Prosource International v. Horphag Research
REITERATIONFacts
The Antecedents: Respondent Horphag Research Management SA, owner of trademark PYCNOGENOL, discovered that petitioner Prosource International, Inc. was distributing a similar food supplement using the mark PCO-GENOLS since 1996. Respondent demanded petitioner cease and desist. Petitioner discontinued the use of PCO-GENOLS and changed its mark to PCO-PLUS without notifying respondent. Procedural History: Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary Injunction against petitioner, alleging confusing similarity between PYCNOGENOL and PCO-GENOLS. Petitioner contended that respondent was not the registered owner, the marks were not confusingly similar, and liability was negated by discontinuing use prior to the suit. The Regional Trial Court (RTC) ruled in favor of respondent, finding the marks confusingly similar and holding petitioner liable for attorney's fees. The Court of Appeals (CA) affirmed the RTC decision. The Petition: Petitioner seeks reversal of the CA decision, arguing that the CA erred in affirming the lower courts' rulings that respondent's trademark was infringed by petitioner's PCO-GENOLS and in affirming the award of attorney's fees.
Issue(s)
Whether the Court of Appeals erred in affirming the ruling of the lower court that respondent's trademark PYCNOGENOL was infringed by petitioner's PCO-GENOLS. Whether the Court of Appeals erred in affirming the award of attorney's fees in favor of respondent.
Ruling
The petition is denied for lack of merit. The Court of Appeals Decision dated July 27, 2007 and its Resolution dated October 15, 2007 in CA-G.R. CV No. 87556 are affirmed.
Ratio Decidendi
On the issue of trademark infringement: The Court affirmed the findings of the RTC and CA that petitioner's use of the mark PCO-GENOLS constituted trademark infringement. The courts applied the Dominancy Test, focusing on the similarity of the prevalent features of the competing trademarks. Both PYCNOGENOL and PCO-GENOLS share the suffix "GENOL," which was found to be descriptive. Despite minor differences in letters, the pronunciation of the two marks was deemed confusingly similar, especially since both products are food supplements. The courts reasoned that purchasers could be misled into believing the products originated from a common source. Petitioner's act of withdrawing the product from the market before the institution of the case did not negate its liability for infringement committed from 1996 until June 2000. The law applicable for acts committed until December 31, 1997, was R.A. No. 166, and for acts from January 1, 1998, until June 19, 2000, it was R.A. No. 8293. Both statutes define infringement based on the likelihood of confusion. The Court reiterated that factual determinations of the trial and appellate courts, when consistent, are final and binding on the Supreme Court. On the award of attorney's fees: The Court sustained the award of attorney's fees. Article 2208 of the Civil Code allows for the recovery of attorney's fees when the court deems it just and equitable, even in the absence of moral and exemplary damages. In this case, respondent was compelled to litigate to protect its interests against petitioner's infringing act. The award was found to be just and equitable under the circumstances, considering that respondent was forced to incur expenses to protect its intellectual property rights.
Main Doctrine
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception, thus constituting infringement. If the competing trademark contains the main, essential and dominant features of another, and confusion or deception is likely to result, infringement takes place. The aural and visual impressions created by the marks in the public mind are considered.