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

Marvex Commercial versus Petra Hawpia and Company

The Case

This is a contest between two trademarks for medicated plaster. Marvex Commercial Company, Incorporated, which already owns the registered mark SALONPAS, opposed the application of Petra Hawpia and Company to register the mark LIONPAS for a similar product. The case matters because it settles two working rules for the bar: first, that the right to register a trademark rests on ownership, not on importation or distribution; and second, that trademarks may be held confusingly similar on the basis of sound alone, even without comparing their appearance. It is a classic illustration of the idem sonans rule, meaning the rule that names sounding alike are treated as the same.

Procedural History

Petra Hawpia and Company filed its petition for registration with the Philippine Patent Office. Marvex filed an opposition. After hearing, the Director of Patents dismissed the opposition and gave due course to the petition, finding that confusion, mistake, or deception among purchasers would not likely and reasonably occur. Marvex moved for reconsideration, and the motion was denied. Marvex then appealed to the Supreme Court, which resolved the appeal on the merits.

Facts

On the fourteenth of October, 1958, Petra Hawpia and Company, a partnership doing business in Manila, applied to register the trademark LIONPAS for medicated plaster, claiming continuous use in the Philippines since the ninth of June, 1958.

On the twenty-fourth of July, 1959, Marvex Commercial Company, Incorporated filed an opposition. It alleged that registration would violate its right to the trademark SALONPAS, also used on medicated plaster and registered in its name under a certificate issued by the Director of Patents on the twenty-ninth of September, 1956. It further alleged that the two marks, used on the same goods, are confusingly similar and would mislead the public.

To prove ownership, the applicant relied on two exhibits. The first was a letter from a Japanese firm purporting to assign the tradename LIONPAS for a consideration of one dollar. The second was a joint sworn statement of the presidents of two Japanese companies. The Director of Patents accepted these as satisfactory proof of ownership. The Supreme Court, however, found them defective, and found other evidence showing that the applicant was merely an exclusive distributor of the product.

Issues

• Whether or not the applicant, Petra Hawpia and Company, is the owner of the trademark LIONPAS.
• Whether or not the application should be rejected because the applicant made false representations by placing the phrase Reg. Phil. Pat. Off. below the trademark on its cartons.
• Whether or not the trademark LIONPAS is confusingly similar to the trademark SALONPAS.

Applicable Provisions

The last paragraph of Section 37 of Republic Act Number 166, the Trade Mark Law, as amended, provides:

The registration of a mark under the provisions of this section shall be independent of 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.

This provision makes the transfer of a mark in the Philippines governable by Philippine law, so a foreign assignment must meet our statutory requirements.

Paragraph 2 of Section 31 of the same law provides:

The assignment must be in writing, acknowledged before a notary public or other officer authorized to administer oaths or perform other notarial acts and certified under the hand and official seal of the notary or other officer.

This is the provision the applicant's exhibits failed to satisfy, because the assignment was not acknowledged and the sworn statement was not certified as the law requires.

Ruling

On the first issue, the Court held that the applicant is not the owner of LIONPAS. Under Sections 2 and 2-A of the Trade Mark Law, the right to register is based on ownership, and the burden is on the applicant to prove it. The letter of assignment was signed by an illegible signature in a sundries department, with no proof that the sender was authorized by the manufacturer to sell the mark. The sworn statement contradicted the letter on who owned the mark. Neither document complied with the acknowledgment and certification required by the law. Other evidence showed the applicant was merely an exclusive distributor. Being an importer and distributor, it was not entitled to register the mark in its name.

The Court gave the second issue no importance and did not resolve it.

On the third issue, the Court rejected the argument that the Director's findings bind it. The Director's opinion on similarity is not conclusive on the Court. Since no sample of the SALONPAS mark was in the record, the Court compared the marks on spelling, sound, and pronunciation. It held them confusingly similar in sound. Both share the suffix PAS, which is merely descriptive and open to appropriation by anyone in combination with another word. Although two letters of SALONPAS are missing in LIONPAS, the sound effects when pronounced are confusingly similar. The Court stressed that where goods are advertised over the radio, similarity in sound is of especial significance, because advertising deprives us of the help of our eyes and makes us depend entirely on the ear. Similarity of sound is sufficient ground to rule the marks confusingly similar when applied to merchandise of the same descriptive properties.

Doctrine

First, the right to register a trademark is based on ownership, and the applicant bears the burden of proving it. A mere importer or distributor does not own the mark and cannot register it.

Second, an assignment of a trademark must comply with the formal requirements of the Trade Mark Law. It must be in writing and acknowledged before a notary public or other authorized officer, and certified under hand and official seal.

Third, the Director of Patents' opinion on the similarity of trademarks is not conclusive on the courts.

Fourth, under the idem sonans rule, trademarks are confusingly similar if they sound alike when spoken, especially for goods advertised over the radio. Similarity of sound alone is sufficient ground.

Disposition

The Supreme Court set aside the decision of the Director of Patents and dismissed the petition of Petra Hawpia and Company, with costs against it. Marvex won.

Remember This

Memorize this line: the right to register is based on ownership, and similarity of sound alone can make two marks confusingly similar. Examiners use this case for the idem sonans rule and for the rule that an importer or distributor cannot register a trademark it does not own.