Marvex Commercial Co. v. Hawpia
REITERATIONFacts
1. The Antecedents: Petra Hawpia & Co. filed a petition to register the trademark "LIONPAS" for medicated plaster, asserting its use since June 9, 1958. Marvex Commercial Co., Inc. opposed this registration, claiming it would infringe upon their registered trademark "SALONPAS" for a similar product, and that the two marks were confusingly similar, likely to mislead the public. 2. Procedural History: The Director of Patents initially dismissed Marvex Commercial Co., Inc.'s opposition and granted the registration for "LIONPAS." The oppositor moved for reconsideration, which was denied. Marvex Commercial Co., Inc. then appealed this decision to the Supreme Court. 3. The Petition: Marvex Commercial Co., Inc. petitioned the Supreme Court, raising three issues: ownership of the "LIONPAS" trademark, alleged false representations by the applicant, and the confusing similarity between "LIONPAS" and "SALONPAS." The Court focused on the ownership and similarity issues, ultimately finding the evidence insufficient to prove ownership and concluding that the marks were confusingly similar in sound, despite the absence of the "SALONPAS" mark in the record.
Issue(s)
Whether the applicant is the owner of the trademark "LIONPAS". Whether the application should be rejected due to alleged false representations regarding "Reg. Phil. Pat. Off.". Whether the trademark "LIONPAS" is confusingly similar to the trademark "SALONPAS".
Ruling
The Supreme Court set aside the decision of the respondent Director of Patents and dismissed the petition of Petra Hawpia & Co. for registration of the trademark "LIONPAS".
Ratio Decidendi
On the ownership of the trademark "LIONPAS": The Court found that the evidence presented by the applicant, Exhibits 5 and 6, was legally insufficient to prove ownership. Exhibit 5, a letter from "OSAKA BOEKI KAISHA, LTD.", was not acknowledged and appeared to be signed by an unauthorized representative. Furthermore, Exhibit 6 contradicted Exhibit 5 regarding the relationship between "OSAKA BOEKI KAISHA, LTD." and the manufacturer "ASUNARO PHARMACEUTICAL INDUSTRY CO.". The Court emphasized that under the Trade Mark Law, assignments of trademarks must be in writing, acknowledged before a notary public, and certified under seal. The applicant's other exhibits (A, A-1, B) indicated it was merely an exclusive distributor, not the owner, thus disentitling it to registration. On the alleged false representations: The Court deemed this issue of no importance and did not elaborate on its resolution. On the confusing similarity between "LIONPAS" and "SALONPAS": The Court disagreed with the Director of Patents, finding the trademarks confusingly similar in sound. Despite the absence of the "SALONPAS" mark in the record for visual comparison, the Court focused on the spelling, sound, and pronunciation. Both marks share the suffix "PAS", which is descriptive. The Court highlighted that similarity in sound is of especial significance in radio advertising, where reliance is on the ear. Citing various authorities and previous rulings, the Court concluded that "SALONPAS" and "LIONPAS" sound very much alike when spoken, which is sufficient ground to rule them confusingly similar when applied to merchandise of the same descriptive properties.
Main Doctrine
The registration of a trademark will be denied if it is confusingly similar to an existing registered trademark, particularly when similarity in sound is evident and goods are advertised via radio. Furthermore, an applicant must prove ownership of the trademark, and mere status as an importer or distributor is insufficient for registration.