G.R. No.

180073               November 25, 2009 against petitioner, praying that the latter cease and desist from
using the brand PCO-GENOLS for being confusingly similar with
PROSOURCE INTERNATIONAL, INC., Petitioner, respondent’s trademark PYCNOGENOL. It, likewise, prayed for
vs. actual and nominal damages, as well as attorney’s fees.11
HORPHAG RESEARCH MANAGEMENT SA, Respondent.
In its Answer,12 petitioner contended that respondent could not file
DECISION the infringement case considering that the latter is not the
registered owner of the trademark PYCNOGENOL, but one
NACHURA, J.: Horphag Research Limited. It, likewise, claimed that the two
marks were not confusingly similar. Finally, it denied liability,
since it discontinued the use of the mark prior to the institution of
This is a petition for review on certiorari under Rule 45 of the
the infringement case. Petitioner thus prayed for the dismissal of
Rules of Court seeking to reverse and set aside the Court of
the complaint. By way of counterclaim, petitioner prayed that
Appeals (CA) Decision1 dated July 27, 2007 and
respondent be directed to pay exemplary damages and attorney’s
Resolution  dated October 15, 2007 in CA-G.R. CV No. 87556.
2
fees.13
The assailed decision affirmed the Regional Trial Court
(RTC)3 Decision4 dated January 16, 2006 and Order5 dated May
3, 2006 in Civil Case No. 68048; while the assailed resolution During the pre-trial, the parties admitted the following:
denied petitioner’s motion for reconsideration.
1. Defendant [petitioner] is a corporation duly organized
The facts are as follows: and existing under the laws of the Republic of the
Philippines with business address at No. 7 Annapolis
Street, Greenhills, San Juan, Metro Manila;
Respondent Horphag Research Management SA is a corporation
duly organized and existing under the laws of Switzerland and the
owner6 of trademark PYCNOGENOL, a food supplement sold and 2. The trademark PYCNOGENOL of the plaintiff is duly
distributed by Zuellig Pharma Corporation. Respondent later registered with the Intellectual Property Office but not with
discovered that petitioner Prosource International, Inc. was also the Bureau of Food and Drug (BFAD).
distributing a similar food supplement using the mark PCO-
GENOLS since 1996.7 This prompted respondent to demand that 3. The defendant’s product PCO-GENOLS is duly
petitioner cease and desist from using the aforesaid mark.8 registered with the BFAD but not with the Intellectual
Property Office (IPO).
Without notifying respondent, petitioner discontinued the use of,
and withdrew from the market, the products under the name 4. The defendant corporation discontinued the use of and
PCO-GENOLS as of June 19, 2000. It, likewise, changed its mark had withdrawn from the market the products under the
from PCO-GENOLS to PCO-PLUS.9 name of PCO-GENOLS as of June 19, 2000, with its
trademark changed from PCO-GENOLS to PCO-PLUS.
On August 22, 2000, respondent filed a Complaint10 for
Infringement of Trademark with Prayer for Preliminary Injunction
 5. Plaintiff corporation sent a demand letter to the FAVOR OF RESPONDENT HORPHAG RESEARCH
defendant dated 02 June 2000.14 MANAGEMENT S.A. IN THE AMOUNT OF
Php50,000.00.17
On January 16, 2006, the RTC decided in favor of respondent. It
observed that PYCNOGENOL and PCO-GENOLS have the same The petition is without merit.
suffix "GENOL" which appears to be merely descriptive and thus
open for trademark registration by combining it with other words. It must be recalled that respondent filed a complaint for trademark
The trial court, likewise, concluded that the marks, when read, infringement against petitioner for the latter’s use of the mark
sound similar, and thus confusingly similar especially since they PCO-GENOLS which the former claimed to be confusingly similar
both refer to food supplements. The court added that petitioner’s to its trademark PYCNOGENOL. Petitioner’s use of the
liability was not negated by its act of pulling out of the market the questioned mark started in 1996 and ended in June 2000. The
products bearing the questioned mark since the fact remains that instant case should thus be decided in light of the provisions of
from 1996 until June 2000, petitioner had infringed respondent’s Republic Act (R.A.) No. 16618 for the acts committed until
product by using the trademark PCO-GENOLS. As respondent December 31, 1997, and R.A. No. 829319 for those committed
manifested that it was no longer interested in recovering actual from January 1, 1998 until June 19, 2000.
damages, petitioner was made to answer only for attorney’s fees
amounting to ₱50,000.00.15 For lack of sufficient factual and legal A trademark is any distinctive word, name, symbol, emblem, sign,
basis, the court dismissed petitioner’s counterclaim. Petitioner’s or device, or any combination thereof, adopted and used by a
motion for reconsideration was likewise denied. manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt by others.
On appeal to the CA, petitioner failed to obtain a favorable Inarguably, a trademark deserves protection.20
decision. The appellate court explained that under the Dominancy
or the Holistic Test, PCO-GENOLS is deceptively similar to Section 22 of R.A. No. 166, as amended, and Section 155 of R.A.
PYCNOGENOL. It also found just and equitable the award of No. 8293 define what constitutes trademark infringement, as
attorney’s fees especially since respondent was compelled to follows:
litigate.16
Sec. 22. Infringement, what constitutes. – Any person who shall
Hence, this petition, assigning the following errors: use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or
I. THAT THE COURT OF APPEALS ERRED IN tradename in connection with the sale, offering for sale, or
AFFRIMING THE RULING OF THE LOWER [COURT] advertising of any goods, business or services on or in
THAT RESPONDENT’S TRADEMARK connection with which such use is likely to cause confusion or
P[YC]NOGENOLS (SIC) WAS INFRINGED BY mistake or to deceive purchasers or others as to the source or
PETITIONER’S PCO-GENOLS. origin of such goods or services, or identity of such business; or
reproduce, counterfeit, copy of colorably imitate any such mark or
II. THAT THE COURT OF APPEALS ERRED IN tradename and apply such reproduction, counterfeit, copy or
AFFIRMING THE AWARD OF ATTORNEY’S FEES IN colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in (b) [It] is used by another person in connection with the
connection with such goods, business, or services, shall be liable sale, offering for sale, or advertising of any goods,
to a civil action by the registrant for any or all of the remedies business or services or in connection with which such use
herein provided. is likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such
Sec. 155. Remedies; Infringement. – Any person who shall, goods or services, or identity of such business; or such
without the consent of the owner of the registered mark: trademark is reproduced, counterfeited, copied or
colorably imitated by another person and such
155.1. Use in commerce any reproduction, counterfeit, copy, or reproduction, counterfeit, copy or colorable imitation is
colorable imitation of a registered mark or the same container or applied to labels, signs, prints, packages, wrappers,
a dominant feature thereof in connection with the sale, offering for receptacles or advertisements intended to be used upon
sale, distribution, advertising of any goods or services including or in connection with such goods, business or services as
other preparatory steps necessary to carry out the sale of any to likely cause confusion or mistake or to deceive
goods or services on or in connection with which such use is purchasers[;]
likely to cause confusion, or to cause mistake, or to deceive; or
(c) [T]he trademark is used for identical or similar goods[;]
155.2. Reproduce, counterfeit, copy or colorably imitate a and
registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels, (d) [S]uch act is done without the consent of the
signs, prints, packages, wrappers, receptacles or advertisements trademark registrant or assignee.21
intended to be used in commerce upon or in connection with the
sale, offering for sale, distribution, or advertising of goods or On the other hand, the elements of infringement under R.A. No.
services on or in connection with which such use is likely to cause 8293 are as follows:
confusion, or to cause mistake, or to deceive, shall be liable in a
civil action for infringement by the registrant for the remedies (1) The trademark being infringed is registered in the
hereinafter set forth: Provided, That infringement takes place at Intellectual Property Office; however, in infringement of
the moment any of the acts stated in Subsection 155.1 or this trade name, the same need not be registered;
subsection are committed regardless of whether there is actual
sale of goods or services using the infringing material. (2) The trademark or trade name is reproduced,
counterfeited, copied, or colorably imitated by the
In accordance with Section 22 of R.A. No. 166, as well as infringer;
Sections 2, 2-A, 9-A, and 20 thereof, the following constitute the
elements of trademark infringement: (3) The infringing mark or trade name is used in
connection with the sale, offering for sale, or advertising
(a) A trademark actually used in commerce in the of any goods, business or services; or the infringing mark
Philippines and registered in the principal register of the or trade name is applied to labels, signs, prints,
Philippine Patent Office[;] packages, wrappers, receptacles or advertisements
 intended to be used upon or in connection with such In contrast, the Holistic Test entails a consideration of the entirety
goods, business or services; of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity.27 The discerning
(4) The use or application of the infringing mark or trade eye of the observer must focus not only on the predominant
name is likely to cause confusion or mistake or to deceive words but also on the other features appearing on both labels in
purchasers or others as to the goods or services order that the observer may draw his conclusion whether one is
themselves or as to the source or origin of such goods or confusingly similar to the other.28
services or the identity of such business; and
The trial and appellate courts applied the Dominancy Test in
(5) It is without the consent of the trademark or trade determining whether there was a confusing similarity between the
name owner or the assignee thereof.22 marks PYCNOGENOL and PCO-GENOL. Applying the test, the
trial court found, and the CA affirmed, that:
In the foregoing enumeration, it is the element of "likelihood of
confusion" that is the gravamen of trademark infringement. But Both the word[s] PYCNOGENOL and PCO-GENOLS have the
"likelihood of confusion" is a relative concept. The particular, and same suffix "GENOL" which on evidence, appears to be merely
sometimes peculiar, circumstances of each case are descriptive and furnish no indication of the origin of the article and
determinative of its existence. Thus, in trademark infringement hence, open for trademark registration by the plaintiff thru
cases, precedents must be evaluated in the light of each combination with another word or phrase such as
particular case.23 PYCNOGENOL, Exhibits "A" to "A-3." Furthermore, although the
letters "Y" between P and C, "N" between O and C and "S" after L
In determining similarity and likelihood of confusion, jurisprudence are missing in the [petitioner’s] mark PCO-GENOLS,
has developed two tests: the Dominancy Test and the Holistic or nevertheless, when the two words are pronounced, the sound
Totality Test. The Dominancy Test focuses on the similarity of the effects are confusingly similar not to mention that they are both
prevalent features of the competing trademarks that might cause described by their manufacturers as a food supplement and thus,
confusion and deception, thus constituting infringement.24 If the identified as such by their public consumers. And although there
competing trademark contains the main, essential and dominant were dissimilarities in the trademark due to the type of letters
features of another, and confusion or deception is likely to result, used as well as the size, color and design employed on their
infringement takes place. Duplication or imitation is not individual packages/bottles, still the close relationship of the
necessary; nor is it necessary that the infringing label should competing products’ name in sounds as they were pronounced,
suggest an effort to imitate. The question is whether the use of clearly indicates that purchasers could be misled into believing
the marks involved is likely to cause confusion or mistake in the that they are the same and/or originates from a common source
mind of the public or to deceive purchasers.25 Courts will consider and manufacturer.29
more the aural and visual impressions created by the marks in
the public mind, giving little weight to factors like prices, quality, We find no cogent reason to depart from such conclusion.
sales outlets, and market segments.26
This is not the first time that the Court takes into account the aural
effects of the words and letters contained in the marks in
determining the issue of confusing similarity. In Marvex
Commercial Co., Inc. v. Petra Hawpia & Co., et al.,30 cited in 1. When exemplary damages are awarded;
McDonald’s Corporation v. L.C. Big Mak Burger, Inc.,31 the Court
held: 2. When the defendant’s act or omission has compelled
the plaintiff to litigate with third persons or to incur
The following random list of confusingly similar sounds in the expenses to protect his interest;
matter of trademarks, culled from Nims, Unfair Competition and
Trade Marks, 1947, Vol. 1, will reinforce our view that 3. In criminal cases of malicious prosecution against the
"SALONPAS" and "LIONPAS" are confusingly similar in sound: plaintiff;
"Gold Dust" and "Gold Drop"; "Jantzen" and "Jass-Sea"; "Silver
Flash" and "Supper Flash"; "Cascarete" and "Celborite"; 4. In case of a clearly unfounded civil action or
"Celluloid" and "Cellonite"; "Chartreuse" and "Charseurs"; "Cutex" proceeding against the plaintiff;
and "Cuticlean"; "Hebe" and "Meje"; "Kotex" and "Femetex";
"Zuso" and "Hoo Hoo." Leon Amdur, in his book "Trade-Mark Law
5. Where the defendant acted in gross and evident bad
and Practice," pp. 419-421, cities, as coming within the purview of
faith in refusing to satisfy the plaintiff"s plainly valid, just
the idem sonans rule, "Yusea" and "U-C-A," "Steinway Pianos"
and demandable claim;
and "Steinberg Pianos," and "Seven-Up" and "Lemon-Up." In Co
Tiong vs. Director of Patents, this Court unequivocally said that
"Celdura" and "Cordura" are confusingly similar in sound; this 6. In actions for legal support;
Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the
name "Lusolin" is an infringement of the trademark "Sapolin," as 7. In actions for the recovery of wages of household
the sound of the two names is almost the same.32 helpers, laborers and skilled workers;

Finally, we reiterate that the issue of trademark infringement is 8. In actions for indemnity under workmen’s
factual, with both the trial and appellate courts finding the compensation and employer’s liability laws;
allegations of infringement to be meritorious. As we have
consistently held, factual determinations of the trial court, 9. In a separate civil action to recover civil liability arising
concurred in by the CA, are final and binding on this from a crime;
Court.33 Hence, petitioner is liable for trademark infringement.
10. When at least double judicial costs are awarded;
We, likewise, sustain the award of attorney’s fees in favor of
respondent. Article 2208 of the Civil Code enumerates the 11. In any other case where the court deems it just and
instances when attorney’s fees are awarded, viz.: equitable that attorney’s fees and expenses of litigation
should be recovered.
Art. 2208. In the absence of stipulation, attorney’s fees and
expenses of litigation, other than judicial costs, cannot be In all cases, the attorney’s fees and expenses of litigation must be
recovered, except: reasonable.
As a rule, an award of attorney’s fees should be deleted where
the award of moral and exemplary damages is not
granted.34 Nonetheless, attorney’s fees may be awarded where
the court deems it just and equitable even if moral and exemplary
damages are unavailing.35 In the instant case, we find no
reversible error in the grant of attorney’s fees by the CA.
WHEREFORE, premises considered, the petition is DENIED for
lack of merit. The Court of Appeals Decision dated July 27, 2007
and its Resolution dated October 15, 2007 in CA-G.R. CV No.
87556 are AFFIRMED.