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    B1A Prosource International Inc. v. Horphag Research Management SA GR 180073 J 25 November 2009 J

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    Mharey
    Horphag Research Management SA owns the trademark PYCNOGENOL for a food supplement. Prosource International, Inc was distributing a similar supplement called PCO-GENOLS. Horphag demanded Prosource cease use of PCO-GENOLS, and Prosource changed the name to PCO-PLUS but Horphag still sued. The court found PYCNOGENOL and PCO-GENOLS were confusingly similar under the Dominancy Test because they share the descriptive suffix "GENOL" and sound similar, indicating a likelihood of confusing consumers about the source or manufacturer. The appellate court agreed and ruled in favor of Horphag.

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    B1A Prosource International Inc. v. Horphag Research Management SA GR 180073 J 25 November 2009 J

    Uploaded by

    Mharey
    85 views2 pages
    Horphag Research Management SA owns the trademark PYCNOGENOL for a food supplement. Prosource International, Inc was distributing a similar supplement called PCO-GENOLS. Horphag demanded Prosource cease use of PCO-GENOLS, and Prosource changed the name to PCO-PLUS but Horphag still sued. The court found PYCNOGENOL and PCO-GENOLS were confusingly similar under the Dominancy Test because they share the descriptive suffix "GENOL" and sound similar, indicating a likelihood of confusing consumers about the source or manufacturer. The appellate court agreed and ruled in favor of Horphag.

    Original Description:

    INTELLECTUAL PROPERTY LAW CASE

    Original Title

    B1A Prosource International Inc. v. Horphag Research Management SA GR 180073^J 25 November 2009^J

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    Horphag Research Management SA owns the trademark PYCNOGENOL for a food supplement. Prosource International, Inc was distributing a similar supplement called PCO-GENOLS. Horphag demanded Prosource cease use of PCO-GENOLS, and Prosource changed the name to PCO-PLUS but Horphag still sued. The court found PYCNOGENOL and PCO-GENOLS were confusingly similar under the Dominancy Test because they share the descriptive suffix "GENOL" and sound similar, indicating a likelihood of confusing consumers about the source or manufacturer. The appellate court agreed and ruled in favor of Horphag.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    85 views2 pages

    B1A Prosource International Inc. v. Horphag Research Management SA GR 180073 J 25 November 2009 J

    Uploaded by

    Mharey
    Horphag Research Management SA owns the trademark PYCNOGENOL for a food supplement. Prosource International, Inc was distributing a similar supplement called PCO-GENOLS. Horphag demanded Prosource cease use of PCO-GENOLS, and Prosource changed the name to PCO-PLUS but Horphag still sued. The court found PYCNOGENOL and PCO-GENOLS were confusingly similar under the Dominancy Test because they share the descriptive suffix "GENOL" and sound similar, indicating a likelihood of confusing consumers about the source or manufacturer. The appellate court agreed and ruled in favor of Horphag.

    Copyright:

    © All Rights Reserved
    Download as DOCX, PDF, TXT or read online from Scribd
    Download as docx, pdf, or txt
    of 2

    B1A Prosource International Inc. v.

    Horphag Research Management SA


    GR 180073, 25 November 2009,

    Facts:

    Horphag Research Management SA is a corporation duly organized and existing under the laws
    of Switzerland and the owner of trademark PYCNOGENOL, a food supplement sold and
    distributed by Zuellig Pharma Corporation. Horphag Research Management SA discovered that
    Prosource International, Inc., was distributing a similar food supplement using the mark PCO-
    GENOLS since 1996. This prompted Horphag Research Management SA to demand Prosource
    International, Inc. cease and desist from using the said mark. Without notifying Horphag
    Research Management SA, Prosource International, Inc. discontinued the use and withdrew
    from the market, the products under the name PCO-GENOLS and changed its mark from PCO-
    GENOLS to PCO-PLUS. Horphag Research Management SA filed a Complaint for Infringement
    of Trademark against Prosource International, Inc. that the brand PCO-GENOLS is being
    confusingly used similar with Horphag Research Management SA trademark PYCNOGENOL.
    In their answer Prosource International, Inc., contended that Horphag Research Management
    SA could not file the infringement case considering that they are not the registered owner of the
    trademark PYCNOGENOL, but one Horphag Research Limited. They also claimed that the two
    marks were not confusingly similar and denied liability, since it discontinued the use of the mark
    prior to the institution of the infringement case.

    The Trial Court decided in favor of Horphag Research Management SA. It observed that
    PYCNOGENOL and PCO-GENOLS have the same suffix "GENOL" which appears to be merely
    descriptive and thus open for trademark registration by combining it with other words. They also
    concluded that the marks, when read, sound similar, and thus confusingly similar especially
    since they both refer to food supplements. On appeal to the Appellate court Prosource
    International, Inc. failed to obtain a favorable decision. In which the appellate court explained
    that under the Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar to
    PYCNOGENOL. Hence this petition 

    Issue: Whether the names are confusingly similar?

    Held:

    Yes,In determining similarity and likelihood of confusion, jurisprudence has developed two tests:
    the Dominancy Test and the Holistic or Totality Test. 

    1. The Dominancy Test focuses on the similarity of the prevalent features of the competing
    trademarks that might cause confusion and deception, thus constituting infringement.
    2. the Holistic Test entails a consideration of the entirety of the marks as applied to the
    products, including the labels and packaging, in determining confusing similarity

    Here the trial and appellate court applied the Dominancy Test in determining whether there was
    a confusing similarity between the marks PYCNOGENOL and PCO-GENOL.

    Both the words have the same suffix "GENOL" which on evidence, appears to be merely
    descriptive and furnish no indication of the origin of the article and hence, open for trademark
    registration by Prosource International, Inc through combination with another word or phrase.
    When the two words are pronounced, the sound effects are confusingly similar not to mention
    that they are both described by their manufacturers as a food supplement and thus, identified as
    such by their public consumers. Although there were dissimilarities in the trademark due to the
    type of letters used as well as the size, color and design employed on their individual packages
    or bottles, still the close relationship of the competing products’ name in sounds as they were
    pronounced, clearly indicates that purchasers could be misled into believing that they are the
    same or originates from a common source and manufacturer.

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