G.R. No.

L-48226

December 14, 1942

ANA
vs.
TORIBIO TEODORO, respondent.

L.

ANG, petitioner,

In the present state of development of the law on Trade-Marks, Unfair Competition, and
Unfair Trading, the test employed by the courts to determine whether noncompeting goods
are or are not of the same class is confusion as to the origin of the goods of the second
user. Although two noncompeting articles may be classified under two different classes by
the Patent Office because they are deemed not to possess the same descriptive properties,
they would, nevertheless, be held by the courts to belong to the same class if the
simultaneous use on them of identical or closely similar trade-marks would be likely to
cause confusion as to the origin, or personal source, of the second user's goods. They
would be considered as not falling under the same class only if they are so dissimilar or so
foreign to each other as to make it unlikely that the purchaser would think the first user
made the second user's goods.
Such construction of the law is induced by cogent reasons of equity and fair dealing. The
courts have come to realize that there can be unfair competition or unfair trading even if
the goods are non-competing, and that such unfair trading can cause injury or damage to
the first user of a given trade-mark, first, by prevention of the natural expansion of his
business and, second, by having his business reputation confused with and put at the
mercy of the second user. Then noncompetitive products are sold under the same mark, the
gradual whittling away or dispersion of the identity and hold upon the public mind of the
mark created by its first user, inevitably results. The original owner is entitled to the
preservation of the valuable link between him and the public that has been created by his
ingenuity and the merit of his wares or services. Experience has demonstrated that when a
well-known trade-mark is adopted by another even for a totally different class of goods, it is
done to get the benefit of the reputation and advertisements of the originator of said mark,
to convey to the public a false impression of some supposed connection between the
manufacturer of the article sold under the original mark and the new articles being
tendered to the public under the same or similar mark. As trade has developed and
commercial changes have come about, the law of unfair competition has expanded to keep
pace with the times and the element of strict competition in itself has ceased to be the
determining factor. The owner of a trade-mark or trade-name has a property right in which
he is entitled to protection, since there is damage to him from confusion of reputation or
goodwill in the mind of the public as well as from confusion of goods. The modern trend is
to give emphasis to the unfairness of the acts and to classify and treat the issue as a fraud.
Emerald Garment vs Court of Appeals (G.R. 100098 December 29, 1995)
More crucial is the issue of confusing similarity between the two trademarks. Petitioner
vehemently contends that its trademark "STYLISTIC MR. LEE" is entirely different from
and not confusingly similar to private respondent's "LEE" trademark.
Holistic Test

Applying the foregoing tenets to the present controversy and taking into account the
factual circumstances of this case, we considered the trademarks involved as a whole and
rule that petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private
respondent's "LEE" trademark.
Petitioner's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word
"LEE" is prominent, the trademark should be considered as a whole and not piecemeal. The
dissimilarities between the two marks become conspicuous, noticeable and substantial
enough to matter especially in the light of the following variables that must be factored in.
First, the products involved in the case at bar are, in the main, various kinds of jeans.
These are not your ordinary household items like catsup, soysauce or soap which are of
minimal cost. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is
predisposed to be more cautious and discriminating in and would prefer to mull over his
purchase. Confusion and deception, then, is less likely. In Del Monte Corporation v. Court
of Appeals, 34 we noted that:
. . . Among these, what essentially determines the attitudes of the purchaser,
specifically his inclination to be cautious, is the cost of the goods. To be sure,
a person who buys a box of candies will not exercise as much care as one
who buys an expensive watch. As a general rule, an ordinary buyer does not
exercise as much prudence in buying an article for which he pays a few
centavos as he does in purchasing a more valuable thing. Expensive and
valuable items are normally bought only after deliberate, comparative and
analytical investigation. But mass products, low priced articles in wide use,
and matters of everyday purchase requiring frequent replacement are
bought
by
the
casual
consumer
without
great
care. . . .
Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He
does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even
an Armani. He is, therefore, more or less knowledgeable and familiar with his preference
and will not easily be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the "ordinary
purchaser." Cast in this particular controversy, the ordinary purchaser is not the
"completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type
of product involved.
Asia Brewery vs Court of Appeals
Infringement is determined by a test of dominancy. If the competing trademark contains
the main or essential or dominant features of another and confusion and deception is likely
to result, infringement takes place. A closer look at the trademark of both companies will
show that the dominant features of each absolutely bear no similarity to each other. SMCs
dominant trademark is the name of the product, San Miguel Pale Pilsen written in white
Gothic letters with elaborate serifs at the beginning and end of the letters S and M on

an amber background while ABIs is the name Beer Pale Pilsen with the word Beer
written in large amber letters, larger than any of the letter found in SMC label.

The word pale pilsen on ABIs trademark does not constitute trademark infringement for
it is a generic word descriptive of the color of a type of beer. No one may appropriate
generic or descriptive words for they belong to the public domain.

ABI is likewise not guilty of unfair competition for unfair competition is the employment of
deception or any other means contrary to good faith by which a person shall pass off the
goods manufactured by him for those of another who has already established goodwill for
his similar goods. The universal test for this is whether the public is likely to be deceived.
Actual or probable deception and confusion on the part of the customers by reason of
defendants practices must appear. However, this is unlikely to happen in the case at bar
for consumers generally order beer by brand. Also, the fact that ABI also uses ambercolored steinie bottles cannot constitute unfair competition for ABI did not copy SMCs
bottle. SMC did not invent but merely borrowed the steinie bottle from abroad. Likewise,
amber is the most effective color in preventing transmission of light thus providing
maximum protection to beer. 320 ml is likewise the standard prescribed under Metrication
Circular No. 778. The fact that it is the first to use the steinie bottle does not give SMC a
vested right to use it to the exclusion of everyone else. Nobody can acquire any exclusive
right to market articles supplying the simple human needs in containers or wrappers of the
general form, size and character commonly and immediately used in marketing such
articles.

There is no confusing similarity between the competing beers therefore ABI neither
infringed SMCs trademark nor did it commit unfair competition.

Lim Hoa vs Director of Patents

Dominancy Test
We do not see why applicant could not have stretched his imagination even a little and
extended his choice to other members of the animal kingdom, as a brand to differentiate
his product from similar products in the market. In a similar case decided by this Tribunal
wherein, although one brand consisting of the representation of a rooster was already
being used by one party, another party wanted to register a similar brand, consisting of two
roosters on a similar product, namely, candy, this Court said:chanroblesvirtuallawlibrary
Counsel for Defendant insists that there is no real resemblance between a picture of one
rooster and a picture of two roosters; chan roblesvirtualawlibrarythat no person could or
would be deceived by the use by the Defendant of a trade-mark wholly distinct from that of
the Plaintif; chan roblesvirtualawlibrarythat the fact that the Defendant used two roosters
as its trademark clearly discloses its innocence of any intent to deceive, since a comparison
of the trade-mark of the Plaintif with that of theDefendant makes apparent at once that
was not intended to be an imitation of the other.

We ask, however, why, with all the birds in the air, and all the fishes in the sea, and all the
animals on the face of the earth to chose from, the Defendant company selected two
roosters as its trade- mark, although its directors, and managers must have been well
aware of the long-continued use of a rooster by the Plaintif in connection with the sale and
advertisement of his goods?
Marvex Commeecial vs Petra Hawoia
It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly
similar in sound.
Both these words have the same suffix, "PAS", which is used to denote a plaster that
adheres to the body with curative powers. "Pas, being merely descriptive, furnishes no
indication of the origin of the article and therefore is open for appropriation by anyone
(Ethepa vs. Director of Patents, L-20635, March 31, 1966) and may properly become the
subject of a trademark by combination with another word or phrase.
Two letters of "SALONPAS" are missing in "LIONPAS"; the first letter a and the letter s. Be
that as it may, when the two words are pronounced, the sound effects are confusingly
similar. And where goods are advertised over the radio, similarity in sound is of especial
significance (Co Tiong Sa vs. Director of Patents, 95 Phil. 1 citing Nims, The Law of Unfair
Competition and Trademarks, 4th ed., vol. 2, pp. 678-679). "The importance of this rule is
emphasized by the increase of radio advertising in which we are deprived of help of our
eyes and must depend entirely on the ear" (Operators, Inc. vs. Director of Patents, supra).
The following random list of confusingly similar sounds in the matter of trademarks, culled
from Nims, Unfair Competition and Trade Marks, 1947, vol. 1, will reinforce our view that
"SALONPAS" and "LIONPAS" are confusingly similar in sound: "Gold Dust" and "Gold
Drop"; "Jantzen" and "Jazz-Sea"; "Silver Flash" and "Supper-Flash"; "Cascarete" and
"Celborite"; "Celluloid" and "Cellonite"; "Chartreuse" and "Charseurs"; "Cutex" and
"Cuticlean"; "Hebe" and "Meje"; "Kotex" and "Femetex"; "Zuso" and "Hoo Hoo". Leon
Amdur, in his book "TradeMark Law and Practice", pp. 419-421, cites, as coming within the
purview of the idem sonans rule, "Yusea" and "U-C-A", "Steinway Pianos" and "Steinberg
Pianos", and "Seven-Up" and "Lemon-Up". In Co Tiong vs. Director of Patents, this Court
unequivocally said that "Celdura" and "Cordura" are confusingly similar in sound; this
Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the name "Lusolin" is an
infringement of the trademark "Sapolin", as the sound of the two names is almost the same.
In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike.
Similarity of sound is sufficient ground for this Court to rule that the two marks are
confusingly similar when applied to merchandise of the same descriptive properties (see
Celanese Corporation of America vs. E. I. Du Pont, 154 F. 2d. 146, 148).
The registration of "LIONPAS" cannot therefore be given due course.

Sta. Ana vs Maliwat

Flormann vs. FLORMEN
Modern law recognizes that the protection to which the owner of a trademark mark is
entitled is not limited to guarding his goods or business from actual market competition
with identical or similar products of the parties, but extends to all cases in which the use by
a junior appropriator of a trademark or tradename is likely to lead to a confusion of source,
as where prospective purchasers would be misled into thinking that the complaining party
has extended his business into the field (see 148 ALR 56 et seq; 52 Am. Jur. 576) or is in
any way connected with the activities of the infringer; or when it forestalls the normal
potential expansion of his business (v. 148 ALR, 77, 84; 52 Am. Jur. 576, 577). It is on this
basis that the respondent Director of Patents adverted to the practice "among local tailors
and haberdashers to branch out into articles of manufacture which have some direct
relationship" . . . "to garments or attire to complete one's wardrobe". Mere dissimilarity of
goods should not preclude relief where the junior user's goods are not too different or
remote from any that the owner would be likely to make or sell; and in the present case,
wearing apparel is not so far removed from shoes as to preclude relief, any more than the
pancake flour is from syrup or sugar cream (Aunt Jemima Mills Co. vs. Rigney & Co., LRA
1918 C 1039), or baking powder from baking soda (Layton Pure Food Co. vs. Church & Co.,
182 Fed. 35), or cosmetics and toilet goods from ladies' wearing apparel and costume
jewelry (Lady Esther Ltd. vs. Lady Esther Corset Shoppe, 148 ALR 6). More specifically,
manufacturers of men's clothing were declared entitled to protection against the use of
their trademark in the sale of hats and caps [Rosenberg Bros. vs. Elliott, 7 Fed. (2d) 962]
and of ladies shoes (Forsythe & Co. vs. Forsythe Shoe Corp., 254 NYS 584). In all these
cases, the courts declared the owner of a trademark from the first named goods entitled to
exclude use of its trademark on the related class of goods above-referred to.
Note that the provision does not require that the articles of manufacture of the previous
user and the late user of the mark should possess the same descriptive properties or should
fall into the same categories as to bar the latter from registering his mark in the principal
register (Chua Che vs. Phil. Patent Office, et al., L-18337, 30 Jan. 1965. 4 citing Application
of Sylvan Sweets Co., 205 F. 2nd, 207). 5 Therefore, whether or not shirts and shoes have
the same descriptive properties, or whether or not it is the prevailing practice or the
tendency of tailors and haberdashers to expand their business into shoes making, are not
controlling. The meat of the matter is the likelihood of confusion, mistake or deception
upon purchasers of the goods of the junior user of the mark and the goods manufactured by
the previous user. Here, the resemblance or similarity of the mark FLORMANN and the
name FLORMEN and the likelihood of confusion, one to the other, is admitted; therefore,
the prior adopter, respondent Maliwat, has the better right to the use of the mark.
.Acoje Mining Corporation vs Director of Patents
Soy Sauce vs Edible Oil
The decisive test as to whether an application for a trademark should be affirmatively acted
upon or not is clearly set forth in the decision already referred to, promulgated barely a
year ago. In the language of Justice J. B. L. Reyes, who spoke for the Court in American

Wire & Cable Co. v. Director of Patents: 4 "It is clear from the above-quoted provision that
the determinative factor in a contest involving registration of trade mark is not whether the
challenging mark would actually cause confusion or deception of the purchasers but
whether the use of such mark would likely cause confusion or mistake on the part of the
buying public. In short, to constitute an infringement of an existing trade-mark patent and
warrant a denial of an application for registration, the law does not require that the
competing trademarks must be so identical as to produce actual error or mistake; it would
be sufficient, for purposes of the law, that the similarity between the two labels, is such that
there is a possibility or likelihood of the purchaser of the older brand mistaking the newer
brand for it." 5 Can it be said then that petitioner's application would be likely to cause
confusion or mistake on the part of the buying public? The answer should be in the
negative. It does not defy common sense to assert that a purchaser would be cognizant of
the product he is buying. There is quite difference between soy sauce and edible oil. If one
is in the market for the former, he is not likely to purchase the latter just because of the
trademark LOTUS. Even on the rare occasions that a mistake does occur, it can easily be
rectified. Moreover, there is no denying that the possibility of confusion is remote
considering the difference in the type used, the coloring, the petitioner's trademark being
in yellow and red while that of the Philippine Refining Company being in green and yellow,
and the much smaller size of petitioner's trademark. When regard is had for the principle
that the two trademarks in their entirety as they appear in their respective labels should be
considered in relation to the goods advertised before registration could be denied, the
conclusion is inescapable that respondent Director ought to have reached a different
conclusion. Petitioner has successfully made out a case for registration. 6
ESSO Standard vs Court of Appeals
The petitioner Esso Standard is a foreign corporation duly licensed to do business in the
philippines. it is engaged in the sale of petroleum products which are identified by the
trademarl 'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered as a business
name with the Bureau of Commerce in 1962. United Cigarette is a domestic corporation
engaged in the manufacture and sale of cigarettes. it acquired the business from La
Oriental Tobacco Corp including patent rights, once of which is the use of 'Esso' on its
cigarettes.
The petitioner filed a trademark infringement case alleging that it acquired goodwill to
such an extent that the buying public would be deceived as ti the quality and origin of the
said products to the detriment and disadvantage of its own products. The lower court found
United Cigarette guilty of infringement. Upon appeal, the Court of Appeals ruled that there
was no infringment in this case.
Issue: Is there infringement committed?
Ruling: NONE. Infringement is defined by law as the use without the consent of the
trademark owner of any reproduction, counterfeit, copy or colorable imitation of any
registered mark or tradename which would likely cause confusion or mistake or deceive
purchasers or others as to the source or origin of such goods.
The products of both parties (Petroleum and cigarettes) are non-competing. But as to
whether trademark infringement exists depend on whether or not the goods are so related
that the public may be or is actually deceived and misled that they come from the same
maker. Under the Related Goods Theory, goods are related when they belong to the same
class or have the same descriptive properties or when they have same physical attributes.
In these case, the goods are absolutely different and are so foreign from each other it

would be unlikely for purchasers to think that they came from the same source. Moreover,
the goods flow from different channels of trade and are evidently different in kind and
nature.
Sterling Products International vs Farbenfabriken Bayer
Facts: The Bayer Cross in circle trademark was registered in Germany in 1904 to
Farbenfabriken vorm. Friedr. Bayer (FFB), successor to the original Friedr. Bauyer et.
Comp., and predecessor to Farbenfabriken Bayer aktiengessel craft (FB2). The Bayer, and
Bayer Cross in circle trademarks were acquired by sterling Drug Inc. when it acquired
FFBs subsidiary Bayer Co. of New York as a result of the sequestration of its assets by the
US Alien Property Custodian during World War I. Bayer products have been known in
Philippines by the close of the 19th century. Sterling Drugs, Inc., however, owns the
trademarks Bayer in relation to medicine. FBA attempted to register its chemical
products with the Bayer Cross in circle trademarks. Sterling Products International and
FBA seek to exclude each other from use of the trademarks in the Philippines. The trial
court sustained SPIs right to use the Bayer trademark for medicines and directed FBA to
add distinctive word(s) in their mark to indicate their products come from Germany. Both
appealed. Issue: Whether SPIs ownership of the trademarks extends to products not
related to medicine. Held: No. SPIs certificates of registration as to the Bayer trademarks
registered in the Philippines cover medicines only. Nothing in the certificates include
chemicals or insecticides. SPI thus may not claim first use of the trademarks prior to the
registrations thereof on any product other than medicines. For if otherwise held, a situation
may arise whereby an applicant may be tempte3d to register a trademark on any and all
goods which his mind may conceive even if he had never intended to use the trademark for
the said goods. Omnibus registration is not contemplated by the Trademark Law. The net
result of the decision is that SPI may hold on its Bayer trademark for medicines and FBA
may continue using the same trademarks for insecticide and other chemicals, not medicine.
The formula fashioned by the lower court avoids the mischief of confusion of origin, and
does not visit FBA with reprobation and condemnation. A statement that its product came
from Germany anyhow is but a statement of fact.
Prosource International vs Horphag Research
Respondent is a corporation and owner of trademark PYCNOGENOL, a food. Respondent later
discovered that petitioner was also distributing a similar food supplement using the mark PCO-GENOLS
since 1996. This prompted respondent to demand that petitioner cease and desist from using the
aforesaid mark.
Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary Injunction
against petitioner, in using the name PCO-GENOLS for being confusingly similar. Petitioner appealed
otherwise.
The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS have the same
suffix "GENOL" which appears to be merely descriptive and thus open for trademark registration by
combining it with other words and concluded that the marks, when read, sound similar, and thus
confusingly similar especially since they both refer to food supplements.
On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court explained
that under the Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL.
ISSUE: Whether the names are confusingly similar.
RULING:

Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two test to prove
such.
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks
that might cause confusion and deception, thus constituting infringement. If the competing trademark
contains the main, essential and dominant features of another, and confusion or deception is likely to
result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate. The question is whether the use of the marks
involved is likely to cause confusion or mistake in the mind of the public or to deceive purchasers.
Courts will consider more the aural and visual impressions created by the marks in the public mind,
giving little weight to factors like prices, quality, sales outlets, and market segments.
The Holistic Test entails a consideration of the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing similarity. Not only on the predominant
words should be the focus but also on the other features appearing on both labels in order that the
observer may draw his conclusion whether one is confusingly similar to the other.
SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which on evidence,
appears to be merely descriptive and furnish no indication of the origin of the article and hence, open
for trademark registration by the plaintiff through combination with another word or phrase. When the
two words are pronounced, the sound effects are confusingly similar not to mention that they are both
described by their manufacturers as a food supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the trademark due to the type of letters used as
well as the size, color and design employed on their individual packages/bottles, still the close
relationship of the competing products name in sounds as they were pronounced, clearly indicates
that purchasers could be misled into believing that they are the same and/or originates from a common
source and manufacturer.