MARVEX COMMERCIAL CO., INC., PETITIONER, VS. PETRA HAWPIA & CO., AND THE DIRECTOR OF PATENTS, RESPONDENTS.

Petra Hawpia & Co., a partnership duly organised under the laws of the
Philippines and doing business at 543 M. de Santos (Botica Divisoria), Manila
(hereinafter referred to as the applicant), on October 14, 1958 filed a petition
for the registration of the trademark “LIONPAS” used on medicated plaster, with
the Philippine Patent Office, asserting its continuous use in the Philippines
since June 9, 1958.^[1] The Marvex
Commercial Co., Inc., a corporation also duly organized under the laws of the
Philippines (hereinafter referred to as the oppositor), on July 24, 1959 filed
an opposition thereto, alleging that the registration of such trademark would
violate its right to and interest in the trademark “SALONPAS” used on another
medicated plaster, which is registered in its name under Certificate of
Registration 5466, issued by the Director of Patents on September 29, 1956, and
that both trademarks when used on medicated plaster would mislead the public as
they are confusingly similar.

After due hearing, the Director of Patents in his decision of August 16, 1961
dismissed the opposition and gave due course to the petition, stating in part
that “confusion, mistake, or deception among the purchasers will not likely and
reasonably occur” when both trademarks are applied to medicated plaster. The
oppositor moved to have the decision reconsidered. This motion was denied in a
resolution of November 27, 1961. The oppositor then interposed the present
appeal.

The issues stated by the Director of Patents in his decision are the same
ones now tendered by the oppositor for resolution, namely, (1) Is the applicant
the owner of the trademark “LI0NPAS”?; (2) Should the application be rejected on
the ground that the applicant made false representations in placing the phrase
“Reg. Phil. Pat. Off.” below the trademark “LIONPAS” on its cartons?; and (3) Is
the “trademark “LIONPAS” confusingly similar to the trademark “SALONPAS”?

We do not consider the second issue of any importance; we will thus proceed
to resolve the first and third issues.

Is the applicant the owner of the trademark “LIONPAS”?

Under sections 2 and 2-A of the Trade Mark Law, as amended, the right to
register trademarks, tradeoames and service marks by any person, corporation,
partnership or association domiciled in the Philippines or in any foreign
country, is based on ownership, and the burden is upon the applicant to prove
such ownership (Operators, Inc. vs. The Director of Patents, et al.,
L-17901, Oct. 29, 1965).

The Director of Patents found, on the strength of exhibits 5 and 6 for the
applicant, that the latter has “satisfactorily shown” its ownership of the
trademark sought to be registered. Exhibit 5 is a letter dated June 20, 1958,
sent by “OSAKA BOEKI KAISHA, LTD.” to the applicant which tends to show that the
former, for a $1 consideration, has assigned, ceded, and conveyed all its
“rights, interests and goodwill in the tradename LIONPAS Medicated Plaster * *
*” in favor of the latter. Exhibit 6 is a joint “SWORN STATEMENT” which appears
to have been executed by the presidents of “OSAKA BOEKI KAISHA, LTD.” and
“ASUNARO PHARMACEUTICAL INDUSTRY CO.”, and tends to confirm the contents of
exhibit 5.

A careful scrutiny of exh. 5 will reveal, however, that the sender of the
letter, “OSAKA BOEKI KAISHA, LTD.” and which appears to be the seller, is merely
a representative of the manufacturer “ASUNARO PHARMACEUTICAL INDUSTRY CO.” There
is no proof that as such representative, the former has been authorised by the
latter to sell the trademark in question. Moreover, exh. 5 on its face appears
to have been signed only by someone whose position in the company’s “Sundries
Dept.”is not described; the signature is net legible. It is even contradicted by
exh. While exh. 5 shows that “OSAKA BOEKI KAISHA, LTD.” is a representative of
“ASUNARO PHARMACEUTICAL INDUSTRY CO.”; exh. 6 asserts that the former is not a
representative of the latter, but that it is the owner of the trademark
“LIONPAS” (par. 2, exh. 6). At all events, neither averment can be accorded the
weight of an assignment of ownership of the trademark in question under the
Trade Mark Law. Exh. 5 is not acknowledged. Exh. 6 does not bear the
acknowledgment contemplated by the aforesaid law, particularly by the last
paragraph of section 37 and paragraph 2 of section 31 of R.A. 166, as amended,
which provide as follows:

“The registration of a mark under the provisions of this section shall be
independent ef the, registration in the country of origin and the duration,
validity or transfer in the Philippines of such registration shall be governed
by the provisions of this Act.” (Sec. 37, last par.) (Italics ours)

“The assignment must be in writing, acknowledged before, a notary public or
other officer authorised to administer oaths or perform other notarial acts and
certified under the hand and official seal of the notary or other officer.”
(Sec. 31, par. 2)

In this case, although a sheet of paper is attached to exh. 6, on which is
typewritten a certification that the signatures of the presidents of the two
named companies (referring to the signatures in exh. 6) “have been duly written
by themselves”, this sheet is unmarked, unpaged, unsigned, undated and unsealed.
We have thumbed the record in quest of any definitive evidence that it is a
correct translation of the Japanese characters found on another unmarked and
unpaged sheet, and have found none.

It follows from the above disquisition that exhs. 5 and 6 are legally
insufficient to prove that the applicant is the owner of the trademark in
question.

As a matter of fact, the other evidence on record conclusively belies the
import of exh. 6. Thus exh. A states that the applicant is merely the “exclusive
distributor” in the Philippines of the “LIONPAS” penetrative plaster; exh. A-1
describes the applicant as the “Philippine sole distributor” of “LIONPAS”; exh.
B simply states that “LIONPAS” is “manufactured exclusively for Petra Hawpia
& Co. for distribution in the Philippines.”

Not being the owner of the trademark “LIONPAS” but being merely an importer
and/or distributor of the said penetrative plaster, the applicant is not
entitled under the law to register it in its name (Operators, Inc. vs.
Director of Patents, supra).

Upon the third issue, the applicant preliminarily asserts that there is no
justification for this Court to disturb any finding made by the Director of
Patents on appeal. This assertion is not tenable. Although the Director of
Patents is the official vested by law with the power to administer the
registration of trademarks and tradenames, his opinion on the matter of
similarity or dissimilarity of trademarks and tradenames is not conclusive upon
this Court which may pass upon such determination.

The “SALONPAS” mark is not before this Court. Our meticulous examination of
the entire record has failed to yield sample of such mark. We have therefore
proceeded to analyse the two marks, vis-a-vis each other, on the basis of
what we can derive from the record for a comparative study. And our conclusion,
in disagreement with that of the Director of Patents, is not based on a
comparison of the appearance, form, style, shape, size or format of the
trademarks, which we can not make because, as we have already observed, the
“SALONPAS” mark is not before us, but on a comparison of the spelling, sound and
pronunciation of the two words.

It is our considered view that the trademarks “SALONPAS” and “LIONPAS” are
confusingly similar in sound.

Both these words have the same suffix, “PAS”, which is used to denote a
plaster that adhered to the body with curative powers. “Pas, being merely
descriptive, furnishes no indication of the origin of the article and therefore
is open for appropriation by anyone (Ethepa vs. Director of Patents,
L-20635, March 31, 1966) and may properly become the subject of a trademark by
combination with another word or phrase.

Two letters of “SALONPAS” are missing in “LIONPAS”: the first letter a
and the letter s. Be that as it may, when the two words are pronounced,
the sound effects are confusingly similar. And where goods are advertised over
the radio, similarity in sound is of especial significance (Co Tiong Sa vs.
Director of Patents, 95 Phil. 1, citing Nims, The Law of Unfair Competition and
Trademarks, 4th ed., vol 2, pp. 676-679). “The importance of this rule is
emphasised by the increase of radio advertising in which we are deprived of the
help of our eyes and must depend entirely on the ear” (Operators, Inc.
vs. Director of Patents, supra).

The following random list of confusingly similar sounds in the matter of
trademarks, culled from Nims, Unfair Competition and Trade Marks, 1947, vol. 1,
will reinforce our view that “SALONPAS” and “LIONPAS” are confusingly similar in
sound: “Gold Dust” and “Gold Drop”; “Jantsen” amd “Jass-Sea”; “Silver Flash” and
“Supper-Flash”; “Cascarete” and “Celborite”; “Celluloid” and “Cellonite”;
“Chartreuse” and “Charseurs”; “Cutex” and “Cuticlean”; “Hebe” and “Meje”;
“Kotex” and “Femetex”; “Zuso” and “Hoo Hoo”. Leon Amdur, in his book “Trade-Mark
Law and Practice”, pp. 419-421, cites, as earning within the purview of the
idem sonans rule, “Yusea” and “U-C-A”, “Steinway Pianos” and “Steinberg
Pianos”, and “Seven-Up” and “Lemon-Up”. In Co Tiong vs. Director of
Patents, this Court unequivocally said that “Celdura” and “Cordura” are
confusingly similar in sound; this Court held in Sapolin Co. vs. Balmaceda, 67
Phil. 795 that the name “Lusolin” is an infringement of the trademark “Sapolin”,
as the sound of the two names is almost the same.

In the case at bar, “SALONPAS” and “LIONPAS”, when spoken, sound very much
alike. Similarity of sound is sufficient ground for this Court to rule that the
two marks are confusingly similar when applied to merchandise of the same
descriptive properties (see Celanese Corporation of America vs. E. I.
Du Pont, 154 F. 2d. 146, 148). The registration of “LIONPAS” cannot therefore be
given due course.

ACCORDINGLY, the decision of the respondent Director of Patents is set
aside, and the petition below of the respondent Petra Hawpia & Co. is hereby
dismissed, at the cost of the latter respondent.

Concepcion, C.J., Reyes,
J.B.L., Dizon, Regala, Makalintal, Bengzon, J.P., Zaldivar and Sanchez,
JJ., concur.

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^[1] Sec. 2 of the Trade Mark Law requires
actual use in the Philippines of not less than two months before application may
be filed.