The year 2009 was not a good year for French cosmetic company L'Oréal having received three dismissals of its actions against Ever Bilena Cosmetics, a Philippine company. On December 22 2009, the director general of the Intellectual Property Office of the Philippines (IPPhil) denied the appeal of L'Oréal and affirmed the March 9 2009 decision of the director of the Bureau of Legal Affairs, dismissing L'Oréal's unfair competition complaint against Ever Bilena Cosmetics and DSS Trading.
In this case, L'Oréal claimed that the general appearance or trade dress of its products bearing the trade marks L'Oréal Glam Shine, Maybelline Forever Metallics and Maybelline Forever Starlite lipsticks were copied by Ever Bilena on its products branded Advance Dazzling Shine and Advance Glamour Shine. In her decision, the BLA Director stated that the evidence presented by L'Oréal is not sufficient to establish the goodwill generated by L'Oréal's marks, which is the property right protected in unfair competition, and that there was no likelihood of confusion and deception because of differences in the names, colours, packaging, price, and product display locations in malls, of the contending products.
The BLA director further stated that while there is some resemblance in the shape of the containers of the products of both parties, this would not lead to confusion because almost all lipstick products come in cylindrical containers and the colours are not the same and the names are entirely different from one another. These factual findings were sustained by the director general who further stated that comparing the photos submitted in evidence, the differences in the general appearance of the products of the parties are obvious and that the products differ in words, colour and packaging and the words L'Oréal and Maybelline, which would easily attract the attention of the public, are not present in Ever Bilena's products.
While the above action was taking place, Ever Bilena was able to obtain design registration 3-2006-00105 on December 18 2006 for the disputed cosmetic container, entitled Design for Cosmetic Container. L'Oréal filed a petition for cancellation docketed as IPC no 13-2008-0050 alleging that the patented design of Ever Bilena was not new or novel, since it has used the design on its world famous products bearing the mark Maybelline Forever Metallics, and Maybelline Forever Starlite, which it launched in 2004 and 2005 respectively.
The BLA director dismissed the petition on April 22 2009 on the grounds that the evidences submitted by L'Oréal were not sufficient to overcome the validity of the design patents. She stated: "It cannot be overlooked that aside from one affidavit by its witness attaching Annexes "A" and "B" consisting of a photocopy of a picture of its "Forever Metallics" and "Forever Starlite" products, which do not prove prior art, Petitioner merely submitted photocopies of documents to prove its case". This did not conform to the requirements of the BLA. Citing the case of Manzano vs Court of Appeals (GR no 113388, September 5, 1997), the BLA director ruled that oral testimony to show anticipation is open to suspicion and, if uncorroborated by cogent evidence, may be held insufficient.
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| Editha R Hechanova |
Hechanova Bugay & Vilchez
GF Chemphil Building Antonio Arnaiz Ave
Makati City 1223
Philippines
Tel: +63 2 888 4293
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editharh@info.com.ph