Commercial Law, 2022 Bar — Question 9-a

ESSAY

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 anti-convulsant 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”. (a) As the RTC judge, will you enjoin Zui Cheneris from further using the mark “CHENAPS”? Explain briefly.

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