[This item has two questions.] Zui Cheneris Corp. is a pharmaceutical company operating in the Philippines since 1999. One of its products is a drug called carbamazepine under the brand name “CHENAPS”, which is an anticonvulsant used to control all types of seizure disorders of varied causes like epilepsy. Nutty Pharma, also a pharmaceutical company in the Philippines, sells citicoline under the mark “CHENAPSE”, which is indicated for the treatment of cerebrovascular disease or stroke. “CHENAPSE” was registered as a trademark by Nutty Pharma with the Intellectual Property Office of the Philippines (IPO) on September 24, 2017. On November 29, 2017, Nutty Pharma filed with the Regional Trial Court (RTC) a Complaint against Zui Cheneris for Injunction, Trademark Infringement, Damages and Destruction with Prayer for Temporary Restraining Order and/or Preliminary Injunction, alleging that Zui Cheneris’ “CHENAPS” is confusingly similar to its registered trademark “CHENAPSE” and the resulting likelihood of confusion is dangerous because the marks cover medical drugs intended for different types of illnesses. Zui Cheneris, in its Answer, countered that: (i) it has been selling carbamazepine under the brand name “CHENAPS” since 2004; (ii) it was impossible for Nutty Pharma not to have known the existence of “CHENAPS” before the latter’s registration of “CHENAPSE” because Nutty Pharma had promoted its products in the same publications where Zui Cheneris had advertised “CHENAPS”; (iii) despite its knowledge of prior use by Zui Cheneris of “CHENAPS”, Nutty Pharma had fraudulently appropriated the “CHENAPSE” mark by registering the same with the IPO; and, (iv) as the prior user, Zui Cheneris is the owner of “CHENAPS” and the continued use by Nutty Pharma of “CHENAPSE” will cause it grave and irreparable damage. Thus, Zui Cheneris prayed for the cancellation of the trademark registration of Nutty Pharma’s “CHENAPSE”.
Suggested answer only. Not an official answer and not legal advice.
(a) No, I will not enjoin Zui Cheneris from using the mark; (b) No, Zui Cheneris' prayer for cancellation is not tenable. Under Section 159.1 of the Intellectual Property Code (R.A. No. 8293) and Zuneca Pharmaceutical v. Natrapharm, Inc., trademark
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Quick check
Under Section 122 of the Intellectual Property Code, how is trademark ownership acquired in the Philippines?
Trademark ownership is acquired solely through valid registration in accordance with the Intellectual Property Code.
In Zuneca Pharmaceutical v. Natrapharm, Inc., what rights does a prior user in good faith retain against a registered owner?
A prior user in good faith retains the right to continue using its mark without being enjoined by the registrant.
Can a prior user in good faith cancel the registration of a first-to-file registrant who registered in good faith?
Prior use alone does not entitle a prior user to cancel a trademark registration obtained in good faith.
What must a petitioner prove to cancel a registered trademark under the Intellectual Property Code?
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Which statute governs trademark registration and intellectual property rights in the Philippines?
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Learn more about these topics
1. First to File
Under Section 122 of the Intellectual Property Code (Republic Act Number 8293) and Zuneca Pharmaceutical versus Natrapharm, Incorporated, ownership of a trademark is acquired solely through valid registration in accordance with the provisions of the law. The Philippines operates under the first-to-file rule, wherein the entity that first applies for and secures registration of a mark in good faith becomes the lawful owner thereof. Prior adoption, commercial use, or promotion of an unregistered mark without bad faith on the part of the applicant no longer confers trademark ownership under the Intellectual Property Code.
2. Prior User Rights
Under Section 159.1 of the Intellectual Property Code, a registered trademark owner cannot prevent a prior user in good faith from continuing to use its mark. Where a party adopted and commercially used an unregistered mark in good faith prior to the filing or registration date of a confusingly similar mark by another entity, the prior user enjoys statutory protection to continue using its mark in the course of trade. The registered trademark owner possesses no legal right to enjoin the prior user in good faith from using its established commercial mark.
3. Registration Cancellation Limits
While a prior user in good faith is legally entitled to continue using its mark, prior use alone does not constitute a valid ground to cancel a trademark registration obtained in good faith by another party. To successfully cancel a registered trademark under the Intellectual Property Code, the petitioner must establish that the registrant acted in bad faith or committed fraud in securing the registration. In the absence of proven bad faith or fraud, the first-to-file registration remains valid, and the prior user cannot compel its cancellation.