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

G.R. No. L-21587             May 19, 1966

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

Picazo and Agcaoili for petitioner.
Sycip, Salazar, Luna and Associates for respondent United American Pharmaceuticals, Inc.
Office of the Solicitor General Arturo A. Alafriz, Assistant Solicitor General A. A. Torres and Solicitor A. V. Sempio-Diy, for Director of Patents.

BENGZON, J.P., J.:

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 on January 18, 1961 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.

After submission of memoranda, on June 21, 1963 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.

From said decision the oppositor appealed to this Court by petition for review filed on July 24, 1963. The sole issue raised thereby is: Are the trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in their respective labels, confusingly similar?

Appellant contends that confusing similarity will obtain because both products are primarily used for the relief of pains such as headaches and colds; and because words "BIOFERIN and "BUFFERIN" are practically the same in spelling and pronunciation.

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 Factors	"BIOFERIN"	"BUFFERIN"
1. Shape & Size of Label	Rectangular, about 3-3/4" 2-1/4"	Rectangular, 3-3/4"' 1-1/4"
2. Color of Label	Predominantly Yellow	Predominantly White
3. Color background of Word-mark	Olive-green	Blue
4. Over-all Layout	At the top center-word 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.	At left side of label — Wood-mark "BUFFERIN"; with "Bristol Myers Co., New York, N.Y." below at right side, contents, indications dosage are grouped together, printed perpendicularly
5. Form of product	Capsules — label says: "50 capsules"	Tablets — label says: "36 Tablets"
6. Prescription	Label states: "To be dispensed only by or on the prescription of a physician"	No such statement

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.

Wherefore, the decision of the Director of Patents appealed from is hereby affirmed without costs. So ordered.

Bengzon, C.J., Bautista Angelo, Concepcion, Reyes, J.B.L., Barrera, Dizon, Regala, Makalintal, Zaldivar and Sanchez, JJ., concur.