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INTELLECTUAL PROPERTY PHILIPPINES

ALCON, INC., Opposer,

- versus ­

SU-HEUNG INTERNATIONAL CORP.,

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Inter Partes Case No. 14-2007-00173 Opposition to: Appln. Serial No. 4-2006-008538 Date Filed: 4 August 2006 Trademark: "CELOXONE"

Respondent-Applicant. } x-------- ---------- ------------------------------------- --x Decision No. 2009 - 170

DECISION

For decision is the Notice of Opposition filed by Alcon Inc, (hereinafter referred to as opposer), a corporation organized and exiting under the laws of Switzerland, with address at Bosch 69 CH-6331, Hunenberg, Switzerland against Application Serial No. 4-2006-008538 for the mark CELOXONE for goods under class 5, covering "pharmaceutical products, namely anti­bacterial" filed on 4 August 2006, filed by Su-Heung International Corp., a corporation organized under Philippine laws with address at #67 Scout Fuentebella, Tomas Morato, Quezon City.

The grounds for opposition are as follows:

"1. The registration of the trademark "CELOXONE" in favor of the Respondent-Applicant violates Section 123.1 (d) and (e) of Republic Act No. 8293, as amended, which states that:

Sec. 123. Registrability - 123.1. A mark cannot be registered if it:

x x x

"(d) Is identical with a registered mark belonging to a different proprietor or 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;

"(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 internationa!~if-:

and in the Philippines, whether or not it is registered he~,! fJ

Republic of the Philippines INTELLECTUAL PROPERTY OFFICE

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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;

"2. The Opposer is the owner of the mark "CILOXAN", which has been registered with the IP Phil since 22 March 1994 for International Class OS , particularly for "opthalmic pharmaceutical preparations," as evidenced by Trademark Certificate of Registration No. 057383, which is attached hereto as Annex "An.

"3. Respondent-Applicant's mark is applied for goods such as "PHARMACEUTICAL PRODUCTS, NAMELY, ANTIBACTERIAL", which are closely related to Opposer's goods under Trademark Registration NO. 057838 and belonging to the same International Class 05. Verily, the use by Respondent-Applicant of the "CELOXONE" mark for the goods covered by the application subject of this opposition will likely confuse and/or mislead the purchasing public as to the opposed mark's identity and origin. More importantly, an examination and comparison of the formal drawings of the contested mark would reveal that by reason of over-all appearance, spelling and pronunciation , Respondent-Applicant's "CELOXONE" is confusingly similar to the Opposer's "CILOXAN" mark. Thus, the registration of Respondent-Applicant's mark will be contrary to Section 123.1 (d) of Republic Act No. 8293.

"4. Concomitantly , considering that the "CILOXAN" mark is well-known and world famous, the registration of Respondent-Applicant's "CELOXONE" will constitute a violation of Section 123.1 (e) of Republic Act No. 8293.

"5. Opposer, Alcon, Inc., has exclusive proprietary right to the mark "CILOXAN" for goods in International Class 05 covered by Trademark Registration No. 057838 having the right and advantage of being the first filer and registrant and prior user of the mark.

"6. Allowing the registration and use of the "CELOXONE" mark by the Respondent-Applicant in this case will not only cause confusion among the buyers, but would also diminish and dilute the distinctiveness and identity of the Opposer's mark which has been established in the local and worldwide market by the Opposer at great effort and expense.

'7. The registration of the "CELOXONE" mark of the Respondent-Applicant will surely cause damage and irreparable injury to the distinctiveness and strength of the Opposer's mark, and goodwill it has engendered with the buying public, within the meaning of goodwill adopted in Section 134 o~ .l Republic Act No. 8293. I f;OYl

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Opposer submitted the following evidence to wit:

ANNEX DESCRIPTION

"An True Copy of Registration No. 57383

"B" International Trademark Registrations

Respondent-applicant filed its Verified Answer on 3 September 2007 and raised therein the following special and affirmative defenses, to wit:

"1. Section 7.3 of Office Order No. 79, Series of 2005, states that:

7.3 If the petition or opposition is in the required form and complies with the requirements including the certification of non-forum shopping, the Bureau shall docket the same by assigning the Inter Partes Case Number. Otherwise, the case shall be dismissed outright without prejudice. A second dismissal of this nature shall be with prejudice.

"2. As may be gleaned from the opposition, the verification and certification against non-forum shopping was executed by a certain Denise Vivar purportedly as the "Authorized Representative of Alcon, Inc.";

"3. However, upon further perusal of the opposition, it is readily apparent that it does not contained any board resolution or any other document which empower Denise Vivar to represent the Opposer and sign the certification. Thus, it is as if the opposition contains no certification against non-forum shopping;

"4. The pertinent portions of Section 5, Rule 7 of the Rules of Civil Procedure (which applies suppletorily by virtue of Section 4 of Office Order No. 79) provides that "Failure to comply with the foregoing requirements shall not be curable by mere amendment of the complaint or other initiatory pleading but shall be cause for the dismissal of the case...."

"5. It is thus most respectfully prayed that the present opposition be summarily dismissed for failure to comply with the mandatory requirements of Office Order No. 79 and the Rules of Court.

"6. Without abandoning the merit of the above-contention, Registrant­Applicant feels the need to meet head-on the issues;

"7. The Opposer claims that Respondent-Applicant's application for the /1trademark "CELOXONE" is in violation of Section 123.1 subparagraph (d"'~r and <eJ of R.A. 8293 or fhe Intellectual Property Code; ! r I

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"8. In fine, the Opposer avers that the mark "CELOXONE" is identical and confusingly similar with their trademark "CILOXAN" such that it is likely to deceive or cause confusion;

"9. It is most humbly submitted that the marks are not identical with one another that it may cause confusion;

"10. A simple comparison of the two marks will readily reveal that their spellings and pronunciation are markedly different from one another. The similarity is only with the phrase "LOX" and the same ends there;

"11. Moreover, it is respectfully stressed that the goods referred to in the present case are pharmaceutical products. Thus ruling of the Supreme Court in the case of Etepha vs. Director of Patents, 16 SCRA 495, is square in point, to wit:

"In the solution of a trademark infringement problem, regard too should be given to the class of persons who buy the particular product and the

circumstances ordinarily attendant to its acquisition. 16 The medicinal preparation clothed with the trademarks in question, are unlike articles of everyday use such as candies, ice cream, milk, soft drinks and the like which may be freely obtained by anyone, anytime, anywhere. Petitioner's and respondent's products are to be dispensed upon medical prescription. The respective labels say so. An intending buyer must have to go first to a licensed doctor of medicine; he receives instructions as to what to purchase; he reads the doctor's prescription; he knows what he is to buy. He is not of the incautious, unwary, unobservant or unsuspecting type; he examines the product sold to him; he checks to find out whether it conforms to the medical prescription. The common trade channel is the pharmacy or the drugstore. Similarly, the pharmacist or druggist verifies the medicine sold. The margin of error in the acquisition of one for the other is quite remote. It is possible that the buyers might be able to obtain Pertussin or Attusin without prescription. When this happens, then the buyer must be one throughly familiar with what he intends to get, else he would not have the temerity to ask for a medicine - specifically needed to cure a given ailment. In which case, the more improbable it will be to palm off one for the other. For a person who purchases with open eyes is hardly the man to be deceived.

"12. Moreover, in the case of Bristol Meyers Co., vs. Director of Patents, 17 SCRA 128, the Supreme Court allowed the separate registration of w:: Irademarks "BUFFERIN" and "BIOFERIN", slaling that with regard t~ I }r~

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medicines, the requirements for prescription mark "the chances of being confused into purchasing one for the other are therefore al/ the more rendered negligible."

"13. As it is, the Supreme Court has construed with sufficient liberality the registrat ion of pharmaceutical products. Hence, the mere similarity of trademarks is not a valid ground to reject an application.

"14. It is also apparent that "CILOXAN", as admitted in paragraph 2 of the opposition, covers goods for "opthalmic pharmaceutical preparations'. Whereas, the goods covered by "CELOXONE" are under the generic name "cefalexine" and used as an "antibacterial" to prevent and minimize infection. A copy of the Certificate of product registration (which is a public document) is hereto attached as Exhibit "1" and made an integral part hereof;

"15. Thus, the possibility that the products covered by "CILOXAN", which is used for the eyes, to be confused with products covered by "CELEXONE" is very remote .

Respondent-applicant submitted its Certificate of Product Registrat ion of the brand name "CELOXONE" as Exhibit "1".

The preliminary conference was set on 28 September 2007 at which hearing respondent-applicant failed to appear. Thereafter, opposer was directed to file its position paper.

The issue for consideration is whether the mark CELOXONE is confusingly similar to CILOXAN.

The marks of the opposing parties are reproduced below for comparison.

Opposer's mark

CILOXAN

Respondent-Applicant's mark

CELOXONE

In determining whether two marks are confusingly similar, the Supreme Court develope~ two tests. In the case of Mighty Corporation and La Campana Fabrica de Tabaco, Inc. vs. E. & H

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J. Gallo Winery and the Andresons Group, Inc., G.R. No. 154342. July 14, 2004, the High Court held:

"Jurisprudence has developed two tests in determining similarity and likelihood of confusion in trademark resemblance: (a) the Dominancy Test applied in Asia Brewery, Inc. vs. Court of Appeals and other cases and (b) the Holistic or Totality Test used in Del Monte Corporation vs. Court of Appeals and its preceding cases.

The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement. If the competing trademark contains the main, essential or dominant features of another, and confusion or deception is likely to result , infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers."

The Bureau notes that the dominant feature of the mark is the word mark itself, CILOXAI\J. (Exhibit "A") A comparison of the marks show that the prefix and suffix of both marks are not the same but when pronounced, the prefixes CE and CI are almost the same. Similarly, the suffix used by the opposer is XAN, while the respondent applicant uses the suffix XONE. When the suffix is pronounced together with the two syllables, the words CILOXAN and CELOXONE are aurally and phonetically similar. When the literal elements are combined, one mark can be mistaken for the other because of the identical first letter and four other literal elements, LOX and N. Moreover, these confusingly similar marks are both applied on goods under class 5 hence, it may cause danger or the possibility that one pharmaceutical product be confused with the other.

In American Wire & Cable Co. vs. Director of Patents, 31 SCRA 544 , the Supreme Court held :

"In fact, even their similarity in sound is taken into consideration, where the marks refer to merchandise of the same descriptive properties, for the reason that trade idem sonans constitutes violation of trade mark patents."

In Marvex Commercial Co., Inc. vs. Petra Hawpia & Co. (18 SCRA 1178), the Supreme Court held:

" The following random list of confusingly similar sounds in the matter of trademarks, culled from Nims, Unfair Competition and Trade Marks, 1947, vol. 1, will reinfornce our view that "SALONPAS" and "L10NPAS" are confusingly similar in sound : "Gold Dust" and "Gold Drop"; 'Jantzen and "Jazz-Sea"; "Silver-splash" and "Supper-Flash"; "Cascarete" and "Celborite"; "Celluloid" and "Cellonite"; "Charteuse" and "Charseurs"; "Cutes" and Cuticlean"; "Hebe" and "Meje"; "Kotex" and "Femetex"; "Zuso" and "Hoo-hoo" Leon Amdur, in his book "Trademark law and Practice", pp. 419-421, cites, as coming within the purview of the idem sonans rule. "Yusea" and "U-C-A", "Steinway Pianos" and "Stienberg Pianos" ~ ..1 and "Seven-Up' and "Lemon-Up". In Co Tionq vs. Director of Patents, this Court / I ;YU

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unequivocally said that "Celdura" and "Condura" are confusingly similar in sound; this Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the name "Lusolin" is an infringement of the trademark "Sapolin", as the sound of the two names is almost the same. In the case at bar, "SALONPAS" and "L10NPAS" when spoken sound very much alike. Similarity of sound is sufficient ground for this court to rule that the two are confusingly similar when applied to merchandise of the same descriptive properties. (See Celanese Corporation of America vs. E.!. Du Pont, 154 F. 2d. 146, 148).

WHEREFORE, premises considered the OPPOSITION filed by Alcon, Inc. opposer is hereby SUSTAINED. Accordingly, Application Serial No. 4-2006-008538 filed by Su-Heung International Corporation, respondent-applicant on 4 August 2006 for registration of the mark "CELOXONE" used on goods under Classes 5, is, as it is, hereby REJECTED.

Let the filewrapper of "CELOXONE", subject matter of this case together with a copy of this Decision be forwarded to the Bureau of Trademarks (BOT) for appropriate action.

SO ORDERED.

Makati City, 15 December 2009

EST Dir

UTA BELTRAN-ABELARDO lor, Bureau 01 Legal Affairs (i

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