Facts: Dermaline filed before the IPO an application for registration of the trademark DERMALINE DERMALINE, INC. Myra filed an Opposition alleging that the trademark sought to be registered by Dermaline so resembles its trademark DERMALIN and will likely cause confusion to the purchasing public. Myra claimed that, despite Dermalines attempt to differentiate its applied mark, the dominant feature is the term DERMALINE, which is practically identical with its own DERMALIN, more particularly that the first eight (8) letters of the marks are identical, and that notwithstanding the additional letter E by Dermaline, the pronunciation for both marks are identical. Further, both marks have three (3) syllables each, with each syllable identical in sound and appearance, even if the last syllable of DERMALINE consisted of four (4) letters while DERMALIN consisted only of three (3).
Myra also pointed out that Dermaline applied for the same mark DERMALINE on June 3, 2003 and was already refused registration by the IPO. By filing this new application for registration, Dermaline appears to have engaged in a fishing expedition for the approval of its mark. In its Verified Answer, Dermaline contended that its trademark DERMALINE DERMALINE, INC. speaks for itself (Res ipsa loquitur). Dermaline further argued that there could not be any relation between its trademark for health and beauty services from Myra’s trademark classified under medicinal goods against skin disorders. the IPO-Bureau of Legal Affairs sustained Myra’s opposition. Director General of the IPO dismissed the appeal of Dermaline. CA affirmed the rejection of the latter’s trademark application
Issue: Should the application for registration be allowed?
Ruling: No. In rejecting the application of Dermaline for the registration of its mark DERMALINE DERMALINE, INC., the IPO applied the Dominancy Test. It declared that both confusion of goods and service and confusion of business or of origin were apparent in both trademarks. Dermalines insistence that its applied trademark DERMALINE DERMALINE, INC. had differences too striking to be mistaken from Myra’s DERMALIN cannot be sustained because they are almost spelled in the same way, except for Dermaline’s mark which ends with the letter E, and they are pronounced practically in the same manner in three (3) syllables, with the ending letter E in Dermaline’s mark pronounced silently. Thus, when an ordinary purchaser, for example, hears an advertisement of Dermaline’s applied trademark over the radio, chances are he will associate it with Myra’s registered mark. Further, Dermalines stance that its product belongs to a separate and different classification from Myra’s products with the registered trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with the latter, especially considering that both classifications pertain to treatments for the skin. The Court is cognizant that the registered trademark owner enjoys protection in product and market areas that are the normal potential expansion of his business. Thus, the public may mistakenly think that Dermaline is connected to or associated with Myra, such that, considering the current proliferation of health and beauty products in the market, the purchasers would likely be misled that Myra has already expanded its business through Dermaline from merely carrying pharmaceutical topical applications for the skin to health and beauty services.