Dermaline v. Myra Pharmaceuticals
REITERATIONFacts
The Antecedents: Petitioner Dermaline, Inc. (Dermaline) filed an application for the registration of the trademark "DERMALINE DERMALINE, INC." Respondent Myra Pharmaceuticals, Inc. (Myra) filed an opposition, alleging that Dermaline's mark so resembles its registered trademark "DERMALIN" (registered July 8, 1986) and will likely cause confusion, mistake, and deception to the purchasing public, violating Section 123 of Republic Act (R.A.) No. 8293. Myra argued that the dominant feature "DERMALINE" is practically identical to "DERMALIN," with identical pronunciation and similar appearance, and that Dermaline's prior application for the same mark was refused. Procedural History: The Intellectual Property Office (IPO)-Bureau of Legal Affairs sustained Myra's opposition, rejecting Dermaline's application. Dermaline's motion for reconsideration was denied. Its appeal to the IPO Director General was dismissed for being filed out of time. The Court of Appeals (CA) affirmed the dismissal and rejection. Hence, this petition. The Petition: Dermaline seeks to reverse the CA's decision upholding the IPO's rejection of its trademark application.
Issue(s)
Whether the Court of Appeals erred in upholding the IPO's rejection of Dermaline's application for registration of trademark, considering the potential for confusion and the relatedness of the goods. Whether Dermaline's trademark "DERMALINE DERMALINE, INC." is confusingly similar to Myra's registered trademark "DERMALIN," specifically focusing on the application of the Dominancy Test and potential expansion of business.
Ruling
The petition is denied. The Decision dated August 7, 2009, and the Resolution dated October 28, 2009, of the Court of Appeals in CA-G.R. SP No. 108627 are affirmed.
Ratio Decidendi
On whether the Court of Appeals erred in upholding the IPO's rejection of Dermaline's application for registration of trademark: The Court affirmed the findings of the IPO and CA, holding that the Dominancy Test was correctly applied. While the presentation of the marks differed, the prevalent features were substantially similar. The marks are almost spelled the same, differing only by the final letter 'E' in Dermaline's mark, and are pronounced practically identically in three syllables, with the final 'E' in "DERMALINE" being silent. This similarity is likely to cause confusion or mistake in the mind of the ordinary purchaser. On whether Dermaline's trademark "DERMALINE DERMALINE, INC." is confusingly similar to Myra's registered trademark "DERMALIN": The Court reiterated that trademark protection extends to normal potential expansion of business, and even if the products were in different classifications (skin treatments vs. pharmaceutical products), the close relation of these goods, both pertaining to skin treatments, could still lead to confusion of business or origin. Purchasers might mistakenly believe Dermaline is connected to or an expansion of Myra's business. The Court emphasized that when a mark is almost the same or closely resembles a registered mark, the application should be rejected to avoid public confusion and protect established goodwill. The factual nature of trademark issues means that findings of the IPO and CA, when supported by evidence, deserve great weight and respect.
Main Doctrine
The Court affirmed the rejection of Dermaline's trademark application, finding that its mark 'DERMALINE DERMALINE, INC.' was confusingly similar to Myra's registered mark 'DERMALIN' under the Dominancy Test, leading to a likelihood of confusion of goods or business, and potential dilution of goodwill.