G.R. No. L-48226 December 14, 1942 "freely translate in English," it means "strong, durable, lasting.
it means "strong, durable, lasting." He invokes section 2 of Act No. 666,
ANA L. ANG, petitioner,
vs.
TORIBIO TEODORO, respondent.
Cirilo Lim for petitioner.
Marcial P. Lichauco and Manuel M. Mejia for respondent.
OZAETA, J.:
Petitioner has appealed to this Court by certiorari to reverse the judgment of the Court of Appeals
reversing that of the Court of First Instance of Manila and directing the Director of Commerce to
cancel the registration of the trade-mark "Ang Tibay" in favor of said petitioner, and perpetually
enjoining the latter from using said trade-mark on goods manufactured and sold by her.
Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later as sole proprietor, has
continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture and
sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade-mark on
September 29, 1915, and as trade-name on January 3, 1933. The growth of his business is a thrilling
epic of Filipino industry and business capacity. Starting in an obscure shop in 1910 with a modest
capital of P210 but with tireless industry and unlimited perseverance, Toribio Teodoro, then an
unknown young man making slippers with his own hands but now a prominent business magnate
and manufacturer with a large factory operated with modern machinery by a great number of
employees, has steadily grown with his business to which he has dedicated the best years of his life
and which he has expanded to such proportions that his gross sales from 1918 to 1938 aggregated
P8,787,025.65. His sales in 1937 amounted to P1,299,343.10 and in 1938, P1,133,165.77. His expenses for
advertisement from 1919 to 1938 aggregated P210,641.56.
Petitioner (defendant below) 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. In the
following year (1938) her gross sales amounted to P422,682.09. Neither the decision of the trial court
nor that of the Court of Appeals shows how much petitioner has spent or advertisement. But
respondent in his brief says that petitioner "was unable to prove that she had spent a single centavo
advertising "Ang Tibay" shirts and pants prior to 1938. In that year she advertised the factory which
she had just built and it was when this was brought to the attention of the appellee that he consulted
his attorneys and eventually brought the present suit."
The trial court (Judge Quirico Abeto) presiding absolved the defendant from the complaint, with
costs against the plaintiff, on the grounds that the two trademarks are dissimilar and are used on
different and non-competing 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 second
division of the Court of Appeals, composed of Justices Bengson, Padilla, Lopez Vito, Tuason, and Alex
Reyes, with Justice Padilla as ponente, reversed that judgment, holding that by uninterrupted an
exclusive use since 191 in the manufacture of slippers and shoes, respondent's trade-mark has
acquired a secondary meaning; that the goods or articles on which the two trade-marks are used
are similar or belong to the same class; and that the use by petitioner of said trade-mark constitutes
a violation of sections 3 and 7 of Act No. 666. The defendant Director of Commerce did not appeal
from the decision of the Court of Appeals.
First. Counsel for the petitioner, in a well-written brief, makes a frontal sledge-hammer attack on the
validity of respondent's trade-mark "Ang Tibay." He contends that the phrase "Ang Tibay" as
employed by the respondent on the articles manufactured by him is a descriptive term because,
which provides that words or devices which related only to the name, quality, or description of the
merchandise cannot be the subject of a trade-mark. He cites among others the case of Baxter vs.
Zuazua (5 Phil., 16), which involved the trade-mark "Agua de Kananga" used on toilet water, and in
which this Court held that the word "Kananga," which is the name of a well-known Philippine tree or
its flower, could not be appropriated as a trade-mark any more than could the words "sugar,"
"tobacco," or "coffee." On the other hand, counsel for the respondent, in an equally well-prepared
and exhaustive brief, contend that the words "Ang Tibay" are not descriptive but merely suggestive
and may properly be regarded as fanciful or arbitrary in the legal sense. The cite several cases in
which similar words have been sustained as valid trade-marks, such as "Holeproof" for hosiery, 1 "ideal
for tooth brushes, 2 and "Fashionknit" for neckties and sweaters. 3
We find it necessary to go into the etymology and meaning of the Tagalog words "Ang Tibay" to
determine whether they are a descriptive term, i.e., whether they relate to the quality or description
of the merchandise to which respondent has applied them as a trade-mark. The word "ang" is a
definite article meaning "the" in English. It is also used as an adverb, a contraction of the word
"anong" (what or how). For instance, instead of saying, "Anong ganda!" ("How beautiful!"), we
ordinarily say, "Ang ganda!" Tibay is a root word from which are derived the verb magpatibay (to
strenghten; the nouns pagkamatibay (strength, durability), katibayan (proof, support,
strength), katibay-tibayan (superior strength); and the adjectives matibay (strong, durable,
lasting), napakatibay (very strong), kasintibay or magkasintibay (as strong as, or of equal strength).
The phrase "Ang Tibay" is an exclamation denoting administration of strength or durability. For
instance, one who tries hard but fails to break an object exclaims, "Ang tibay!" (How strong!") It may
also be used in a sentence thus, "Ang tibay ng sapatos mo!" (How durable your shoes are!") The
phrase "ang tibay" is never used adjectively to define or describe an object. One does not say, "ang
tibay sapatos" or "sapatos ang tibay" is never used adjectively to define or describe an object. One
does not say, "ang tibay sapatos" or "sapatos ang tibay" to mean "durable shoes," but "matibay na
sapatos" or "sapatos na matibay."
From all of this we deduce that "Ang Tibay" is not a descriptive term within the meaning of the Trade-
Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as
a trade-mark or trade-name. In this connection we do not fail to note that when the petitioner
herself took the trouble and expense of securing the registration of these same words as a trademark
of her products she or her attorney as well as the Director of Commerce was undoubtedly
convinced that said words (Ang Tibay) were not a descriptive term and hence could be legally used
and validly registered as a trade-mark. It seems stultifying and puerile for her now to contend
otherwise, suggestive of the story of sour grapes. Counsel for the petitioner says that the function of a
trade-mark is to point distinctively, either by its own meaning or by association, to the origin or
ownership of the wares to which it is applied. That is correct, and we find that "Ang Tibay," as used by
the respondent to designate his wares, had exactly performed that function for twenty-two years
before the petitioner adopted it as a trade-mark in her own business. Ang Tibay shoes and slippers
are, by association, known throughout the Philippines as products of the Ang Tibay factory owned
and operated by the respondent Toribio Teodoro.
Second. In her second assignment of error petitioner contends that the Court of Appeals erred in
holding that the words "Ang Tibay" had acquired a secondary meaning. In view of the conclusion
we have reached upon the first assignment of error, it is unnecessary to apply here the doctrine of
"secondary meaning" in trade-mark parlance. This doctrine is to the effect that a word or phrase
originally incapable of exclusive appropriation with reference to an article of the market, because
geographically or otherwise descriptive, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in that trade and to that branch of the
purchasing public, the word or phrase has come to mean that the article was his product. (G. & C.
Merriam Co. vs. Salfield, 198 F., 369, 373.) We have said that the phrase "Ang Tibay," being neither
geographic nor descriptive, was originally capable of exclusive appropriation as a trade-mark. But
were it not so, the application of the doctrine of secondary meaning made by the Court of Appeals
could nevertheless be fully sustained because, in any event, by respondent's long and exclusive use
of said phrase with reference to his products and his business, it has acquired a proprietary
connotation. (Landers, Frary, and Clark vs. Universal Cooler Corporation, 85 F. [2d], 46.)
Third. Petitioner's third assignment of error is, that the Court of Appeals erred in holding that pants
and shirts are goods similar to shoes and slippers within the meaning of sections 3 and 7 of Act No.
666. She also contends under her fourth assignment of error (which we deem convenient to pass
upon together with the third) that there can neither be infringement of trade-mark under section 3
nor unfair competition under section 7 through her use of the words "Ang Tibay" in connection with
pants and shirts, because those articles do not belong to the same class of merchandise as shoes
and slippers.
The question raised by petitioner involve the scope and application of sections 3,7, 11, 13, and 20 of
the Trade-Mark Law (Act No. 666.) Section 3 provides that "any person entitled to the exclusive use of
a trade-mark to designate the origin or ownership of goods he has made or deals in, may recover
damages in a civil actions from any person who has sold goods of a similar kind, bearing such trade-
mark . . . The complaining party . . . may have a preliminary injunction, . . . and such injunction upon
final hearing, if the complainant's property in the trade-mark and the defendant's violation thereof
shall be fully established, shall be made perpetual, and this injunction shall be part of the judgment
for damages to be rendered in the same cause." Section 7 provides that any person who, in selling
his goods, shall give them the general appearance of the goods of another either in the wrapping of
the packages, or in the devices or words thereon, or in any other feature of their appearance, which
would be likely to influence purchasers to believe that the goods offered are those of the
complainant, shall be guilty of unfair competition, and shall be liable to an action for damages and
to an injunction, as in the cases of trade-mark infringement under section 3. Section 11 requires the
applicant for registration of a trade-mark to state, among others, "the general class of
merchandise to which the trade-mark claimed has been appropriated." Section 13 provides that no
alleged trade-mark or trade name shall be registered which is identical with a registered or known
trade-mark owned by another and appropriate to the same class of merchandise, or which to nearly
resembles another person's lawful trade-mark or trade-name as to be likely to cause confusion or
mistake in the mind of the public, or to deceive purchasers. And section 2 authorizes the Director of
Commerce to establish classes of merchandise for the purpose of the registration of trade-marks and
to determine the particular description of articles included in each class; it also provides that "an
application for registration of a trade-mark shall be registered only for one class of articles and only
for the particular description of articles mentioned in said application."
We have underlined the key words used in the statute: "goods of a similar kin," "general class of
merchandise," "same class of merchandise," "classes of merchandise," and "class of articles," because
it is upon their implications that the result of the case hinges. These phrases, which refer to the same
thing, have the same meaning as the phrase "merchandise of the same descriptive properties" used
in the statutes and jurisprudence of other jurisdictions.
The burden of petitioner's argument is that under sections 11 and 20 the registration by respondent of
the trade-mark "Ang Tibay" for shoes and slippers is no safe-guard against its being used by petitioner
for pants and shirts because the latter do not belong to the same class of merchandise or articles as
the former; that she cannot be held guilty of infringement of trade-mark under section 3 because
respondent's mark is not a valid trade-mark, nor has it acquired a secondary meaning; that pants
and shirts do not possess the same descriptive properties as shoes and slippers; that neither can she
be held guilty of unfair competition under section 7 because the use by her of the trade-mark "Ang
Tibay" upon pants and shirts is not likely to mislead the general public as to their origin or ownership;
and that there is now showing that she in unfairly or fraudulently using that mark "Ang Tibay" against
the respondent. If we were interpreting the statute for the first time and in the first decade of the
twentieth century, when it was enacted, and were to construe it strictly and literally, we might
uphold petitioner's contentions. But law and jurisprudence must keep abreast with the progress of
mankind, and the courts must breathe life into the statutes if they are to serve their purpose. Our
Trade-mark Law, enacted nearly forty years ago, has grown in its implications and practical
application, like a constitution, in virtue of the life continually breathed into it. It is not of merely local
application; it has its counterpart in other jurisdictions of the civilized world from whose jurisprudence
it has also received vitalizing nourishment. We have to apply this law as it has grown and not as it was
born. Its growth or development abreast with that of sister statutes and jurisprudence in other
jurisdictions is reflected in the following observation of a well-known author:
This fundamental change in attitude first manifested itself in the year 1915-1917. Until about
then, the courts had proceeded on the theory that the same trade-mark, used on un-like
goods, could not cause confusion in trade and that, therefore, there could be no
objection to the use and registration of a well-known mark by a third party for a different
class of goods. Since 1916 however, a growing sentiment began to arise that in the
selection of a famous mark by a third party, there was generally the hidden intention to
"have a free ride" on the trade-mark owner's reputation and good will. (Derenberg, Trade-
Mark Protection & Unfair Trading, 1936 edition, p. 409.)
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.
A few of the numerous cases in which the foregoing doctrines have been laid down in one form or
another will now be cited: (1) In Teodoro Kalaw Ng Khe vs. Level Brothers Company (G.R. No. 46817),
decided by this Court on April 18, 1941, the respondent company (plaintiff below) was granted
injunctive relief against the use by the petitioner of the trade-mark "Lux" and "Lifebuoy" for hair
pomade, they having been originally used by the respondent for soap; The Court held in effect that
although said articles are noncompetitive, they are similar or belong to the same class. (2) In Lincoln
Motor Co. vs. Lincoln Automobile Co. (44 F. [2d], 812), the manufacturer of the well-known Lincoln
automobile was granted injunctive relief against the use of the word "Lincoln" by another company
as part of its firm name. (3) The case of Aunt Jemima Mills Co. vs. Rigney & Co. (247 F., 407), involved
the trade-mark "Aunt Jemima," originally used on flour, which the defendant attempted to use on
syrup, and there the court held that the goods, though different, are so related as to fall within the
mischief which equity should prevent. (4) In Tiffany & Co., vs. Tiffany Productions, Inc. (264 N.Y.S., 459;
23 Trade-mark Reporter, 183), the plaintiff, a jewelry concern, was granted injunctive relief against
the defendant, a manufacturer of motion pictures, from using the name "Tiffany." Other famous
cases cited on the margin, wherein the courts granted injunctive relief, involved the following trade-
marks or trade-names: "Kodak," for cameras and photographic supplies, against its use for
bicycles. 4 "Penslar," for medicines and toilet articles, against its use for cigars; 5 "Rolls-Royce," for
automobiles. against its use for radio tubes; 6 "Vogue," as the name of a magazine, against its use for
hats; 7 "Kotex," for sanitary napkins, against the use of "Rotex" for vaginal syringes; 8 "Sun-Maid," for
raisins, against its use for flour; 9 "Yale," for locks and keys, against its use for electric flashlights; 10 and
"Waterman," for fountain pens, against its use for razor blades. 11lawphil.net
Against this array of famous cases, the industry of counsel for the petitioner has enabled him to cite
on this point only the following cases: (1) Mohawk Milk Products vs. General Distilleries
Corporation (95 F. [2d], 334), wherein the court held that gin and canned milk and cream do not
belong to the same class; (2) Fawcett Publications, Inc. vs. Popular Mechanics Co. (80 F. [2d], 194),
wherein the court held that the words "Popular Mechanics" used as the title of a magazine and duly
registered as a trade-mark were not infringed by defendant's use of the words "Modern Mechanics
and Inventions" on a competitive magazine, because the word "mechanics" is merely a descriptive
name; and (3) Oxford Book Co. vs. College Entrance Book Co. (98 F. [2d], 688), wherein the plaintiff
unsuccessfully attempted to enjoin the defendant from using the word "Visualized" in connection
with history books, the court holding that said word is merely descriptive. These cases cites and relied
upon by petitioner are obviously of no decisive application to the case at bar.
We think reasonable men may not disagree that shoes and shirts are not as unrelated as fountain
pens and razor blades, for instance. The mere relation or association of the articles is not controlling.
As may readily be noted from what we have heretofore said, the proprietary connotation that a
trade-mark or trade-name has acquired is of more paramount consideration. The Court of Appeals
found in this case that by uninterrupted and exclusive use since 1910 of respondent's registered
trade-mark on slippers and shoes manufactured by him, it has come to indicate the origin and
ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the
same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation
and selling power it has acquired at the hands of the respondent. As observed in another case, 12 the
field from which a person may select a trade-mark is practically unlimited, and hence there is no
excuse for impinging upon or even closely approaching the mark of a business rival. In the unlimited
field of choice, what could have been petitioner's purpose in selecting "Ang Tibay" if not for its fame?
Lastly, in her fifth assignment of error petitioner seems to make a frantic effort to retain the use of the
mark "Ang Tibay." Her counsel suggests that instead of enjoining her from using it, she may be
required to state in her labels affixed to her products the inscription: "Not manufactured by Toribio
Teodoro." We think such practice would be unethical and unworthy of a reputable businessman. To
the suggestion of petitioner, respondent may say, not without justice though with a tinge of
bitterness: "Why offer a perpetual apology or explanation as to the origin of your products in order to
use my trade-mark instead of creating one of your own?" On our part may we add, without meaning
to be harsh, that a self-respecting person does not remain in the shelter of another but builds one of
his own.
The judgment of the Court of Appeals is affirmed, with costs against the petitioner in the three
instances. So ordered.
[G.R. No. L-8072. October 31, 1956.]
LIM HOA, Petitioner, vs. DIRECTOR OF PATENTS, Respondent.
DECISION
MONTEMAYOR, J.:
On April 26, 1949, the Petitioner, Lim Hoa, filed with the Patent Office an application for the
registration of a trademark, consisting of a representation of two midget roosters in an attitude of
combat with the word “Bantam” printed above them, he claiming that he had used said trademark
on a food seasoning product since April 25 of that year. The application was published in the Official
Gazette in its issue of February, 1953, released for circulation on April 18, of the same year. On April
30, 1953, the Agricom Development Co., Inc., a domestic corporation, opposed the application on
several grounds, among others, that the trademark sought to be registered was confusingly similar to
its register mark, consisting of a pictorial representation of a hen with the words “Hen Brand” and
“Marca Manok”, which mark or brand was also used on a food seasoning product, before the use of
the trademark by the applicant.
It is a fact that the family of C. Javier Advincula, since the year 1946, had adopted and used as a
trademark of said food seasoning product manufactured by it, the pictorial representation of a hen.
In 1947, the members of the Advincula family organized the Agricom Development Co., Inc.,
the Oppositor in this case, and said corporation took over the manufacture of the same food
product of the Advincula family, including the use of the brand of the pictorial representation of a
hen but adding to it the word “Hen”. In the year 1948, an addition was made to the brand with the
words “Ve-Tsin, Hen Brand” and “Marca Manok,” and since then, on its food seasoning product at
different times, labels were used, in different colors but bearing the representation of a hen and the
words just mentioned. So that the application to register applicant’s brand, consisting of two roosters
is an attitude of combat, with the word “Bantam” printed above them, came along after the use
and registration of the mark or brand of the Oppositor corporation and its predecessor, the
Advincula family.
After considering the application and the opposition thereto, and after comparing the two brands,
the Director of Patents issued his order dated June 26, 1954, wherein he found and held that to allow
the registration of the applicant’s trademark would likely cause confusion or mistake or deceive
purchasers, and he refused registration of said trademark, under Rule 178 of the Revised Rules of
Practice in Trademark Cases, 1953. The Petitioner is now appealling said order.
After a careful examination of the facts above mentioned, and after comparing the two brands, we
do not hesitate to say and to hold that there is such similarity between the two brands as to cause
confusion in the mind of the public that buys the food seasoning product on the strength and on the
indication of the trademark or brand identifying or distinguishing the same. In the case of Go Tiong
Sa vs. Director of Patents, (95 Phil., 1), we had occasion to say the
following:chanroblesvirtuallawlibrary
“ cralaw It has been consistently held that the question of infringement of a trademark is to be
determined by the test of dominancy. Similarity in size, form, and color, while relevant, is not
conclusive. 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. Duplication or
imitation is not necessary; chan roblesvirtualawlibrarynor it is necessary that the infringing label should
suggest an effort to imitate. (C. Neilman Brewing Co. vs. Independent Brewing Co., 191 F. 489, 495,
citing Eagle White Lead Co. v. Pflugh (CC) 180 Fed. 579). The question at issue in cases of
infringement of trademarks is whether the use of the marks involved would be likely to cause
confusion or mistakes in the mind of the public or deceive purchasers. (Auburn Rubber Corporation
vs. Honover Rubber Co., 107 F 2d 588, 590, citing Procter and Gamble Co. vs. J. L. Prescot Co., 49 F
2d 959, 18 CCPA, Patents, 1433; chan roblesvirtualawlibraryPepsodent Co. vs. Comfort
Manufacturing Co., 83 F 2d 906; chan roblesvirtualawlibrary23 CCPA, Patents, 124)”
The danger of confusion in trademarks and brands which are similar may not be so great in the case
of commodities or articles of relatively great value, such as, radio and television sets, air conditioning
units, machinery, etc., for the prospective buyer, generally the head of the family or a businessman,
before making the purchase, reads the pamphlets and all literature available, describing the article
he is planning to buy, and perhaps even makes comparisons with similar articles in the market. He is
not likely to be deceived by similarity in the trademarks because he makes a more or less thorough
study of the same and may even consult his friends about the relative merit and performance of the
article or machinery, as compared to others also for sale. But in the sale of a food seasoning
product, a kitchen article of everyday consumption, the circumstances are far different. Said
product is generally purchased by cooks and household help, sometimes illiterate who are guided
by pictorial representations and the sound of the word descriptive of said representation. The two
roosters appearing in the trademark of the applicant and the hen appearing on the trademark of
the Oppositor, although of different sexes, belong to the same family of chicken, known as manok in
all the principal dialects of the Philippines, and when a cook or a household help or even a
housewife buys a food seasoning product for the kitchen the brand of “Manok” or “Marca Manok”
would most likely be upper most in her mind and would influence her in selecting the product,
regardless of whether the brand pictures a hen or a rooster or two roosters. To her, they are all
manok. Therein lies the confusion, even deception.
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 Plaintiff; 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 Plaintiff with that of the Defendant 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 Plaintiff in connection with the sale and advertisement of his goods?
“There is nothing in the picture of one or more roosters which in itself is descriptive of the goods sold
by the Plaintiff or by the Defendant corporation, or suggestive of the quality of these goods. A cat, or
dog, a carabao, a shark, or an eagle stamped upon the container in which candies are sold would
serve as well as a rooster for purposes of identification as the product of Defendant’s factory. Why
did Defendant select two roosters as its trade-mark? We cannot doubt that it was because
the Plaintiff’s candies had acquired a certain reputation under the trade-mark of a rooster, and
the Defendant corporation hoped to profit unjustly by that reputation. Defendant knew that the use
of a single rooster would be prohibited as a technical infringement of Plaintiff’s trade-mark, but it
hoped that it could avoid that danger by the use of two roosters; chan roblesvirtualawlibraryand at
the same time get such advantage as it must have believed it could secure from the use of a design
on the containers of its goods, not absolutely identical with that used by the Plaintiff, but so similar in
the dominant idea as to confuse or mislead the purchasers cralaw .” (Clarke vs. Manila Candy Co.,
100 Phil. 36)
In view of the foregoing, the order appealed from is hereby affirmed, with costs. We do not deem it
necessary to discuss and rule upon the other questions raised in the appeal.
G.R. No. L-13947 June 30, 1960
CUANCHOW SOY & CANNING CO., petitioner,
vs.
THE DIRECTOR OF PATENTS and ROSARIO VILLAPANIA, respondents.
Jose W. Diokno for petitioner.
Agbayani, Galla and Abalos for respondents.
MONTEMAYOR, J.:
This is a petition to review the decision of the Director of Patents, dated May 16, 1958, dismissing the
opposition of petitioner Chuanchow Soy & Canning Co. to the application of respondent Rosario
Villapania to register the trademark "Bangos Brand", on the ground "that the trademark BANGOS and
the trademark CARP and the representation of a Carp fish do not resemble each other as to be
likely to cause confusion, mistake or to deceive the purchaser."
The facts in the case are simple and not disputed. Both petitioner Chuanchow Soy & Canning Co.
and respondent Rosario Villapania are engaged in the manufacture and sale of soy sauce. Since
1950, petitioner had been using as trade mark the words "Carp Brand Soy", printed in a distinctive
style of lettering above the drawing of a fish to distinguish its product, on labels affixed directly to the
bottles containing soy sauce, and on tissue paper in which these bottles were wrapped (Exhibits B
and C). In 1953, the Patent Office issued Trademark Registration Certificate 4384 to it for its aforesaid
trademark.
Respondent Villapania since 1956 had been using as trademark of her soy sauce the name of
"Bangos Brand" written in the same distinctive style of lettering as that of the petitioner's "Carp Brand",
above the drawing of the fish similar to the fish drawing on the trademark of petitioner, on labels also
attached to the bottles containing her soy sauce, and the bottles were wrapped also in tissue paper
bearing a similar design (Exhibits D and E).
On October 12, 1956, Villapania applied for registration of her trademark as above-described. Upon
examination of the trademark, the examiner of the Office of the Director of Patents made the
following ruling:
1. Examiner has taken into consideration a previously registered mark: CARP BRAND & fish
representation for soy sauce of the Chuanchow Soy & Caning Co., Reg. No. 4384 dated
October 27, 1953, and found that the fish representation closely resembles to applicant's
mark as presented in the drawing. In view thereof, the applicant must submit new
drawings and facsimiles for the word: "BANGOS BRAND" only as shown in the labels
submitted, excluding SOY and fish representation.
Complying with said ruling, respondent Villapania submitted a drawing of the word "Bangos Brand"
only, the same was published in the Official Gazette. However, she continued and is supposedly still
continuing to use the labels and wrappers Exhibits D and E on the bottles containing her product,
which as already stated, included not only "Bangos Brand" but also the word "Soy" above the
drawing of the fish. So, on October 9, 1957, petitioner company filed its opposition to respondent's
application. The case was submitted on a stipulation of facts made verbally by them during the
hearing. On May 16, 1958, respondent Director of Patents rendered a decision dismissing petitioner's
opposition to the application above-stated, which decision is now on appeal.
The similarity and resemblance or lack of the same between the two trademarks can be best
appreciated by examining the same as they appear in the record, particularly, the first page of the
petition for review. We have carefully and painstakingly examined the trademark or label of
petitioner, Exhibit B, and the trademark or label, Exhibit D, which respondent Villapania sought to
register, placed them side by side, and compared them, and we note and observe a very close
resemblance between the two not only in the style of lettering of the words "Carp" and "Brand" on
Exhibit B and the words "Bangos Brand" on Exhibit D, not only in the style of lettering, but also in the
size of the letters, as well as the word "Soy" and the Chinese characters underneath the said three
words, including the letters beneath the two fishes, all of which words are correspondingly in the
same color, to say nothing of the similarity of the two fishes not only in their size but even in the length
and position of their respective tails and fins; so that we are fully convinced of the intention and
design of the respondent to imitate as much as possible in her label, Exhibit D, that of petitioner's,
Exhibit B, evidently to confuse, even to deceive prospective purchasers of soy sauce and thereby
take advantage of and appropriate to herself the goodwill previously acquired by petitioner in the
sale of its product. When two competing labels are placed together for inspection and still they may
confuse an ordinary person, specially cooks and maids, who as a rule are the one in charge of
buying such household article as soy sauce, there would be more confusion and doubt when the
two labels are not placed together for comparison and the prospective purchaser is guided only by
his memory or recollection that the soy sauce he or she is planning to buy has as its label the drawing
of a fish with letters and Chinese characters, written in a certain style of lettering and color. When, as
in the present case, 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. There
should be no halfway measures, as was done in this case by the ruling of the examiner who directed
the respondent to amend or modify the labelor trademark she sought to register by eliminating some
portions thereof. As a result, although the word "Soy" and the drawing of a fish were eliminated, still,
the word "Bangos" and the word "Brand" which are similar to the style of lettering of the
corresponding words in the label, Exhibit B, of petitioner, could still create confusion or doubt in the
mind of prospective purchasers, to say nothing of the fact that the words "Carp" and "Bangos" both
indicate fish, and the additional fact that both trademarks and labels refer or advertise the same
product, namely, soy sauce.
In the case of Lim Hoa vs. Director of Patents, 101 Phil., 214; 52 Off. Gaz. (17) 7259, we had occasion
to say the following:
The danger of confusion in trademarks and brands which are similar may not be so great
in the case of commodities or articles of relatively great value, such as, radio and
 television sets, air conditioning units, machinery etc., for the prospective buyer, generally and registration.
the head of the family or a businessman, before making the purchase, reads the
pamphlets and all literature available, describing the article he is planning to buy, and 2. ID., COMING FROM FOREIGN COUNTRY; SHOULD BE PROTECTED. — The lawful entry into the
perhaps even makes comparisons with similar articles in the market. He is not likely to be Philippines of goods bearing the trade mark for a period of years, should entitle the owner of the
deceived by similarity in the trademarks because he makes a more or less thorough study trade mark to the right to use the same to the exclusion of the others. Modern trade and Commerce
of the same and may even consult his friends about the relative merit and performance of demands that depredations on legitimate trade marks of non-nationals should not be
the article or machinery, as compared to others also for sale. But in the sale of food countenanced.
seasoning product a kitchen article of everyday consumption, the circumstances are far
different. Said product is generally purchased by cooks and household help, sometimes
illiterate, who are guided by pictorial representations and the sound of the word DECISION
descriptive of said representation. The two roosters appearing in the trademark of the
applicant and the hen appearing on the trademark of the oppositor, although of different
sexes, belong to the same family of the chicken, known as manok in all the principal LABRADOR, J.:
dialects of the Philippines, and when a cook or a household help or even a housewife
buys a food seasoning products for the kitchen, the brand of "Manok" or "Marca Manok"
would most likely be uppermost in her mind and would influence her in selecting the This is a petition for the review of a decision of the Director of Patents finding Kee Boc, respondent
product, regardless of whether the brand pictures a hen or a rooter or two roosters. To her, herein, the first user of the trade mark "RACE" and design (representation of three men running a
they are all manok. Therein lies the confusion, even deception. race) and therefore the owner of this trade mark, and, dismissing the opposition of Asari Yoko Co.,
Ltd., petitioner herein, on the ground that it will not be damaged by the registration of said trade
mark.
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 On August 27, 1953, Kee Boc, a Chinese citizen, filed a petition for the registration of the trade mark
his product from similar products in the market. . . . "Race" and design to be used in shirts and undershirts manufactured by him. He claims to have first
used the trade mark in commerce on May 17, 1952, basing the design on a movie picture (t.s.n., 690)
Why the respondent in the present case could not have selected as the principal figure in her label he had seen with Domingo Cabatingan, his employee, who corroborated to this fact (t.s.n., 674).
some animal living in the surface of the earth, like a dog, cat, monkey, etc., or an article or furniture,
like a table, chair, or if she was determined to select a creature living in the sea, that of a crab, Opposition was interposed by Asari Yoko Co., Ltd., a Japanese corporation, on the ground that it is
lobster, or octopus, is hard to understand. She had to select fish, which as already stated, she the owner of the trade mark because the same is registered in Japan and in the Philippines,
pictured in her label similar in size, shape and form as that appearing in the already used and registration in the latter having been made in August, 1929, under the provisions of Act No. 666 and is
registered label of petitioner. The Director of Patents should as much as possible discourage all valid for 30 years; that the trademark has been in continuous use in commerce in, and trade with,
attempts at imitation of labels already used and registered, as already stated, to avoid confusion, to the Philippines since its registration until the early part of 1942, and then again after the liberation of
protect the public from purchasing the wrong article or brand and also to give protection to those the Philippines up to the present; that the trade mark was never abandoned by the registrant and
who have established goodwill, reputation and name in the manufacture and the sale of their that it will be damaged by the registration of the same.
products by means of a label of long standing and use and duly registered.
After due hearing, the Director of Patents dismissed the opposition and adjudged applicant Kee Boc
the owner of the trade mark. Hence this petition for review.
Another circumstance against the registration of the trademark or label of respondent is that she
would appear not to have used the amended or modified label she presented for registration, but Petitioner assigns seven errors committed by the Director of Patents, to wit —
continued to use the original label or trademark which was refused registration by the Director of
Patents. This indicates not only her desire to continue taking advantage of the goodwill acquired "1. The Director of Patents erred in holding that the petitioner has failed to prove registration in the
and established by the petitioner, but it equally shows that she had not used the label or trademark Philippines of the subject trade mark before World War II.
now being applied for by her, despite the fact that the law requires at least two months previous use
prior to application for registration.1 2. The Director of Patents erred in holding that petitioner "has failed to establish satisfactorily its claim
of ‘prior’ use" of the subject trade mark in the Philippines before World War II.
In view of the foregoing, the appealed decision is hereby reversed; the opposition of petitioner to
3. The Director of Patents erred in holding that granting that petitioner "did have such ‘prior use’ its
respondents application is hereby sustained and respondent's application for registration is denied,
rights acquired by such ‘prior use’ were automatically forfeited or lost by it by reason of the
with costs against respondent.
war."cralaw virtua1aw library

[G.R. No. L-14086. January 20, 1961.] 4. The Director of Patents erred in holding that there could not have been use by petitioner of the
subject trade mark in "trade" or "commerce" after the termination of hostilities in World War II,
ASARI YOKO CO., LTD., Petitioner, v. KEE BOC and CELEDONIO AGRAVA, Director of notwithstanding the existence of a trade arrangement or agreement entered into between the
Patents, Respondents. Philippines and Japan through the Supreme Commander for the Allied Powers.

5. The Director of Patents erred in holding that petitioner "will not be damaged by the registration of
SYLLABUS the trade mark and design in favor of applicant Kee Boc."cralaw virtua1aw library

6. The Director of Patents erred in holding that respondent Kee Boc is the "first user" of the subject
1. TRADE MARKS AND TRADE NAMES; TRADE MARK ALREADY USED AND REGISTERED. — When it is trade mark in the Philippines.
satisfactorily established that the trade marks sought to be registered are registered in a foreign
country and the same have been used on goods continuously imported into the Philippines long 7. The Director of Patents erred in dismissing the petitioner’s opposition to the application of
before the applicant filed his application therefor, said trade marks are no longer available for use respondent Kee Boc for the registration of the trade mark "race" and "design.

There is no question that the trade mark "RACE BRAND" applied for is exactly the same as the trade
mark "RACE BRAND" registered in Tokyo, Japan on June 11, 1937 by Kojiro Asari (Exhibits "G" and "G-
1"). Not only is the trade mark sought to be registered the actual trade mark, for Japanese shirts and
undershirts, belonging to Kojiro Asari, but the very names printed on the boxes containing shirts and
undershirts sold by petitioner — "Race Brand Gentlemen’s Underwear" — are exactly identical to
those appearing in the boxes used by applicant for the underwear he manufactures.
The original facsimile of the trade mark, Exhibit "10" (5 copies), shows clearly two thin sheets of white
paper pasted thereon, to the left side of the design. When these pasted sheets of white paper were
removed, in the course of the hearing, from one of the exhibits (Exhibit "10-b"), it was found that said
papers covered the following words, (1) "Registered Trade Mark" in big capital letters, and, (2) "Made
in Occupied Japan" in small capital letters. These findings are conclusive evidence that the trade
mark applied for is the very trade mark on manufactured goods made in Japan and imported into
the Philippines. So the issues submitted to the Director of Patents were, (1) whether this trade mark is
registered in the Philippines prior to the application of the respondent-applicant, and, (2) whether
petitioner-oppositor had actually used this trade mark for Japanese goods in the Philippines prior to
that of the applicant.
Some employees of the former Bureau of Commerce testified that they had seen similar trade marks
in the office of the said bureau before the war, but they could not assert definitely that a registered
certificate therefor was issued by the Director of Patents. We therefore agree with the latter that the
evidence of prior registration of the trade mark in the Philippines has not been established by
sufficient evidence.
But as to the prior use of the trade mark by the oppositor, we find the evidence to be conclusive in
favor of the petitioner. The very facsimile of the trade mark filed by the applicant before the director
in connection with his petition for registration, was taken from a mark actually used on goods
imported from Japan to the Philippines, except that the former does not contain the inscriptions
"REGISTERED TRADE MARK" and "Made in Occupied Japan", because the inscriptions are covered by
a thin piece of paper pasted on the inscriptions. The trade mark sought to be registered already
belongs to Kojiro Asari, as shown by the certificate of registration thereof in Tokyo, Japan, on
February 27, 1937 and June 11, 1937 (Exhibits "G" and "G-1" respectively). The trade mark sought to
be registered is actually used on boxes of shirts and undershirts imported to the Philippines from
Japan (see Exhibits "F", "F-1" up to "F-5"). Shirts and undershirts bearing said trade mark appear to
have been imported to the Philippines as early as 1949 (see Exhibits "E-4" up to "E-11). Shirts and
undershirts bearing said trade mark were also imported by Wan Lian Trading of Manila subsequently,
as evidenced by shipping documents, Exhibits "C", "C-4" dated October 27, 1963, and shipping
documents Exhibits "D", "D-1" up to "D-4" dated September 11, 1953.
We are therefore satisfied that the trade marks sought to be registered are registered in Tokyo,
Japan on February, 1937 and June, 1937, and the same have been used on shirts and undershirts
imported into the Philippines as early as the year 1949, and continuously up to the date of the trial.
We therefore find that the Director of Patents committed the second and sixth assignments of error.
The third assignment of error is also well taken. There is no evidence that the trade mark in question
was confiscated by the United States in conformity with the Trading With The Enemy Act.
Furthermore, as it was not found that the trade mark was registered in the Philippines by a Japanese
before the war, it could not have been confiscated under the Trading With The Enemy Act. How can
a non- existent property or trade mark be confiscated?
We also find merit in the fourth assignment of error. It appears that even prior to the trade agreement
between Supreme Commander for the Allied Powers (SCAP) and the Republic of the Philippines, the
first of which was entered into on March 3, 1951, goods bearing the trade mark in question have
already come into the Philippines as evidenced by Exhibits "E-4" to "E-11" inclusive, all of which bear
date 1949. During that year the agreement between Occupied Japan and the Philippines had not
yet been entered into. But Japan was occupied by the United States since 1945 and was therefore
under its lawful control; and since this country has always had commercial relations with the United
States, it can not be said that the entry of goods from Occupied Japan to the Philippines is illegal, or
is not legitimate trade or commerce which can give rise to any rights to trade marks. The view of this
subject by the Director of Patents, that the trade relations between Japan and the Philippines is not
lawful or legal, is so narrow to be justified by the relations existing between the United States and the
Philippines. Since 1949 up to the present time, commercial relations with Japan had existed and
continued, and the importation of commodities bearing the trade mark in question into the
Philippines taken place. The lawful entry into the Philippines of goods bearing the trade mark since
1949 should entitle the owner of the trade mark to the right to use the same to the exclusion of
others. Modern trade and commerce demands that depredations on legitimate trade marks of non-
nationals should not be countenanced. The strict condition imposed in the decision of the Director of
Patents that a formal commercial agreement between two nations must exist before the trade mark
of one may be recognized in the other, is inconsistent with the freedom of trade recognized in
modern times. We therefore find that the fourth assignment of error is meritorious.
The fifth assignment of error is also sustained. It follows from all the above that as petitioner-oppositor
was the first user of the trade mark in question in the Philippines, it will be damaged by the
registration of the trade mark in the name of applicant-respondent.
WHEREFORE, the decision sought to be reviewed is hereby reversed, and the application for
registration of the trade mark by Kee Boc is hereby dismissed, with costs against the respondent-
applicant Kee Boc.
[G.R. No. L-17501. April 27, 1963.]
MEAD JOHNSON & COMPANY, Petitioner, v. N. V. J. VAN DORP, LTD., ET AL., Respondents.
Ross, Selph & Carrascoso for Petitioner.
Manuel Y. Macias for respondent N.V.J. Van Dorp, Ltd.
Solicitor General for respondent Director of the Patent Office.
SYLLABUS
1. TRADEMARKS AND TRADENAMES; TEST IN DETERMINING WHETHER TWO TRADEMARKS ARE
CONFUSINGLY SIMILAR; TWO MARKS IN THEIR ENTIRETY TO BE CONSIDERED IN RELATION TO THE
GOODS TO WHICH THEY ARE ATTACHED. — In determining whether two trademarks are confusingly
similar, the two marks in their entirety as they appear in the respective labels must be considered in
relation to the goods to which they are attached; the discerning eye of the observer must focus not
only on the predominant words but also on the other features appearing on both labels.
DECISION
BAUTISTA ANGELO, J.:
On June 2, 1956, N. V. J. Van Dorp, Ltd., a corporation organized under the laws of Netherlands,
located and doing business at Gouda, Netherlands, filed an application for the registration of the
trademark "ALASKA and pictorial representation of a Boy’s Head within a rectangular design
(ALASKA disclaimed)." The trademark was published in an issue of the Official Gazette which was
officially released on June 5, 1956.
Mead Johnson & Company, a corporation organized under the laws of Indiana, U.S.A., being the
owner of the trademark "ALACTA" used for powdered half-skin milk, which was registered with the
Patent Office on June 12, 1951, filed an opposition on the ground that it will be damaged by the said
registration as the trademark "ALASKA" and pictorial representation of a Boy’s Head within a
rectangular design (ALASKA disclaimed), used for milk, milk products, dairy products and infant’s
foods, is confusingly similar to its trademark "ALACTA."
In answer to the opposition, the applicant alleged that its trademark and product "ALASKA" are
entirely different from oppositor’s trademark and product "ALACTA", since applicant’s product
covers milk, milk products, dairy products and infant’s foods which fall under Class 47, Foods and of petitioner come in one-pound container while those of respondent come in three sizes, to wit: 14-
Ingredients of Foods, while oppositor’s products cover pharmaceutical preparations for nutritional ounce tin of full condensed full cream milk; 14 1/2-ounce tin of evaporated milk; and 6-ounce tin of
needs which fall under Class 6, which refers to Medicines and Pharmaceutical Preparations. evaporated milk.

After issues were joined, and after due hearing, the Director of the Patent Office, on August 26, 1960, (b) The colors too differ. One of petitioner’s containers has one single background color, to wit: light
rendered decision dismissing the opposition and holding that the trademark sought to be registered blue; the other has two background colors, pink and white. The containers of respondent’s goods
does not sufficiently resemble oppositor’s mark "as to be likely when applied to the goods of the have two color bands, yellowish white and red.
parties to cause confusion or mistake or to deceive purchasers" even if oppositor’s goods, half-skim
powdered and powdered whole milk and those of applicant’s condensed and evaporated milk are (c) Petitioner’s mark "ALACTA" has only the first letter capitalized and is written in black. Respondent’s
similar as they have the same descriptive properties, both goods being milk products. mark "ALASKA" has all the letters capitalized written in white except that of the condensed full cream
milk which is in red.
Hence, oppositor filed the present petition for review.
Again, coming to the goods covered by the trademarks in question, we also notice the following
Petitioner contends that the Director of the Patent Office erred (1) in holding that the mark which dissimilarities:chanrob1es virtual 1aw library
respondent seeks to register does not resemble petitioner’s mark as to be likely when applied to the
goods to cause confusion or mistake or to deceive purchasers, and (2) in holding that the trademark In the petitioner’s certificate of registration, it appears that the same covers "Pharmaceutical
sought to be registered has become distinctive based on its extensive sales. Preparations which Supply Nutritional Needs" which fall under Class 6 of the official classification as
"Medicines and Pharmaceutical Preparations", thus indicating that petitioner’s products are not
Anent the first point, petitioner seems to dispute the finding of the Director of the Patent Office by foods or ingredients of foods but rather medicinal and pharmaceutical preparations that are to be
emphasizing the striking similarities existing between the trademark "ALASKA" which is sought to be used as prescribed by physicians. On the other hand, respondent’s goods cover "milk, milk products,
registered and that of "ALACTA" which petitioner has long registered for the protection of its dairy products and infant’s foods" as set forth in its application for registration which fall under an
products. Thus, it is argued, in appearance and sound the trademarks "ALASKA" and "ALACTA" are entirely different class, or under Class 47 which refers to "Foods and Ingredients of Foods", and for use
sufficiently close. The three vowels are the same in both the public would pronounce them short of these products there is no need or requirement of a medical prescription.
accenting on the second syllable. Both marks have the same number of letters and the vowels are
placed on the same position. The general form and sound of the words are of marked similarity so as In view of the above dissimilarities, the Director of the Patent Office overruled petitioner’s opposition
to suggest the likelihood of confusion. While "ALACTA" and "ALASKA" differ entirely in meaning, they in the following wise:jgc:chanrobles.com.ph
are confusingly similar in appearance. The three letter prefixes of both marks are identical. Both
marks end with the same letter "A." The only difference lies in the letters "CT" in "ALACTA" and "SK" in "Considering the substantial differences in the marks as displayed on the respective labels of the
"ALASKA." And in support of its contention, petitioner cites the case of Esso Standard Oil Company v. parties and considering the distinctiveness of the mark of applicant, acquired from its extensive sales,
Sun Oil Company, Et Al., 46 TMR 444, wherein it was held that SUNVIS and UNIVIS are quite different in it is concluded that the applicant’s mark does not resemble opposer’s mark as to be likely when
sound and meaning but in their entireties they are confusingly similar in appearance. Said the applied to the goods of the parties to cause confusion or mistake or to deceive purchasers."cralaw
court:jgc:chanrobles.com.ph virtua1aw library

"As already noted, it found on the basis of the evidence before it that the two marks are quite
different in sound and meaning but that in their entireties the marks are confusingly similar in
appearance, because of their having identical suffixes and three letter prefixes with the same two
letters UN in the same order."cralaw virtua1aw library
On the other hand, respondent contends that it is not correct to say that in passing on the question
as to whether the two marks are similar only the words "ALASKA" and "ALACTA" should be taken into
account since this would be a most arbitrary way of ascertaining whether similarity exists between
two marks. Rather, respondent contends, the two marks in their entirety and the goods they cover
should be considered and carefully compared to determine whether petitioner’s opposition to the
registration is capricious or well- taken. In this connection, respondent invokes the following rules of
interpretation: (1) appellant’s mark is to be compared with all of the oppositor’s marks in determining
the point of confusion; 1 (2) the likelihood of confusion may be determined by a comparison of the
marks involved and a consideration of the goods to which they are attached; 2 and (3) the court will
view the marks with respect to the goods to which they are applied, and from its own observation
arrive at a conclusion as to the likelihood of confusion. 3
It is true that between petitioner’s trademark "ALACTA" and respondent’s "ALASKA" there are
similarities in spelling, appearance and sound for both are composed of six letters of three syllables
each and each syllable has the same vowel, but in determining if they are confusingly similar a
comparison of said words is not the only determining factor. The two marks in their entirety as they
appear in the respective labels must also be considered in relation to the goods to which they are
attached. The discerning eye of the observer must focus not only on the predominant words but also
on the other features appearing in both labels in order that he may draw his conclusion whether one
is confusingly similar to the other. Having this view in mind, we believe that while there are similarities
in the two marks there are also differences or dissimilarities which are glaring and striking to the eye
as the former. Thus we find the following dissimilarities in the two marks:chanrob1es virtual 1aw library
(a) The sizes of the containers of the goods of petitioner differ from those of Respondent. The goods
We have examined the two trademarks as they appear in the labels attached to the containers
which both petitioner and respondent display for distribution and sale and we are impressed more
by the dissimilarities than by the similarities appearing therein in the same manner as the Director of
the Patent Office, and because of this impression we are persuaded that said Director was justified in
overruling petitioner’s opposition. Hence, we are not prepared to say that said Director has erred in
overruling said opposition.
WHEREFORE, the decision appealed from is affirmed, with costs against petitioner.
[G.R. No. L-18337. January 30, 1965.]
CHUA CHE, Petitioner, v. PHILIPPINE PATENT OFFICE and SY TUO, Respondents.
Chipeco & Alcaraz, Jr. for Petitioner.
Perfecto E. de Vera for Respondent.
SYLLABUS
1. PATENTS; APPEAL FROM DECISIONS OF DIRECTOR OF PATENTS ORDINARILY ALLOWED ONLY ON
QUESTIONS OF LAW. — Ordinarily, only questions of law should be raised in appeals from decisions of
the Director of Patents. The only exception to this rule is when the findings of fact in the decision are
not supported by substantial evidence.
2. ID.; ID.; FINDING OF PRIORITY OF USE AND ADOPTION OF TRADEMARK IS ONE OF FACT. — The
finding of the Director of Patents to the effect that the oppositor had priority of use and adoption of
the trademark in question is, for all intents and purposes, one of fact. and interests of the Oppositor over his registered trademark "X-7" covered by Certificate of
Registration No. 5,000, issued on April 21, 1951, but will also tend to mislead the purchasing public
3. ID.; REGISTRATION OF TRADE-MARK REFUSED WHERE IT WILL CAUSE CONFUSION WITH SIMILAR MARK and make it convenient for unscrupulous dealers to pass off the goods of the applicant CHUA CHE,
ON GOODS OF DIFFERENT CATEGORY. — Registration of a trademark should be refused in cases for those of the oppositor of SY TUO, to the injury of both the oppositor and the public.
where there is a likelihood of confusion, mistake, or deception, even though the goods fall under
different categories. 2. The registration of the said trademark "X-7" in the name of CHUA CHE will be in violation of, and will
run counter to, Section 4(d) of Republic Act No. 166, as amended, because it is confusingly similar to
the trademark "X-7" covered by Registration No. 5,000 previously registered to, and being used by
DECISION the oppositor and is not abandoned.

The Oppositor SY TUO, doing business as the Western Cosmetic Laboratory will rely on the following
PAREDES, J.: facts:chanrob1es virtual 1aw library

(a) Oppositor has prior use of the trademark "X-7" as he has been using it extensively and
This is a petition to review the decision of the Director of Patents, in Inter Partes Case No. 161, denying continuously since July 31, 1952, while the applicant, Chua Che, allegedly used his trademark only
the application of petitioner Chua Che for the registration of "T.M. X-7" for use on soap Class 51, since June 10, 1957.
being manufactured by said Chua Che, upon the opposition of respondent Sy Tuo.
(b) Oppositor’s mark "X-7" is distinctive and his invented mark and not merely an ordinary, common
Under date of October 30, 1958, Chua Che presented with the Philippines Patent Office a petition and weak mark.
praying for the registration in his favor the trade name of "X-7." The petition,
states:jgc:chanrobles.com.ph (c) The oppositor and the applicant use the trademark "X-7" for allied and closely related products.

"The undersigned CHUA CHE, a citizen of China, a resident of 2804 Limay St., Tondo, Manila, and (d) The oppositor has spent a huge amount by way of advertising and popularizing his "X-7" brand.
doing business at same address, has adopted and used the trademark "X-7", shown in the
accompanying Drawing. (e) The oppositor has spent a big amount in expanding his business for the manufacture of toilet
soap and crystal laundry soap with his already popular "X-7" brand.
"In accordance with the requirements of law, the undersigned declares that this trademark —
(f) The trademark applied for by the applicant Chua Che consists of the trademark "X-7" and anyone
1. Was first used by him on June 10, 1957. is likely to be misled as to the source of origin by the close resemblance or identity with the
trademark "X-7" of the oppositor."cralaw virtua1aw library
2. Was first used by him in commerce in or with the Philippines on June 10, 1957.
Attached to the Opposition were labels (samples) being used by oppositor on his products, which
3. Has been continuously used by him in trade in or with the Philippines for more than one year. clearly show "X-7."

4. Is, on the date of this application, actually used by him on the following goods, classified Petitioner herein presented an Answer to Notice of Opposition, claiming among others that the
according to the Official Classification of Goods (Rule 82):chanrob1es virtual 1aw library grounds of opposition are not correct, since although it is admitted that "X-7" is registered in the
name of oppositor, said trademark is not being used on soap, but purely toilet articles. After the
Class 51 — Soap presentation of the Answer the case was heard, wherein the parties presented their respective
evidence, both testimonial and documentary. In the memoranda of the contenders, they limited the
5. Is applied to the goods or to the packages containing the same, by placing thereon a printed principal issues, thus —
label on which the trademark is shown, or by directly impressing the mark to the goods."cralaw
virtua1aw library Oppositor SY TUO —

The corresponding declaration, which was under oath, contained, among others, the The registration of the trademark "X-7" in the name of applicant CHUA CHE will likely mislead the
following:jgc:chanrobles.com.ph public so as to make them believe that said goods are manufactured or sponsored by or in some
way in trade associated with opposer.
"3. That he believes himself to be the lawful owner of the trademark sought to be registered.
Applicant CHUA CHE —
4. That the said trademark is in actual use in Commerce in or with the Philippines not less than two
months before this application is filed. In Inter Partes proceedings, the principal issue is "priority of adoption and use." Since opposer has not
yet used "X-7" mark on soap, but will still use it, applicant should be entitled to the registration of the
5. That no other person, partnership, corporation, or association, to the best of his knowledge and same.
belief, has the right to use said trademark in the Philippines, either in the identical form or in any such
near resemblance thereto as might be calculated to deceive."cralaw virtua1aw library The Director of Patents rendered judgment on January 18, 1961, the pertinent portions of which
read:jgc:chanrobles.com.ph
Under date of July 6, 1959, an examiner of the Department of Commerce and Industry, submitted a
report recommending the allowance of the application, which report was approved by the "Based on those facts there is no question that opposer’s first use of the trademark X-7 on July 31,
Supervising TM Examiner. After the notice of allowance was published in the Official Gazette, as 1953, is prior to applicant’s first use of the mark on June 10, 1957. The only question then in this case is
required, respondent Sy Tuo presented a "Notice of Opposition," dated October 15, 1959, anchoring whether or not purchasers of X-7 perfume, lipstick and nail polish would likely upon seeing X-7 laundry
said opposition on the following allegations:chanrob1es virtual 1aw library soap, attribute common origin to the products or assume that there existed some kind of trade
connection between applicant and opposer.
1. The registration of the trademark "X-7" as applied for by CHUA CHE will not only violate the rights
"Opposer’s record shows that he has been using since July 31, 1953 the trademark X-7 on perfume,
lipstick and nail polish; that he has spent substantial amounts of money in building upon the goodwill
of this trademark through advertisements in all kinds of media — through newspapers of general
circulation, by means of billboards in various places in the Philippines, and also over the radio and
television. In these advertisements opposer enjoys a valuable goodwill in the trademark X-7.
"The products of the parties, while specifically different, are products intended for use in the home
and usually have common purchasers. Furthermore, the use of X-7 for laundry soap is but a natural
expansion of business of the opposer. In fact, herein opposer in 1956, prior to the alleged date of first
use by respondent- applicant of the trademark X-7 for laundry soap on June 10, 1957, had made
steps in expanding the use of this trademark to granulated soap. Under these circumstances, it is
concluded that the average purchasers are likely to associate X-7 laundry soap with X-7 perfume,
lipstick and nail polish or to think that the products have common origin of sponsorship.
"IN VIEW OF THE ABOVE FINDINGS, the opposition in this case should be as it is hereby sustained and
consequently Application Serial No. 6941, of Chua Che, is also hereby rejected.
"OPPOSITION SUSTAINED."cralaw virtua1aw library
The above judgment is now before Us, applicant-appellant claiming that it was error for the Director
to conclude that opposer SY TUO had priority to use the trademark in question, and that the use by
appellant of the trademark "X-7" on granulated soap to be manufactured and sold by him, would
likely mislead purchasers.
At the very outset, We would like to state that in cases of the nature of the one at bar, (only
questions of law should be raised, and the only exception to this rule, meaning that findings of facts
may be reviewed, is when such findings are not supported by substantial evidence (Sec. 2, Rule 44,
Revised Rules). The finding of the Director of Patents Office to the effect that opposer-appellee Sy
Tuo had priority of use and adoption of the trademark "X-7", is for all intents and purposes, one of
fact. This being the case, such finding becomes conclusive to this Court. Even on this sole issue alone,
the petition for review must fall.
However, there are other matters which must be clarified. For instance, the fact that appellee has
not yet used the trademark "X-7" on granulated soap, the product on which appellant wants to use
the said trademark. The circumstance of non-actual use of the mark "X-7" on granulated soap by
appellee, does not detract from the fact that he has already a right to such a trademark and
should, therefore, be protected. The observation of the Director of Patents to the effect that "the
average purchasers are likely to associate X-7 laundry soap with X-7 perfume, lipstick and nail polish
or to think that the products have common origin or sponsorship," is indeed well taken. It has been
pointed out by appellant that the product upon which the trademark X-7 will be used (laundry soap)
is different from those of appellee’s, and therefore no infringement and/or confusion may result. We
find no merit in the above contention, for it has been held that while it is no longer necessary to
establish that the goods of the parties possess the same descriptive properties, as previously required
under the Trade Mark Act of 1905, registration of a trademark should be refused in cases where there
is a likelihood of confusion, mistake, or deception, even though the goods fall into different
categories. (Application of Sylvan Sweets Co., 205 E. 2nd, 207.) The products of appellee are
common household items now-a-days, in the same manner as laundry soap. The likelihood of
purchasers to associate these products to a common origin is not far-fetched. Both from the
standpoint of priority of use and for the protection of the buying public and, of course, appellee’s
rights to the trademark "X-7", it becomes manifest that the registration of said trademark in favor of
applicant-appellant should be denied.
PREMISES CONSIDERED, the decision sought to be reviewed should be, as it is hereby affirmed in all
respects, with costs against appellant CHUA CHE in both instances.
G.R. No. L-26557 February 18, 1970
AMERICAN WIRE & CABLE COMPANY, petitioner,
vs.
DIRECTOR OF PATENTS and CENTRAL BANAHAW INDUSTRIES, respondents.
Sotero H. Laurel and Florencio Z. Sioson for petitioner.
Celso P. Mariano for respondents.
REYES, J.B.L., J.:
Appeal filed by the American Wire & Cable Company, owner of the registered trademark DURAFLEX
for electric wires, questioning the correctness of the decision of the Director of Patents (in Inter Partes
Case No. 290) holding that the label DYNAFLEX and Device for electric wires, sought to be registered
by the Central Banahaw Industries, Inc., is not similar to herein appellant's patented mark.
On 2 June 1962, 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, class 20, which
mark applicant 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,
class 20, opposed the application on the ground that applicant's use of 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, as that of the opposer. Besides, opposer contended that
there has been no continuous use in commerce of the applicant's mark.
After due hearing, the Director of Patents rendered decision holding the applicant's mark DYNAFLEX
not to be similar to the previously registered trademark DURAFLEX. Consequently, the application of
Central Banahaw Industries for registration of DYNAFLEX was given due course and the opposition
thereto by American Wire & Cable Company dismissed. The latter interposed the present appeal.
The issue to be resolved in this proceeding is simple: 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.
In ruling in favor of the herein application, the Director of Patents said:
... The applicant's trademark is a composite mark consisting of the word
DYNAFLEX printed in small letters of the English alphabet except that letter "D" is
capitalized, within a fanciful device, on top of which is the encircled initials, in
downward sequence, of the Respondent's corporate name, and jutting out on
two sides of the circle are bolts of lightning, symbolic of electricity.
On the other hand, Opposer's trademark is DURAFLEX in Capitalized print,
except that one cross piece of the letter X is in the form of a bolt of lightning.
The word slants slightly upward, traversing the center of a figure of the earth or
globe.
Resorting now to the semantics of the words, it is clear that both marks are
suffixed by the word FLEX. The word appears in any dictionary having as
common meaning "to bend." In Webster's International Dictionary, it is used by
the British on electric cord. However, one mark (Respondent's) is prefixed with
DYNA suggesting power. It is not in itself a rootword but it has been commonly
associated with any source of power. At most, it could have been derived from
the Greek word "Dynamis" and, generally, the root words commonly derived
 therefrom are ''dynam'' and "dynamo". The other (Opposer's) is prefixed with
DURA, suggesting durability, strength and endurance.
Based on the foregoing comparisons, the trademarks of the parties are
different in appearance, meaning, sound and connotation and hence, are not
confusingly similar.
The pertinent law, 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 question is, when is a trademark likely to confuse or cause the public to mistake one for another?
Earlier rulings of the Court seem to indicate its reliance on the dominancy test or the assessment of
the essential or dominantfeatures in the competing labels to determine whether they are confusingly
similar.1 On this matter, the Court said:
It has been consistently held that the question of infringement of a trademark is
to be determined by the test of dominancy. Similarity in size, form, and color,
while relevant, is not conclusive. 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. Duplication or imitation is not
necessary, nor is it necessary that the infringing label should suggest an effort to
imitate (C. Neilman Brewing Co. vs. Independent Brewing Co., 191 F. 489, 495,
citing Eagle White Lead Co. vs. Pflugh [CC] 180 Fed. 579). The question at issue
in cases of infringement of trademarks is whether the use of the marks involved
would be likely to cause confusion or mistakes in the mind of the public or
deceive purchasers." (Go Tiong vs. Director of Patents, 95 Phil. 1, cited in Lim
Hoa vs. Director of Patents, 100 Phil. 214).2
In fact, even their similarity in sound is taken into consideration, where the marks refer to
merchandise of the same descriptive properties, for the reason that trade idem sonans constitutes a
violation of trade mark patents.3 Thus, in he case of Marvex Commercial Co. vs. Hawpia & Co., 4 the
registration of the trademark "Lionpas" for medicated plaster was denied for being confusingly similar
in sound with "Salonpas", a registered mark also for medicated plaster, the Court saying:
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.)
Along the same line are the rulings denying registration of a mark containing the picture of a fish
(Bañgus), as label for soy sauce, for being similar to another registered brand of soy sauce that bears
the picture of the fish carp;5 or that of the mark bearing the picture of two roosters with the word
"Bantam", as label for food seasoning (vetsin), which would confuse the purchasers of the same
article bearing the registered mark "Hen Brand" that features the picture of a hen. 6
The present case is governed by the principles laid down in the preceding cases. 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 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.
The Director of Patents has predicated his decision mostly on the semantic difference and
connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately forgetting
that the buyers are less concerned with the etymology of the words as with their sound and the
dominant features of the design.
Of course, as pointed out in the decision now on appeal there are some differences in the mark on
the front portion of the box. But they pale into insignificance in view of the close resemblance in the
general appearance of the box and the tradenames of the articles. Indeed, measured against the
dominant-feature standard, applicant's mark must be disallowed. For, undeniably, the dominant and
essential feature of the article is the trademark itself. Unlike in the case of commodities that are
ordinarily picked up by the purchaser himself from the grocery or market counters, electric wires are
purchased not by their appearance but by the size (voltage) and length and, most importantly, by
brand. It is even within layman's knowledge that different brands of wire have different
characteristics and properties; and for an essential building item as electric wires and supplies, the
owner of the building would not dare risk his property, perhaps his life, on an unknown or untested
brand. He would only demand for what is recognized to be the best.
Relying on the doctrine enunciated in the Etepha case 7 and the earlier ruling in Lim Hoa vs. Director
of Patents,8applicant-appellee contends that the DYNAFLEX mark would not confuse or deceive the
buyers and subscribers of the DURAFLEX brand, because electrical wires are of great value and the
purchasers thereof are generally intelligent — the architects, engineers and building contractors. It
must be realized, however, that except perhaps in big constructions, the designing architect or
engineer, or the contractor who will undertake the work of building, does not himself purchase or
place the order for the purchase of the materials to be used therein. The task is oftentimes
delegated to another. Nor are said technical men the ones personally laying down the wiring system
in the building that they could possibly check on whether or not the correct wires are being used. So
that even if the engineer or contractor will specify in the bill of materials the particular brand of wires
needed, there is no certainty that the desired product will be acquired. For, unlike the pharmacists or
druggists, the dispensers of hardware or electrical supplies are not generally known to pay as much
concern to the brand of articles asked for by the customer and of a person who knows the name of
the brand but is not acquainted with it is appearance, the likelihood of the DYNAFLEX product being
mistaken for DURAFLEX is not remote.
Of course, as in all other cases of colorable imitations, the unanswered riddle is why, of the millions of
terms and combinations of letters and designs available, the appellee had to choose those so
closely similar to another's trademark if there was no intent to take advantage of the goodwill
generated by the other mark.
FOR THE FOREGOING CONSIDERATIONS, the decision appealed from is hereby set aside, and the
application for registration of the trademark DYNAFLEX for electric wires, class 20, is ordered denied.
No costs.
A petition for registration in the Principal Register of the Patent Office of the trademark "BIOFERIN"
was filed on October 21, 1957 by United American Pharmaceuticals, Inc. Said domestic corporation
first used the afore-stated trademark in the Philippines on August 13, 1957. It covers "a medicinal
preparation of antihistamic, analgesic, antipyritic with vitamin C and Bioflavenoid used in the
treatment of common colds, influenza and other febrile diseases with capillary hemmorrhagic
tendencies." The product falls under Class 6 of the official classification, that is, "Medicines and
Pharmaceutical Preparations".

[G.R. No. L-21587. May 19, 1966.] Bristol Myers Co., a corporation of the State of Delaware, U.S.A., filed on January 6, 1959 an
opposition to the application. Said oppositor is the owner in the Philippines of the trademark
BRISTOL MYERS COMPANY, Petitioner, v. THE DIRECTOR OF PATENTS and UNITED AMERICAN "BUFFERIN" under Certificate of Registration No. 4578 issued by the Philippine Patent Office on March
PHARMACEUTICALS, INC., Respondents. 3, 1954. Its trademark is also registered in the United States under Certificate of Registration No.
566190 issued on November 4, 1952. It was first used in the Philippines on May 13, 1953. The product
Picazo & Agcaoili for Petitioner. covered by "BUFFERIN" also belongs to Class 6, Medicines and Pharmaceutical Preparations.
Designated as "Antacid analgesic", it is intended for relief in cases of "simple headaches, neuralgia,
Sycip, Salazar, Luna & Associates for respondent United American Pharmaceuticals, Inc. colds, menstrual pain and minor muscular aches."

Solicitor General Arturo A. Alafriz, Assistant Solicitor General A. A. Torres and Solicitor A.V. Sempio-
Diy, for Director of Patents. The thrust of oppositor's contention was that the registration of the applicant's trademark "BIOFERIN
would violate its rights and interests in its registered trademark "BUFFERIN" as well as mislead and
confuse the public as to the source and origin of the goods covered by the respective marks, in view
SYLLABUS of the allegedly practically the same spelling, pronunciation and letter-type design of the two
trademarks covering goods of the same class.

1. TRADEMARK; TEST TO DETERMINE CONFUSING SIMILARITY. — In determining whether two trademarks

are confusingly similar, the test is not simply to take their words and compare the spelling and The parties thereafter filed on January 18, 1961 a joint petition stipulating as to the facts and
pronunciation of said words. Rather, it is to consider the two marks in their entirety, as they appear in submitting the case upon the issue of whether or not, considering all the factors involved, in both
the respective labels, in relation to the goods to which they are attached. (Mead Johnson & Co. v. trademarks — as the parties would discuss in their memoranda,— there will be such confusing
N.V.J. Van Dorp, Ltd., G.R. No. L-17501, April 27, 1963.) similarity between the two trademarks as will be likely to deceive the purchasing public.

2. ID.; ID.; TRADEMARK HAVING THE SAME SUFFIX AND SIMILAR SOUNDING PREFIXES BUT WITH
STRIKINGLY DIFFERENT BACKGROUNDS; CASE AT BAR. — The trademarks in question are not apt to
confuse prospective customers. For though the words "BIOFERIN" and "BUFFERIN" have the same suffix
and similar-sounding prefixes, they appear in their respective labels with strikingly different
backgrounds and surroundings, as to color, size and design. Furthermore, the product covered by
"BIOFERIN" is expressly stated as dispensable only upon doctor’s prescription, while that of "BUFFERIN"
does not require the same. The chances of being confused into purchasing one for the other are
therefore all the more rendered negligible.
After submission of memoranda, on June 21, 1963 the Director of Patents rendered a decision
granting the petition for registration and dismissing the opposition, on the ground that, all factors
considered the trademarks in question are not confusingly similar, so that the damage feared by the
oppositor will not result.
From said decision the oppositor appealed to this Court by petition for review filed on July 24, 1963.
The sole issue raised thereby is: Are the trademarks "BIOFERIN" and "BUFFERIN", as presented to the
public in their respective labels, confusingly similar?

DECISION
Appellant contends that confusing similarity will obtain because both products are primarily used for
the relief of pains such as headaches and colds; and because words "BIOFERIN and "BUFFERIN" are
practically the same in spelling and pronunciation.
BENGZON, J.P., J.:

In determining whether two trademarks are confusingly similar, the test is not simply to take
their words and compare the spelling and pronunciation of said words. Rather, it is to consider
the two marks in their entirety, as they appear in the respective labels, in relation to the goods to
G.R. No. L-21587 May 19, 1966
which they are attached. Said rule was enunciated by this by this Court through Justice Felix Bautista
Angelo in Mead Johnson & Co. vs. N.V.J Van Dorp, Ltd., L,17501, April 27, 1963, thus:
BRISTOL MYERS COMPANY, petitioner,
vs.
It is true that between petitioner's trademark "ALACTA" and respondent's "ALASKA" there
THE DIRECTOR OF PATENTS and UNITED AMERICAN PHARMACEUTICALS, INC., respondents.
are similarities in spelling, appearance and sound for both are composed of six letters of
three syllables each and each syllable has the same vowel, but in determining if they are
Picazo and Agcaoili for petitioner. confusingly similar a comparison of said words is not the only determining factor. The two
Sycip, Salazar, Luna and Associates for respondent United American Pharmaceuticals, Inc. marks in their entirety as they appear in the respective labels must also be considered in
Office of the Solicitor General Arturo A. Alafriz, Assistant Solicitor General A. A. Torres and Solicitor A. relation to the goods to which they are attached. The discerning eye of the observer must
V. Sempio-Diy, for Director of Patents. focus not only on the predominant words but also on the other features appearing in both
labels in order that he may draw his conclusion whether one is confusingly similar to the
other. ...
BENGZON, J.P., J.:
Applying this test to the trademarks involved in this case, it is at once evident that the Director of
Patents did not err in finding no confusing similarity. For though the words "BIOFERIN" and "BUFFERIN" Federico Diaz for Respondent.
have the same suffix and similar sounding prefixes, they appear in their respective labels with
strikingly different backgrounds and surroundings, as to color , size and design.
SYLLABUS

For convenience we sum up these differences, as follows:

1. PATENT OFFICE; FACTUAL FINDING CONCLUSIVE ON SUPREME COURT. — The rule is that the findings
of fact by the Director of Patents are conclusive on the Supreme Court, provided they are supported
Relevant Factors "BIOFERIN" by substantial evidence (Anchor Trading Co, v. Director of Patents, G.R. No. L-8004, May 30, 1956).
"BUFFERIN"

2. ID.; APPLICATION FOR TRADEMARK; FILLING DATES OF APPLICATION AS PROOF OF THE DATE OF
1. Shape & Size Rectangular, about 3-3/4" 2-1/4" FIRST 1-1/4"
Rectangular, 3-3/4"' USE. — Where the testimonial evidence for both parties has been entirely disregarded, and
of Label reliance is placed solely on the filing dates of the applications as proof of the respective dates of first
use, then the abandoned application filed by the junior party applicant becomes cogent evidence
to show that he first used the trademark as of the date of its filing (Smith v. Hall, 81 L. ed. 1049).
2. Color of Label Predominantly Yellow Predominantly White
3. ID.; ID.; BURDEN OF PRESENTING CLEAR AND CONVINCING EVIDENCE OF ADOPTION AND USE AT
EARLIER DATE OF TRADEMARK. — Where an applicant for registration of a trademark states under
3. Color Olive-green Blue oath the date of his earliest use, and later on he wishes to carry back his first date of use to an earlier
background of date, he then takes on the greater burden of presenting "clear and convincing evidence" of
Word-mark adoption and use as of that earlier date, (B. R.. Baker Co. v. Lebow Bros., 150 F. 2d. 580).

4. TRADEMARKS AND TRADENAMES; ESTABLISHMENT OF FIRST USE; DECISION OF DIRECTOR OF PATENTS,

4. Over-all At the top center-word mark "BIOFERIN"; below it At left side of label
EFFECT
— Wood-
ON. — Where it appears that petitioner has established prior use and adoption of questioned
Layout are contents of medicine, arranged horizontally; mark "BUFFERIN"; trademark
with "Bristol
forMyers
whichCo.,
reason he and not respondent Ng Giab is entitled to registration thereof, the
at bottom, center, "United Pharmaceuticals, Inc." in New York, N.Y."decision
below atof right
the Director of Patents is reversed. Petitioner is adjudged prior user of the trademark
olivegreen background. At left side — dosage, printed side, contents, MARCA
indications
PIÑA dosage
and representation
are thereof, and its registration in his name is hereby ordered.
perpendicularly; at right side,indications,also grouped together, printed
perpendicularly printed. perpendicularly
DECISION

5. Form of Capsules — Tablets —

product label says: "50 capsules" label says: "36 Tablets"
MAKALINTAL, J.:

6. Prescription Label states: No such statement

Petitioner Chung Te interposed this appeal from the decision of the Director of Patents giving due
"To be dispensed only by or on the prescription of a course to the application of respondent Ng Kian Giab for registration of the trademark "Marca Piña"
physician" and representation thereof, and rejecting his own application for registration of the same trademark
and a similar representation.

Accordingly, taken as they will appear to a prospective customer, the trademark in question are not
apt to confuse. Furthermore, the product of the applicant is expressly stated as dispensable only
upon doctor's prescription, while that of oppositor does not require the same. The chances of being
confused into purchasing one for the other are therefore all the more rendered negligible. Although
oppositor avers that some drugstores sell "BIOFERIN" without asking for a doctor's prescription, the
same if true would be an irregularity not attributable to the applicant, who has already clearly stated
the requirement of a doctor's prescription upon the face of the label of its product.
Wherefore, the decision of the Director of Patents appealed from is hereby affirmed without costs. So
ordered.
Petitioner filed his application on November 25, 1958, alleging therein that since January 8, 1951 he
had been using the trademark on undershirts (de hilo), T-shirts, and baby dresses. Because of the
confusing similarity between said trademark and that applied for on July 16, 1957 by Ng Kian Giab,
an interference was declared as existing between the two applications. 1 Ng Kian Giab stated in his
application that he had been using the trademark on undershirts since December 6, 1955. At the
hearing both parties presented testimonial as well as documentary evidence to prove their
respective claims of priority of adoption and use. Respondent Director of Patents, however, declared
that neither of them "satisfactorily adduced definite and conclusive proof of their asserted dates of
first use of the trademark "Marca Piña" ; and relying on the rule that "in inter plates cases, when
neither of the parties have (has) satisfactorily proven the date of first use alleged in their applications,
such date shall be confined to the filing date of the said application," 2 granted the application of
senior party applicant Ng Kian Giab. Junior party applicant Chung Te moved for reconsideration of
the decision, but the Director declined to reconsider, hence this appeal.

Chung Te avers that respondent Director erred (1) in not giving due weight to his documentary
[G.R. No. L-23791. November 23, 1966.] evidence which tends to prove that he has been using the trademark since 1951; (2) in not finding
that respondent Ng Kian Giab had admitted he first used the trademark only in 1955; (3) in
CHUNG TE, Petitioner, v. NG KIAN GIAB and THE HONORABLE DIRECTOR OF PATENTS, Respondents. disregarding petitioner’s prior application No. 5544 and thus finding that respondent had filed his
application earlier then petitioner; and (4) in declaring respondent as the prior user when there is no
Generoso V. Jacinto for Petitioner. substantial evidence in support thereof.
The rule is that the findings of fact by the Director of Patents are conclusive on the Supreme Court
provided they are supported by substantial evidence. 3 On November 19, 1952 petitioner ordered from the Victory Printing Company 500 calendars (Exhibit
Respondent Director disregarded all the evidence submitted by both parties and relied exclusively
on the filing dates of the applications in reaching his conclusion as to the dates of first use by the
senior party applicant and the junior party applicant, respectively. Even if the evidence for both
parties were entirely unreliable — and we do not find it so — we cannot completely disregard the
fact that on March 13, 1957 an application for the registration of the same trademark "MARCA PIÑA.
and Representation" was filed by Chung Te (Application No. 5544), although it was subsequently
considered abandoned by reason of his failure to answer 4 the communication of the Principal
Trademark Examiner dated September 25, 1957. 5 To be sure, for the purpose of determining who
was the junior party applicant in the interference 6 the filing date of said abandoned application
may not properly be considered. But in the peculiar situation obtaining in this case, where the
testimonial evidence for both parties has been entirely disregarded, and reliance is placed solely on
the filing of the applications as proof of the respective dates of first use, then the abandoned
application filed by the junior party applicant becomes cogent evidence to show that he first used
the trademark as of the date of its filing. 7 Chung Te’s petition in said abandoned case was duly
submitted in evidence and forms part of the record. (Exhibits X, X-1, to X-3).
The fact, however, is that there is other substantial evidence adduced by petitioner tending to show
that he first used the trademark in question as early as February 1952. For a long time petitioner was
the purchasing agent for his father-in-law, who owned the Liong Bee Shirt Factory. Afterwards he
decided to go into the same business for himself. His father-in-law, who theretofore had been using
the trademark "Marca Piña," transferred it to him. In January 1951 he started laying the groundwork
for his own factory. Jose Lim, 8 whom he had engaged the previous year, helped him with the
preliminary paper work, registered the factory’s first books of accounts with the Bureau of Internal
Revenue, and when the business was officially launched in 1952, continued therein as bookkeeper.
In January 1951 petitioner started producing undershirts labeled "Marca Piña." However, he sold
them under the firm name of his father-in-law because he had yet no license in his own name.
Julieta Francisco testified that she started working with petitioner in 1951. Her job was to sew skippers
and "sandos" and to affix the trademark "Marca Piña" (Exhibit B-1) and "Pineapple" on the nape of
the neck of each finished undershirt. The trademark, (Exhibit B-2), she added, as well as the legend
indicating the size of the undershirt (Exhibit B-3) were pressed on the lower portion of the garment
(Exhibits E and E-1). The undershirts were then placed inside cellophane wrappers (Exhibit C), put
together in half dozens by means of paper labels (Exhibits F and F-1), and then placed on box
containers (Exhibit D). All these exhibits (Exhibits C, F, F-1 and D) bear the trademark in question.
On November 20, 1951 the factory became a member of the Philippine Chinese Underwear
Manufacturers Association (certificate of membership, Exhibit N). According to Juanito Vitug,
secretary of the association, before a firm was admitted as member it was required to inform the
association of the trademark it was using to identify its products; and he found that among the files
of the association the sample labels "Marca Piña" (Exhibit O) submitted by petitioner when he
applied for membership were included.
On January 31, 1952 the City of Manila granted petitioner a permit to operate a shirt factory (Exhibit
T). On February 1, 1952 he paid the corresponding business taxes (Exhibits U, U-1 to U-3). On February
5, 1952 the Bureau of Commerce issued to him a certificate of registration as private merchant
(Exhibit V) and two days later a certificate of registration of the business name "Liong Sun Shirt
Factory" (Exhibit W). It appears from his application that he had commenced business on February 1,
1952.
He obtained the labels he was using from the Asiatic Press. On February 7, 1952 he bought 5000
pieces of "Marca Piña" box labels (Exhibit Q). On December 29, 1952 he purchased 100,000 "Marca
Piña" shirt labels and 10,000 "Marca Piña" cover labels (Exhibit Q-1). And on July 21, 1954 he bought
100,000 sheets of "Pineapple Brand" shirt labels (Exhibit Q-2). The box labels were delivered by him to
the Avenue Paper Box Factory, which used them in covering the cardboard boxes (a sample is
Exhibit D) which petitioner had ordered from it (Exhibit S, dated March 17, 1952; Exhibits S-1 to S-7).
Petitioner also ordered boxes from the De Luxe Cardboard Box from Factory (Exhibits AA and AA-1).
Co In, manager of the Asiatic Printing Press, affirmed that petitioner had purchased "Marca Piña"
labels from him, while Tan Dy, manager of the Avenue Paper Box Factory, attested that he used the
"Marca Pina" box covers in covering the boxes which petitioner had ordered from him. 9
Z), one of which (Exhibit Z-1) was submitted in evidence. Written thereon are the words: "LIONG SUN
Shirt Factory, Manufacturer of the well known brand ‘Pineapple and Piña’ the best cotton and De
Hilo Skippers."cralaw virtua1aw library
Petitioner first sold skippers under his firm name "Liong Sun Shirt Factory" on February 1, 1952 to Tay
Liong Kian (Receipt No. 1, Exhibit Z) and Yap Suy Yu (Receipt No. 2, Exhibit R). Both of these
customers regularly bought skippers and undershirts by the dozens as shown by receipt dated from
that time up to July 14, 1952 (Exhibits L-1 to L-9, R-1 to R-10). Although the receipts do not state that
the merchandise purchased bore the trademark "Marca Piña", both customers testified that what
they bought had that label. At the time of the hearing Tay Liong Kian 10 had a store in Yangco
Market. On the other hand, at the time he bought undershirts, Yap Suy Yu had a store at Tabora
Market.
According to the statement (Exhibit G-1) attached to the application (Exhibit G) of respondent Ng
Kian Giab he first used the trademark on December 6, 1955. At the hearing he sought to prove that
his family had been using it since 1946. Where an applicant for registration of a trademark states
under oath the date of his earliest use, and later on he wishes to carry back his first date of use to an
earlier date he then takes on the greater burden of presenting "clear and convincing evidence" of
adoption and use as of that earlier date. 11
To prove such earlier date respondent relies purely on testimonial evidence consisting of the
declarations of his father Ng Kian Soy, his brother Ng Kian Kee, their supposed seamstress Genoveva
Santos, and two customers Diego Magpantay and Cleto Sarmiento. The substance of their testimony
is as follows: since 1946 Ng Kian Soy operated a general merchandise store, the Sin Kian Ning Store,
12 in Batangas, Batangas, where he sold polo shirts bearing the trademark. After the fire in 1953 the
family rebuilt their store and expanded the business by including undershirt with the same trademark.
The name of the store was changed to Hongkong Bazar. From 1946 to 1955 they merely bought
ready made polo shirts and undershirts to each of which they then sewed the label "Marca Piña"
before resale to the public. In 1955 the father transferred the business to Ng Kian Kee, who put up a
factory — the Hongkong T-Shirt Manufacturer — and started producing undershirts bearing the
trademark. When he decided to continue his studies in 1957, he, in turn, transferred the business
to Respondent.
Such testimonial evidence falls short of the kind of proof required of Respondent. It is doubtful that
respondent’s father would pay Genoveva Santos as high as P0.02 per label (which did not even
bear his name) on polo shirts which he had purchased ready-made, and which he could very well
have sold without any label. Santos testified that the stamped label used was only "Marca Piña"
without any representation or name of the owner (Exhibit 1-D), while Magpantay said there was the
representation of a pineapple on the labels used by respondent’s family. To explain the discrepancy,
Sarmiento, who testified later, declared that there were ,three kinds of labels used (Exhibits 1-A, 1-B
and 1-C), two of which bore the representation of a pineapple, and these were attached to goods
of better quality.
While Ng Kian Kee declared that they rebuilt their store several months after the fire in 1953,
Sarmiento, who was supposed to be a regular customer, said they had no store in 1954, and they
resumed selling garments only in 1955. Santos declared that from 1954 up to the time the business
moved to Manila (in 1958) her job was to sew labels on ready made polo shirts. In answer to a
leading question, she added "undershirts." But in 1955 the factory was already in operation and
producing undershirts to which labels were attached in the process of production, thus rendering her
services unnecessary.
The documentary evidence show clearly that respondent’s use began only in 1955. The business tax
receipt in the name of Ng Kian Kee is dated October 18, 1955 (Exhibit 6). In his application for original
registration of the business name "Hongkong T-Shirt Manufacturer," Ng Kian Kee stated that his
business was that of Manufacturing T-shirts, and that as of that date, October 25, 1955, the same was
not yet in operation. It seems that it actually started operations on December 3, 1955, the date of its
Receipt No. 1 (Exhibit 4-A). It sold its first half dozen undershirts bearing the trademark on December
5, 1955 (Receipt No. 7, Exhibit 4-G). Noteworthy is the fact that in his statement attached to the
application respondent alleged that he first used the trademark "on or about December 6, 1955,"
which statement appears to be the truth.

From all the foregoing we are convinced that petitioner has established prior use and adoption of
the questioned trademark, for which reason he and not respondent Ng Giab is the one entitled to
registration thereof.
WHEREFORE, the decision of the Director of Patents is reversed. Petitioner is adjudged prior user of the
trademark MARCA PIÑA and representation thereof, and its registration in his name is hereby
ordered; and the resolution of this Court dated December 24, 1965, enjoining petitioner to comply
with the decision appealed from is set aside. Costs against respondent Ng Kian Giab.
[G.R. No. L-19297. December 22, 1966.]
MARVEX COMMERCIAL CO. INC., Petitioner, v. PETRA HAWPIA & CO., and THE DIRECTOR OF
PATENTS, Respondents.
Sta. Ana & Lasam for Petitioner.
A.S. Donato for respondent Petra Hawpia & Co.
Solicitor General for respondent Director of Patents.
SYLLABUS
1. TRADEMARKS AND TRADENAMES; BASIS OF RIGHT TO REGISTER; CASE AT BAR. — Under Sections 2
and 2-A of the Trade Mark Law, as amended, the right to register trademarks, tradenames and
service marks by any person, corporation, partnership or association domiciled in the Philippines or in
any foreign country, is based on ownership, and the burden is upon the applicant to prove such
ownership (Operators, Inc. v. Director of Patents, Et Al., G. R. No. L-17901, Oct. 29, 1965).
2. ID.; TRADEMARK; TRADENAMES; EVIDENCE OF OWNERSHIP NOT SUFFICIENT. — Where it appears
that Exh. "5" the letter of assignment of all rights, interest and goodwill in the trademark "LIONPAS" was
sent by a representative of the manufacturer thereof, and there appears no proof that as such
representative, the former has been authorized by the latter to sell the trade mark in question and
that letter of assignment has been signed only by someone whose position in the company’s
"Sundries Dept." is not described; and whose signature is not legible and that said letter of assignment
is contradicted by Exh. "6", a joint sworn statement of the President of Osaka Boeki Kaisha, Ltd. and
Asunaro Pharmaceuticals Industry Co., in the sense that Exh. "5" shows that "Osaka Boeki Kaisha Ltd. is
a representative of Asunaro Pharmaceuticals Industry Co.." while Exh. "6" asserts that the former is not
a representative of the latter but the owner of the trademark "LIONPAS" ; and that said Exhs. 5 and 6
do not bear the acknowledgment contemplated by the Trademark Law, it cannot, therefore, be
accorded the weight of an assignment of ownership thereof. Furthermore, the certification sheet
which states that the signatures of the Presidents of the two Companies, "have been duly written by
themselves is unmarked, unpaged, unsigned, undated and unsealed and," there is no evidence to
show that it is the correct translation of the Japanese characters of another unmarked, and
unpaged sheet. All these are insufficient to prove that the applicant is the owner of the trademark in
question.
3. ID.; ID.; IMPORTER OR DISTRIBUTOR; RIGHT TO REGISTER UNDER ITS NAME. — Not being the owner of
the trademark "LIONPAS" but being merely an importer and/or distributor of the said penetrative
plaster, the applicant is not entitled under the law to register it in its name (Operators, Inc. v. Director
of Patents, supra).
4. ID.; DECISIONS OF DIRECTOR OF PATENTS REVIEWABLE BY SUPREME COURT. — Although the Director
of Patents is the official vested by law with the power to administer the registration of trademarks
and tradenames, his opinion on the matter of similarity or dissimilarity of trademarks and tradenames
is not conclusive upon the Supreme Court, which may pass upon such determination.
5. ID.; SIMILARITY IN SOUNDS FATAL TO REGISTRATION; CASE AT BAR. — It is our considered view that
the trade mark "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
power; 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 special significance (Co Tiong Sa v.
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 the help of our eyes and must depend entirely on the ear" (Operators, Inc.
v. Director of Patents, supra). 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 v. E. I. Du Pont, 154 F. 2d. 146, 148). The registration of "LIONPAS" cannot
therefore be given due course.
DECISION
CASTRO, J.:
Petra Hawpia & Co., a partnership duly organized under the laws of the Philippines and doing
business at 543 M. de Santos (Botica Divisoria), Manila (hereinafter referred to as the applicant), on
October 14, 1958 filed a petition for the registration of the trademark "LIONPAS" used on medicated
plaster, with the Philippine Patent Office, asserting its continuous use in the Philippines since June 9,
1958. 1 The Marvex Commercial Co., Inc., a corporation also duly organized under the laws of the
Philippines (hereinafter referred to as the oppositor), on July 24, 1959 filed an opposition thereto,
alleging that the registration of such trademark would violate its right to and interest in the trademark
"SALONPAS" used on another medicated plaster, which is registered in its name under Certificate of
Registration 5486, issued by the Director of Patents on September 29, 1956, and that both trademarks
when used on medicated plaster would mislead the public as they are confusingly similar.
After due hearing, the Director of Patents in his decision of August 18, 1961 dismissed the opposition
and gave due course to the petition, stating in part that "confusion, mistake, or deception among
the purchasers will not likely and reasonably occur" when both trademarks are applied to
medicated plaster. The oppositor moved to have the decision reconsidered. This motion was denied
in a resolution of November 27, 1961. The oppositor then interposed the present appeal.
The issues stated by the Director of Patents in his decision are the same ones now tendered by the
oppositor for resolution, namely, (1) Is the applicant the owner of the trademark "LIONPAS" ?; (2)
Should the application be rejected on the ground that the applicant made false representations in
placing the phrase "Reg. Phil. Pat. Off." below the trademark "LIONPAS" on its cartons?; and (3) Is the
trademark "LIONPAS" confusingly similar to the trade mark "SALONPAS" ?
We do not consider the second issue of any importance; we will thus proceed to resolve the first and
third issues.
Is the applicant the owner of the trademark "LIONPAS?"
Under sections 2 and 2-A of the Trade Mark Law, as amended, the right to register trademarks,
tradenames and service marks by any person, corporation, partnership or association domiciled in
the Philippines or in any foreign country, is based on ownership, and the burden is upon the
applicant to prove such ownership (Operators, Inc. v. The Director of Patents, Et Al., L-17901, Oct. 29,
1965).
The Director of Patents found, on the strength of exhibits 5 and 6 for the applicant, that the latter has
"satisfactorily shown" its ownership of the trademark sought to be registered. Exhibit 5 is a letter dated
June 20, 1958, sent by "OSAKA BOEKI KAISHA, LTD." to the applicant which tends to show that the
former, for a $1 consideration, has assigned, ceded, and conveyed all its "rights, interests and
goodwill in the tradename LIONPAS Medicated Plaster . . ." in favor of the latter. Exhibit 6 is a joint
"SWORN STATEMENT" which appears to have been executed by the presidents of "OSAKA BOEKI
KAISHA, LTD." and "ASUNARO PHARMACEUTICAL INDUSTRY CO." , and tends to confirm the contents
of exhibit 5.
A careful scrutiny of exh. 5 will reveal, however, that the sender of the letter, "OSAKA BOEKI KAISHA,
LTD.", and which appears to be the seller, is merely a representative of the manufacturer "ASUNARO Two letters of "SALONPAS" are missing in "LIONPAS" : the first letter a and the letter s. Be that as it may,
PHARMACEUTICAL INDUSTRY CO." There is no proof that as such representative, the former has been when the two words are pronounced, the sound effects are confusingly similar. And where goods
authorized by the latter to sell the trademark in question. Moreover, exh. 5 on its face appears to are advertised over the radio, similarity in sound is of especial significance (Co Tiong Sa v. Director of
have been signed only by someone whose position in the company’s "Sundries Dept." is not Patents, 95 Phil. I, citing Nims, The Law of Unfair Competition and Trademarks, 4th ed., Vol. 2, pp. 678-
described; the signature is not legible. It is even contradicted by exh. 6. While exh. 5 shows that 679). "The importance of this rule is emphasized by the increase of radio advertising in which we are
"OSAKA BOEKI KAISHA, LTD." is a representative of "ASUNARO PHARMACEUTICAL INDUSTRY CO." ; exh. deprived of the help of our eyes and must depend entirely on the ear" (Operators, Inc. v. Director of
6 asserts that the former is not a representative of the latter, but that it is the owner of the trademark Patents, supra).
"LIONPAS" (par. 2, exh. 6). At all events, neither averment can be accorded the weight of an
assignment of ownership of the trademark in question under the Trade Mark Law. Exh. 5 is not The following random list of confusingly similar sounds in the matter of trademarks, culled from Nims,
acknowledged. Exh. 6 does not bear the acknowledgment contemplated by the aforesaid law Unfair Competition and Trade Marks, 1947, Vol. 1, will reinforce our view that "SALONPAS" and
particularly by the last paragraph of section 37 and paragraph 2 of section 31 of R. A. 166, as "LIONPAS" are confusingly similar in sound: "Gold Dust" and "Gold Drop" ; "Jantzen" and "Jass-Sea" ;
amended, which provide as follows:jgc:chanrobles.com.ph "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
"The registration of a mark under the provisions of this section shall be independent of the registration "Hoo Hoo." Leon Amdur, in his book "Trade-Mark Law and Practice", pp. 419-421, cities, as coming
in the country of origin and the duration, validity or transfer in the Philippines of such registration shall within the purview of the idem sonans rule, "Yusea" and "U-C-A", "Steinway Pianos" and "Steinberg
be governed by the provisions of this Act." (Sec. 37, last par.) (Emphasis ours) Pianos", and "Seven-Up" and "Lemon-Up." In Co Tiong v. Director of Patents, this Court unequivocally
said that "Celdura" and "Cordura" are confusingly similar in sound; this Court held in Sapolin Co. v.
"The assignment must be in writing, acknowledged before a notary public or other officer authorized Balmaceda, 67 Phil. 795 that the name "Lusolin" is an infringement of the trademark "Sapolin", as the
to administer oaths or perform other notarial acts and certified under the hand and official seal of sound of the two names is almost the same.
the notary or other officer." (Sec. 31, par. 2)In this case, although a sheet of paper is attached to exh.
6, on which is typewritten a certification that the signatures of the presidents of the two named In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike. Similarity of
companies (referring to the signatures in exh. 6) "have been duly written by themselves", this sheet is sound is sufficient ground for this Court to rule that the two marks are confusingly similar when
unmarked, unpaged, unsigned, undated and unsealed. We have thumbed the record in quest of applied to merchandise of the same descriptive properties (see Celanese Corporation of America v.
any definitive evidence that it is a correct translation of the Japanese characters found on another E. I. Du Pont, 154 F. 2d. 146, 148).
unmarked and unpaged sheet, and have found none.
The registration of "LIONPAS" cannot therefore be given due course.
It follows from the above disquisition that exhs. 5 and 6 are legally insufficient to prove that the
applicant is the owner of the trademark in question. ACCORDINGLY, the decision of the respondent Director of Patents is set aside, and the petition
below of the respondent Petra Hawpia & Co. is hereby dismissed, at the costs of the
As a matter of fact, the other evidence on record conclusively belies the import of exh. 6. Thus exh. A latter Respondent.
states that the applicant is merely the "exclusive distributor" in the Philippines of the "LIONPAS"
penetrative plaster; exh. A-1 describes the applicant as the "Philippine sole distributor" of "LIONPAS" ;
exh. B simply states that "LIONPAS" is manufactured exclusively for Petra Hawpia & Co. for distribution
in the Philippines."cralaw virtua1aw library G.R. No. L-23023 August 31, 1968

Not being the owner of the trademark "LIONPAS" but being merely an importer and/or distributor of
JOSE P. STA. ANA, petitioner,
the said penetrative plaster, the applicant is not entitled under the law to register it in its name
vs.
(Operators, Inc. v. Director of Patents, supra).
FLORENTINO MALIWAT and TIBURCIO S. EVALLE, in his capacity as Director of Patents, respondents.
Upon the third issue, the applicant preliminarily asserts that there is no justification for this Court to
disturb any finding made by the Director of Patents on appeal. This assertion is not tenable. Although Rodolfo A. Francisco for petitioner.
the Director of Patents is the official vested by law with the power to administer the registration of Catalino S. Maravilla for respondent Florentino Maliwat.
trademarks and tradenames, his opinion on the matter of similarity or dissimilarity of trademarks and Office of the Solicitor General for respondent Tiburcio S. Evalle.
tradenames is not conclusive upon this Court which may pass upon such determination.

The "SALONPAS" mark is not before this Court. Our meticulous examination of the entire record has REYES, J.B.L., J.:
failed to yield a sample of such mark. We have therefore proceeded to analyze the two marks, vis-a-
vis each other, on the basis of what we can derive from the record for a comparative study. And our Petition for review of the decision of the respondent Director of Patents in an interference
conclusion, in disagreement with that of the Director of Patents, is not based on a comparison of the proceeding1 (Inter Partes Case No. 291), finding for the senior party applicant, Florentino Maliwat, the
appearance, form, style, shape, size or format of the trademarks, which we can not make because, herein private respondent, and against the junior party applicant2 Jose P. Sta. Ana, the herein
as we have already observed, the "SALONPAS" mark is not before us, but on a comparison of the petitioner.
spelling, sound and pronunciation of the two words.

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 v. Director of Patents, L-20635,
March 31, 1966) and may properly become the subject of a trademark by combination with another
word or phrase.
On 21 June 1962, Florentino Maliwat filed with the Patent Office an application for registration of the
trademark FLORMANN, which is used on shirts, pants, jackets and shoes for ladies, men, and children,
claiming first use in commerce of the said mark on 15 January 1962. The claim of first use was
subsequently amended to 6 July 1955.
On 18 September 1962, Jose P. Sta. Ana filed an application for the registration of the tradename
FLORMEN SHOE MANUFACTURERS (SHOE MANUFACTURERS disclaimed),3 which is used in the business
of manufacturing ladies' and children's shoes. His claim of first use in commerce of the said
tradename is 8 April 1959.
In view of the admittedly confusing similarity between the trademark FLORMANN and the
tradename FLORMEN, the Director of Patents declared an interference. After trial, the respondent
Director gave due course to Maliwat's application and denied that of Sta. Ana. The latter, not
satisfied with the decision, appealed to this Court.
The petitioner assigned the following errors:
I. The Director of Patents erred in not finding that respondent (senior party-applicant)
failed to establish by clear and convincing evidence earlier date of use of his mark
FLORMANN than that alleged in his application for registration, hence, respondent is not
entitled to carry back the date of first use to a prior date.
II. The Director erred in holding that respondent is the prior adopter and user of his mark
and in concluding that this is strengthened with documentary evidence that respondent
has been using his mark since 1953 as tailor and haberdasher.
III. The Director of Patents erred in not finding false and fabricated respondent's testimonial
and documentary evidence and Director should have applied the rule "Falsus in uno,
falsus in omnibus" and should have disregarded them.
IV. The Director of Patents erred in declaring that Maliwat has the prior right to the use of
his trademark on shoes and such right may be carried back to the year 1953 when
respondent started his tailoring and haberdashery business and in holding that the
manufacture of shoes is within the scope of natural expansion of the business of a tailor
and haberdasher.
V. The Director of Patents erred in failing to apply the stricture that parties should confine
use of their respective marks to their corresponding fields of business, and should have
allowed the concurrent use of tradename FLORMEN SHOE MANUFACTURERS and the
trademark FLORMANN provided it is not used on shoes.
The findings of the Director that Maliwat was the prior adopter and user of the mark can not be
contradicted, since his findings were based on facts stipulated in the course of the trial in the
interference proceedings. The recorded stipulation is as follows:
ATTY. FRANCISCO: Your Honor please, with the mutual understanding of the counsel for
the Junior Party and the counsel for the Senior Party in their desire to shorten the
proceedings of this case, especially on matters that are admitted and not controverted
by both parties, they have agreed and admitted that Mr. Jose P. Sta. Ana, the Junior Party
Applicant in this case, is engaged solely in the manufacture of shoes under the firm name
FLORMEN SHOE MANUFACTURERS since April 1959; that the name FLORMEN SHOE
MANUFACTURERS is registered with the Bureau of Commerce on April 8, 1959, as shown by
Exhibits "A" and "A-2". That Mr. Florentino Maliwat has been engaged in the manufacture
and sale of menswear shirts, polo shirts, and pants, since 1953, using FLORMANN as its
trademark. That Mr. Florentino Maliwat began using the trademark FLORMANN on shoes
on January 1962 and the firm name FLORMANN SHOES under which these shoes with the
trademark FLORMANN were manufactured and sold was first used on January 1962,
having also been registered with the Bureau of Commerce on January 1962 and with
other departments of the government, like the Bureau of Labor, the Social Security System
and the Workmen's Compensation in 1962.
ATTY. MARAVILLA: On behalf of the Senior Party Applicant, represented by this humble
representation, I respectfully concur and admit all those stipulations above mentioned.
HEARING OFFICER: The court reserves the resolution on those stipulations. We can proceed
now with the redirect examination. (T.s.n., 9 August 1963, pp. 33-34).
And the Rules of Court provide:1äwphï1.ñët
Sec. 2. Judicial admissions. — Admission made by the parties in the pleadings, or in the
course of the trial or other proceedings do not require proof and can not be contradicted
unless previously shown to have been made through palpable mistake." (Rule 129, Revised
Rules of Court).
Since the aforequoted stipulation of facts has not been shown to have been made through
palpable mistake, it is vain for the petitioner to allege that the evidence for respondent Maliwat is
false, fabricated, inconsistent, indefinite, contradictory, unclear, unconvincing, and unsubstantial.
The rule on judicial admissions was not found or provided for in the old Rules but can be culled from
rulings laid down by this Court previous to its revision (Irlanda v. Pitargue, 22 Phil. 383; 5 Moran 57-59,
1963 Ed.). It was the law, then and now, being an application of the law on estoppel.
To be true, petitioner Sta. Ana, through counsel, filed with this Court, on 24 December 1964, a motion
entitled "MOTION TO ORDER STENOGRAPHER TO PRODUCE STENOGRAPHIC NOTES AND TO CORRECT
TRANSCRIPT OF STENOGRAPHIC NOTES; TO ALLOW PETITIONER TO WITHDRAW FROM STIPULATION OF
FACTS AND BE ALLOWED TO PRESENT ADDITIONAL EVIDENCE; AND TO SUSPEND PERIOD FOR FILING
PETITIONER'S BRIEF." The reason given was that "counsel for Mr. Jose P. Sta. Ana does not recall
making any stipulation or agreement of facts with the counsel of Mr. Florentino Maliwat on 9 August
1963." Opposition thereto was filed by Maliwat, asserting that the stenographer took down notes on
those things which were stated and uttered by the parties; that movant should have moved for
reconsideration in the Patent Office, instead of here in the Supreme Court, which is both untimely
and unhonorable.
Upon requirement by this Court, stenographer Cleofe Rosales commented on petitioner's motion
that what she had taken down were actually uttered by counsel for Sta. Ana, no more, no less; that it
was practically and highly impossible for her to have intercalated into the records the questioned
stipulation of facts because of the length of counsel's manifestations and the different subject
matters of his statements, aside from the concurrence of Maliwat's counsel and the reservation on
the resolution made by the hearing officer; and that despite her length of service, since 1958, as
stenographic reporter, there had been no complaint against her, except this one.
Counsel for Sta. Ana replied to the foregoing comments, alleging, among others, that after his
receipt of the decision, after 5 May 1964, he bought the transcript and requested the stenographer
to verify the contents of pages 33 and 34 of her transcript but, despite several requests, and for a
period of seven (7) months, for her to produce the stenographic notes, she has failed to produce
said notes.
On 2 April 1965, stenographer Rosales sent to the clerk of this Court the transcript of stenographic
notes.
This Court, on 2 February 1965, denied, for being late the motion to present additional testimonial
and documentary evidence, and, on 8 April 1965, deferred action on the objection to a portion of
the transcript until after hearing.
We find no substantiation of the charge that the stipulation of facts appearing on pages 33 to 34 of
the transcript of stenographic notes taken on 9 August 1963 had been intercalated; hence, the
presumption that the stenographer regularly performed her duty stands. The integrity of the record
being intact, the petitioner is bound by it. We can not overlook that even if his charges were true, it
was plain and inexcusable negligence on his part not to discover earlier the defect he now
complains of, if any, and in not taking steps to correct it before the records were elevated to this
Court.
An application for registration is not bound by the date of first use as stated by him in his application,
but is entitled to carry back said stated date of first use to a prior date by proper evidence; but in
order to show an earlier date of use, he is then under a heavy burden, and his proof must be clear
and convincing (Anchor Trading Co., Inc. vs. The Director of Patents, et al., L-8004, 30 May 1956;
Chung Te vs. Ng Kian Giab, et al.,
L-23791, 23 November 1966). In the case at bar, the proof of date of first use (1953), earlier than that
alleged in respondent Maliwat's application (1962), can be no less than clear and convincing
because the fact was stipulated and no proof was needed.
Petitioner would confine the respondent to the use of the mark FLORMANN to tailoring and
haberdashery only, but not on shoes, on the ground that petitioner had used the name FLORMEN on
shoes since 1959, while the respondent used his mark on shoes only in 1962; but the Director ruled:
. . . I believe that it is now the common practice among local tailors and haberdashers to
branch out into articles of manufacture which have, one way or another, some direct
relationship with or appurtenance to garments or attire to complete one's wardrobe such
as belts, shoes, handkerchiefs, and the like, . . . It goes without saying that shoes on one
hand and shirts, pants and jackets on the other, have the same descriptive properties for
purposes of our Trademark Law.
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.
It may be that previously the respondent drew a closer distinction among kinds of goods to which
the use of similar marks could be applied; but it can not be said that the present ruling under appeal
is so devoid of basis in law as to amount to grave abuse of discretion warranting reversal.
Republic Act No. 166, as amended, provides:
Sec. 4. . . . The owner of a trademark, tradename 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 on the principal register, unless it:
xxx xxx xxx
xxx xxx xxx
(d) Consists of or comprises a mark or tradename which resembles a mark or tradename
registered in the Philippines or a mark or tradename previously used 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;
xxx xxx xxx
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.
FOR THE FOREGOING REASONS, the appealed decision is hereby affirmed, with costs against the
petitioner.
[G.R. No. L-24802. October 14, 1968.]
LIM KIAH, Petitioner, v. THE KAYNEE COMPANY and THE DIRECTOR OF PATENTS, Respondents.
Dugenia & Associates for Petitioner.
Solicitor General for respondent Director of Patents.
Picazo & Agcaoili and Roque Recio for respondent Kaynee Company.
SYLLABUS
1. COMMERCIAL LAW; PHILIPPINES PATENT OFFICE; REVISED RULES OF PRACTICE IN TRADEMARKS
CASES; TRADEMARK, REGISTRATION OF; ONLY OWNER MAY APPLY FOR REGISTRATION OF TRADEMARK;
INSTANT CASE. — Under Rule 34 of the Revised Rules of Practice in Trademark cases, only the owner
of a trademark may apply for its registration. It has been proven by the evidence for the Opposer
that the trademark KAYNEE had been advertised in newspapers as early as the year 1953 . . . through
Aguinaldo’s advertising activities. From that and subsequent years it has been at least known to
some segment of the purchasing public that Aguinaldo’s was continuously using the trademark
KAYNEE as among those sold in its store. Under Section 4(d) of Republic Act No. 166, a trademark
shall not be registrable if it consists of or comprises a mark which so resembles a mark registered in
the Philippines or a mark or tradename previously used in the Philippines by another and not
abandoned .... It cannot be denied that in this particular case the word `another’ used by the
Statute can refer to Aguinaldo’s.
2. ID.; ID.; DIRECTOR OF PATENTS; FINDING OF FACT IS BINDING UPON THE SUPREME COURT;
EXCEPTION. — It is well-settled that we are precluded from making such an inquiry as the finding of
facts of the Director of Patents in the absence of any showing that there was a grave abuse of
discretion is binding on us. As set forth in Chung Te v. Ng Kian Giab, L-23791, November 1966: "The
rule is that the findings of fact by the Director of Patents are conclusive on the Supreme Court
provided they are supported by substantial evidence."cralaw virtua1aw library
3. STATUTORY CONSTRUCTION; CONSTRUCTION AND INTERPRETATION MAY BE RESORTED TO WHEN
APPLICATION IS IMPOSSIBLE AND INADEQUATE WITHOUT THEM. — As early as 1913, in Lizarraga
Hermanos v. Yap Tico, 24 Phil. 504, it was stressed that our first and fundamental duly is to apply the
law. Construction and interpretation come only "after it has been demonstrated that application is
impossible and inadequate without them." Such a principle has since then commended itself for
acceptance and has been invariably followed, especially so in not a few of our recent decisions.
DECISION
FERNANDO, J.:
The dispute in this controversy centered around the right to use the trademark KAYNEE. Petitioner Lim
Kiah, on April 5, 1957, filed an application with the Philippines Patent Office to register such a
trademark allegedly being used by him on undershirts, polo shirts, T- shirts, pants, sporting wear and
handkerchiefs, asserting further that the date of its first use went back to January 7, 1957. Such an
application was opposed by the Kaynee Company, one of the respondents here, a South California
corporation. It claimed ownership by virtue of a registration with the United States Patent Office on
February 18, 1913. It was likewise alleged by it that it had used the same in the Philippines as far back
as 1951, on goods similar to those being sold by the applicant. Its opposition likewise stressed that
such a trademark had by then became exceedingly popular in the Philippines enjoying tremendous
amount of goodwill arising from newspaper, radio and television advertising as well as the high and
superior quality of its products.
Both testimonial and documentary evidence were introduced before the Philippines Patent Office.
Respondent Kaynee Company adduced proof to the effect that late in 1949 or early 1950, the
Aguinaldo’s Department Store sold therein knitted shirts as well as polo shirts, cotton sports shirts,
swimming trunks and cotton pajamas coming from it and so identified. There was also testimony to
the effect that KAYNEE products were advertised in the Philippines. The assertion as to such
advertisement was confirmed by one official of a public relations and management firm and
another from an advertising agency.
The applicant testified on his own behalf asserting that as of 1957 he had started using such
trademark on his products, the word in Chinese, according to him, being equivalent to fast in English
or mabilis in Tagalog. He referred to the due investigation he made before filing such application for
registration. He ascertained that no one had previously registered such trademark in the Philippines.
He spoke of his advertising his products in at least two Manila newspapers and a weekly magazine.
The Director of Patents concluded that from the facts of record and the exhibits presented, the
opposition by the Kaynee Company was without merit. Thus: "It is clear from the testimony of the
Opposer’s witnesses that it had never used the trademark in the Philippines through its own initiative
but because of Aguinaldo’s importation and retail activities. It does not appear of record that
Opposer had a direct hand in the introduction of the goods bearing its trademark into this country.
There is no distributorship agreement between The Kaynee Company and Aguinaldo’s or for that
matter, any local outlet. Neither has there been shown a license or dealership agreement, an
assignment, or any other document to prove that the Opposer had authorized Aguinaldo’s to
market the KAYNEE goods locally. If ever the word KAYNEE has been known to exist in this country, it
is because of Aguinaldo’s trade activities and not those of the Opposer. It is incumbent upon
Opposer not only to establish prior use of its mark but prior use thereof for goods related to those of
applicant as to be likely to result in purchaser’s ascribing to a common origin." 1 As the prior use
should exist on the part of the oppositor and as in this case it had not done so, there being no
showing either that it authorized the Aguinaldo’s Department Store to use its trademark, its
opposition was dismissed.
It did not result, however, in petitioner Lim Kiah emerging as the victorious party. As noted in the
aforesaid decision of the Director of Patents of February 22, 1965, "sufficient grounds exist for the ex
parte rejection of [petitioner’s] application." The decision explained why: "The Opposer was able to
prove that the Respondent-Applicant is not the owner of the trademark KAYNEE. Under Rule 34 of
the Revised Rules of Practice in Trademark Cases, only the owner of a trademark may apply for its
registration. It has been proven by the evidence for the Opposer that the trademark KAYNEE had
been advertised in newspapers as early as the year 1953 . . . through Aguinaldo’s advertising
activities. From that and subsequent years it has been at least known to some segment of the
purchasing public that Aguinaldo’s was continuously using the trademark KAYNEE as among those
sold in its store. Under Section 4(d) of Republic Act No. 166, a trademark shall not be registrable if it
consists of or comprises a mark which so resembles a mark registered in the Philippines or a mark or
tradename previously used in the Philippines by another and not abandoned.. It cannot be denied
that in this particular case the word `another’ used by the Statute can refer to Aguinaldo’s." 2 As to
his authority to reject ex parte application for registration, respondent Director of Patents relied on
Englander v. Continental Distilling Co. 3 The dispositive portion of the above decision was worded
thus: ". . ., the opposition is dismissed for lack of [merit], but the application of Lim Kiah is rejected ex
parte." 4
Then came this petition for the review of the above decision of the Director of Patents, likewise
included as Respondent. Petitioner Lim Kiah assigned three alleged errors, namely, that he had
presented evidence "clearly and fully establishing his ownership" of the trademark, that no evidence
existed to support the ruling that the Aguinaldo’s Department Store had been using such a
trademark, and that the construction fastened on Section 4(d) of Republic Act No. 166 by
respondent Director of Patents ignored other relevant sections.
The appeal cannot prosper. The decision of the Director of Patents must be sustained. The errors
assigned do not call for its reversal.
The first two of the above errors are factual in character. It is well-settled that we are precluded from
making such an inquiry as the finding of facts of the Director of Patents in the absence of any
showing that there was a grave abuse of discretion is binding on us. As set forth by Justice Makalintal
in Chung Te v. Ng Kian Giab: 5 "The rule is that the findings of fact by the Director of Patents are
conclusive on the Supreme Court provided they are supported by substantial evidence."cralaw
virtua1aw library
That leaves only the third assigned error, petitioner maintaining the view that when the Director of
Patents relied on the explicit and literal language of the appropriate section, 6 to the effect that a
trademark shall not be registrable if it "consists of or comprises a mark or trade-name . . . previously
used in the Philippines by another and not abandoned," it ignored other relevant provision which
could have called for a different conclusion. Such an assertion flies in the face of the explicit and
categorical terminology of the act. It is unequivocal in character and does not call for any
interpretation that may result in modifying or changing its meaning.
As early as 1913, in Lizarraga Hermanos v. Yap Tico, 7 it was stressed that our first and fundamental
duty is to apply the law. Construction and interpretation come only "after it has been demonstrated
that application is impossible and inadequate without them." Such a principle has since then
commended itself for acceptance and has been invariably followed, especially so in not a few of
our recent decisions. 8
It is apparent, therefore, why, as above noted, the appeal is doomed to failure. The decision of the
Director of Patents is not only sound in law but also commendable for its consonance with the
appropriate ethical standard which by no means should be excluded from the business world as an
alien, if not a hostile, force. While in the fierce, competitive jungle which at times constitutes the
arena of commercial transactions, shrewdness and ingenuity are at a premium, the law is by no
means called upon to yield invariably its nod of approval to schemes frowned upon by the concept
of fairness. Here, petitioner engaged in manufacturing and selling the same kind of products would
rely on a trademark, which undeniably was previously registered abroad and which theretofore had
been used and advertised extensively by one of the leading department stores in the Philippines.
Petitioner would have the Director of Patents believe reliance on what KAYNEE stands for as
understood in the language of his land, possibly even as a mark of ancestral piety, caused him to
make use of it. Such a solemn avowal did not inevitably call for assent, considering that such a
trademark had long stood for similar products which undoubtedly were well-known and patronized
locally. It did not improve his standing at all. As a matter of fact, without his so intending it, the
legitimate suspicion did arise that such a plea while perhaps a tribute to his ingenuity hardly seemed
to betray fidelity to fact. He ought to have been aware then that both the administrative agencies
and the judiciary can be trusted to possess enough discernment not to be taken in by so transparent
a verbal ploy.
WHEREFORE, the decision is affirmed, with costs against petitioner Lim Kiah.
 [G.R. No. L-26625. August 31, 1970.]
KEE BOC, Petitioner, v. THE DIRECTOR OF PATENTS and THE FAR EASTERN SHIRT FACTORY, Respondents.
Alberto De Joya for Petitioner.
Villareal, Almacen & Associates for Private Respondents.
Solicitor General Antonio P. Barredo, Assistant Solicitor General Antonio A. Torres and Solicitor Pedro
A. Ramirez for respondent Director of Patents.
DECISION
FERNANDO, J.:
This petition :for review would assail the validity of a decision of respondent Director of Patents
granting the application of respondent Far Eastern Shirt Factory to register a trademark and
dismissing the opposition of petitioner Kee Boo. The grounds relied upon are its lack of support in the
substantial evidence of record and its failure to conform to the applicable law. Petitioner in pressing
his opposition before respondent Director of Patents had to surmount the obstacle posed by a
decision of this Court in Asari Yako Co. Ltd. v. Kee Boc, 1 which rightfully could be not ignored by
respondent Director because of its relevance and pertinence. Moreover, petitioner is now faced
with the extremely difficult task of showing that there was no support for the decision reached in the
substantial evidence of record. He does not quite succeed. Under the circumstances, he cannot
prevail.
An extended reference to the decision assailed would make apparent the difficulty that faced
petitioner in seeking its reversal. Its opening paragraph reads thus: "An application to register the
trademark RACE, used on men’s undershirts and shirts, under class 40, was filed on April 16, 1962 by
Far Eastern Shirt Factory, a partnership duly organized under Philippine Laws, with business address at
513 Nueva St., Manila. Claim of first use since the year 1949 is asserted by the applicant." 2 Then
came the portion referring to the opposition filed by now petitioner Kee Boc alleging that he would
be damaged by such registration as he has in his favor a certificate of registration on the trademark
SUN RAYS issued by the Philippine Patent Office on August 3, 1961 covering the same class of goods,
namely, men’s undershirts. It was moreover "confusingly similar" to the trademark RACE, the closeness
of their identity in appearance and pronunciation being quite marked. Mention was then made in
the opposition that his trademark is well-known all over the Philippines and that applicant, now
respondent Far Eastern Shirt Factory, with prior knowledge thereof, deliberately designed its own
mark to bring about the confusion and to take advantage of the fame, reputation and goodwill
theretofore established by it at a tremendous cost through advertising and by the superior quality of
its product. 3
After noting that the records of the case, consisting of the application, the opposition, the pleadings
and the respective evidence, had been carefully considered and that the issue raised for the
damage that would be caused oppositor, now petitioner Kee Boc, the appealed decision went on
to state: "Upon careful evaluation of the record, I agree with the opposed that RACE and SUN RAYS
are confusingly similar and I have arrived at a finding that likelihood of confusion would occur. In
appearance and sound, the overall commercial impression likely to be conveyed to the public is
that of a speed or running competition, as it has been found that both parties are claiming to be
using in relation to their respective trademarks male runners in the act of racing. This circumstance, I
believe, is sufficient to effect likelihood of confusion as to source origin of the goods." 4 Reference
was then made to the antecedents, including our previously cited decision of Asari Yoko Co., Ltd. v.
Kee Boc. Thus: "The facts, however, show that on January 20, 1961 the Supreme Court promulgated
a decision in G.R. No. L-14086 entitled ‘Asari Yoko Co., Ltd. v. Kee Boc, Et Al., ‘ wherein it was
decided that Kee Boc who is the same party to the present case was adjudged not entitled to the
registration of the trademark RACE and design as used by him on shirt and undershirts which he
sought to register in this Office on August 27, 1953. In that decision the trademark was found to be
owned by Asari Yoko Co., Ltd., a partnership duly organized in Japan . . . The record also shows that
Asari Yoko Ltd. executed a power of attorney in favor of Go Seng Chay, a Chinese citizen residing in
Manila, authorizing the latter to sell, assign, convey, and dispose of all the rights, title and interest as
well as the ownership over the trademark RACE and design (representation of 3 men running a race)
including the right to register the mark in the Philippines . . . The record further shows that Go Seng
Chay executed in favor of the Far Eastern Shirt Factory a Deed of Assignment of the mark in March,
1962. In view of the assignment, the Respondent-Applicant filed the application for registration now
being opposed." 5
This is the way respondent Director would appraise the matter before him: "Therefore, as between
the two confusingly similar trademarks, RACE was already in use long before the opposer adopted
his trademark SUN RAYS. In such case it is the Respondent-Applicant who would be damaged by the
registration of SUN RAYS as it has acquired, as a successor in interest, proprietary rights over the mark
RACE. Kee Boc’s claim that he would be damaged by registration thereof will not, for the foregoing
reason, prevail." 6 This is the conclusion arrived at: "The result of the foregoing pronouncements and
findings would be that inasmuch as the two trademarks are confusingly similar and since it is the
Respondent-Applicant who would be damaged, the trademark SUN RAYS becomes unregisterable.
But notwithstanding thereof, the registration certificate of Kee Boc cannot ipso facto be ordered
cancelled in this opposition proceeding, and in similar cases the filing of a petition to cancel is still
necessary. The Respondent-Applicant has actually filed the said petition (Inter Partes Case No. 364
which is now pending in this Office." 7 It was his decision, therefore, to dismiss the opposition of now
petitioner Kee Boc and to grant the application of now respondent Far Eastern Shirt Factory.
We sustain, as noted at the outset, respondent Director of Patents.
1. In the decision now under review, respondent Director of Patents made reference to our decision
in Asari Yoko Co., Ltd. v. Kee Boc. 8 In that case, now petitioner Kee Boc asserted that he first used
the trademark RACE. The Director of Patents agreed with his contention, but this Court reversed the
decision holding that Asari Yoko Co., Ltd. "was the first user of the trademark in question in the
Philippines, [and therefore] will be damaged by the registration of the trademark in the name of
[Kee Boc]." Thereafter, as noted likewise in the decision of respondent Director of Patents, a power of
attorney was executed by Asari Yoko Co., Ltd. in favor of one Go Seng Chay, from whom now
respondent Far Eastern Shirt Factory acquired, through a deed of assignment executed on March 2,
1962, the right to such trademark RACE, after which the present application for registration was filed.
It is true that in the meanwhile, on August 3, 1961, a registration of the trademark SUN RAYS was
effected by now petitioner Kee Boc, both trademarks being found to be confusingly similar. If it were
not for the above background facts that would indicate the persistent and tenacious efforts on the
part of petitioner Kee Boc to deprive Asari Yoko Co., Ltd., formerly, and now respondent Far Eastern
Shirt Factory of whatever advantages might in here in the use of the trademark raised, then perhaps
his stand would have been impressed with a greater degree of plausibility. As it is however,
considering that he was a party to a litigation where this Court had recognized the right of the
predecessor-in-interest of respondent Far Eastern Shirt Factory to the use of such trademark, it would
seem that under an expansive view of the principle of the law of the case, petitioner is not to be
indulged insofar as his opposition would result in diluting the effectiveness of the aforesaid decision
rendered by us where he himself was a party. 9
2. The petition for certiorari was premised primarily on the decision of the Director of Patents lacking
support in the substantial evidence of record. Petitioner Kee Boc did try to make out a case of the
appealed decision being thus marked by such infirmity, but his attempt does not carry enough
persuasion. It was not because the brief submitted was lacking in vigor and vehemence. The
inherent difficulties of the situation, however, were too much to overcome. For one thing, as above
made clear, there was this previous decision rendered by us. Then, too, respondent Director of
Patents saw to it that only the most relevant facts necessary to this decision were duly considered
and set forth. Moreover, there was the agreement by the parties that the oral testimony would
consist solely of the transcript of stenographic notes in a case then pending between the parties
before the Court of First Instance of Rizal. 10
Of the eleven errors assigned, the first two, which would predicate an injury to the parties in our 1961
decision, ought rather to have been asserted by them and not by petitioner against respondent Far
Eastern Shirt Factory. In the absence of such complaint on their part, no further consideration is
necessary to dispose of the above assignment of errors. The seventh and eighth assignment of errors
which would find fault for respondent Director of Patents, for not including certain matters in the
decision under review, would not impair the validity of the decision rendered, as the discretion of
respondent Director to seize upon what he considered the determinative facts is not shown to have
been abused. Clearly, on those facts as found by him, respondent Far Eastern Shirt Factory was This case is the outcome of an agreement entered into on October 26, 1949 between the De la
entitled to a favorable verdict. Rama Steamship Co. Inc. (hereinafter referred to as De la Rama) and the National Development
Company (hereinafter referred to as NDC) whereby De la Rama undertook the management of the
There is nothing, likewise, in the decision, as alleged in the fourth assignment of error, that respondent three vessels known as "Doña Aurora," "Doña Nati" and "Doña Alicia" which had been purchased by
Far Eastern Shirt Factory was held as being entitled to sue for past infringement. The only thing the Philippine Government from Japan with the advise and technical supervision of De la Rama. In
decided was to give due course to the application for registration. Nor was there any sufficient the management contract it was provided that De la Rama had the option to buy the vessels at the
showing that the other alleged errors were in fact committed; petitioner could not specify from the fifth year following the purchase and delivery of each of the vessels at a price which is to consist of
evidence, whether oral or documentary, properly before respondent Director of Patents for the cost price of each vessel, plus such expenses as De la Rama may have incurred in connection
appraisal, the asserted deficiency of the decision under review. with the construction, outfitting, provisioning and operation thereof; but should De la Rama fail to
exercise the right of option it should be reimbursed of the expenses it incurred in manning,
It might be useful to single out the third assignment of error because of the allegation therein made equipping, fueling, overhauling and repairing the vessels, and the payment of loading commission
that no mention was made of the goodwill in the deed of assignment executed by Go Seng Chay, discharging commission, overriding commission sub-agent's commission, etc.
as attorney-in-fact of Asari Yoko Co., Ltd. and respondent Far Eastern Shirt Factory There is clearly a
misapprehension. This is how such deed of assignment reads: "Be it known that for and in
consideration of the sum of [Twenty thousand pesos] (P20,000.00) and other good and valuable The first time that this case came up to this Court was in G.R. No. L-8784, decided on May 21, 1956,
consideration to it in hand paid, the receipt of which is hereby acknowledged, the said Asari Yoko which involved the principal question regarding the right granted by the management contract to
Co., Ltd., represented by its above-named attorney-in-fact, Mr. Go Seng Chay, by these presents, NDC to cancel upon one year's notice the general agency granted Dela Rama. The NDC decided
does sell, assign and transfer unto the said Far Eastern Shirt Factory, its entire right, title and interest in to cancel the contract but was opposed by De la Rama, which alleged that it had been granted
and to the said trademark "RACE" and Design (Representation of 3 men running a race) and the the option to purchase the vessels and that in 1952 it exercised that right of option. In the decision in
registration thereof in the Philippines Patent Office, together with the goodwill of the business in G.R. No. L-8784 this Court upheld the right of NDC to cancel the management contract, and the
connection with which the said trademark is used." 11 It would be futile, then, to maintain, as is done option of De la Rama to purchase the vessels was declared ineffective.
in the eleventh assignment of error, that the application for registration of respondent Far Eastern
Shirt Factory ought not to have been given due course. The right of NDC to cancel the management contract having been upheld by the Court and De la
Rama's right to exercise the option to purchase the vessels could not thereby be exercised, De la
The legal principle decisive of this controversy is set forth by us in Lim Kiah v. The Kaynee Company. Rama filed on August 21, 1956 a "Supplemental Pleading" in Civil Case No. 25161 then pending in the
12 Thus: "It is well-settled that we are precluded from making such an inquiry as the finding of facts of Court of First Instance of Manila. This supplemental pleading, in the nature of a supplemental
the Director of Patents in the absence of any showing that there was a grave abuse of discretion is complaint gave rise to the proceeding which later brought Civil Case No. 25161 to this Court for the
binding on us. As set forth by Justice Makalintal in Chung Te v. Ng Kian Giab: ‘The rule is that the second time in G.R. No. L-25659.1 Under the first cause of action of the "Supplemental Pleading," De
findings of fact by the Director of Patents are conclusive on the Supreme Court provided they are la Rama demanded that NDC refrain from using the names "Doña Aurora," "Doña Nati" and "Doña
supported by substantial evidence.’" 13 Alicia" on the three vessels subject of the original action, claiming that it had acquired exclusive
property right to the use of said names of the three vessels as trade names; under the second cause
It is likewise the view of this Court that respondent Director of Patents should proceed to act with of action, De la Rama sought the payment to it by the NDC of P1,505,603.82 as reimbursement for
dispatch and resolve Inter Partes Case No. 364, guided by and in accordance with this decision. various advances and expenses it had made in behalf of, and commissions earned as agent of,
NDC; and under the third cause of action, De la Rama sought the payment of P1,000,000.00 as
WHEREFORE, the decision of the Director of Patents of March 11, 1966 is affirmed. With costs against damages on account of NDC's continued use of the names "Doña Aurora," "Doña Nati" and "Doña
petitioner Kee Boc. Alicia," on the vessels that De la Rama had turned over to it (NDC), and P100,000.00 as expenses and
attorney's fees. 2

G.R. No. L-26966 October 30, 1970 Over the opposition of NDC to the admission of the "Supplemental Pleading," upon the grounds that
De la Rama could not file a supplemental pleading because it had already been, held in G.R. No. L-
8784 that it had no right of action and a party may not file a supplemental pleading if it had no valid
DE LA RAMA STEAMSHIP CO., plaintiff-appellee,
and subsisting cause of action, and that all the causes pleaded were only remotely connected with,
vs.
and not material to, the original action in Civil Case No. 25161, the lower court, in an order dated
NATIONAL DEVELOPMENT CO., defendant-appellant.
October 18, 1956, granted De la Rama's motion to file the "Supplemental Pleading." 3

E. del Rosario and Associates for plaintiff-appellee.

Gov't. Corporate Counsel L. M. Abellera and Special Counsel Leonardo R. Reyes for defendant-
appellant.
ZALDIVAR, J.:.
This case originated in the Court of First Instance of Manila as Civil Case No. 5161, entitled "De la
Rama Steamship Co. Inc., plaintiff, versus National Development Company, defendant." This is the
third time that this case has come up to this Court.
In its answer to De la Rama's supplemental pleading, NDC denied De la Rama's exclusive right to use
the names "Doña Aurora," "Doña Nati" and "Doña Alicia" on the vessels upon the ground that said
names (except Doña Nati) represented names of wives of former Presidents of the Philippines and
could not be approriated by a private individual; NDC averred that the alleged advances and
commissions claimed in the second cause of action were never alleged and claimed in the original
complaint and should be deemed barred and dismissed together with the original principal action;
NDC also averred that the demands in the third cause of action were unreasonable, and that De la
Rama had tried to retain all the benefits arising from the operation of the vessels and shifted to NDC
the liabilities and obligations. NDC also set forth special defenses and a counterclaim, alleging that
De la Rama was under obligation to submit a true and correct accounting of the operation of the
three vessels, and to remit to NDC the amounts due to the latter from January 1, 1954 to the dates
the vessels were separately returned; and that plaintiff had charged excessive commissions of 17-½%
when the reasonable rate should only be 9.45% after the notice of cancellation, and should account
for and deliver to NDC the excess commissions actually received.4
In its reply to NDC's answer, and in its answer to NDC's counterclaim, De la Rama alleged that the
names "Doña Aurora," "Doña Nati" and "Doña Alicia" were its property, having used the name "Doña"
on its vessels in its shipping business even before the last war and had acquired a vested right on that
trade name, that the claim for reimbursement and/or payment of advances and/or expenses
made, and commissions earned by virtue and pursuant to the management contract matured after
the filing of the amended complaint;5 that true and correct accounting of the operations of the
vessels had always been submitted to NDC. De la Rama denied, for lack of knowledge or
information sufficient to form a belief, the allegations in defendant's counterclaim.6
On March 20, 1957, the trial court, in consonance with its order given in open court on March 8, 1957,
considering that the case involved mainly accounting, issued an order appointing a Board of
Accountants to make an examination of the accounts submitted by De la Rama to determine what
amount is due De la Rama, and what amount is due NDC, and to make such recommendations as,
in its opinion, are proper. The Court appointed Mr. Gregorio Licaros, then President of the Philippine
Institute of Accountants, to represent the court and to act as chairman of the Board; Mr. Miguel
Calingasan comptroller of De la Rama, recommended by counsel for De la Rama, to represent De
la Rama; and Delfin Diangco, accountant and manager of the shipping department of NDC,
recommended by counsel for NDC, represent the NDC. The deputy clerk of court. The deputy clerk
of court of the branch of the Court of First Instance of Manila where the case was pending was
appointed secretary of the Board. The order of the court provided for the compensation of the
members of the Board of Accountants and its Secretary. The court gave the Board thirty days from
the date of qualification by its members within which to receive the evidence and thereafter
another thirty days within which to submit its report.7
The Chairman of the Board of Accountants, on April 13, 1959, submitted his report and
recommendations to the court. Based on said report and recommendations the trial court rendered
its decision, dated April 29, 1959, the dispositive portion of which reads as follows:.
IN VIEW OF ALL THE FOREGOING CONSIDERATION, the Court hereby renders
judgment:.
"(a) Approving the report and recommendations of Mr.
Gregorio S. Licaros, Chairman, Board of Governors,
Development Bank of the Philippines, dated April 13, 1959,
and ordering defendant National Development
Company to pay to plaintiff the sum of P244,277.81,
representing the balance of the advances made by
plaintiff's operation of the Doña Nati, Doña Alicia and
Doña Aurora, with legal interest thereof from January 24,
1955.
"(b) Enjoining and restraining defendant perpetually from
using the 'Doña' name or title on any of its vessels; and
"(c) Ordering defendant to pay plaintiff, nominal or
temperate damages in the sum of P20,000.00, and
attorney's fees in the amount of P20,000.00.
With costs against the defendant. 8
From the above-mentioned decision NDC interposed an appeal to this Court, docketed herein as
G.R. No. L-15659. This is the second time that Civil Case No. 25161 of the Court of First Instance of
Manila came up to this Court.
In its decision in G.R. No. L-15659 this Court upheld NDC's contention that the causes of action in the
"Supplemental Pleading" were not in any way relevant and material to the original action of De la
Rama to compel the NDC to sell the three "Doña" vessels to it, and that, therefore, the "Supplemental
Pleading" was improperly admitted. This Court also sustained the contention of the NDC that the
lower court did not follow the suggestion of the Chairman of the Board of Accountants to give
opportunity to the NDC to submit its objections to the amounts stated in the report of the chairman
of the board. This Court, therefore, set aside the decision appealed from. However, in the interest of
a prompt termination of the suit, this Court ordered the remand of the case to the court below "with
instructions to enroll the pleadings and papers starting with the "supplemental pleading," registering
the complaint, collecting the corresponding fee based on the amount demanded in the complaint
and entering the complaint and all the papers in the dockets of the court." This Court also gave
instructions "to give, the defendant NDC the opportunity to submit its objections to the report of the
board of accountants and to have a hearing on this report in accordance with the rules as above
pointed out," and "thereafter the action shall proceed or continue in accordance with this
decision." 9
So the case was before the trial court for the third proceedings. The trial court complied with the
instructions of this Court, as stated in the decision in G.R. No. L-15659. After the trial court had
repeatedly given the NDC the opportunity to file its objections, if any, to the report submitted by the
Chairman of the Board of Accountants, and the NDC failed so to do, the trial court rendered its
decision dated February 23, 1966, the dispositive part of which reads:.
WHEREFORE, judgment is hereby rendered approving the conclusions and
recommendations contained in the aforesaid Report of April 13, 1959, and
ordering defendant National Development Company to pay to the plaintiff De
la Rama Steamship Co., Inc., the sum of P244,227.81 with legal interest thereon
from January 24, 1955 until fully paid.
With costs against the defendant. 10
On February 24, 1966 De la Rama filed a motion for the partial execution of the decision dated April
29, 1959 regarding the damages in the sum of P20,000.00 and attorney's fees in the sum, of
P20,000.00 on the ground that those portions of the decision had not been appealed from and had
therefore become the "law of the case" as far as the parties were concerned. 11 NDC filed its
opposition to the motion on the ground that the decision of April 29, 1959 was "set aside" by the
Supreme Court, and consequently there was no legal basis for execution.
On March 18, 1966 the lower court issued an "order and/or amendatory decision," the concluding
portion of which reads as follows:.
PREMISES CONSIDERED, plaintiff's motion of February 23, 1966 for partial
execution is hereby denied. Instead, in the interest of justice, and the decision
of this Court of February 7, 1966 not having yet become final, the same is
hereby amended by adding thereto the findings of fact and conclusion of law
made above, and by amending its dispositive part to read as follows:
WHEREFORE, judgment is hereby rendered:.
"(a) Enjoining and restraining the defendant perpetually
from using the "Doña" name or title on any of its vessels;
"(b) Approving the conclusions and recommendations
contained in the aforesaid Report of April 13, 1959, and
ordering the defendant National Development Company
to pay to the plaintiff De la Rama Steamship Co., Inc., the
sum of P244,222.81 with legal interest thereon from
January 24, 1955 until fully paid; and
 "(c) Ordering the defendant to pay to the plaintiff by way
of damages, as and/or attorney's fee, the amount of
P20,000.00. Said decision of February 7, 1966 is maintained
in all other respects.
With costs against the defendant.12
From both the decision dated February 7, 1966 and the amendatory decision dated March 18, 1966
NDC appealed directly to this Court, because of the amount involved, stating that it would raise
questions both of fact and of law. 13 The present appeal is the third time that this case 14 has come
up to this Court.
NDC in its brief, assigns six errors which, it claims, were committed by the lower court in deciding the
case.
The first four errors refer to the lower court's having adopted in toto the findings and
recommendations of the Board of Accountants, as contained in the Report submitted to this court
dated April 13, 1959, regarding:.
1. "the net results of the operational expenses of the "Doña" vessels;"
2. "the inventory of equipment, supplies, materials, provisions, fuel, etc. on
board the vessels upon the delivery thereof;"
3. "the commission on cargos booked and loaded after delivery of the vessels;"
and
4. "the additional charges to NDC;"
The fifth error assigned is that.
5. "The lower court erred in holding that the plaintiff is entitled to the preferential
right to the use of the "Doña" names and enjoining and restraining the
defendant-appellant perpetually from using the "Doña" names or title on any of
its vessels."
The sixth error assigned is that.
6. "The lower court, finally, erred in condemning defendant-appellant to pay to
the plaintiff-appellee the sum of P244,227.81 with legal interest thereon from
Jan. 24, 1955 until fully paid and also the sum of P20,000.00 by way of damages
and attorney's fees."
In support of its first assignment of error, that the lower court erred in adopting in toto the findings and
recommendations of the Board of Accountants regarding the net results of the operational expenses
of the "Doña" vessels, as contained in the Board's Report submitted to the Court, dated April 13, 1959,
NDC contends that De la Rama had overcharged NDC as per NDC Report dated April 10, 1959 in
the amount of P53,393.94 before the cancellation of the contract and P12,705.59 after the
cancellation of the contract as 17-1/2% commissions on "arbitraries" which cannot be included in the
terms "cargo freight" or "freight revenue" on the basis of which alone De la Rama should receive the
agency commissions as per paragraph 4 of the management contract; that De la Rama had also
charged excess commissions in the amount of P803,973.94, as shown in the NDC audit verification
report dated April 10, 1959, on freight revenues and passage revenues after the cancellation of the
management contract effective July 11, 1955, because the 17-1/2% commission on "freight revenue"
and the 10% commission on "passage revenue" under the management contract were applicable
only while said contract was in force, such that after the rescission of said contract, until the vessels,
were returned, De la Rama operated the vessels at its own risk and should be entitled only to 7-½%
commission on freight revenues and 7-½% commission on, passage revenues which rates were those
agreed upon by NDC and A. V. Rocha and Company; that De la Rama overcharged NDC
P46,627.83 as expenses for advertising, which should have been borne by De la Rama pursuant to
stipulation No. 4 of the management contract which in part reads:.
... in consideration of said overriding commission, De la Rama shall assume all
expenses of the service with respect to sub-agents' commissions, advertising,
entertaining, documentation of cargo office rent and expenses, telephone
costs and general travelling expenses. Cable and telegram expenses, however,
shall be directly chargeable to the respective vessel's voyage accounts.
but which De la Rama charged directly to the miscellaneous expense accounts of the respective
voyage account of the vessels; that De la Rama also overcharged NDC, without specifying the
amount, for expenses for entertainment, telephone costs, general traveling expenses, sub-agents'
commission of cargo, all of which NDC must assume pursuant to paragraph 4 of the management
contract; that NDC was overcharged P4,710.94 for subsistence, which amount was spent not for the
meals of the passengers, officers, and crew, but for various parties, and, which, not having been
previously authorized by NDC, should be chargeable to De la Rama; that De la Rama overcharged
operational expenses in the amount of P182,376.35 which were without supporting vouchers; that
there was an understatement of the operational income of NDC vessels in the amount of P27,418.56;
that the operational expenses of the NDC vessels was overcharged for various expenses in the
amount of P5,462.09. 15
In support of its second assignment of error, that the lower court erred in adopting in toto the findings
and recommendations of the Board of Accountants regarding the inventory of equipment, supplies,
materials, provisions, fuels, etc. on board the vessels upon the delivery thereof to NDC as contained
in the report dated April 13, 1959, NDC contends that De la Rama's claim on this matter was only
P626,304.70, but Schedule B (Exh. PP), purporting to be the final inventory, showed only a total of
P573,979.53 as against NDC audit report dated March 31, 1958 in the amount of only P496,637.10. 16
In support of the third assignment of error, that the lower court erred in adopting in toto the findings
and recommendations of the Board of Accountants regarding the commission on cargoes booked
and loaded after delivery of the vessels as convinced in the Board's Report dated April 13, 1959, NDC
avers that when the "Doña Alicia" was delivered to NDC the latter honored the De la Rama
commitments on cargo and passengers without however stipulating the commissions to be earned
by De la Rama; that the claim of De la Rama for P16,927.72, or 9-½% of P178,186.56, freight revenues
was 7% higher than those charged for the same service and should be reduced to 2-½% only; that
De la Rama also overcharged NDC in the amount of P113.75 passage commission, because De la
Rama should not be allowed to charge more than 7-½% which NDC pays to its present agent. 17
In its fourth assignment of error, that the lower court erred in adopting in toto the recommendations
of the Board of Accountants regarding the additional charges to NDC as contained in the Board's
Report dated April 13, 1959 NDC avers that of the P21,998.11 claimed by De la Rama, the bills for
general averages in the amount of P20,478.52 for "Doña Alicia" and "Doña Aurora" were for services
that were normal duties of the relationship between NDC and De la Rama, and were therefore
without basis, more so because all of De la Rama's expenses including travel, hotel and
entertainment expenses of its officials incident thereto in the amount of P51,583.33 had been
included in the casualty account claimed by De la Rama and the designated adjuster, Funch, Edye,
and Co., already collected their fees of P6,000; so that said amount of P20,478.52 should have been
disallowed. 18
In refutation of the reasons adduced by NDC in support of its four assignments of error, De la Rama
contends that the alleged errors involve principally factual matters which had been twice resolved
by the lower court — first in the decision of April 29, 1959 and again in the decisions of February 7
and March 18, 1966, and those alleged errors relate to matters that NDC had been given many
opportunities to object to in the lower court, but which it did not do; that for having failed to object,
NDC is bound by the findings embodied in the report. 19
We sustain the stand of De la Rama. NDC complains against the adoption in toto by the trial court of
the findings and recommendations of the Board of Accountants. We find the actuation of the trial
court to be in accordance with Rule 33, Section 11, of the Rules of Court — which authorizes the trial
court to render judgment, after the report of the commissioner has been set for hearing, by
adopting, modifying, or rejecting the report in whole or in part. The report of the Board of
Accountants in the case at bar is similar to the report of the commissioner, or referee, as provided in
Rule 33 of the Rules of Court. This Court, in the case of Apurillo v. Graciano, 20 held that the trial
Judge's adoption in toto of the findings of the Commissioner is allowed under Rule 33 of those Rules
of Court. In the case at bar, NDC's repeated failures to file its objections, if any, to the report, left the
trial court no other choice but to render judgment base, on the report. Section, 11 of Rule 33 of the
Rules of Court was taken from Section 140 of the former Code of Civil Procedure (Act
190).têñ.£îhqw⣠Interpreting Section 140 of the said Code of Civil Procedure, this Court, in the case
of Kreidt vs. E. C. McCullough & Co., 21 held:.
... Section 140 of the Code of Civil Procedure must be interpreted as placing
upon the litigant parties the duty of discovering and exhibiting to the court the
reasons, if any there be, why the report should not be confirmed; and it is not
ordinarily incumbent upon the court to discover the errors that may lurk therein.
The duty which the law imposes upon the court is to render judgment in
accordance with the report, and this will ordinarily be done unless the party
aggrieved shall, in a manner conformable with proper practice, demonstrate
the existence of error in the report. It is in elementary rule of procedure that the
exceptions to the referee's report should specifically point out the error, or error
relied upon by the party excepting, when the report comes up for confirmation
the court cannot be expected to rehear the case upon the entire record but
will review only so much as may be drawn in question by proper exceptions ...
When a referee is appointed he becomes for the time being an accredited
agent and an officer of the court, and the reference is clearly a judicial
proceeding. What the referee does while acting within the scope of his
authority is, therefore, in the contemplation of law done by the court itself.
Hence his conclusions must be assumed to be correct until error is properly
shown ... It follows that when the referee has examined the evidence and
reached his conclusions of fact and law, those conclusions have a presumption
in their favor both of law and of reason. It would be impossible to administer
justice on any other theory than that as facts are found and determined in
accordance with the proper procedure of the court they must be assumed to
be true until the contrary is shown.
In the case at bar, NDC neglected to perform the duty of pointing and demonstrating the alleged
errors in the report of the Board of Accountants, in spite of the fact that this Court in G.R. No. L-15659
had ordered the case to be remanded to the lower court precisely in order that NDC might be given
the opportunity, which it claimed it had previously been derived of by the trial court, to submit its
objections to the report, and to have a hearing on the report, not withstanding the repeated
opportunities given to it by the trial court for a period of three years to submit its objections. On this
matter, the following is what the trial court said in its decision which is now appealed to this Court:.
... and as directed by the Supreme Court, the defendant was given repeated
opportunities to submit its objections to the Report of the Chairman of the
Board. Unfortunately, however, the defendant's, conduct for the last three
years amounts to waiver of its right to be heard on the subject report, to
paraphrase the language of the Supreme Court in this regard in its decision
quoted above. Thus defendant NDC requested and was granted on October
10, 1963 a first extension of time to submit its objections to the Report (p. 1342,
Records). As late as October 30, 1963 (p. 1390, Records), that is, after several
extensions of time totalling more than one (1) year, this Court granted NDC a
final and last extension of three weeks within which to submit NDC's objections,
if any to said Report. This period expired without the filing by defendant NDC of
objections, if any, to said Report; but this Court, notwithstanding the absence of
any objection to said report, and with a view to giving the defendant a last
chance to assail any part of said Report, exercised its discretion to, as it did, set
said Report for bearing on May 3, 1965 (p. 1395, Records), and thereafter on
May 6, May 28, July 9, August 5, September 16, October 22 and November 12,
1965, which hearings were cancelled at the instance and request of the
defendant. At the hearing on November 12, 1965 the parties agreed that
defendant be granted two weeks within which to file its objections, if any, to
said Report; that plaintiff shall submit its reply to the objections within a similar
period and that if the defendant failed to file the objections within said
stipulated period it shall be deemed to have waived its right to do so. The
defendant again failed to file its objections to said Report, and instead filed an
urgent motion, dated November 26, 1965, to extend the period, but said urgent
motion was filed after several days after the expiration of the period granted for
the purpose in this Court's Order of November 12, 1965, and as the defendant
actually failed to file the intended objections within the extension of time
prayed for in said urgent motion (see Order of this Court of December 7, 1965),
on motion of the plaintiff this Court found no other alternative proper under the
circumstances mentioned above than to issue its Order of December 13, 1965
to the effect that said Report was deemed submitted for decision and/or
approval as of the last mentioned date. 22
The appellant having failed to file its objections to the report, it was the duty imposed by the law
upon the court, to quote against Kriedt vs. E. C. McCullough & Co., supra, "to render judgement in
accordance with the report," as though the facts had been found by the judge himself.
If a party fails to file opportunely his objections to the report of the commissioner or referee, such that
the record does not disclose the objections thereto, as in the instant case, questions relating to the
report cannot be reviewed and he cannot dispute the finding in the report or escape the legal
consequences flowing therefrom. Thus, in the case of Santos v. De Guzman and Martinez, 23 this
Court ruled:.
By way of emphasis, we now desire to add that if a party desires to challenge
the findings of a referee, he must do so by timely and specific exceptions to the
referee's report. If he fails to make such exceptions and the report is confirmed
by the trial judge, he is bound by the findings and cannot be heard to dispute
their truthfulness or escape the legal consequences flowing therefrom.
Questions relating to the report of a referee can be reviewed only where the
record discloses the exceptions taken thereto.
Another reason why NDC's first four assignments of errors should no longer be considered is that, as
appears in the trial court's decision, NDC agreed that should it fail to file its objections within two
weeks from November 12, 1965, "it shall be deemed to have waived its right to do so." Furthermore, it
has been repealed time and again by this Court, that issues not raised in the lower court cannot be
raised for the first time on appeal. 24 In the recent case of Kalalo v. Luz 25 this Court refused to
consider on appeal the correctness of the amount due from appellant to appellee as found by the
Commissioner, it being too late to question on appeal its correctness, the same not having been,
submitted to the trial court for resolution.
It has also been held, in this connection, that when the findings of the Commissioner are approved
by the trial court, they will not generally be disturbed by the reviewing court, unless the findings are
unsupported by the evidence. 26The trial court adopted the findings and recommendations
embodied in the Report in the instant case "after a careful consideration of said report and after a
careful evaluation of the pertinent data and figures taken from authentic records as to which the
members of the Board of Accountants are in agreement." 27
In support of the fifth assignment of error, that the lower court erred in holding that De la Rama is
entitled to the preferential right to the use of the "Doña" names and enjoining and restraining NDC
perpetually from using the "Doña" names on any of its vessels, NDC argues that as owner of the
vessels it had registered the "Doña" names in the Bureau of Customs with full knowledge and consent
of De la Rama which, therefore, is now estopped from questioning the right, or from denying the
ownership, of NDC over the "Doña" names (Art. 1431, Civil Code).têñ.£îhqw⣠28 De la Rama, on the
other hand maintains that the findings and conclusion of the lower court on this matter, quoting the
pertinent portion of the lower court's decision, are well founded.
In the amendatory decision, dated March 18, 1966, the lower court found that De la Rama had
been in the shipping business since 1933 and had adopted, prior to the war in 1941, the word "Doña"
in designating its vessels; that the three ocean-going vessels that it operated under the
management contract were named "Doña Nati" after the wife of the late Don Esteban de la Rama,
who was founder of the steamship company; "Doña Alicia" after the late wife of former President
Elpidio Quirino; and "Doña Aurora" after the late widow of President Manuel Quezon; that there is
unrebutted testimony that in the shipping business, goodwill and reputation are inevitably acquired
by the names given to a complainant." 33.
vessel. 29
NDC's contention, in its answer, that De la Rama, a private firm, could not appropriate said names
("except Doña Nati") on the ground that those are names of wives of former Presidents, does not
have a legal basis. Under Section 4(c) of Rep. Act No. 166 as amended, which apparently is the
basis of the contention of NDC, what is prohibited from being appropriated and being registered are
trade-names consisting of, or comprising, a name identifying a particular living individual, or the
name of a deceased President of the Philippines. The names of deceased wives of Presidents are not
included in the prohibition. Moreover, Section 4(f) of said Act does not prohibit the registration, and
hence appropriation, of a trade-name that has become distinctive and the substantial and
exclusive use of a trade-name for five years accepted as prima facie proof that the trade-name has
become distinctive. And this Court has said, in Ang vs. Teodoro, 30 that even a name or phrase not
capable of appropriation as a trade name may, by long and exclusive use by a business with
reference thereto of to its products, acquire a proprietary connotation, such that, to the purchasing
public, the name or phrase becomes associated with the service or the products of the business,
and so it is entitled to protection against unfair competition.
Neither is the claim of estoppel, allegedly based on acquiescence, in that NDC had registered with
full knowledge and/or consent of De la Rama the "Doña" names in the Bureau of Customs, tenable.
A reading of Sections 1166 to 1176 of the Revised Administrative Code, under which the "Doña"
vessels were presumably registered, would show that the principally purpose of the registration is to
determine the ownership of the vessel, although for registration it is necessary that the vessel should
have a name as a prerequisite under the provision of Section 1170. De la Rama certainly could not,
and had no right, to oppose the registration of the vessels by NDC because the vessels were in fact
owned by NDC. Neither could De la Rama then oppose the registration of the "Doña" names of the
vessels for it was De la Rama itself that gave those names when it operated the vessels, and it had
also expectant right to become owners of said vessels. De la Rama's consent to the registration of
the vessels as owned by NDC did not necessarily imply that it also consented to NDC's appropriation
of the "Doña" names, for almost immediately after the right of NDC to cancel the management
contract had been upheld by this Court in G.R. No. L-8784, decided on May 21, 1956, De la Rama
formally notified, on August 10, 1956 NDC or its agent to refrain from using, announcing or in any
manner referring to the three vessels here in question as the 'Doña Aurora,' 'Doña Nati' or 'Doña
Alicia'."31From these facts if cannot reasonably be urged that De la Rama is estopped from
preventing NDC to use the "Doña" names on its vessels. Anent this matter, it has been held that:.
... an estoppel will not ordinarily arise from a consent given under an excusable
misapprehension of facts... likewise, the estoppel will not be given effect
beyond the precise thing consented to and matters which are necessarily, or at
least, reasonably, to be implied therefrom. (28 Am Jur 2d, pp. 662-663.)
And even if it be assumed, gratia argumenti, that De la Rama acquiesced to the registration of the
"Doña" names of the vessels, as NDC contends, that acquiescence could not necessarily estop De la
Rama to claim its right to said names, after the conditions had changed, that is when the
management contract had been cancelled by NDC. Regarding this matter it has been held that:.
Acquiescence in the past does not necessarily estop a party from changing his
course of conduct as to the future, especially where there has been a change
in conditions. (28 Am Jur 2d p. 675.)
NDC does not dispute the fact that the "Doña" names had been originally used by De la
Rama, 32 and according to the lower court De la Rama had been using the "Doña" names even
before the war, and that said names have acquired goodwill and reputation. Goodwill is protected
by the law on unfair competition. Goodwill is easily damaged, and is easily vulnerable to assault,
through the brand which symbolizes it. When a person has established a trade or business in which
he has used a name or device to designate his goods, he will be protected in the use of the name or
device. "Such person has a right to complain when another adopts this symbol or manner of making
of his goods so as to mislead the public into purchasing the same as and for the goods of the
The goodwill in business is a valuable asset, and in modern commercial life it is
frequently built upon a trade-name. Any trade-mark or name ... which has
become of a pecuniary value or a business advantage, becomes a property
right, and, as such, is entitled to the protection afforded by the courts
(American Agricultural Chemical Co. v. Moore, 17 F (2d) 196, 199.)
In Ang v. Teodoro 34 this Court said:.
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 confusion of goods.
The modern trend is to give emphasis to the unfairness of the acts and to treat
the issue as a fraud.
To permit NDC to continue using the "Doña" names would be to countenance the unlawful
appropriation of the benefit of a goodwill which De la Rama has acquired as a result of continued
usage and large expense; it would be tantamount to permitting NDC to grab the reputation or
goodwill of the business of another. 35 We find that the decision of the trial court on this matter is in
accordance with the law on unfair competition.
Regarding NDC's sixth assignment of error, that the lower court erred in condemning defendant-
appellant to pay to the plaintiff-appellee the sum of P244,227.81 with legal interest thereon, from
January 24, 1955 until fully paid and also the sum of P20,000 by way of damages and attorney's fees,
We believe that no such error was committed by the lower court. The view We have expressed
regarding the first four errors assigned by NDC fully supports the correctness of the lower court's
holding that NDC should pay De la Rama the sum of P244,227.81 with legal interest, as stated in the
decision. The facts and circumstances extant in the record, likewise, amply warrant the award to De
la Rama of the sum of P20,000.00 by way of damages and attorney's fee's.
WHEREFORE, the decision appealed from is affirmed, with cost against the defendant-appellant
National Development Company. It is so ordered.
G.R. No. L-23035 July 31, 1975
PHILIPPINE NUT INDUSTRY, INC., petitioner,
vs.
STANDARD BRANDS INCORPORATED and TIBURCIO S. EVALLE as Director of Patents, respondents.
Perfecta E. De Vera for petitioner.
Paredes, Poblador, Cruz and Nazareno for private respondent.
Office of the Solicitor General Arturo A. Alafriz, Acting Assistant Solicitor General Isidro C. Borromeo
and Solicitor Francisco J. Bautista for respondent Director.
MUNOZ PALMA, J.:
Challenged in this petition for review is the decision of respondent Director of Patents which orders
the cancellation of Certificate of Registration No. SR-416 issued in favor of herein petitioner Philippine
Nut Industry, Inc. (hereinafter called Philippine Nut) for the trademark "PHILIPPINE PLANTERS CORDIAL
PEANUTS," upon complaint of Standard Brands Inc. (hereinafter to be called Standard Brands).
The records of the case show the following incidents:
Philippine Nut, a domestic corporation, obtained from the Patent Office on August 10, 1961,
Certificate of Registration No. SR-416 covering the trademark "PHILIPPINE PLANTERS CORDIAL
PEANUTS," the label used on its product of salted peanuts.
On May 14, 1962, Standard Brands a foreign corporation,1 filed with the Director of Patents Inter
Partes Case No. 268 asking for the cancellation of Philippine Nut's certificate of registration on the
ground that "the registrant was not entitled to register the mark at the time of its application for
registration thereof" for the reason that it (Standard Brands) is the owner of the trademark "PLANTERS
COCKTAIL PEANUTS" covered by Certificate of Registration No. SR-172, issued by the Patent Office on
July 28, 1958. Standard Brands alleged in its petition that Philippine Nut's trademark "PHILIPPINE
PLANTERS CORDIAL PEANUTS" closely resembles and is confusingly similar to its trademark "PLANTERS
COCKTAIL PEANUTS" used also on salted peanuts, and that the registration of the former is likely to
deceive the buying public and cause damage to it.
On June 1, 1962, Philippine Nut filed its answer invoking the special defense that its registered label is
not confusingly similar to that of Standard Brands as the latter alleges.
At the hearing of October 4, 1962, the parties submitted a partial stipulation of facts. On December
12, 1962, an amended partial stipulation of facts was submitted, the pertinent agreements
contained in which are: (1) that Standard Brands is the present owner of the trademark "PLANTERS
COCKTAIL PEANUTS" covered by Certificate of Registration No. SR-172 issued on July 28, 1958; (2) that
Standard Brands trademark was first used in commerce in the Philippines in December, 1938 and (3)
that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" was first used in the
Philippines on December 20, 1958 and registered with the Patent Office on August 10, 1961.
On December 10, 1963, after the presentation of oral and documentary evidence and the filing by
the parties of their memoranda, respondent Director of Patents rendered Decision No. 281 giving
due course to Standard Brand's petition and ordering the cancellation of Philippine Nut's Certificate
of Registration No. SR-416. The Director of Patents found and held that in the labels using the two
trademarks in question, the dominant part is the word "Planters", displayed "in a very similar manner"
so much so that "as to appearance and general impression" there is "a very confusing similarity," and
he concluded that Philippine Nut "was not entitled to register the mark at the time of its filing the
application for registration" as Standard Brands will be damaged by the registration of the same. Its
motion for reconsideration having been denied, Philippine Nut came up to this Court for a review of
said decision.
In seeking a reversal of the decision of respondent Director of Patents, petitioner brings forth eleven
assigned errors all of which revolve around one main issue: is the trademark "PHILIPPINE PLANTERS
CORDIAL PEANUTS" used by Philippine Nut on its label for salted peanuts confusingly similar to the
trademark "PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product so as to constitute
an infringement of the latter's trademark rights and justify its cancellation? 2
The applicable law to the case is found in Republic Act 166 otherwise known as the Trade-Mark Law
from which We quote the following pertinent provisions:
Chapter II-A. —
Sec. 4. Registration of trade-marks, trade-names and service-marks on the
principal register. — There is hereby established a register of trade-marks, trade-
names and service-marks which shall be known as the principal register. The
owner of a trade-mark, 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 on the principal register, unless it:
(d) Consists of or comprises a mark or trade-name which so resembles a mark
or trade-name registered in the Philippines or a mark or trade-name previously
used 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 Ours)
Sec. 17. Grounds for cancellation — Any person, who believes that he is or will
be damaged by the registration of a mark or trade-name, may, upon the
payment of the prescribed fee, apply to cancel said registration upon any of
the following grounds:
(c) That the registration was obtained fraudulently or contrary to the provisions
of section four, Chapter II hereof; ....
Sec. 22. Infringement, what constitutes. — Any person who shall use, without the
consent of the registrant, any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name in connection with the sale,
offering for sale, or advertising of any goods, business or services on or in
connection with which such use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business; or reproduce, counterfeit, copy or
colorably imitate any such mark or trade-name and apply such reproduction,
counterfeit, copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services, shall be liable to a civil action
by the registrant for any or all of the remedies herein provided. (emphasis
supplied).
In the cases involving infringement of trademark brought before the Court it has been consistently
held that there is infringement of trademark when the use of the mark involved would be likely to
cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or
source of the commodity; that whether or not a trademark causes confusion and is likely to deceive
the public is a question of fact which is to be resolved by applying the "test of dominancy", meaning,
if the competing trademark contains the main or essential or dominant features of another by reason
of which confusion and deception are likely to result, then infringement takes pIace; that duplication
or imitation is not necessary, a similarity in the dominant features of the trademarks would be
sufficient.3
1. The first argument advanced by petitioner which We believe goes to the core of the matter in
litigation is that the Director of Patents erred in holding that the dominant portion of the label of
Standard Brands in its cans of salted peanuts consists of the word PLANTERS which has been used in
the label of Philippine Nut for its own product. According to petitioner, PLANTERS cannot be
considered as the dominant feature of the trademarks in question because it is a mere descriptive
term, an ordinary word which is defined in Webster International Dictionary as "one who or that
which plants or sows, a farmer or an agriculturist." (pp. 10-11, petitioner's brief)
We find the argument without merit. While it is true that PLANTERS is an ordinary word, nevertheless it
is used in the labels not to describe the nature of the product, but to project the source or origin of
the salted peanuts contained in the cans. The word PLANTERS printed across the upper portion of the
label in bold letters easily attracts and catches the eye of the ordinary consumer and it is that word
and none other that sticks in his mind when he thinks of salted peanuts.
In cases of this nature there can be no better evidence as to what is the dominant feature of a label
and as to whether there is a confusing similarity in the contesting trademarks than the labels
themselves. A visual and graphic presentation of the labels will constitute the best argument for one
or the other, hence, we are reproducing hereunder a picture of the cans of salted peanuts of the
parties to the case.
The picture below is part of the documentary evidence appearing in the original records, and it
clearly demonstrates the correctness of the finding of respondent Director that the word PLANTERS is
the dominant, striking mark of the labels in question.
It is true that there are other words used such as "Cordial" in petitioner's can and "Cocktail" in
Standard Brands', which are also prominently displayed, but these words are mere adjectives
describing the type of peanuts in the labeled containers and are not sufficient to warn the unwary
customer that the two products come form distinct sources. As a whole it is the word PLANTERS which
draws the attention of the buyer and leads him to conclude that the salted peanuts contained in
the two cans originate from one and the same manufacturer. In fact, when a housewife sends her
housemaid to the market to buy canned salted peanuts, she will describe the brand she wants by
using the word PLANTERS and not "Cordial" nor "Cocktail".
2. The next argument of petitioner is that respondent Director should not have based his decision
simply on the use of the term PLANTERS, and that what he should have resolved is whether there is a
confusing similarity in the trademarks of the parties.
It is quite obvious from the record, that respondent Director's decision is based not only on the fact
that petitioner herein adopted the same dominant mark of Standard Brands, that is, the word
PLANTERS, but that it also used in its label the same coloring scheme of gold, blue, and white, and
basically the same lay-out of words such as "salted peanuts" and "vacuum packed" with similar type
and size of lettering as appearing in Standard Brands' own trademark, all of which result in a
confusing similarity between the two labels.4 Thus, the decision states: "Furthermore, as to
appearance and general impression of the two trademarks, I find a very confusing similarity."
(Emphasis supplied)5
Referring again to the picture We have reproduced, the striking similarity between the two labels is
quite evident not only in the common use of PLANTERS but also in the other words employed. As a
matter of fact, the capital letter "C" of petitioner's "Cordial" is alike to the capital "C" of Standard's
"Cocktail", with both words ending with an "1".
Admittedly, no producer or manufacturer may have a monopoly of any color scheme or form of
words in a label. But when a competitor adopts a distinctive or dominant mark or feature of
another's trademark and with it makes use of the same color ensemble, employs similar words written
in a style, type and size of lettering almost identical with those found in the other trademark, the
intent to pass to the public his product as that of the other is quite obvious. Hence, there is good
reason for Standard Brands' to ask why did petitioner herein use the word PLANTERS, the same
coloring scheme, even almost identical size and contour of the cans, the same lay-out of words on
its label when there is a myriad of other words, colors, phrases, symbols, and arrangements to choose
from to distinguish its product from Standard Brands, if petitioner was not motivated to simulate the
label of the latter for its own can of salted peanuts, and thereby deceive the public?
A similar question was asked by this Court in Clarke vs. Manila Candy Co., 36 Phil. 100, when it
resolved in favor of plaintiff a case of unfair competition based on an imitation of Clarke's packages
and wrappers of its candies the main feature of which was one rooster. The Court queried thus: "...
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 choose from, the defendant company (Manila Candy Co.) selected two roosters as its
trademark, although its directors and managers must have been well aware of the long-continued
use of a rooster by the plaintiff with the sale and advertisement of its goods? ... A cat, a dog, a
carabao, a shark or an eagle stamped upon the container in which candies are sold would serve as
well as a rooster for purposes of identification as the product of defendant's factory. Why did
defendant select two roosters as its trademark ?" (p.109, supra)
Petitioner contends, however, that there are differences between the two trademarks, such as, the
presence of the word "Philippine" above PLANTERS on its label, and other phrases, to wit: "For Quality
and Price, Its Your Outstanding Buy", the address of the manufacturer in Quezon City, etc., plus a
pictorial representation of peanuts overflowing from a tin can, while in the label of Standard Brands it
is stated that the product is manufactured in San Francisco, California, and on top of the tin can is
printed "Mr. Peanut" and the representation of a "humanized peanut". (pp. 30-33, petitioner's brief)
We have taken note of those alleged differences but We find them insignificant in the sense that
they are not sufficient to call the attention of the ordinary buyer that the labeled cans come from
distinct and separate sources. The word "Philippine" printed in small type in petitioner's label may
simply give to the purchaser the impression that that particular can of PLANTERS salted peanuts is
locally produced or canned but that what he is buying is still PLANTERS canned salted peanuts and
nothing else. As regards "Mr. Peanut" on Standard Brands' label, the same appears on the top cover
and is not visible when the cans are displayed on the shelves, aside from the fact that the figure of
"Mr. Peanut" is printed on the tin cover which is thrown away after opening the can, leaving no
lasting impression on the consumer. It is also for this reason that We do not agree with petitioner that
it is "Mr. Peanut and the Humanized Peanut" which is the trademark of Standard Brands salted
peanuts, it being a mere descriptive pictorial representation of a peanut not prominently displayed
on the very body of the label covering the can, unlike the term PLANTERS which dominates the label.
It is correctly observed by respondent Director that the merchandize or goods being sold by the
parties herein are very ordinary commodities purchased by the average person and many times by
the ignorant and unlettered 6 and these are the persons who will not as a rule examine the printed
small letterings on the container but will simply be guided by the presence of the striking mark
PLANTERS on the label. Differences there will always be, but whatever differences exist, these pale
into insignificance in the face of an evident similarity in the dominant feature and overall
appearance of the labels of the parties.
It is not necessary, to constitute trademark "infringement", that every word of a
trade-mark should be appropriated, but it is sufficient that enough be taken to
deceive the public in the purchase of a protected article. (Bunte Bros. v.
Standard Chocolates, D.C. Mass., 45 F. Supp. 478, 481)
A trade-name in order to be an `infringement' upon another need not be
exactly like it in form and sound, but it is enough if the one so resembles another
as to deceive or mislead persons of ordinary caution into the belief that they
are dealing with the one concern when in fact they are dealing with the other.
(Foss v. Culbertson, 136 P. 2d 711, 718, 17 Wash. 2d 610)
Where a trade-mark contains a dominating or distinguishing word, and
purchasing public has come to know and designate the article by such
dominating word, the use of such word by another in marking similar goods
 may constitute Infringement though the marks aside from such dominating
word may be dissimilar. (Queen Mfg. Co. v. lsaac Ginsberg & Bros., C.C.A.
Mon., 25 F. 2d 284, 287)
(d) "Infringement" of trade-mark does not depend on the use of identical
words, nor on the question whether they are so similar that a person looking at
one would be deceived into the belief that it was the other; it being sufficient if
one mark is so like another in form, spelling, or sound that one with not a very
definite or clear recollection as to the real mark is likely to be confused or
misled. (Northam Warren Corporation v. Universal Cosmetic Co., C. C. A; III., 18
F. 2d 774, 775)
3. What is next submitted by petitioner is that it was error for respondent Director to have enjoined it
from using PLANTERS in the absence of evidence showing that the term has acquired secondary
meaning. Petitioner, invoking American jurisprudence, asserts that the first user of a tradename
composed of common words is given no special preference unless it is shown that such words have
acquired secondary meaning, and this, respondent Standard Brands failed to do when no evidence
was presented to establish that fact. (pp. 14-16, petitioner's brief)
The doctrine of secondary meaning is found in Sec. 4 (f), Chapter II-A of the Trade-Mark Law, viz:
Except as expressly excluded in paragraphs (a), (b), (c) and (d) of this section,
nothing herein shall prevent the registration of a mark or trade-name used by
the applicant which has become distinctive of the applicant's goods, business
or services. The Director may accept as prima facie evidence that the mark or
trade-name has become distinctive, as applied to or used in connection with
the applicant's goods, business or services, proof of substantially exclusive and
continuous use thereof as a mark or trade-name by the applicant in
connection with the sale of goods, business or services for the five years next
preceding the date of the filing of the application for its registration. (As
amended by Sec. 3, Rep. Act No. 638.)
This Court held that the doctrine is to the effect that a word or phrase originally incapable of
exclusive appropriation with reference to an article on the market, because geographically or
otherwise descriptive, might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of the purchasing public,
the word or phrase has come to mean that the article was his product.7
By way of illustration, is the word "Selecta" which according to this Court is a common ordinary term
in the sense that it may be used or employed by any one in promoting his business or enterprise, but
which once adopted or coined in connection with one's business as an emblem, sign or device to
characterize its products, or as a badge of authenticity, may acquire a secondary meaning as to be
exclusively associated with its products and business, so that its use by another may lead to
confusion in trade and cause damage to its business.8
The applicability of the doctrine of secondary meaning to the situation now before Us is appropriate
because there is oral and documentary evidence showing that the word PLANTERS has been used
by and closely associated with Standard Brands for its canned salted peanuts since 1938 in this
country. Not only is that fact admitted by petitioner in the amended stipulation of facts (see p. 2 of
this Decision), but the matter has been established by testimonial (tsn October 4, 1962, pp. 2-8) and
documentary evidence consisting of invoices covering the sale of "PLANTERS cocktail peanuts".
(Exhibits C to C-4; D to D-10; E to E-10; F to F-2) In other words, there is evidence to show that the term
PLANTERS has become a distinctive mark or symbol insofar as salted peanuts are concerned, and by
priority of use dating as far back as 1938, respondent Standard Brands has acquired a preferential
right to its adoption as its trademark warranting protection against its usurpation by another. Ubi jus
ibi remedium. Where there is a right there is a remedy. Standard Brands has shown the existence of a
property right(Arce Sons & Co. vs. Selecta Biscuit Co., Inc., supra, pp. 262-263) and respondent
Director, has afforded the remedy.
Still on this point, petitioner contends that Standard Brands' use of the trademark PLANTERS was
interrupted during the Japanese occupation and in fact was discontinued when the importation of
peanuts was prohibited by Central Bank regulations effective July 1, 1953, hence it cannot be
presumed that it has acquired a secondary meaning. We hold otherwise. Respondent Director
correctly applied the rule that non-use of a trademark on an article of merchandize due to legal
restrictions or circumstances beyond one's control is not to be considered as an abandonment.
In the case of Andres Romero vs. Maiden Form Brassiere Co., Inc., L-18289, March 31, 1964, 10 SCRA
556, the same question was raised by petitioner Romero when he filed with the Bureau of Patents a
petition to cancel the registration of the trademark "Adagio" for brassieres manufactured by Maiden
Form Brassiere Co., Inc. His petition having been dismissed by the Director of Patents, Romero
appealed to this Court and one of the issues posed by him was that when the Government imposed
restrictions on importations of brassieres bearing that particular trademark, there was abandonment
of the same by respondent company which entitled petitioner to adopt it for his own use and which
in fact he had been using for a number of years. That argument was met by the Court in the words
of Justice Jesus Barrera thus:
... The evidence on record shows, on the other hand, that the trademark
"Adagio" was first used exlusively in the Philippines by appellee in the year 1932.
There being no evidence of use of the mark by others before 1932, or that
appellee abandoned use thereof, the registration of the mark was made in
accordance with the Trademark Law. Granting that appellant used the mark
when appellee stopped using it during the period of time that the Government
imposed restrictions on importation of respondent's brassiere being the
trademark, such temporary non-use did not affect the rights of appellee
because it was occasioned by government restrictions and was not
permanent, intentional, and voluntary.
To work an abandonment, the disuse must be permanent
and not ephemeral; it must, be intentional and voluntary,
and not involuntary or even compulsory. There must be a
thoroughgoing discontinuance of any trade-mark use of
the mark in question (Callman, Unfair Competition and
Trademark, 2nd Ed., p. 1341).1äwphï1.ñët
The use of the trademark by other manufacturers did not indicate an intention
on the part of appellee to abandon it.
The instances of the use by others of the term Budweiser, cited by the
defendant, fail, even when liberally construed, to indicate an intention upon
the part of the complainant to abandon its rights to that name. "To establish the
defense of abandonment, it is necessary to show not only acts indicating a
practical abandonment, but an actual intention to abandon." Sanlehner v.
Eisener & Mendelson Co., 179 U.S. 19, 21 S. Ct. 7 (45 L. Ed. 6.0).(Anheuser-Busch,
Inc, v. Budweiser Malt Products Corp., 287 F. 245.)
xxx xxx xxx
Non-use because of legal restrictions is not evidence of an intent to abandon.
Non-use of their ancient trade-mark and the adoption of new marks by the
Carthusian Monks after they had been compelled to leave France was
consistent with an intention to retain their right to use their old mark.
Abandonment will not be inferred from a disuse over a period of years
occasioned by statutory restrictions on the name of liquor. (Nims, Unfair
Competition and Trade-Mark, p. 1269.) (pp. 562-564, supra) (emphasis Ours)
Applying the words of Justice Roman Ozaeta in the "Ang Tibay" case (Ang vs. Toribio Teodoro, p. 56,
supra) to the case now before Us, petitioner herein must not be allowed to get a free ride on the
reputation and selling power of Standard Brands PLANTERS salted peanuts, for a self-respecting
person, or a reputable business concern as is the case here, does not remain in the shelter of
another's popularity and goodwill but builds one of his own.
4. Findings of fact by the Director of Patents are conclusive and binding on this Court provided they
are supported by substantial evidence. 9 The testimonial and documentary evidence in addition to
the stipulation of facts submitted by the parties fully support the findings of respondent Director
that(1) there is a confusing similarity between the labels or trademarks of Philippine Nut and
Standard Brands used in their respective canned salted peanuts; (2) respondent Standard Brands
has priority of adoption and use of the label with PLANTERS as the dominant feature and the same
has acquired secondary meaning in relation to salted peanuts; and (3) there has been no
abandonment or non-use of said trademark by Standard Brands which would justify its adoption by
petitioner or any other competitor for the sale of salted peanuts in the market.
PREMISES CONSIDERED, We AFFIRM the decision of respondent Director of Patents with costs against
petitioner.
So Ordered.
G.R. No. L-23954 April 29, 1977
AMERICAN CYANAMID COMPANY, Petitioner, vs. THE DIRECTOR OF PATENTS and TIU
CHIAN, Respondents.
Picazo & Agcaoili and Roque Recio for petitioner.chanrobles virtual law library
Solicitor General Arturo A. Alafriz, Assistant Solicitor General Antonio A. Torres and Solicitor Alicia V.
Sempio-Diy for respondent The Director of Patents.chanrobles virtual law library
Rafael R. Lasam for respondent.
MUÑOZ PALMA, J.:
This is an appeal from a decision of the Director of Patents in Inter Partes Case No. 140
entitled "American Cyanamid Company, petitioner, versus Tiu Chian, respondent which denied the
petition of American Cyanamid Company to cancel the registration of the trademark SULMETINE
issued in favor of Tiu Chian.chanrobles virtual law library
The factual background of this case follows:
Petitioner to which We shall refer at times as Cyanamid field on April 3, 1959, a petition to cancel
certificate of registration No. 5348 issued on July 6, 1956, in favor of respondent Tiu Chian of the
Latter's trademark SULMETINE used on medicine for the control of infectious coryza and for the
prevention of cold rhinitis, roup, cecal coccidiosis and intestinal coccidiosis of chicken and other
domesticated birds. Cyanamid claims that it is the owner of a trademark SULMET which it had used
for many years in the United States since 1946 and which was duly Registration No. 431929 and which
was first used in the Philippines on May 25, 1950, for which it filed an application for registration of the
same in this country on May 3, 1956. SULMET is the trademark of a veterinary product used, among
other purposes, "for the control of outbreaks of ceal and intestinal coccidiosis in turkeys' and for
reducing mortality in pullorum disease in baby chicks, acute fowl cholera in chickens, turkeys and
ducks and anatipistifer disease in ducks." Through long use in the country, SULMET has become
popular and well-known and enjoys widespread reputation brought about by extensive
advertisement and promotion through the media. Notwithstanding the above, respondent filed an
application for registration of SULMETINE as his trademark on a veterinary product used for the same
purposes thereby making respondent's product confusingly with that of petitioner which is unfair and
unjust to the label.chanrobles virtual law library
In support of its Petition for cancellation, Cyanamid presented as its Exhibit B a sample of the label
used on its product and as Exhibit C a sample of the label of respondent Tiu Chian used on the
latter's product. (pp. 264-265, original record) It likewise submitted among its exhibits several indent
orders issued by F.E. ZUELLIG, INC. to various business companies,; covering petitioner's Sulmet
Solution (Exhibits H, H-1, J, J-1, I, I-1, K, and L).chanrobles virtual law library
Respondent Tiu Chian opposed this Petition for cancellation of his trademark SULMETINE.chanrobles
virtual law library
On June 9, 1964, the Director of Patents rendered his decision denying the Petition for cancellation of
respondent's certificate of registration of the trademark SULMETINE, based on the following findings:
(1) Petitioner's trademark SULMET (Exhibit B) is used on a preparation for practically all domesticated
animals such as fowl, cattle, pigs, horses and sheep, whereas, SULMENTINE is limited only to chicken
and other domisticated birds. This distinction is evident from the printed matter appearing on the
respective labels of the parties. Thus, on respondent's label (Exhibit C) it is indicated thereon that the
preparation is for treatment of birds and chicken (p. 265 volume of exhibits), whereas, the label
(Exhibit B) of petitioner indicates that the product is for chicken, turkey, duck, and may be employed
in the treatment of certain conditions in horses, cattle, calves, sheep, and swine (p. 264,
Idem).chanrobles virtual law library
(2) On top of petitioner's label, Exhibit B, the word "CYANAMID" is printed in prominent letters and at
the bottom of the label there appears in bold letters the words "AMERICAN CYANAMID COMPANY,
NEW YORK 20, N.Y." indicating the manufacturer of the product. On the other hand, at the top of
respondent's label, Exhibit C, there appears the pictures of two roosters with the word "HENRY'S" in-
between, and at the bottom "HENRY'S LABORATORIES PHILIPPINES" are clearly printed indicating the
source of the product.chanrobles virtual law library
(3) Petitioner's preparation consists of a dringking water solution and this is clearly indicated in bold
letters on the label, whereas, the of respondent consists of tablets for veterinary use prominently
indicated in red letters on the label, Exhibit C.chanrobles virtual law library
The above differences in the physical aspect or appearance of the respective labels were found by
the Director of Patents substantial and striking enough so as to prevent any confusing similarity
between the two which may lead a buyer to confuse one with the other.chanrobles virtual law
library
With respect to Petitioner's contention that respondent's trademark bears the two syllables of
petitioner's SULMET and that respondent merely added the syllable "INE", the Director of Patents
reasoned out that the syllables "SUL" and "MET" are coined from a common source suggestive of
chemical compounds which are attributes of the products of the parties herein, that is, "SUL" being
derived from "SULFA" and "MET" from methyl, so that neither party may claim exclusive use to them,
and that with the addition of the syllable "INE" by respondent, a marked distinction is affected to
distinguished the two trademarks.chanrobles virtual law library
The Director of Patents likewise found that no material damage was sustained by petitioner during
the time that respondent was using SULMETINE on its products. Thus, it is shown from Exhibit S that the
total of the sales of SULMET product was P72,824.35 in 1959, which increased to P123,641.85 in 1960,
and that although in 1961 the sales decreased slightly to P118,621.25, that was offset considerably by
the sudden increase to P161,238.65 in 1962.chanrobles virtual law library
From the foregoing decision, American Cyanamid Company appeals to this Court and submits five
assigned errors, to wit:
First Assignment of Error
Respondent Director of Patents erred in finding that petitioner did not have priority in the use of its
trademark SULMET over respondent Tiu Chian's use of his trademark SULMETINE.
Second Assignment of Error
Respondent Director of Patents erred in holding that the trademark SULMETINE is not confusingly
similar to the trademark SULMET.
Third Assignment of Error
Respondent Director of Patents erred in holding that respondent Tiu Chian's certificate of registration
No. 5348 for the trademark SULMETINE was not obtained by fraud.
Fourth Assignment of Error
Respondent Director of Patents erred in holding that petitioner is legally obliged to prove damages
by reason of the issuance of certificate of registration No. 5348 as a condition precedent for
obtaining its cancellation.
Fifth Assignment of Error
Respondent Director of Patents erred in delegating the authority to hear and receive the evidence
in this case to a so-called hearing officer and therefor he has no jurisdiction to render the decision
appealed from because he did not hear the case nor receive the evidence thereof.
We view the second assignment of error as the issue which goes to the very heart of the litigation,
the disposition of which renders the treatment of the, other assigned errors unnecessary.chanrobles
virtual law library
The problem therefore to be resolved is whether or not petitioner correctly claims that respondent's
trademark SULMETINE was copied from its trademark SULMETINE giving rise to a confusing similarity
between the two in violation of Republic Act 166 otherwise known as the Trade-Mark
Law.chanrobles virtual law library
We find petitioner's submittal devoid of merit and hold that there is no infringement of trademark
which justify a cancellation of respondent's registered trademark SULMETINE.chanrobles virtual law
library
1. An examination of the documentary evidence submitted by the parties confirms the findings of
the Director of Patents that there are striking differences between the two labels, Exhibits B and C,
which preclude the possibility of the purchasing public confusing one product with the other. Said
labels are entirely different in size, background, colors, contents, and pictorial arrangement: in short.
the general appearances of the labels bearing the respective trademarks are so distinct from each
other that petitioner cannot assert that the dominant features, if any, of its trademark were used or
appropriated in respondent's own.chanrobles virtual law library
Thus -
(a) The coloring scheme: Petitioner's SULMETINE label, Exhibit B, has a white background with the
word SULMETINE printed in dark green, while respondent's SULMETINE label, Exhibit C, is dark yellow in
color, and the word SULMETINE. is printed in dark blue. In fact, Exhibit B carries mainly two colors -
white and green, while Exhibit C uses yellow, blue, and red
(b) The pictorial representation: Respondent's label, Exhibit C, presents at its top the pictures of two
roosters and in between is the word "HENRY'S" printed in an egg-shaped enclosure, while petitioner's
label carries no such pictorial representation nor even one similar to it, for what appears on the top
of its label is the word "CYANAMID" printed in bold and widely-spaced green letters.chanrobles
virtual law library
(c) The printed matter on the label: A very important point of difference between the labels of the
parties is found in the cotents of the printed matter. In the label Exhibit B, the product is described in
bold green letters as "Drinking Water Solution" and the printed directions indicate that it is for use of
chicken flocks, turkeys, ducks, as well as in certain conditions for horses, cattle, calvess, sheep, and
swine. On the other hand, in respondent's label Exhibit C what are printed in bold red letters are
"Tablets Veterinary". Except for the use of the words "Adult birds" and "Small chicks", there is nothing in
Exhibit C which indicates that the preparation may be used for turkesy, ducks, or for any other
domesticated animals mentioned in the SULMET label. On this point, it is significant to note that the
product represented by the trademarks of the parties is a medicianal preparation for veterinary use,
consequently, a prospective buyer will be cautious and prudent enough to examine the contents of
the printed matter on the label, unlike in a situation where the product is for ordinary personal or
household use, such as soap and other tiolet articles, biscuits, candies, and ther like where the
consumer is not expected to exercise moer than ordinary diligence in the choice or selectioon a
purchase not to ascertain that what he is purchasing is a animals, and in the process mistake a water
solution for a tablet over vice versa.chanrobles virtual law library
(d) The clear indication of the source: Petitioner's label clearly indicates that the product SULMET is of
foreign origin.chanrobles virtual law library
Not only is the word "CYANAMID" printed in big widely-spaced letters at the top of the label but at
the bottom thereof the words "AMERICAN CYANAMID COMPANY, NEW YORK 20, N.Y." are printed in
white capital letters against a dark green background. In respondent's SULMENTINE label, Exhibit C,
the name "HENRY'S" in turn is printed clearly above the word SULMETINE and at the bottom of the
label the phrase "HENRY'S LABORATORIES PHILIPPINES"" is printed in white letters against a dark blue
background making it distinctly visible.chanrobles virtual law library
Thus, looking at the two labels Exhibits B and C it is quite apparent that the source of the product is
predominantly indicated thereby discounting petitioner's assertion that the SULMETINE trademark is a
plain copy of its own with intent to pass respondent's article as coming from the same source as that
of petitioner's medicinal preparation.chanrobles virtual law library
What have been stated above sufficiently throws out petitioner's second assignment of
error.chanrobles virtual law library
2. In page 56 of petitioner's brief the case of Lim Hoa vs. Director of Patents, L-8072, October 31, 1956,
is invoked in support of this appeal. However, that case is not controlling because the article in
question in Lim Hoa was a food seasoning product which according to this Court is "generally
purchased by cooks and household help, sometimes illiterate, who are guided by pictorial
representations"; that the two roosters appearing in the trademark of applicant and the hen
appearing in the trademark of the oppositor although of different sexes belong to the same family of
chicken known as "manok" so that when a cook or a housewife buys a food seasoning product for
the kitchen the brand of "manok" or "marka manok" will be uppermost in her mind and regardless of
whether the picture is a hen or a rooster, to her, they are all "manok", and consequently there lies the
confusion, even deception.chanrobles virtual law library
In this case of SULMET and SULMETINE, the product is for medicinal veterinary use and consequently,
the purchaser will be more wary of the nature of the product he is buying. Contrary to the allegation
of petitioner herein, the source or manufacturer of the article will be a most important factor in the
mind of the purchaser in selecting the article he will buy, and a preparation manufactured by a well-
known foreign company such as the "American Cyanamid Company, New York", enjoys a decided
advantage over one which is locally produced and manufactured by an unknown entity such as
"Henry's Laboratories".chanrobles virtual law library
What is relevant to and decisive of the case at bar is Mead Johnson & Co. vs. N.V.J. Van Dorp. Ltd.,
et al., L-17501, decided on April 27, 1963, barely a year before the appealed decision in the instant
case. Van Dorp, Ltd., a Netherlands corporation, filed an application for the registration of its
trademark "ALASKA and pictorial presentation of a Boy's Head with a rectangular design." Mead
Johnson, a corporation organized under the laws of Indiana, U.S.A., being the owner of a trademark
"ALACTA" used for powdered half-skim milk, which was registered with the Patent Office on June 12,
1951, opposed the registration on the ground that it will be damaged by the use of the trademark
"ALASKA" on milk products, etc., the same being confusedly similar to its trademark "ALACTA". The
Director of Patents dismissed the opposition and approved for registration the trademark "ALASKA"
on the ground that the applicant's trademark does not sufficiently resemble oppositor's mark as to
cause confusion or mistake or deceive purchasers. This Court through Justice Bautista Angelo upheld
the findings of the Director of Patents. The Court held that while there are similarities in spelling,
appearance and sound between "ALACTA" and "ALASKA" the trademarks in their entirety as they
appear in their respective labels show glaring and striking differences or dissimilarities such as in size
of the containers, the colors of the labels, inasmuch as one uses light blue, pink, and white, while Van
Dorp contains uses two colors "ALACTA" has only the first letter capitalized and is written in black
while the mark "ALASKA" has all the letters capitalized written in while except that of the condensed
full cream milk which is in red. 1
Ethepa vs. the Director of Patents, Westmont Pharamaceutical, Inc. is another case in point. In
Ethepa, the question was whether the trademark "ATUSSIN" of Westmont may be registered in the
Philippines notwithstanding the objection of Ethepa which claimed that it would be damaged
because "ATUSSIN" is so confusingly similar with "PERTUSSIN" registered in this country on September 25,
1957. The Director of Patents approved the application for the registration of the trademark "ATUSIN"
and his decision was appealed to this Court. In disposing of the appeal, the Court affirmed the
decision of the Director of Patents holding, inter alia, that a practical approach to the problem of
similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of
display; that taking a casual look at the two labels it is shown that they are entirely different in color,
contents, arrangement of words thereon, sizes, shape, and general appearance so that the label of
one cannot be mistaken for that the other; that the use of the word "tussin" as an component of both
trademarks cannot be considered as a factor for declaring the two confusingly similar for "tussin" is
descriptive and generic and is open for apropriation by anyone, and that while the word by itself
cannot be used exclusively to Identify one goods it may properly become a subject of a a
trademark by combination with another word or phrase; hence, Ethepa's "Pertussin "
and Westmonth's Atussin" 2
Similarly, in the case before Us, as correctly stated by the Director of Patents, the word SULMET is
derived from a combination of the syllables "SUL" which is derived from Sulfa and "MET"
from methyl both of which are chemical compounds present in the article manufactured by the
contending parties, and the addition of the syllable "INE" in respondent's label is sufficient to
distinguish respondent's product or trademark from that of petitioner.chanrobles virtual law library
3. Petitioner also asserts that the trademarks of the parties are used on Identical goods and for
Identical purposes and that this is an important factor in determining whether or not there is
infringement of a trademark. (p. 49, petitioner's brief). We cannot agree with petitioner that the
trademarks are used on Identical goods because as already indicated earlier, petitioner's SULMET
label, Exhibit B, is used on a drinking water solution while that of respondent labels tablets. That both
products are for Identical use may be admitted to the extent that respondent's tablets are indicated
for the treatment, control and prevention in chicken of infectious coryza also known as colds, rhinitis
and roup) and for the prevention of cecal and intestinal coccidiosis which is also indicate in
petitioner's SULMET label. However, no one including petitioner can claim a monopoly in the
preparation of a medicinal product for the use indicated above. The field is open for the
manufacture of medicinal preparations for the same veterinary purposes. What the law prohibits is
that one manufacturer labels his product in a manner strikingly Identical with or similar to that of
another manufacturer as to deceive or confuse the buying public into believing that the two
preparations are one and come from the same source. In the case however of SULMETINE and
SULMETINE it is satisfactorily shown from the evidence of the parties that while their products may be
for a similar use, their presentation to the purchasing public come in totally different forms.
Bistol Myers Company vs. The Director of Patents and United American Pharmaceuticals,
Inc., presents a similar Problem or situation. In this case, United American Pharmaceuticals filed on
October 21, 1957 a petition for registration with the patent office of its trademark "BIOFERIN" intended
for the treatment of common colds, influenza, etc. This application was opposed by Bristol Myers
Company which is the owner in the Philippines of the trademark 'BUFFERIN" and which is also
intended for relief in cases of "simple headaches, neuralgia, colds, menstrual pain and minor
muscular aches." The Director of Patents approved the registration of "BIOFERIN" and his decision was
appealed to this Court, the appellant contending principally that both products are used for the
relief of pains such as headaches and colds and that the words 'BIOFERIN" and "BUFFERIN" are
practically the same in spelling and pronunciation. Affirming the decision of the Director of Patents,
the Court through Justice J.P. Bengzon held that although the two words "BIOFERIN" and 'BUFFERIN'
have the same suffix and similar sounding prefixes, they appear in their respective labels with striking
different backgrounds and surroundings, as to color, size and design, and consequently there is no
confusing similarity between the trademarks.chanrobles virtual law library
Similarly, the trademarks "ALACTA" and "ALASKA" were used for milk products and the like (Mead
Johnson vs N.V.J. Van Dorp, Ltd., supra) while "ATUSSIN" and "PERTUSSIN" as trademarks were used for
cough and other bronchial ailments Ethepa vs Director of Patents, supra), and all were duly
recognized as registrable trademarks.chanrobles virtual law library
4. In view of our conclusion that there is no confusing of deceptive similarity between SULMET and
SULMETINE, it is unnecessary to pass upon the merits of the first, third and fourth assigned
errors.chanrobles virtual law library
Absent a finding of confusing similarity between two trademarks, the priority in the use of the marks
SULMET by the petitioner will have no decesive effect in the granting of his petition for cancellation of
the registration of respondent trademark (First Assignment of Error).chanrobles virtual law library
With respect to the allegation of petitioner that the trademark SULMETINE was obtained by fraud, as
held in La Estrella Distillery, Inc. vs. the Director of Patents, et al., 105 Phil. 1213, the question whether
or not the registration of the trademark had been obtained with the fraud and false representation
becomes necessary and important only when there is a finding of similarity between the contesting
trademarks, and in order that proof of fraud might produce cancellation it is necessary that it be
coupled with a showing that the label trademarks of the parties are similar and that the
maintenance of one trademark would work to the damage of the other. (Third Assignment of
Error).chanrobles virtual law library
On the contention of petitioner herein that there it was error for the Director of Patents to rule that
the burden rests on petitioner to show probable damage which it has not discharged, suffice it to the
state that any error or mistake committed by respondent Director of Patents on this point will not
affect one way or the other Decision in this case which is principally based on the finding that there is
no similarity between the two trademarks SULMET and SULMETINE likely to cause confusion in the
buying public so as constitute a violation of the Trademark Statute. (Fourth Assignment of
Error).chanrobles virtual law library
In its fifth assignment of error, petitioner questions the delegation by the Director of Patents of his
authority to hear and receive the evidence in this case to a Hearing Officer and alleges that
respondent Director had no jurisdiction to render the decision appealed from. Third matter has now
been put to rest in American Tobacco Company, et al. vs. Director of Patents, et al., L-26803,
decided on October 15, 1975 which involved the authority of the Director of Patents Office to
hear Inter Partes Proceedings in the registration of trademarks and tradenames under Republic Act ANTONIO, J., concurring:
166. This Court through Justice Felix Antonio held inter alia:

The nature of the power and authority entrusted to the Director of Patents suggests that the
aforecited laws (Republic Act No. 166, in relation to Republic Act No. 165) should be construed so as
to give the aforesaid official the administrative flexibility necessary for the prompt and expeditious
discharge of his duties in the administration of said laws. As such officer, he is required, among others,
to determine the question of priority in patent interference proceedings, decide applications for
reinstatement of a lapsed patent, cancellation of patents under Republic Act No. 165, inter
partes proceedings such as Oppositions, claims of interference, cancellation cases under the Trade-
mark Law and other matters in connection with the enforcement of the aforesaid laws. ...chanrobles
virtual law library
I concur. The rule is that an infringement exists if, but only if, the resemblance is so close between the
two trademarks, that it deceives, or is likely to deceive, a customer exercising ordinary caution in his
dealing and induces him to purchase the goods of one manufacturer in the belief that they are
those of another. In other words, the similarity must be such as is likely to mislead Purchasers of
ordinary caution and prudence into the belief that the articles are those of another producer or
manufacturer. Whether the mark or label of one competitor resembles another is to be determined
by an inspection of the points of difference and resemblance, as a whole, and not merely the points
of resemblance. Here the two articles and trademarks are so different and distinct as to preclude
any probability or likelihood of confusion or deception on the part of the public to the injury of the
trade or business of petitioner.

Thus, it is well-settled that while the power to decide resides solely in the administrative agency
vested by law, this does not preclude a delegation of the power to hold a hearing on the basis of
which the decision of the administrative agency will be made.chanrobles virtual law library

The rule that requires an administrative officer to exercise his own judgment and discretion does not
preclude him from utilizing, as a matter of practical administrative procedure, the aid of subordinates
to investigate and report to him the facts, on the basis of which the officer makes his decisions. It is
sufficient that the judgment and discretion finally exercised are those of the officer authorized by
law. 4

As correctly observed in the foregoing case, the point involved is procedural and not jurisdictional.
Being so, the jurisdiction of respondent Director to render the decision assailed is not affected by
lapses in the observance of the procedural rules, if no objection thereto is seasonably raised. Non-
conformity with rules on procedure is deemed waived in the absence of any objection thereto. The
entire records of the case at bar fail to disclose any objection on the part of petitioner to the hearing
of the case and the reception of evidence by a Hearing Officer. It surprises us why the petitioner
participated throughout the proceedings before the Hearing Officer from 1959 to 1964, actively
prosecuting its case therein, and now asks this Court to nullify the whole proceedings together with
the decision rendered which happened to be adverse to him.chanrobles virtual law library

WHEREFORE, We affirm the decision of respondent Director of Patents, with costs against petitioner.
So Ordered.

Teehankee (Chairman), Makasiar and Martin, JJ., concur.chanrobles virtual law library

Separate Opinions

ANTONIO, J., concurring:

I concur. The rule is that an infringement exists if, but only if, the resemblance is so close between the
two trademarks, that it deceives, or is likely to deceive, a customer exercising ordinary caution in his
dealing and induces him to purchase the goods of one manufacturer in the belief that they are
those of another. In other words, the similarity must be such as is likely to mislead Purchasers of
ordinary caution and prudence into the belief that the articles are those of another producer or
manufacturer. Whether the mark or label of one competitor resembles another is to be determined
by an inspection of the points of difference and resemblance, as a whole, and not merely the points
of resemblance. Here the two articles and trademarks are so different and distinct as to preclude
any probability or likelihood of confusion or deception on the part of the public to the injury of the
trade or business of petitioner.

Separate Opinions