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1 INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES DAEWON PHARMACEUTICAL CO., Opposer, LTD. IPCNo Opposition to: Appln. No Date Filed: 10 October 2015 TM: "ORAMIN-C" -versus- PACIFIC PHARMACEUTICALS USA, INC., Respondent- Applicant. ~x NOTICE OF DECISION ANGARA ABELLO CONCEPCION REGALA & CRUZ Counsel for Opposer 22nd Floor, ACCRALAW Tower Second Avenue corner 30th Street Crescent Park West, Bonifacio Global City Taguig MUTIA TRINIDAD LAW OFFICES Counsel for Respondent-Applicant 12th Floor, The Taipan Place F. Ortigas, Jr. Road, Ortigas Center Pasig City GREETINGS: Please be informed that Decision No enclosed) was promulgated in the above entitled case.. m dated June 29, 2018 (copy 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, June 29, MARIUrTN F. RETUTAL IPRS IV Bureau of Legal Affairs O mail@ipophil.gov.ph «g Intellectual Property Center #28 Upper McKinley Road McKinley Hill Town Center Fort Bonifacio. Taguig City 1634 Philippines

2 INTELLECTUAL PROPERTY OFFICE OF THE PHILIPPINES DAEWON PHARMACEUTICAL CO., LTD., Opposer, -versus- PACIFIC PHARMACEUTICALS USA, INC. Respondent-Applicant. IPC No Opposition to: Application No Date Filed: 10 October 2015 Trademark: "ORAMIN-C" Decision No DEOSION DAEWON PHARMACEUTICAL CO. LTD.* ("Opposer") filed an opposition to Trademark Application Serial No The application, filed by Pacific Pharmaceuticals USA, Inc.2 ("Respondent-Applicant"), covers the mark "ORAMIN-C" for use on "dietary and nutritional supplements, composed in part or in whole of vitamin C" under Class 5 of the International Classification of Goods and Services.3 The Opposer alleges: XXX "6.1. The fundamental purpose of affording legal protection to trademarks, according to established jurisprudence, is 'to point out distinctly the origin or ownership of the article 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, and to prevent fraud and imposition.' "6.2. To achieve this purpose, the Philippines has adopted the 'First-to-File Rule' for trademark registration, which places the prior applicant for registration of a mark in a superior and preferential position as against subsequent applicants or users of the same or confusingly similar marks. The First-to-File Rule has been explicitly incorporated in Section (d) of the IP Code, which reads: x x x "6.3. Because of the growing complexity of international trade, and the concurrent effect that this has had on the protection of intellectual property, the Philippines acceded to the Paris Convention for the Protection of Industrial Property ('Paris Convention'). One of the principal characteristics of the Paris Convention is the recognition of a Right of Priority amongst member states, x x x "6.4. The Philippines has likewise acceded to the Madrid Protocol, which provides a simplified procedure for obtaining registration for a mark across several 'With address at 412 Amang Rodriguez Avenue, Manggahan, Pasig City. 2With address at 1211 McGaw Avenue, Irvine CA 92614, United States of America. The Nice Classification is a classification of goods and services for the purpose of registering trademark and service marks, based on if multilateral treaty administered by the World Intellectual Property Organization. The treaty is called the Nice Agreement Concerning International Classification of Goods and Services for the Purposes of the Registration of Marks concluded in mail@ipophil.gov.ph Q Q Intellectual Property Center #28 Upper McKinley Road McKinley Hill Town Center Fort Bonifacio, Taguig City 1634 Philippines

3 countries worldwide. Under the Madrid Protocol, an applicant may secure an 'international' trademark registration based on a 'home' or 'basic' application/registration filed in a state which is a Contracting Party to the Protocol. Similar to the Paris Convention trademark applications, an international application under the Madrid Protocol may validly claim and utilize the right of priority provided under the Paris Convention. follows: xxx "6.5. The prevailing law in the Philippines may thus be summarized as "6.6. An examination of the published details of Respondent-Applicant's International Registration No reveals an International Registration date of 10 October 2015, with no right of priority. In contrast, Opposer's International Registration No invokes a priority date of 04 August 2015, or more than two (2) months prior to Respondent-Applicant's application date, x xx "6.7. No less than the Supreme Court has taken judicial notice of the fact that trademark infringers do not normally copy the infringed mark exactly, but only make colorable changes thereto. In fact, the Supreme Court has noted that the most successful form of copying often employs enough points of similarity to confuse the public, with enough points of difference to confuse the courts, xxx "6.8. As its name suggests, the Dominancy Test focuses on the similarity of the prevalent, essential or dominant features of competing marks that might cause confusion or deception, xxx "6.9. Aside from being supported by a long line of jurisprudence, the Dominancy Test has also been expressly incorporated into law under Section of the IP Code. Section reads: xxx "6.10. The contending marks' confusing similarity is immediately obvious upon comparison of the visual representations of the marks. For reference, a side-by-side comparison of the marks is placed below: xxx "6.11. In this case, Respondent-Applicant's mark contains two elements, namely the word 'ORAMIN' and the letter 'C. However, the letter 'C cannot be considered as part of the dominant portion of the mark, considering that it is generic and/or descriptive of the goods covered by the mark (i.e., Class 5: 'Dietary and nutritional supplements, composed in part or in whole of vitamin C). Descriptive or generic components, having little or no source identifying significance, are generally recessive and less significant in the analysis. "6.12. In fact, jurisprudence holds that such descriptive elements should not be considered in determining the dominant element of a mark. As seen in the Supreme Court decided case of Prosource International, Inc. v. Horphag Research Management SA, confusing similarity was determined and upheld without giving any consideration to the generic element (i.e., 'GENOL') of the marks involved, and instead only compared the fanciful element (i.e., TYCO' vs. 'PCO'), to wit xxx "6.13. It is therefore clear that the dominant element of Respondent-Applicant's mark, i.e., the word 'ORAMIN', is completely identical to the 'ORAMIN' mark, ove:

4 which Opposer's better right of priority has already been definitely established. The only difference in Respondent-Applicant's mark is the addition of a hyphen and the letter 'C to the end of Opposer's mark, which, as previously discussed, is generic of Vitamin C products and should thus be disregarded for purposes of determining the similarity of the marks. "6.14. Even assuming, for argument's sake, that the letter 'C should be considered in determining whether the contending marks are confusingly similar, this minor difference, consisting of only a single letter, is still insufficient to distinguish Respondent-Applicant's mark from that of Opposer. x xx "6.15. The additional letter 'C in Respondent-Applicant's mark is so frivolous that it cannot negate the likelihood of confusion, x x x "6.16. Further, in Dermaline, Inc. v. Myra Pharmaceuticals, Inc., the Supreme Court found confusing similarity between the marks 'DERMALIN' and 'DERMALINE' even if the latter had an extra letter 'E', to wit: x x x "6.17. In any event, even before Respondent-Applicant's application filing, Opposer has registered and has been using variations of the 'ORAMIN' mark by adding a single letter. Obviously, this 'additional letter' variation was copied by Respondent- Applicant, thereby ensuring that consumers would be confused into thinking that its products originate from Opposer. The table below shows these 'ORAMIN' variations: XXX "6.18. Additionally, the term 'ORAMIN' is a fanciful mark created by Opposer. It was coined by Opposer by contracting the words 'ORAL' and 'VITAMIN'. Being a fanciful mark, it is inconceivable that Respondent-Applicant would have independently thought of the exact same mark, while also copying Opposer's 'additional letter' variation, x x x "6.19. It is thus clear that Respondent-Applicant's mark so nearly resembles Opposer's 'ORAMIN' Marks that it is certain to deceive or cause confusion amongst consumers, x x x "6.20. As previously stated, the paramount purpose of a trademark is to indicate a product's origin effectively and reliably. Thus, as held in the case of Gabriel v. Perez decided by the Supreme Court, a trademark should '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 market a superior article of merchandise, the fruit of his industry and skill, and to prevent fraud and imposition.' "6.21. In keeping with the foregoing principle, the consumer must be provided with an effective means through which he can identify the goods and services that please him, and thereby reward the source with continued patronage, x x x "6.22. It is precisely to prevent such an unjust situation that the registration of a confusingly similar mark for identical, similar, or closely related goods and services is prohibited by Section (d) of the IP Code, x x x below: x x x "6.23. A comparison of the goods covered by the respective marks is placed

5 "6.24. As shown by the above comparison, the goods covered by the respective marks are not just closely related, but are in fact are identical and are under the same NICE Classification, x x x "6.25. Considering the identity between the marks and the goods they cover, a likelihood of confusion of goods is certain. This type of confusion was discussed by the Supreme court in Dermaline, Inc. v. Myra Pharmaceuticals, Inc. as follows: x x x "6.26. Confusion of business is also present in this case, which type of confusion was explained by the Supreme Court in Mighty Corporation, et. al. v. E. & J. Gallo Winery, et.al.: x x x "6.27. This is where ordinary consumers would likely conclude that the two products share a common source, affiliation, connection or sponsorship, x x x "6.28. Further, the Related Goods and Services Rule holds that there is confusion if consumers can conclude that the junior user's products and services are affiliated or associated with the senior user, x x x "6.29. In this case, Respondent-Applicant seeks to use the mark on identical, similar, or closely related goods to those of Opposer. x x x "6.30. Notably, another factor to be considered is that the goods involved in this case are medicinal or pharmaceutical products. When the contending marks are used on pharmaceutical products, confusion of source can lead to serious consequences, and it becomes extremely important to avoid such confusion, x x x "6.31. The word 'ORAMIN' is a fanciful term created by Opposer for the specific purpose of serving as a trademark. It has been selling 'ORAMIN' branded products at least as early as Its sales from 1999 to 2015 are as follows: x x x "6.32. Further, as discussed above, Opposer has received numerous awards for its 'ORAMIN' products, have spent substantial amounts on marketing and advertising through various media, such as the Internet, billboards, posters, television commercials, etc. "6.33. Apart from creating and using the 'ORAMIN' mark, Opposer has registered the mark worldwide, sample registrations/applications of which are as follows: xxx "6.34. With Opposer's prior use and registration/application of the ORAMIN Marks, Opposer should be protected from Respondent-Applicant's attempt to ride upon the goodwill that inheres in Opposer's ORAMINI Marks. "6.35. It should be remembered that the Supreme Court has declared that the senior user and applicant should be favored over the junior ones. xxx "6.36. The unjust act of unfair competition inflicts damage not only on the trademark owner, who is deprived of a paying customer, but also on the innocent

6 consumer, who is fraudulently deceived into parting with his hard-earned money. In the insightful words of the Supreme Court: x x x "6.37. In view of its pernicious effects, unfair competition has been made punishable by Section of the IP Code, which reads: x x x "6.38. While there is no inflexible rule as to what constitutes unfair competition, the question to be determined in every case is whether or not a party is engaging in conduct by which his goods or business are passed off as the goods or business of another, x x x "6.39. In this case, the factual circumstances clearly show that Opposer has established goodwill in connection with the 'ORAMIN' mark, x x x "6.40. Respondent-Applicant's unlawful appropriation of the 'ORAMIN' mark would therefore invalidate all of the invaluable efforts and sizable investments made by Opposer to develop the goodwill of the 'ORAMIN' mark, x x x "6.41. It is only fair, therefore, to reject the registration of Respondent- Applicant's mark, x x x The Opposer's evidence consists of a print out of Respondent-Applicant's opposed mark; the Affidavit executed by Opposer's Vice-Chairman SeungryelBaek with the following attachments: copy of the "History" section of Opposer's official website, photographs of Opposer's products, a print out of the "Export & Registration" section of Opposer's website, copies of Opposer's trademark applications/registrations, print out of the WIPO Global Brand Database showing the details of the Korean trademark application, print out of the online Industrial Property Digital Library of the National Office of Intellectual Property of Vietnam showing the details of the Vietnam trademark registration, a copy of the International Registration Certificate No , print out of the WIPO's online ROMARIN database, copies of Certificates of Product Registration, copy of the declaration of the worldwide sales of "ORAMIN" products, photographs of worldwide advertising materials and displays, photographs of Opposer's promotional materials, print out of Opposer's official web site, print out of the Facebook Account "Oramin Cap", a USB drive containing sample television advertisements; and print out of the "ORAMIN" web site.4 This Bureau issued a Notice to Answer and sent a copy thereof upon Respondent-Applicant on28 April The Respondent-Applicant filed its Answer on 27 July 2016and avers the following: XXX "6. Respondent-Applicant filed its trademark application on 10 October 2015 for ORAMIN-C for goods under International Class 5, namely 'dietary and nutritional supplements composed in part or in whole of vitamin C under the 'Marked as Exhibits "A" to "D", inclusive.

7 Madrid Protocol and was issued International Registration No , where the Philippines, China, Korea and Vietnam were designated, x x x "6.1 The Intellectual Property Code espouses the First-to-File Rule, meaning the registration of a mark is barred by an earlier filing or prior registration of an identical mark, x x x "6.2 The mark ORAMIN was assigned to respondent-applicant by its predecessor, a member company of Pacific AA Group, which had first use of the mark ORAMIN on July 1,1997 and commercial use of the mark ORAMIN since September 10, Pacific AA Group started its pharmaceutical business in "6.3 The registration of a mark is prevented with the filing of an earlier application for registration. This must not, however, be interpreted to mean that ownership should be based upon an earlier filing date. While RA 8293 removed the previous requirement of proof of actual use prior to the filing of an application for registration of a mark, proof of prior and continuous use is necessary to establish ownership of a mark. Such ownership constitutes sufficient evidence to oppose the registration of a mark. "6.4 'A trade name is entitled to protection even prior to or without registration against subsequent users of a similar name or mark.' Besides, respondent-applicant has made earnest effort to file the required trademark application to protect its rights over the exclusive use of the subject mark. "6.5. Further, under the Philippine Regulations Implementing the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, x x x "7.1. Respondent-applicant is a corporation duly organized and existing under and by virtue of the laws of the Republic of the Philippines, with principal office address at 1211 Mcgraw Avenue, Irvine, California U.S.A "7.2. Respondent-applicant is a pharmaceutical preparation company founded and established in and under the laws of the State of California, United States of America on February 15, Respondentapplicant is a member of the Pacific AA Group, which consists of the following affiliates and subsidiaries, to wit: x x x "7.3 Some of its major business partners in the medical industry are GlaxoSmithKline,U.K.; Hanmi Pharma, Korea Pharma, Daewon Pharma & Dae Hwa Pharma, Korea; Zydus Cadila Healthcare Ltd, India; Becton Dickinson and Company, U.S.A.; United Laboratories, Philippines; Kalbe Pharma and Dankos Lab, Indonesia; Nipro, Japan; Roche Diagnostics, Switzerland, Roche Diabetics, Switzerland. "7.4. The mark ORAMIN was assigned to respondent-applicant by a member company of Pacific AA Group. Pacific AA Group started its pharmaceutical business in Respondent-Applicant, Pacific AA Group and its overseas affiliates including its Singapore and Myanmar affiliates an

8 widely involved in manufacturing, distribution, export and marketing of products such as dietary and nutritional supplements, medicines under the marks ORAMIN-C, ORAMIN A-Z, ORAMIN-F, ORAMIN-G, ORAMIN-P, ORAMIN-Kid and ORAMIN C Plus, x x x "7.5. Oramin-G was registered with the US Patent Trademark Office on November 24, 2015 with First Use date on July 1,1997, and commercial use of the trademark commenced on September 10,1997. x x x "7.6. ORAMIN is an invented word which means Oral Vitamin and C stands for Vitamin C in Oramin; G stands for Gold in Oramin G; F stands for Female in Oramini F; and P stands for Prenatal in Oramin P. These trademarks were invented jointly by company board members, national sale managers and marketing managers for and on behalf of the company group, x x x "7.7. Respondent-applicant, Pacific AA Group and its affiliates/subsidiaries sell its products in the United States, Singapore, Myanmar. x x x "7.8 Pacific AA Group its affiliates and subsidiaries commenced sale of their pharmaceutical products in 1997 and has earned US$10,000, annual sale from year x x x "7.9. Pacific AA Group, respondent-applicant and its affiliate Pacific Pharmaceuticals Pte Ltd. have caused the registration of the trademarks x x x "8. Respondent-Applicant, Pacific AA Group and its affiliates and subsidiaries Pharmaceuticals Pte Ltd have invested not inconsiderable amount of funds to market, advertise and mount promotional campaigns for the awareness of the ORAMIN-C and products under the ORAMIN brand, x x x "8.1. Through the years the Corporation invested substantial amounts on the multi-media advertisements, specifically in print advertising on health, lifestyle, magazines, medical journals; ORAMIN-C and ORAMIN product launching events; organization and sponsoring of conferences and media events, distribution of samples, leaflets, brochures of ORAMIN products, signages and billboards for distributors, x x x "8.2. That in view of respondent-applicant's, Pacific AA Group's and its subsidiaries' extensive commercial use of the marks ORAMIN-C and products under the ORAMIN brand, continuous investment in marketing and advertising through the years, said marks have become well-known world wide, and accessible to customers all over "8.3. Further, reason to afford protection to respondent-applicant's trademark is its registration in various jurisdiction such s the United States of America, Singapore and Myanmar. x x x "8.4. In the case of Sehwani Incorporated and/or Benita Frites, Inc. vs. In-N-Out Burger, Inc. the Supreme Court has upheld that evidence of registration, comprehensive advertisements, articles about the trademark

9 appearing on newspapers, magazines are proof that a trademark is wellknowno. Pertinently stated: x x x "8.5 Therefore, being a well known mark, it is clear that respondent-applicant is entitled to protection. 'Famous marks enjoy a wide latitude of protection because they are more likely to be remembered and associated in the public mind than a weaker mark' x x x "9. Respondent-Applicant has not only established that it has an earlier filing date and was issued a WIPO certificate of registration, it has also proven that Pacific AA Group and it have a just claim in the registration of its mark through the adoption of the mark in good faith and prior use in trade and commerce since 1977, investment in the promotion of the goodwill and reputation of the products under the mark. "9.1. Respondent-applicant has explained how Pacific Group AA invented the word ORAMIIN, and how it grew its market in the United States, Singapore and Myanmar. "9.2 That since 1997 the manufacture of the ORAMIN were contracted to other manufacturers which allegedly included opposer. x x x "9.3. Respondent-applicant's trademark is invested with goodwill and reputation. Said goodwill is evidenced by expenses of not inconsiderable amount of resources over a long period of time in advertismenets in print, x x x "9.3. Under the Philippine Civil Code, the goodwill of business is a proprietary right. The same cannot be more emphasized under Section of the Intellectual Property Code, pertinently: x x x The Respondent-Applicant's evidence consists of the Affidavit of Subhransu K. Tripathy, Chief Operation Officer of Respondent-Applicant; documents containing information about Pacific AA Group; copy of the Certificate of Registration issued by WIPO Madrid for ORAMIN-C; copies of certificates of registration and copies of declarations of ownership; copies of Drug Registration Certificates; and photographs of multi-media advertisements for ORAMIN.5 Should the Respondent-Applicant be allowed to register the trademark ORAMIN-C? The Opposer anchors its opposition on the following provisions of Republic Act No. 8293, also known as the Intellectual Property Code of the Philippines ("IP Code"): Sec. 123.Registrability A mark cannot be registered if it: xxx (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: Marked as Exhibits "1" to "145", inclusive.

10 (i) The same goods or services, or (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;" Sec Rights Conferred The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent form using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use, of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. Records show that at the time the Respondent-Application filed its trademark application for ORAMIN-C on 10 October 2015, the Opposer already has existing trademark registration for the mark "ORAMIN" under International Reg. No with International Registration Date of 02 February 2016 and priority date of 04 August This registration covers dietary supplements/vitamins in Class 5. This Bureau noticed that the goods indicated in Respondent-Applicant's trademark application, i.e., dietary supplements under Class 5 are similar to the Opposer's. The competing marks, as shown below, are confusingly similar: Oramin-C Opposer's trademark Respondent-Applicant's mark Respondent-Applicant's mark ORAMIN-C adopted the dominant features of Opposer's mark consisting of the word "ORAMIN" or it appropriates Opposer's word mark ORAMIN in its entirety. Respondent-Applicant merely added the letter "C" and a hyphen (-) in Opposer's mark ORAMIN to come up with the mark ORAMIN-C. ORAMIN-C appears and sounds almost the same as Opposer's trademark ORAMIN. The fact that the Respondent-Applicant's mark incorporated the letter "C" with a hyphen (-) is of no moment, without the letter "C" and a hyphen (-), the two marks are perfectly identical. Likewise, the competing marks are used on similar goods, particularly, dietary or food supplements. Thus, it is likely that the consumers will have the impression that these goods originate from a single source or origin the ORAMIN-C being a variation of the ORAMIN mark of Opposer, as if in launching a new line of products. The Supreme Court has held: Callman notes two types of confusion. The first is the confusion of goods in which event the ordinary prudent purchaser would be induced to purchase one product in the belief

11 that he was purchasing the other. In which case, defendant's goods are then bought as the plaintiff's and the poorer quality of the former reflects adversely on the plaintiff's reputation. The other is the confusion of business. Here, though the goods of the parties are different, the defendant's product is such as might reasonably be assumed to originate with the plaintiff and the public would then be deceived either into that belief or into belief that there is some connection between the plaintiff and defendant which, in fact does not exist.6 Indeed, consumers may be led into a wrong belief that the parties have a connection between them, such as in, but not limited to, a licensing or sponsorship agreement. Public interest therefore requires, that two marks, identical to or closely resembling each other and used on the same and closely related goods, but utilized by different proprietors should not be allowed to co-exist. Confusion, mistake, deception, and even fraud, should be prevented. It is emphasized that 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 article as his product.7 Succinctly, the field from which a person may select a trademark is practically unlimited. As in all other cases of colorable imitations, the unanswered riddle is why of the millions of terms and combinations of letters and designs available, the Respondent- Applicant had to come up with a mark identical or so closely similar to another's mark if there was no intent to take advantage of the goodwill generated by the other mark.8 The intellectual property system was established to recognize creativity and give incentives to innovations. Similarly, the trademark registration system seeks to reward entrepreneurs and individuals who through their own innovations were able to distinguish their goods or services by a visible sign that distinctly points out the origin and ownership of such goods or services. In conclusion, the subject trademark application is covered by the proscription under Sec (d) (iii) of the IP Code. WHEREFORE, premises considered, the instant Opposition to Trademark Application No is hereby SUSTAINED. Let the filewrapper of the subject 6 Converse Rubber Corp. v. Universal Rubber Products, Inc. et. al, G.R. No. L-27906,08 Jan PribhdasJ. Mirpuriv. Court ofappeals, G.R. No , 19 November 1999, citing Ethepav. Director ofpatents, supra, Gabriel v. Perez, SCRA 406 (1974). See also Article 15, par. (1), Art. 16, par. (1), of the Trade Related Aspects of Intellectual Property (TRIPS Agreement). 8 American Wire & Cable Company v. Director ofpatents, G.R. No. L-26557, 18 Feb

12 trademark application be returned, together with a copy of this Decision, to the Bureau of Trademarks for information and appropriate action. SO ORDERED. JOSEPHINE (TALON Adjudication Gftficer, Bureau of Legal Affairs 11