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.

A more important ruling in this case is one which at first blush appears to deviate from a precedent that rejects confusing similarity where the goods involved are cigarettes because the user is deemed too familiar with his chosen brand and intelligent enough not to be confused with a similar brand of another cigarette manufacturer. In a well-reasoned ruling, the Director General held that it is precisely the intelligent buyer who will be subjected to confusión because of a brand that deliberately copies dominant features of the registrant’s trademarks. That even brand-conscious purchasers can be confused finds confirmation in McCarthy:

The fact that buyers of certain items are very brand conscious buyers can cut both ways. [R]ecognition that high-quality designer leather goods have a sophisticated and brand conscious buyer base does not necessarily mean that those people are not likely to be confused by imitations.  Rather, it may be that such persons are those who are most likely to notice trade dress embellishments, spot them as an imitation and assume that there is some sort of association or affiliations between the manufacturers. (citing Coach Leatherwear Co. v. Ann Taylor, Inc., 933 F.2d 162, 18 USPQ2D 1907 [2D Cir 1991]).

In another Inter Partes case, Philip Morris Products SA vs. Edith Villasis (IPC No. 14-2010-00031), also involving cigarettes, another brand of Philip Morris, ASSOS, was successfully defended by Federis as against a local copycat. This case illustrates the usual ploy of trademark pirates, which is to apply for the registration of trademark ahead of the real owner. Federis however demonstrated that the filing was in bad faith through evidence of long and continuous use, and through the lack of an explanation from the copycat how she was able to come out with the same mark in the face of Philip Morris’ ASSOS  presence in the market.

In the pharmaceutical field, Federis ably defended the highly successful ZYNAPSE brand of Natrapharm, Inc. against another medicine brand, ZYNAD, in the case of Natrapharm Inc. vs. Zuneca Inc. (IPC Case No. 14-2010-00025). Like the Philip Morris case, there is also precedent which if mechanically applied should result in ZYNAPSE and ZYNAD to be declared not confusingly similar, and this is the Supreme Court ruling that –

The medicinal preparation clothed with the trademarks in question, are unlike articles of everyday use such as candies, ice cream, milk, soft drinks and the like which may be freely obtained by anyone, anytime, anywhere. Petitioner’s and respondent’s products are to be dispensed upon medical prescription. The respective labels say so. An intending buyer must have to go first to a licensed doctor of medicine; he receives instructions as to what to purchase; he reads the doctor’s prescription; he knows what he is to buy. He is not of the incautious, unwary, unobservant or unsuspecting type; he examines the product sold to him; he checks to find out whether it conforms to the medical prescription. The common trade channel is the pharmacy or the drugstore. Similarly, the pharmacist or druggist verifies the medicine sold. The margin of error in the acquisition of one for the other is quite remote.

Federis however took the position expounded in McCarthy that –

If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations.

Dean & Deluca Brands, Inc. is a proud owner of the DEAN & DELUCA trademark designating the popular restaurants that originated in the 70s in the Soho district of New York, and applying for trademark registration should not present any problem. Not so fast, as there is also a DEAN AND DELUCA RESTAURANT in a far-flung province in an island in Southern Philippines, and its owner took the aggressive step of opposing the application. Apparently, he was able to secure a business name registration and this was now the basis for his opposition. Federis piled facts after facts proving Dean & Deluca Brands, Inc.’s ownership and not surprisingly, the BLA ruled to dismiss the opposition in Dexter Yeh Tiu vs. Dean & Deluca Brands, Inc. (IPC No. 14-2012-00204). Federis has in the meantime filed a cancellation petition before the Department of Trade and Industry which issued the business name registration.

Another high value trademark would be one used in the tire industry (Class 12). A powerful tire brand, NITTO, was successfully defended against the same mark applied for registration by a local company but in Class 12 goods. Federis’ strategy was to show various tire and car accessory shops in the country usually sell Class 7 and Class 12 goods at the same time, as a result of which, the BLA, in Toyo Tire & Rubber Co. Ltd. vs. Southwind Automotive Parts, Inc. (IPC No. 14-2008-00359) ruled that use of NITTO in Class 7 by the local company in face of Opposer’s NITTO in Class 12 will cause the consumers to assume that the  Class 7 and Class 12 goods have the same origin in Opposer.

Suites 2004 & 2005, 88 Corporate Center Valero corner Sedeño Streets, Salcedo Village, Makati City 1227, Philippines   Telephone: +632 8896197  Facsimile: +632 8896132
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