRATE is therefore not due to mere chance but through a deliberate design by Respondent-Appellant in an effort to trade upon the goodwill and favorable reputation already earned by Opposer-Appellee from its mark CALTRATE."Z4

On the other hand, the Appellant failed to successfully explain why it adopted the mark CALMATE which resembles CALTRATE. In this regard, the statement by the Supreme Court in one case is instructive.

"Of course, as in all other cases of colorable imitations, the unanswered riddle is why, of the millions of terms and combinations of letters and designs available, the appellee had to choose those so closely similar to another's trademark if there was no intent to take advantage of the goodwill generated by the other rnark.""

The intellectual property system was established to recognize creativity and give incentives to innovations. Similarly, the trademark registration system seeks to reward entrepreneurs and individuals who through their own innovations were able to distinguish their goods or services by a visible sign that distinctly points out the origin and ownership of such goods or services. The trademark registration system should not be used to perpetuate any acts that would undermine the intellectual property system. A person must not be allowed to get a free ride on the reputation and selling power of the products of another, for a self-respecting person or a reputable business concern does not remain in the shelter of another's popularity and goodwill."

It is emphasized that the registration of trademarks involves public interest. Public interest therefore, require that only marks that would not likely cause deception, mistake or confusion should be registered. The consumers must be protected from deception, mistake or confusion with respect to the goods or services they buy. Trademarks serve to guarantee that the product to which they are affixed comes up to a certain standard of quality. Modern trade and commerce demands that depredations on legitimate trademarks should not be countenanced. The law against such depredations is not only for the protection of the owner of the trademark but also, and more importantly, for the protection of consumers from confusion, mistake, or deception as to the goods they are buying."

WHEREFORE, premises considered, the instant appeal is hereby DISMISSED. Let a copy of this Decision as well as the trademark application and records be furnished and returned to the Director of the Bureau of Legal Affairs for appropriate action. Further, let also the Director of the Bureau of Trademarks and

~. COMMENT[ on Appeal Memorandum dated January 15, 2008], dated 18 Feb. 2008, page 12. ~, .American Wire & Cable Compatry u. Director 0/Patents, G. R. No. L-26557, 18 Feb. 1970. ~(, Philippine Nut Industry, Inc. u. Standard BrandsIncorporated, et al., G. R. No. L-23035, 31 July 1975. ~7 See Le Chemise Lacoste, SA. u. OscarC Fernandec, et. al, G.R. Nos. 63796-97 and G.R. No. 65659, 21 May 1984.

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the library of the Documentation, Information and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance, and records purposes.

SO ORDERED.

~DEC 1 8 2008 Makati City

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~iP INTELLECTUAL PROPERTY PHILIPPINES

OFFICE OF THE DIRECTOR GENERAL

BLUE SKY TRADING CO., INC., APPEAL NO. 14-08-06 Appellant, IPC No. 14-2007-00119

Opposition to:

-versus- Serial No. 4-2005-004859 Date Filed: 26 May 2005

WYETH HOLDINGS CORPORATION, Trademark: CALMATE Appellee.

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NOTICE OF DECISION

PF:LAEZ GREGORfO GREGORIO !c L1tJi PELAEZ GREGORIO!&..'t-- - I r.tP ~ DIRECTOR LENY B. RAZ Counsel for Appellant Ii;' Bureau of Legal Affairs 6th Floor Padilla Bldg., F..:~')tigas Jr. 1 9 2D08 Intellectual Property Office Rd. (formerly Emerald AV,:P\ Makati City Ortigas Center, Pasig Ci~ U

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SYCIP SALAZAR HERNK E T,·~.! IP PHILIPPINES LIBRARY & GATMAITAN l-"-:'-~.' ..... ,." Documentation, Information Counsel for Appellee .. 't 0jf"1rirlCftt~ and Technology Transfer Bureau SSH G Law Center. .r I~ , Intellectual Property Office

105 Paseo de Roxas, ¥ak~ti'~~~1 y Makati City

i:& \. -- '-'" -- ­ESTRELLITA BELTRAN-ABELARDO ,f. I

Director, Bureau of Leg:!;l Affairs ~t{ i;};rA Intellectual Property Office J. ;Ir/uf Makati City

GREETINGS:

Please be informed that on 18 December 2008, the Office of the Director General rendered a Decision in the above-titled case (copy attached).

Makati City, 18 December 2008.

Very truly yours,

CERTIFIED TRUE COPY:

ATTY. 'A NIE S. AREVALO ~ Robert Ncrco B. Samson Attor y VI Head, Office of Legal Counsel

Attorney IV . f h Ph" Of tee of the Director GeneralRepubhc 0 t e ilippmes

Office of the Director General INTELLECTUAL PROPERTY OFFICE

~iP INTELLECTUAL PROPERTY PHILIPPINES

OFFICE OF THE DIRECTOR GENERAL

BLUE SKYTRADING CO., INC:, Appeal No. 14-08-06 Appellant,

Inter Partes Case No. 14-2007-00119 -versus- Opposition to:

Application No. 4-2005-004859 WYETH HOLDINGS CORPORATION, Date Filed: 26 May 2005

Appellee. Trademark: CALMATE x------------------------------------------------x

DECISION

BLUE SKY TRADING CO., INC. ("Appellant") appeals Decision No. 2007-175,

dated 28 November 2007, of the Director ofthe Bureau of Legal Affairs ("Director"). The Director sustained the opposition of WYETH HOLDINGS CORPORATION ("Appellee") to the Appellant's application for the registration of the mark "CALMATE" for calcium supplement chewable tablet under Class 5'.

Records show that the Appellant filed on 26 May 2005 the subject trademark application. The application was published in the Intellectual Property Office E­Gazette for Trademarks on 05 January 2007. Consequently, the Appellee filed a "NOTICE OF OPPOSITION" on 07 May 2007 alleging the following:

1. It is the, owner and originator of the mark "CALTRATE" used on calcium supplements and is the prior user and registrant of the mark in the Philippines and around the world;

2. It is a well-known manufacturer of a wide variety of products including vitamin and mineral supplements such as calcium supplements and has adopted and used CALTRATE for its calcium supplements in the Philippines and around the world, long before the Appellant's unauthorized appropriation of the closely and. confusingly similar mark CALMATE ;

3. It has advertised and widely promoted its goods bearing the mark CALTRATE in the Philippines and around the world resulting in substantial sales and goodwill over the years;

1 Under Class 5 of the Nice Classification. The Nice Classification is a classification of goods and services for the purpose

of registering trademarks and service marks, based on a multilateral treaty administered by the World Intellectual Property

Organization (WIPO). This treaty is called the Nice AgreemeJJt COJ1cel11iJ1g the Intcmationsl Clsssiticatiou ofGoods and

Services Ior the Purposes oftlte Registration orM.1lksconcluded in 1957.

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CERTIFIED TRUE COPY: bluesky vs. wyeth page 1 of 8

~ Republic of the Philippines Robert Nereo R..~:Irn~(\n INTELLECTUAL PROPERTY OFFICE

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I I 4. CALTRATE is a well-known mark within the meaning of Sees. 123.1

(e) and 147.1 of the Intellectual Property Code of the Philippines ("IP I Code"), Art. 6bis of the Paris Convention for the Protection ofI Industrial Property ("Paris Convention") and Art. 16 of the

'Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS Agreement");

5. CALMATE, as used on identical calcium supplements, so resembles its mark as to be likely, when applied to or used in connection with the identical goods of the Appellant, to erroneously indicate a connection between the Appellant's and Appellee's goods, cause confusion, mistake and/or deception on the purchasing public;

6. The registration of CALMATE in the name of the Appellant will violate Sees. 123.1, pars. (d) and (e) of the IP Code, Art. 6bis of the Paris Convention and Art. 16of the TRIPSAgreement;

7. The registration and use by the Appellant of CALMATE will diminish the distinctiveness and dilute the goodwill of the Appellee's mark which is an arbitrary mark when used in connection with calcium supplements; and

8. The Appellant's unauthorized appropriation and use of the mark CALMATE will infringe upon the Appellee's right to its locally registered and internationally well-known mark and will tend, to t deceive and/or confuse purchasers into believing that the Appellant's goods emanate from or are under the sponsorship of the Appellee, damaging the latter's interests. 1

~ -1, The Appellant filed an "ANSWER (To Notice of Opposition)" on 03 July 2007

alleging that:

I 1. The opposition filed on 07 May 2007 is time barred having been

filed outside the reglementary period from 05 January 2007;

I 2. The mark CALMATE cannot be considered as colorable imitation of CALTRATE under either the ''''Holistic'' or "Dominancy" test on trademark infringement;

While the opposing marks have certain similarities, there are also 3· glaring and striking differences or dissimilarities;

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4. The manifest dissimilarities in the spelling, appearance and sound between the marks at once readily reject any colorable imitation between the two for one of them to be confused with the other in the eyes of the unknowing ordinary purchaser;

5. The label on the Appellant's product strikingly distinguishes and separates it from the Appellee's in appearance, size and spelling;

6. There can be no confusion as to the origin of the goods of both marks, particularly form the point ofview of the buying public; and

7. The opposition is baseless and unfounded.

The Appellee submitted the following evidence to support its opposition:

1. Affidavit of Mr. Bret I. Parker executed on 01 April 2007;~

2. Certification from the Bureau of Trademarks that the marks "ITS NEVER TOO LATE FOR CALTRATE" and "CALTRATE" are deemed registered in favor of the Appellee on 27 November 2006 and 08

January 2007, respectively:' 3. Copies of Sales Invoices for CALTRATE;4 4. A compact disc containing the local commercials for CALTRATE

products:" 5. Handouts, brochures, flyers, advertisements and survey findings for

CALTRATE;6 6. List of countries where CALTRATE is registered and/or has

trademark applications;' 7. Certified true copies of trademark registration for CALTRATE;8 and 8. Printouts from various websites of the Appellee."

On the other hand, the Appellant's evidence consists of a copy of the label of its products".

After the appropriate proceedings, the Director sustained the Appellee's opposition. According to her, a comparison of the competing marks would show that their prefix and suffix are similar and both are composed of two syllables and

2 Exhibit "A". ,3 Exhibits ''B'' and "C" . •4 Exhibit "D". 5 Exhibit "E". 6 Exhibits "F", "G", "J", and "K" inclusive of sub-markings. 1 Exhibit "H". B Exhibit "I", inclusive of sub-markings. 9 Exhibit "L". IU Exhibit "1".

/

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that when pronounced, both marks sound confusingly similar. She held that given that these marks are to be used on the same class of goods, namely calcium supplements, confusion would not be a remote occurrence. The Director also said that the Appellee had obtained an earlier registration for the mark CALTRATE and that the Appellant's registration is proscribed under Sec. 123.1 (d) of the IP Code.

On 16 January 2008, the Appellant filed an "APPEAL MEMORANDUM". In its appeal, the Appellant alleges that CALMATE cannot be considered a colorable imitation of CALIRATE. The Appellant maintains that the marks must be considered in their entirety as they appear on their respective labels. The Appellant asserts that the appearances of CALMATE and CALTRATE are completely different and distinct from each other that cannot possibly create any confusion particularly from the point of view of the public seeking to purchase the goods of the two trademark owners. According to the Appellant, the syllable "CAL" cannot by itself be legally appropriated by any person, much less by the Appellee so as to proscribe its use by others.

The Appellee filed its comment to the appeal on 06 March 2008. In its comment, the Appellee maintains that CALMATE is confusingly similar to CALTRATE, the dominant features of the competing marks being the word elements and letters "CALTRATE" and "CALMATE". The Appellee asserts that CALMATE is visually and aurally similar to CALTRATE that when applied to or used in connection with the identical goods of the Appellant, will likely cause confusion, mistake and deception on the part of the purchasing public. The Appellee also contends that the registration and use by the Appellant of the mark CALMATE will diminish the distinctiveness and dilute the goodwill of the mark CALTRATE which is a well-known mark within the meaning of the Paris Convention, the TRIPS Agreement and the provisions of the IP Code. According to the Appellee, the Appellant is not a prior user in good faith of the mark CALMATE and is not entitled to any form oflegal protection under the IP Code.

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 into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the 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."

Thus, Sec. 123.1(d) of the IP Code, states 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:

11 Pribhdasj. Mirpuri v. CA., G.R. No. 114508,19 November 1999.

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(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;"

It is not disputed that the Appellee had a trademark application for CALTRATE covering products under Class 5, with a filing date earlier than the Appellant's trademark application." On 08 January 2007, the Appellee was issued Cert. of Reg. No. 4-2003-00681413. The Appellee was also issued on 27 November 2007 Cert. of Reg. No. 4-2005-005588 for the mark IT'S NEVER TOO LATE FOR CALTRATE, for use also on products under Class 5.

The contentious issue, therefore, is whether CALMATE so resembles CALTRATE that would likely cause deception or confusion.

In this regard, below is a reproduction of the competing marks:

CALMATE Caltrate Appellant's mark Appellee's mark

Obviously, the marks are aurally and visually similar. This Office concurs with the observations made by the Director, to wit:

"A comparison of the marks show that the prefix are identical and suffix of both marks are similar. They are likewise composed of two syllables. Both marks adopt the prefix 'CAL'. Both marks end with the letters 'ATE'. The difference lie only in the first letters of their suffix, one starts with 'm' while the other starts with 'tr', Still, when pronounced, both marks sound confusingly similar. Phonetic similarity is a factor in considering whether marks may be confused with each other.'?'

In McDonalds Corporation v. Macloy Fastfood Corporation'S, the Supreme Court citing the case of McDonalds Corporation, et al., v. L.c. Big Mak Burqer" held:

"This Court, ... , has relied on the dominancy test rather than the holistic test. The dominancy test considers the dominant features in the competing marks in determining whether they are confusingly similar. Under the dominancy test, courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences. Courts will consider more the aural and visual impressions created by the

12 Filing date of 30 July 2003. B Filed on 30 July 2003 and is deemed registered on 08 Jan. 2007. 14 Decision No. 2007-175, dated 28 Nov. 2007, page 4. 15 G. R. No. 166115,02 Feb. 2007. 16 G. R. No. 143993, 18 Aug. 2004.

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marks in the public mind, giving little weight to factors like prices, quality, sales outlets and market segments."

Also, the difference in the letters of the suffix of the competing marks would not prevent the likelihood of confusion, not only because the difference is negligible, but also because the competing marks are used on similar products, which are being sold and distributed through the same channels of trade.

The Appellee is the prior user and registered owner of the mark CALTRATE and to allow the Appellant to register the mark CALMATE on products similar to those of the Appellee will likely cause confusion and thus, damage to the interest of the Appellee. The Appellee being the first one to bring into the market the products bearing the mark .CALTRATE should be given protection from possible deception or confusion. Records in fact show that the Appellee has been using CALTRATE as early as 1988 when it was granted Cert. of Reg. No. 038627.17

Moreover, the evidence submitted by the Appellee shows that CALTRATE is a well-known mark. It has trademark registrations for CALTRATE mainly for use on Class 5 in many countries, namely, Algeria, Angola, Antigua, Argentina, Aruba, Australia, Austria, Bahamas, Bahrain, Barbados, Bleize, Benelux, Bermuda, Bolivia, Bostwana, Brazil, Bulgaria, Canada, Cayman Islands, Chile, China, Colombia, Costa

.Rica, Croatia, Cuba, Czech Republic, Denmark, Dominica, Dominican Republic,

.Ecuador, Egypt, EI Salvador, Estonia, Finland, France, Gaza, Germany, Ghana, Great Britain, Greece, Grenada, Guatemala, Guyana, Haiti, Honduras, Hong Kong, Hungary, Iceland, India, Indonesia, Iran, Iraq, Ireland, Israel, Italy, Jamaica, Japan, jordan, Kenya, Kuwait, Latvia, Lebanon, Lesotho, Libya, Lithuania, Macao, Malaysia, Mexico, Morocco, Namibia, Netherlands Antilles, New Zealand, Nicaragua, Nigeria, Norway, G.A.P.L, Pakistan, Panama, Peru, Philippines, Poland, Portugal, Puerto Rico, Romania, Russia, Saudi Arabia, Singapore, Slovak Republic, Slovenia, South Africa, South Korea, Spain, St. Kits-Nevis, St. Lucia, St. Vincent, Suriname, Swaziland, Sweden, Switzerland, Taiwan, Thailand, Trinidad, Tunisia, Turkey, United Arab Emirates, United States, Uruguay, Venezuela, Vietnam, West Bank, Zambia, Zimbabwe." It submitted representative samplings of these registrations. 19

The Appellee also adduced documentary evidence regarding the extent and scope of the advertisement and promotion of the mark CALTRATE in the Philippines", Canada, Central America, Germany, Hong Kong, Mexico, and Taiwan". It is also maintaining several websites which advertise and promote the

11 This certificate of registration was however canceled for failure by the Appellee to file the 10th anniversary maintenance requirements. 18 Exhibit "H:. 19 Exhibit "I". 20 Exhibit "F" and "G" (including sub-markings). 21 Exhibit "K".

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brand or mark CALTRATE.22 And, in addition to the documents showing the extent of sales of CALTRATE products in the Philippines, Bret I. Parker, Assistant Secretary of the Appellee corporation also stated in his Affidavit the Appellee's worldwide sales and advertising expenses for products bearing the mark CALTRATE. In 2006 alone, the Appellee's worldwide sales and advertising expenses totaled in excess OfUSOI94,000,000 and USO 24,000,000, respectively."

Thus, CALTRATE is deemed a well-known mark under the criteria set forth by Rule 102 of the Trademark Regulations. Hence, it is also entitled to protection under Sec. 123.(e) and (f) of the IP Code, which state that a mark shall not be registered if it:

"(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

"(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;"

It is emphasized that the mark CALTRATE was created by the Appellee to distinguish its products, It is a distinctive mark such that it is very remote the possibility that another party by coincidence, will adopt a similar mark to be used on the same class of goods. It can be fairly inferred that the Appellant knew of the mark CALTRATE when it adopted CALMATE, it being a member of the industry.

j As correctly pointed out by the Appellee:

"26. Again, it must be emphasized that Opposer-Appellee's trademark CALTRATE is an arbitrary trademark when used on its goods in Class 5. It is therefore surprising that notwithstanding a boundless choice of words, phrases and symbols, Respondent-Appellant has chosen a mark that closely resembles Opposer-Appellee's. mark for use on exactly identical goods. In the absence of a plausible explanation from the Respondent-Appellant as to how this happened, it is not far-fetched to conclude that Respondent-Appellant is aware of the existence, prior use and registration in the Philippines for a considerable period of time, international renown and goodwill of Opposer-Appellee's trademark CALTRATE prior to its appropriation, and application for registration, of the mark CALMATE. When an applicant, without a reasonable explanation, uses the same elements which are dominant features in

22 Exhibit HL".

23 Exhibit H.A", pars. 15-16.

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~ Raben Nereo B. Samson ,

I another person's mark, though the field of its selection was so broad, the inevitable conclusion is that it was 'done deliberately to deceive. (Del Monte Corporation vs. Court of Appeals, 181 SCRA 410) Respondent-Appellant's adoption of the mark CALTRATE is therefore not due to mere chance but through a deliberate design by Respondent-Appellant in an effort to trade upon the goodwill and favorable reputation already earned by Opposer-Appellee from its mark CALTRATE."'4

On the other hand, the Appellant failed to successfully explain why it adopted the mark CALMATE which resembles CALTRATE. In this regard, the statement by the Supreme Court in one case is instructive.

"Of course, as in all other cases of colorable imitations, the unanswered riddle is why, of the millions of terms and combinations of letters and designs available, the appellee had to choose those so closely similar to another's trademark if there was no intent to take advantage of the goodwill generated by the other mark."?

The intellectual property system was established to recognize creativity and

I.

give incentives to innovations. Similarly, the trademark registration system seeks to reward entrepreneurs and individuals who through their own innovations were able to distinguish their goods or services by a visible sign that distinctly points out the origin and ownership of such goods or services. The trademark registration system should not be used to perpetuate any acts that would undermine the intellectual property system. A person must not be allowed to get a free ride on the reputation and selling power of the products of another, for a self-respecting person or a reputable business concern does not remain in the shelter of another's

} popularity and goodwill.t"

It is emphasized that the registration of trademarks involves public interest. Public interest therefore, require that only marks that would not likely cause deception, mistake or confusion should be registered. The consumers must be protected from deception, mistake or confusion with respect to the goods or services they buy. Trademarks serve to guarantee that the product to which they are affixed comes up to a certain standard of quality. Modern trade and commerce demands that depredations on legitimate trademarks should not be countenanced. The law against such depredations is not only for the protection of the owner of the trademark but also, and more importantly, for the protection of consumers from confusion, mistake, or deception as to the goods they are buying."

WHEREFORE, premises considered, the instant appeal is hereby DISMISSED. Let a copy of this Decision as well as the trademark application and records be furnished and returned to the Director of the Bureau of Legal Affairs for appropriate action. Further, let also the Director of the Bureau of Trademarks and

24 COMMENT[ on Appeal Memorandum dated January 15, 2008], dated 18 Feb. 2008, page 12. 25 American Wire & Cable Campa'!} v. Dinctorcf Patents, G. R. No. L-26557, 18 Feb. 1970. 26 Philippine Nut Industry, Inc. u. Standard Brands Incorporated, etal., G. R. No. L-23035, 31 July 1975. 27 See Le Chemise Lacoste, SA. u. OscarC. Femandec, et. al, G.R. Nos. 63796-97 and G.R. No. 65659, 21 May 1984.

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the library of the Documentation, Information and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance, and records purposes.

SO ORDERED.

DEC 18 2008 Makati City

CERTIFIED TRUE COPY:

.~ Robert Nereo B. Samson

Attorney IV Office of the Director General

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