BRISTOL MYERS CO.

vs DIRECTOR OF PATENT
Facts: Bristol Myers Co., a corporation of the State of Delaware, U.S.A., filed on January 6, 1959 an
opposition to the application. Said oppositor is the owner in the Philippines of the trademark
"BUFFERIN" under Certificate of Registration No. 4578 issued by the Philippine Patent Office on March
3, 1954. Its trademark is also registered in the United States under Certificate of Registration No.
566190 issued on November 4, 1952. It was first used in the Philippines on May 13, 1953. The product
covered by "BUFFERIN" also belongs to Class 6, Medicines and Pharmaceutical Preparations.
Designated as "Antacid analgesic", it is intended for relief in cases of "simple headaches, neuralgia,
colds, menstrual pain and minor muscular aches."
The thrust of oppositor's contention was that the registration of the applicant's trademark "BIOFERIN
would violate its rights and interests in its registered trademark "BUFFERIN" as well as mislead and
confuse the public as to the source and origin of the goods covered by the respective marks, in view of
the allegedly practically the same spelling, pronunciation and letter-type design of the two trademarks
covering goods of the same class.
Parties filed a joint petition stipulating as to the facts and submitting the case upon the issue of whether
or not, considering all the factors involved, in both trademarks as the parties would discuss in their
memoranda, there will be such confusing similarity between the two trademarks as will be likely to
deceive the purchasing public.
The Director of Patents rendered a decision granting the petition for registration and dismissing the
opposition, on the ground that, all factors considered the trademarks in question are not confusingly
similar, so that the damage feared by the oppositor will not result.
Hence, this petition.
Issue: W/N trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in their respective
labels, confusingly similar.
Held: No, the trademarks are not confusingly similar.
In determining whether two trademarks are confusingly similar, the test is not simply to take their words
and compare the spelling and pronunciation of said words. Rather, it is to consider the two marks in
their entirety, as they appear in the respective labels, in relation to the goods to which they are attached.
Applying this test to the trademarks involved in this case, it is at once evident that the Director of Patents
did not err in finding no confusing similarity. For though the words "BIOFERIN" and "BUFFERIN" have
the same suffix and similar sounding prefixes, they appear in their respective labels with strikingly
different backgrounds and surroundings, as to color , size and design.
Accordingly, taken as they will appear to a prospective customer, the trademark in question are not
apt to confuse. Furthermore, the product of the applicant is expressly stated as dispensable only
upon doctor's prescription, while that of oppositor does not require the same. The chances of being
confused into purchasing one for the other are therefore all the more rendered negligible. Although
oppositor avers that some drugstores sell "BIOFERIN" without asking for a doctor's
prescription, the same if true would be an irregularity not attributable to the applicant, who has already
clearly stated the requirement of a doctor's prescription upon the face of the label of its product.
(13)AMERICAN WIRE & CABLE CO. vs DIRECTOR OF PATENTS
Facts: Petitioner American Wire and Cable Company (American) is the owner of the registered
trademark DURAFLEX and Device for electric wires. On June 1962, private respondent/applicant
Central Banahaw (Central) sought to register the label DYNAFLEX for electric wires.
Petitioner opposed on the ground that Centrals use of the trademark DYNAFLEX would confuse
purchasers looking for DURAFLEX. The mark sought to be registered allegedly having practically the
same spelling, pronunciation and sound, and covering the same good, but had not been in use
continuously, unlike DURAFLEX which was in use since 1958.
Director of Patents held that DYNAFLEX was not similar to DURAFLEX, since the logo design was
dissimilar, the DURAFLEX logo being in all caps while DYNAFLEX was in miniscule, and thus gave
Centrals application to trademark DYNAFLEX due course.
ISSUE: Whether or not the mark DYNAFLEX and Device is registrable as label for electric wires, class
20, considering that the trademark DURAFLEX and Globe representation also for electric wires,
machines and supplies under class 20, has been registered more than 4 years earlier.
HELD: NO, the mark sought to be registered failed to dominancy test
The pertinent law, Republic Act 166, as amended, on registrability of trademarks, prescribes:
SEC. 4. The owner of a trademark, trade name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others shall have the right to
register the same, unless it:
(d) Consists of or comprises a mark or trade name which so resembles a mark or trade-
name registered in the Philippines by another and not abandoned, as to be likely, when
applied to or used in connection with the goods, business or services of the applicant, to
cause confusion or mistake or to deceive purchasers.
It is clear from the above-quoted provision that the determinative factor in a contest involving the
registration of trademark is whether the use of such mark would likely cause confusion or mistake on
the part of the buying public. The test of likelihood is the dominancy test or the assessment of the
essential or dominant features in the competing labels to determine whether they are confusingly
similar. In fact, even their similarity in sound is taken into consideration, where the marks refer to
merchandise of the same descriptive properties, for the reason that trade idem sonans constitutes a
violation of trade mark patents.
The court found:
The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not only
are the initial letters and the last half of the appellations identical, but the difference exists only in two
out of the eight literal elements of the designations. Coupled with the fact that both marks cover
insulated flexible wires under class 20; that both products are contained in boxes of the same material,
color, shape and size; that the dominant elements of the front designs are a red circle and a diagonal
zigzag commonly related to a spark or flash of electricity; that the back of both boxes show similar
circles of broken lines with arrows at the center pointing outward, with the identical legend "Cut Out
Ring" "Draw From Inside Circle", no difficulty is experienced in reaching the conclusion that there is a
deceptive similarity that would lead the purchaser to confuse one product with the other.
The Director of Patents has predicated his decision mostly on the semantic difference and connotation
of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately forgetting that the buyers
are less concerned with the etymology of the words as with their sound and the dominant features of
the design.
The court further explained that "unlike the pharmacists or druggists, the dispensers of hardware or
electrical supplies are not generally known to pay as much concern to the brand of articles asked for
by the customer and of a person who knows the name of the brand but is not acquainted with it is
appearance, the likelihood of the DYNAFLEX product being mistaken for DURAFLEX is not remote."
Thus the request to register this trademark must be denied.