Sisona, Jason P.
,
August 2, 2019
JD- IV
Intellectual Property Digest
Great White Shark Enterprises, Inc. v. Caralde, Jr.
G.R. No. 192294, November 21, 2012
FACTS:
On July 31, 2002, Caralde filed before the BLA, IPO a
trademark application seeking to register the mark
“SHARK & LOGO” for his manufactured goods under
Class 25, such as slippers, shoes and sandals.
Petitioner Great White Shark Enterprises, Inc. (Great
White Shark), a foreign corporation domiciled in
Florida, USA, opposed the application claiming to be the
owner of the mark consisting of a representation of a
shark in color, known as “GREG NORMAN LOGO”.
It alleged that, being a world famous mark which is
pending registration before the BLA since February 19,
2002, the confusing similarity between the two marks
is likely to deceive or confuse the purchasing public into
believing that Caralde’s goods are produced by or
originated from it, or are under its sponsorship, to its
damage and prejudice.
In his answer, Caralde explained that the subject marks
are distinctively different from one another and easily
distinguishable.
ISSUE:
W/N the trademark is confusingly similar to petitioner’s
trademark.
RULING:
The petition lacks merit. A trademark device is
susceptible to registration if it is crafted fancifully or
arbitrarily and is capable of identifying and
distinguishing the goods of one manufacturer or seller
from those of another. Apart from its commercial utility,
the benchmark of trademark registrability is
distinctiveness. Thus, a generic figure, as that of a
shark in this case, if employed and designed in a
distinctive manner, can be a registrable trademark
device, subject to the provisions of the IP Code.
The visual dissimilarities between the two marks are
evident and significant, negating the possibility or
confusion in the minds of the ordinary purchaser,
especially considering the distinct aural difference
between the marks.
SEHWANI INCORPORATED vs. IN-N-OUT BURGER, INC.
G.R. No. 171053; October 15, 2007
FACTS:
IN-N-OUT Burger, Inc., a foreign corporation, and not doing
business in the Philippines, filed before the Bureau of Legal Affairs
of the IPO, an administrative complaint against petitioners Sehwani,
Inc. and Benita’s Frites, Inc. for violation of intellectual property
rights with prayer for the issuance of a restraining order or writ of
preliminary injunction.
IN-N-OUT Burger alleges that it is the owner of the tradename “IN-
N-OUT” and trademarks “IN-N-OUT,” “IN-N-OUT Burger &
Arrow Design” and “IN-N-OUT Burger Logo”. These tradename
and trademarks were registered in the United States as well as in
other parts of the world. Sehwani allegedly had obtained a
trademark registration for the mark “IN N OUT” (with the inside
letter O formed like a star) without its authority.
On the other hand, petitioners alleged that respondent lack the legal
capacity to sue because it was not doing business in the Philippines
and that it has no cause of action because its mark is not registered
or used in the Philippines. Sehwani, Inc. also claimed that as the
registered owner of the "IN-N-OUT" mark, it enjoys the
presumption that the same was validly acquired and that it has the
exclusive right to use the mark. Moreover, petitioners argued that
other than the bare allegation of fraud in the registration of the mark,
respondent failed to show the existence of any of the grounds for
cancellation thereof under Section 151 of Republic Act (R.A.) No.
8293, otherwise known as The Intellectual Property Code of the
Philippines.
ISSUE/S:
1. Whether or not the IN-N-OUT Burger, Inc. has the legal capacity
to sue for the protection of its trademarks
2. Whether or not a valid ground exists for the cancellation of the
Sehwani Inc.’s registration
RULING:
1. Yes. Section 160 RA No. 8293 provides for the right of foreign
corporations to sue in trademark or service mark enforcement
action, provided that it meets the requirements under Section 3
thereof, which are: a) Any convention, treaty or agreement relation
to intellectual property right or the repression of unfair competition
wherein Philippines is also a party; and b) An extension therein of
reciprocal rights.
Moreoever, Article 6 of The Paris Convention, which governs the
protection of well-known trademarks, is a self-executing provision
and does not require legislative enactment to give it effect in the
member country. The essential requirement therein is that the
trademark must be well-known in the country where protection is
sought. In this case, Director Beltran-Abelardo found that In-n-out
Burger and Arrow Design is an internationally well-known mark as
evidenced by its trademark registrations around the world and its
comprehensive advertisements therein.
2. Yes. Section 151(b) of RA 8293 provides that a petition to cancel
a registration of a mark may be filed with the Bureau of Legal
Affairs by any person who believes that he is or will be damaged by
the registration of a mark at any time, if the registered mark becomes
the generic name for the goods or services, or a portion thereof, for
which it is registered, or has been abandoned, or its registration was
fraudulently or contrary to the provisions of this Act, or if the
registered mark is being used by or with the permission of, the
registrant so as to misrepresent the source of goods or services on or
in connection with which the mark is used. The evidence showed
that not only did the petitioners use the IN-N-OUT Burger
trademark for the name of their restaurant, but they also used
identical or confusingly similar mark for their hamburger wrappers
and French-fries receptacles, thereby effectively misrepresenting
the source of the goods and services.
G.R. No. 190706 July 21, 2014 FRANCIS SHANGRI-LA PLACE,” and ordered petitioners to
cease and desist from using the mark “ST. FRANCIS”, and to
SHANG PROPERTIES REALTY CORPORATION (formerly pay respondent a fine.
THE SHANG GRAND TOWER CORPORATION) and
SHANG PROPERTIES, INC. (formerly EDSA PROPERTIES
HOLDINGS, INC.), Petitioners, Dissatisfied, petitioners filed the present petition.
vs.
ST. FRANCIS DEVELOPMENT
ISSUE:
CORPORATION, Respondent.

Whether or not petitioners are guilty of unfair competition in

using the marks “THE ST. FRANCIS TOWERS” and “THE ST.
FACTS: FRANCIS SHANGRI-LA PLACE.”

Respondent filed against petitioners before the IPO – Bureau RULING:

of Legal Affairs (BLA), (a) an intellectual property violation case
for unfair competition, false or fraudulent declaration, and
No. Section 168 of Republic Act No. 8293, otherwise known as
damages arising from petitioners’ use and filing of
the “Intellectual Property Code of the Philippines” (IP Code),
applications for the registration of the marks “THE ST.
provides for the rules and regulations on unfair competition.
FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA
Section 168.2 proceeds to the core of the provision, describing
PLACE,” and (b) a case opposing the petitioners’ application
forthwith who may be found guilty of and subject to an action
for registration of the mark “THE ST. FRANCIS TOWERS”, and
of unfair competition — that is, “any person who shall employ
(c) an inter partes case opposing the petitioners’ application
deception or any other means contrary to good faith by which
for registration of the mark “THE ST. FRANCIS SHANGRI-LA
he shall pass off the goods manufactured by him or in which
PLACE”.
he deals, or his business, or services for those of the one
having established such goodwill, or who shall commit any
Petitioners denied the charges, maintaining that they could acts calculated to produce said result x x x.”
register the mark “THE ST. FRANCIS TOWERS” and “THE ST.
FRANCIS SHANGRI-LA PLACE” under their names, contending
The Court has defined Unfair Competition as which is “‘the
that respondent is barred from claiming ownership and
passing off (or palming off) or attempting to pass off upon the
exclusive use of the mark “ST. FRANCIS” because the same is
public of the goods or business of one person as the goods
geographically descriptive because respondent’s as well as
or business of another with the end and probable effect of
petitioners’ real estate development projects are located
deceiving the public.’ In other words, the defendant gives his
along St. Francis Avenue and St. Francis Street in Ortigas
goods the general appearance of the goods of his competitor
Center.
with the intention of deceiving the public that the goods are
those of his competitor.
The BLA found that petitioners committed acts of unfair
competition against respondent by its use of the mark “THE
The “true test” of unfair competition has thus been “whether
ST. FRANCIS TOWERS” but not with its use of the mark “THE
the acts of the defendant have the intent of deceiving or are
ST. FRANCIS SHANGRI-LA PLACE.” It, however, refused to
calculated to deceive the ordinary buyer making his purchases
award damages in the latter’s favor.
under the ordinary conditions of the particular trade to which
the controversy relates.
Meanwhile, the BLA denied petitioners’ application for
registration of the mark “THE ST. FRANCIS TOWERS”.
Here, the Court finds the element of fraud to be wanting;
hence, there can be no unfair competition. The CA’s contrary
Both parties appealed the decision. conclusion was faultily premised on its impression that
respondent had the right to the exclusive use of the mark "ST.
The IPO Director-General affirmed the rulings of the BLA that: FRANCIS," for which the latter had purportedly established
(a) petitioners cannot register the mark “THE ST. FRANCIS considerable goodwill. What the CA appears to have
TOWERS”; and (b) petitioners are not guilty of unfair disregarded or been mistaken in its disquisition, however, is
competition in its use of the mark “THE ST. FRANCIS the geographically descriptive nature of the mark "ST.
SHANGRI-LA PLACE.” However, reversed the BLA’s finding FRANCIS" which thus bars its exclusive appropriability.
and dismissed the charge of unfair competition through their
use of the mark “THE ST. FRANCIS TOWERS.”

On appeal, the CA found petitioners guilty of unfair

competition not only with respect to their use of the mark
“THE ST. FRANCIS TOWERS” but also of the mark “THE ST.
BERRIS AGRICULTURAL CO., INC. vs. NORVY
ABYADANG
G.R. No. 183404, October 13, 2010
Facts:
Abyadang filed a trademark application with the IPO for
the mark "NS D-10 PLUS" for use in connection with
Fungicide (Class 5) with an active ingredient of 80%
Mancozeb. Upon knowing, Berris Agricultural Co., Inc.
(Berris), filed with the IPO Bureau of Legal Affairs (IPO-
BLA) a Verified Notice of Opposition against the mark
under application allegedly because "NS D-10 PLUS" is
similar and/or confusingly similar to its registered
trademark "D-10 80 WP," also used for Fungicide (Class
5) with active ingredient 80% Mancozeb.
Director Estrellita Beltran-Abelardo of the IPO-BLA
decided in favor of Berris. However, Abyadang appealed
to the CA which reversed the decision.
Issue:
1. W/N there exists no confusing similarity
between the marks
Ruling:
Yes. The determination of priority of use of a mark is a
question of fact. Adoption of the mark alone does not
suffice. One may make advertisements, issue circulars,
distribute price lists on certain goods, but these alone
will not inure to the claim of ownership of the mark until
the goods bearing the mark are sold to the public in the
market. Accordingly, receipts, sales invoices, and
testimonies of witnesses as customers, or orders of
buyers, best prove the actual use of a mark in trade and
commerce during a certain period of time.
In the instant case, both parties have submitted proof to support their
claim of ownership of their respective trademarks.
However, Berris is the prior user of the mark. Berris was able to
establish that it was using its mark "D-10 80 WP" since June 20,
2002, even before it filed for its registration with the IPO on
November 29, 2002, as shown by its DAU which was under oath
and notarized, bearing the stamp of the Bureau of Trademarks of the
IPO on April 25, 2003, and the DAU, being a notarized document,
especially when received in due course by the IPO, is evidence of
the facts it stated and has the presumption of regularity, entitled to
full faith and credit upon its face. The DAU is supported by the
Certification dated April 21, 2006 issued by the Bureau of
Trademarks that Berris’ mark is still valid and existing.
Comparing Berris’ mark "D-10 80 WP" with Abyadang’s mark "NS
D-10 PLUS," as appearing on their respective packages, one cannot
but notice that both have a common component which is "D-10." On
Berris’ package, the "D-10" is written with a bigger font than the
"80 WP." Admittedly, the "D-10" is the dominant feature of the
mark. The "D-10," being at the beginning of the mark, is what is
most remembered of it. Although, it appears in Berris’ certificate of
registration in the same font size as the "80 WP," its dominancy in
the "D-10 80 WP" mark stands since the difference in the form does
not alter its distinctive character.
Applying the Dominancy Test, it cannot be gainsaid that
Abyadang’s "NS D-10 PLUS" is similar to Berris’ "D-10
80 WP," that confusion or mistake is more likely to
occur. Undeniably, both marks pertain to the same type
of goods – fungicide with 80% Mancozeb as an active
ingredient and used for the same group of fruits, crops,
vegetables, and ornamental plants, using the same
dosage and manner of application. They also belong to
the same classification of goods under R.A. No. 8293.
Both depictions of "D-10," as found in both marks, are
similar in size, such that this portion is what catches
the eye of the purchaser. Undeniably, the likelihood of
confusion is present.
This likelihood of confusion and mistake is made more
manifest when the Holistic Test is applied, taking into
consideration the packaging, for both use the same type
of material (foil type) and have identical color schemes
(red, green, and white); and the marks are both
predominantly red in color, with the same phrase
"BROAD SPECTRUM FUNGICIDE" written underneath.
Considering these striking similarities, predominantly
the "D-10," the buyers of both products, mainly
farmers, may be misled into thinking that "NS D-10
PLUS" could be an upgraded formulation of the "D-10
80 WP."
BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG vs. PHILIPPINE
SHOE EXPO MARKETING CORPORATION
G.R. No. 194307, November 20, 2013
FACTS:
Birkenstock Orthopaedie, a shoe manufacturing corporation
in Germany, applied for various trademark registrations before the
Intellectual Property Office (IPO). However, the registration
proceedings were suspended in view of an existing registration of
the mark "BIRKENSTOCK AND DEVICE" under Registration No.
56344 by Shoe Town International and Industrial Corporation,
Philippine Shoe Expo Marketing Corporation's predecessor-in-
interest. During the pendency of the cancellation of such
registration proceedings, Philippine Shoe Expo failed to file the
required 10th Year Declaration of Actual Use (DAU) for Registration
No. 56344 on required date, thereby resulting in the cancellation
of the mark and the case. When Birkenstock Co.'s application for
such marks was approved, Philippine Shoe Expo filed separate
oppositions claiming that Birkenstock Co. Has no right to
registration of the subject marks. The Bureau of Legal Affairs (BLA)
sustained their opposition, opining that while Registration No.
56344 was cancelled, it does not follow that prior right over the
mark was lost, as proof of continuous and uninterrupted use in
trade and business in the Philippines was presented. Upon appeal,
the IPO Director General reversed the former decision, holding that
the evidence presented by Birkenstock Co. Proved that they are the
rightful owner of the marks. The CA reinstated BLA's decision upon
the same ground.
ISSUE:
Did Philippine Shoe Expo abandon any right or interest over
the trademark? If so, is Birkenstock entitled to register its mark?
HELD:
Yes. Republic Act. 166, the governing law for Registration No.
56344, requires the filing of a Declaration of Actual Use (DAU) on
specified periods. The law clearly reveals that failure to file the DAU
within the requisite period results in the automatic cancellation of
registration of a trademark. In turn, such failure is tantamount to
the abandonment or withdrawal of any right or interest the
registrant has over his trademark. In this case, Philippine Shoe Expo
failed to file the DAU within the requisite period. As a consequence,
it was deemed to have abandoned or withdrawn any right or
interest over the mark "Birkenstock". Neither can it invoke Section
36 of the Intellectual Property Code which pertains to intellectual
property rights obtained under previous intellectual property laws,
e.g., R.A. 166, precisely because it already lost any right or interest
over the said mark.
 It must be emphasized that registration of a trademark, by
itself, is not a mode of acquiring ownership. If the applicant is not
the owner of the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie presumption
of the validity of the registration of the registrant's ownership of
the trademark, and of the exclusive right to the use thereof. Such
presumption, just like the presumptive regularity in the
performance of official function, is rebuttable and must give way
to evidence to the contrary. Clearly, it is not the application or
registration of a trademark that confers ownership thereof, but it
is the ownership of a trademark that confers the right to register
the same. A trademark is an industrial property over which its
owner is entitled to property rights which cannot be appropriated
by unscrupulous(dishonest or unfair) entities that, in one way or
another, happen to register such trademark ahead of its true and
lawful owner. The presumption of ownership accorded to a
registrant must then necessarily yield to superior evidence of
actual and real ownership of a trademark. Birkenstock Co. has duly
established its true and lawful ownership of the said mark upon
submission of evidence relating to the origin and history of
:"BIRKENSTOCK" and its use in commerce worldwide long before
Philippine Shoe Expo was able to register the same in the
Philippines.
ABS-CBN PUBLISHING, INC. v. DIRECTOR OF THE
BUREAU OF TRADEMARKS
GR NO. 217916, JUNE 20, 2018
FACTS
Petitioner filed with the IPO its application for the
registration of its trademark METRO, but was refused
registration by Examiner Icban for being identical to 3
other cited marks, therefore unregistrable under Sec.
123.1 of the IPC. Petitioner appealed the assessment of
Examiner Icban to the Director of Bureau of
Trademarks of the IPO, who affirmed the examiner’s
findings. Upon the denial of the petitioner's motion for
reconsideration, the petitioner appealed to the Office of
the Director General (ODG) of the IPO. After the
submission of the memoranda from the parties, the
ODG rendered a Decision which upheld Examiner
Icban's assessment and the Bureau Director's decision,
who said that “there is no merit in the petitioner's
appeal because (1) the applicant and cited marks are
identical and confusingly similar,13 (2) the petitioner's
mark was deemed abandoned under the old Trademark
Law, and thus, petitioner's prior use of the same did not
create a vested right14 under the IPC,15 and (3) the
applicant mark has not acquired secondary meaning.”
The decision was appealed to the CA, and thus the
instant case.
ISSUE
Was the ODG correct in refusing to register the
applicant mark for being identical and confusingly
similar with the cited marks already registered with the
IPO?
HELD
YES. The dominant feature of the applicant mark is the
word "METRO" which is identical, both visually and
aurally, to the cited marks already registered with the
IPO.
To determine whether a mark is to be considered as
"identical" or that which is confusingly similar with that
of another, the Court has developed two (2) tests: the
dominancy and holistic tests. While the Court has time
and again ruled that the application of the tests is on a
case to case basis, upon the passage of the IPC, the
trend has been to veer away from the usage of the
holistic test and to focus more on the usage of the
dominancy test.
The findings of Examiner Icban, reviewed first by the
Director of the Bureau of Trademarks, and again by the
Director General of the IPO, are the result of a judicious
study of the case by no less than the government agency
duly empowered to examine applications for the
registration of marks.54 These findings deserve great
respect from the Court. Absent any strong justification
for the reversal thereof-as in this case-the Court shall
not reverse and set aside the same. As such, the prior
findings remain: the applicant mark, "METRO," is
identical to and confusingly similar with the other cited
marks already registered. By authority of the Sec.
123.l(d) of the IPC, the applicant mark cannot be
registered. The ODG is correct in upholding the
Decision of both the Director of the Bureau of
Trademarks and Examiner Icban.
Section 3, Rule 18 of the Rules of Procedure for
Intellectual Property Cases66 provides for the legal
presumption that there is likelihood of confusion if an
identical mark is used for identical goods. The provision
states:
SEC. 3. Presumption of likelihood of confusion. -
Likelihood of confusion shall be presumed in case an
identical sign or mark is used for identical goods or
services.
In the present case, the applicant mark is classified
under "magazines," which is found in class 16 of the
Nice classification. A perusal of the records would
reveal, however, that the cited marks "METRO" (word)
and "METRO" (logo) are also both classified under
magazines. Thus the presumption arises.
PROSOURCE INTERNATIONAL, INC. vs. HORPHAG
RESEARCH MANAGEMENT
G.R. No. 180073
November 25, 2009
FACTS:
Horphag Research Management SA is a corporation who
owns the trademark PYCNOGENOL, a food supplement sold
and distributed by Zuellig Pharma Corporation. Respondent
later discovered that petitioner Prosource International, Inc.
was also distributing a similar food supplement using the
mark PCO-GENOLS since 1996. This prompted respondent to
demand that petitioner cease and desist from using the
aforesaid mark. Without notifying respondent, petitioner
discontinued the use of, and withdrew from the market, and
changed its mark from PCO-GENOLS to PCO-PLUS.
On August 22, 2000, respondent filed a Complaint for
Infringement of Trademark with Prayer for Preliminary
Injunction against petitioner.
ISSUE:
Whether the term “Pcogenols” infringed respondent’s
trademark “Pycnogenols”?
RULING:
Yes, there is trademark infringement. It is the element of
"likelihood of confusion" that is the gravamen of trademark
infringement. But "likelihood of confusion" is a relative
concept. The particular, and sometimes peculiar,
circumstances of each case are determinative of its existence.
Thus, in trademark infringement cases, precedents must be
evaluated in the light of each particular case. In determining
similarity and likelihood of confusion, jurisprudence has
developed two tests: the Dominancy Test and the Holistic or
Totality Test.
Both the words PYCNOGENOL and PCO-GENOLS have the
same suffix "GENOL" which on evidence, appears to be
merely descriptive and furnish no indication of the origin of
the article and hence, open for trademark registration by the
plaintiff thru combination with another word or phrase such
as PYCNOGENOL. When the two words are pronounced, the
sound effects are confusingly similar not to mention that they
are both described by their manufacturers as a food
supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the
trademark due to the type of letters used as well as the size,
color and design employed on their individual
packages/bottles, still the close relationship of the competing
products' name in sounds as they were pronounced, clearly
indicates that purchasers could be misled into believing that
they are the same and/or originates from a common source
and manufacturer.
COFFEE PARTNERS vs SAN FRANCISCO COFFEE AND
ROASTERY, INC.
G.R. No. 169504 March 3, 2003
Facts:
Petitioner Coffee Partners, Inc. is a local corporation
engaged in the business of establishing and
maintaining coffee shops in the country. It registered
in the Securities and Exchange Commission.
Respondent is a local corporation engaged in the
wholesale and retail of coffee doing business with the
name SAN FRANCISCO COFFEE AND ROASTERY INC.
Sometime in June 2001, respondent discovered that the
petitioner was about to open a coffee shop under the
name “SAN FRANCISCO COFFEE” in Libis, Quezon
City. According to respondent, petitioners coffee shop
caused confusion in the minds of the public as it bore a
similar name and it also engaged in the business of
selling coffee therefore respondent sent a letter to
petitioner demanding to stop using the name “SAN
FRANCISCO COFFEE” and filed a complaint with the
Bureau of Legal Affairs-Intellectual Property Office
(BLA-IPO) for infringement and/or unfair competition.
Petitioner denied the allegations in the complaint and
alleged that it filed with the Intellectual Property Office
applications for registration of the mark “SAN
FRANCISCO COFFEE & DEVICE” in 2000. Petitioner
maintained it’s mark could not confuse with respondent
trade name because of the notable distinctions in their
appearances and argued that respondents stopped
operating under the trade name “SAN FRANCISCO
COFFEE” when it formed a joint venture with Boyd
Coffee USA.
RULING OF THE BLA-IPO
BLA-IPO held that petitioners trademark infringed in
the respondents trademark, it also held that respondent
did not abandon the use of it’s trade name as
substantial evidence indicated respondent
continuously used in its trade name in connection with
the purpose for which it was organized. BLA-IPO held
that petitioners use of the trade mark “san Francisco
coffee” will likely cause confusion because of the exact
similarity sound, spelling, pronunciation, and
commercial impression of the word “SAN FRANCISCO”
which is the dominant portion of the respondents trade
name and petitioners trade mark.
RULING OF THE OFFICE OF DIRECTOR GENERAL-
IPO
ODG-IPO reverse the BLA-IPO decision. It ruled that
petitioners use of the trademark “SAN FRANCISCO
COFFEE” did not infringed on the respondents trade
name. It found out that respondent had stopped using
its trade name after it entered into a joint venture in
1998 while petitioner continuously used the trade mark
since 2001 when it opened its first coffee shop in Libis,
Quezon City. It ruled that between a subsequent user
of a trade name in good faith and a prior user who had
stopped using such trade name, it would be inequitable
to rule in favour of the latter.
RULING OF THE COURT OF APPEALS
Court of appeals set aside the ruling of the ODG-IPO
and reinstated the ruling of the BLA-IPO.
Issue:
Whether or not petitioners use of the trademark “SAN
FRANCISCO COFFEE” constitutes infringement of the
respondents trade name “SAN FRANCISCO COFFEE
AND ROATERY INC.,” even if the trade name is not
registered with the Intellectual Property Office.
Ruling:
The petition has no merit.
A trade name need not be registered with the IPO before
an infringement suit may be filed by its owner against
the owner of an infringing trademark. All that is
required is that the trade name is previously used in
trade or in commerce in the Philippines.
Applying the dominancy test or the holistic test,
petitioner’s “SAN FRANCISCO COFFEE” trademark is a
clear infringement of respondent’s “SANFRANCISCO
COFFEE & ROASTERY, INC.” trade name. The
descriptive words “SAN FRANCISCO COFFEE” are
precisely the dominant features of respondent’s trade
name.
Coming now to the main issue, in Prosource
International, Inc. v. Horphag Research Management
SA,9 this Court laid down what constitutes
infringement of an unregistered trade name, thus:
(1) The trademark being infringed is registered in the
Intellectual Property Office; however, in infringement of
trade name, the same need not be registered;
(2) The trademark or trade name is reproduced,
counterfeited, copied, or colorably imitated by the
infringer;
(3) The infringing mark or trade name is used in
connection with the sale, offering for sale, or advertising
of any goods, business or services; or the infringing
mark or trade name is applied to labels, signs, prints,
packages, wrappers, receptacles, or advertisements
intended to be used upon or in connection with such
goods, business, or services;
(4) The use or application of the infringing mark or trade
name is likely to cause confusion or mistake or to
deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods
or services or the identity of such business; and
(5) It is without the consent of the trademark or trade
name owner or the assignee thereof.
SUPERIOR COMMERCIAL ENTERP., INC. v. KUNNAN
ENTERP. LTD. AND SPORTS CONCEPT AND
DISTRIBUTOR INC.
GR NO. 169974, APRIL 20, 2010
FACTS
Petitioner filed a complaint for trademark infringement
and unfair competition against respondent for
intending to acquire the ownership of KENNEX
trademark registered by petitioner in the Philippines.
The respondent countered that the petitioner, as mere
distributer of the said goods, fraudulently registered
and appropriated the disputed trademarks; as mere
distributor and not as lawful owner, it obtained the
registrations and assignments of the disputed
trademarks.
RTC held the respondent liable for trademark
infringement and unfair competition. The IPO (and BLA)
and CA reversed the RTC’s decision and dismissed the
petitioner’s petition and ruled in favor of the
respondent.
ISSUE
Did the respondent Kunnan commit Trademark
Infringement and Unfair Competition?
HELD
NO. As to the commission of trademark infringement,
the SC ruled the trademark infringement aspect of
SUPERIOR’s case has been rendered moot and
academic in view of the finality of the decision in the
Registration Cancellation Case. In short, SUPERIOR is
left without any cause of action for trademark
infringement since the cancellation of registration of a
trademark deprived it of protection from infringement
from the moment judgment or order of cancellation
became final. To be sure, in a trademark infringement,
title to the trademark is indispensable to a valid cause
of action and such title is shown by its certificate of
registration. With its certificates of registration over the
disputed trademarks effectively cancelled with finality,
SUPERIOR’s case for trademark infringement lost its
legal basis and no longer presented a valid cause of
action.
As a mere distributor, petitioner Superior undoubtedly
had no right to register the questioned mark in its
name. Well-entrenched in our jurisdiction is the rule
that the right to register a trademark should be based
on ownership. When the applicant is not the owner of
the trademark being applied for, he has no right to apply
for the registration of the same. Under the Trademark
Law, only the owner of the trademark, trade name or
service mark used to distinguish his goods, business or
service from the goods, business or service of others is
entitled to register the same. An exclusive distributor
does not acquire any proprietary interest in the
principal’s trademark and cannot register it in his own
name unless it is has been validly assigned to him.
As to the commission of the unfair competition, the SC
ruled that no evidence exists showing that the
respondent attempted to commit the same, which is
defined by jurisprudence as the passing off (or palming
off) or attempting to pass off upon the public of the
goods or business of one person as the goods or
business of another with the end and probable effect of
deceiving the public. The essential elements of unfair
competition are (1) confusing similarity in the general
appearance of the goods; and (2) intent to deceive the
public and defraud a competitor. Specifically,
SUPERIOR failed to adduce any evidence to show that
KUNNAN by the above-cited acts intended to deceive the
public as to the identity of the goods sold or of the
manufacturer of the goods sold.
ROBERTO CO vs. KENG HUAN JERRY YEUNG AND
EMMA YEUNG
G.R. No. 212705, 10 September 2014
FACTS:
Sps. Yeung filed a civil complaint for trademark
infringement and unfair competition before the RTC
against Ling Na Lau, her sister Pinky Lau (the Laus),
and Co for allegedly conspiring in the sale of counterfeit
Greenstone products to the public.
Sps. Yeung averred that Emma’s brother,
Ruivivar, bought a bottle of Greenstone from Royal
Chinese Drug Store (Royal) in Binondo, Manila, owned
by Ling Na Lau. However, when he used the product,
Ruivivar doubted its authenticity considering that it
had a different smell, and the heat it produced was not
as strong as the original Greenstone he frequently used.
Having been informed by Ruivivar of the same, Yeung,
together with his son, John Philip, went to Royal to
investigate the matter, and, there, found seven (7)
bottles of counterfeit Greenstone on display for sale. He
was then told by Pinky Lau (Pinky) – the store’s
proprietor – that the items came from Co of KiaoAn
Chinese Drug Store. According to Pinky, Co offered the
products as “Tienchi Fong Sap Oil Greenstone” (Tienchi)
which she eventually availed from him.
In defense, Co denied having supplied
counterfeit items to Royal and maintained that the
stocks of Greenstone came only from Taka Trading.
Meanwhile, the Laus denied selling Greenstone and
claimed that the seven (7) items of Tienchi were left by
an unidentified male person at the counter of their drug
store and that when Yeung came and threatened to
report the matter to the authorities, the items were
surrendered to him.
ISSUES:
1. Whether or not the CA correctly upheld Co’s
liability for unfair competition?
2. Whether or not there was an infringement of
the trademark?
HELD:
1. Yes.
2. No.
RULING:
The Supreme Court denied the petition and
affirmed the Decision and the Resolution of the Court of
Appeals. The Court finds that both the RTC and the CA
have adequately explained the legal and evidentiary
reasons in concluding that Co committed acts of unfair
competition. Here, it has been established that Co
conspired with the Laus in the sale/distribution of
counterfeit Greenstone products to the public, which
were even packaged in bottles identical to that of the
original, thereby giving rise to the presumption of
fraudulent intent. It is thus clear that Co, together with
the Laus, committed unfair competition, and should,
consequently, be held liable therefor.
The Supreme Court further said that although
the petitioner is liable for unfair competition, the Court
deems it apt to clarify that Co was properly exculpated
from the charge of trademark infringement considering
that the registration of the trademark “Greenstone”–
essential as it is in a trademark infringement case – was
not proven to have existed during the time the acts
complained of were committed, i.e., in May 2000. In this
relation, the distinctions between suits for trademark
infringement and unfair competition prove useful: (a)
the former is the unauthorized use of a trademark,
whereas the latter is the passing off of one’s goods as
those of another; (b) fraudulent intent is unnecessary in
the former, while it is essential in the latter; and (c) in
the former, prior registration of the trademark is a pre-
requisite to the action, while it is not necessary in the
latter.
CHESTER UYCO v. VICENTE LO, GR No. 202423, 2013-01-
28
Facts:
The disputed marks in this case are the "HIPOLITO & SEA HORSE
& TRIANGULAR DEVICE," "FAMA," and other related marks,
service marks and trade names of Casa Hipolito S.A. Portugal
appearing in kerosene burners.
Respondent Vicente Lo and Philippine Burners Manufacturing
Corporation (PBMC) filed a complaint against the officers of
Wintrade Industrial Sales Corporation (Wintrade), including
petitioners Chester Uyco, Winston Uychiyong and Cherry Uyco-
Ong, and of National Hardware, including Mario Sy Chua, for
violation of Section
169.1, in relation to Section 170, of RA 8293.
After the preliminary investigation, the Chief State Prosecutor found
probable cause to indict the petitioners for violation of Section
169.1, in relation with Section 170, of RA 8293.
This law punishes any person who uses in commerce any false
designation of origin which is... likely to cause confusion or mistake
as to the origin of the product. The law seeks to protect the public;
thus, even if Lo does not have the legal capacity to sue, the State can
still prosecute the petitioners to prevent damage and prejudice to the
public.
Issues:
Both the CA and the DOJ found probable cause to charge the
petitioners with false designation of origin, in violation of Section
169.1, in relation with Section 170, of Republic Act No. (RA) 8293,
otherwise known as the "Intellectual Property Code of... the
Philippines.
Ruling:
Thus, the evidence shows that petitioners, who are officers of
Wintrade, placed the words "Made in Portugal" and "Original
Portugal" with the disputed marks knowing fully well because of
their previous dealings with the Portuguese company that these were
the marks used in the... products of Casa Hipolito S.A. Portugal.
More importantly, the products that Wintrade sold were admittedly
produced in the Philippines, with no authority from Casa Hipolito
S.A. Portugal.
These facts support the consistent findings of the State Prosecutor,
the DOJ and the CA that probable cause exists to charge the
petitioners with false designation of origin. The... fact that the
evidence did not come from Lo, but had been given by the
petitioners, is of no significance.
The argument that the words "Made in Portugal" and "Original
Portugal" refer to the origin of the design and not to the origin of the
goods does not negate the finding of probable cause; at the same
time, it is an argument that the petitioners are not barred by this
Resolution... from raising as a defense during the hearing of the case.
Principles:
The law on trademarks and trade names precisely precludes a person
from profiting from the... business reputation built by another and
from deceiving the public as to the origins of products.
Submitted by: Ariel P. Ramada
Seri Somboonsakdikul v Orlane S.A., G.R. No. 188996, February 1,
2017
Facts: Petitioner Seri Somboonsakdikul filed an application for
registration of the mark LOLANE with the Intellectual Property
Office (IPO) for goods classified under Class 3 (personal care
products) of the International Classification of Goods. Orlane S.A.
filed an opposition to petitioner's application, on the ground that
the mark LOLANE was similar to ORLANE in presentation, general
appearance and pronunciation, and thus would amount to an
infringement of its mark. Respondent alleged that: (1) it was the
rightful owner of the ORLANE mark which was first used in 1948; (2)
the mark was earlier registered in the Philippines on July 26, 1967
with the following goods: x x x perfumes, toilet water, face powders,
lotions, essential oils, cosmetics, lotions for the hair, dentrifices,
eyebrow pencils, make-up creams, cosmetics & toilet preparations
and (3) on September 5, 2003, it filed another application for use of
the trademark on its additional products.
Petitioner averred that he was the lawful owner of the mark LOLANE
which he has used for various personal care products sold
worldwide. He alleged that the first worldwide use of the mark was
in Vietnam on July 4, 1995. Petitioner also alleged that he had
continuously marketed and advertised Class 3 products bearing
LOLANE mark in the Philippines and in different parts of the world
and that as a result, the public had come to associate the mark with
him as provider of quality personal care products.
The Bureau of Legal Affairs (BLA) rejected petitioner's application
and ruled that there was likelihood of confusion. Petitioner filed a
motion for reconsideration but this was denied. On appeal, the
Director General of the IPO affirmed the Decision of the BLA
Director. Petitioner filed a petition for review before the CA but was
also denied
Issue: Whether or not there is confusing similarity between ORLANE
and LOLANE which would bar the registration of LOLANE before the
IPO.
Ruling: NO. The Court ruled that the CA erred when it affirmed the
Decision of the IPO.
A trademark is defined under Section 121.1 of RA 8293 as any visible
sign capable of distinguishing the goods. It is susceptible to
registration if it is crafted fancifully or arbitrarily and is capable of
identifying and distinguishing the goods of one manufacturer or
seller from those of another. Thus, the mark must be distinctive. The
registrability of a trademark is governed by Section 123 of RA 8293.
Section 123.1 provides:
Section 123. 1. A mark cannot be registered if it:
d. Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in respect
of:
i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or
cause confusion;
e. Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent
authority of the Philippines to be well-known internationally and in
the Philippines, whether or not it is registered here, as being already
the mark of a person other than the applicant for registration, and
used for identical or similar goods or services: provided, that in
determining whether a mark is well-known, account shall be taken
of the knowledge of the relevant sector of the public, rather than of
the public at large, including knowledge in the Philippines which has
been obtained as a result of the promotion of the mark;
In Mighty Corporation v. E. & J Gallo Winery, in determining the
likelihood of confusion, the Court must consider: [a] the
resemblance between the trademarks; [b] the similarity of the
goods to which the trademarks are attached; [c] the likely effect on
the purchaser and [d] the registrant's express or implied consent
and other fair and equitable considerations.
Wilton Dy and/or Philites Electronic & Lighting Products v.
Koninklijke Philips Products, N.V.
G.R. no. 186088, March 22, 2017
Sereno, C.J.
Nature of the Case: This is a Petition for Review by Wilton Dy,
assailing the Decision and Resolution of the CA, which
reversed and set aside the Decision of the Intellectual Property
Philippines Office of the Director General (IPP-DG), which
affirmed the Decision of the Intellectual Property Philippines
Bureau of Legal Affairs (IPP-BLA), upholding petitioner’s
trademark application.
Facts: On April 12, 2000, petitioner PHILITES filed a trademark
application covering its fluorescent bulb, incandescent light,
starter and ballast. After publication, respondent Koninklijke
Philips Electronics, N .V. ("PHILIPS") opposed the application
on March 17, 2006, alleging that the approval of the trademark
application of the petitioner will cause damage to the
proprietary rights, business reputation and goodwill over its
trademark, and will also cause unfair commercial profit, due to
the tendency that it will mislead the public as to the origin,
nature, quality, and characteristic of the goods on which it is
affixed, because an identical or confusingly similar mark that
clearly infringes the well-known mark of the respondent.
Petitioner answered that Philips and and ‘Philites & Letter P
Device’ have vast dissimilarities in terms of spelling, sound,
and meaning.
The IPP-BLA denied the opposition by the respondent. It held
that the PHILIPS and PHILITES marks were so unlike, both
visually and aurally, and that no confusion was likely to concur
despite their contemporaneous use. On appeal, the IPP-DG
affirmed the Decision of the IPP-BLA, stating that while the
first syllables of the marks are identical, the second syllables
are not. There were also “glaring differences and
dissimilarities” in the design and general appearance of the
PHILIPS mark and the PHILITES mark. Upon intermediate
appellate review, the CA reversed and set aside the Decision of
the IPP-DG. It held that it found the petitioner’s actual wrapper
and packaging that contain the light bulbs confusingly similar
with that of the respondent. Petitioner filed MR, but was
denied. Hence, this Petition for Review.
Issue: Whether or not the mark applied for by the petitioner is
identical or confusingly similar with that of the respondent.
Ratio Decidendi: Despite respondent's diversification to
numerous and varied industries, the records show that both
parties are engaged in the same line of business: selling
identical or similar goods such as fluorescent bulbs,
incandescent lights, starters and ballasts.
In determining similarity and likelihood of confusion,
jurisprudence has developed two tests: the dominancy test, and
the holistic or totality test. Applying the dominancy test in the
instant case, it shows the uncanny resemblance or confusing
similarity between the trademark applied for by respondent
with that of petitioner's registered trademark. An examination
of the trademarks shows that their dominant or prevalent
feature is the five-letter "PHILI", "PHILIPS" for petitioner, and
"PHILITES" for respondent. The marks are confusingly similar
with each other such that an ordinary purchaser can conclude
an association or relation between the marks. The consuming
public does not have the luxury of time to ruminate the
phonetic sounds of the trademarks, to find out which one has
a short or long vowel sound. At bottom, the letters "PHILI''
visually catch the attention of the consuming public and the
use of respondent's trademark will likely deceive or cause
confusion. Most importantly, both trademarks are used in the
sale of the same goods, which are light bulbs.
The confusing similarity becomes even more prominent when
we examine the entirety of the marks used by petitioner and
respondent, including the way the products are packaged.
Applying the holistic test, entails a consideration of the
entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity. A
comparison between petitioner's registered trademark
"PHILIPS'' as used in the wrapper or packaging of its light bulbs
and that of respondent's applied for trademark "PHILITES" as
depicted in the container or actual wrapper/packaging of the
latter's light bulbs will readily show that there is a strong
similitude and likeness between the two trademarks that will
likely cause deception or confusion to the purchasing public.
The fact that the parties' wrapper or packaging reflects
negligible differences considering the use of a slightly different
font and hue of the yellow is of no moment because taken in
their entirety, respondent's trademark "PHILITES" will likely
cause confusion or deception to the ordinary purchaser with a
modicum of intelligence.
Dispositive Portion: the Petition for Review on Certiorari is
hereby DENIED. The 7 October 2008 Decision and 18
December 2008 Resolution of the Court of Appeals are
hereby AFFIRMED. SO ORDERED.
W LAND HOLDINGS, INC., Petitioner, v. STARWOOD
HOTELS AND RESORTS WORLDWIDE, INC.,Respondent.
G.R. No. 222366, December 04, 2017
Facts:
Starwood filed before the IPO an application for registration of
the trademark "W" for Classes 43[6] and 44
Starwood's application was granted and thus, the "W" mark
was registered in its name.
W Land applied[11] for the registration of its own "W" mark for
Class 36,[12] which thereby prompted Starwood to oppose
the same.
the BLA found merit in Starwood's opposition, and ruled that
W Land's "W" mark is confusingly similar with Starwood's
mark,[15] which had an earlier filing date.
W Land filed a Petition for Cancellation[18] of Starwood's
mark for non-use... claiming that Starwood has failed to use
its mark in the Philippines because it has no hotel or
establishment in the Philippines rendering the services
covered by its registration; and that Starwood's "W" mark
application and registration barred its own "'W" mark
application and registration for use on real estate
Starwood denied having abandoned the subject mark on the
ground of non-use, asserting that it filed with the Director of
Trademarks a notarized Declaration of Actual Use[23]
(DAU)[24] with evidence of use on December 2, 2008,[25]
which was not rejected.
In this relation, Starwood argued that it conducts hotel and
leisure business both directly and indirectly through
subsidiaries and franchisees, and operates interactive
websites for its W Hotels in order to accommodate its potential
clients worldwide.[... the BLA ruled in W Land's favor, and
accordingly ordered the cancellation of Starwood's
registration for the "W" mark.
the IPO DG granted Starwood's appeal,[33] thereby
dismissing W Land's Petition for Cancellation.
the CA affirmed the IPO DG ruling.
Issues:
whether or not the CA correctly affirmed the IPO DG's
dismissal of W Land's Petition for Cancellation of Starwood's
"W'' mark.
Ruling:
The petition is without merit.
The actual use of the mark representing the goods or services
introduced and transacted in commerce over a period of time
creates that goodwill which the law seeks to protect. For this
reason, the IP Code, under Section 124.2,[54] requires the
registrant or owner of a registered mark to declare "actual use
of the mark" (DAU) and present evidence of such use within
the prescribed period. Failing in which, the IPO DG may cause
the motu propio removal from the register of the mark's
registration.[55] Also, any person, believing that "he or she will
be damaged by the registration of a mark," which has not been
used within the Philippines, may file a petition for
cancellation.[56] Following the basic rule that he who alleges
must prove his case,[57] the burden lies on the petitioner to
show damage and non-use.
The IP Code and the Trademark Regulations have not
specifically defined "use." However, it is understood that the
"use" which the law requires to maintain the registration of a
mark must be genuine, and not merely token. Based on
foreign authorities,[58] genuine use may be characterized as
a bona fide use which results or tends to result, in one way or
another, into a commercial interaction or transaction "in the
ordinary course of trade."
The Trademark Regulations was amended by Office Order
No. 056-13.
RULE 205. Contents of the Declaration and Evidence of
Actual Use.
Based on the amended Trademark Regulations, it is apparent
that the IPO has now given due regard to the advent of
commerce on the internet. Specifically, it now recognizes,
among others, "downloaded pages from the website of the
applicant or registrant clearly showing that the goods are
being sold or the services are being rendered in the
Philippines," as well as "for online sale, receipts of sale of the
goods or services rendered or other similar evidence of use,
showing that the goods are placed on the market or the
services are available in the Philippines or that the transaction
took place in the Philippines,"[63] as acceptable proof of
actual use.
Cognizant of this current state of affairs, the Court therefore
agrees with the IPO DG, as affirmed by the CA, that the use
of a registered mark representing the owner's goods or
services by means of an interactive website may constitute
proof of actual use that is sufficient to maintain the registration
of the same.
Since the internet has turned the world into one vast
marketplace, the owner of a registered mark is clearly entitled
to generate and further strengthen his commercial goodwill by
actively marketing and commercially transacting his wares or
services throughout multiple platforms on the internet.
It must be emphasized, however, that the mere exhibition of
goods or services over the internet, without more, is not
enough to constitute actual use. To reiterate, the "use"
contemplated by law is genuine use - that is, a bona fide kind
of use tending towards a commercial transaction in the
ordinary course of trade. Since the internet creates a
borderless marketplace, it must be shown that the owner has
actually transacted, or at the very least, intentionally targeted
customers of a particular jurisdiction in order to be considered
as having used the trade mark in the ordinary course of his
trade in that country. A showing of an actual commercial link
to the country is therefore imperative.
In this case, Starwood has proven that it owns Philippine
registered domain names,[74]
i.e., www.whotels.ph, www.wreservations.ph, www.whotel.ph
, www.wreservation.ph, for its website that showcase its mark.
Taken together, these facts and circumstances show that
Starwood's use of its "W" mark through its interactive website
is intended to produce a discernable commercial effect or
activity within the Philippines, or at the very least, seeks to
establish commercial interaction with local consumers.
Accordingly, Starwood's use of the "W" mark in its reservation
services through its website constitutes use of the mark
sufficient to keep its registration in force.
Thus, Starwood's use of the "W" mark for reservation services
through its website constitutes use of the mark which is
already sufficient to protect its registration under the entire
subject classification from non-use cancellation. This,
notwithstanding the absence of a Starwood hotel or
establishment in the Philippines.
Finally, it deserves pointing out that Starwood submitted in
2008 its DAU with evidence of use which the IPO, through its
Director of Trademarks and later by the IPO DG in the January
10, 2014 Decision, had accepted and recognized as valid. The
Court finds no reason to disturb this recognition. According to
jurisprudence, administrative agencies, such as the IPO, by
means of their special knowledge and expertise over matters
falling within their jurisdiction are in a better position to pass
judgment on this issue.[81] Thus, their findings are generally
accorded respect and finality, as long as they are supported
by substantial evidence. In this case, there is no compelling
basis to reverse the IPO DG's findings - to keep Starwood's
registration for the "W" mark in force - as they are well
supported by the facts and the law and thus, deserve respect
from this Court.
MICK IAN M. CORNELIA, MPA
FOUNDATION UNIVERSITY
College of Law and Jurisprudence
Mang Inasal v IFP
FACTS:
IFP Manufacturing Corp. filed an application for the
registration of the mark, “OK Hotdog Inasal Cheese Hotdog
Flavor Mark”, in connection with goods under Class 30 of the
Nice Classification. It was intended to be used on one of its
curl snack products. However, the said application was
opposed by Mang Inasal, that owned the mark, “Mang Inasal,
Home of Real Pinoy Style Barbecue and Device”, for services
under Class 43. It has been registered with the IPO in 2006 and
has been used by petitioner since 2003.
Petitioner contended that the registration of OK
Hotdog is prohibited under Sec. 123.1d. The OK Hotdog and
Mang Inasal marks share similarities, as to their appearance
and to the goods or services they represent, thus suggesting a
false connection or association between the said marks, and
would likely cause confusion to the public.
1. The dominant element – the word “Inasal”, is printed and
stylized in the exact manner.
2. The goods that the OK Hotdog Inasal mark is intended to
identify are closely related to the services represented by
the Mang Inasal mark.
The IPO-BLA dismissed petitioner’s opposition. IPO-DG
affirmed such dismissal.
1. There are other words found in the OK Hotdog Inasal
mark that are not present in the Mang Inasal mark.
2. The underlying goods and services are not closely related.
CA denied the appeal of the petitioner. MR was also
denied.
ISSUE:
W/N the trademark may be registered? NO.
HELD:
Sec.123.1d provides that a mark that is similar to a registered
mark or a mark with an earlier filing, and which is likely to
cause confusion on the part of the public cannot be registered
with the IPO. The concept of the confusion could refer to the
confusion of goods or confusion of business. Confusion, in
both forms, is only possible when the goods or services
covered by allegedly similar marks are identical, similar, or
related in some manner.
To fall under the ambit of Sec. 123.1d and be regarded as
likely to deceive or cause confusion, a prospective mark must
meet two minimum conditions:
1. The prospective mark must nearly resemble or be similar
to an earlier mark; and
a. The OK Hotdog Inasal Mark is Similar to the Mang Inasal
Mark. Similarity does not mean absolute identity of
marks. It is enough that a prospective mark be a colorable
imitation of the former. Colorable imitation denotes such
likeness in form, content, words, sound, meaning, special
arrangement or general appearance of one mark with
respect to another as would likely mislead an average
buyer in the ordinary course of purchase.
b. In determining whether there is similarity or colorable
imitation, authorities may use two tests:
i. Dominancy Test focuses on the similarity of the prevalent
features of the competing trademark which might cause
confusion or deception. If the competing trademark
contains the main, essential or dominant features of
another, and confusion or deception is likely to result,
infringement takes place. The question is whether the use
of the marks involved is likely to cause confusion or
mistake in the mind of the public or deceive purchasers.
ii. Holistic Test requires that the entirety of the marks in
question be considered in resolving confusing similarity.
The trademarks in their entirety as they appear in their
respective labels or hang tags must also be considered in
relation to the goods to which they are attached.
iii. Recent case law seems to indicate an overwhelming
judicial preference to applying the dominancy test.
iv. In the mark, the word “INASAL” is dominant and the
way it is stylized is similar to Mang Inasal’s. It is a
descriptive term that cannot be appropriated, but the way
it is stylized is not. Thus, Mang Inasal can claim exclusive
use of such element. Even if there are differences, the
average buyer would pay more attention to the
prominent feature compared to the peripheral details.
2. The prospective mark must pertain to goods or services
that are either identical, similar or related to the goods or
services represented by the earlier mark.
a. Related goods and services are those that, though non-
identical or non-similar, are so logically connected to each
 other that they may reasonably be assumed to originate
from one manufacturer or from economically-linked
manufacturers. In determining whether goods or services
are related, several factors may be recognized:
i. The business (and its location) to which the goods
belong;
ii. The class of product to which the goods belong;
iii. The product’s quality, quantity, or size, including the
nature of the package, wrapper or container;
iv. The nature and cost of the articles;
v. The descriptive properties, physical attributes or
essential characteristics with reference to their form,
composition, texture or quality;
vi. The purpose of the goods;
vii. Whether the article is bought for immediate
consumption, that is, day-to-day household items;
viii. The fields of manufacture;
ix. The conditions under which the article is usually
purchased; and
x. The channels of trade through which the goods flow,
how they are distributed, marketed, displayed, and
sold.
A very important circumstance is whether there
exists a likelihood that an appreciable number of
ordinarily prudent purchasers will be misled, or
simply confused, as to the source of the goods in
question. The simulation, in order to be
objectionable, must be such as appears likely to
mislead the ordinary intelligent buyer who has a
need to supply and is familiar with the article that
he seeks to purchase.
b. The two are related as it may lead to a confusion of
business.
i. Petitioner uses the Mang Inasal mark in connection
with its restaurant services that is particularly
known for its chicken inasal.
ii. The mark has been used for petitioner’s business
since 2003.
iii. Respondent seeks to market under the OK Hotdog
Inasal mark curl snack products which it publicizes
as having a cheese hotdog inasal flavor.
iv. It is the fact that the underlying goods and
servicesthat involve inasal and inasal-flavored
products ultimately fixes the relations between such
goods and services. Thus, an average buyer is likely
to be confused as to the true source of such curls.
Case #17 SOCIETE DES PRODUITS v. PUREGOLD
G.R. No. 217194, September 06, 2017
FACTS:
Petitioner Societe des Produits Nestle, S.A. (Nestle) is
a corporation organized and existing under the laws
of Switzerland which is engaged in the business of
marketing and selling various products. Respondent
Puregold Price Club, Inc. (Puregold) is a corporation
organized under Philippine law which is engaged in the
business of trading goods.
Puregold filed an application for the registration of the
trademark "COFFEE MATCH" with the Intellectual
Property Office (IPO). However, Nestle filed an
opposition against Puregold's application for
registration. Nestle alleged that it is the exclusive
owner of the "COFFEE-MATE" trademark and that
there is confusing similarity between the "COFFEE-
MATE" trademark and Puregold's "COFFEE MATCH"
application. Nestle claimed that it would suffer
damages if the application were granted since
Puregold's "COFFEE MATCH" would likely mislead the
public that the mark originated from Nestle.
ISSUE: Whether or not PUREGOLD's "COFFEE MATCH" trademark
confusingly similar to NESTLE's "COFFEE-MATE" registered
trademark?
RULING:
No. The word "COFFEE" is the common dominant
feature between Nestle's mark "COFFEE-MATE" and
Puregold's mark "COFFEE MATCH." However,
following Section 123, paragraph (h) of RA 8293
which prohibits exclusive registration of generic
marks, the word "COFFEE" cannot be exclusively
appropriated by either Nestle or Puregold since it is
generic or descriptive of the goods they seek to
identify. The distinctive features of both marks are
sufficient to warn the purchasing public which are
Nestle's products and which are Puregold's products.
While both "-MATE" and "MATCH" contain the same
first three letters, the last two letters in Puregold's
mark, "C" and "H," rendered a visual and aural
character that made it easily distinguishable from
Nestle's mark. Also, the distinctiveness of Puregold's
mark with two separate words with capital letters "C"
and "M" made it distinguishable from Nestle's mark
which is one word with a hyphenated small letter "-m"
in its mark. In addition, there is a phonetic difference
in pronunciation between Nestle's "-MATE" and
Puregold's "MATCH." As a result, the eyes and ears of
the consumer would not mistake Nestle's product for
Puregold's product. Accordingly, this Court sustains
the findings of the BLA-IPO and ODG-IPO that the
likelihood of confusion between Nestle's product and
Puregold's product does not exist and upholds the
registration of Puregold's mark.
 Fernando U. Juan vs. Roberto U. Juan (substituted by his son
Jeffrey C. Juan) and Laundromatic Corporation, GR No. 221732,
August 23, 2017.
Facts:
Respondent Roberto Juan claimed that he began using the name
“Lavandera Ko” in his laundry business on July 4, 1994. Thereafter
on March 17, 1997, the National Library issued to him a certificate
of copyright over said name and mark. Thereafter, respondent
Roberto discovered that his brother, petitioner Fernando was able
to register the name and mark “Lavandera Ko” with the Intellectual
Property Office on October 18, 2001, the registration of which was
filed on June 6, 1995.
Respondent Roberto filed a petition for injunction, unfair
competition, infringement of copyright, cancellation of trademark
and name with and prayer for TRO and preliminary injunction with
the RTC. After presentation of evidence of both parties, the RTC
rendered a resolution dismissing the petition and ruled that neither
of the parties had a right to the exclusive use or appropriation of
the mark “Lavandera Ko” because the same was original mark and
work of certain Santiago S. Suarez. According to the RTC, the mark
in question was created by Suarez in 1942 in his musical
composition called, “Lavandera Ko” and both parties in the present
case failed to prove that they were the originators of the same
mark. The National Library was ordered to cancel the Certificate of
Registration issued to Roberto Juan on March 17, 1997 over the
word “Lavandera Ko”. Moreover, the Intellectual Property Office
was also ordered to cancel the Certificate of Registration issued on
October 18, 2001 covering “Lavandera Ko and Design ”, in favor of
Fernando Juan.
Issues:
1. Whether or not Mark is the same as Copyright.
2. Whether or not the RTC erred in denying the parties the
proper determination as to who has the ultimate right to
use the trade name “LAVANDERA KO.”
Ruling:
1. No. By their very definitions, copyright and mark are
different. The scope of copyright is confined to literary and
artistic works which are original intellectual creations in
the literary and artistic domain protected from the
moment of creation. Whereas, under Section 121.1 of RA
8293, “mark” is defined as any visible sign capable of
distinguishing the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or
marked container of goods.
2. Yes. “Lavandera Ko,” the mark in question in this case is being
used as a trade name or specifically, a service name since the
business in which it pertains involves the rendering of laundry
services. The basic contention of the parties is, who has the
better right to use “Lavandera Ko” as a service name because
Section 165.2 of the said law, guarantees the protection of the
trade names and business names even prior to or without
registration, against any unlawful act committed by parties. A
cause of action arises when the subsequent use of any party of
such trade name or business name would likely mislead the
public as such act is considered unlawful. Thus, RTC erred in
denying the parties the proper determination as who has the
ultimate right to use the said trade name by ruling that neither
of them has the right or cause of action since “Lavandera Ko” is
protected by a copyright.
De La Salle Montessori International of Malolos, Inc. v. De La Salle
Brothers, Inc, et.al
GR No. 205548, February 7, 2018
Digested by: Angelica Marie A. Rosales
Facts: De La Salle Montessori International of Malolos, Inc.
registered with the SEC its corporate name, which was eventually
granted government recognition for its pre-elementary and
elementary courses in 2008 by the DepEd. In 2010, respondents De
La Salle Brothers, Inc., De La Salle University Inc., La Salle Academy,
Inc., De La Salle-Santiago Zobel School, Inc., and De La Salle
Canlubang, Inc., filed a petition with the SEC to compel petitioner
to change its name, claiming that petitioner’s corporate name is
misleading or confusingly similar to that which respondents have
acquired a prior right to use, and that respondents’ consent to use
such name was not obtained.
Acting on the petition, the SEC OCG issued an order directing
petitioner to change or modify its corporate name, holding that
respondents’ use of the phrase “De la Salle” or “La Salle” is
arbitrary, fanciful, whimsical and distinctive, and thus legally
protectable. Petitioner filed an appeal before the SEC en banc,
which rendered a decision affirming the SEC OCG’s order.
Petitioners then filed a petition for review with the A, which
rendered its decision affirming the order of the SEC OCG and that
of the SEC en banc.
Issue: Whether or not petitioner has the right to use the phrase
“De La Salle” in its corporate name as respondents did not obtain
the right to its exclusive use, nor did the words acquire secondary
meaning.
Ruling: No. Although petitioner argues that it obtained the words
“De la Salle” from the French word meaning “classroom”, while
respondents obtained it from the French priest named Saint Jean
Baptiste de la Salle, the Supreme Court held that the phrase “de la
Salle” is not merely a generic term. Petitioner’s use of the phrase
“De La Salle” in its corporate name is patently similar to that of the
respondents that even with reasonable care and observation,
confusion may arise. Also, both parties are all private educational
institutions offering pre-elementary, elementary, and secondary
courses. The name thus gives the impression that it is a branch or
an affiliate of the respondents.
As was also decided in the case of Western Equipment and Supply
Co. v. Reyes, a corporation’s right to use its corporate and trade
name is a property right, in rem, which it may assert and protect
against the world in the same manner as it may protect its tangible
property, real or personal, against trespass or conversion. Thus,
pursuant to Section 18 of the Corporation Code, which prohibits
the registration of a corporate name which is “identical or
deceptively or confusingly similar” to that of any existing
corporation or which is “patently deceptive”, “patently confusing”,
or “contrary to existing laws”, parties organizing a corporation
must choose a name at their peril; and the use of a name similar to
one adopted by another corporation, whether a business or a non-
profit organization, if misleading or likely to injure in the exercise
of its corporate functions, regardless of intent, may be prevented
by the corporation having a prior right, by a suit for injunction
against the new corporation to prevent the use of the name.
Citigroup Inc. vs. Citystate Savings Bank Inc.
Facts:
Citigroup, Inc. is a corporation duly organized under the laws of the
State of Delaware engaged in banking and financial services.
In the late 1970s, Citibank N.A., a wholly-owned subsidiary of
petitioner, installed its first automated teller machines in over a
hundred New York City branches. In 1984, Citibank N.A., Philippine
Branch, began the development of its domestic Automated Teller
Machine (ATM) network, and started operating ATMs and issuing
ATM cards in the Philippines.
The trademark CITICARD is owned by Citibank N.A. and is registered
in the [Intellectual Property Office] of the Philippines on 27
September 1995 under Registration Number 34731.
Sometime in the mid-nineties, a group of Filipinos and Singaporean
companies formed a consortium to establish respondent Citystate
Savings Bank, Inc. The consortium included established
Singaporean companies, specifically Citystate Insurance Group and
Citystate Management Group Holdings Pte, Ltd.
Respondent's registered mark has in its name affixed a lion's head,
which is likened to the national symbol of Singapore, the Merlion.
In line with this, respondent filed an application for registration
with the [Intellectual Property Office] on 21 June 2005 of the
trademark "CITY CASH WITH GOLDEN LION'S HEAD" for its ATM
service, under Application Serial No. 42005005673.
Issue:
WON Citystate's dominant features on their trademark is identical
or confusingly similar to a registered trademark of Citigroup Inc as
to create a likelyhood of confusion.
Ruling:
No.Applying the dominancy test, this Court sees that the prevalent
feature of respondent's mark, the golden lion's head device, is not
present at all in any of petitioner's marks. The only similar feature
between respondent's mark and petitioner's collection of marks is
the word "CITY" in the former, and the "CITI" prefix found in the
latter. This Court agrees with the findings of the Court of Appeals
that this similarity alone is not enough to create a likelihood of
confusion.
The dis[s]imilarities between the two marks are noticeable and
substantial. Respondent's mark, "CITY CASH WITH GOLDEN LION'S
HEAD", has an insignia of a golden lion's head at the left side of the
words "CITY CASH", while petitioner's "CITI" mark usually has an arc
between the two I's. A further scrutiny of the other "CITI" marks of
petitioner would show that their font type, font size, and color
schemes of the said "CITI" marks vary for each product or service.
Most of the time, petitioner's "CITI" mark is joined with another
term to form a single word, with each product or service having
different font types and color schemes. On the contrary, the
trademark of respondent consists of the words "CITY CASH", with
a golden lion's head emblem on the left side. It is, therefore,
improbable that the public would immediately and naturally
conclude that respondent's "CITY CASH WITH GOLDEN LION'S
HEAD" is but another variation under petitioner's "CITI" marks.
[ G.R. Nos. 213365-66, December 10, 2018 ]
ASIA PACIFIC RESOURCES INTERNATIONAL HOLDINGS, LTD.,
PETITIONER, VS. PAPERONE, INC., RESPONDENT.
Petitioner is engaged in the production, marketing, and sale of pulp
and premium wood free paper. It alleged that it is the owner of a
well-known trademark, PAPER ONE. The said trademark enjoyed
legal protection in different countries worldwide and enjoyed
goodwill and high reputation because of aggressive marketing and
promotion. Petitioner claimed that the use of PAPERONE in
respondent's corporate name without its prior consent and
authority was done in bad faith and designed to unfairly ride on its
good name and to take advantage of its goodwill. It was calculated
to mislead the public into believing that respondent's business
and/or products were manufactured, licensed or sponsored by
petitioner. It was also alleged that respondent had presumptive, if
not actual knowledge, of petitioner's rights to the trademark PAPER
ONE, even prior to respondent's application for registration of its
corporate name before the Securities and Exchange Commission
(SEC).
Respondent, on its part, averred that it had no obligation to secure
prior consent or authority from petitioner to adopt and use its
corporate name. The Department of Trade and Industry (DTI) and
the SEC had allowed it to use Paperone, Inc., thereby negating any
violation on petitioner's alleged prior rights. Respondent was
registered with the SEC, having been organized and existing since
March 30, 2001. Its business name was likewise registered with the
DTI. Respondent also denied any awareness of the existence of
petitioner and/or the registration of PAPER ONE, as the latter is a
foreign corporation not doing business in the Philippines. While the
business of respondent dealt with paper conversion such as
manufacture of table napkins, notebooks and
intermediate/collegiate writing pads, it did not use its corporate
name PAPERONE on any of its products. Further, its products had
been widely sold in the Philippines even before petitioner could
claim any business transaction in the country.
The Bureau of Legal Affairs (BLA) Director, Intellectual
Property Office, found respondent liable for unfair competition. On
appeal to the IPO Director General, the BLA decision was affirmed
with modification insofar as the increase in the award of attorney's
fees. The CA reversed and set aside the IPO Director General's
decision
ISSUES: WHETHER RESPONDENT IS LIABLE FOR UNFAIR
COMPETITION,
RULING
The essential elements of an action for unfair competition are: (1)
confusing similarity in the general appearance of the goods, and (2)
intent to deceive the public and defraud a competitor.
a) Confusing similarity
Although respondent has a different logo, it was always used
together with its trade name. It bears to emphasize that, initially,
respondent's trade name had separate words that read "Paper One,
Inc." under its original Articles of Incorporation. This was later on
revised to make it one word, and now reads "Paperone, Inc.” There
is an apparent dissimilarity of presentation of the trademark PAPER
ONE and the trade name and logo of Paperone, Inc. Nevertheless, a
careful scrutiny of the mark shows that the use of PAPERONE by
respondent would likely cause confusion or deceive the ordinary
purchaser, exercising ordinary care, into believing that the goods
bearing the mark are products of one and the same enterprise.

Relative to the issue on confusion of marks and trade names,
jurisprudence has noted two types of confusion, viz.: (1) confusion
of goods (product confusion), where the ordinarily prudent
purchaser would be induced to purchase one product in the belief
that he was purchasing the other; and (2) confusion of business
(source or origin confusion), where, although the goods of the
parties are different, the product, the mark of which registration is
applied for by one party, is such as might reasonably be assumed to
originate with the registrant of an earlier product; and the public
would then be deceived either into that belief or into the belief that
there is some connection between the two parties, though
inexistent. Thus, while there is confusion of goods when the
products are competing, confusion of business exists when the
products are non-competing but related enough to produce
confusion of affiliation.
This case falls under the second type of confusion. A consumer
might conclude that PAPER ONE products are manufactured by or
are products of Paperone, Inc. Additionally, although respondent
claims that its products are not the same as petitioner's, the goods
of the parties are obviously related as they are both kinds of paper
products.
The BLA Director aptly ruled that "[t]o permit respondent to
continue using the same or identical Paperone in its corporate name
although not [used] as label for its paper products, but the same line
of business, that of manufacturing goods such as PAPER PRODUCTS,
therefore their coexistence would result in confusion as to source
of goods and diversion of sales to [r]espondent knowing that
purchasers are getting products from [petitioner] APRIL with the use
of the corporate name Paper One, Inc. or Paperone, Inc. by herein
[r]espondent."
Verily, the protection of trademarks as intellectual property is
intended not only to preserve the goodwill and reputation of the
business established on the goods bearing the mark through actual
use over a period of time, but also to safeguard the public as
consumers against confusion on these goods. On this matter of
particular concern, administrative agencies, such as the IPO, by
reason of their special knowledge and expertise over matters falling
under their jurisdiction, are in a better position to pass judgment
thereon. Thus, their findings of fact in that regard are generally
accorded great respect, if not finality by the courts, as long as they
are supported by substantial evidence, even if such evidence might
not be overwhelming or even p1reponderant
The BLA Director found, as affirmed by the IPO Director General,
that it was petitioner who has priority rights over PAPER ONE for
having shown of its prior use and adoption of the word “PaperOne”.
The fact of earlier use was not disputed by the Respondent. In point
of fact, Respondent already knew of Complainant's APRIL existence
prior to Respondent's incorporation as Paper One, Inc.
b) intent to deceive the public and defraud a competitor
Contrary to the ruling of the CA, actual fraudulent intent need not
be shown. Factual circumstances were established showing that
respondent adopted PAPERONE in its trade name even with the
prior knowledge of the existence of PAPER ONE as a trademark of
petitioner. As in all other cases of colorable imitations, the
unanswered riddle is why, of the millions of terms and combinations
of letters available, respondent 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.
Submitted by: Jean Marion O. Parmes
KENSONIC, INC VS UNI-LINE MULTI-RESOURCES INC
FACTS
On June 6, 2002,Uni-line filed an application for the registration of
the trademark SAKURA for use on the following:
a. Class 7-Washing machine, high pressure washers, vacuum
cleaners, floor polishers, electric mixers, electric juicers
b. Class 09-Television, stereo components, DVD/VCD player,
voltage regulators, portable generators, switch breakers, fuse
c. Class 11-Refrigerators, air conditioners, oven toaster, turbo
broiler, rice cooker, microwave oven, coffee maker,
sandwich/waffle maker, electric stove, electric fan, hot and
cold water dispenser, airpot, electric griller, and electric hot
pot.
Kensonic opposed Uni-lines application on the ground that the
latter had prior use and registration of the SAKURA mark since
October 1994.
The BLA Director cancelled Uni-lines registration. It observed that
the marks were confusingly similar with each other, that the goods
sought to be covered by the SAKURA registration of Uni-line were
related to the goods of Kensonic under Class 09 goods. Hence,
appeal to the Director General, IPO.
The Director General of IPO ruled in favor of Uni-line’s registration
of the SAKURA mark as to goods classified as class 07 and Class 11,
but denied its registration under class 09. Hence, appeal to CA by
both cases.
The CA upheld the Kensonic’s ownership of the SAKURA marks
based on the showing of its use of the mark since 1994, but ruled
that despite the identical marks of Kensonic and Uni-line, Kensonic
goods under class 09 were different form or unrelated to Uni-line’s
goods under Class 07 and Class 11. It observed that the protection
of the law regarding the SAKURA mark could only extend to
television sets, stereo components, DVD and VCD players but no to
Uni-lines voltage regulators, portable generators, switch breakers,
and fuses due to such goods being unrelated to Kensonic’s goods.
Hence, Kensonic appeal to SC.
ISSUE:
Are Kensonic’s goods falling under Class 09 related to Uni-line’s
goods under class 07 and Class 11?
RULING
No. An examination of the foregoing factors reveals that the goods
of Uni-line were not related to the goods of Kensonic by virtue of
their differences in class, the descriptive attributes, the purposes
and conditions of the goods.
Taiwan Kolin vs Kolin Electronics
Facts:
Taiwan Kolin Corp sought to register the trade
“KOLIN” in Class 9 on the following combination of
goods: television sets, cassette recorder, VCD
Amplifiers, camcorders & other audio/video electronic
equipment, flat iron, vacuum cleaners, handsets,
videophones, facsimile machines, teleprinters, cellular
phones & automatic goods vending machine.
Kolin Electronics opposed the application on the
ground that the trademark “KOLIN” is identical, if not
confusingly similar; with its registered trademark
“KOLIN” which covers the ff. products under Class 9
of the Nice Classification (NCL): Automatic Voltage
Regulator, converter, recharger, stereo booster,
AC/DC regulated power supply, step-down
transformer, & PA Amplified AC/DC. Kolin Electronics
argued that the products are not only closely-related
because they fall under the same classification, but
also because they are inherently similar for being
electronic products & are plugged into electric sockets
& platform a useful function.
Issue: W/N the products are closely-related
Held:
No, the products are not related and the use of the
trademark KOLIN on them would not likely cause
confusion. To confer exclusive use of a trademark,
emphasis should be on the similarity or relatedness of
the goods and/or services involved and not on the
arbitrary classification or general description of their
properties or characteristics.
First, products classified under Class 9 can be further
classified into five categories. Accordingly, the goods
covered by the competing marks between Taiwan
Kolin and Kolin Electronics fall under different
categories. Taiwan Kolin’s goods are categorized as
audio visual equipments, while Kolin Electronics goods
fall under devices for controlling the distribution and
use of electricity. Thus, it is erroneous to assume that
all electronic products are closely related and that the
coverage of one electronic product necessarily
precludes the registration of a similar mark over
another.
Second, the ordinarily intelligent buyer is not likely to
be confused. The distinct visual and aural differences
between the two trademarks “KOLIN”, although
appear to be minimal, are sufficient to distinguish
between one brand or another. The casual buyer is
predisposed to be more cautious, discriminating, and
would prefer to mull over his purchase because the
products involved are various kind of electronic
products which are relatively luxury items and not
considered affordable. They are not ordinarily
consumable items such as soy sauce, ketchup or soap
which are of minimal cost. Hence confusion is less
likely.
UFC VS BARRIO FIESTA
FACTS:
Barrio Fiesta filed an application with the IPO for the mark “PAPA
BOY & DEVICE” for “lechon sauce.” UFC opposed the
application. It contended that “PAPA BOY & DEVICE” is
confusingly similar with its “PAPA” marks and its variations
inasmuch as the former incorporates the term “PAPA,” which is the
dominant feature of petitioner’s “PAPA” marks. UFC averred that
the use of “PAPA BOY & DEVICE” mark for lechon sauce product,
if allowed, would likely lead the consuming public to believe that
said lechon sauce product originates from or is authorized by UFC,
and that the “PAPA BOY & DEVICE” mark is a variation or
derivative of UFC’s “PAPA” marks. UFC argued that this was
especially true considering that UFC’s ketchup product and Barrio
Fiesta’s lechon sauce product are related articles.
ISSUE
The IPO denied the application as it is confusingly similar to the
mark of UFC. Is the IPO correct?
RULING
Yes.
Barrio Fiesta’s mark cannot be registered. The mark is related to a
product, lechon sauce, an everyday all-purpose condiment and
sauce, that is not subjected to great scrutiny and care by the casual
purchaser, who knows from regular visits to the grocery store under
what aisle to find it, in which bottle it is contained, and
approximately how much it costs. Since UFC’s product, catsup, is
also a household product found on the same grocery aisle, in similar
packaging, the public could think that UFC had expanded its product
mix to include lechon sauce, and that the “PAPA BOY” lechon
sauce is now part of the “PAPA” family of sauces, which is not
unlikely considering the nature of business that UFC is in. Thus, if
allowed registration, confusion of business may set in, and UFC’s
hard-earned goodwill may be associated to the newer product
introduced by Barrio Fiesta, all because of the use of the dominant
feature of UFC’s mark on Barrio Fiesta’s mark, which is the word
“PAPA.” The words “Barrio Fiesta” are not included in the mark,
and although printed on the label of Barrio Fiesta’s lechon sauce
packaging, still do not remove the impression that “PAPA BOY” is
a product owned by the manufacturer of “PAPA” catsup, by virtue
of the use of the dominant feature. It is possible that UFC could
expand its business to include lechon sauce, and that would be well
within UFC’s rights, but the existence of a “PAPA BOY” lechon
sauce would already eliminate this possibility and deprive UFC of
its rights as an owner of a valid mark included in the Intellectual
Property Code.
G.R. No. L-78325 January 25, 1990
DEL MONTE CORPORATION and PHILIPPINE
PACKING CORPORATION, petitioners,
vs.
COURT OF APPEALS and SUNSHINE SAUCE
MANUFACTURING INDUSTRIES, respondents.
Facts:
Petitioner Del Monte Corporation is a foreign company
organized under the laws of the United States and not
engaged in business in the Philippines. Both the
Philippines and the United States are signatories to the
Convention of Paris, a treaty which grants to the
nationals of the parties rights and advantages which
their own nationals enjoy for the repression of acts of
infringement and unfair competition. On the other
hand, petitioner Philippine Packing Corporation
(Philpack) is a domestic corporation duly organized
under the laws of the Philippines.
Sometime in 1965, Del Monte authorized Philpack to
register with the Philippine Patent Office the Del Monte
catsup bottle configuration, for which it was granted
Certificate of Trademark Registration by the Philippine
Patent Office under the Supplemental Register. In
1969, Del Monte granted Philpack the right to
manufacture, distribute and sell in the Philippines
various agricultural products, including catsup, under
the Del Monte trademark and logo. In 1972, Del Monte
also obtained two registration certificates for its
trademark “DEL MONTE” and its logo.
Respondent Sunshine Sauce Manufacturing Industries
was issued a Certificate of Registration by the Bureau
of Domestic Trade in 1980 to engage in the
manufacture, packing, distribution and sale of various
kinds of sauce, identified by the logo Sunshine Fruit
Catsup. The logo was registered in the Supplemental
Register in 1983. Sunshine Sauce’s product itself was
contained in various kinds of bottles, including the Del
Monte bottle, which it bought from the junk shops for
recycling.
Philpack received reports that Sunshine Sauce was It has also been held that it is not the function of the
using its exclusively designed bottles and a logo court in cases of infringement and unfair competition to
confusingly similar to Del Monte’s. Philpack warned educate purchasers but rather to take their
Sunshine Sauce to desist from doing so on pain of legal carelessness for granted, and to be ever conscious of the
action. Thereafter, claiming that the demand had been fact that marks need not be identical. A confusing
ignored, Philpack and Del Monte filed a complaint similarity will justify the intervention of equity. The
against the Sunshine Sauce for infringement of judge must also be aware of the fact that usually a
trademark and unfair competition. defendant in cases of infringement does not normally
copy but makes only colorable changes. Well has it been
said that the most successful form of copying is to
Sunshine alleged that:
employ enough points of similarity to confuse the public
with enough points of difference to confuse the courts.
 it had long ceased to use the Del Monte bottle
and that
The Sunshine label is a colorable imitation of the Del
 its logo was substantially different from the Del
Monte trademark. The predominant colors used in the
Monte logo and would not confuse the buying
Del Monte label are green and red-orange, the same
public to the detriment of the petitioners.
with Sunshine. The word “catsup” in both bottles is
The RTC dismissed the complaint on the following
printed in white and the style of the print/letter is the
grounds:
same. Although the logo of Sunshine is not a tomato,
the figure nevertheless approximates that of a tomato.
 there were substantial differences between the
logos or trademarks of the parties
 No, it is not guilty of infringement.
 Sunshine Sauce became the owner of the said
Sunshine Sauce is not guilty of infringement for having
bottles upon its purchase thereof from the junk
used the Del Monte bottle. The reason is that the
yards
configuration of the said bottle was merely registered in
 Del Monte and Philpack had failed to establish
the Supplemental Register. Registration only in the
the its malice or bad faith, which is an essential
Supplemental Register means absence of the following
element of infringement of trademark or unfair
presumptions: validity of the trademark, the registrant’s
competition
ownership of the mark and his right to its exclusive use.
The CA affirmed RTC’s decision in toto. Hence, the
appeal.
Although Del Monte has actual use of the bottle’s
configuration, the petitioners cannot claim exclusive
Issue(s):
use thereof because it has not been registered in the
 Whether or not Sunshine Sauce is guilty of
Principal Register. However, we find that Sunshine,
unfair competition.
despite the many choices available to it and
 Whether or not Sunshine Sauce is guilty of
notwithstanding that the caution “Del Monte
infringement for having used the Del Monte
Corporation, Not to be Refilled” was embossed on the
bottle.
bottle, still opted to use the petitioners’ bottle to market
Held:
a product which Philpack also produces. This clearly
 Yes, it is guilty of unfair competition.
shows the private respondent’s bad faith and its
The SC compared the Del Monte and Sunshine Sauce’s
intention to capitalize on the latter’s reputation and
packaging. While it recognized several distinctions, it
goodwill and pass off its own product as that of Del
does not agree with the conclusion that there was no
Monte.
infringement or unfair competition.

II SET TM Cases
According to the SC, side-by-side comparison is not the
final test of similarity. Such comparison requires a
Distelleria Washington v. CA,
careful scrutiny to determine in what points the labels
[G.R. No. 120961. October 17, 1996]
of the products differ, as was done by the trial judge.
DISTILLERIA WASHINGTON, INC. or WASHINGTON
The ordinary buyer does not usually make such
DISTILLERY, INC.,
scrutiny nor does he usually have the time to do so. The
Petitioner,
average shopper is usually in a hurry and does not
vs.
inspect every product on the shelf as if he were browsing
THE HONORABLE COURT OF APPEALS and LA
in a library.
TONDEÑA DISTILLERS, INC.,
Respondents
The question is not whether the two articles are
distinguishable by their label when set side by side but Doctrine:
whether the general confusion made by the article upon It is to be pointed out that a trademark refers to a word,
the eye of the casual purchaser who is unsuspicious name, symbol, emblem, sign or device or any
and off his guard, is such as to likely result in his combination thereof adopted and used by a merchant
confounding it with the original. to identify, and distinguish from others, his goods of
commerce. It is basically an intellectual creation that
is susceptible to ownership and, consistently
A number of courts have held that to determine whether
therewith, gives rise to its own elements of jus
a trademark has been infringed, we must consider the
posidendi, jus utendi, jus fruendi, jus disponendi,
mark as a whole and not as dissected. If the buyer is
and jus abutendi, along with the applicable jus
deceived, it is attributable to the marks as a totality, not
lex, comprising that ownership.
usually to any part of it. The court therefore should be
guided by its first impression, for a buyer acts quickly
Facts:·
and is governed by a casual glance, the value of which
LTDI, under a claim of ownership, sought to seize from
may be dissipated as soon as the court assumes to
Distilleria Washington 18,157 empty “350 c.c. white
analyze carefully the respective features of the mark.
flint bottles” bearing the blown-in marks of “La Tondeña
Inc.” and “Ginebra San Miguel.” The court, on
application of LTDI, issued an order of replevin on 05
November 1987 for the seizure of the empty gin bottles
from Washington. These bottles, it was averred, were
being used by Washington for its own “Gin Seven”
products without the consent of LTDI.·
LTDI asserted that, being the owner and registrant of
the bottles, it was entitled to the protection so extended
by Republic Act (“R.A.”) No. 623, as amended,
notwithstanding its sale of the Ginebra San Miguel gin
product contained in said bottles.·
Washington countered that R.A. No. 623, invoked by
LTDI, should not apply to gin, an alcoholic beverage
which is unlike that of “soda water, mineral or aerated
water, ciders, milks, cream, or other lawful beverages”
mentioned in the law, and that, in any case, ownership
of the bottles should, considering the attendant facts
and circumstances, be held lawfully transferred to the
buyers upon the sale of the gin and containers at a
single price.·
Trial court ruled:
complaint is hereby DISMISSED and plaintiff is
ordered:§ “1.To return to defendant the 18,157 empty
bottles seized by virtue of the writ for the Seizure of
Personal Property issued by this Court on November 6,
1987;§ “2. In the event of failure to return said empty
bottles, plaintiff is ordered to indemnify defendant in
the amount ofP18,157.00 representing the value of the
bottles.·
CA ruled in favor of LTDI:
The appellant (LTDI), being the owner, is authorized to
retain in its possession the 18,157bottles registered in
its name delivered to it by the sheriff following their
seizure from the appellee pursuant to the writ of
replevin issued by the trial court on November 6, 1987
Issue:
Whether or not ownership of the empty bottles was
transferred to Washington
Held: NO
The mere use of registered bottles or containers without
the written consent of the manufacturer is prohibited,
the only exceptions being when they are used as
containers for ‘sisi,’ ‘bagoong,’ ‘patis’ and similar native
products.·
Republic Act No. 623 which governs the registration of
marked bottles and containers merely requires that the
bottles, in order to be eligible for registration, must be
stamped or marked with the names of the
manufacturers or the names of their principals or
products, or other marks of ownership. No drawings or
labels are required but, instead, two photographs of the
container, duly signed by the applicant, showing clearly
and legibly the names and other marks of ownership
sought to be registered and a bottle showing the name
or other mark or ownership, irremovably stamped or
marked, shall be submitted. It cannot be gainsaid that
ownership of the containers does pass on to the
consumer albeit subject to the statutory limitations on
the use of the registered containers and to the
trademark rights of the registrant. The statement in
Section 5 of R.A. 623 to the effect that the “sale of
beverage contained in the said containers shall not
include the sale of the containers unless specifically so
provided” is not a rule of proscription. It is a rule of
construction that, in keeping with the spirit and intent
of the law, establishes at best a presumption (of non-
conveyance of the container) and which by no means
can be taken to be either interdictive or conclusive in
character. Upon the other hand, LTDI’s sales invoice,
stipulating that the “sale does not include the bottles
with the blow-in marks of ownership of La Tondeña
Distillers,” cannot affect those who are not privies
thereto.
Dispositive:
WHEREFORE, the decision of the appellate court is
MODIFIED by ordering LTDI to pay petitioner just
compensation for the seized bottles. Instead, however,
of remanding the case to the Court of Appeals to receive
evidence on, and thereafter resolve, the assessment
thereof, this Court accepts and accordingly adopts the
quantification of P18,157.00 made by the trial
court. No costs.
DISTILLERIA WASHINGTON, INC VS LA TONDEÑA
DISTILLERS, INC
GR NO. 120961, OCTOBER 2, 1997
FACTS:
The petitioner sought a second motion for reconsideration of the
decision of the SC last October 1996.
To recall, La Tondeña Distillers filed before the RTC for the
recovery, under its claim of ownership, of possession or replevin
against Distilleria Washington of empty bottles bearing the blown-
in marks of “La Tondeَña” and “Ginebra San Miguel”, averring that
Distilleria Washington was using the bottles for its own “Gin Seven”
products without the consent of Distilleria Washington in violation
of RA 623.
The trial court in its decision dismissed the complaint, upholding
Distillera Washington’s contention that a purchaser of liquor pays
only a single price for the liquor and the bottle and is not required to
return the bottle at any time. The CA reversed the trial court’s
decision, ruling that RA 623, the use of marked bottles by any
person other than the manufacturer, bottler or seller without the
latter’s consent, is unlawful. It emphasized that the marks of La
Tondeña’s ownership stamped or blown-in to the bottles are
sufficient notice to the public that the bottles are La Tondeña’s
property; hence Distillera Washington cannot be considered a
purchaser in good faith.
ISSUE:
Whether or not Washington Distillery’s used of the bottles violate
trademark protection of the registrant, La Tondeña Distiller afforded
by RA 623, as amended.
RULING:
Yes. The Court held that ownership of the bottles had passed to the
consumer, ultimately, to Washington Distillery Inc., it held that it
may not use the bottles because of the trademark protection of the
registrant. The Court affirmed with modifications the CA’s
decisions, the Court at least implicitly acknowledged that there was
a valid transfer of the bottles, except that its possession of the bottles
was without the consent of La Tondeña gives rise to a prima facie
presumption of illegal use under RA 623. There is no showing, and
it cannot be assumed, that if Distillera Washington would have
possession of the bottles, it will exercise to other attributes of
ownership, along with the applicable jus lex over the “marks of
ownership stamped or marked on the bottles.
ETEPHA, A.G., vs. DIRECTOR OF PATENTS
GR NO. L-20635, MARCH 31, 1966
Facts:
Respondent Westmont Pharmaceuticals, an American
corporation, sought registration of trademark ‘Atussin’
placed on its medicinal preparation for the treatment of
coughs. Petitioner Etepha, owner of the trademark
‘Pertussin’ placed also on preparation for cough treatment,
objected claiming that it will be damaged since the 2 marks
are confusingly similar. The Director of Patents gave due
course to the application.
Issue:
Whether or not petitioner’s trademark is registrable.
Ruling: YES.
That the word “tussin” figures as a component of both
trademarks is nothing to wonder at. The Director of Patents
aptly observes that it is “the common practice in the drug
and pharmaceutical industries to ‘fabricate’ marks by using
syllables or words suggestive of the ailments for which they
are intended and adding thereto distinctive prefixes or
suffixes”. And appropriately to be considered now is the
fact that, concededly, the “tussin” (in Pertussin and Atussin)
was derived from the Latin root-word “tussis” meaning
cough.
“Tussin” is merely descriptive; it is generic; it furnishes to
the buyer no indication of the origin of the goods; it is open
for appropriation by anyone. It is accordingly barred from
registration as trademark. With jurisprudence holding the
line, we feel safe in making the statement that any other
conclusion would result in “appellant having practically a
monopoly” of the word “tussin” in a trademark. While
“tussin” by itself cannot thus be used exclusively to identify
one’s goods, it may properly become the subject of a
trademark “by combination with another word or phrase”.
And this union of words is reflected in
petitioner’s Pertussin and respondent’s Atussin, the first with
prefix “Per” and the second with Prefix “A.”
Phil Refining v, Ng Sam Digest
Phil. Refining Co. v. Ng Sam and Director of Patents G.R. No.
L-26676, July 30, 1982
Facts of the Case: The petitioner Philippine Refining Co. first
used'Camia' as trademark for its products in 1922. In 1949, it caused
the registration of the said trademark for its lard, butter, cooking oil,
detergents, polishing materials and soap products. In 1960, Ng Sam
filed an application for 'Camia' for its ham product (Class 47),
alleging its first use in 1959. The petitioner opposed the said
application but the Patent Office allowed the registration of Ng Sam.
Issue: Is the product of Ng Sam (Ham) and those of the petitioner
so related that the use of the trademark 'Camia' on said goods
would result to confusion as to their origin?
HELD: NO. The businesses of the parties are non-competitive and
the products are so unrelated that the use of the same trademark will
not give rise to confusion nor cause damage to the petitioner. The
right to a trademark is a limited one, hence, others may use the same
mark on unrelated goods if no confusion would arise.
A trademark is designed to identify the user, hence, it should be so
distinctive and sufficiently original so as to enable those who see it
to recognize instantly its source or origin. A trademark must be
affirmative and definite, significant and distinctive and capable of
indicating origin.
'Camia' as a trademark is far from being distinctive, It in itself does
not identify the petitioner as the manufacturer of producer of the
goods upon which said mark is used. If a mark is so commonplace,
it is apparent that it can't identify a particular business and he who
adopted it first cannot be injured by any subsequent appropriation or
imitation by others and the public will not be deceived.
Mere classification of the goods cannot serve as the decisive factor
in the resolution of whether or not the goods a related. Emphasis
should be on the similarity of products involved and not on arbitrary
classification of general description of their properties or
characteristics.
Converse Rubber Corporation and Edwardson
manufacturing Corporation vs. Jacinto Rubber and
Plastics Co., Inc and Ace Rubber and Plastics Corporation
April 28, 1980
Facts
Converse Rubber alleged that "Custombuilt" shoes are
Identical in design and General appearance to "Chuck
Taylor" and, claiming prior Identification of "Chuck Taylor" in
the mind of the buying public in the Philippines, they
contend that defendants are guilty of unfair competition
by manufacturing and selling "Custombuilt" in the Philippines
rubber shoes having the same or confusingly similar
appearance as plaintiff Converse Rubber's Converse Chuck
Taylor All Star' rubber shoes. Jacinto Rubber contends
that there is no unfair competition because the
general appearance between "Custombuilt" and "Chuck
Taylor" are not the same. Jacinto Rubber alleged that
"Custombuilt" is readily Identifiable by the trade name
"Custombuilt" appearing on the ankle patch, the heel patch,
and on the sole. Furthermore Jacinto contended that the
registration of Jacinto Rubber's trademark"Custombuilt"
being prior to the registration in the Philippines of plaintiff
Converse Rubber'strademark "Chuck Taylor", plaintiffs have
no cause of action.
Issue
Whether or not the defendant appellants are guilty of unfair
completion.
Ruling
Yes. The Sumpreme Court has held that in no uncertain
terms, the statute on unfair competition extends protection to
the goodwill of a manufacturer or dealer. It attaches no fetish
to the word "competition". In plain language it declares that a
"person who has identified in the public the goods he
manufactures or deals in, his business or services from those
of others, whether or not a right in the goodwill of the said
goods, business or services so Identified, which will be
protected in the same manner as other property rights." It
denominates as "unfair competition" "any acts" calculated to
result in the passing off of other goods "for those of the one
having established such goodwill." Singularly absent is a
requirement that the goodwill sought to be protected in an
action for unfair competition must have been established in an
actual competitive situation. Nor does the law require that the
deception or other means contrary to good faith or any acts
calculated to pass off other goods for those of one who has
established a goodwill must have been committed in an actual
competitive situation. Plaintiffs-appellees have a established
goodwill. This goodwill, the trial court found, defendants-
appellants have pirated in clear bad faith to their unjust
enrichment. It is strange that defendants-appellants now say
that they should be spared from the penalty of the law,
because they were not really in competition with plaintiffs-
appellant.
PUMA vs. IAC
GR No. 75067
February 26, 1988
FACTS:
Petitioner, a foreign corporation duly organized and
existing under the laws of the Federal Republic of Germany
and the manufacturer and producer of "PUMA PRODUCTS,"
filed a complaint for infringement of patent or trademark with
a prayer for the issuance of a writ of preliminary injunction
against the private respondent. However, prior to the filing of
the said civil suit, three cases were pending before the
Philippine Patent Office.
The trial court issued a temporary restraining order,
restraining the private respondent and the Director of Patents
from using the trademark "PUMA' or any reproduction,
counterfeit copy or colorable imitation thereof, and to withdraw
from the market all products bearing the same trademark.
Private respondent filed a motion to dismiss on the
grounds that the petitioners' complaint states no cause of
action, petitioner has no legal personality to sue and litis
pendentia.
The trial court denied the motion to dismiss and at the
same time granted the petitioner's application for a writ of
injunction. The Court of Appeals reversed the order of the trial
court and ordered the respondent judge to dismiss the civil
case filed by the petitioner.
ISSUE:
Whether or not the petitioner, being a foreign
corporation not doing business in the Philippines, has the
legal capacity to sue.
RULING:
YES. In the case of La Chemise Lacoste, S.A .v.
Fernandez, the Court ruled that as early as 1927, this Court
was, and it still is, of the view that a foreign corporation not
doing business in the Philippines needs no license to sue
before Philippine courts for infringement of trademark and
unfair competition.
Also in Western Equipment and Supply Co. v. Reyes,
this Court held that a foreign corporation which has never
done any business in the Philippines and which is unlicensed
and unregistered to do business here, but is widely and
favorably known in the Philippines through the use therein of
its products bearing its corporate and tradename, has a legal
right to maintain an action in the Philippines to restrain the
residents and inhabitants thereof from organizing a
corporation therein bearing the same name as the foreign
corporation, when it appears that they have personal
knowledge of the existence of such a foreign corporation, and
it is apparent that the purpose of the proposed domestic
corporation is to deal and trade in the same goods as those
of the foreign corporation.
In the case of Converse Rubber Corporation V.
Universal Rubber Products, Inc., we likewise re-affirmed our
adherence to the Paris Convention: the Union of Paris for the
Protection of Industrial Property to which the Philippines
became a party on September 27, 1965. Article 8 thereof
provides that 'a trade name [corporation name] shall be
protected in all the countries of the Union without the
obligation of filing or registration, whether or not it forms part
of the trademark.
The mandate of the aforementioned Convention finds
implementation in Section 37 of RA No. 166, otherwise known
as the trademark Law:
Rights of Foreign Registrants. — Persons who are nationals
of, domiciled in, or have a bona fide or effective business or
commercial establishment in any foreign country, which is a
party to an international convention or treaty relating to marks
or tradenames on the represssion of unfair competition to
which the Philippines may be party, shall be entitled to the
benefits and subject to the provisions of this Act ...
Tradenames of persons described in the first paragraph of this
section shall be protected without the obligation of filing or
registration whether or not they form part of marks.
7. Sterling Products v Farbenfabriken Bayer
GR L-19906 April 30, 1969
FACTS:
The Bayer Cross in circle “trademark was registered in
Germany in 1904 to Farbenfabriken vorm. Friedr. Bayer
(FFB), successor to the original Friedr. Bauyer et. Comp., and
predecessor to Farbenfabriken Bayer aktiengessel craft
(FB2). The “Bayer, and “Bayer Cross in circle” trademarks
were acquired by sterling Drug Inc. when it acquired FFB’s
subsidiary Bayer Co. of New York as a result of the
sequestration of its assets by the US Alien Property Custodian
during World War I. Bayer products have been known in
Philippines by the close of the 19th century. Sterling Drugs,
Inc., however, owns the trademarks “Bayer” in relation to
medicine. FBA attempted to register its chemical products
with the “Bayer Cross in circle” trademarks. Sterling Products
International and FBA seek to exclude each other from use of
the trademarks in the Philippines. The trial court sustained
SPI’s right to use the Bayer trademark for medicines and
directed FBA to add distinctive word(s) in their mark to
indicate their products come from Germany.” Both appealed.
ISSUE:
Whether or not SPI’s ownership of the trademarks extends
to products not related to medicine.
RULING:
No. SPI’s certificates of registration as to the Bayer
trademarks registered in the Philippines cover medicines
only. Nothing in the certificates include chemicals or
insecticides. SPI thus may not claim “first use” of the
trademarks prior to the registrations thereof on any product
other than medicines. For if otherwise held, a situation may
arise whereby an applicant may be tempte3d to register a
trademark on any and all goods which his mind may conceive
even if he had never intended to use the trademark for the
said goods. Omnibus registration is not contemplated by the
Trademark Law. The net result of the decision is that SPI may
hold on its Bayer trademark for medicines and FBA may
continue using the same trademarks for insecticide and other
chemicals, not medicine. The formula fashioned by the lower
court avoids the mischief of confusion of origin, and does not
visit FBA with reprobation and condemnation. A statement
that its product came from Germany anyhow is but a
statement of fact.
Mirpuri vs Court of Appeals
G.R. No. 114508 November 19, 1999
318 SCRA 516
FACTS:
Lolita Escobar applied with the Bureau of Patents for the
registration of the trademark “Barbizon”, alleging that she had
been manufacturing and selling these products since 1970. private
respondent Barbizon Corp opposed the application in IPC No. 686.
The Bureau granted the application and a certificate of registration
was issued for the trademark “Barbizon”. Escobar later assigned all
her rights and interest over the trademark to petitioner Mirpuri. In
1979, Escobar failed to file with the Bureau the Affidavit of Use of
the trademark. Due to his failure, the Bureau cancelled the
certificate of registration. Escobar reapplied and Mirpuri also
applied and this application was also opposed by private
respondent in IPC No. 2049, claiming that it adopted said
trademark in 1933 and has been using it. It obtained a certificate
from the US Patent Office in 1934. Then in 1991, DTI cancelled
petitioner’s registration and declared private respondent the
owner and prior user of the business name “Barbizon
International”.
ISSUE:
Whether or not the treaty (Paris Convention) affords
protection to a foreign corporation against a Philippine applicant
for the registration of a similar trademark.
HELD:
The Court held in the affirmative. RA 8293 defines trademark
as any visible sign capable of distinguishing goods. The Paris
Convention is a multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs,
trademarks, service marks, trade names and indications of source
or appellations of origin, and at the same time aims to repress
unfair competition. In short, foreign nationals are to be given the
same treatment in each of the member countries as that country
makes available to its own citizens. Nationals of the various
member nations are thus assured of a certain minimum of
international protection of their industrial property.
Emerald garments vs. CA
FACTS:
Private respondent H.D. Lee Co., Inc., a foreign corporation, filed
with the Bureau of Patents, Trademarks & Technology Transfer
(BPTTT) a Petition for Cancellation of Registration No. SR 5054 for
the trademark “STYLISTIC MR. LEE” used on clothing and lingerie
issued in the name of petitioner Emerald Garment Manufacturing
Corp., a domestic corporation organized and existing under
Philippine laws.
Petitioner contended that its trademark was entirely and
unmistakably different from that of private respondent and that its
certificate of registration was legally and validly granted.
The Director of Patents found private respondent to be the prior
registrant of the trademark “LEE” in the Philippines and that it had
been using said mark in the Philippines.
Moreover, the Director of Patents, using the test of dominancy,
declared that petitioner’s trademark was confusingly similar to
private respondent’s mark because “it is the word ‘Lee’ which
draws the attention of the buyer and leads him to conclude that
the goods originated from the same manufacturer. It is undeniably
the dominant feature of the mark.”
Petitioner appealed to the CA which in turn affirmed the decision
of the Director of Patents.
ISSUE:
Whether or not petitioner’s trademark Stylistic Mr. Lee, is
confusingly similar with the private respondent’s trademark Lee or
Lee-Rider, Lee-Leens and Lee-Sures.
RULING:
NO. Applying the foregoing tenets to the present controversy and
taking into account the factual circumstances of this case, we
considered the trademarks involved as a whole and rule that
petitioner’s “STYLISTIC MR. LEE” is not confusingly similar to private
respondent’s “LEE” trademark.
Petitioner’s trademark is the whole “STYLISTIC MR. LEE.” Although
on its label the word “LEE” is prominent, the trademark should be
considered as a whole and not piecemeal. The dissimilarities
between the two marks become conspicuous, noticeable and
substantial enough to matter especially in the light of the following
variables that must be factored in.
For lack of adequate proof of actual use of its trademark in the
Philippines prior to petitioner’s use of its own mark and for failure
to establish confusing similarity between said trademarks, private
respondent’s action for infringement must necessarily fail.
Gabriel-Almoradie v CA, G.R. No. 91385, January 4, 1994
Facts: In 1953 when the late Dr. Jose Perez discovered beauty soap
for bleaching which whitens or sometimes softens the skin. A
certificate of label approval was issued in his name by the Bureau
of Health on June 6, 1958 for the said product with the label
reading "Dr. Perez' Wonder Beauty Soap." Not surprisingly, he later
developed an improved formula for his soap after continued
laboratory experimentation, for which he obtained another
certificate of label approval from the Bureau of Health on August
10, 1959, also describing the product as "Dr. Perez Wonder Beauty
Soap.”
He entered into an agreement on January 1959 with a certain
company named Manserco. This venture, however, did not last
long, as the corporation allegedly went bankrupt. He then
terminated his agreement with Manserco and forged an "Exclusive
Distributorship Agreement" with Crisanta Y. Gabriel, who
happened to be the sister of Mariano S. Yangga. A series of legal
battles transpired thereafter between them in the Patent and
Trademark Office, the trial court, the Court of Appeals and this
Court.
On October 3, 1960, Gabriel filed an application with the Patent
Office to register the trademark "WONDER." Said application was
denied on the ground that Gabriel was not the owner of the
trademark sought to be registered and that as shown in the labels
submitted, it appeared that Dr. Jose R. Perez is the owner of the
said mark. On the other hand, on May 11, 1961, Perez obtained in
his name a certificate of registration No. SR-389 covering the same
trademark "WONDER" for beauty soap.
Issue: Whether or not Gabriel has better right to the mark
“WONDER”
Ruling: NO. Ultimately, what draws the axe against petitioners is
the principle of "first to use" on which our Trademark Law is based.
We have said and reiterated in the case of La Chemise Lacoste v.
Fernandez, that:
The purpose of the law protecting a trademark cannot be
overemphasized. They are to point out distinctly the origin of
ownership of the article to which it is affixed, to secure to him, who
has been instrumental in bringing into market a superior article of
merchandise, the fruit of his industry and skill, and to prevent fraud
and imposition.
Sec. 2 of R.A. 166 states that as a condition precedent to
registration the trademark, trade name or service marks should
have been in actual use in commerce in the Philippines before the
time of the filing of the application. A careful perusal of the record
shows that although Go Hay, assignor of Gabriel, first registered the
trademark "Wonder GH" on October 17, 1958 while the
registration of the trademark "WONDER" in the name of Dr. Perez
was registered in the Supplemental Register on May 11, 1961 and
then the Principal Register on January 3, 1978, the certificate of
registration issued to Go Hay showed that the mark "Wonder GH"
was first used on July 1, 1958, while that of the mark "WONDER" in
favor of Dr. Perez was recorded to have been in use since March 3,
1953, or five (5) years prior to Go Hay's use. Thus, all things being
equal, it is then safe to conclude that Dr. Perez had a better right
to the mark "WONDER." The registration of the mark "Wonder GH"
should have been cancelled in the first place because its use in
commerce was much later and its existence would likely cause
confusion to the consumer being attached on the product of the
same class as that of the mark "WONDER."
American Wire & Cable Company vs Director of Patents
GR No. L-26557, February 18, 2970
FACTS:
In 1962, Central Banahaw Industries, applied with the Director of
Patents for registration of the trademark DYNAFLEX and Device to
be used in connection with electric wires.
The American Wire and Cable Company, authorized user since
1958 of registered trademark DURAFLEX and Globe representation,
for electric wires, apparatus, machines and supplies, opposed the
application on the ground that applicant’s use of the trademark
DYNAFLEX would cause confusion or result in mistake to
purchasers.
ISSUE:
Whether or not the mark DYNAFLEX and Device is registrable as
label for electric wires, considering that the trademark DURAFLEX
and Globe representation also for electric wires has been
registered more than 4 years earlier.
RULING:
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.
Earlier ruling of the Court seem to indicate its reliance of the
dominancy test or the assessment of the essential or dominant
features in the competing labels to determine whether they are
confusingly similar. On this matter, the Court said:
“xxx 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.
xxx”
The similarity between the competing trademarks, DURAFLEX and
DYNAFLEX, is apparent.
RF & J Alexander v. Ang, G.R. No. L-6707
Facts: The record shows that in two separate complaints, filed
in Negros Occidental, the plaintiffs sued defendants for selling
sewing thread named "Aurora," "Mayflower" and "Agatonica"
with labels and in boxes, which in color design and general
aspect closely resembled those of the thread "Alexander"
manufactured in Scotland by R. F. & J. Alexander Co., Ltd.,
and distributed in the Philippines by Ker & Co. Ltd., for the last
50 years.
The defendants, denying the similarity, and disclaiming any
intention to deceive the public or defraud the plaintiffs, set up
two specific defenses: (1) they were sellers — not
manufacturers; (2) the trade names "Aurora" et al. had been
duly registered.
Issues:
a) WON the test of unfair competition lies in the possibility of
deception of the intelligent and not the ignorant buyer;
(b) WON an action for unfair competition should be directed
against the manufacturer and not against the seller; and
(c) WON there is no unfair competition when a product is sold
under a registered trademark.
Ruling:
First Issue:
Petitioners assert in their printed brief that the Court of
Appeals erred in holding that the deception or possibility of
deception of intelligent buyers in the test of unfair competition.
Section 29 of Republic Act No. 166 makes guilty of unfair
competition — among others — "any person, who in selling
his goods shall give them the general appearance of goods of
another manufacturer or dealer, either as to the goods
themselves or in the wrapping the packages in which they are
contained, or 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 a
manufacturer or dealer other than the actual manufacturer or
dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another
of his legitimate trade."
It stands to reason that when the law speaks of "purchasers"
it generally refers to ordinary or average purchasers.
It is immaterial that the words Aurora, Agatonica and
Mayflower are different from Alexander. The features and
their appearance are so similar as to cause that confusion
which the rules of unfair competition seek to avoid. And unfair
competition is not confined to the adoption of the same or
similar names.
The use of a trade mark, printed in the same colors and in
form and general appearance so resembling pllaintiff's mark
as to deceive purchasers of the goods, should been joined as
unfair competition. (La Yebana Co. vs. Chua Seco & Co., 14
Phil 534.) It is not necessary that the same words were used.
(Sapolin Co. vs. Balmaceda, 67 Phil. 705.)
In Brook Bros. vs. Froelich, 8 Phil. 580, this Court found unfair
competition in the labelling and selling of cotton thread.
Facsimiles of the competing labels are therein reproduced. By
comparison, petitioners' case here is very much better.3
Second Issue:
There is no merit to the contention, because section 29
hereinabove partly quoted makes liable for the imitation of
goods not only the manufacturer but also the vendor. It reads
in part:
Any person, who is selling goods shall give them the general
appearance of goods of another manufacturer or dealer, . . .or
any subsequent vendor of such goods or any agent of any
vendor engaged in selling such goods with a like purpose.
Third Issue:
The third defense is that the objected labels have been
registered as trade-marks. We have held in several decisions
that one may be declared unfair competitor even if his
competing trade-mark is registered.4 The registration might in
some way minimize damages against the seller as showing
good faith prima facie. But surely it does not preclude unfair
competitive actions.
Case 13: Lim Hoa v. Director of Patents
No. L-8072; 100 Phil. 215
October 31, 1956
Facts
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. On April 30,
1953, 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.
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.
Issue
Whether 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.
Ruling
Yes. 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 it is necessary that the infringing label
should suggest an effort to imitate (Co. Tiong Sa vs.
Director of Patents, L- 5372, May 24, 1954.)
The two roosters appearing on the trademark of the
applicant and the hen appearing on the trademark of the
oppositor, although of diffirent sexes, belong to the same
family of the 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 rooster. To her,
they are all manok. Therein lies the
confusion, even deception.
SCARVES BY VERA, INC., Plaintiff-Appellant,v.TODO
IMPORTS LTD. (INC.), Defendant-Appellee. No. 769,
Docket 75-7529.
Facts:
Plaintiff Scarves by Vera, Inc. is a well-known and highly
successful fashion designer. Plaintiff designs and
manufactures a line of women's signature scarves, medium-
high fashion women's sportswear, and a variety of dining
room, bedroom and bathroom linens. Defendant Todo Imports
Ltd. is a New York corporation which, since 1970, has been
the exclusive distributor in New York of certain cosmetics and
toiletries manufactured by Vera Perfumeria y Cosmetica, S.A.
of Barcelona, Spain (Vera, S.A.).
Plaintiff commenced this action for trademark infringement
and unfair competition under the Lanham Act of 1946, 15
U.S.C. § 1051 et seq., and under state law. In its complaint,
plaintiff alleged its ownership of the registered trademark
"VERA" on scarves, women's sportswear, and a large variety
of linens. Plaintiff claimed that the defendant had infringed its
trademark by using the mark "VERA" on cosmetics and
toiletries manufactured in Spain by Vera, S.A. and distributed
in the United States by the defendant. Plaintiff sought
injunctive relief, damages and an accounting. Vera, S.A. was
not named as a defendant and has not sought to intervene in
this action.
Issue:
1. WON plaintiff is entitled to protection of its trademark
"VERA" against defendant's use of the name on cosmetics,
perfumes and toiletries?
2. WON defendant's use of the mark "VERA" infringed
plaintiff's trademark?
Ruling:
1. Yes. The trademark laws protect three interests which are
present here: first, the senior user's interest in being able to
enter a related field at some future time; second, his interest
in protecting the good reputation associated with his mark
from the possibility of being tarnished by inferior merchandise
of the junior user; and third, the public's interest in not being
misled by confusingly similar marks a factor which may weigh
in the senior user's favor where the defendant has not
developed the mark himself.
2. Yes. As the district court pointed out, a trademark owner’s
right to relief where the products are non-competitive depends
upon a number of variables including the strength of his mark;
the degree of similarity between the two marks; the proximity
of the products; the likelihood that the prior owner will bridge
the gap; actual confusion; the defendant's good faith in
adopting his mark; the quality of defendant's product and the
sophistication of the buyers.
Plaintiff's "VERA" trademark clearly is a strong mark. Plaintiff's
sales figures, its advertising expenditures and the many
articles written about plaintiff clearly established that plaintiff's
"VERA" trademark was highly successful and widely
recognized in the medium-high fashion market. Our
conclusion that “VERA" is a strong mark is not affected by the
fact that Vera is a common name. We need not decide
whether such a name might provide a weaker mark in other
circumstances, since we think plaintiff has clearly established
secondary meaning entitling it to broad protection of the
"VERA" mark. (Alfred Dunhill of London, Inc. v. Kasser
Distillers Products Corp., supra, 350 F.Supp. at 1358- 60.)
Moreover, even when the mark in question is the name of the
junior user, his right to use the name on his products may be
limited, and he may be compelled to add some distinguishing
words to reduce the possibility of confusion. S. C. Johnson &
Son, Inc. v. Johnson, supra, 116 F.2d at 428-29
Esso Standard vs CA
G.R. No. L-29971
Facts:
The petitioner’s contention was that it had been
for many years engaged in the sale of petroleum
products and its trademark ESSO had acquired a
considerable goodwill to such an extent that the buying
public had always taken the trademark ESSO as
equivalent to high quality petroleum products.
Petitioner asserted that the continued use by private
respondent of the same trademark ESSO on its
cigarettes was being carried out for the purpose of
deceiving the public as to its quality and origin to the
detriment and disadvantage of its own products.
In its answer, respondent admitted that it used
the trademark ESSO on its own product of cigarettes,
which was not identical to those produced and sold by
petitioner and therefore did not in any way infringe on
or imitate petitioner's trademark. Respondent
contended that in order that there may be trademark
infringement, it is indispensable with the mark must be
used by one person in connection or competition with
goods of the same kind as the complainant’s.
Issue:
Whether or not there was trademark
infringement?
Held:
No.
Ruling:
The Court affirms on the basis of controlling
doctrine the appealed decision of the Court of Appeals
reversing that of the Court of First Instance of Manila
and dismissing the complaint filed by herein petitioner
against private respondent for trade infringement for
using petitioner's trademark ESSO, since it clearly
appears that the goods on which the trademark ESSO
is used by respondent is non-competing and entirely
unrelated to the products of petitioner so that there is
no likelihood of confusion or deception on the part of
the purchasing public as to the origin or source of the
goods.
The Court said that in this case the goods are
obviously different from each other - with "absolutely
no iota of similitude". They are so foreign to each other
as to make it unlikely that purchasers would think that
petitioner is the manufacturer of respondent's goods.
The mere fact that one person has adopted and used a
trademark on his goods does not prevent the adoption
and use of the same trademark by others on unrelated
titles of a different kind. Petitioner uses the trademark
ESSO and holds certificate of registration of the
trademark for petroleum products while respondent's
business is solely for the manufacture and sale of the
unrelated product of cigarettes. Another factor that
shows that the goods involved are non-competitive and
non-related is that they flow through different channels
of trade. The (petitioner's) products are distributed
principally through gasoline service and lubrication
stations, automotive shops and hardware stores. On the
other hand, the (respondent's) cigarettes are sold in
sari-sari stores, grocery stores, and other small dis-
tributor outlets. (Respondent's) cigarettes are even
peddled in the streets while (petitioner's) 'gasul' burners
are not. Finally, there is a marked distinction between
oil and tobacco, as well as between petroleum and
cigarettes. Evidently, in kind and nature the products
of (respondent) and of (petitioner) are poles apart."
CHUA CHE vs. PHILIPPINE PATENT OFFICE and SY
TUO
G.R. No. L-18337. January 30, 1965
Facts:
On October 30, 1958, Chua Che presented with the
Philippines Patent Office a petition for the registration
in his favor the trade name of "X-7". Chua Che declares
that the trade name was used by him in commerce
within the Philippines on June 10, 1957, and had been
continuously used by him in trade in the Philippines for
more than one year.
Sy Tuo opposed, claiming that he owns the trademark
and had been using it since 1951 as mark for perfume,
lipstick, and nail polish as opposed to Chua Che's use
which was admittedly only in 1957.
The Director of Patents denied the application for use
on soap Class 51, being manufactured by said Chua
Che, upon the opposition of respondent Sy Tuo. The
Director of Patents held that 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.
Issue:
WON allowing Chua Che to register the same mark for
laundry soap would likely to cause confusion on the
purchasers of X-7 products by SY Tou.
Ruling:
Yes. 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
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 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.
DIVISION
[ GR No. L-44707, Aug 31, 1982 ]
HICKOK MANUFACTURING CO. v. CA*
Facts:
Petitioner is a foreign corporation and all its products are
manufactures by Quality House Inc. The latter pays royalty to
the petitioner. Hickok registered the trademark 'Hickok' earlier
and used it in the sale of leather wallets, key cases, money
folds, belts, men’s underwear, neckties, hankies, and men's
socks. While Sam Bun Liong used the same trademark in the
sale of Marikina shoes. Both products have different channels
of trade. The Patent Office did not grant the registration, but
the Court of Appeals reversed the PPO decision.
Issue: Is there infringement in this case?
Ruling:
NONE. Emphasis should be on the similarity of the products
involves and not on the arbitrary classification or the general
description of their properties or characteristics. Also, the
mere fact that one person has adopted and used a trademark
on his goods does not prevent the adoption and use of the
same by others on unrelated articles of different kind.
There is a different design and coloring of the trademark itself.
The 'Hickok' trademark is in red with white background in the
middle of 2 branches of laurel (in light gold) while the one used
by Sam Bun Liong is the word 'Hickok ' in white with gold
background between 2 branches of laurel in red with the word
'shoes' also in red placed below the word 'Hickok'.
FABERGE INC., VS. IAC & CO BENG KAY
G.R. NO. 711894
November, 1992
PONENTE: Melo, J.
FACTS:
Petitioner Faberge manufactures and sells after-shave lotion,
shaving cream, deodorant, toilet soap, etc. under its
registered trademark ‘BRUT’. On the other hand, respondent
Co Beng Kay manufactures and sells briefs under the
trademark ‘BRUTE.’
Petitioner tried to oppose the registration by respondent of the
trademark ‘BRUTE’ for being confusingly similar with
petitioner’s ‘BRUT’ but Director of Patents denied such
opposition observing that considering the overall appearance
of both trademarks, there are glaring differences which would
unlikely cause a confusion among customers.
On appeal, the CA initially ruled in favor of petitioner stating
that the products of the petitioner and the respondent have
the same outlet (e,g, ‘Men’s accessories’ in a department
store). Thus, even if the trademark ‘BRUTE’ was only applied
for briefs, the similarity of the same with ‘BRUT’ would likely
cause confusion to the buying public.
On respondent’s motion for reconsideration, the CA reversed
itself in favor of respondent relying on
the ESSO and PRC cases wherein the SC ruled that identical
trademark can be used by different manufacturers for
products that are non-competing and unrelated. Hence, this
appeal.
Petitioner argues that the ruling in Teodoro which was
reiterated in Sta. Ana where the SC ruled that a registration
may be opposed if the junior user’s goods (Co Beng Kay’s in
this case) are not remote from any product that the senior user
(Faberge) would be likely to make or sell. To bolster this
argument, petitioner presented an alleged application of the
trademark ‘BRUT 33 Device’ for briefs.
ISSUE: WON the respondent is permitted to use the
trademark ‘BRUTE’ for briefs.
RULING: YES. The provisions applicable to this case are the
following:
Sec. 4. Registration of trade-marks, trade-names and
service-marks on the principal register. —
. . . The owner of trademark, trade-name or service-mark used
to distinguish his goods, business or services from the goods,
business or services of others shall have right to register the
same on the principal register, unless it:
xxx xxx xxx
4(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.
xxx xxx xxx
Sec. 20. Certificate of registration prima facie evidence of
validity. — A certificate of registration of a mark or trade-name
shall be prima facie evidence of the validity of the registration,
the registrant's ownership of the mark or trade-name, and of
the registrant's exclusive right to use the same in connection
with the goods, business or services specified in the
certificate, subject to any conditions and limitations stated
therein.
It is not difficult to discern from the foregoing statutory
enactments that private respondent may be permitted to
register the trademark "BRUTE" for briefs produced by it
notwithstanding petitioner's vehement protestations of unfair
dealings in marketing its own set of items which are limited to:
after-shave lotion, shaving cream, deodorant, talcum powder
and toilet soap. In as much as petitioner has not ventured in
the production of briefs, an item which is not listed in its
certificate of registration, petitioner cannot and should not be
allowed to feign that private respondent had invaded
petitioner's exclusive domain. To be sure, it is significant that
petitioner failed to annex in its Brief the so-called "eloquent
proof that petitioner indeed intended to expand its mark
"BRUT" to other goods. Even then, a mere application by
petitioner in this aspect does not suffice and may not vest an
exclusive right in its favor that can ordinarily be protected by
the Trademark Law. In short, paraphrasing Section 20 of the
Trademark Law as applied to the documentary evidence
adduced by petitioner, the certificate of registration issued by
the Director of Patents can confer upon petitioner the
exclusive right to use its own symbol only to those goods
specified in the certificate, subject to any conditions and
limitations stated therein.
Case: George W. Luft Co., vs. Ngo Guan. No. L-21915,
December 17, 1966
Facts:
Petitioner, George W. Luft Co., Inc. – a foreign
corporation organized under the laws of State of New York is
the owner of the Trademark “Tangee”, which has allegedly
used since February 28, 1928, and is covered by Certificate of
Registration No. 2178-S of the Philippine Patent Office. On
January 22,1959, Ngo Guan applied for the registration of the
trademark “Tango”, which he claims to have used since June
1958. Petitioner objected thereto alleging that “Tango” is
likely to be mistaken for “Tangee,” upon the ground that the
two trademarks are confusingly similar.
Issue :
Whether or not the “Tango” trademark is confusingly
similar with the “Tangee” trademark as contented by the
petitioner?
Ruling:
No. One of the factors essential in determining
whether two trademarks are confusingly similar is whether
or not there is a general similarity in their appearance which
cannot be determined with reasonable certainty without
physical examination and comparison thereof. Petitioner has
rendered such examination impossible, by not introducing
evidence whatsoever as to the appearance of the “Tangee”
trademark. Moreover, the word “Tango” has a well-
established meaning, for it describes a particular dance that
is well known in the Philippines. In fact, respondent’s label
includes the picture of a man and a woman dancing.
Furthermore, “Tango” is used by Ngo Guan for no other
product than hair pomade, in which petitioner does not deal
with.
CORPORATION VS DAWAY
Facts:
Respondents Montres Rolex and Rolex Centre Phil,
owners/proprietors of Rolex and Crown Device, filed a cpmplaint
for trademark infringement alleging petitioner adopted and used
without authority the mark “ROLEX” in its business name Rolex
Music Lounge. Petitioner argued that there is no trademark
infringement since no confusion would arise by the use of Rolex
considering that its entertainment business is totally unrelated to
respondent”s business or products such as watches,clock, etc.
Issue:
Whether or not there was likelihood of confusion arises on the
use of identical marks over unrelated business.
Held:
Yes, Under the old trademark Law where the goods for which
the identical marks are used are unrelated, there can be no
likelihood of confusion and there is therefore no infringement in
the use by junior user of the registered mark on the entirely
different goods. This ruling however, has been to some extent,
modified by Section 123.1(f) of the Intellectual Property Code. A
junior user of a well-known mark goods or services which are not
similar to the goods or services and are therefore unrelated, to
those specified in the certificate of registration of a well-known
brand/mark is precluded from using the same on the entirely
unrelated goods or services.
FRUIT OF THE LOOM INCN., petitioner
vs.
COURT OF APPEALS and GENERAL GRAMENTS
CORPORATION
G.R. No. L- 32747 November 29, 2004
This is a petition for review on certiorari of the decision dated
October 8. 1970 of the former Court of Appeals reversing the
decision of the defunct Court of First Instance of Manila,
Branch Xiv, ordering the cancellation of private respondent’s
registration of the trademark FRUIT OF EVE, enjoining it
permanently from using trademark and ordering it to pay
herein petitioner P10,000.00 as attorney’s fees.
CASE LAW/DOCTRINE:
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.
A comparison between trademarks must be made.
Comparison of the words is not the only determinant factor.
The trademarks in their entirety as they appear in their
respective labels or hang tags must also be considered in
relation to the goods to which they are attached.
FACTS:
Petitioner is a US corporation, with the trademark Fruit of the
Loom. It manufactures undergarments. Respondent is a
domestic corporation, with the trademark Fruit for Eve. It
also manufactures undergarments. Petitioner filed a case for
cancellation of Respondent's trademark Fruit for Eve. It
alleges there is colorable imitation as regards the sound
"Fruit" and the appearance of the hang tag consisting of a big
red apple. Petitioner claims that the prominent and
dominant features found in both Petitioner's and
Respondent' trademark are the word "Fruit" and the big red
apple design.
ISSUE:
Whether or not here is confusing similarity to support a claim
of infringement and warrant the cancellation of
Respondent's trademark.
HELD:
NO. There are substantial differences that overcome any
similarities, hence, there is no infringement. 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. A comparison between
trademarks must be made. Comparison of the words is not
the only determinant factor. The trademarks in their entirety
as they appear in their respective labels or hang tags must
also be considered in relation to the goods to which they are
attached. Standing by itself, Fruit of the Loom is wholly
different from Fruit for Eve. The Court does not agree with
Petitioner that the dominant feature of both trademarks is
the word Fruit, for even in the printing of such word in both
hang tags, there is no special emphasis made. As to the
design and coloring scheme of the hang tags, while there are
similarities in the two marks like the red apple, there are
striking differences:
(a) Shape of hang tag: Petitioner's is round, Respondent's is
rectangular
(b) Different designs, apart from red apple
(c) Different colors: Petitioner's is brown, Respondent's is
pink
The similarities of the competing trademarks in this case are
completely lost in the substantial differences in the design
and general appearance of their respective hang tags. The
trademarks are not similar to each other, so as to cause
confusion to consumers. The ordinary purchaser must be
credited with a minimum level of intelligence to be able to
see the obvious differences between the two trademarks.
G.R. No. L-5378 May 24, 1954
CO TIONG SA, vs. DIRECTOR OF PATENTS, respondent,
FACTS:
This is an appeal filed by Co Tiong Sa, applicant for
registration of the trademark "Freedom" and its corresponding
design, against a decision of the Director of Patents sustaining the
opposition thereto of Saw Woo Chiong and Co., and denying the
application. The application in said registration proceeding, now
petitioner in this Court, has used the trademark on undershirts and
T-shirts since March, 1947. The trademark sought to be registered
is "Freedom". The word "Freedom" is in hand print, with a slight to
the right. In the facsimiles attached to the original application,
there are no letters, lines, or figures around the word, but in the
label, the said word is preceded by a triangle, with the letter "F"
inside and small letters "H.L." under. A capital letter "L" is on the
lower right-hand corner; and all of these are enclosed in a rectangle
of double lines. The label is the same word "Freedom" with a capital
letter "M" above it, a flourish under the word "Freedom", and the
words "HIGH QUALITY" thereunder. The label used for boxes is
similar to label, except that the rectangle is in a heavy line and is
longer. The label presented by Saw Woo Chiong and Co., oppositor-
respondent herein, consist of the word "Freeman" in hand print,
with a right slant, above the middle of which is a vignette of a man
wearing a to what, which vignette is preceded by the small word
"The" in print and followed by two parallel lines close to each other,
and the words "PERFECT WEAR" in smaller letters under the word
"FREEMAN". This trademark was registered in 1947 in the Bureau
of Commerce and re-registered in the Patent Office on September
22, 1948. This trademark is used not only on shirts, but also on polo
shirts, undershirts, pajamas, skippers, and T-shirts, although in the
year 1947 Saw Woo Chiong and Co. discontinued manufacturing
skippers and T-shirts on the ground of scarcity of materials. This
trademark has been used since 1938, and it had been advertised
extensively in newspapers, magazines, etc. The applicant-
petitioner claims that in sustaining the objection of the oppositor-
respondent, the Director of Patents erred in its decision.
ISSUE: Whether or not the trademarks are confusingly similar?
RULING:
YES, The Supreme Court held that that name "Lusolin" is
an infringement of the trademark "Sapolin," as the sound of the
two names is almost the same, and the labels of containers being
almost the same in respect to color, size, and other characteristics.
In spite of the fact that the posture and coloring were slightly
different, defendant's labels were declared to constitute an
infringement of plaintiff's labels. After a careful study, the
dominant characteristic of oppositor's trademark "FREEMAN" has
been imitated in applicant's trademark "FREEDOM," such as to
confuse the public and unwary customers and puchasers, and to
deceive them into believing that the articles bearing one label are
similar or produced by the same manufacturer as those carrying
the other label. The decision of the Director of Patents be affirmed.
With respect to the fifth assignment of error (first in petitioner's
brief), it must be remembered that the question of similarity or
dissimilarity while it is a question of opinion, is to be determined
by the court mainly on the basis of the facsimiles or labels or
pictures submitted to the Director of Patents. In the case at bar,
innumerable exhibits were presented to show the similarity.
Similarity or dissimilarity can be determined by the Director of
Patents, or by this Court on appeal, by a mere examination and
comparison of the competing trademarks. Failure on the part of the
oppositor to submit the testimony of witnesses, who are to give
opinions on the alleged similarity or dissimilarity, can not,
therefore, be a ground for a dismissal of an opposition. We hold
that the Director of Patents did not err in denying the motion for
dismissal presented by the applicant upon the failure of the
oppositor to submit witnesses to sustain his opposition.
Phil. Nut Industry, Inc. vs. Standard Brands Inc.
No. L-23035; 65 SCRA 575
July 31, 1975
Facts:
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, filed with the
Director of Patente 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.
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 twotrademarks 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.
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
infrigements of the latter’s trademark rights and justify
its cancellation?
Ruling:
Yes.
Rationale:
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.
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.
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.
Andres Romero vs Maiden Form Brassierre Co., Inc., GR No. L-
18289, March 31. 1964
Facts:
Respondent company, a foreign corporation, filed with respondent
Director of Patents an application for registration (pursuant to
Republic Act No. 166) of the trademark ‘Adagio" for the Brassieres
manufactured by it. In its application, respondent company alleged
that said trademark was first used by it in the United States on
October 26, 1937, and in the Philippines on August 31, 1946, that
it had been continuously used by it in trade in, or with the
Philippines for over 10 years.
Petitioner filed with respondent Director a petition for cancellation
of said trademark, on the grounds that it is a common descriptive
name of an article or substance on which the patent has expired;
that its registration was obtained fraudulently or contrary to the
provision of Section 4, Chapter II of Republic Act No. 166; and that
the application for its registration was not filed in accordance with
the provisions of Section 37, Chapter XI of the same Act. Petitioner
also alleged that said trademark has not become distinctive of
respondent company’s goods or business; that it has been used by
respondent company to classify the goods (the brassieres)
manufactured by it, in the same manner as petitioner uses the
same; that said trademark has been used by petitioner for almost
6 years, that it has become a common descriptive name; and that
it is not registered in accordance with the requirements of Section
37 (a), Chapter XI of Republic Act No. 166.
Issue 1: Whether or not “Adiago” has become a common
descriptive name.
NO. The evidence shows that the trademark "Adagio" is a musical
term, which means slowly or in an easy manner, and was used as a
trademark by the owners thereof (the Rosenthals of Maiden Form
Co., New York) because they are musically inclined. Being a musical
term, it is used in an arbitrary (fanciful) sense as a trademark for
brassieres manufactured by respondent company. As respondent
Director pointed out, "the fact that said mark is used also to
designate a particular style of brassiere, does not affect its
registrability as a trademark. Respondent company’s long and
continuous use of the trademark "Adagio" has not rendered it
merely descriptive of the product.
Issue 2: Whether or not the long continuous use of trademark
renders it descriptive of a product.
This contention is untenable. Said sentence appearing on the
package, standing alone, does not conclusively indicate that the
trademark "Adagio" is merely a style of brassiere. Brassieres are
usually of different types or styles, and appellee has used different
trademarks for every type as shown by its labels, The mere fact that
appellee uses "Adagio" for one type or style, does not affect the
validity of such word as a trademark.
Issue 3: Whether or not respondent Director erred in registering
the trademark in question, despite appellee’s non-compliance with
Section 37, paragraphs 1 and 4(a) of Republic Act No. 166.
library
Section 37 of Republic Act No. 166 can be availed of only where the
Philippines is a party to an international convention or treaty
relating to trademarks, in which case the trade-mark sought to be
registered need not be in use in the Philippines. The applicability of
Section 37 has been commented on by the Director of Patents, in
this wise:jgc:chanrobles.com.
"Trademark rights in the Philippines, without actual use of the
trademark, in this country can, of course, be created artificially by
means of a treaty or convention with another country or countries.
Section 37 of the present Philippine Trademark Law, Republic Act
No. 166, (incorporated as Rule 82 in the Rules of Practice for
Registration of Trademarks) envisions the eventual entrance of the
Philippines into such convention or treaty. It is provided in said
section that applications filed thereunder need not allege use in the
Philippines of the trademark sought to be registered. The
Philippines has, however, not yet entered into any such treaty or
convention and, until she does, actual use in the Philippines of the
trademark sought to be registered and allegation in the application
of such fact, will be required in all applications for original or
renewal registration submitted to the Philippine Patent Office."
(Circular Release No. 8)
Issue 4: Whether or not the registration of the trademark was
fraudulent or contrary to Section 4 of Republic Act No. 166.
There is no evidence to show that the registration of the trademark
"Adagio" was obtained fraudulently by appellee. The evidence on
record shows, on the other hand, that the trademark "Adagio" was
first used exclusively 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 bearing 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.
The use of the trademark by other manufacturers did not indicate an
intention on the part of appellee to abandon it.
G.R. No. L-3952 December 29, 1953
King-Seeley Thermos Co. vs Aladdin Industries, Inc.
321 F.2d 577 (2d Cir. 1963)
Facts:
King-Seeley Thermos Co. began advertising the term
“Thermos” to describe its vacuum-insulated bottle. At first,
Thermos Co. made no attempt to designate the term Thermos
as an indicator of the source of the product rather than a
generic term descriptive of the product. Over the years the
word came to be understood by consumers as a generic term
for vacuum-insulated bottles.
Realizing that the Thermos trademark was in danger of
becoming generic, Thermos Co. campaigned to identify
Thermos as a trademark. The campaign failed.
Aladdin Industries, Inc. (Aladdin) developed its own vacuum-
insulated bottles to be sold as thermos bottles. Thermos Co.
brought a trademark-infringement suit against Aladdin to
enjoin the use of the Thermos trademark. Aladdin argued that
the term thermos had become generic. The district court held
in favor of Aladdin. Thermos Co. appealed the decision.
Issue:
Is the use of the term “Thermos” by Aladdin valid?
Ruling:
The court held that Aladdin may validly use the term “thermos”
because such became part of the public domain. However,
such use is subject to certain conditions in order to protect
Thermos Co.’s exclusive use of the term and prevent
confusion and deception.
The test in identifying whether a term is generic is what the
public's understanding is of the word that it uses. Here, the
public had become accustomed to calling vacuum bottles by the
word "thermos". The two terms had become synonymous over
time. It would then be unfair to restrict Aladdin to use the word
that had become generic despite Thermos Co.’s efforts to protect
the trademark.
MASSO HERMANOS, S.A., Petitioner, vs. DIRECTOR
OF PATENTS, Respondent.
FACTS:
Masso Hermanos, S.A., is the registered owner
of the trademark composed of the word "Cosmopolite"
used on canned fish. Said trademark was first
registered and the certificate of registration issued
therefor by the Director of the Philippine library and
museum for a period of thirty years. A renewal of the
certificate of registration was applied for and issued by
the Director of the Bureau of Commerce.
The petitioner applied to the Director of Patents for a
new certificate of registration of said trademark which
was denied by the examining officer on the ground that
the word "Cosmopolite", as a trademark for canned fish
is descriptive of said goods and, therefore, could not
have been legally registered as a trademark and,
consequently, is not entitled to registration. The
petitioner appealed from said ruling to the Director of
Patents on the ground that the examining officer was
not authorized to re-examine certificates which were
originally issued under Act No. 666 and surrendered for
re-registration under section 41(a) of Republic Act No.
166. The Director of Patents affirmed the ruling of the
trademark examiner; hence, the present petition for
certiorari was filed in his court.
ISSUE:
Whether or not the word “cosmopolite” is descriptive
and therefore, the registration thereunder is not
subsisting.
RULING:
Section 13 of Act No. 666 provides that – “But no alleged
trademark shall be registered which is merely the name,
quality or description of the mechandise upon which it
is to be used. In an application for registration, the
Director of the Bureau of Commerce shall decide the
presumptive lawfulness of claim to the alleged
trademark.”
The word "Cosmopolite" does not give the name, quality
or description of the canned fish for which it is used. It
does not even describe the place of origin, for it does not
indicate the country or place where the canned fish was
manufactured. It is a very general term which does not
give the kind or quality of the goods.
The court is, therefore, of the opinion that the
registration of the trademark "Cosmopolite" under Act
No. 666 was valid and is subsisting. The Director of
Patents should not for light and unsubstantial reasons
reverse the ruling of the former officer in charge of
trademark registration, which has been accepted and in
force since 1917 up to the present.
UNNO COMMERCIAL ENTERPRISES, INC. VS GENERAL MILLING
CORPORATION
G.R. NO. L-28554 February 28, 1983
FACTS:
Respondent General Milling Corp. filed an application for the
registration of the trademark “All Montana” to be used in the sale
of wheat flour. As the same trademark had been previously
registered in favor of Unno, the Chief Trademark Examiner
declared an interference proceeding between General Milling’s
application as Junior/Party-party has previously adopted and used
the trademark “All Montana”. General Milling Corp. alleged that it
has been using the trademark and subsequently was licensed to
use the same by Centennial Mills Inc. by virtue of a Deed of
Assignment. Unno Commercial Enterprise argued on the other
hand that the same trademark has been registered in its favor
asserting that its started using the trademark as indentor or broker
for S.H. Huang Bros & Co., a local firm. Unno contends that various
shipments, invoices and correspondence of Centennial Mills Inc.,
shipping thousands of bags of wheat flour bearing the trademark
“All Montana” were shown by petitioner and maintained that
anyone, whether he is only an importer, indentor or broker can
appropriate, use and own a particular mark of its own choice
although he is not the manufacturer of the goods he deals with.
General Milling Corp. is adjudged as prior user of the trademark ALL
MONTANA, but because it is primarily geographically descriptive,
the application is remanded to the Chief Trademark Examiner for
proper proceeding before issuance of the certificate of registration.

ISSUE:
Whether or not UNNO, as a mere indentor can apply for the
registration of the trademark of its principal/negative. Only
owners of the trademark can apply for its registration.
RULING:
When the applicant is not the owner of the trademark being
applied for, he has no right to apply for the registration of the same.
Under the Trademark Law, the trademark, trade name or service
mark used to distinguish his goods, business or service from the
goods, business or service of others is entitled to register the same.
The term owner does not include the importer of the goods
bearing the trademark, trade name, service mark, or other mark
of ownership, unless such importer is actually the owner thereof in
the country from which the goods are imported. A local importer
however, may make application for the registration of a foreign
trademark, trade name or service mark if he is duly authorized by
the actual owner of the name or other mark of ownership. The
Deed of Assignment itself constitutes sufficient proof of General
Milling Corporation's ownership of the trademark "All
Montana," showing that Centennial Mills was a corporation duly
organized and existing under and by virtue of the laws of the State
of Oregon, U.S.A. and the absolute and registered owner of
several trademarks for wheat flour all of which were assigned by it
to respondent General Milling Corporation. Unno Commercial
Enterprises Inc. merely acted as exclusive distributor of All
Montana wheat flour in the Philippines. The Senior Party could
not be regarded as having used and adopted it, and had no right to
apply for its registration. A mere importer and distributor acquires
no rights in the mark used on the imported goods by the foreign
exporter in the absence of an assignment of any kind. Trademarks
used and adopted on goods manufactured or packed in a foreign
country in behalf of a domestic importer, broker, or indentor and
distributor are presumed to be owned by the manufacturer or
packer, unless there is a written agreement clearly showing that
ownership vests in the importer, broker, indentor or distributor.
The Court affirms respondent Director of Patent's decision
declaring respondent General Milling Corporation as the prior user
of the trademark "All Montana" on wheat flour in the Philippines
and ordering the cancellation of the certificate of registration for
the same trademark previously issued in favor of petitioner Unno
Commercial Enterprises, Inc.
Conrad v. CA
G.R. No. 115115 | 246 SCRA 691 | July 18, 1995
Petitioner: CONRAD AND COMPANY, INC.
Respondents: CA, FITRITE INC., and VICTORIA BISCUITS
CO., INC.
FACTS
1. FITRITE, INC. and VICTORIA BISCUIT CO., INC., both
domestic corporations, are engaged in manufacturing,
selling and distributing biscuits and cookies bearing the
trademark "SUNSHINE" in the Philippines.
2. CONRAD AND COMPANY is also engaged in importing,
selling and distributing biscuits and cookies in the
Philippines.
3. In April 1982, FITRITE filed in the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT)
applications for registration of the trademark "SUNSHINE,"
both in the Supplemental and Principal Registers, to be
used on biscuits and cookies. Since March 31, 1981
FITRITE had exclusively used this trademark in the
concept of owner on its biscuits and cookies.
o On May 20, 1983, Supplemental Register was Approved
o On March 22, 1990, Principal Register was Approved
4. On May 20, 1990, FITRITE discovered that CONRAD had
been importing, selling and distributing biscuits bearing its
trademark in Philippines. Being acts of infringement and
unfair competition, FITRITE filed an action for injunction
with damages.
5. CONRAD filed a motion to dismiss on the grounds of the
doctrine of primary jurisdiction and failure to state the
cause of action.
6. Trial Court granted the motion to dismiss. Held that
CONRAD having been granted distributorship by
Sunshine Biscuits USA over Philippine territory it follows
that the resolution of the issue with respect to the
ownership of Sunshine Biscuits which is the basis of
FITRITE’s claim is lodged under the exclusive jurisdiction
of the BPTTT.
7. Court of Appeals reversed the decision of the Trial
Court. It held that No evidence had been introduced to
show that “SUNHINE” trademark has been registered in
the USA. Hence, unless and until FITRITE’s certificate as
registrant of the said trademark cancelled by BPTTT, the
trademark belongs to FITRITE.
8. CA also ordered the trial court to proceed with the case
for "injunction with damages" filed by FITRITE
notwithstanding the pendency of an administrative case
for the cancellation.
ISSUE/S
1. W/N the Trial Court may proceed with the infringement
case despite the pendency of Administrative case for
cancellation.
RULING & RATIO
1. YES.
2. While an application for the administrative
cancellation of a registered trademark on any of the
grounds enumerated in Sec. 176 of RA 166, falls
under the exclusive cognizance of BPTTT,
HOWEVER, action for infringement or unfair
competition, as well as the remedy of injunction
and relief for damages, is explicitly and
unquestionably within the competence and
jurisdiction of ordinary courts.
3. FITRITE are the holder of the Principal Register for
the questioned trademark. Registration in the
Principal Register gives rise to a presumption of
validity of the registration and of the registrant's
ownership and right to the exclusive use of the mark.
It is precisely such a registration that can serve
as the basis for an action for infringement.
4. An application with BPTTT for an administrative
cancellation of a registered trade mark cannot per
se have the effect of restraining or preventing the
courts from the exercise of their lawfully
conferred jurisdiction.
DISPOSITION
WHEREFORE, the petition for review is DENIED for lack of
merit, and the questioned amended decision of the Court of
Appeals is AFFIRMED. Costs against petitioner.
Kabushi Kaisha Isetan v. Intermediate Appellate Court
G.R. No. 75420 November 15, 1991

Facts:
Petitioner Kabushi Kaisha Isetan is a foreign
corporation organized and existing under the laws of Japan.
Private respondent, Isetann Department Store, on the other
hand, is a domestic corporation organized and existing under
the laws of the Philippines.

In 1980, the petitioner filed with the Phil. Patent

Office two (2) petitions for the cancellation of Certificates of
Supplemental Registration. It alleged that private
respondent’s act of registering a trademark which is exactly
the same as its trademark and adopting a corporate name
similar to that of the petitioner were with the illegal and
immoral intention of cashing in on the long established
goodwill and popularity of the petitioner’s reputation,
thereby causing great and irreparable injury and damage to
it. It also filed with the Securities and Exchange Commission
(SEC) a petition to cancel the mark “ISETAN” as part of the
registered corporate name of Isetann Department Store, Inc.

Issue:
Whether Kabushi Kaisha Isetan has the right to seek
cancellation of the word “Isetan” from the corporate name of
Isetann Department Store.

Ruling:
No. Kabushi Kaisha Isetan has no right to seek
cancellation of the word “Isetan” from the corporate name of
Isetann Department Store.

A fundamental principle of Philippine Trademarks

Law is that actual use in commerce in the Philippines is a
prerequisite to the acquisition of ownership over a trademark
or a tradename.

The records show that the petitioner has never

conducted any business in the Philippines. It has never
promoted its tradename or trademark in the Philippines. It
has absolutely no business goodwill in the Philippines. It is
unknown to Filipinos except the very few who may have
noticed it while travelling abroad. It has never paid a single
centavo of tax to the Philippine government. Therefore, it has
no right to the remedy it seeks.

Submitted by: Emmy Lou Tolin