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ZUNECA PHARMACEUTICAL v. NATRAPHARM

FACTS:

The case involves a dispute between respondent Natrapharm, Inc. and petitioner Zuneca Pharmaceutical over the use of the trademarks "ZYNAPS" and "ZYNAPSE". Natrapharm is a pharmaceutical company that manufactures and sells a medicine called "CITICOLINE" under the trademark "ZYNAPSE". They have registered this trademark with the Intellectual Property Office (IPO) and obtained the necessary permits and licenses from the Bureau of Food and Drugs (BFAD).

On the other hand, Zuneca Pharmaceutical allegedly sells a medicine imported from Pakistan, also named "ZYNAPS", since 2003. They claim to have prior use of the name and were issued a Certificate of Product Registration (CPR) by the BFAD in 2003 authorizing them to sell the medicine under the brand name "ZYNAPS".

Natrapharm sent a cease-and-desist letter to Zuneca Pharmaceutical, but the latter refused to comply. Consequently, Natrapharm filed a complaint against Zuneca Pharmaceutical for trademark infringement.

The Regional Trial Court (RTC) denied Natrapharm's application for a temporary restraining order (TRO) and a writ of preliminary injunction, ruling that Zuneca Pharmaceutical had prior actual use of the trademark. Natrapharm appealed the RTC's decision to the Court of Appeals (CA), which initially denied the application for a TRO and/or preliminary injunction. Natrapharm filed a motion for reconsideration, which was still pending at the time of the case digest.

ISSUES:

  1. Whether or not respondent's registration of the trademark "ZYNAPSE" gives it exclusive right to use the said name and to prevent others from using a similar mark.

  2. Whether or not the prior actual use by petitioners of the mark "ZYNAPS" defeats respondent's exclusive rights over the trademark.

RULING:

  1. Yes. The Court held that under Section 122 of the Intellectual Property Code, the registration of a trademark gives the registered owner exclusive rights to use the mark and to exclude others from using the same or a confusingly similar mark.

  2. No. The Court ruled that even though petitioners have prior actual use of the mark "ZYNAPS," under Section 159 of the Intellectual Property Code, the rights of the registrant are still protected. Section 159.1 provides that the protection to be afforded to the person entitled to the exclusive use of a trademark registered in the Philippines with the Intellectual Property Office shall be limited to preventing others from using a similar mark in relation to goods or services that are identical or similar to those registered. Therefore, petitioners' prior use of the mark does not defeat respondent's exclusive rights over the trademark.

PRINCIPLES:

  • The registration of a trademark gives the registered owner exclusive rights to use the mark and to exclude others from using the same or a confusingly similar mark.

  • Prior actual use of a mark does not defeat the exclusive rights of the registered owner as long as the mark is registered with the Intellectual Property Office.