INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES SUYEN CORPORATION, IPCNo. 14-2016-00345 Opposer, Opposition to: Appln. No. 4-2015-014034 Date Filed: 09 December 2015 TM: "PUREDAY" -versus- MANDOM CORP., Respondent- Applicant. NOTICE OF DECISION MIGALLOS & LUNA LAW OFFICES Counsel for Opposer 7th Floor, the PHINMA Plaza 39 Plaza Drive, Rockwell Center Makati City E.B. ASTUDILLO & ASSOCIATES Counsel for Respondent-Applicant Citibank Center, 10th Floor 8741 Paseo de Roxas Makati City GREETINGS: Please be informed that Decision No. 2018 - 1§5 dated June 29, 2018 (copy enclosed) was promulgated in the above entitled case. Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007 series of 2016, any party may appeal the Decision to the Director of the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees. Taguig City, June 29, 2018. MARILYN F. RETUTAL IPRS IV Bureau of Legal Affairs ® www.ipophil.gov.ph © Intellectual Property Center © [email protected] #28 Upper McKinley Road McKinley Hill Town Center INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES SUYEN CORPORATION, IPC No. 14-2016-00345 Opposer, } } Opposition to: Application No. 4-2015-014034 -versus- } Date Filed: 09 December 2015 Trademark: "PUREDAY" MANDOM CORP., } Respondent-Applicant. } -x Decision No. 2018- DECISION SUYEN CORPORATION1 ("Opposer") filed an opposition to Trademark Application Serial No. 4-2015-014034. The application, filed by Mandom Corp.2 ("Respondent-Applicant"), covers the mark "PUREDAY" for use on "hair bleaches; hair colorants; hair dyes; hair care preparations; hair styling preparations; hair fixers; hair wax; hair setting foams; hair setting gels; hair setting water; hair mist; pomade for cosmetic purposes; hair pomades; hair lotions; hair tonics; hair creams; oils for hair conditioning; hair spray; hair shampoos; hair rinses; hair conditioners; perfumes; aromatics [essential oils]; room fragrances; scented room sprays; eau de cologne; essential oils; tissues impregnated with fragrance; talcum powser, for toilet use; cosmetics; antiperspirants [toiletries]; deodorants for personal use; cosmetic preparations for skin care; skin whitening creams; skin moisturizer; face wash foams; skin lotions; skin milks; skin creams; make-up preparations; lipstick and lip color preparations; mascara; eyebrow cosmetics; eyeliner; make-up powder; cheek colors; eye shadoxvs; beauty masks; make-up removing preparations; cleansing lotion for toilet purposes; facial cleanser for toilet purposes; nail polish; nail care preparations; nail polish removers; false nails; tissues impregnated with cosmetic lotions; paper sheet impregnated with deodorant skin lotions and body powder (non-medicated), depilatory preparations; soaps; dentrifices; non-medicated bath preparations, namely, bath liquid, bath gel, bath powder, bath salt and bath tablet; cologne water; roll-on deodorants for personal use; foot deodorant spray; soaps for body care; deodorant soaps; antiperspirant soap; soap for foot perspiration; after-shave preparations; shaving preparations; paper sheet impregnated with facial cleanser for toilet purposes; absorbent facial tissues; lip creams; nose pore strips; shower gels" under Class 3 of the International Classification of Goods and Services.3 The Opposer alleges: XXX 'With address at Bench Tower, 30th St., corner Rizal Drive, Crescent Park West 5, Bonifacio Global City, Taguig City. 2With address at 5-12, Juniken-Cho, Chuo-ku, Osaka, Japan. 3The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based on multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning th<P<^ International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957. X 1 @ www.ipopriil.gov.ph Intellectual Property Center Q [email protected] #28 Upper McKinley Road McKinlev Hill Town Center "4.1 Opposer Suyen has been the registered owner of the PURE PLAY trademark since 2 September 2010. It has continuously used the said trademark for over ten years. "4.2 As owner of the PURE PLAY mark, Suyen has the legal right to prevent all third parties from using without its consent, in the course of trade or business, a mark that is identical or similar thereto, Section 147.1 of the Intellectual Property Code provides: xxx "4.3 Section 123.1 (d) of the Intellectual Property Code provides that a mark cannot be registered if it: xxx "4.4 Based on the above-quoted provision, the PUREDAY mark should not be registered because it is confusingly similar to Suyen's PURE PLAY trademark. "4.5 In determining confusing similarity, the Supreme Court has applied the idem sonans rule. This provides that phonetic and aural similarities of words in the mark must be taken into account. In the case of McDonalds Corporation v. L.C. Big Mak Burger, Inc. xxx "4.6 Applying the foregoing idem sonans principle, it is clear that the PUREDAY mark is confusingly similar with the PURE PLAY mark. The first syllable of both marks use the same word: PURE. As to the second half of the marks, aurally, the '- AY' in the words 'DAY' and 'PLAY' are pronounced the same way. The marks actually only differ in one aspect: the letter 'D' and the consonant blend 'PL'. "4.7 In the case of Skechers, USA, Inc. v. Inter Pacific Industrial Trading Corp. 646 SCRA 448, 455 (28 March 2011), the Court noted the development of two tests to determine the similarity and likelihood of confusion of marks. These are the Dominancy Test and the Holistic Test, thus: xxx "4.8 Under the Dominancy test, there is infringement and likelihood of confusion in the market when there is similarity in the prevalent features of the competing trademarks (Amigo Manufacturing, Inc. v. Cluett Peabody Co., Inc., 354 SCRA 434 [2001]). The test is applied when the trademark sought to be registered contains the main, essential and dominant features of the earlier registered trademark, and confusion or deception is likely to result, xxx "4.9 The Dominancy Test is part of the Intellectual Property Code which provides: xxx "4.10 The Supreme Court has held in numerous cases that '[w]here a trade mark contains a dominating or distinguishing word, and the purchasing public has come to know and designate the article by such dominating word, the use of such word by another in marking similar goods may constitute infringement though the marks aside from such dominating word may be dissimilar' xxx "4.11 Applying the Dominancy Test, it is clear that the PUREDAY mark infringes on the PURE PLAY mark of opposer Suyen. Under said test, as codified in the IP Code, even a colorable imitation is sufficient for trademark infringement xxx "4.12 In this case, PUREDAY is a colorable imitation of PURE PLAY, as it copies the main, essential, dominant features of opposer Suyen's PURE PLAY mark. The difference between both marks, i.e. 'PLAY' and 'DAY' is insignificant. The two marks, even with the said difference, are similar visually and aurally. Indeed, in the market, especially where the PUREDAY and PURE PLAY products are set side-by-side with each other, the consumer cannot distinguish one from the other or cannot see that PUREDAY is not related to PURE PLAY and/ or Suyen. "4.13 The fact that the marks are not identical does not preclude the existence of trademark infringement, x x x "4.14 Even under the Holistic Test, where competing marks are compared as they appear in their respective labels or packaging, respondent-applicant's mark is confusingly similar with opposer's PURE PLAY mark, x x x "4.15 What is undeniable is the fact that when a manufacturer such as respondent-applicant prepares to package his product he has before him a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from others. When as in this case, respondent-applicant chose, without a reasonable explanation, to use the word PUREDAY though the field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive, x x x "4.16 It must be stressed that respondent-applicant seeks to register its mark under the same classification of goods (Class 3 eau de cologne; essential oils; tissues impregnated with fragrance, etc.) as Suyen's PURE PLAY trademark (Class 3 body spray, deo body spray, lotion, body cream, shower gel, eau de toilette, eau de cologne). The products covered by the competing marks are the same. This highlights the likelihood of confusion, if not actual confusion, created by the use of respondent-applicant's mark. Respondent-Applicant's mark will confuse the public and mislead them into thinking that the goods bearing the PUREDAY mark are among the PURE PLAY products of Suyen, or are a sub-collection or innovation of PURE PLAY under the Blue and Pink collections, or that they originated from or under the sponsorship of Suyen. "4.17 The two marks are not only very similar aurally and visually, they also refer to goods sold within the same channels of trade and industry. "4.18 There will be confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the products of opposer; and confusion of business (source or origin confusion), where, although the goods of the parties are different, the product bearing the mark PUREDAY might be reasonably assumed to originate from opposer, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, although inexistentx x x x "4.19 Opposer, as owner of the PURE PLAY, has the exclusive right to prevent all third parties, including respondent-applicant, from using in the course of trade all identical or similar marks.