INTELLeCTUAL PROPERTY OfFICEOf THE PHILIPPINES

SUYEN CORPORATION, IPC No. 14-2019-00261 Opposer, Opposition to:

Appln. No. 4-2018-011242 Date Filed: 02 July 2018

-versus- Trademark: "SNAIL POTION"

DO DAY CREAM KCA PHILIPPINE CORPORATION, Respondent-Applicant. Decision No. 2020 - 4/ x----------- ----------------------------x

DECISION

SUYEN CORPORATION ("Opposer")' filed an opposition to Trademark Application Serial No. 4-2018-011242. The application filed by DO DAY CREAM KCA PHILIPPINE CORPORATION ("Respondent-Applicant")2, covers the mark "SNAIL POTION" for goods/services under the International Classification of Goods and Services', as follows: Class 03 for "cosmetics, perfumery, soaps, essential oils, hair lotions, dentifric es, bleaching preparations; and, Class 05 for "pharmaceutical and veterinary preparations, sanitary preparationsfor medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for humans and animals, disinfectants, fungicides, herbicides ".

The Opposer alleges that it was incorporated in 1985 as a manufacturing company dealing in clothing apparel, garments and accessories. It manufactures, distributes, markets and sells apparel and lifestyle products carrying different brands and trademarks. Its flagship brand BENCH started in 1987 and initially offered men's t-shirts. Suyen has expanded its business to a complete range of apparel and lifestyle products such as fragrances, cosmetics, body care products, accessories, shoes, bags, watches, houseware, even snacks and other lifestyle products for men and women under different brands and trademarks. It has frown and continues to grow at an unparalleled rate. The businesses of Suyen include other popular and successful brands like "HUMAN", "KASHIECA", "FIX BENCH SALON", "DIMENSIONE", "PCX", and "FIRST AID", among others.

I A corporation duly organized and existing under Philippine law. A corporation duly organized and existing under Philippine law. The Nice Classification of goods and services is for registering trademark and service marks, based on a multilateral treaty administered by the WIPO, called the Nice Agreement Concerning the International Clas sifi cation of Goods and Services for Reg istration of Marks concluded in 1957 .

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www.ipophil.gov.ph Intelle ctual Prope #28 Upper McK in ey Road e mail@ipophil.gov.ph McKinley Hill Town Cent er

() +632-2386300 Fort Bonif acio. Tagui9 City . co +632-5539480 1634 Philipp ines

Center

The Opposer further alleges that together with its sister companies, it expanded its business in several other industries such as the furniture industry, food industry, beauty salon and the skin care industry. It has over 1,000 stores in the Philippines alone , which include franchises of foreign brands. It has become a global company with brand presence in the world with over 600 trademarks registered in its name both, in the Philippines and abroad, and 37 stores outside the Philippines.

In 2001, the Opposer launched a new line of personal care products using the mark "POTION" which is formulated as a moisturizing fragrance. It is a unique combination of oil and water layered one upon the other. The "POTION" Moisturizing Body Spray comes in four distinct fragrances which is offered along with a wide array of other fragrances. Opposer has marketed its "POTION" products nationwide and in other countries such as Brunei , Guan, China , Hongkong, Singapore, India, U.A.E., U.S.A. and Australia. The "POTION" trademark was registered in the Philippines on 07 February 2004 and was renewed on 07 February 2014 . It was first used as early as 2001 . Moreover, it has extensively used the "POTION" trademark as an integral part of its business and as part of its advertising and promotional strategies. It has exerted substantial efforts and has spent substantial amounts in adopting strategies to promote and advertise its POTION trademark.

The Opposer sets forth the following grounds for opposition:

1. Opposer will be damaged by the registration of Respondent-Applicant's "SNAIL POTION" mark covered by the subject application. The "SNAIL POTION" mark of Respondent-Applicant is identical to and confusingly similar with the "POTION" trademark of Opposer SUYEN. The said mark will mislead the public into believing that the goods bearing the said mark are the same products marketed and sold by Opposer or that the goods originated from Opposer. The registration and use of Respondent-Applicant 's mark will create a false connection between the parties.

2. The mark of Respondent-Applicant may and will be used as an instrument of unfair competition.

The Opposer submitted the following evidence:

1. Affidavit of Mr. Dale Gerald G. Dela Cruz; 2. Images of various BENCH products taken from the official website of Suyen,

http://shop.bench.com.phl; 3. Photographs of POTION products sold in the market; 4. Certified true copy of the Certificate of Renewal of Registration No. 4-2001-004437

issued by the IPOPHL for POTION trademark ofSuyen; 5. Photocopies of sample promotional materials for the POTION products; 6. List of Suyen's products bearing the POTION trademark and photographs of said

products; 7. Printouts of webpages from the official website of Suyen; 8. Photocopies of pages from the Bench Care Catalogue showing the POTION products

and trademark; and, 9. Copy of the Fifth (5th) year Declaration of Actual Use for the POTION trademark.

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This Bureau issued Notice to Answer" and served a copy thereof upon the Respondent­Applicant on 01 October 2019. The latter, however, did not file an Answer within the prescribed period. Thus, the Respondent-Applicant is hereby declared in default.'

This case is deemed submitted for decision.

Should the Respondent-Applicant be allowed to register the trademark SNAIL POTION?

As culled from the records and evidence, the Opposer is the registered owner of the "POTION" trademark under Certificate of Renewal of Registration No . 4-2001-004437 dated 07 February 2014 6 for Class 03 namely, body sprays. On the other hand, the Respondent-Applicant's application for the subject mark "SNAIL POTION" was applied for registration only on 02 July 2018 7.

To determine whether the competing marks are confusingly similar, the competing marks are reproduced below:

•POTION SNAIL POTIO

Opposer's Trademark Respondent-Applicant's Trademark

A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed. Some factors such as "sound; appearance; form, style, shape, size or format; color; ideas connoted by marks; the meaning, spelling, and pronunciation, of words used ; and the setting in which the words appear" may be considcred.! Thus, confusion is likely between marks only if their over-all presentation, as to sound, appearance, or meaning, would make it possible for the consumers to believe that the goods or products, to which the marks are attached, emanate from the same source or are connected or associated with each other.

An examination of the competing marks shows that they both contain the word "POTION". Such resemblance alone, however, is not sufficient to conclude that confusion is likely to occur.

4 Dated 07 August 2019 .

Order of Default dated 11 February 2020. 6 Exhibit "0" of Opposer. 7 File wrapper records. 8 Eteph a A.G. vs. Director of Patents, G.R. No. L-20635, 3 I Mar ch 1966.

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The Opposer's trademark "POTION" is written in simple font. Respondent-Applicant's mark is a combination of the words "SNAIL" and "POTION" in different font. Thus, Respondent­Applicant's trademark provides an independent character and impression to the mark, resulting to a visual and aural dissimilarity from that of the Opposer's trademark.

While the goods of the competing marks are similar in terms of Class 03 , they are not entirely identical. Opposer's goods are body sprays; whereas, Respondent-Applicant's goods are cosmetics, perfumery, soaps, essential oils, hair lotions, dentifrices, bleaching preparations; pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for humans and animals, disinfectants, fungicides, and herbicides. In this instance, the likelihood of public deception is remote because its purchasers are supposed to be more discriminating and sophisticated. In addition, the parties' respective goods/service neither flow in the same store or sales booth, or cater to the same class of consumers, as to result to any confusion. The competing goods have their own specialty stores with its brand names visibly displayed. Thus, a consumer could easily discern that there is no connection between the two marks where the Opposer's goods with its brands are substantially different to Respondent-Applicant's specialized products.

Corollarily, the enunciation of the Supreme Court in the case of Mighty Corporation vs. E. & 1. Gallo Winery? aptly states that:

"A very important circumstance though is whether there exists likelihood that an appreciable number of ordinarily prudent purchasers will be misled, or simply confused, as to the source of the goods in question. The 'purchaser' is not the 'completely unwary consumer' but is the 'ordinarily intelligent buyer' considering the type of product involved. he is 'accustomed to buy, and therefore to some extent familiar with, the goods in question. The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The test is not found in the deception, or the possibility of deception, of the person who knows nothing about the design ~hich has been counterfeited, and who must be indifferent between that and the other. The situation, in order to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.II

Significantly, this Bureau takes cognizance via judicial notice of the contents of the Trademark Registry of the Intellectual Property Office of the Philippines, which consist of marks that has the word mark or contain the word "POTION" in its trademark covering the same or different goods/service from that of Opposer's, such as: Ocean Potion (Reg. No. 42018504077 dated 22 November 2018 for Class 03); Potion Punch (Reg. No . 42016003108 dated 23 June 2016 for Class 09); Livon Silky Potion (Reg. No. 42015001134 dated 11 February 2016 for Class 03); Revlon Lash Potion (Reg. No. 42012009895 dated 06 March 2014 for Class 03); Honey Moon Love Potion/or Men (Reg. No. 42013010916 dated 29 May 2014 for Class 05); and , Purple Potion (Reg . No. 42017007354 dated 02 July 2019 for Classes 03,35 and 44).10 These marks are owned by entities other than the Opposer. It appears therefore, that the word "POTION" is a suggestive

G.R. No. 154342, 14 July 2004. 10 IPOPHL Tradem arks Database, av ailable at http://www. wipo.in t/branddb/phlenJ (lastaccessed20 March 2020).

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mark. "POTION" is suggestive of a liquid that is believed to have a magical effect on someone who drinks it such as a love/magic potion. Hence , to sustain this opposition solely on the ground that the competing marks both contain "POTION" would have the unintended effect of giving the Opposer exclusive use of the same, despite the difference or unrelated character of the goods or service offered.

Finally, 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. I I This Bureau finds that the Respondent-Applicant's mark meets this function.

WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the file wrapper of Trademark Application Serial No. 4-2018-011242 be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action.

SO ORDERED.

Taguig City. ~J -APR 2020

Atty. GIN LYN S. BADIOLA, LL.M. Adjudication Officer, Bureau ofLegal Affairs

II Pribhdas 1. Mirpuri vs. Court of Appeals. G.R . No. 11450 8, 19 Nove mber 1999.

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