Please be informed that Decision No ipl dated 22 March 2018(copy

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1 INTELLECTUAL PROPERTY OFFICE OF THE PHIUPPINES BLUE CROSS AND BLUE SHIELD ASSOCIATION, } IPC No Opposer, } Opposition to: } Appln. Serial No versus- } Date Filed: 14 October 2015 ORGANIZACION SANITAS INTERNACIONAL S.A.,} Respondent-Applicant. } INTERNACIONAL TM: OSI ORGANIZACION SANITAS NOTICE OF DECISION BETITA CABILAO CASUELA SARMIENTO Counsel for Opposer Suite 1104, Page One Building 1215 Acacia Avenue, Madrigal Business Park Ayala Alabang, Muntinlupa City 1780 VERALAW (Del Rosario Gonzales Grasparil) Counsel for Respondent-Applicant A&v Crystal Tower, 105 Esteban Street, Legazpi Village 1223 Makati City GREETINGS: Please be informed that Decision No ipl dated 22 March 2018(copy enclosed) was promulgated in the above entitled case. Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No series of 2016, any party may appeal the decision to the Director of the Bureau of Legal Affairs within ten (10) days after receipt of the decision together with the payment of applicable fees. Taguig City, 22 March MARILYN F. RETUTAL IPRS IV Bureau of Legal q Intellectual Property Center mail@ipophil.gov.ph tt78 UPP ' McKintey Road McKmloy Htll lown Center For. Bonifacio. Tagu.c, O.y d

2 INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES BLUE CROSS AND BLUE SHIELD ASSOCIATION, IPC No Opposer, Opposition to: -versus- Serial No Date Filed: 14 October 2015 ORGANIZACION SANITAS INTERNACIONAL S.A., Trademark: "OSI ORGANIZACION Respondent-Applicant. SANITAS INTERNACIONAL" x x Decision No Si DECISION Blue Cross and Blue Shield Association1 ("Opposer") filed an opposition to Trademark Application Serial No The contested application, filed by Organizacion Sanitas Internacional S.A.2 ("Respondent-Applicant"), covers the mark "OSI ORGANIZACION SANITAS INTERNACIONAL" for use on "health insurance activities"and "medical and hospital services'''under Classes 36 and 44, respectively, of the International Classification of Goods3. According to the Opposer, it is the owner of the "BLUE CROSS" trademark and related marks, which are used in connection with insurance services and financing of hospital, medical and related health services under Class 36. Its rights to the registration of the "BLUE CROSS" mark under Registration No , in particular, is based on the prior registration of the same mark in the name of its predecessor-in-interest, American Hospital Association, under Registration No registered on 27 August Despite the lapse of the said registration, the Opposer preserved the rights thereof. Also, as early as 1986, Registration No was issued in the name of the Opposer. In addition, the Bureau of Legal Affairs ("BLA") ruled in the case of Blue Cross Insurance Inc. and Blue Cross Health Care, Inc. vs. Blue Cross and Blue Shield Association that it is the owner of the "BLUE CROSS" mark by virtue of its use in the Philippines since The Opposer contends that the dominant feature of the Respondent- Applicant's mark is the blue cross, which it believes to be confusingly similar to its logo. It also asserts that since the goods and/or services covered by the marks are 1 A corporation duly organized and existing under and by virtue of the laws of the State of Illinois, United States of America with principal place of business at 225 N. Michigan Avenue, Chicago, Illinois 60601, United States of America. 2 With address at Calle 100 #11 B-67 Edificio Colsanitas Bogota, D.C. (CO). 3 The Nice Classification is a classification of goods and services for the purpose of registering trademark and services marks, based on the multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks concluded in Q g Intellectual Property Center Q mail@ipophil.gov.ph l@ihlh n?s UPP01 WcKintey McKinloy Hill lown Center Fori Bcmilacio,Tagu.qCy fl Philippines

3 closely related, consumers will likely be deceived or misled that its company is connected, affiliated or associated with the Respondent-Applicant. In support of its opposition, the Opposer submitted the affidavit of its Senior Vice President, General Counsel and Corporate Secretary, Mr. W. Scott Nehs, with attachments.4 On the other hand, the Respondent-Applicant alleges, among other things, that it operates a multinational healthcare company. It originated in Spain and substantially expanded its geographic reach to Colombia, and all over Latin American states, the United States, Europe and Asia. One of its products is its "OSI ORGANIZACION SANITAS INTERNACIONAL" brand that was born thirty-six (36) years ago in Colombia. It was based on the headquarters Sanitas Spain. It likewise operates websites to carry out and promote its business relating to the applied mark. The Respondent-Applicant maintains that it applied the contested mark in good faith and that there are other trademarks using a cross logo for goods and/or services under Classes 36 and 44. It denies that its mark is confusingly similar to the Opposer's "BLUE CROSS" marks reasoning that:5 "11. The first two circumstances falling under the said provisions do not apply because Opposer's Blue Cross Marks (Blue Cross word mark, Cross Design mark, and Cross and Man Design mark) are not in any way identical to the Respondent-Applicant's 'OSI Organizacion Sanitas Internacional' mark. 12. It must be emphasized that the Respondent-Applicant's trademark is a combination of stylized cross device and a word mark. On the other hand, the Opposer's Blue Cross Marks are registered either only as pure device marks or plain word marks. 13. The Opposer' Blue Cross word marks (Registration No and Application No ) are neither phonetically nor visually identical to the Respondent-Applicant's 'OSI Organizacion Sanitas Internacional'trademark. 14. The Opposer's Blue Cross word marks are composed of two words, eight (8) letters and two (2) syllables while the Respondent-Applicant's 'OSI Organizacion Sanitas Internacional' is composed of four (4) words, thirty-five letters (35), and sixteen (16) syllables. 15. There is neither an identity in appearance and spelling nor unanimity in syllables that will support the applicability of Section (d) of the IP Code. 16. The Opposer's Blue Cross device marks (Registration Nos and 2648 are also not identical to the Respondent-Applicant's 'OSI Organizacion Sanitas Internacional' trademark. At the outset, it must be emphasized that the Opposer's Blue Cross device marks are both composed ofa man within a cross which is absent in the Respondent-Applicant's mark. 4 Marked as Exhibit "B". 5 See Verified Answer, p. 6.

4 17. The cross device found in the Respondent-Applicant's trademark is visually configured to appear as a silhouette of a stylized letter 'S'. Clearly, the Opposer's man within a cross is NOT found on Respondent-Applicant's 'OSI Organizacion Sanitas Internacional' trademark.' The evidence of the Respondent-Applicant consists of:6 1. copy its trademark application; 2. affidavit-direct testimony of Mauricio Pinzon Pinzon, with annexes; and, 3. copy of the Notice of Allowance of the applied mark. A preliminary conference was conducted on 16 May 2017 wherein the parties were directed to submit their respective position papers. After which, the case is deemed submitted for decision. The records show that at the time the Respondent-Applicant filed its trademark application the Opposer already has an existing registration for "BLUE CROSS" and variants thereof issued as early as 22 July But are the marks, as shown below, confusingly similar? Opposer's marks: BLUE CROSS 1 Marked as Exhibits "2" to "4", inclusive.

5 Respondent-Applicant's mark: C-OSI Organization Sanitas Internacional A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed. Some such factors as "sound; appearance; form, style, shape, size or format; color; ideas connoted by marks; the meaning, spelling, and pronunciation, of words used; and the setting in which the words appear" may be considered.7 Thus, confusion is likely between marks only if their over-all presentation, as to sound, appearance, or meaning, would make it possible for the consumers to believe that the goods or products, to which the marks are attached, emanate from the same source or are connected or associated with each other. There is no question that the words "BLUE CROSS" differ from "OSI ORGANIZACION SANITAS INTERNACIONAL". There is no similarity at all in appearance or pronunciation. As to the Opposer's "CROSS DESIGN" and "CROSS AND MAN DESIGN" trademarks and the Respondent-Applicant's applied mark, the manifests similarity is the use of a cross or plus design. This notwithstanding, the Adjudication Officer finds that likelihood of confusion, mistake or deception does not exist. Firstly, the Respondent-Applicant's cross device is accompanied by the letters "OSI" and the word "OSI ORGANIZACION SANITAS INTERNACIONAL", none of which is present in the Opposer's mark. Secondly, the figures of the cross or plus design are distinctive from each other. The Opposer's "CROSS DESIGN" and "CROSS AND MAN DESIGN" marks both include a pie-shaped design cut into a figure of a man inside the cross or plus design. On the other hand, the Respondent-Applicant's cross or plus logo looks cut slanted in half, the cut portion of which is separated by an S-shaped or wave-like space. Thirdly, the symbol of a cross or plus is commonly used in hospitals, medicine and other health-related services. In fact, the Trademark Registry of this Office reveals several other trademarks involving health insurance, medical and hospital services appropriating a cross or plus design such as: 7 Etepha A.G. vs. Director of Patents, G.R. No. L-20635, 31 March 1966.

6 FVXCIFIC HriHfe HEALTH CARE. INC Reg. No Reg. No MediSave Reg. No MyWELLNESS INSURANCE Reg. No Hence, similarity in this aspect alone is not enough to prevent a junior user registration of its mark provided that the later mark is endowed with other distinguishing features and characteristics such as that of the Respondent- Applicant's. Moreover, the products and/or services covered by the competing marks are not inexpensive items such that they can easily be confused with that of Respondent-Applicant's. The target market consists of discerning consumers h making confusion, much more deception, improbable. Furthermore, it is emphasized that the essence of trademark registration is to give protection to the owners of trademarks. The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his

7 product.8 Based on the foregoing discussion, the Respondent-Applicant's mark met this function. WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the filewrapper of Trademark Application Serial No be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action. SO ORDERED. TaguigCity, 22 MAR 20J8 ATTY. Z'SA MlAY Bit SUBEJANO-PE LIM Adjudication Officer Bureau of Legal Affairs 8 Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No , 19 November 1999.