Mirpuri vs CA, GR No.

114508, 19 November 1999, 318 SCRA 516

FACT: Lolita Escobar applied with the Bureau of Patents for the registration of the
trademark Barbizon, alleging that she had been manufacturing and selling these
products since 1970. private respondent Barbizon Corp opposed the application in
IPC No. 686. The Bureau granted the application and a certificate of registration was
issued for the trademark Barbizon. Escobar later assigned all her rights and
interest over the trademark to petitioner Mirpuri. In 1979, Escobar failed to file with
the Bureau the Affidavit of Use of the trademark. Due to his failure, the Bureau
cancelled the certificate of registration. Escobar reapplied and Mirpuri also applied
and this application was also opposed by private respondent in IPC No. 2049,
claiming that it adopted said trademark in 1933 and has been using it. It obtained a
certificate from the US Patent Office in 1934. Then in 1991, DTI cancelled
petitioners registration and declared private respondent the owner and prior user of
the business name Barbizon International.
ISSUE
Whether or not the treaty (Paris Convention) affords protection to a foreign
corporation against a Philippine applicant for the registration of a similar trademark.
HELD
The Court held in the affirmative. RA 8293 defines trademark as any visible
sign capable of distinguishing goods. The Paris Convention is a multilateral treaty
that seeks to protect industrial property consisting of patents, utility models,
industrial designs, trademarks, service marks, trade names and indications of
source or appellations of origin, and at the same time aims to repress unfair
competition. In short, foreign nationals are to be given the same treatment in each
of the member countries as that country makes available to its own citizens.
Nationals of the various member nations are thus assured of a certain minimum of
international protection of their industrial property.
Abercrombie & Fitch Co. v. Hunting World
In United States trademark law, Abercrombie & Fitch Co. v. Hunting World 537 F.2d 4
(2nd Cir. 1976) established the spectrum of trademark distinctiveness in the US,
breaking trademarks into classes which are accorded differing degrees of
protection. Courts often speak of marks falling along the following "spectrum of
distinctiveness," also known within the US as the "Abercrombie classification" or
"Abercrombie factors".
The spectrum of distinctiveness[edit]
The Abercrombie court determined that descriptive words can get trademark
protection if they develop a secondary meaning. The protection only exists for
source-designating uses of the word, not descriptive or generic uses of the word.

Fanciful marks[edit]
A fanciful / inherently distinctive trademark is prima facie registrable, and comprises
an entirely invented or "fanciful" sign. For example, "Kodak" had no meaning before
it was adopted and used as a trademark in relation to goods, whether photographic
goods or otherwise. Invented marks are neologisms which will not previously have
been found in any dictionary.

Arbitrary marks[edit]
An arbitrary trademark is usually a common word which is used in a meaningless
context (e.g. "Apple" for computers). Such marks consist of words or images which
have some dictionary meaning before being adopted as trademarks, but which are
used in connection with products or services unrelated to that dictionary meaning.
Arbitrary marks are also immediately eligible for registration. Salty would be an
arbitrary mark if it used in connection with e.g. telephones such as in Salty
Telephones, as the term "salt" has no particular connection with such products.
Suggestive marks[edit]
A suggestive trademark tends to indicate the nature, quality, or a characteristic of
the products or services in relation to which it is used, but does not describe this
characteristic, and requires imagination on the part of the consumer to identify the
characteristic. Suggestive marks invoke the consumers perceptive imagination. An
example of a suggestive mark is Blu-ray, a new technology of high-capacity data
storage.
Descriptive marks[edit]
A descriptive mark is a term with a dictionary meaning which is used in connection
with products or services directly related to that meaning. An example might be
Salty used in connection with saltine crackers or anchovies. Such terms are not
registrable unless it can be shown that distinctive character has been established in
the term through extensive use in the marketplace (see further below). Lektronic
was famously refused protection by the USPTO on ground of being descriptive for
electronic goods.
Generic terms[edit]
A generic term is the common name for the products or services in connection with
which it is used, such as "salt" when used in connection with sodium chloride. A
generic term is not capable of serving the essential trademark function of
distinguishing the products or services of a business from the products or services

of other businesses, and therefore cannot be afforded any legal protection. This is
because there has to be some term which may generally be used by anyone
including other manufacturersto refer to a product without using some
organization's proprietary trademark. Marks which become generic after losing
distinctive character are known as genericized trademarks.
Ang v. Teodoro
G.R. No. L-48226
December 14, 1942
Facts:
Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trademark and as a trade-name, in the manufacture and sale of slippers, shoes, and
indoor baseballs since 1910. On September 29, 1915, he formally registered it as
trade-mark and as trade-name on January 3, 1933.
Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts
on April 11, 1932, and established a factory for the manufacture of said articles in
the year 1937.
The Court of First Instance of Manila absolved the defendant (Ms. Ang) on the
grounds that the two trademarks are dissimilar and are used on different and noncompeting goods; that there had been no exclusive use of the trade-mark by the
plaintiff; and that there had been no fraud in the use of the said trade-mark by the
defendant because the goods on which it is used are essentially different from those
of the plaintiff.
The Court of Appeals reversed said judgment, directing the Director of Commerce to
cancel the registration of the trade-mark "Ang Tibay" in favor of petitioner, and
perpetually enjoining the latter from using said trade-mark on goods manufactured
and sold by her.
Thus, this case, a petition for certiorari.
Issue:
Are the goods or articles or which the two trademarks are used similar or belong to
the same class of merchandise?
Ruling:
Yes, pants and shirts are goods closely similar to shoes and slippers. They belong to
the same class of merchandise as shoes and slippers. They are closely related
goods.

The Supreme Court affirmed the judgment of the Court of Appeals and added that
although two non-competing articles may be classified under to 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 trademarks
would be likely to cause confusion as to the origin, or personal source, of the second
users 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 that the first user made the second users goods.