Bristol Myers Company v. Director of Patents
REITERATIONFacts
The Antecedents: United American Pharmaceuticals, Inc. (applicant) filed an application for the registration of the trademark "BIOFERIN" for a medicinal preparation falling under Class 6 (Medicines and Pharmaceutical Preparations). Bristol Myers Co. (oppositor), a Delaware corporation, opposed the application, claiming ownership of the trademark "BUFFERIN" registered in the Philippines and the United States, also for goods in Class 6. The oppositor contended that the registration of "BIOFERIN" would infringe upon its rights and confuse the public due to the alleged similarity in spelling, pronunciation, and letter-type design of the two trademarks. Procedural History: The parties submitted a joint petition stipulating the facts and agreeing to submit the case on the issue of whether the trademarks were confusingly similar. The Director of Patents rendered a decision granting the registration of "BIOFERIN" and dismissing the opposition, finding no confusing similarity between the marks. The oppositor appealed this decision to the Supreme Court. The Petition: The sole issue raised on appeal was whether the trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in their respective labels, were confusingly similar.
Issue(s)
Whether the trademarks "BIOFERIN" and "BUFFERIN," as presented to the public in their respective labels, are confusingly similar.
Ruling
The Supreme Court affirmed the decision of the Director of Patents, holding that the trademarks "BIOFERIN" and "BUFFERIN" are not confusingly similar. The Court found that while the words themselves share some similarities, the overall presentation of the marks on their respective labels, including differences in shape, size, color, layout, form of the product, and prescription requirements, negate the likelihood of confusion among the purchasing public. The decision of the Director of Patents is affirmed.
Ratio Decidendi
On Issue 1: The Supreme Court held that the trademarks were not confusingly similar. Applying the "Holistic Test" from Mead Johnson & Co. vs. N.V.J Van Dorp, Ltd., the Court explained that the "discerning eye" must look at the marks in their entirety, including color, size, and design, rather than just comparing spelling and pronunciation. Although "BIOFERIN" and "BUFFERIN" share phonetic similarities, their labels are visually distinct: "BIOFERIN" uses a predominantly yellow background with olive-green text, while "BUFFERIN" uses a predominantly white background with blue text. The layouts are also markedly different, with "BIOFERIN" featuring horizontal content and "BUFFERIN" grouping its dosage and indications perpendicularly. Crucially, the Court noted that "BIOFERIN" is a prescription drug requiring a physician's authorization, whereas "BUFFERIN" is an over-the-counter medicine. This regulatory distinction significantly reduces the likelihood that a consumer would accidentally purchase one for the other. Any instance of drugstores selling "BIOFERIN" without a prescription is an irregularity not attributable to the applicant.
Main Doctrine
The determination of confusing similarity between trademarks requires consideration of the marks in their entirety, as they appear in their respective labels, in relation to the goods to which they are attached, and not solely by comparing their words for spelling and pronunciation. Strikingly different backgrounds, surroundings, color, size, and design, coupled with differences in product form and prescription requirements, can negate confusing similarity.