INTELLECTUAL PROPERTY

OFFICE OF THE PHIUPPINES

BLUE CROSS AND BLUE SHIELD ASSOCIATION, } IPC No. 14-2016-00247

Opposer, } Opposition to:

} Appln. Serial No. 4-2015-505953

-versus- } Date Filed: 14 October 2015

ORGANIZACION SANITAS INTERNACIONAL S.A.,} TM: OSI ORGANIZACION SANITAS

Respondent-Applicant. } INTERNACIONAL

NOTICE OF DECISION

BETITA CABILAO CASUELA SARMIENTO

Counsel for Opposer

Suite 1104, Page One Building

1215 Acacia Avenue, Madrigal Business Park

Ayala Alabang, Muntinlupa City 1780

VERALAW (Del Rosario Gonzales Grasparil)

Counsel for Respondent-Applicant

A&v Crystal Tower,

105 Esteban Street, Legazpi Village

1223 Makati City

GREETINGS:

Please be informed that Decision No. 2018 -iPL dated 22 March 2018(copy

enclosed) was promulgated in the above entitled case.

Pursuant to Section 2, Rule 9 of the IPOPHL Memorandum Circular No. 16-007

series of 2016, any party may appeal the decision to the Director of the Bureau of Legal

Affairs within ten (10) days after receipt of the decision together with the payment of

applicable fees.

Taguig City, 22 March 2018.

MARILYN F. RETUTAL

IPRS IV

Bureau of Legal Affairs

@ www.ipophil.gov.ph q Intellectual Property Center

© mail@ipophil.gov.ph tt78 UPP°' McKintey RoadMcKmloy Htll lown Center

0+632-2386300 For. Bonifacio. Tagu.c, O.y

d +632 5539480

INTELLECTUAL PROPERTY

OFFICE OF THE PHILIPPINES

BLUE CROSS AND BLUE SHIELD

ASSOCIATION, IPC No. 14-2016-00247

Opposer,

Opposition to:

-versus- Serial No. 4-2015-505953

Date Filed: 14 October 2015

ORGANIZACION SANITAS

INTERNACIONAL S.A., Trademark: "OSI ORGANIZACION

Respondent-Applicant. SANITAS INTERNACIONAL"

x x Decision No. 2018- Si

DECISION

Blue Cross and Blue Shield Association1 ("Opposer") filed an opposition toTrademark Application Serial No. 4-2015-505953. The contested application, filed by

Organizacion Sanitas Internacional S.A.2 ("Respondent-Applicant"), covers the mark"OSI ORGANIZACION SANITAS INTERNACIONAL" for use on "health insurance

activities"and "medical and hospital services'''under Classes 36 and 44, respectively,

of the International Classification of Goods3.

According to the Opposer, it is the owner of the "BLUE CROSS" trademark

and related marks, which are used in connection with insurance services and

financing of hospital, medical and related health services under Class 36. Its rights to

the registration of the "BLUE CROSS" mark under Registration No. 35780, in

particular, is based on the prior registration of the same mark in the name of its

predecessor-in-interest, American Hospital Association, under Registration No. 7916

registered on 27 August 1979. Despite the lapse of the said registration, the

Opposer preserved the rights thereof. Also, as early as 1986, Registration No. 35780

was issued in the name of the Opposer. In addition, the Bureau of Legal Affairs

("BLA") ruled in the case of Blue Cross Insurance Inc. and Blue Cross Health Care,

Inc. vs. Blue Cross and Blue Shield Association that it is the owner of the "BLUE

CROSS" mark by virtue of its use in the Philippines since 1966.

The Opposer contends that the dominant feature of the Respondent-

Applicant's mark is the blue cross, which it believes to be confusingly similar to its

logo. It also asserts that since the goods and/or services covered by the marks are

1 A corporation duly organized and existing under and by virtue of the laws of the State of Illinois, United States

of America with principal place of business at 225 N. Michigan Avenue, Chicago, Illinois 60601, United States of

America.

2 With address at Calle 100 #11 B-67 Edificio Colsanitas Bogota, D.C. (CO).

3 The Nice Classification is a classification of goods and services for the purpose of registering trademark and

services marks, based on the multilateral treaty administered by the World Intellectual Property Organization.

The treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the

Purpose of the Registration of Marks concluded in 1957.

1 Q www.ipophil.gov.ph g Intellectual Property Center

Q l@ihlh n?s UPP01 WcKintey •Q mail@ipophil.gov.ph n?s UPP01 WcKintey •McKinloy Hill lown Center

0.632-2386300 Fori Bcmilacio,Tagu.qCy

|fl +632 5539480 1634 Philippines

closely related, consumers will likely be deceived or misled that its company is

connected, affiliated or associated with the Respondent-Applicant. In support of its

opposition, the Opposer submitted the affidavit of its Senior Vice President, General

Counsel and Corporate Secretary, Mr. W. Scott Nehs, with attachments.4

On the other hand, the Respondent-Applicant alleges, among other things,

that it operates a multinational healthcare company. It originated in Spain and

substantially expanded its geographic reach to Colombia, and all over Latin American

states, the United States, Europe and Asia. One of its products is its "OSI

ORGANIZACION SANITAS INTERNACIONAL" brand that was born thirty-six (36)

years ago in Colombia. It was based on the headquarters Sanitas Spain. It likewise

operates websites to carry out and promote its business relating to the applied mark.

The Respondent-Applicant maintains that it applied the contested mark in

good faith and that there are other trademarks using a cross logo for goods and/or

services under Classes 36 and 44. It denies that its mark is confusingly similar to the

Opposer's "BLUE CROSS" marks reasoning that:5

"11. The first two circumstances falling under the said provisions do not

apply because Opposer's Blue Cross Marks (Blue Cross word mark, Cross Design

mark, and Cross and Man Design mark) are not in any way identical to the

Respondent-Applicant's 'OSI Organizacion Sanitas Internacional'mark.

12. It must be emphasized that the Respondent-Applicant's trademark is a

combination of stylized cross device and a word mark. On the other hand, the

Opposer's Blue Cross Marks are registered either only as pure device marks orplain

word marks.

13. The Opposer' Blue Cross word marks (Registration No. 35780 and

Application No. 4-2006-005270) are neither phonetically nor visually identical to the

Respondent-Applicant's 'OSI Organizacion Sanitas Internacional'trademark.

14. The Opposer's Blue Cross word marks are composed oftwo words, eight

(8) letters and two (2) syllables while the Respondent-Applicant's 'OSI Organizacion

Sanitas Internacional' is composed of four (4) words, thirty-five letters (35), and

sixteen (16) syllables.

15. There is neither an identity in appearance and spelling nor unanimity in

syllables that will support the applicability ofSection 123.1 (d) ofthe IP Code.

16. The Opposer's Blue Cross device marks (Registration Nos. 40463 and

2648 are also not identical to the Respondent-Applicant's 'OSI Organizacion Sanitas

Internacional' trademark. At the outset, it must be emphasized that the Opposer's

Blue Cross device marks are both composed ofa man within a cross which is absent

in the Respondent-Applicant's mark.

4 Marked as Exhibit "B".

5 See Verified Answer, p. 6.

17. The cross device found in the Respondent-Applicant's trademark is

visually configured to appear as a silhouette of a stylized letter 'S'. Clearly, the

Opposer's man within a cross is NOT found on Respondent-Applicant's 'OSI

Organizacion Sanitas Internacional'trademark.'

The evidence of the Respondent-Applicant consists of:6

1. copy its trademark application;

2. affidavit-direct testimony of Mauricio Pinzon Pinzon, with annexes; and,

3. copy of the Notice of Allowance of the applied mark.

A preliminary conference was conducted on 16 May 2017 wherein the parties

were directed to submit their respective position papers. After which, the case is

deemed submitted for decision.

The records show that at the time the Respondent-Applicant filed its

trademark application the Opposer already has an existing registration for "BLUE

CROSS" and variants thereof issued as early as 22 July 1986.

But are the marks, as shown below, confusingly similar?

Opposer's marks:

BLUE CROSS

1 Marked as Exhibits "2" to "4", inclusive.

Respondent-Applicant's mark:

C-OSIOrganization Sanitas Internacional

A practical approach to the problem of similarity or dissimilarity is to go into

the whole of the two trademarks pictured in their manner of display. Inspection

should be undertaken from the viewpoint of a prospective buyer. The trademark

complained of should be compared and contrasted with the purchaser's memory

(not in juxtaposition) of the trademark said to be infringed. Some such factors as

"sound; appearance; form, style, shape, size or format; color; ideas connoted by

marks; the meaning, spelling, and pronunciation, of words used; and the setting in

which the words appear" may be considered.7 Thus, confusion is likely between

marks only if their over-all presentation, as to sound, appearance, or meaning,

would make it possible for the consumers to believe that the goods or products, to

which the marks are attached, emanate from the same source or are connected or

associated with each other.

There is no question that the words "BLUE CROSS" differ from "OSI

ORGANIZACION SANITAS INTERNACIONAL". There is no similarity at all in

appearance or pronunciation.

As to the Opposer's "CROSS DESIGN" and "CROSS AND MAN DESIGN"

trademarks and the Respondent-Applicant's applied mark, the manifests similarity is

the use of a cross or plus design. This notwithstanding, the Adjudication Officer finds

that likelihood of confusion, mistake or deception does not exist. Firstly, the

Respondent-Applicant's cross device is accompanied by the letters "OSI" and the

word "OSI ORGANIZACION SANITAS INTERNACIONAL", none of which is present in

the Opposer's mark. Secondly, the figures of the cross or plus design are distinctive

from each other. The Opposer's "CROSS DESIGN" and "CROSS AND MAN DESIGN"

marks both include a pie-shaped design cut into a figure of a man inside the cross or

plus design. On the other hand, the Respondent-Applicant's cross or plus logo looks

cut slanted in half, the cut portion of which is separated by an S-shaped or wave-like

space. Thirdly, the symbol of a cross or plus is commonly used in hospitals, medicine

and other health-related services. In fact, the Trademark Registry of this Office

reveals several other trademarks involving health insurance, medical and hospital

services appropriating a cross or plus design such as:

7 Etepha A.G. vs. Director of Patents, G.R. No. L-20635, 31 March 1966.

FVXCIFIC

■HriHfe HEALTH CARE. INC

Reg. No. 4-2016-001447

Reg. No. 4-2013-15168

©MediSaveReg. No. 4-2007-007534

® MyWELLNESSINSURANCE

Reg. No. 4-2011—008317

Hence, similarity in this aspect alone is not enough to prevent a junior user

registration of its mark provided that the later mark is endowed with other

distinguishing features and characteristics such as that of the Respondent-

Applicant's.

Moreover, the products and/or services covered by the competing marks are

not inexpensive items such that they can easily be confused with that of

Respondent-Applicant's. The target market consists of discerning consumers h

making confusion, much more deception, improbable.

Furthermore, it is emphasized that the essence of trademark registration is to

give protection to the owners of trademarks. The function of a trademark is to point

out distinctly the origin or ownership of the goods to which it is affixed; to secure to

him who has been instrumental in bringing into the market a superior article of

merchandise, the fruit of his industry and skill; to assure the public that they are

procuring the genuine article; to prevent fraud and imposition; and to protect the

manufacturer against substitution and sale of an inferior and different article as his

product.8 Based on the foregoing discussion, the Respondent-Applicant's mark metthis function.

WHEREFORE, premises considered, the instant opposition is hereby

DISMISSED. Let the filewrapper of Trademark Application Serial No. 4-2015-

505953 be returned, together with a copy of this Decision, to the Bureau of

Trademarks for information and appropriate action.

SO ORDERED.

TaguigCity, 22 MAR 20J8

ATTY. Z'SA MlAY Bit SUBEJANO-PE LIM

Adjudication Officer

Bureau of Legal Affairs

8 Pribhdas J. Mirpuri vs. Court of Appeals, G.R. No. 114508, 19 November 1999.