The Intellectual Property Office (IPO) has ruled against the Respondent-Applicant SUN PHARMA PHILIPPINES, INC.’s proposed mark, VALCOSUN, which encompasses “medicinal and pharmaceutical preparations for the treatment of viral infections” under Class 5 for purposes of registration.
The Opposer ECO ANIMAL HEALTH LIMITED argued that at the time of the application of the Respondent-Applicant’s proposed mark VALCOSUN, its trademark, VALOSIN, has been registered and has been used worldwide since October 9, 2012, and in the Philippines since June 21, 2016.
The main issue is whether the Respondent-Applicant’s proposed mark VALCOSUN is confusingly similar with the Opposer’s registered trademark VALOSIN, pursuant to Section 123.1(d) of the IP Code. This specific provision is the basis for Opposition cases, which proscribes registration of a mark that nearly resembles a registered trademark which falls under the same or related goods and services.
The IPO, through the Bureau of Legal Affairs, in applying the dominancy test, determined that there is a dissimilarity in the visual and aural impressions of both marks. However, logically, it is uncommon among consumers to be so prudent when purchasing lower priced items as opposed to products of significantly higher value. The IPO cited Taiwan Kolin Corporation, Ltd. vs. Kolin Electronics Co., Inc., as follows:
xxx. As a general rule, an ordinary buyer does not exercise as much prudence in buying an article which he pays a few centavos as he does in purchasing a more valuable thing. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care xxx
The IPO concluded that the products registered under the Respondent-Applicant’s proposed mark contain such a broad definition giving way to the idea that the goods are “inexpensive, used in the daily life of people, and is casually brought by people.” Therefore, confusion between both Opposer’s registered trademark VALOSIN and Respondent-Applicant’s proposed mark VALCOSUN is plausible.
Aside from the confusing similarity in marks, the goods covered under the same class are related. The Opposer’s registered trademark includes “veterinary preparations and substances,” while the Respondent-Applicant’s proposed mark includes “medicinal and pharmaceutical preparations for the treatment of viral infections.” With the Respondent-Applicant’s proposed mark’s wide-ranging definition, there is a possibility that the goods covered under the same class overlap, and confusion may arise. To reiterate the IPO’s cited decision of the Supreme Court in Esso Standard Eastern, Inc vs. Court of Appeals, goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores.
On these reasons alone, the IPO ruled against the registration of the proposed mark VALCOSUN.
(BLA decision in IPC NO. CD-2023/2224 dated February 27, 2023)