MARVEX COMMERCIAL Co., INC., vs.

PETRA HAWPIA & Co. and THE DIRECTOR OF PATENTS

GR No. L-19297. December 22, 1966

FACTS:

Herein respondent, Petra Hawpia & Co., a partnership duly organized under the laws of the
Philippines, filed a petition for the registration of the trademark “Lionpas” used on medicated
plaster, with the Philippine Patent Office, asserting its continuous use in the Philippines since
1958. However, an opposition thereto was file by The Marvex Commercial Co., Inc., a
corporation also duly organized under the laws of the Philippines, alleging that the registration
of such trademark would violate its right to and interest in the trademark “Salonpas” used on
another medicated plaster. Both trademarks when used on medicated plaster would mislead
the public as they are confusingly similar.

After due hearing, the Director of Patents dismissed the opposition and gave due course to
the petition, stating in part that "confusion, mistake, or deception among the purchasers will
not likely and reasonably occur'" when both trademarks are applied to medicated plaster. The
oppositor moved to have the decision reconsidered. This motion was denied. Hence, this
appeal.

ISSUES:

(1) Is the applicant the owner of the trademark "LIONPAS"?

(2) Is the trademark "LIONPAS" confusingly similar to the trademark "SALONPAS"?

HELD:

(1) NO. The disquisition on the matter shows that the applicant is not the owner of the
Lionpas penetrative plaster, but merely its "exclusive distributor" in the Philippines. Thus, the
applicant is not entitled under the law to register the trademark in question under its name
(Operators, Inc. vs. Director of Patents).

As a rule, applicant should prove ownership of trademark sought to be registered. The right to
register trademark is based on ownership and the applicant has the burden of proving such.
Where the applicant's alleged ownership is not shown in any notarial document and the
applicant appears to be merely an importer or distributor of the merchandise covered by said
trademark, its application cannot be granted.

(2) YES. The Court ruled that trademarks "'Lionpas" and "Salonpas" plasters are confusingly
similar. Both words have the same suffix, "pas" which denotes a plaster with curative powers
that adheres to the body. However, as "pas" is merely descriptive and furnishes no indication
of the origin of the article, it is open for appropriation by anyone and may properly become the
subject of a trademark by combination with another word or phrase. Although two letters of
"Salonpas" are missing in "Lionpas," the two words, when pronounced, are confusingly similar
in sound. Thus, coming within the purview of idem sonans rule, such similarity is a sufficient
ground for holding that the two marks are confusingly similar when applied to merchandise of
the same descriptive properties. The importance of this rule is also emphasized by the
increase of radio advertising in which we are deprived of help of our eyes and must depend
entirely on the ears.

The registration of “Lionpas” cannot therefore be given due course. The decision of the
respondent Director of Patents is set aside, and the petition of the respondent Petra Hawpia
& Co. is hereby dismissed, at the cost of the latter respondent.