G.R. No.

L-21587 May 19, 1966

BRISTOL MYERS COMPANY vs. THE DIRECTOR OF PATENTS and UNITED AMERICAN
PHARMACEUTICALS, INC.

Facts: A petition for registration in the Principal Register of the Patent Office of the trademark
"BIOFERIN" was filed on October 21, 1957 by United American Pharmaceuticals, Inc. Said domestic
corporation first used the afore-stated trademark in the Philippines on August 13, 1957. It covers "a
medicinal preparation of antihistamic, analgesic, antipyritic with vitamin C and Bioflavenoid used in the
treatment of common colds, influenza and other febrile diseases with capillary hemmorrhagic
tendencies." The product falls under Class 6 of the official classification, that is, "Medicines and
Pharmaceutical Preparations".

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.

The parties thereafter filed a joint petition stipulating as to the facts and submitting the case upon the issue
of whether or not 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. The oppositor appealed to this Court by
petition for review.

Issue: W/N the trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in their respective
labels, are confusingly similar

Held: No. 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. Said rule was enunciated by this by this Court through Justice Felix Bautista Angelo in Mead
Johnson & Co. vs. N.V.J Van Dorp, Ltd., L,17501, April 27, 1963, thus:

It is true that between petitioner's trademark "ALACTA" and respondent's "ALASKA" there are
similarities in spelling, appearance and sound for both are composed of six letters of three
syllables each and each syllable has the same vowel, but in determining if they are confusingly
similar a comparison of said words is not the only determining factor. The two marks in their
entirety as they appear in the respective labels must also be considered in relation to the goods to
 which they are attached. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order that he may
draw his conclusion whether one is confusingly similar to the other. ...

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.
For convenience we sum up these differences, as follows:
Relevant
"BIOFERIN" "BUFFERIN"
Factors

1. Shape & Rectangular, about 3-3/4" 2-1/4" Rectangular, 3-3/4"' 1-1/4"

Size of Label

2. Color of Predominantly Yellow Predominantly White

Label

3. Color Olive-green Blue

background
of Word-
mark

4. Over-all At the top center-word At left side of label — Wood-

Layout mark "BIOFERIN"; below it
are contents of medicine, arranged
horizontally; at bottom, center, "United
Pharmaceuticals, Inc." in olivegreen
background. At left side —
dosage, printed perpendicularly; at right
side,indications, also perpendicularly
printed.
mark "BUFFERIN"; with "Bristol
Myers Co., New York, N.Y."
below at right side,contents,
indications dosageare grouped
together, printed perpendicularly

5. Form of Capsules — Tablets —

product label says: "50 capsules" label says: "36 Tablets"

6. Label states: No such statement

Prescription "To be dispensed only by or on the
prescription of a physician"
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.
 G.R. No. 114508. November 19, 1999

PRIBHDAS J. MIRPURI vs. COURT OF APPEALS, DIRECTOR OF PATENTS and the

BARBIZON CORPORATION

Facts: Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J. Mirpuri, filed an application
with the Bureau of Patents for the registration of the trademark "Barbizon" for use in brassieres and ladies
undergarments. Escobar alleged that she had been manufacturing and selling these products under the
firm name "L & BM Commercial" since March 3, 1970.

Private respondent Barbizon Corporation, a corporation organized and doing business under the laws
of New York, U.S.A., opposed the application. It claimed that:

"The mark BARBIZON of respondent-applicant is confusingly similar to the trademark BARBIZON

which opposer owns and has not abandoned.

That opposer will be damaged by the registration of the mark BARBIZON and its business reputation and
goodwill will suffer great and irreparable injury.

That the respondent-applicant's use of the said mark BARBIZON which resembles the trademark used
and owned by opposer, constitutes an unlawful appropriation of a mark previously used in the Philippines
and not abandoned and therefore a statutory violation of Section 4 (d) of Republic Act No. 166, as
amended."

This was docketed as Inter Partes Case No. 686 (IPC No. 686). After filing of the pleadings, the
parties submitted the case for decision.

Director of Patents rendered judgment dismissing the opposition and giving due course to
Escobar's application.

This decision became final and on September 11, 1974, Lolita Escobar was issued a certificate of
registration for the trademark "Barbizon." The trademark was "for use in "brassieres and lady's underwear
garments like panties."

Escobar later assigned all her rights and interest over the trademark to petitioner Pribhdas J. Mirpuri
who, under his firm name then, the "Bonito Enterprises," was the sole and exclusive distributor of
Escobar's "Barbizon" products.

In 1979, however, Escobar failed to file with the Bureau of Patents the Affidavit of Use of the
trademark required under Section 12 of Republic Act (R.A.) No. 166, the Philippine Trademark Law. Due
to this failure, the Bureau of Patents cancelled Escobar's certificate of registration.

On May 27, 1981, Escobar reapplied for registration of the cancelled trademark. Mirpuri filed his
own application for registration of Escobar's trademark. Escobar later assigned her application to herein
petitioner and this application was opposed by private respondent. The case was docketed as Inter Partes
Case No. 2049 (IPC No. 2049).

Replying to private respondent's opposition, petitioner raised the defense of res judicata.
On March 2, 1982, Escobar assigned to petitioner the use of the business name "Barbizon
International." Petitioner registered the name with the Department of Trade and Industry (DTI) for which
a certificate of registration was issued in 1987.
 Forthwith, private respondent filed before the Office of Legal Affairs of the DTI a petition for
cancellation of petitioner's business name.

On November 26, 1991, the DTI, Office of Legal Affairs, cancelled petitioner's certificate of
registration, and declared private respondent the owner and prior user of the business name "Barbizon
International."

Meanwhile, in IPC No. 2049, the evidence of both parties were received by the Director of
Patents. On June 18, 1992, the Director rendered a decision declaring private respondent's opposition
barred by res judicata and giving due course to petitioner's application for registration.

The CA reversed the Director of Patents finding that IPC No. 686 was not barred by judgment in IPC
No. 2049 and ordered that the case be remanded to the Bureau of Patents for further proceedings
CA denied reconsideration of its decision. Hence, this recourse.

Issue: 1. W/N IPC No. 2049 is barred on the ground of res judicata

2. W/N the treaty affords protection to a foreign corporation against a Philippine applicant for the
registration of a similar trademark

Held:

1. No. IPC No. 2049 raised the issue of ownership of the trademark, the first registration and use of the
trademark in the United States and other countries, and the international recognition and reputation of the
trademark established by extensive use and advertisement of private respondent's products for over forty
years here and abroad. These are different from the issues of confusing similarity and damage in IPC No.
686. The issue of prior use may have been raised in IPC No. 686 but this claim was limited to prior use in
the Philippines only. Prior use in IPC No. 2049 stems from private respondent's claim as originator of the
word and symbol "Barbizon," as the first and registered user of the mark attached to its products which
have been sold and advertised worldwide for a considerable number of years prior to petitioner's first
application for registration of her trademark in the Philippines. Indeed, these are substantial allegations
that raised new issues and necessarily gave private respondent a new cause of action. Res judicata does
not apply to rights, claims or demands, although growing out of the same subject matter, which constitute
separate or distinct causes of action and were not put in issue in the former action.

Respondent corporation also introduced in the second case a fact that did not exist at the time the
first case was filed and terminated. The cancellation of petitioner's certificate of registration for failure to
file the affidavit of use arose only after IPC No. 686. It did not and could not have occurred in the first
case, and this gave respondent another cause to oppose the second application. Res judicata extends only
to facts and conditions as they existed at the time judgment was rendered and to the legal rights and
relations of the parties fixed by the facts so determined. When new facts or conditions intervene before
the second suit, furnishing a new basis for the claims and defenses of the parties, the issues are no longer
the same, and the former judgment cannot be pleaded as a bar to the subsequent action.

It is also noted that the oppositions in the first and second cases are based on different laws. The
opposition in IPC No. 686 was based on specific provisions of the Trademark Law, i.e., Section 4 (d) on
confusing similarity of trademarks and Section 8 on the requisite damage to file an opposition to a
petition for registration. The opposition in IPC No. 2049 invoked the Paris Convention, particularly
Article 6bis thereof, E.O. No. 913 and the two Memoranda of the Minister of Trade and Industry. This
opposition also invoked Article 189 of the Revised Penal Code which is a statute totally different from the
Trademark Law. Causes of action which are distinct and independent from each other, although arising
out of the same contract, transaction, or state of facts, may be sued on separately, recovery on one being
no bar to subsequent actions on others. The mere fact that the same relief is sought in the subsequent
action will not render the judgment in the prior action operative as res judicata, such as where the two
actions are based on different statutes. Res judicata therefore does not apply to the instant case and
respondent Court of Appeals did not err in so ruling.

2. Yes.

The Intellectual Property Code of the Philippines declares that "an effective intellectual and
industrial property system is vital to the development of domestic and creative activity, facilitates transfer
of technology, it attracts foreign investments, and ensures market access for our products." The
Intellectual Property Code took effect on January 1, 1998 and by its express provision, repealed the
Trademark Law, the Patent Law, Articles 188 and 189 of the Revised Penal Code, the Decree on
Intellectual Property, and the Decree on Compulsory Reprinting of Foreign Textbooks. The Code was
enacted to strengthen the intellectual and industrial property system in the Philippines as mandated
by the country's accession to the Agreement Establishing the World Trade Organization (WTO).

The WTO is a common institutional framework for the conduct of trade relations among its members
in matters related to the multilateral and plurilateral trade agreements annexed to the WTO
Agreement. The WTO framework ensures a "single undertaking approach" to the administration and
operation of all agreements and arrangements attached to the WTO Agreement. Among those annexed is
the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs. Members to this
Agreement "desire to reduce distortions and impediments to international trade, taking into account the
need to promote effective and adequate protection of intellectual property rights, and to ensure that
measures and procedures to enforce intellectual property rights do not themselves become barriers to
legitimate trade." To fulfill these objectives, the members have agreed to adhere to minimum standards of
protection set by several Conventions. These Conventions are: the Berne Convention for the Protection of
Literary and Artistic Works (1971), the Rome Convention or the International Convention for the
Protection of Performers, Producers of Phonograms and Broadcasting Organisations, the Treaty on
Intellectual Property in Respect of Integrated Circuits, and the Paris Convention (1967), as revised in
Stockholm on July 14, 1967.

A major proportion of international trade depends on the protection of intellectual property

rights. Since the late 1970's, the unauthorized counterfeiting of industrial property and trademarked
products has had a considerable adverse impact on domestic and international trade revenues. The TRIPs
Agreement seeks to grant adequate protection of intellectual property rights by creating a favorable
economic environment to encourage the inflow of foreign investments, and strengthening the multi-lateral
trading system to bring about economic, cultural and technological independence.

The Philippines and the United States of America have acceded to the WTO Agreement. This
Agreement has revolutionized international business and economic relations among states, and has
propelled the world towards trade liberalization and economic globalization. Protectionism and
isolationism belong to the past. Trade is no longer confined to a bilateral system. There is now "a new era
of global economic cooperation, reflecting the widespread desire to operate in a fairer and more open
multilateral trading system." Conformably, the State must reaffirm its commitment to the global
community and take part in evolving a new international economic order at the dawn of the new
millenium.

IN VIEW WHEREOF, the petition is denied and the Decision and Resolution of the Court of
Appeals in CA-G.R. SP No. 28415 are affirmed.