INTELLECTUAL PROPERTYPHILIPPINES

- versus -

LES LABORATOIRES SERVIER,Opposer,

}}}}}

GAMOT PHILIPPINES, INC., }Respondent-Applicant. }

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IPC No. 14-2007-00096Opposition to :

Serial No. 4-2005-007431Date Filed: 03 August 2005

Trademark: "TRIZIDINE"Decision No. 2007 - $

DECISION

This pertains to an Opposition filed on 10 April 2007 by herein opposer,LES LABORATOIRES SERVIER, a corporation duly organized under the laws ofFrance, with off ice at 22, rue Garnier, 92200 Neuilly-sur-Seine, France, againstthe applicati on filed on 03 August 2005 bearing Serial No. 4-2005-007431 for theregistration of the trademark "TRIZIDINE" used for goods in Class 05, of the NiceClassification of Goods for pharmaceutical product namely, ant ihypertensive,which appl ication was published in the Intellectual Property Office ElectronicGazette on·09 February 2007.

The respondent-applicant in this instant opposition is Gamot Philippines,inc., with address on record at No. 67 Scout Fuentebella St., Tomas Morato,Quezon City, Philippines.

Opposer enumerated the following grounds in support of its opposition tothe registration of the subject trademark, to wit:

" 1. Les Laboratories Servier is the originator of the molecule andactive ingredient TRIMETAZIDINE, which is also the active ingredient ofthe ant i-angina preparation largely sold by Servier and other authorizeddist ributors around the world under the trademark VASTAREL. Themolecule, active ingredient and generic name TRIMETAZIDINE is aninternat ional nonproprietary name ("INN") Included in Cumulative ListNo. 10 of the World Health Organization 's ("WHO") International Non­Proprietary Names (INN) for Pharmaceutical Substances.TRIMETAZIDINE is also listed in THE MERCK INDEX as a coronaryvasodilator and in The International Drug Directory Index Nominum .Being an internat ional non-proprietary name, TRIMETAZIDINE may notbe exclusively appropriated as a trademark. "

Republic of the PhilippinesINTELLECTUAL PROPERTY OFFICE

351 Sen. Gil Puyat Ave., Makati City 1200 Philippines· www.ipophil.gov.phTelephone: +632-7525450 to 65 • Facsimile: +632-8904862 • email: mail@ipophil.gov.ph

"2 . The WHO, during its Forty Sixth World Health Assembly,acknowledged that the use of trademarks and brand names derivedfrom stems or other descriptors used in international nonproprietarynames, particularly in respect of single-ingred ient prescription drugs,may compromise the safety of patients by creating confusion inprescribing and dispensing medicines and by interfering with the orderlydevelopment of nomenclature for international nonproprietary names,and thus, the need to discourage, as a matter of urgency, the use oftrademarks that are derived from international nonproprietary names.Accordingly, the WHO requested Member States, which includes thePh ilippines, to discourage the use of names derived from internationalnonpropr ietary names, and particularly names including establishedstems, as trademarks. "

"3. Applicant's TRIZIDINE trademark is very similar to, if not almostidentical, and so resembles the generic name of the pharmaceuticalingredient for cardiovascular drugs, TRIMETAZIDINE. In this regard, theregistr at ion and use by Applicant of the trademark TRIZIDINE violat esSections 123.1 (h) and 123.1 (j) of Republic Act No. 8293, theIn tellectual Property Code ("IP Code") which proscribe the registrationof a mark if it "consists exclusively of signs that are generic for thegoods or services that they seek to identify" of "consists exclusively ofsigns or indications that may serve in trade to designate the kind,quality, quantity, intended purpose xxx or other characteristics of thegoods or services."

"4. The approval of Applicant's trademark TRIZIDINE is based onthe misrepresentation that it is the originator, true owner and first userof the t rademark, which was merely copied/d erived from INNTRIMETAZIDINE. As stated, Les Laboratories Servier is the trueoriginator of the molecule and active ingredient TRIMETAZIDINE, andas such has legitimate right to make the best efforts in order to avoidany confusion regarding the INN which is public property and must staynow at competitors' disposal but not be appropr iated as a trademark ."

Opposer alleged the facts, in sum, to wit:

1. "TRI METAZIDI NE" is the descriptive name of the molecule andact ive ingredient 1-[2,3,4-Trimethoxyphenyl )methyl] piperazineC1 4H22N203. It is the generic name for cardiovascular drugs andincluded in the "WHO's" "INN " Cumulative List No. 10 forPharmaceut ical Substances. "TRIMETAZIDINE" is listed in the MERCy!INDEX as a coronary vasodilator and in the International Drug DirectoryInd ex Nominum. \

2. An issue identical to the present case has been previouslyresolved by this Honorable Office in Decision No. 2003-24, dated 15May 2003, in Inter Partes Case No. 4082, with respect to anti­hypertensive drug being an imitation of the generic and internationalnonp roprietary name "INDAPAMIDE", and therefore confusingly similarthereof, as both are used in pharmaceutical preparations for thetreatment of hypertension, and because the WHO discourag es the useof internati ona l nonproprietary names of their stems as trademarks.

3. The registration and use by respondent of "TRIZIDINE" as at rademark wi ll give it undue advantage over opposer, which has beenusing the active ingredient TRIMETAZIDINE for the products bearingth e registered mark VASTAREL, owned by BIOFARMA, aff iliatedcompany, as it appears prominently on the packaging of VASTARELproducts in accordance and compliance with the requirements of theGenerics Act.

Th is Bureau issued a Notice to Answer dated 07 May 2007 directing hereinrespondent-applicant to file its verified answer within thirty (30) days from receipthereof, pursuant to Office Order No. 79, series of 2005. However, after lapse ofreasonable days after said Notice was duly served to the named respondent­applicant, t his Bureau did not receive any motion or pleading related thereto.Consequently, opposer's reply dated 04 August 2007 cannot be regarded as aresponsive pleading to an answer which was not filed. Hence, thi s instant caseshall be decided on the basis of the opposition and the atta ching evidence, inaccord to existi ng rules.

The Issue-

WHETHER OR NOT RESPONDENT-APPLICANTS TRADEMARK"TRIZIDINE" MAY BE ALLOWED REGISTRATION DESPITEOPPOSER'S ALLEGATION OF CONFUSING SIMILARITY TOTHE INTERNATIONAL NONPROPRIETARY NAME OR GENERICNAME "TRIMETAZIDINE".

Th is Bureau rules in the negative.

This instant case was filed during the effectivity of Republic Act (RA) No.8293, and is therefore governed by such law or the New Intellectual property~

Code of the Philippines, particularly Section 123.1 (h) and (j), which

provide as follows: 1

"Sec. 123. Registrability.registered if it:

123.1 A mark cannot be

x x x

(h) Consists exclusively of signs that are generic for thegoods or services that they seek to identify.

(j ) Consists exclusively of signs or of indications thatmay serve in trade to designate the kind, quality,quantity, intended purpose, value, geographicalorigin, time or production of the goods or render ing ofthe services, or other characteristics of the goods."

(Emphasis Ours.)

The word "TRI METAZIDINE" is established to be a molecule, an activeingredient of the anti-angina preparation and a generic name, as proved in thefollowing documentary evidence of the opposer, to wit:

1. Exhibit "B" - "The Merck Index", An Encyclopedia of Chemicals,Drugs and Biologicals, 1989; entry no. 9619 shows"TRIMETAZIDINE" as a coronary vasodilator.

2. Exhibit "C" "World Health Organization (WHO) In ternationa lNonproprietary Names (INN) for Pharmaceutical Substances"; Tableof Contents showinq cumulative list no. 10.

3. Exhibit "C-1" Copy of page 1320 of the WHO INN forPharmaceut ical Substances Cumulative List No. 10: thi s shows entryfor INN "TRIMETAZIDINE"

4. Exhibit " D" - "The International Drug Directory Ind ex Nominum",pages 1225 - 1226 of the is" edition;

5. Exhibit " E" "Wikepedia encyclopedia", web print-out; thi sindicates "TRIMETAZIDINE" as a long-term treatment of anginapectoris.

6. Exhibit "H" - "The use of stems in the selection of Internat ionalNonproprietary Names (INN) for Pharmaceutical Substances"; th~'S

shows copy of the alphabetical list of stems in which " INE" is found.

~

A relevant matter for consideration is the resolution WHA 46.19 passed inthe Forty-Sixth World Health Assembly, evidenced by Exhibit "F", which was heldin Geneva. Among others, it stated to be "Aware of the concern expressed by theSixth In ternational Conference of Drug Regulatory Authorities (1991) about theincreasing use of pharmaceutical brand names that are very similar to or derivedfrom international nonproprietary names." It further noted "the recommendationmade by the WHO Expert Committee on the Use of Essential Drugs, in its fifthreport (WHO Technical Report Series, No. 825, 1992), on the need to discourage,as a matter of urgency, the use of trade marks that are derived from internation alnonproprietary names."

Thus, member States request, "(2) to develop policy guidelines on theuse and protection of international nonproprietary names, and to discourage theuse of names derived from them, and particularly names includ ing establishedstems, as t rademarks." Lastly, the Assembly "calls on the Director-General tointensify his consultation with governments and representatives of thepharm aceutical industry on ways of reducing to a minimum the problems arisingfrom drug nomenclatures that may create confusion and jeopardize the safety ofpatients ."

The instant opposition case reveals a non-arguable fact that the subjectt rademark "TRI ZI DI NE" is part and/or portion of the internat ionalnonproprietary name "TRIMETAZIDINE". In one case, the Federal SupremeCourt of Germany refused the registration of the word " PRAZEPAMIN" as atrad emark on the ground that it conflicts with the International NonproprietaryName " PRAZEPAM".

Clearly so, "TRIZIDINE" resembles the generic name of thepharmaceutica l ingredient for cardiovascular drugs "TRIMETAZIDINE." Thisbrings th is Bureau's inference that respondent-applicant's "TRIZIDINE" wasmerely derived from the gener ic name "TRIMETAZIDINE".

A common or generic name of a product or art icle is merely descript ive ofthe character, qualities or composition of an article cannot be monopolized as atrademark or trade name. (East Pacific Merchandising Corp. vs Director ofPatents, 110 Phil. 443; Masso Hermanos, S.A. vs Director of Pat ents, 94Phil. 136)

In additio n to the foregoing discussions, respondent -applicant 's"TRIZIDI NE" is confusingly similar to the generic name "TRIMETAZIDINE". First.This Bureau noted the luculent visual and aural similarities between the marks.This is the applicat ion of the idem sonams rule as held in the case of Sapolin Co.vs Balmaceda, 67 Phil. 795, that confusion is likely to arise between word~r­

which when pronounced sounds alike, Second. The contending marks cove~th~ /

)

same class 5 of the Nice classification of goods. Therefore, confu sion is verylikely to happen.

Verily , the question of infringement of trademarks is to be determined bythe test of dominancy where duplication or the exact imitation is not necessarynor is it necessary that the infringing label should suggest an effort to imitate. Asits title implies, the Test of Dominancy focuses on the similarity of th e prevale ntfeatures, or the main, essential and dominant features of the competingtrademarks which might cause confusion or deception.

In fact , th e Honorable Supreme Court has consistently relied on theDominancy Test in determining questions of infringement of trademark in a strin gof cases which including Asia Brewery, Inc. vs Court of Appeals, 224 SCRA437; Co Tiong vs Director of Patents, 95 Phil. 1; Lim Hoa vs Director ofPatents, 100 Phil. 214; American Wire & Cable Co. vs Director of Patents,31 SCRA 544; Philippine Nut Industry, Inc. vs Standard Brands, Inc., 65SCRA 575; Converse Rubber Corp. vs Universal Rubber Products, Inc.,147 SCRA 154.

Th is test of dominancy is even explicitly incorporated into law in Section155.1 of the Intellectual Property Code which defines infringement as the"colorable imitation of a registered mark x x x or a dominant feature thereof."

WHEREFORE, premises considered the Notice of Opposition filed by LesLaborato ires Servier is as it is hereby SUSTAINED. Accordingly, Applicat ionSerial No. 4-2005-007431 filed by respondent-applicant, Gamot Philippines, In c.on 03 August 2005 for the mark "TRIZIDINE" under Class 5, is as it is hereby,REJECTED.

Let t he fil e wrapper of "TRIZIDINE", subject matter of this case beforwarded to the Bureau of Trademarks for appropriate action in accordance withthis decisio n.

SO ORDERED.

Makat i City, 28 September 2007 .

EST UTA BELTRAN-ABELARDOD· ector, Bureau of Legal Affairs ~