IV. The Law on Trademarks, Service Marks and Trade Names (Read Secs.

121
to 170 of RA 8293)

a. Purpose of the Trademark Law

Case:

Philip Morris Inc. v. Fortune Tobacco Corp., G.R. No. 158589, June 27, 2006.
1 http://sc.judiciary.gov.ph/jurisprudence/2006/june2006/G.R.%20No.%2015858
9.htm

Philip Morris, Inc., is registered owner of the trademark MARK VII; its subsidiaries owned MARK
TEN and LARK, for cigarettes.

Fortune Tobacco Corporation, manufactures and sells cigarettes using the trademark MARK.

Philip Morris would insist on their thesis of infringement since Fortunes mark MARK for cigarettes
is confusingly or deceptively similar with MARK VII, MARK TEN and LARK.

Fortune Maintains, the registration of trademark cannot be deemed conclusive as to the actual use
of such trademark in local commerce. As it were, registration does not confer upon the registrant an
absolute right to the registered mark. The certificate of registration merely constitutes prima facie
evidence that the registrant is the owner of the registered mark.

W/N there was infringement?

NO. Trademarks, (MARK VII, MARK TEN and LARK) do not qualify as well-known marks entitled to
protection even without the benefit of actual use in the local market and that the similarities in the
trademarks in question are insufficient as to cause deception or confusion tantamount to
infringement.

A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt in by others.

The protection of trademarks is the laws recognition of the psychological function of symbols. If it is
true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a
merchandising short-cut which induces a purchaser to select what he wants, or what he has been
led to believe what he wants. The owner of a mark exploits this human propensity by making every
effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol.
Whatever the means employed, the aim is the same - to convey through the mark, in the minds of
potential customers, the desirability of the commodity upon which it appears. Once this is attained,
the trade-mark owner has something of value. If another poaches upon the commercial magnetism
of the symbol he has created, the owner can obtain legal redress.

b. Definitions of marks, collective marks, trade names (Sec. 121)

*Memorize

Sec. 121. Definitions. - As used in Part III, the following terms have the
following meanings:

1838 //nazh
 121.1. "Mark" means any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods; (Sec. 38, R. A. No. 166a)

121.2. "Collective mark" means any visible sign designated as such in the
application for registration and capable of distinguishing the origin or any
other common characteristic, including the quality of goods or services of
different enterprises which use the sign under the control of the registered
owner of the collective mark; (Sec. 40, R. A. No. 166a)

121.3. "Trade name" means the name or designation identifying or

distinguishing an enterprise; (Sec. 38, R. A. No. 166a)

121.4. "Bureau" means the Bureau of Trademarks;

121.5. "Director" means the Director of Trademarks;

121.6. "Regulations" means the Rules of Practice in Trademarks and

Service Marks formulated by the Director of Trademarks and approved by
the Director General; and

121.7. "Examiner" means the trademark examiner. (Sec. 38, R. A. No.

166a)

Sec. 122. How Marks are Acquired. - The rights in a mark shall be
acquired through registration made validly in accordance with the
provisions of this law.

Case:

2 Mirpuri vs CA, GR No. 114508, 19 November 1999.

http://sc.judiciary.gov.ph/jurisprudence/1999/nov99/114508.htm

Lolita Escobar applied for the registration of the trademark Barbizon for her products such as
brassieres and ladies undergarments.

Barbizon Corporation, an foreign corporation, opposed alleging that Escobars mark is confusingly
similar to its own trademark Barbizon.

Escobars application was given due course and her trademark was registered.

Later, Escobar assigned all her rights to petitioner Mirpuri who failed to file an Affidavit of Use
resulting in the cancellation of the trademark.

Mirpuri then applied for registration of the trademark to which the Corporation again opposed, now
invoking the protection under Article 6bis of the Paris Convention.

The Director of Patents declaring the Corporations opposition was already barred, petitioners
application was given due course.

CA reversed the judgment.

1838 //nazh
W/N the treaty (Paris Convention) affords protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark.

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.

Berris Agricultural Co., Inc. v. Norby Abyadang, G.R. No. 183404, October 13,
3 2010
http://sc.judiciary.gov.ph/jurisprudence/2010/october2010/183404.htm

Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in
connection with Fungicide.

Berris Agricultural Co., Inc. filed an opposition against the trademark citing that it is confusingly
similar with their trademark, "D-10 80 WP" which is also used for Fungicide also with the same active
ingredient.

The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of Abyadang.

W/N there is confusing similarity between the trademarks?

Yes. The SC found that both products have the component D-10 as their ingredient and that it is the
dominant feature in both their marks.

R.A. No. 8293 defines a mark as any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked container of goods.

It also defines a collective mark as any visible sign designated as such in the application for
registration and capable of distinguishing the origin or any other common characteristic, including
the quality of goods or services of different enterprises which use the sign under the control of the
registered owner of the collective mark.

On the other hand, R.A. No. 166 defines a trademark as any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or
merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by
another.

A trademark, being a special property, is afforded protection by law. But for one to enjoy this legal
protection, legal protection ownership of the trademark should rightly be established.

The ownership of a trademark is acquired by its registration and its actual use by the manufacturer
or distributor of the goods made available to the purchasing public.

1838 //nazh
Canon Kabushiki Kaisha v. CA, G.R. No. 120900, July 20, 2000.

4 http://sc.judiciary.gov.ph/jurisprudence/2000/july2000/120900.htm

NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in the
Bureau of Patents, Trademarks, and Technology Transfer (BPTTT).

Kaisha from Japan, owner of the trademark "CANON" for its paints and other similar chemical
products, filed a Verified Notice of Opposition, alleging that it will be damaged by the registration of
NSR.

BPTTT issued its decision dismissing the opposition and giving due course to NSR's application for the
registration of the trademark CANON.

Kaisha appealed, Court of Appeals affirmed the decision.

Whether the trademark Canon filed by NSR Rubber Corporation could be registered?

YES, the companys goods are different from the products of the petitioner.

The BPTTT and the Court of Appeals share the opinion that the trademark "CANON" as used by
Kaisha for its paints, chemical products, toner, and dyestuff, can be used by NSR for its sandals
because the products of these two parties are dissimilar.

Ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled
to protect as mandated by the Trademark Law. However, when a trademark is used by a party for a
product in which the other party does not deal, the use of the same trademark on the latter's
product cannot be validly objected to.

The principle that the certificate of registration confers upon the trademark owner the exclusive
right to use its own symbol only to those goods specified in the certificate, subject to the conditions
and limitations stated therein.

The term "trademark" is defined by RA 166, the Trademark Law, as including "any word, name,
symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer or
merchant to identify his goods and distinguish them for those manufactured, sold or dealt in by
others."

Tradename is defined by the same law as including "individual names and surnames, firm names,
tradenames, devices or words used by manufacturers, industrialists, merchants, agriculturists, and
others to identify their business, vocations, or occupations; the names or titles lawfully adopted and
used by natural or juridical persons, unions, and any manufacturing, industrial, commercial,
agricultural or other organizations engaged in trade or commerce."

Simply put, a trade name refers to the business and its goodwill; a trademark refers to the goods.

1838 //nazh
 Societe des Prodults vs CA, G.R. No. 112012. April 4, 2001
5 http://www.lawphil.net/judjuris/juri2001/apr2001/gr_112012_2001.html

CFC Corporation filed with the BPTTT an application for the registration of the trademark "FLAVOR
MASTER" for instant coffee.

Societe Des Produits Nestle, S.A., (from Swiss) and Nestle Philippines, Inc., filed a Notice of Opposition,
claiming that the trademark of CFCs product is "confusingly similar to its trademarks for coffee and
coffee extracts, to wit: MASTER ROAST and MASTER BLEND."

Nestle claimed that trademark FLAVOR MASTER and its registration would likely cause confusion in
the trade; or deceive purchasers and would falsely suggest to the purchasing public a connection in
the business of Nestle, as the dominant word present in the three (3) trademarks is "MASTER"; or that
the goods of CFC might be mistaken as having originated from the latter.

CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the Nestles
trademarks, MASTER ROAST and MASTER BLEND, alleging that, "except for the word MASTER (which
cannot be exclusively appropriated by any person for being a descriptive or generic name), the other
words that are used respectively with said word in the three trademarks are very different from each
other in meaning, spelling, pronunciation, and sound".

CFC further argued that its trademark, FLAVOR MASTER, "is clearly very different from any of Nestls
alleged trademarks MASTER ROAST and MASTER BLEND, especially when the marks are viewed in their
entirety, by considering their pictorial representations, color schemes and the letters of their
respective labels."

The BPTTT denied CFCs application for registration.

Court of Appeals held that there was similarity between the trademarks.

Does CFCs trade dress bear a striking resemblance with Nestles trademarks as to create in the
purchasing publics mind the mistaken impression that both coffee products come from one and the
same source?

Yes. A trademark has been generally defined as "any word, name, symbol or device adopted and used
by a manufacturer or merchant to identify his goods and distinguish them from those manufactured
and sold by others."

The law prescribes a more stringent standard in that there should not only be confusing similarity but
that it should not likely cause confusion or mistake or deceive purchasers.

Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary
persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the
other.

In determining if colorable imitation exists, jurisprudence has developed two kinds of tests - the
Dominancy Test and the Holistic Test. The test of dominancy focuses on the similarity of the prevalent
features of the competing trademarks which might cause confusion or deception and thus constitute
infringement.

1838 //nazh
 On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question
must be considered in determining confusing similarity.

If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive household
products as instant coffee, and would therefore be "less inclined to closely examine specific details of
similarities and dissimilarities" between the two competing products, then it would be less likely for
the ordinary purchaser to notice that CFCs trademark FLAVOR MASTER carries the colors orange and
mocha while that of Nestles uses red and brown.

The application of the totality or holistic test is improper since the ordinary purchaser would not be
inclined to notice the specific features, similarities or dissimilarities, considering that the product is an
inexpensive and common household item.

c. Acquisition of ownership of mark (Sec. 122)

The rights in a mark shall be acquired through registration made validly in

accordance with the provisions of this law. (Sec. 2-A, R.A. No. 166a)

d. Acquisition of ownership of trade name

Case:

Coffee Partners, Inc. v. San Francisco Coffee and Roastery, Inc, G.R. No.
6 169504, March 3, 2010
http://sc.judiciary.gov.ph/jurisprudence/2010/march2010/169504.htm

Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to operate coffee shops
in the country using the trademark San Francisco Coffee.

San Francisco Coffee & Roastery on the other hand, is a local corporation engaged in the wholesale
and retail sale of coffee and uses the business name San Francisco Coffee & Roastery registered with
the DTI.

Later, San Francisco Coffee & Roastery filed an infringement and/or unfair competition complaint
against Coffee Partners alleging that the latter was about to open a coffee shop under the name San
Francisco Coffee causing confusion in the minds of the public as it bore a similar name and is engaged
also in selling of coffee.

Petitioner contended no infringement would arise because respondents tradename was not
registered.

Whether or not Coffee Partnerss trademark would infringe San Francisco Coffee & Roasterys
tradename?

YES. In Prosource International, Inc. v. Horphag Research Management SA, the Court laid down what
constitutes infringement of an unregistered trade name, thus:

(1) The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;

1838 //nazh
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the
infringer;

(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or trade name is applied to labels,
signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in
connection with such goods, business, or services;

(4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake
or to deceive purchasers or others as to the goods or services themselves or as to the source or origin
of such goods or services or the identity of such business; and

(5) It is without the consent of the trademark or trade name owner or the assignee thereof.

RA 8293, has dispensed with the registration requirement.

Section 165.2 of RA 8293 categorically states that trade names shall be protected, even prior to or
without registration with the IPO, against any unlawful act including any subsequent use of the trade
name by a third party, whether as a trade name or a trademark likely to mislead the public.

It is the likelihood of confusion that is the gravamen of infringement.

Applying the dominancy test or the holistic test, petitioners SAN FRANCISCO COFFEE trademark is
a clear infringement of respondents SAN FRANCISCO COFFEE & ROASTERY, INC. trade name. The
descriptive words SAN FRANCISCO COFFEE are precisely the dominant features of respondents
trade name. Petitioner and respondent are engaged in the same business of selling coffee, whether
wholesale or retail.

The likelihood of confusion is higher in cases where the business of one corporation is the same or
substantially the same as that of another corporation. In this case, the consuming public will likely be
confused as to the source of the coffee being sold at petitioners coffee shops.

e. Non-registrable marks (Sec. 123) *Memorize

Sec. 123. Registrability. -

123.1. A mark cannot be registered if it:
(a) Consists of immoral, deceptive or scandalous matter, or matter which
may disparage or falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols, or bring them into
contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines
or any of its political subdivisions, or of any foreign nation, or any
simulation thereof;
(c) Consists of a name, portrait or signature identifying a particular living
individual except by his written consent, or the name, signature, or
portrait of a deceased President of the Philippines, during the life of his
widow, if any, except by written consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor
or a mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or

1838 //nazh
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause
confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation
of a mark which is considered by the competent authority of the
Philippines to be well-known internationally and in the Philippines,
whether or not it is registered here, as being already the mark of a person
other than the applicant for registration, and used for identical or similar
goods or services: Provided, That in determining whether a mark is well-
known, account shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including knowledge in the
Philippines which has been obtained as a result of the promotion of the
mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation
of a mark considered well-known in accordance with the preceding
paragraph, which is registered in the Philippines with respect to goods or
services which are not similar to those with respect to which registration
is applied for: Provided, That use of the mark in relation to those goods or
services would indicate a connection between those goods or services,
and the owner of the registered mark: Provided further, That the interests
of the owner of the registered mark are likely to be damaged by such
use;
(g) Is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic for the goods or services
that they seek to identify;
(i) Consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in everyday
language or in bona fide and established trade practice;
(j) Consists exclusively of signs or of indications that may serve in trade
to designate the kind, quality, quantity, intended purpose, value,
geographical origin, time or production of the goods or rendering of the
services, or other characteristics of the goods or services;
(k) Consists of shapes that may be necessitated by technical factors or by
the nature of the goods themselves or factors that affect their intrinsic
value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and
(l), nothing shall prevent the registration of any such sign or device which
has become distinctive in relation to the goods for which registration is
requested as a result of the use that have been made of it in commerce in
the Philippines. The Office may accept as prima facie evidence that the
mark has become distinctive, as used in connection with the applicants
goods or services in commerce, proof of substantially exclusive and
continuous use thereof by the applicant in commerce in the Philippines for

1838 //nazh
five (5) years before the date on which the claim of distinctiveness is
made.

123.3. The nature of the goods to which the mark is applied will
not constitute an obstacle to registration. (Sec. 4, R. A. No. 166a)

Case:

McDonalds Corporation v. L.C. Big Mak Burger, Inc. G.R. No. 14399
7 http://sc.judiciary.gov.ph/jurisprudence/2004/aug2004/143993.htm

McDonalds, the owner of the Big Mac mark for its double-decker hamburger sandwich here and in
the US.

L.C. Big Mak, is a domestic corporation which operates fast-food outlets and snack vans applied for
the registration of the Big Mak mark for its hamburger sandwiches.

McDonalds opposed on the ground that Big Mak was a colorable imitation of its registered Big Mac
mark for the same food products.

L.C. Big Mak denied there is colorable imitation and argued that petitioner cannot exclusively
appropriate the mark Big Mac because the word Big is a generic and descriptive term.

McDonald filed a complaint for trademark infringement and unfair competition.

The trial court found for McDonald. CA held otherwise.

Whether or not there is colorable imitation resulting in likelihood of confusion? (and thus cannot be
registered)

YES. In determining likelihood of confusion, jurisprudence has developed two tests, the dominancy
test and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion. In contrast, the holistic test requires the court to
consider the entirety of the marks as applied to the products, including the labels and packaging, in
determining confusing similarity. This Court, however, has relied on the dominancy test rather than
the holistic test. The test of dominancy is now explicitly incorporated into law in Section 155.1 of the
Intellectual Property Code which defines infringement as the colorable imitation of a registered mark
xxx or a dominant feature thereof.

Applying the dominancy test, the Court finds that respondents use of the Big Mak mark results in
likelihood of confusion.

Aurally the two marks are the same, with the first word of both marks phonetically the same, and the
second word of both marks also phonetically the same.

Visually, the two marks have both two words and six letters, with the first word of both marks having
the same letters and the second word having the same first two letters. In spelling, considering the
Filipino language, even the last letters of both marks are the same.

Clearly, respondents have adopted in Big Mak not only the dominant but also almost all the features
of Big Mac. Applied to the same food product of hamburgers, the two marks will likely result in
confusion in the public mind. Certainly, Big Mac and Big Mak for hamburgers create even greater

1838 //nazh
confusion, not only aurally but also visually. Indeed, a person cannot distinguish Big Mac from Big
Mak by their sound. When one hears a Big Mac or Big Mak hamburger advertisement over the
radio, one would not know whether the Mac or Mak ends with a c or a k.

McDonalds Corporation v. MacJoy Fastfood Corp., G.R. No. 166115,

8 February 2, 2007.
http://sc.judiciary.gov.ph/jurisprudence/2007/feb2007/166115.htm

MacJoy Fastfood Corp. is a corporation in the sale of fastfood based in Cebu filed with IPO for the
registration of their name.

McDonald's Corporation filed an opposition to the application. McDonald's claims that their logo and
use of their name would falsely tend to suggest a connection with MacJoy's services and food
products, thus, constituting a fraud upon the general public and further cause the dilution of the
distinctiveness of petitioners registered and internationally recognized MCDONALDS marks to its
prejudice and irreparable damage.

MacJoy Fastfood Corp. averred that MACJOY has been used for the past many years in good faith and
has spent considerable sums of money for said mark.

The IPO held that there is confusing similarity .

The CA held otherwise stating there are predominant difference like the spelling, the font and color
of the trademark and the picture of the logo.

W/N MacJoy, with the existence of confusing similarity between the trademarks has the rightful claim
of ownership over the marks, and thus can be registered?

NO. McDonalds has the rightful claim of ownership.

A mark is valid if it is distinctive and hence not barred from registration under the Trademark Law.
However, once registered, not only the marks validity but also the registrants ownership thereof is
prima facie presumed.

Pursuant to Section 37 of R.A. No. 166, as amended, as well as the provision regarding the protection
of industrial property of foreign nationals in this country as embodied in the Paris Convention under
which the Philippines and the petitioners domicile, the United States, are adherent-members, the
petitioner was able to register its MCDONALDS marks successively, i.e., McDonalds in 04 October,
1971; the corporate logo which is the M or the golden arches design and the McDonalds with the
M or golden arches design both in 30 June 1977; and so on and so forth.

On the other hand, it is not disputed that the respondents application for registration of its trademark
MACJOY & DEVICE was filed only on March 14, 1991 albeit the date of first use in the Philippines
was December 7, 1987.

When one applies for the registration of a trademark or label which is almost the same or very closely
resembles one already used and registered by another, the application should be rejected and
dismissed outright, even without any opposition on the part of the owner and user of a previously
registered label or trademark, this not only to avoid confusion on the part of the public, but also to
protect an already used and registered trademark and an established goodwill.

1838 //nazh
 Lyceum of the Philippines v. Court of Appeals, G.R. No. 101897, March 5,
9 1993.
http://www.lawphil.net/judjuris/juri1993/mar1993/gr_101897_1993.html

Lyceum of the Philippines, Inc. is an educational institution duly registered with Securities and
Exchange Commission since 1950. (Sept)

In 1984, it instituted proceedings before SEC to compel several education institutions to delete the
word Lyceum from their corporate names and to permanently enjoin them from using the said word.

Their action is based on a SEC Resolution wherein SEC ordered the Lyceum of Baguio to change its
corporate name as it is identical to the Lyceum of the Philippines which was able to register first.

SEC En Banc ruled that the attaching of the geographical names after the word Lyceum sufficiently
distinguishes one from the other.

However, the CA ruled otherwise.

WON the corporate names of the parties are identical with or deceptively similar to that of the
petitioner?

NO. The corporate names of the parties carry the word Lyceum but confusion and deception are
precluded by the appending of geographic names. Lyceum generally refers to a school or an institution
of learning and it is natural to use this word to designate an entity which is organized and operating
as an educational institution.

Thus, we do not believe that the "Lyceum of Aparri" can be mistaken by the general public for the
Lyceum of the Philippines, or that the "Lyceum of Camalaniugan" would be confused with the Lyceum
of the Philippines.

WON the use by the Lyceum of the Philippines of the word Lyceum in its corporate name has been for
such length of time and with such exclusivity as to have become associated or identified with the
petitioner institution in the mind of the general public. (Doctrine of Secondary meaning).

NO. Doctrine of Secondary meaning is a word of phrase originally incapable of exclusive appropriation,
might nevertheless have been used so long and so exclusively by one producer with reference to his
article that, in trade and to that branch of the purchasing public, the word or phrase has come to mean
that the article was his product.

Lyceum of the Philippines has not gained exclusive use of Lyceum by long passage of time. The
number alone of the private respondents suggests strongly that the use of Lyceum has not been
attended with the exclusivity essential for the applicability of the doctrine. It may be noted that one
of the respondents Western Pangasinan Lyceum used such term 17 years before the petitioner
registered with the SEC. Moreover, there may be other schools using the name but not registered with
the SEC because they have not adopted the corporate form of organization.

Doctrine of secondary meaning can be extended to corporation name but must comply with the
requirement that it has been used so long and so exclusively by one and that the said name has come
to mean that it is referred to as that corporation.

1838 //nazh
 Fredco Manufacturing Corp. v. President and Fellows of Harvard College,
10 G.R. No. 185917, June 1, 2011.
http://sc.judiciary.gov.ph/jurisprudence/2011/june2011/185917.html

Petitioner Fredco Manufacturing filed a petition to cancel the registration of Harvard Universitys mark
Harvard Veritas Shield Symbol used in products such as bags and t-shirts.

Fredco alleges that the mark Harvard was first used and registered by New York Garments, a
domestic corporation and its predecessor-in-interest, used in its clothing articles.

Harvard University on the other hand, alleges that it is the lawful owner of the name and mark in
numerous countries worldwide including in the Philippines which was used in commerce as early as
1872, and further contend that it never authorized any person to use its name or mark in connection
with any goods in the Philippines.

The IPO Bureau of Legal Affairs cancelled Harvard Universitys registration of the mark but only over
the goods which are confusingly similar with that of petitioner.

IPO reversed the decision. CA affirmed.

Whether or not Fredcos use of the mark Harvard should be disallowed?

YES. Fredcos use of the mark Harvard, coupled with its claimed origin in Cambridge, Massachusetts,
obviously suggests a false connection with Harvard University. On this ground alone, Fredcos
registration of the mark Harvard should have been disallowed.

Indisputably, Fredco does not have any affiliation or connection with Harvard University, or even with
Cambridge, Massachusetts. Fredco or its predecessor New York Garments was not established in 1936,
or in the U.S.A. as indicated by Fredco in its oblong logo.

Under Philippine law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is protected without the obligation of filing
or registration. Harvard is the trade name of the world famous Harvard University, and it is also a
trademark of Harvard University. Under Article 8 of the Paris Convention, as well as Section 37 of R.A.
No. 166, Harvard University is entitled to protection in the Philippines of its trade name Harvard
even without registration of such trade name in the Philippines. This means that no educational entity
in the Philippines can use the trade name Harvard without the consent of Harvard University.
Likewise, no entity in the Philippines can claim, expressly or impliedly through the use of the name
and mark Harvard, that its products or services are authorized, approved, or licensed by, or sourced
from, Harvard University without the latters consent.

Esso Standard Eastern, Inc. vs. Court of Appeals, G.R. No. L-29971 August
11 31, 1982.
http://www.lawphil.net/judjuris/juri1982/aug1982/gr_l_29971_1982.html

Esso Standard Eastern, Inc. is an international company engaged in the manufacturing of fossil fuels,
oils, lubricants and its by-products.

United Cigarette Corp. on the other hand is a domestic corporation engaged in the manufacturing of
cigarettes. It uses as its trademark the mark ESSO, which is the same as the corporate name of
Esso Standard.

1838 //nazh
Esso Standard filed a trade infringement case against United Cigarette.

Esso Standard alleged that it had been for many years engaged in the sale of petroleum products
and its trademark ESSO had acquired a considerable goodwill to such an extent that the buying
public had always taken the trademark ESSO as equivalent to high quality petroleum products. Esso
Standard asserted that the continued use by United Cigarette of the same trademark ESSO on its
cigarettes was being carried out for the purpose of deceiving the public as to its quality and origin to
the detriment and disadvantage of its own products.

The CFI ruled in favor of Esso Standard.

United Cigarette won at the CA on appeal.

WON there was an infringement of trademark.

NO. It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum
products, and the product of respondent, cigarettes, are non-competing.

But as to whether trademark infringement exists depends for the most part upon whether or not the
goods are so related that the public may be, or is actually, deceived and misled that they came from
the same maker or manufacturer.

For non-competing goods may be those which, though they are not in actual competition, are so
related to each other that it might reasonably be assumed that they originate from one
manufacturer. Non-competing goods may also be those which, being entirely unrelated, could not
reasonably be assumed to have a common source. In the former case of related goods, confusion of
business could arise out of the use of similar marks; in the latter case of non-related goods, it could
not. The vast majority of courts today follow the modern theory or concept of "related goods" which
the Court has likewise adopted and uniformly recognized and applied.

Goods are related when they belong to the same class or have the same descriptive properties;
when they possess the same physical attributes or essential characteristics with reference to their
form, composition, texture or quality. They may also be related because they serve the same
purpose or are sold in grocery stores.

In the situation before us, the goods are obviously different from each other with "absolutely no iota
of similitude" as stressed in respondent court's judgment. They are so foreign to each other as to
make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's
goods. The mere fact that one person has adopted and used a trademark on his goods does not
prevent the adoption and use of the same trademark by others on unrelated articles of a different
kind.

Petitioner uses the trademark ESSO and holds certificate of registration of the trademark for
petroleum products, including aviation gasoline, grease, cigarette lighter fluid and other various
products such as plastics, chemicals, synthetics, gasoline solvents, kerosene, automotive and
industrial fuel, bunker fuel, lubricating oil, fertilizers, gas, alcohol, insecticides and the ESSO Gasul"
burner, while respondent's business is solely for the manufacture and sale of the unrelated product
of cigarettes. The public knows too well that petitioner deals solely with petroleum products that
there is no possibility that cigarettes with ESSO brand will be associated with whatever good name
petitioner's ESSO trademark may have generated.

1838 //nazh
 American Wire & Cable Company v. Director of Patents, G.R. No. L-26557
12 February 18, 1970.
http://www.lawphil.net/judjuris/juri1970/feb1970/gr_26557_1970.html

Central Banahaw Industries, Inc., applied with the Director of Patents for registration of the
trademark DYNAFLEX and Device to be used in connection with electric wires, which it allegedly had
been using since 29 March 1962.

The American Wire and Cable Co., Inc., another domestic corporation and authorized user since 10
April 1958 of the registered trade mark DURAFLEX and Globe representation, for electric wires,
apparatus, machines and supplies, opposed the application.

American Wire contended the trade mark DYNAFLEX would cause confusion or result in mistake to
purchasers intending to buy DURAFLEX electric wires and goods, the mark being registered allegedly
having practically the same spelling, pronunciation and sound, and covering the same good, and that
there has been no continuous use in commerce of the applicant's mark.

Director of Patents rendered decision holding that mark DYNAFLEX not to be similar to the
previously registered trademark DURAFLEX, thus dismissing the opposition.

Whether or not the mark DYNAFLEX and Device is registrable as label for electric wires, class 20,
considering that the trademark DURAFLEX and Globe representation also for electric wires,
machines and supplies under class 20, has been registered more than 4 years earlier

NO. Republic Act 166, as amended, on registrability of trademarks, prescribes:

SEC. 4. The owner of a trademark, trade name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others shall have the right to register the
same, unless it:

xxx xxx xxx

(d) Consists of or comprises a mark or trade name which so resembles a mark or trade-name
registered in the Philippines by another and not abandoned, as to be likely, when applied to or used
in connection with the goods, business or services of the applicant, to cause confusion or mistake or
to deceive purchasers. (Emphasis supplied)

It is clear from the above-quoted provision that the determinative factor in a contest involving
registration of trade mark is not whether the challenged 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
trademark 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.

The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent. Not only
are the initial letters and the last half of the appellations identical, but the difference exists only in
two out of the eight literal elements of the designations. Coupled with the fact that both marks
cover insulated flexible wires under class 20; that both products are contained in boxes of the same
material, color, shape and size; that the dominant elements of the front designs are a red circle and
a diagonal zigzag commonly related to a spark or flash of electricity; that the back of both boxes

1838 //nazh
show similar circles of broken lines with arrows at the center pointing outward, with the identical
legend "Cut Out Ring" "Draw From Inside Circle", no difficulty is experienced in reaching the
conclusion that there is a deceptive similarity that would lead the purchaser to confuse one product
with the other.

Asia Brewery, Inc. v. Court of Appeals and San Miguel Corporation, G.R. No.
13 103543, July 5, 1993.
http://www.lawphil.net/judjuris/juri1993/jul1993/gr_103543_1993.html

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of
trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER
product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local
beer market.

A decision was rendered by the trial Court dismissing SMC's complaint because ABI "has not
committed trademark infringement or unfair competition against" SMC.

SMC appealed to the CA which reversed the ruling of the trial court.

Are the words PALE PILSEN as part of ABIs trademark constitute infringement of SMCs trademark?

No. The Supreme Court said it does not constitute an infringement as the words PALE PILSEN, which
are part of ABIs trademark, 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, Czechislovakia and became famous in the Middle Ages.

The Supreme Court further said that the words "pale pilsen" may not be appropriated by SMC for its
exclusive use even if they are part of its registered trademark. No one may appropriate generic or
descriptive words. They belong to the public domain.

Petitioner ABI has neither infringed SMC's trademark nor committed unfair competition with the
latter's SAN MIGUEL PALE PILSEN product.

f. Prior use of Mark as a requirement

g. Tests to determine confusing similarity between mark

i. Dominancy Test
ii. Holistic test

Case:

Asia Brewery, Inc. v. Court of Appeals and San Miguel Corporation, G.R. No.
13 103543, July 5, 1993.
http://www.lawphil.net/judjuris/juri1993/jul1993/gr_103543_1993.html

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of
trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER

1838 //nazh
product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local
beer market.

A decision was rendered by the trial Court dismissing SMC's complaint because ABI "has not
committed trademark infringement or unfair competition against" SMC.

SMC appealed to the CA which reversed the ruling of the trial court.

Whether or not Asia Brewery Inc. committed infringement of trademark and unfair competition
against San Miguel Corporation?

No infringement. Infringement is determined by the "test of dominancy" rather than by differences

or variations in the details of one trademark and of another. If the competing trademark 1) contains
the main or essential or dominant features of another, and 2) confusion and deception is likely to
result, infringement takes place.

In the instant case, the dominant feature of SMC is the words SAN MIGUEL PALE PILSEN with
elaborate serifs at the beginning and end of the letters "S" and "M." While the dominant feature of
ABI's trademark is the name: BEER PALE PILSEN with the word "Beer" written in large amber
letters. Besides the dissimilarity in their dominant feature, the following other dissimilarities in the
appearance of the competing products abound:

San Miguel : Bottle has a slender tapered neck , Bottle cap is stamped with a coat of arms and the
words "San Miguel Brewery Philippines" encircling the same, "Bottled by the San Miguel Brewery,
Philippines," With SMC logo, Price: P7.00 per bottle

Beer na Beer: Fat, bulging neck, Stamped with the name "BEER" in the center, surrounded by the
words "Asia Brewery Incorporated Philippines., "Especially brewed and bottled by Asia Brewery
Incorporated, Philippines." No logo, Price: P4.25 per bottle

Based on the dissimilarity in their dominant features as well as in sound, spelling & appearance, Beer
na Beer cannot be said to be similarly confusing with San Miguel Pale Pilsen.

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 originated in the City of Pilsen, Czechoslovakia.

In this case, the use of similar but unidentical bottle size, shape & color is not unlawful as aptly
explained. The 320 ml capacity is the standard prescribed by the Dept of Trade. The amber color is a
functional feature for it prevents transmission of light and provides the maximum protection to
beer. Being of functional or common use, SMCs being the first to use does not give SMC exclusive
right to such use. The bottle shape is usually standardized just as a ketchup or vinegar bottle with its
familiar elongated neck, thereby dismissing the attendance of bad faith or the intention to deceive
the public by ABI.

Moreover, buyers generally order their beer by brand in the supermarket, sari-sari stores,
restaurants; thus dismissing the idea that Beer na Beer can be passed off as San Miguel Beer. There
can be no confusion or the likelihood of deception among the consumers.

1838 //nazh
 McDonalds Corporation v. MacJoy Fastfood Corp., G.R. No. 166115,
8.2 February 2, 2007.
http://sc.judiciary.gov.ph/jurisprudence/2007/feb2007/166115.htm

MacJoy Fastfood Corp. is a corporation in the sale of fastfood based in Cebu filed with IPO for the
registration of their name.

McDonald's Corporation filed an opposition to the application. McDonald's claims that their logo and
use of their name would falsely tend to suggest a connection with MacJoy's services and food
products, thus, constituting a fraud upon the general public and further cause the dilution of the
distinctiveness of petitioners registered and internationally recognized MCDONALDS marks to its
prejudice and irreparable damage.

MacJoy Fastfood Corp. averred that MACJOY has been used for the past many years in good faith and
has spent considerable sums of money for said mark.

The IPO held that there is confusing similarity .

The CA held otherwise stating there are predominant difference like the spelling, the font and color
of the trademark and the picture of the logo.

W/A dominancy test should be applied?

YES. Jurisprudence developed two tests, the dominancy and holistic test. The dominancy test focuses
on the similarity of the prevalent features of the competing trademarks that might cause confusion or
deception while the holistic test requires the court to consider the entirety of the marks as applied to
the products, including the labels and packaging, in determining confusing similarity. Under the latter
test, a comparison of the words is not the only determinant factor.

Applying the dominancy test to the instant case, the Court both marks are confusingly similar with
each other such that an ordinary purchaser can conclude an association or relation between the
marks. The predominant features such as the "M," "Mc," and "Mac" appearing in both easily attract
the attention of would-be customers. Most importantly, both trademarks are used in the sale of
fastfood products.

The Court ruled that the proper test to be used is the dominancy test. The dominancy test not only
looks at the visual comparisons between two trademarks but also the aural impressions created by
the marks in the public mind as well as connotative comparisons, giving little weight to factors like
prices, quality, sales outlets and market segments. In the case at bar, the Supreme Court ruled that
McDonalds and MacJoy marks are confusingly similar with each other such that an ordinary
purchaser can conclude an association or relation between the marks.

To begin with, both marks use the corporate M design logo and the prefixes Mc and/or Mac as
dominant features. The first letter M in both marks puts emphasis on the prefixes Mc and/or
Mac by the similar way in which they are depicted i.e. in an arch-like, capitalized and stylized
manner. For sure, it is the prefix Mc, an abbreviation of Mac, which visually and aurally catches
the attention of the consuming public. Verily, the word MACJOY attracts attention the same way as
did McDonalds, MacFries, McSpaghetti, McDo, Big Mac and the rest of the MCDONALDS

1838 //nazh
 marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are
used in the sale of fastfood products.

Del Monte Corp. v. Court of Appeals, G. R. No. L-78325, January 25, 1990.
14 http://www.lawphil.net/judjuris/juri1990/jan1990/gr_l_78325_1990.html

Del Monte, an American corporation, granted Philpack the right to manufacture, distribute and sell in
the Philippines its Del Monte catsup.

Del Montes trademark and logo Del Monte and its catsup bottle were subsequently registered in
the Philippines.

Meanwhile Sunshine Sauce, a company also engaged in the manufacturing and sale of various kinds
of sauces, registered its logo Sunshine Fruit Catsup.

Philpack received reports that Sunshine was buying and recycling used Del Montes bottle in junk
shops to serve as container for its own catsup. Thus, petitioner and Philpack filed a complaint for
trademark infringement and unfair competition which the trial court dismissed.

CA affirmed holding there were substantial differences between the 2 marks.

Whether or not there is confusing similarity between the two trademarks.

YES. Even if the labels were analyzed together it is not difficult to see that the Sunshine label is a
colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte label
are green and red-orange, the same with Sunshine. The word catsup in both bottles is printed in
white and the style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the
figure nevertheless approximates that of a tomato.

As previously stated, the person who infringes a trade mark does not normally copy out but only makes
colorable changes, employing enough points of similarity to confuse the public with enough points of
differences to confuse the courts. What is undeniable is the fact that when a manufacturer prepares
to package his product, he has before him a boundless choice of words, phrases, colors and symbols
sufficient to distinguish his product from the others. When as in this case, Sunshine chose, without a
reasonable explanation, to use the same colors and letters as those used by Del Monte though the
field of its selection was so broad, the inevitable conclusion is that it was done deliberately to deceive.

Berris Agricultural Co., Inc. v. Norby Abyadang, G.R. No. 183404, October 13, 2010
3.2 http://sc.judiciary.gov.ph/jurisprudence/2010/october2010/183404.htm

Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in
connection with Fungicide.

Berris Agricultural Co., Inc. filed an opposition against the trademark citing that it is confusingly
similar with their trademark, "D-10 80 WP" which is also used for Fungicide also with the same active
ingredient.

The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of Abyadang.

1838 //nazh
W/N there is confusing similarity between the trademarks?

Yes. The SC found that both products have the component D-10 as their ingredient and that it is the
dominant feature in both their marks. Applying the Dominancy Test, Abyadang's product is similar to
Berris' and that confusion may likely to occur especially that both in the same type of goods. Also
using the Holistic Test, it was more obvious that there is likelihood of confusion in their packaging
and color schemes of the marks. The SC states that buyers would think that Abyadang's product is an
upgrade of Berris'.

Prosource International, Inc., v. Horphag Research Management SA, G.R.

15 No. 180073, November 25, 2009.
http://sc.judiciary.gov.ph/jurisprudence/2009/november2009/180073.htm

Horphag is a corporation and owner of trademark PYCNOGENOL, a food supplement. It later

discovered that Prosource was also distributing a similar food supplement using the mark PCO-
GENOLS since 1996. This prompted Horphag to demand that Prosource cease and desist from using
the aforesaid mark.

Horphag filed a Complaint for Infringement of Trademark with Prayer for Preliminary Injunction
against Prosource, in using the name PCO-GENOLS for being confusingly similar.

The RTC decided in favor of Horphag. 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.

CA, petitioner affirmed RCT decision and explained that under the Dominancy or the Holistic Test,
PCO-GENOLS is deceptively similar to PYCNOGENOL.

Whether the names are confusingly similar?

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,

1838 //nazh
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.

h. Well known marks (Sec. 123.1 [e] and [f])

Case:

246 Corporation v. Hon. Reynaldo B. Daway, G.R. No. 157216, G.R. No.
16 157216, November 20, 2003.
http://sc.judiciary.gov.ph/jurisprudence/2003/nov2003/157216.htm

Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and Crown Device,
filed against petitioner 246 Corporation the instant suit for trademark infringement and damages
with prayer for the issuance of a restraining order or writ of preliminary injunction.

Rolex alleged that sometime in July 1996, petitioner adopted and, since then, has been using
without authority the mark "Rolex" in its business name "Rolex Music Lounge" as well as in its
newspaper advertisements as "Rolex Music Lounge, KTV, Disco & Party Club."

246 states that there is no infringement as no confusion would arise because their business was in
entertainment while respondent's business relate to watches.

246 filed a motion for preliminary hearing on its affirmative defenses in which the trial court
quashed.

A petition with the CA was also dismissed.

W/N there is infringement in the use by the junior user of the registered mark on the entirely
different goods?

Under the old Trademark Law where the goods for which the identical marks are used are unrelated,
there can be no likelihood of confusion and there is therefore no infringement in the use by the
junior user of the registered mark on the entirely different goods. This ruling, however, has been to
some extent, modified by Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293),
which took effect on January 1, 1998. The said section reads:

Sec. 123. Registrability. 123.1. A mark cannot be registered if it:

xxxxxxxxx

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered
well-known in accordance with the preceding paragraph, which is registered in the Philippines
with respect to goods or services which are not similar to those with respect to which
registration is applied for: Provided, That use of the mark in relation to those goods or services

1838 //nazh
 would indicate a connection between those goods or services, and the owner of the registered
mark: Provided, further, That the interest of the owner of the registered mark are likely to be
damaged by such use;

A junior user of a well-known mark on goods or services which are not similar to the goods or
services, and are therefore unrelated, to those specified in the certificate of registration of the well-
known mark is precluded from using the same on the entirely unrelated goods or services, subject to
the following requisites, to wit:

1. The mark is well-known internationally and in the Philippines. Under Rule 102 of the Rules and
Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers,[17] in
determining whether a mark is well known, the following criteria or any combination thereof may be
taken into account:

(a) the duration, extent and geographical area of any use of the mark, in particular, the duration,
extent and geographical area of any promotion of the mark, including advertising or publicity and
presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

(b) the market share in the Philippines and in other countries, of the goods and/or services to which
the mark applies;

(c) the degree of the inherent or acquired distinction of the mark;

(d) the quality-image or reputation acquired by the mark;

(e) the extent to which the mark has been registered in the world;

(f) the exclusivity of the registration attained by the mark in the world;

(g) the extent to which the mark has been used in the world;

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

(j) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and

(l) the presence of absence of identical or similar marks validly registered for or used on identical or
similar goods or services and owned by persons other than the person claiming that his mark is a
well-known mark.

2. The use of the well-known mark on the entirely unrelated goods or services would indicate a
connection between such unrelated goods or services and those goods or services specified in the
certificate of registration in the well known mark. This requirement refers to the likelihood of
confusion of origin or business or some business connection or relationship between the registrant
and the user of the mark.

3. The interests of the owner of the well-known mark are likely to be damaged. For instance, if the
registrant will be precluded from expanding its business to those unrelated good or services, or if the
interests of the registrant of the well-known mark will be damaged because of the inferior quality of
the good or services of the user.[18]

1838 //nazh
 Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to
respondents business involving watches, clocks, bracelets, etc.

However, the Court cannot yet resolve the merits of the present controversy considering that the
requisites for the application of Section 123.1(f), which constitute the kernel issue at bar, clearly
require determination facts of which need to be resolved at the trial court.

The existence or absence of these requisites should be addressed in a full blown hearing and not on
a mere preliminary hearing. The respondent must be given ample opportunity to prove its claim, and
the petitioner to debunk the same.

The SC affirmed the decision of CA.

McDonalds Corporation v. L.C. Big Mak Burger, Inc. G.R. No. 14399
7.2 http://sc.judiciary.gov.ph/jurisprudence/2004/aug2004/143993.htm

McDonalds, the owner of the Big Mac mark for its double-decker hamburger sandwich here and in
the US.

L.C. Big Mak, is a domestic corporation which operates fast-food outlets and snack vans applied for
the registration of the Big Mak mark for its hamburger sandwiches.

McDonalds opposed on the ground that Big Mak was a colorable imitation of its registered Big Mac
mark for the same food products.

L.C. Big Mak denied there is colorable imitation and argued that petitioner cannot exclusively
appropriate the mark Big Mac because the word Big is a generic and descriptive term.

McDonald filed a complaint for trademark infringement and unfair competition.

The trial court found for McDonald. CA held otherwise.

Whether or not the word Big Mac can be exclusively appropriated by McDonald?

YES. A mark is valid if it is distinctive and thus not barred from registration under Section 4 of RA
166. However, once registered, not only the marks validity but also the registrants ownership of the
mark is prima facie presumed.

The Big Mac mark, which should be treated in its entirety and not dissected word for word, is neither
generic nor descriptive. Generic marks are commonly used as the name or description of a kind of
goods, such as Lite for beer or Chocolate Fudge for chocolate soda drink. Descriptive marks, on
the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who
has never seen it or does not know it exists, such as Arthriticare for arthritis medication.

On the contrary, Big Mac falls under the class of fanciful or arbitrary marks as it bears no logical
relation to the actual characteristics of the product it represents. As such, it is highly distinctive and
thus valid.

1838 //nazh