E C I S I
J.P., J :
A Petition for Registration
in the Principal Register of the Patent Office of the trademark
was filed on October 21, 1957 by United American Pharmaceuticals, Inc.
Said domestic corporation first used the afore-stated trademark in the
Philippines on August 13, 1957. It covers "a medicinal preparation of
analgesic, antipyritic with vitamin C and Bioflavenoid used in the
of common colds, influenza and other febrile diseases with capillary
tendencies." The product falls under Class 6 of the official
that is, "Medicines and Pharmaceutical Preparations".
Bristol Myers Co.,
a corporation of the State of Delaware, U.S.A., filed on January 6,
an opposition to the application. Said oppositor is the owner in the
of the trademark "BUFFERIN" under Certificate of Registration No. 4578
issued by the Philippine Patent Office on March 3, 1954. Its trademark
is also registered in the United States under Certificate of
No. 566190 issued on November 4, 1952. It was first used in the
on May 13, 1953. The product covered by "BUFFERIN" also belongs
Class 6, Medicines and Pharmaceutical Preparations. Designated as
analgesic", it is intended for relief in cases of "simple headaches,
colds, menstrual pain and minor muscular aches."
The thrust of
contention was that the registration of the applicant's trademark
would violate its rights and interest in its registered trademark
as well as mislead and confuse the public as to the source and origin
the goods covered by the respective marks, in view of the allegedly
the same spelling, pronunciation and letter type design of the two
covering goods of the same class.
filed on January 18, 1961 a joint petition stipulating as to the facts
and submitting the case upon the issue of whether or not, considering
the factors involved, in both trademarks, as the parties would discuss
in their memoranda, there will be such confusing similarity between the
two trademarks as will be likely to deceive the purchasing public.
After submission of
memoranda on June 21, 1963, the Director of Patents rendered a Decision
granting the petition and dismissing the opposition, on the ground
all factors considered, the trademarks in question are not confusingly
similar, so that the damage feared by the oppositor will not result.
From said Decision,
the oppositor appealed to this Court by Petition for Review filed on
The sole issue raised
thereby is: Are the trademarks "BIOFERIN" and "BUFFERIN" as presented
the public in their respective labels, confusingly similar?
that confusing similarity will obtain because both products are
used for the relief of pains such as headaches and colds; and because
words "BIOFERIN and "BUFFERIN" are practically the same in spelling and
In determining whether
two trademarks are confusingly similar, the test is not simply to take
their words and compare the spelling and pronunciation of said words.
it is consider the two marks in their entirety, as they appear in the
labels, in relation to the goods to which they are attached. Said rule
was enunciated by this Court through Justice Felix Bautista Angelo in
Johnson & Co., vs. N.V.J. Van Dorp, Ltd., L-17501, April 27, 1963,
"It is true that
petitioner's trademark 'ALACTA' and respondent's 'ALASKA' there are
in spelling, appears and sound for both are composed of six letters of
three syllables each and each syllable has the same vowel, but in
if they are confusingly similar a comparison of said words is not the
determining factor. The two marks in their marks in their entirety as
appear in the respective labels must also be considered in relation to
the goods to which they are attached. The discerning eye of the
must focus not only on the predominant words but also on the other
appearing in both labels in order that he may draw his conclusion
one is confusingly similar to the other."
Applying this test to the
trademarks involved in this case, it is at once evident that the
of Patents did not err in finding no confusing similarity. For though
words "BIOFERING" and "BUFFERIN" and "Bufferin" have the same suffix
similar-sounding prefixes, they appear in their respective labels with
strikingly different backgrounds and surroundings, as to color, size
For convenience We
sum up these differences as follows:
1. Shape & Size
of Rectangular about Rectangular,
2-1/4" 3-3/4" 1-1/4"
2. Color of Label
3. Color background
4. Over-all Layout
At the top center At left side of label —
it are "Bristol Myers Co.,
medicine, New York, N.Y."
below it; at right side,
dosage are grouped
5. Forms of Product
Capsules — Tablets —
states: No such
only by or
taken as they
will appear to a prospective customer, the trademarks in question are
apt to confuse. Furthermore, the product of the applicant is expressly
stated as dispensable only upon doctor's prescription, while that of
does not require the same. The chances of being confused into
one for the other are therefore all the more rendered negligible.
oppositor avers that some drugstores sell "BIOFERIN: without asking for
a doctor's prescription, the same if true would be an irregularity not
attributable to the applicant, who has already clearly stated the
of a doctor's prescription upon the face of the label of its product.
WHEREFORE, the Decision
of the Director of Patents appealed from is hereby affirmed without
Bautista Angelo, Concepcion, J.B.L. Reyes, Barrera, Dizon, Regala,
Zaldivar and Sanchez, JJ., concur.