INTELLECTUAL PROPERTY

PHILIPPINES

BEECHAM GROUP, P. L. C., IPC No. 14-2010-00042 Opposer, Opposition to:

- versus - Appln . No. 1-20 09-004 6 34 Date Filed: 12 May 2009

DAEWOONG PHARMA PHILIPPINES, INC., Trademark: AUGMOXIN

Responden t-Appl ican t. x----------------x Decision No. 2011 - ,gg"

DECISION

Beecham Group P.L.C. ("Opposer"), a corporation duly organized under the laws of the United Kingdom, with principal office at 980 Great West Road, Brentford, Middlesex, England, filed on 12 February 20 10 an opposition to Trademark Application No. 4-2009­

004634 filed by Daewoong Pharma Philippines, Inc. ("Respondent-Applicant"), with address at Unit 1602 Prestige Tower, Emerald Avenue, Ortigas Center, Pasig City covering the mark AUGMOXIN for use on "anti-bacterial pharmaceutical preparation" under Class 5 of the International Classification of goods .'

The Opposer alleges the following:

"1. The trademark AUGMOXIN nearly resembl es the Oppos er 's AUGMENTIN t rademark registered und er Philippine Trademark Registration No. 0 5S 189 issued on August 7, 1982 for class 05 goods as to be likely to deceive or cause confusion.

Section 12S (d) of R.A. 829S otherwise known as the Intellectual Property Code provid es as follows:

x x x "2 . The trademark AUGMOXIN is unquestionably confus ing ly similar to Opposer's

AUGMENTIN trademark. The trademark AUGMOXIN is phon etically and visually similar with Oppos er 's trademark AUGMENTIN, sufficient to deceive or to cause confusion.

xxx "3. Adding to the likelihood of confusion is the fact th at Respondent-Applicant's t rademark

designates antibacterial pharmaceutical preparations just as Opposer's AUGMENTIN trademark designates ant ibiot ics and anti-infective preparations and substan ces in class 05 .

x x x "4 . Lastly and more impo rt antl y, Opposer's trademark AUGMENTIN enjoys twenty (20)

years of priority and seniority over Respondent-Applicant's appl ication for the mark AUGMOXIN. Oppos er 's tr ademark application ser ial No. 05S 189, which was filed on December 13, 1989, matured into registration on August 7, 1992 und er Philippine

1 The Nice Classificat ion is a classification of goods and serv ices for the purpose of reg ister ing trademark and service marks, based on a multil ateral treaty administered by the World Intellectu al Property Organizat ion. T he t reaty is called the Nice Agreement Concerning the International Classi fication of Goods and Services for the purposes of the Reg istration of Marks concluded in 1957.

Republic of the Philippines INTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City, 1200 Philippines. www.ipophil.gov.ph T: +632-2386300. F: +632-8904862 • mail@ipophil.gov.ph

Trademark Registration No. 05S 189, while Respondent-Applicant's trademark application for the mark AUGMOXIN was filed only on May 12,2009.

"5. Due to the obvious similarities between AUGMOXIN and Opposer's AUGMENTIN, in terms of spelling, pronunciation, overall appearance and the goods which they respectively designate, Respondent-Applicant's use of the trademark AUGMOXIN is likely to mislead the public into believing that its goods originated from Opposer, or conversely, that Opposer's goods came from Respondent-Applicant. Respondent­Applicant's use of the trademark AUGMOXIN will falsely and misleadingly indicate a connection between it and its product, on the one hand, and Opposer and Opposer's AUGMENTIN products on the other hand.

"6. Opposer's AUGMENTIN trademark is well-known internationally and in the Philippines. Under Section 12S (e) of the Code, a trademark which is confusingly similar to an internationally well-known mark cannot be registered, said provision reads as follows:

x x x The above prOVISion further militates against the registration of Respondent­Applicant's AUGMOXIN trademark.

"7. Opposer's trademark AUGMENTIN has been known and used by the public for an antibacterial product particularly for co-amoxiclav since 1991. Clearly, the use and attempted registration of Respondent-Applicant's trademark AUGMOXIN is done in bad faith, with manifest intention to ride on the popularity and goodwill of Opposer's trademark AUGMENTIN.

"8. Considering that (a) the prefix 'AUG' of Respondent-Applicant's mark is exactly the same prefix as in Opposer's registered AUGMENTIN trademark, and (b) Respondent­Applicant's mark is applied for in the exact same class of goods as that of Opposer, Respondent-Applicant's AUGMOXIN trademark cannot and should not be registered.

"9. Given the foregoing, there is no doubt that the interests of Opposer, as the registered owner of the mark AUGMENTIN and as a well-recognized leader in the pharmaceutical industry, will be damaged and prejudiced by the continued use and adoption by Respondent-Applicant of the trademark AUGMOXIN."

The Opposer's evidence consists of the following:

1. Exh. "N.' - Affidavit of Opposer's witness David Butler, certified by IPO to be true copy of the original on file in IPC No. l4o-2009-00244, along with its annexes "A-l to A-8";

2. Exh. "A-I" - Copy Phil. Reg. No. 05S189 for AUGMENTIN; S. Exh. ''A-2'' - List of opposer's trademark registrations for AUGMENTIN worldwide; 4. Exh. ''A-s'' - Photo of the AUGMENTIN product packaging as sold in China; 5. Exh. ''A-Sa'' - Photo of the AUGMENTIN product packaging as sold in Singapore; 6. Exh. ''A-sb'' - Photo of the AUGMENTIN product packaging as sold in the UK.; 7. Exh. ''A-Sc'' - Photo of the AUGMENTIN product packaging as sold in Italy; 8. Exh. ''A-Sd'' - Photo of a package insert for the product AUGMENTIN as sold III

Malaysia; 9. Exh. ''A-Se'' - Sample of package inserts and product packaging for AUGMENTIN as

sold in the Philippines; 10. Exh. ''A-4'' - Copy of a promotional material for the AUGMENTIN product in

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intravenous, tabl et and syrup form; 11. Exh. '1\-5" - Copy of the article Optimising Therapeutic Choices in Respiratory Tract

Infections presented in the 6th International Symposium on Antimicrobial Agents and Resistance;

12. Exh. "A-5a" - Copy of the article Amoxycillin/clauvanate prophylaxis in gynecologic surgery by 0. Triolo, A Manusco and F. Patiano published in the International Journal of Gynecology and Obstetrics;

13. Exh. A-6" - Copy of the decision rendered in IPC No. 14-2007-00057 (Decision No. 2007-1401) entitled Beecham Group, P.L.C. vs. Adril Pharmaceuticals Inc.;

14. Exh. '1\-7" - Copy of the decision rendered by th e Intellectual Property Office in IPC No. 14~200 5-00062 (Decision No. 2006-76) entitled Beecham Group, PL.e. vs, Aldril Pharmaceuticals Inc.;

15. Exh. '1\-8" - Copy of the English translation of the decision rendered by the Trademarks Dept. of Switzerland in Opposition Proceedings No.7527 between Group PL.e. and Lagap SA;

16. Exh. "B" - Affidavit of Opposer's witness Mr. Marc Anthony C. Cox certified by the IPO to be true copy of the original on file in IPV No. IO-2009-()0006 along with its annexes "B-1" to "B-9", separately certified to be true copy of the original;

17. Exh. "B-l" - List of Opposer's trademark registrations for AUGMENTIN worldwide; 18. Exh. "B-2" - Copy of th e Italy trademark registration cert. No. 361259; 19. Exh. "B-2-a" - Copy of th e Italy trademark registration cert. No. 00833602; 20. Exh. "B-2-b" - Copy of the Austria trademark registration cert. No. lO3639; 21. Exh. "B-2-c" - Copy of th e Singapore trademark registration cert. No. T 89105932B ; 22. Exh. "B-2-d" - Copy of the Malaysian trademark registration cert. No. 20,218 ; 23. Exh. "B-2-e" - Copy of the Ir eland trademark registration cert. No. 92790; 240. Exh. "B-2-f" - Copy of the Ireland trademark registration cert. No. 14,7887; 25. Exh. "B-2-g" - Copy of the U.K. trademark registration cert. No. H0738408; 26. Exh. "B-2-h" - Copy of the France trademark registration cert. No. 1466618; 27. Exh. "B-2- i" - Copy of the Germany trademark registration cer t. No. DD 64022407; 28. Exh. "B-2-j" - Copy of the Croatia trademark registration cert. No. Z940 llO0; 29. Exh. "B-2-k" - Copy of the Denmark trademark registration cert. No. VR 196800783; 30. Exh. "B-2-1" - Copy of the Korea trademark registration cert. No. 0268802; 31. Exh. "B-2-m" - Copy of the Korea trademark registration cert. No. 0264502; 32. Exh. "B-2-n" - Copy of the Korea trademark registration cert. No. 0571 892; 33. Exh. "B-2-0" - Copy of the Bahrain trademark registration cert. No. 5251; 340. Exh. "B-2-p" - Copy of the Norway trademark registration cert. No. 723240; 35. Exh. "B-2-q" - Copy of the Japan trademark registration cert. No. 1505507; 36. Exh. "B-2-r" - Copy of the India trademark registration cert. No. 3540687; 37. Exh. "B-2-s" - Copy of th e Brazil trademark registration cert. No. 780168232; 38. Exh. "B-2-t" - Copy of the New Zealand trademark registration cert. No. 83500; 39. Exh. "B-2-u" - Copy of the Australia trademark registration cert. No. A5178lO; 400. Exh. "B-2-v" - Copy of the Puerto Rico trademark registration cert. No. 28,911 ; 401. Exh. "B-2-w" - Copy of the Laos trademark registration cert. No. 6571; 42. Exh. B-2-x" - Certificate of the Vice-Consul of the Philippines in Laos as to the

authenticity of the Laos Trademark cert. No. 6571; 43. Exh. "B-2-y" - Copy of the China trademark registration cert. No. 258590; 44. Exh. "B-2-z" - A copy of U.S. trademark registration cert. NO.1, 144,669; 45. Exh. B-3" - Affidavit of Carolann M. O'Donovan the Senior Trademark Watch

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Specialist of Thomson CompuMark; 4<6. Exh. "B-.'Ia" - Table containing summary of data from AUGMENTIN watch notices

attached as Annex "N.' to Exhibit "B-.'I"; 4<7. Exh. "B-.'Ib" - Copies of various watch notices attached as Annex "B" to Exh. "B-.'I"; 4·8. Exh. "B-4<" - Copy of the decision in IPC No. 14<-2005-00062 (Decision No 2006-76)

entitled Beecham Group, PL.C vs Korea United Pharm, Inc.; 4<9. Exh."B-5" - Copy of the decision rendered by the Director-General on appeal by Korea

United Pharm, Inc. (Appeal No. 14-06-25); 50. Exh. "B-6" - Copy of the decision in IPC No. 14<-2007-00057 (Decision No. 2007-1.'11)

entitled Beecham Group, PL.c. vs. Aldril Pharmaceuticals Inc.; 51. Exh. "B-7" - Affidavit of Alvaro Correa Ordonez, managing partner of Bogota Baker &

McKenzie office and the decision of the Colombia Ministry of Justice (Resolution No. 24<118) case file No. 92 ..'160.277 between Beecham Inc and Jose Edison Suarez;

52. Exh. "B-7-a" - Copy of the sworn declaration of Doctor Maria Esthela Guerrero Duarte, quality manager and legal representative of "Estudio Juridico de Propiedad Intellectual Julio C. Guerrero B.S.A.";

5.'1. Exh. "B-7-b" - Certified English translation of the sworn declaration of Doctor Esthela Guerrero;

54<. Exh. "B-8" - Copy of the survey conducted by TNS Trends on the extent to which "AUG" is associated with AUGMENTIN in 2006; and

55. Exh. "B-9" - Copy of the survey conducted by TNS Trends on the extent to which AUG is associated with AUGMENTIN in 2008.

This Bureau issued a Notice to Answer on IS May 2010 and served upon a copy thereof to the Respondent-Applicant. However, the Respondent-Applicant did not file its answer. Hence, under Sec. 11, Rule 2 of the Regulations on Inter Partes Proceedings, as amended, the case was deemed submitted for decision on the basis of the opposition and evidence submitted by the Opposer.

Should the Respondent-Applicant be allowed to register the mark AUGMOXlN?

It is emphasized that 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. 12.'1.1 (d) of R.A. No. 829.'1, also known as the Intellectual Property Code of the Philippines ("IP Code") provides that a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of the same goods or services or closely related goods or services or if it nearly resembles such mark as to be likely to deceive or cause confusion.

2 Pribhdas J. Mirpuri »s. Court <if Appeals, G.R. No. 1l1-508, 19 Nov. 1999.

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Records show that at the time the Respondent-Applicant filed its trademark application on 12 May 2009, the Opposer already has an existing trademark registration for the mark AUGMENTIN under Reg. No. 53189, dated 07 August 1992. This registration covers "antibiotic and anti-irifective preparation and substances" under Class 5 of the International Classification of goods 3 , pharmaceutical products or goods that are similar or closely related to those indicated in the Respondent-Applicant's trademark application.

But, do AUGMENTIN and AUGMOXIN resemble each other such that confusion, mistake or deception is likely to occur?

This Bureau notices that in both marks, what draw the eyes and appeal to the ears are the first and last syllables. The first syllable in the Opposer's mark - "AUG" - is duplicated in the Respondent-Applicant's. On the other hand, the last syllables of the competing marks - "TIN" and "XlN" - look and sound alike. The close resemblance of one mark with the other and the fact that the marks are used on similar or closely related goods or products bring in the conclusion that the Respondent-Applicant's mark is just a colorable imitation of the Opposer's.

In this regard, confusion cannot be avoided by merely adding, removing or changing some letters of a registered mark. Confusing similarity exists when there is such a close or ingenuous imitation as to be calculated to deceive ordinary persons, or such resemblance to the original as to deceive ordinary purchaser as to cause him to purchase the one supposing it to be the other,"

To constitute an infringement of an existing trademark patent and warrant a denial of an application for registration, the law does not require that the competing trademarks must be so identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that the similarity between the two labels is such that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer brand for it.s Corollarily, the law does not require actual confusion, it being sufficient that confusion is likely to occur.6 The likelihood of confusion would then subsist not only on the public's perception of services but on the origins thereof as held by the Supreme Court.7 Also, the consumers are likely to think that there is a connection between the parties' respective businesses and goods, or there is only one originator or provider thereof An undue and unfair advantage therefore is acquired by one party as consumers would likely equate the quality of its products with that of the other.

Significantly, the Opposer submitted as evidence among other things, a copy of the

3 Exhibit 'i\ - I" 4 Societe Des Produits Nestle,SA. v. Court ofAppeals. supra . 5American Wire & Cable Co. v. Director ofPatents, et al., G.R. No. L-26SS7, 18 Feb. 1970. 6 See Philips Export B.V., et al. v. Court ofAppeals, et al., G.R. No. 96161, 21 Feb. 1992. 7 See Converse Rubber Corporation v. Universal Rubber Products, Inc., et al., G.R. No. L-27906, 08 Jan. 1987.

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Decision of the Director General in IPC No. 1+-2005-00062 (Appeal No. 1+-06-25). In said case, which involved the Opposer herein as a party-litigant, the Director General held that the trademark AUGMENTIN is a highly distinctive mark as applied to the Opposer's goods or products. As such, according to the decision, when a trademark is fanciful and thus, highly distinctive, very remote is the possibility that two or more persons or entities would accidentally create and adopt trademarks that resemble those of the others, more so if they are engaged in the same business or industry and that the trademarks are used on the same or closely related goods.

Aptly, this Bureau finds that it is incredible that the Respondent-Applicant came up with a mark that is exactly, or almost exactly the same as the Opposer's on pure coincidence. The field from which a person may select a trademark is practically unlimited. As in all cases of colorable imitations, the unanswered riddle is why, of the millions of terms and combinations of letters and designs available, the Respondent-Registrant had to come up with a mark identical or so closely similar to another's mark if there was no intent to take advantage of the goodwill generated by the other mark."

WHEREFORE, premises considered, the instant opposition is hereby SUSTAINED. Let the filewrapper of the Trademark Application Serial No. +-2009-004634

together with a copy of this DECISION, be returned to the Bureau of Trademark (BOT) for information and appropriate action.

SO ORDERED.

Makati City, 05 April 2011.

NIEL S. AREVALO

Bureau of Legal Affairs irector IV

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8 American Wire & Cable Company v. Director ofPatents, supra.

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