Berris v.

Norvy

Facts: On January 16, 2004, respondent, Norvy A. Abyadang, proprietor of NS Northern Organic
Fertilizer, filed an application for trademark registration for the mark “NS D-10 Plus” for use in
connection with Fungicide (Class 5) with active ingridient 80 % Mancozeb. The application was
published in the Intellectual Property Office e-Gazette. On August 17, 2005 petitioner Berris
Agricultural Co. opposed the application alleging that is similar and/or confusingly similar to its
registered trademark "D-10 80 WP," also used for Fungicide (Class 5) with active ingredient 80%
Mancozeb.

IPO-Bureau of Legal Affairs: Gave credence to petitioner’s opposition and rejected respondent’s
application.

Director General-IPP: Affirmed the BLA’s decision.

CA: Reversed the decision of the Director General

Issue: Whether respondent’s trademark infringes on petitioner’s.

Ruling:

Berris’s right over the trademark should be affirmed as he has proven prior use

To be afforded protection by law ownership of the trademark should rightly be established. The
ownership of a trademark is acquired by its registration and its actual use by the manufacturer or
distributor of the goods made available to the purchasing public. Rights of a trademark shall be
acquired by means of its valid registration with the IPO. The grant of the registration merely
constitutes prima facie evidence of the validity of the registration of the registrant’s mark. This
however must be coupled with the filling of a declaration of actual use (DAU) of the mark, with
evidence to that effect, within three (3) years from the filing of the application for registration;
otherwise, the application shall be refused or the mark shall be removed from the register.

Receipts, sales invoices, and testimonies of witnesses as customers, or orders of buyers, best prove
the actual use of a mark in trade and commerce during a certain period of time

Berris was able to establish that it was using its mark "D-10 80 WP" since June 20, 2002 as
evidenced by a notarized declaration of actual use coupled with actual receipts of the goods and
sales invoices.

Respondent’s trade mark is confusingly similar to that of petitioner.

Dominancy test focuses on the similarity of the prevalent features of the competing trademarks
which might cause confusion or deception. On the other hand, holistic test mandates that the
entirety of the marks in question must be considered in determining confusing similarity.
Comparing the marks of petitioner and respondent, Abyadang's "NS D-10 PLUS" is similar to
Berris' "D-10 80 WP. One cannot but notice that both have a common component which is "D-
10." Both depictions of "D-10," as found in both marks, are similar in size, such that this portion
is what catches the eye of the purchaser. Admittedly, the "D-10" is the dominant feature of the
mark. The "D-10," being at the beginning of the mark, is what is most remembered of it. Applying
the dominancy test, both marks pertain to the same type of goods — fungicide with 80% Mancozeb
as an active ingredient and used for the same group of fruits, crops, vegetables, and ornamental
plants, using the same dosage and manner of application hence the likelihood of confusion

Under the holistic test, it may be said that the marks are confusingly similar taking into
consideration the packaging, for both use the same type of material (foil type) and have identical
color schemes (red, green, and white); and the marks are both predominantly red in color, with the
same phrase "BROAD SPECTRUM FUNGICIDE" written underneath.

Thus, the appeal was granted and the CA’s decision was reversed.