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Proposed Drug Name “OMEZOLE” Rejected as Identical to Generic Term “OMEPRAZOLE”

By: Mila Federis

November 10, 2014

A recent decision of the Philippine Bureau of Legal Affairs (“BLA”) tackled the issue of distinctiveness in designations for pharmaceutical products. In Westmont Pharmaceutical, Inc. vs. Platinum Pharmaceuticals (PVT), Ltd. (IPC No. 14-2011-00153), 22 September 2014, the applicant attempted to register “OMEZOLE” as a trademark for “pharmaceutical preparations for the treatment of duodenal ulcer, gastric ulcer, gastro-esophageal reflex disease (gerd) and management of zollinger Ellison syndrome”. The application was opposed on grounds that OMEZOLE is confusingly similar to opponent’s registered trademark OMEPRON, which is also used in connection with “pharmaceutical preparations for the treatment of ulcer and gastritis”. Opponent further alleged that OMEZOLE resembles the generic name OMEPRAZOLE, a pharmaceutical drug used as proton pump inhibitor, and as such, registration is not permitted under Sections 123.1 (j) and 123.a(I) for being generic or descriptive.

Philippines to Accede to the Nice and Vienna Agreements, STLT and the Hague Agreement in 2015

October 23, 2014

At the National Seminar on Industrial Designs and Trademarks hosted by the Intellectual Property Office of the Philippines (IPOPHIL) last October 17, 2014, it was announced that in 2015 the Philippines plans to accede to the Nice and Vienna Agreements, to the Singapore Trademark Law Treaty, as well as to the Hague Agreement.

The IPOPHIL also disclosed that it is currently working on a proposal to amend some provisions of the Intellectual Property Code.

On the trademark side, the definition of a “trademark” will be amended to include any indication that can be graphically represented. The new definition is intended to accommodate the registration of non-traditional trademarks. It was not clear which specific non-traditional marks will be covered.

Another amendment will be the elimination of the third year Declaration of Actual Use and the requirement of home registration as a condition for the registration of applications claiming convention priority.

Philippines Announces Initiatives in support of ASEAN Integration

October 23, 2014

The Intellectual Property Office of the Philippines (IPOPHIL) announced several initiatives that show its resounding support for the move to establish an ASEAN community. These initiatives were discussed in a public forum held on October 17 participated by IP professionals and IP rights holders.

IPOPHIL disclosed its plan to launch sometime in 2015 an online and paper version of an ASEAN common trademark application form. IPOPHIL is also working with intellectual property offices in other ASEAN countries to begin the adoption of common substantive examination guidelines by January 2015. Furthermore, the trademark records of intellectual property offices in some ASEAN member states have been compiled and are now accessible through a centralized web portal called ASEAN TMview. They are also currently testing other web portals that could serve as a central record of goods and services classification in ASEAN countries (ASEAN TMClass) and as a search tool for industrial design registrations (Designview) in the ASEAN countries. These web portals will be available in a multilingual format.

Honda’s Attempt to Enforce Copyright for its Engine Designs Backfires

October 1, 2014

Is the appearance of an engine design copyrightable? This question was answered by the Court of Appeals in the case of TLA Corporation, et al. vs. Honda Motor Company Ltd. and the National Library (CA-G.R. CV No. 98777, Aug. 5, 2014).

Intellectual property owners sometimes seek copyright protection when its product designs fail to meet the requirements under trademark and patent laws. This legal experimentation led Honda Motor Company Ltd. (Honda) to seek copyright protection for its engine designs. Under Section 172 (h) of the Intellectual Property Code (IP Code), copyright protection is available for literary and artistic works that include “original ornamental design or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art.” The National Library granted Honda several copyright registrations for its engine designs. Honda then took steps to enforce its rights by sending cease and desist letters to local distributors of other engine brand, who it believed copied the layout and color-scheme of its “copyrighted” engine designs. Instead of giving in to Honda’s demands, however, the local distributors banded together and filed a petition in the regional trial court seeking the cancellation of Honda’s copyright registrations. The distributors argued that Honda’s engine designs are not literary and artistic works, or works of applied art, which are entitled to copyright protection. In response, Honda argued that while some aspects of the engine’s designs are utilitarian and dictated by some scientific process, other aspects are purely artistic and should be considered works of art. Honda cited as an example the design feature that color-codes the various components of its general purpose engine. Honda also relied on the specifications of the general purpose engine, which were appended to its applications for copyright registrations to show that its designs had artistic value.

Secondary Meaning: Proof is in the Chant

September 30, 2014

Basketball in the Philippines is a sport that generates intense passion. While local players do not yet stand on the same footing as world-class NBA players, they are still feted as heroes here. Any team that gets to the top of the heap acquires legendary status, and its name would seemingly echo in eternity. One such team is Ginebra San Miguel, which is owned by the popular maker of gin that is sold under the trademark GINEBRA SAN MIGUEL. And its loyal following, when egging on the players to demolish the other team, has only one monotonous chant to drown out all other noises in the coliseum, and that is “HEE-NE-BRA, HEE-NE-BRA HEE-NE-BRA”.

Claiming to have used GINEBRA SAN MIGUEL substantially and exclusively for its gin products since 1834, the owner which now goes by its corporate name “Ginebra San Miguel, Inc.” opposed the application for GINEBRA KAPITAN filed by Tanduay Distillers, Inc. Opposer claimed that GINEBRA has attained secondary meaning to designate exclusively its gin products, and to allow the registration of GINEBRA KAPITAN will sanction unfair competition where Applicant gets a free ride on the immense goodwill Opposer already enjoys under the GINEBRA SAN MIGUEL brand. The Applicant countered that “ginebra” is generic being the Spanish term for gin, and is therefore incapable of attaining secondary meaning. It pointed to the disclaimer entered by Opposer in its own application for GINEBRA SAN MIGUEL to support its generic claim.

Starbucks Wins Its Fight Against “FRAP” Trademark in the Philippines

September 30, 2014

The Philippines’ Bureau of Legal Affairs sustained the opposition of Starbucks Coffee Co. against a trademark application for “THE FRAP BAR Everyone Deserves Frap and Design” filed by Café De Manila Corporation in connection with coffee.

In its opposition, Starbucks asserted that Café de Manila should not be allowed to register the term “FRAP” because it is the prefix and the dominant element of its registered mark “FRAPPUCCINO”. Starbucks argued that relevant consumers habitually mention the word “FRAP” when ordering “FRAPPUCCINO” beverages, such that registration of Café de Manila’s mark will likely cause confusion and deception as to the source of Café de Manila’s products. Moreover, Starbucks alleged that Café de Manila’s use of the word “FRAP” is intended to unfairly profit from the goodwill, fame and notoriety of Starbucks’ FRAPPUCCINO beverages. The Bureau of Legal Affairs agreed.

Benson and Hedges Misses a Bulls Eye in a Trademark Contest with Philip Morris

September 13, 2014

Benson and Hedges (Overseas) Limited opposed an application filed by Philip Morris Brands Sarl for a three-dimensional shape of an ICE BALL LENS claiming confusing similarity with earlier trademark registrations for LUCKY STRIKE featuring a BULLS EYE device. Benson asserted expanded protection for its BULLS EYE device under the well-known mark provision of the IP Code. The Bureau of Legal Affairs (BLA) denied the opposition and ruled that the public will not likely be confused by the co-existence of Benson’s LUCKY STRIKE trademarks with Philip Morris’ ICE BALL LENS DEVICE because the aural and visual properties of these competing trademarks are different. Citing the case of Victorias Milling Company, Inc. v. Ong Su and the Honorable Tiburcio S. Evalle, G.R. No. L-28499, 30 Sept 1977, the BLA observed that Benson has not shown that the BULLS EYE device in the LUCKY STRIKE trademark, standing alone, has been used to an extent that purchasers recognized Benson to be the source of the goods.

Philippines Implements a System of Pre-Grant Third Party Review in Patent Applications

September 11, 2014

The Intellectual Property Office of the Philippines (IPOPHIL) has announced its much-delayed implementation of a pre-grant Community Review Process (CRP) for patent applications. In a gathering of industry representatives held at the IPOPHIL on September 10, 2014, the Director of the Bureau of Patents announced that the Bureau of Patents will adopt the CRP effective September 1. He explained that this move is aimed at diffusing knowledge and information to relevant stakeholders, and to promote transparency in the granting of invention patent, utility model and industrial design registrations. The CRP was initially mandated under the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs, which called for a community review process for invention patent, utility model and industrial applications pursuant to Rule 802 and Rule 1700.

The CRP concept is inspired by the public participation process during patent examination in other jurisdictions. In the European patent system, the European Patent Convention provides that any person may present observations concerning the patentability of an invention described in a European patent application. Likewise, a third party observation system relating to novelty and inventive step was also introduced for PCT applications, which can be made at any time from the publication of the PCT application until the expiration of twenty (28) months from the priority date. And in Japan, third-party observations are accepted by the Japanese Patent Office at any time after a patent application or an application for utility model registration is filed, even after a decision is made to grant a patent or utility model registration.

Small-sized Firm But With Big League Credentials

It may not have the litigation muscle of big time law firms but what it lacks in quantity, it more than makes up for quality in litigation work. Federis, with a litigation department of4 lawyers, scored towering victories in the previous months in various brand wars for important clients with highly competitive market to protect.

In the battle of cigarette brands, Federis thwarted the ploy of a competitor to copy individual features in 3 registered trademarks of Philip Morris Brands SARL and combine them in one trademark. The Bureau of Legal Affairs (BLA) agreed with the competitor’s claim of lack of confusing similarity but in the decision of the Office of the Director General on appeal, the Director General saw through the ploy and ruled for confusing similarity. Thus, in Philip Morris Products S.A. vs. Pt. Perusahaan Dagang Dan Industri Tresno (Appeal No. 14-2012-0055), it was ruled that the copied individual features sourced from different registered trademarks will likely confuse cigarette users.

Is the BLA Creating a Grey Area?

Confusing similarity issues are easily resolved, what with the IP Code instituting Dominancy Test as the heuristic to determine confusing similarity (or so as ruled by the High Court in 2004), which simplifies analysis by dwelling only on the similarities in the dominant features of the contending marks. As to what is “dominant”, there is a wealth of precedents and they usually involve simple, common sense rules (such as prefixes usually treated as the dominant features because they are the first to be read and therefore, the one that imprint in the mind of the consumer).

And these rules also clearly delineate what are the cases where confusing similarity is held remote. A prime example is where the goods covered by the contending marks involve medicine/pharmaceutical products. Here, the no-confusion rule is based on this reasoning: