INFRINGEMENT OF TRADEMARK Asia Brewery, Inc. vs. CA and San Miguel Corp G.R. No.

103543 July 5, 1993 Facts: San Miguel Corp(SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and unfair competition on account of ABIs BEER PALE PILSEN label or design in a case; San Miguel Corp vs. Asia Brewery, Civ. Case No. 56390, where the said complaint was dismissed by RTC. Upon appeal to the CA, SMC got a favorable judgment as the RTCs decision was reversed and found ABI guilty of infringement of trademark and unfair competition. Hence, ABI filed a petition for certiorari. Issue: Whether ABIs BEER PALE PILSEN label or design infringe upon SMCs SAN MIGUEL PALE PILSEN. Held: No, ABIs BEER PALE PILSEN label or design does not infringe that of SMCs SAN MIGUEL PALE PILSEN. a. AS TO DOMINANT FEATURE OF TRADEMARK: The word BEER does not appear in SMCs trademark, just as the words SAN MIGUEL do not appear in ABIs trademark. Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC proving otherwise. b. AS TO TRADEMARK: The fact that the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. No one may appropriate generic or descriptive words as they belong to the public domain. c. AS TO BOTTLE: The steinie bottle is a standard bottle for beer and is universally used. SMC did not invent it nor patent it. The fact that SMC's bottle is registered under R.A. No. 623 (as amended by RA 5700, An Act to Regulate the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels and Other Similar Containers) simply prohibits manufacturers of other foodstuffs from the unauthorized use of SMC's bottles by refilling these with their products. It was not uncommon then for products such as patis (fish sauce) and toyo (soy sauce) to be sold in recycled SAN MIGUEL PALE PILSEN bottles. Registration of SMC's

beer bottles did not give SMC a patent on the steinie or on bottles of similar size, shape or color. No one can have a monopoly of the color amber for bottles, nor of white for labels, nor of the rectangular shape which is the usual configuration of labels. Needless to say, the shape of the bottle and of the label is unimportant. What is all important is the name of the product written on the label of the bottle for that is how one beer may be distinguished from the others. There is no confusing similarity between the competing beers for the name of one is "SAN MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity between the two outnumber their points of similarity.

Mead Johnson and Co. vs. N.V.J. Van Dorp, LTD. G. R. No. L-17501 April 27, 1963 Facts: Mead Johnson & Comp., owner of the trademark ALACTA and a corporation organized under the laws of Indiana, U.S.A. filed an opposition to the application for registration of trademark ALASKA and pictorial representation of Boys Head within a rectangular design by N.V.J. Van Dorp. Mead Johnson & Co. averred that the latters trademark which is ALASKA is confusingly similar to ALACTA. Consequently, the Director of Patent Office dismissed the opposition and hold that the trademark of N.V.J. Van Dorp does not sufficiently resemble Mead Johnson & CO.s mark. Thus, Mead Johnson & Co. filed petition for review contending that trademarks ALASKA and ALACTA in appearance and sound are sufficiently close. Issue: Whether or not the ALASKA is confusingly similar to ALACTA which made N.V.J. Van Dorp appeared to be infringing the trademark of Mead Johnson & Co.. Held: No, N.V.J. Van Dorp does not infringe the trademark of Mead Johnson & Co..

It is true that between Mead Johnson & Co.s trademark "ALACTA" and N.V.J. Van Dorps "ALASKA" there are similarities in spelling, appearance and sound for both are composed of six letters of three syllables each and each syllable has the same vowel, but in determining if they are confusingly similar a comparison of said words is not the only determinant factor. The trademarks in their entirety as they appear in the respective labels must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in

order that he may draw his conclusion whether one is confusingly similar to the other.

E. Spinner & Co. vs. Neuss Hesslein Corp. G.R. No. L-31380 Jan. 13, 1930 Facts: After American occupation, E. Spinner & Co.s began exporting Khaki cloth into the Philippines and because of the superior qualities of Khaki indicated as Wigan, it made a favorable impression in the Philippine market. The word Wigan was later incorporated as an integral part of the registered trademark of E. Spinner & Co.. On the other hand, after Neuss Heisslein Corp. had assumed the agency in the Philippine Islands for the products of the New York house, the manger of the latter, at the request of Chinese customers, began to give orders to the New York house for the printing of the word "Wigan" conspicuously upon the bolts of khaki intended for sale in Philippine Islands; and in the latter part of 1923 or in the early part of the year 1924, the Neuss Heisslein Corp.s khaki began to be marketed in the Philippines with the word "Wigan" thereon. E. Spinner & Co. Filed an action for purpose of restraining Neuss Hesslein Corp. from using the word Wigan as applied to Khaki textile sold by latter in the Philippines but the trial court absolved the Neuss Hesslein Corp. from the complaint wih costs against E. Spinner & Co, thus, the latter appealed. Issue: Whether the appropriation of the word Wigan by Neuss Heisslein Corp. constitute infringement of trademark of E. Spinner and Co.. Held: The appropriation by the defendant of the word "Wigan" for use in the sale of its khaki did not constitute a violation of trade-mark prior to April, 1925, when the word "Wigan" was first incorporated in the plaintiff's registered trade-mark; but after that date it was certainly illegal for the defendant to use the word "Wigan" stamped upon the khaki sold by it; and this act was an infringement of trade-mark right. However, the plaintiff is entitled to an injunction for the purpose of restraining the defendant from using the word "Wigan" upon the bolts of khaki sold by it, whether the wrongful act of the defendant be considered as an act of unfair competition or as an infringement of the trade-mark registered by the plaintiff in April, 1925. The designation of name, quality, or description, as used in the statute, has reference to linguistic terms in common use. In words of this character no particular manufacturer can acquire an exclusive property right. Again, it will be noted that, although "Wigan," being the name of a town, was an original geographical term, it is not used upon the plaintiff's khaki to indicate the geographical place of production of the product. Even geographical terms can be used in an arbitrary and artificial sense, and when so used by one manufacturer the improper

appropriation of the same term by another may be enjoined as an invasion of trade-mark right. Of course, if the defendant were manufacturing its khaki in the town of "Wigan," it would be entitled to use that name to indicate the place of manufacture of its goods. But such is not the case here.