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INTELLECTUAL PROPERTY
PHILIPPINES
OFFICE OF THE DIRECTOR GENERAL
UNITED AMERICAN
PHARMACEUTICALS, INC.,
Respondent-Appellant,
-versus-
GLAXO GROUP LIMITED,
Opposer-Appellee.
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Appeal No. 14-09-17
Inter Partes Case No. 14-2004-00102
Opposition to:
Application No. 4-2001-005795
Date Filed: 09 August 2001
Trademark: ZEGEN
DECISION
UNITED AMERICAN PHARMACEUTICALS, INC. ("Appellant") appeals
Decision No. 2006-111, dated 16 October 2006, and Resolution No. 2009-11 (D), dated
05 February 2009, of the Director of the Bureau of Legal Affairs ("Director"). The
Director sustained the opposition of GLAXO GROUP LIMITED ("Appellee") to the
Appellant's application for the registration of the mark "ZEGEN".
Records show that the Appellant filed on 09 August 2001 Trademark Application
No. 4-2001-005795 covering goods for anti-infective medicinal preparation falling under
Class 5 of the Nice Classification.' The application was published on 31 May 2004 in the
Intellectual Property Office Official Gazette
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On 30 July 2004, the Appellee filed a
"NOTICE OF OPPOSITION" alleging the following:
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Itwillbe damaged by the registration of ZEGEN;
It filed Trademark Application No. 4-1997-122575 for the mark
"ZIAGEN" on 11 July 1997 and was granted registration on 26 July
2002;
Sec. 123 (d) of the Intellectual Property Code of the Philippines ("IP
Code") states that a mark cannot be registered if it is identical with a
registered mark belonging to a different proprietor or a mark with an
earlier ftling or priority date, in respect of: (i) the same goods or
services, or (ii) closely related goods or services, or (iii) if it nearly
resembles such a mark as to be likely to deceive or cause confusion;
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1 The Nice Classification is a classification of goods and services for the purpose of registering
trademarks and service marks, based on a multilateral treaty administered by the World Intellectual
Property Organization. This treaty is called the Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration of Marks concluded in 1957.
2 Volume 6, No. 18.
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Republic of the Philippines
INTELLECTUAL PROPERTY OFFICE
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4. ZEGEN closely resembles and is confusingly similar to ZIAGEN,
both marks cover goods in Class 5 ofthe Nice Classification, and
ZEGEN was flied for anti-infective medicinal preparations while
ZIAGEN is registered in respect of anti-viral preparations and
substances;
5. ZIAGENhas an earlier filingdate comparedto ZEGEN;and
6. ZIAGEN is registeredin a number ofothercountries and that the
Appellee has prior rights to the mark ZIAGEN globally, including
thePhilippines.'
TheAppelleesubmittedthefollowingdocuments to supportits opposition:
1. Affidavit ofJairus Ignatius H. Abiera executed on 12 December
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2005;4
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2. Power ofAttorney executed by the Appellee on 20January 2004;5
and
3. Certificatesofregistrationfor ZIAGEN.
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TheAppellantfiledan "ANSWER"on15September2004 alleging that:
1. It is theownerofZEGENandto protectits ownership,it flied the
subjecttrademarkapplication;
2. It has used ZEGENin the Philippines since 15 September2003 for
cefuroxime axetil products,whichare for the treatmentofbone andjoint
infections, bronchitis and other lower respiratory tract infections, gonorrhea,
meningitis, otitis media, peritonitis, pharyngitis, sinusitis, skin itifections, sury,ical
infections and urinary tract itifections;
3. TheAppellee has never used ZIAGENin the Philippines andthere
is no recordin the Bureau ofFoods andDrugs ("BFAD") that the
Appellee has registered or even commenced the registration ofany
productusingthemarkZIAGEN;
4. Office OrderNo. 21, s. 2001 requires the applicants who filed their
trademarkapplications on orbefore01 December1998,irrespective
of whether filed under the IP Code or Rep. Act No. 166, as
amended (RA 166)
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to file their declaration of actual use and
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3 The Appellee submittedcopies ofthe certificatesofregistration for ZIAGENin various countries
whichweremarked asAnnexes "A" to "GG-l".
4 Exhibit"A".
S Exhibit ''B''.
6 Exhibits "C" to "N".
7 AN ACT TOPROVIDEFORTHEREGISTRATIONANDPROTECTIONOFTRADEMARKS,
TRADE-NAMESANDSERVICE-MARKS,DEFININGUNFAIRCOMPETITIONANDFALSE
evidence of use not later than 01 June 2002, otherwise, the
applications for registration shall be refused or the registered mark
shall be removed from the Trademark Registry; there is nothingin
the opposition that shows that the Appellee complied with the
requirementwith respectto ZIAGEN;
5. TheAppellee either submitteda criminally perjurious declaration of
actual use to support its application or the alleged registration of
ZIAGENisinvalidand shouldbe cancelled;
6. The Appellee is obviously engaged in warehousing of marks, a
pernicious and anti-competitive practice that this Officeby law and
regulationsseeks to prevent;
7. Assumingthatthe registration ofZIAGENwas validlyissued, there
is no basis for the Appellee's allegation that ZEGENis confusingly
similarto ZIAGEN;
8. No ZIAGEN product has been allowed by the BFAD to be
marketed, distributed and sold in the Philippines, hence, there can
be no confusionasonlyoneproductexists;
9. ZIAGEN is to be used for anti-viral pharmaceutical preparations
and substances and sold only under prescription while ZEGEN is
likewiseaprescriptionproduct,hence, the likelihoodofconfusionis
remote;
10. In determiningwhether two trademarks are confusingly similar, the
two marks in their entirety as they appear in the respective labels
must be considered in relation to the goods to which they are
attachedand the discerningeyeofthe observermustfocus notonly
on the predominantwords butalso on the other features appearing
in bothlabelsin orderthat he may draw his conclusionwhetherone
isconfusinglysimilarto the other;
11.The Appellee has not seen fit to attach a copy of the label of
ZIAGEN in the Notice ofOpposition but chances are (assuming
such product exists in the Philippines) it would be different in its
entirety from that ofthe product ZEGEN, particularly as regards
colorand font;
12. Mere registration does not qualify a mark as internationally well-
known but actual use and aggressive promotions are the relevant
factors;
MARKING AND PROVIDING REMEDIES AGAINST THE SAME, AND FOR OTHER
PURPOSES.
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13.An independent market research studywill immediately belie the
Appellee's attempt to present its mark ZIAGEN as a well-known
markand in the Philippines, ZEGENisbetterknownto prescribing
doctorsand end-users;and
14.Theinstantoppositionisan anti-competitiveand cynicalmeasureby
the Appellee to preserve the market monopoly ofits local affiliates
at the expenseofthe people'shealth.
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TheAppellant'sevidenceconsistsofthe following:
1. Copy ofthe Appellant'strademarkapplicationfor ZEGEN;8
2. Affidavit of Eliezer J. Salazar executed on 13 March 2006
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3. Certificates ofProduct Registration issued by the BFAD for the
brandnameZEGEN;10
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DeclarationofActualUse filedon 06February2004;11
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5. Samplepackages and salesinvoices for ZEGEN;12 and

6. LetterofBFADdated 25August2004;13
In sustammg the Appellee's opposition, the Director ruled that there exists
likelihood ofconfusionbetweenZIAGENand ZEGEN. Sheheld thatbothtrademarks
containthe same letters beginningwith the letter"Z"and endingwith the suffix "GEN"
and that the likelihood ofconfusion is apparent in the sound and pronunciation of
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ZIAGEN and ZEGEN. According to her while both marks require medical
prescription,the existence oferrorisstillpossibleconsideringthatbothmarks are closely
related to each other. She also held that the alleged non-use by the Appellee ofits
trademarkisimmaterialaswhatisrelevantis the fact that ZIAGENisalreadyregistered
and is,therefore,entitledto protection.
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The Appellant filed a "MOTION FOR RECONSIDERATION" on 07

November 2006 which was denied by the Directorin herResolution No. 2009-11 (D).
Dissatisfied, the Appellant filed on 23 March 2009 an "APPEAL MEMORANDUM
[From Resolution No. 2009-11(D) dated OS February 2009]" reiterating its arguments
that ZEGENis not confusingly similar with ZIAGEN, that the Appelee is engaged in
warehousingoftrademarksand anti-competitivetrade practiceswhicharecontraryto the
spiritand intentofthe IP Code, and furtherallegingthe following:
1. TheAppellee has no basis for opposingthe registrationofZEGEN
asZIAGENisdeemedabandonedfor non-useofthe markfor over
five(5)yearssinceitsregistration;
2. TheAppellee filedon 28July 2008 with the BureauofTrademarksa
Declaration ofNon-Use stating that the mark's non-use is due to
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Exhibit"A".
Exhibit"B".
Exhibits "c"to "C-2".
Exhibit"D".
Exhibits"E"and "F".
Exhibit"G".
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delayin productlaunching arising from delaysin obtainingproduct
registrationwith the BFADand problems at the manufacturingsite;
and
3. TheIP Coderequires thatthe reason for non-useofthe markmust
be outside the control of the registrant and problems at the
manufacturingsiteareobviouslywithinthe controloftheAppellee.
TheAppellee filedon 27April 2009its "COMMENT(To Applicant-Appellant's
Appeal Memorandum dated 23 March 2009)" citing its arguments in its Notice of
Opposition that ZEGEN is confusingly similar to ZIAGEN and also alleging that:
1. It has the legalstandingto opposethe registrationofZEGEN;
2. As the registered owner of ZIAGEN, it will be damaged by the
registrationofthe confusinglysimilarmarkZEGEN;
3. Its registration for ZIAGEN is active and enjoys the prima facie
presumptionofvalidity;and
4. It is not engaged in the warehousing of trademarks and anti-
competitivetrade practices
On 14 May 209, the Appellant filed a "MANIFESTATION" alleging among
other things that it received a letter from the Assistant Director of the Bureau of
Trademarks stating that ZIAGEN will be cancelled due to the Appellee's failure to
submitevidence to supportits claim ofexcusable non-use ofthis mark. TheAppellant
claimsthatwith the pendingcancellationofthe Appellee'smarkZIAGEN,the Appellee
has no basis to oppose the Appellant's trademarkapplication and effectively renders the
oppositionto TrademarkApplicationNo.4-2001-005795mootand academic.
Subsequendy, on 04 August 2009, the Appellant filed a "MANIFESTATION
WITH MOTION TO RESOLVE" citing Cancellation Order No. 2009-1 issued on20
July 2009 by the Bureau ofTrademarks which cancelled the registration ofZIAGEN.
TheAppellant,thus, seeks the allowance for registration ofZEGENclaiming that there
isno longer abar to itsregistration.
In an Orderdated01February2011, thiscasewasreferredto mediationpursuant
to Office Order No. 197, series of2010, on the Mechanics for IPO-Mediation and
Setdement Period. The parties were thus ordered to appear in person, with or without
counsel, at the IPOPHL Multi-Purpose Hall on 23 February 2011 for the purpose of
consideringthe possibility ofsetding the dispute through mediation. However, the case
was returned to the Office ofthe Director General on 13 April 2011 for appropriate
disposition,on accountofthe failureofthe parties to setdethe case.
Themain issue to be resolvedin this case iswhether ZEGENcan be registered
in favor oftheAppellant.
Under Sec. 134 of the IP Code, any person who believes that he would be
damagedby the registrationofamarkmay,uponpaymentofthe requiredfeeandwithin
thirty (30) days after the publication ofthe trademark application file an opposition to
the application. In this regard, the Appellee,as the opposer,mustshowthatitwouldbe
damaged bythe registrationofZEGENin favor ofthe Appellant.

The Appellee's opposlt10n is anchored on the existence of its trademark
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registration for ZIAGEN which it claims to be confusingly similar with ZEGEN.
However, this certificate of registration was cancelled by the Bureau ofTrademarks
under Cancellation Order No. 2009-1, Series of 2009, issued on 20 July 2009. In
addition, there is nothing in the records which indicate that the Appellee has used
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ZIAGENin the market. Onthe otherhand, the Appellee even submittedaDeclaration
ofNon-Use("DNU"). Aspointedoutbythe Appellant:
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Itmustalso be emphasizedthatGlaxoin its DNUstates that "[S]tepsare being
taken to resolve manufacturingandsupply issues and the productis expected to launch
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nothingin the records thatmay indicate that the registration ofZEGENwould damage
the Appellee and cause confusion or deception to the buying public. The products of
the parties arepharmaceuticalproductsthatneedregulatoryapprovalbeforethesecan be
launchedin the market. TheAppellanthas shownthatZEGENisavailableto the public
which implies that the producthas already acquired the pertinentregulatory approvalas
borneoutby the Certificate ofProductRegistration issued by the BFAD for the brand
name ZEGEN,submittedasevidenceby the Appellant. Onthe otherhand, thereisno
evidence thatZIAGENisavailableinthe market.
TheAppellee's position thatit has priorrights over the registration ofZEGEN
in view ofits certificates ofregistration for ZIAGENfromvarious countriesworldwide
and that it has made substantial investments in the development and adoption of
ZIAGEN are not tenable in view ofthe fact that from 11July 1997, when it filed its

trademark application in the Philippines, up to the present, the Appellee has not used
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ZIAGEN in the Philippines. The Appellee has not shown that notwithstanding the
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cancellation of ZIAGEN, it still intends to use and market in the Philippines the
products bearing the mark ZIAGEN. In fact, the lapse ofthe period of1997 to 2009
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without the Appellee using ZIAGEN is enough proof to show that that it has
abandonedthe use ofZIAGEN.
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bythe endof2008". However,until today, Glaxohas yet to use the mark "ZIAGEN"in
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the country. It has notprovidedthe IPOwith any evidence that the mark"ZIAGEN"is
currently being used for the goods covered. Hence, such statement in the DNU was
obviouslymadeto buy time so that the markwouldnotbe cancelled. Moreover,as there
is noimpediment to the use ofthe markin the country, Glaxo cannotclaimany reason
why ithas notused the markwithin the self-imposeddeadlineit statedin its DNU.14
In this regard, the Appellee's opposition has no moreleg to stand on. Thereis
14 MEMORANDUM,dated14May2009, page 9.
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prevent fraud and imposition; and to protect the manufacturer against substitution and
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sale of an inferior and different article as his product."
Under the IP Code, a mark means any visible sign capable of distinguishing the
goods of an enterprise." The function of a trademark is to point out distinctly the origin
or ownership of the goods to which it is afftxed; to secure to him, who has been
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instrumental in bringing into the market a superior article of merchandise, the fruit of his
industry and skill; to assure the public that they are procuring the genuine article; to
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The Appellant has proven that its products have been in the market and have
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already acquired distinction. Compared to ZIAGEN which has not been made available
to the public without proper explanation, and the registration of which has been duly
cancelled by the Bureau of Trademarks, the trademark application for ZEGEN has
complied with the requirements for registration and should be given due course.

WHEREFORE, premises considered, the instant appeal is hereby GRANTED.
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The Appellant's Trademark Application No. 4-2001-005795 for ZEGEN for use on anti-
infective medicinal preparation is hereby GIVEN DUE COURSE. Let a copy of this
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Decision as well as the trademark application and records be furnished and returned to
the Director of the Bureau of Legal Affairs for appropriate action. Further, let also the
Director of the Bureau of Trademarks and the library of the Documentation,
Information and Technology Transfer Bureau be furnished a copy of this Decision for
information, guidance, and records purposes.
SO ORDERED.
SEP 12 2011 Taguig City.
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15 Section 121.1 of the IP Code.
16 Pribbdas ]. Mirpuri us. Court ofAppeals, G.R. No. 114508, 19 November 1999.

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