G.R. No.

L-14761 January 28, 1961

ARCE SONS AND COMPANY, petitioner, vs.
SELECTA BISCUIT COMPANY, INC., ET AL., respondents.
BAUTISTA ANGELO, J.:

Facts:
Ramon Arce, predecessor-in-interest of herein petitioner, started a milk business in 1933 using the name “SELECTA”
as trade-name as well as trade-mark. He sold his milk products in bottles covered with caps on which the words
“SELECTA FRESH MILK” were inscribed. For the span of more than 20 years, his business expanded and sold, in
addition to his milk product, ice cream, sandwiches and other food products. His products were packaged in a special
containers with the word ”SELECTA” written in the packaging. Several new products were eventually added to his
line of products such as biscuits, bakery items, and assorted cakes and pastries. The word “SELECTA” was even
written on the signboards of his business establishments and upon the vehicles that were used for the delivery of his
products. Then his business was acquired by petitioner Arce Sons and Co. which eventually put a first class
restaurant aside from the manufacture of the aforementioned food products.

Herein respondent on the other hand, was organized and registered as corporation under the name and style
of Selecta Biscuits Co., Inc. The name Selecta was chosen by the Chinese organizers of the corporation as a
translation of a Chinese word “Ching Suan.” Its business started as a biscuit factory and its products such as biscuits
and crackers were specially wrapped in cellophane pouches and place inside a tin can. Such products of the
respondent were sold throughout the Philippines. The respondent filed a petition with the Philippine Patent Office
for the registration of the word “SELECTA” as trade-mark to be use in its bakery products. The petition was referred
to an examiner for evaluation who found out that the trademark sought to be registered resembles the word
“SELECTA” used by the petitioner so that its use by the respondent will cause confusion as to the origin of their
respective goods. So the examiner recommended for the disapproval of the application. However, Patent Office
only ordered the publication of the application.

In due time, petitioner filed an opposition to the registration on the ground that the mark “SELECTA” has
been continuously used by it from the time of its organization and even prior thereto by Ramon Arce, thus the said
mark has already become identified with its name and business. Petitioner also contend that the use of SELECTA by
the respondents as trademark constitutes as an unfair competition with its products thus resulting in confusion in
trade and that the product of the respondent might be mistaken by the public as its products.

The Director of Patents rendered a decision dismissing petitioner’s opposition stating that the registration of
the trade-mark SELECTA in favour of the respondent will not cause confusion or mistake nor will deceive the
purchasers as to cause damage to petitioner. Hence, this present petition for review.

Issue:
Whether or not the use of the trade-mark “SELECTA” by the respondent will result confusion to the prejudice of Arce
Sons and Co.

Held:
Yes. Trademark is a distinctive mark of authenticity through which the merchandise of a particular producer or
manufacturer may be distinguished from that of others, and its sole function is to designate distinctively the origin of
the products to which it is attached. Verily, the word “SELECTA” has been chosen by petitioner and has been
inscribed on all its products to serve not only as a sign or symbol that may indicate that they are manufactured and
sold by it but as a mark of authenticity that may distinguish them from the products sold and manufactured by other
merchants or businessmen. The word 'SELECTA', it is true, may be an ordinary or common word in the sense that
may be used or employed by any one in promoting his business or enterprise, but once adopted or coined in
connection with one's business as an emblem, sign or device to characterize its products, or as a badge of
authenticity, it may acquire a secondary meaning as to be exclusively associated with its products and business. In
this sense, its used by another may lead to confusion in trade and cause damage to its business. And this is the
situation of petitioner when it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its protection and
guarantees its used to the exclusion of all others. Thus, the Director of Patent committed an error in dismissing the
opposition of the petitioner and in holding that the registration of the trademark “SELECTA” in favour of respondent
will not cause damage to petitioner.

Decision of the Director of Patent office is reversed.

 G.R. No. L-48226 December 14, 1942
ANA L. ANG, petitioner, vs.
TORIBIO TEODORO, respondent.
OZAETA, J.:

Facts:
Toribio Teodoro, herein respondent, has continuously used “Ang Tibay,” both as trademark and as a tradename, in
the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. From the time he started his business
until 1938, his business expanded to such proportions that his gross sales increased to millions. On the other hand,
Ana Ang herein petitioner, established a factory to manufacture pants and shirts with a brand name “Ang Tibay.” She
likewise registered the name trademark “Ang Tibay” for the said articles. Teodoro filed a complaint against Ana Ang
for using the same trademark that he has been using since 1910. The trial judge dismissed the complaint on the
grounds that the two trademarks were dissimilar and were used on different and non-competing goods; and that
there has been no exclusive of the trademark by Teodoro. Not satisfied with the judgement of the lower court
Teodoro appealed where the judgment of the trial court was reversed and ordered for the cancellation of the
registration of the trademark “Ang Tibay” in favour of Ana Ang on the grounds that by uninterrupted and exclusive
use of such trademark by Teodoro has acquired a secondary meaning and that the goods or articles on which the
two trademarks were similar and belong to the same class. Hence, this present petition for certiorari wherein the
petitioner contended that the phrase “Ang Tibay” is merely a descriptive term which may not bar its registration as a
trademark and that such phrase did not acquire a secondary meaning which the respondent may have an exclusive
use of such trademark.

Issue:
Whether or not Ana Ang can register the trademark “Ang Tibay for her products pants and shirts.

Held:
No. “Ang Tibay” is a descriptive term within the meaning of the Trademark Law but rather a fanciful or coined phrase
which may properly and legally appropriated as a trademark or trade name. The Court finds that “Ang Tibay,” as
used by the respondent to designate his wares, had exactly performed that function for 22 years before the
petitioner adopted it as a trademark in her own business. Ang Tibay shoes and slippers are, by association, known
throughout the Philippines as products of the Ang Tibay factory owned and operated by the respondent Toribio
Teodoro.

Petitioner contend that the appellate court erred in holding that the phrase “Ang Tibay” has acquired a
secondary meaning which gives the respondent a right to exclusive appropriation of such phrase. The Court
disagrees with the petitioner. The doctrine of secondary meaning suggests that a word or phrase originally incapable
of exclusive appropriation with reference to an article of the market, because geographically or otherwise, 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. The application of the secondary meaning made by the Court of Appeals could be fully sustained because
by the respondent’s long and exclusive use of said phrase with reference to his products and his business, it has
acquired a proprietary connotation.

Judgement of the Court of Appeals is affirmed.

 G.R. No. 91332 July 16, 1993
PHILIP MORRIS, INC., BENSON & HEDGES (CANADA), INC., AND FABRIQUES OF TABAC REUNIES, S.A., petitioners
vs.
THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION, respondents.
MELO, J.:

Facts:
Herein petitioner Philip Morris Inc., is a corporation registered under the laws of Virginia, USA and the two other
petitioners are the affiliates of said corporation all of which are not doing any business here in the Philippines. They
are the registered owners of the labels Mark VII, Mark Ten and Lark, all are cigarette products. On the other hand,
respondent Fortune Tobacco Corp., is a corporation organized under the Philippine which manufactures and sells
cigarettes using the same brand name “Mark” in one of its products. This controversy arose when petitioners filed a
suit against the respondent alleging that the trademark “Mark” may not be used by the respondent because such
trademark is exclusively owned by it and that the continuous manufacture and sale of the cigarettes of the same
trademark by the respondent would cause an irreparable injury or damage to it. Pending the resolution of the case
on its merits, petitioners prayed for the issuance of a writ of preliminary injunction to preclude the respondent from
performing any of the acts complained of. On the other hand, for its defense, respondent contends that since
petitioners are not doing business in the Philippines coupled with the fact that the Director of Patents has not denied
their pending application for registration of its trademark “MARK”, the grant of preliminary injunction is premature.
The trial court denied the petitioner’s prayer for injunction. On appeal, the appellate court initially set aside the
decision of the lower, but eventually lifted said injuction. Hence, this present petition.

Issue:
Whether or not Fortune Tobacco could be precluded from manufacturing and selling cigarettes with a trademark
“MARK” similar to that of petitioner.

Held:
No. A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is a
prerequisite to the acquisition of ownership over a trademark or a trade name. Adoption alone of a trademark
would not give exclusive right thereto. Such right grows out of their actual use. Adoption is not use. One may make
advertisements, issue circulars, give out price lists on certain goods; but these alone would not give exclusive right of
use. The records show that the petitioner has never conducted any business in the Philippines. It has never
promoted its trade name or trademark in the Philippines. It is unknown to Filipino 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.
Under the law, it has no right to the remedy it seeks. In other words, the petitioner may have the capacity to sue for
infringement irrespective of lack of business activity in the Philippines but the question whether they have an
exclusive right over their symbol as to justify issuance of the controversial writ will depend on the actual use of their
trademarks in the Philippines. A foreign corporation may have the personality to file a suit for infringement but it
may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market.
 G.R. No. L-26676 July 30, 1982
PHILIPPINE REFINING CO., INC., petitioner, vs.
NG SAM and THE DIRECTOR OF PATENTS, respondents.
ESCOLIN, J.:

Facts:
The trademark “CAMIA” was first used by petitioner Philippine Refining Co. (PRC) on its products consisting of
vegetable and animal fats such as lard, butter and cooking oil. The petitioner caused its registration with the
Philippine Patent Office in 1949. In the 1960s, Ng Sam, herein respondent, filed an application with the Philippine
Patent Office for registration of the identical trademark “CAMIA” for his product ham. An opposition was filed by the
petitioner alleging that the use of the trademark “CAMIA” by the respondent would cause confusion or mistake or
would deceive purchasers. The Director of Patent rendered a decision allowing the registration of the trademark in
question in favour of the respondent Ng Sam. Petitioner asked for reconsideration but the same was denied. Hence,
this present petition for review.

Issue:
Whether or not the product of Ng Sam, which is ham, and those of the PRC consisting of lard, butter, cooking oil and
soap are so related that the use of the same trademark on said goods would likely result in confusion as to their
source or origin.

Held:
No. The right of a trademark is a limited one, in the sense that others may use the name mark on unrelated 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 articles of a different description. The registration of a trademark which so
resembles another already registered or in use should be denied, where to allow such registration could likely result
in confusion, mistake or deception to the consumers. Conversely, where no confusion is likely to arise, as in this
case, registration of a similar or even identical mark may be allowed. The trademark “CAMIA” is used by the
petitioner on wide range of products such as lard, butter, cooking oil, soaps, etc. Respondent desires to use the same
on his product ham. Although such products belong to the same category, this alone cannot serve as the decisive
factor in the resolution of whether or not they are related goods. Emphasis should be on the similarity of the
products involved and not on the arbitrary classification or general description of their properties or characteristics.
Opposer’s products are ordinary day to day household items whereas ham is not necessarily so. Thus, the goods of
the parties are not of a character which purchasers would be likely to attribute to a common origin. The Court
further holds that the business of the parties are non-competitive and their products so unrelated that the use of
identical trademarks is not likely to give rise to confusion, much less cause damage to petitioner.
 G.R. No. 103543 July 5, 1993
ASIA BREWERY, INC., petitioner,
vs.
THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION, respondents.
GRIÑO-AQUINO, J.:

Facts:
San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of trademark and
unfair competition on account of the latter’s “BEER PALE PILSEN” or “BEER NA BEER” product which has been
competing with SMC’s SAN MIGUEL PALE PILSEN for a share of the local been market. A decision was rendered by
the trial judge dismissing SMC’s complaint because ABI has not committed trademark infringement or unfair
competition against SMC for the reason that the trademarks of each product has no significant similarity that would
likely to cause confusion or mistake or to deceive purchasers as to the source or origin of the beer in question. SMC
appealed to the Court of Appeals wherein the decision of the trial court was reversed. Hence, this present petition
for certiorari filed by ABI.

Issue:
Whether or not ABI infringes SMC’s trademark: “San Miguel Pale Pilsen with Rectangular Hops and Malt Design,” and
thereby commits unfair competition against the latter.

Held:
No. There is absolutely no similarity in the dominant features of both trademarks. Infringement is determined by
the “test of dominancy” rather than by differences in variations in the details of one trademark and of another. 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. The question at issue in cases of infringement of trademarks is whether the use of marks involved
would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers.

In the case at bar, the trial court perceptively observed that the word “BEER” does not appear in SMC’s
trademark, just as the words “SAN MIGUEL” do not appear in the ABI’s trademark. Hence, there is absolutely no
similarity in the dominant features of both trademarks. Neither in sound, spelling or appearance can BEER PALE
PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can
possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC proving
otherwise.
 G.R. No. L-17501 April 27, 1963
MEAD JOHNSON and COMPANY, petitioner, vs.
N. V. J. VAN DORP, LTD., ET AL., respondents.
BAUTISTA ANGELO, J.:

Facts:
N.V.J. Van Dorp, Ltd., herein respondent, is a corporation organized under the laws of Netherlands. Mead Johnson &
Company, herein petitioner, is a corporation organized under the laws of Indiana, USA. Respondent filed an
application for the registration of the trademark “ALASKA and pictorial representation of a Boy’s Head within a
rectangular design (ALASKA disclaimed).” The petitioner being the owner of the trademark “ALACTA” used for
powdered half-skim milk, filed an opposition on the ground that it will be damaged by the said registration as the
trademark “ALASKA” and pictorial representation of a Boy’s Head, used for milk, milk products, dairy products and
infant’s foods, is confusingly similar to its trademark “ALACTA.” The respondent contended that “ALASKA” is entirely
different from opppsitor’s trademark and product “ALACTA”, since applicant’s product covers milk, milk products,
dairy products and infant’s food, while oppositor’s products cover pharmaceutical preparations for nutritional needs.
The Director of Patents Office, rendered decision dismissing the opposition and holding that the trademark sought to
be registered does not sufficiently resemble oppositor’s mark as to be likely when applied to the goods of the parties
to cause confusion or mistake to deceive purchasers. Hence, petitioner filed the present petition for review.

Issue:
Whether or not the trademarks “ALASAK” and “ALACTA” are similar as would likely to cause confusion or mistake.

Held:
No. It is true that between petitioner’s trademark “ALACTA” and respondent’s “ALASKA” there are similarities in
spelling, appearance and sound for both composed of six letters of three syllables each and each syllable has the
same words, but in determining if they are confusingly similar a comparison of said words is not the only determinant
factor. The trademarks in their entirety as they appear in the respective labels must also be considered in relation to
the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant
words but also on the other features appearing in both labels in order that he may draw his conclusion whether one
is confusingly similar to the other. Having this view in mind, the Court believes that while there are similarities in the
two marks there are also differences or dissimilarities which are glaring and striking to the eye as the former.

The Court further holds that the petitioner’s are not food or ingredients of foods but rather medicinal and
pharmaceutical preparations that are to be used as prescribed by physicians. On the other hand, respondent’s goods
cover milk, milk products, dairy products and infant’s food, and for the use of these products there is no need or
requirement of a medicinal preparation. Thus, it is concluded that the applicant’s mark does not resemble opposer’s
mark as to be likely when applied to the goods of the parties to cause confusion or mistake or to deceive purchasers.

Decision appealed from is affirmed.

 G.R. No. L-27906 January 8, 1987
CONVERSE RUBBER CORPORATION, petitioner, vs.
UNIVERSAL RUBBER PRODUCTS, INC. and TIBURCIO S. EVALLE, DIRECTOR OF PATENTS, respondents.
FERNAN, J.:

Facts:
Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent Office for the registration
of the trademark “Universal Converse and Device” used on rubber shoes and rubber slippers. The petitioner
Converse Rubber Corporation, duly organized under the laws of Massachusetts, USA, manufactures rubber shoes and
uses the trademarks “Chuck Taylor” and “All Star and Device.” The latter filed an opposition to the application for
registration filed by respondent on the ground, among others, that the trademark sought to be registered is
confusingly similar to the word “Converse” which is part of its corporate name as to likely deceive purchasers of
products on which it is to be used to an extent that said products may be mistaken by the unwary public to be
manufactured by it. The Director of Patents dismissed the opposition of the petitioner and gave due course to
respondent’s application. The petitioner prayed for reconsideration and the same was denied. Hence, this present
petition for review.

Issue:
Whether or not the applicant’s partial appropriation of the petitioner’s corporate name is of such character that it is
calculated to deceive or confuse the public to the injury of the corporation to which the name belongs.

Held:
Yes. The similarity in the general appearance of the respondent’s trademark and that of the petitioner would
evidently create a likelihood of confusion among the purchasing public. But even assuming, arguendo, that the
trademark sought to be registered by respondent is distinctively dissimilar from those of the petitioner, the likelihood
of confusion would still subsists, not on the purchaser’s perception of the goods but on the origin thereof. By
appropriating the word “Converse,” respondent’s products are likely to be mistaken as having been produced by
petitioner. The risk of damage is not limited to a possible confusion of goods but also includes confusion of
reputation if the public could reasonably assume that the goods of the partied originated from the same source.
Knowing, therefore, that the word “Converse” belongs to and is being used by petitioner, and in fact the dominant
word in petitioner’s corporate name, respondent has no right to appropriate the same for use in its products which
are similar to those being produced by petitioner.

Note:
It is unfortunate that respondent Director of Patents has concluded that since the petitioner is not licensed to do
business in the country and is actually not doing business on its own in the Philippines, it has no name to protect in
the forum and thus, it is futile for it to establish that "CONVERSE" as part of its corporate name identifies its
rubber shoes. That a foreign corporation has a right to maintain an action in the forum even if it is not licensed to
do business and is not actually doing business on its own therein has been enunciated many times by this Court. In
La Chemise Lacoste, S.A. vs. Fernandez, 129 SCRA 373, this Court, reiterating Western Equipment and Supply Co. vs.
Reyes, 51 Phil. 115, stated 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.
 G.R. No. L-32747 November 29, 1984
FRUIT OF THE LOOM, INC., petitioner, vs.
COURT OF APPEALS and GENERAL GARMENTS CORPORATION, respondents.
MAKASIAR, J.:

Facts:
Fruit of the Loom, herein petitioner, is a corporation duly organized and existing under the laws of the State of Rhode
Island, USA, and a registrant of a trademark Fruit of the Loom in the Philippine Patent Office. On the other hand,
herein private respondent, General Garments Corporation, is a domestic corporation and a registrant of trademark
Fruit of Eve. Both the petitioner and the respondent were engaged in the selling and manufacture of garments and
other textile products. Petitioner filed before the lower court a complaint against the respondent alleging that the
latter’s trademark is confusingly similar to its trademark because of the word “FRUIT” found in the respondent’s
trademark and the big apple appearing in the latter’s hang tag was a colourable imitation of the its hang tag. The
lower court rendered a judgment in favour of the petitioner and ordered the cancellation of the registration of the
respondent. On appeal, the appellate court reversed the trial court’s decision. Hence, petitioner filed this petition
for review on certiorari alleging that the word “FRUIT” being the prominent word appearing in both of its trademark
and that of the respondent’s would lead the purchasers to believe that the latter’s products are those of the
petitioner.

Issue:
Whether or not private respondent’s trademark FRUIT FOR EVE and its hang tag are confusingly similar to petitioner’s
trademark FRUIT OF THE LOOM and its hang tag so as to constitute and infringement of the latter’s trademark rights
and justify the cancellation of the former.

Held:
No. The Court believes that there is no infringement of trademark in this case. There is infringement of trademark
when the use of the mark involved would 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. In determining whether the trademarks are confusingly
similar, a 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. The discerning eye of the observer must focus on the other features appearing in both labels in order that
he may draw his conclusion whether one is confusingly similar to the other.

In the case at bar, the trademarks Fruit of the Loom and Fruit for Eve, the lone similar is word FRUIT. The
Court agrees with the appellate court that by mere pronouncing the marks, it could hardly be said that it will provoke
a confusion, as to mistake one for the other. Standing by itself, Fruit of the Loom is wholly different from Fruit of
Eve. The Court disagrees with the petitioner that the dominant feature of both trademarks is the word FRUIT for
even if in the printing of the trademark in both hang tags, the word FRUIT is not at all made dominant over the other
words.
 G.R. No. L-21587 May 19, 1966
BRISTOL MYERS COMPANY, petitioner, vs.
THE DIRECTOR OF PATENTS and UNITED AMERICAN PHARMACEUTICALS, INC., respondents.
BENGZON, J.P., J.:

Facts:
United American Pharmaceuticals, Inc., (respondent), a domestic corporation, filed petition for registration of the
trademark “BIOFERIN.” It covers a medicinal preparation of antihistamic, analgesic, antipyretic with Vitamin C and
Bioflavenoid used in the treatment of common colds. The said application for registration was opposed by Bristol
Myers Co., (petitioner), a corporation organized under the laws of Delaware, USA, and owner of the trademark
“BUFFERIN” in the Philippines. Designated as “Antacid analgesic,” it is intended for relief in cases of simple
headaches, neuralgia, colds, menstrual pain and minor muscular aches. Bristol Myers contended that the trademarks
BIOFERIN and BUFFERIN will mislead and confuse the public as to the source and origin of the goods covered by the
respective marks because both products are primarily used for the relief of pains such as headaches and colds; and
because words BIOFERIN and BUFFERIN are practically the same in spelling and pronunciation.

Issue:
Are the trademarks “BIOFERIN” and “BUFFERIN,” as presented to the public in their respective labels, confusingly
similar?

Held:
No. In determining whether two trademarks are confusingly similar, the test is not simply to take their words and
compare the spelling and pronunciation of said words. Rather, it is to consider the two marks in their entirety, as
they appear in the respective labels, in relation to the goods to which they are attached. In the instant case, the
trademarks in question are not apt to confuse. Furthermore, the product of the applicant is expressly stated as
dispensable only upon doctor’s prescription, while that of the oppositor does not require the same. The chances of
being confused into purchasing one for the other are therefore all the more rendered negligible. Although oppositor
avers that some drugstores sell BIOFERIN without asking for a doctor’s prescription, the same if true would be an
irregularity not attributable to the applicant, who has already clearly stated the requirement of doctor’s prescription
upon the face of the label of its product.
 G.R. No. L-8072. October 31, 1956.
LIM HOA, Petitioner, vs.
DIRECTOR OF PATENTS, Respondent.
MONTEMAYOR, J.:

Facts:
Lim Hoa, herein petitioner, filed 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. The trademark being
registered covered products consisting of food seasonings. Agricom Development Corp., a domestic corporation,
opposed the application on several grounds, among others, that the trademark sought to be registered was
confusingly similar to its registered mark, consisting of a pictorial representation of a hen with the words “Hen
Brand” and “Marca Manok,” which brand or mark was also used on a food seasoning product, before the use of the
trademark by the applicant. Agricom likewise asserted that the trademark had been adopted by its predecessor, the
Advincula Family, since 1946 for said food seasoning. The Director of Patents disallowed the registration of the Lim
Hoa’s trademark because it would likely cause confusion or mistake or deceive purchasers. Hence, this present
appeal by the petitioner.

Issue:
Whether or not there is similarity between the two trademarks as to cause confusion or mistake in the mind of the
public.

Held:
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. The danger of confusion in trademarks and brands which are similar may not be so great in the case
of commodities or articles of relatively great value, for the prospective buyer, generally the head of the family or a
businessman, before making the purchase, reads the pamphlets and all literature available, describing the article he
is planning to buy, and perhaps even makes comparisons with similar articles in the market. But in the sale of a food
seasoning product, a kitchen article of everyday consumption, the circumstances are far different. Said product is
generally purchased by cooks and household help, sometimes illiterate who are guided by pictorial representations
and the sound of the word descriptive of said representation. The two roosters appearing in the trademark of the
applicant and the hen appearing on the trademark of the Oppositor, although of different sexes, belong to the same
family of chicken, known as manok in all the principal dialects of the Philippines, and when a cook or a household
help or even a housewife buys a food seasoning product for the kitchen the brand of “Manok” or “Marca Manok”
would most likely be upper most in her mind and would influence her in selecting the product, regardless of whether
the brand pictures a hen or a rooster or two roosters. To her, they are all manok. Therein lies the confusion, even
deception.
 G.R. No. L-23023 August 31, 1968
JOSE P. STA. ANA, petitioner, vs.
FLORENTINO MALIWAT and TIBURCIO S. EVALLE, in his capacity as Director of Patents, respondents.
REYES, J.B.L., J.:

Facts:
In 1962, Florentino Maliwat, respondent, filed an application for the registration of the trademark FLORMANN,
which is used on shirts, pants, jackets and shoes for ladies, men and children. He claimed that such mark was first
used in commerce since the early part of that year. However, the claim of first use was amended to 1953. Jose Sta.
Ana, petitioner, in same year 1962, filed an application for the registration of the trade name FLORMEN SHOE
MANUFACTURERS (SHOE MANUFACTURERS , disclaimed), which is used in the business of manufacturing ladies’ and
children’s shoes. His claim of first use in commerce of said trade name is 1959. In view of the admittedly confusing
similarity between the trademark Flormann and the trade name Flormen, the Director of Patents declared an
interference. After trial, the Director gave due course Maliwat’s application and denied that of Sta. Ana. In this
present petition, Sta. Ana avers that the Director of Patents erred in declaring that Maliwat has a prior right to the
use of his trademark on shoes and such right may be carried back to the year 1953 when Maliwat started his
tailoring and haberdashery business

Issue:
Whether or not Florentino Maliwat has a prior right to use the trademark “Flormann.”

Held:
Yes. An application for registration is not bound by the date of first use as stated by him in his application, but is
entitled to carry back said stated date of first use to a prior date by proper evidence; but in order to show an earlier
date of use, he is then under a heavy burden, and his proof must be clear and convincing. In the case at bar, the
proof of date of first use (1953), earlier than that alleged in respondent Maliwat's application (1962), can be no less
than clear and convincing because the fact was stipulated and no proof was needed.

The law does not require that the articles of manufacture of the previous user and the late user of the mark
should possess the same descriptive properties or should fall into the same categories as to bar the latter from
registering his mark in the principal register. Therefore, whether or not shirts and shoes have the same descriptive
properties, or whether or not it is the prevailing practice or the tendency of tailors and haberdashers to expand their
business into shoes making, are not controlling. The meat of the matter is the likelihood of confusion, mistake or
deception upon purchasers of the goods of the junior user of the mark and the goods manufactured by the previous
user. Here, the resemblance or similarity of the mark FLORMANN and the name FLORMEN and the likelihood of
confusion, one to the other, is admitted; therefore, the prior adopter, respondent Maliwat, has the better right to
the use of the mark.
 G.R. No. L-28744 April 29, 1971
ACOJE MINING CO., INC., petitioner-applicant, vs.
THE DIRECTOR OF PATENTS, respondent.
FERNANDO, J.:

Facts:
Acoje Mining Co., (petitioner) filed an application for registration of the trademark Lotus to be used on its soy sauce
product. On the other hand, Philippine Refining Co., (PRC), another domestic corporation, was also using the same
trademark Lotus on its edible oil. The Chief of the trademark examiner rejected the application of Acoje due to its
confusing similarity with that of the trademark already registered in favour of the PRC. The Director of Patents
upheld the view of the trademark examiner on the ground that while there is a difference between soy sauce and
edible oil and there were dissimilarities in the trademarks, still the close relationship of the products, soy sauce and
edible oil, is such that purchasers would be misled into believing that they have a common source. Hence, this
present petition for review.

Issue:
Whether or not Acoje Mining Co., may register for the purpose of advertising its product, soy sauce, the trademark
Lotus.

Held:
The Court answered in the affirmative and the decision of the Director of Patents should be reversed. The
determinative factor in a contest involving registration of trademark is not whether the challenging mark would
actually cause confusion or deception of the purchasers but whether the use of the mark would likely cause
confusion or mistake on the part of the buying public. The law does not require that the competing trademarks must
be so identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that the
similarity between the two labels, is such that there is a possibility or likelihood of the purchaser of the older brand
mistaking the newer brand for it.

In the present case, there is quite difference between soy sauce and edible oil. If one is in the market for the
former, he is not likely to purchase the latter just because of the trademark Lotus. There is no denying that the
possibility of confusion is remote considering the difference in the type used, the coloring, the petitioner’s trademark
being in yellow and red while that of the PRC being in green and yellow, and the much smaller size of petitioner’s
trademark.
 G.R. No. L-44707 August 31, 1982
HICKOK MANUFACTURING CO., INC., petitioner, vs.
COURT OF APPEALS and SANTOS LIM BUN LIONG, respondents.
TEEHANKEE, J.:
Facts:
Petitioner Hickok Manufacturing Co., (Hickok), is a foreign corporation, which the registered the trademark HICKOK
for its diverse articles of leather wallets, key cases, money folds made of leather, belts, men’s briefs, neckties,
handkerchiefs and men’s socks. On the other hand, Lim Bun Liong (respondent) is registrant of a trademark of the
same name HICKOK for its Marikina shoes. Hickok filed a petition to cancel the respondent’s registration of the
trademark. The Director of Patent granted the petition of Hickok, but on appeal the Court of Appeals reversed the
director’s decision and dismissed Hickok’s original petition for cancellation on the ground that the trademarks of
petitioner and that of the registrant were different in design and coloring of, as well as in the words on the ribbons.
Hence, this present appeal.

Issue:
Whether or not the registration of Lim Bun Liong’s trademark for his Hickok Marikina shoes can be allowed.

Held:
The Court affirmed the appellate court’s decision. While the law does not require that the competing trademarks be
identical, the two marks must be considered in their entirety, as they appear in the respective labels, in relation to
the goods to which they are attached.

Emphasis should be on the similarity of the products involved and not on the arbitrary classification or
general description of their properties or characteristics and that the mere fact that one person has adopted and
used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated
articles of a different kind. Petitioner, a foreign corporation registered the trademark for its diverse articles of men's
wear such as wallets, belts and men's briefs which are all manufactured here in the Philippines but are so labelled as
to give the misimpression that the said goods are of foreign (stateside) manufacture and that respondent secured its
trademark registration exclusively for shoes (which neither petitioner nor the licensee ever manufactured or traded
in) and which are clearly labelled in block letters as "Made in Marikina, Rizal, Philippines," no error can be attributed
to the appellate court in upholding respondent's registration of the same trademark for his unrelated and non-
competing product of Marikina shoes.
 G.R. No. 75067 February 26, 1988
PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER, K.G., petitioner, vs.
THE INTERMEDIATE APPELLATE COURT and MIL-ORO MANUFACTURING CORPORATION, respondents.
GUTIERREZ, JR., J.:

Facts:
Petitioner Puma Sportschuhfabriken, a foreign corporation duly organized under the existing laws of Germany, is a
manufacturer and producer of Puma products. It filed a complaint for infringement of patent or trademark against
Mil-Oro Manufacturing Corporation, which is a registrant of the trademark “Puma and Device,” with a prayer for
issuance of writ of preliminary injunction. The trial court granted petitioner’s prayer and ordering Mil-Oro to restrain
from using the trademark PUMA and to withdraw from the market all products bearing the same trademark. On
appeal, the CA reversed the order of the trial court on the ground that petitioner has no legal capacity to sue. Hence,
this present petition for review. Both parties in this case maintain that they are the rightful owners of the trademark
PUMA for socks and belts such that both parties seek the cancellation of the trademark of the other.

Issue:
Whether or not petitioner has legal capacity to sue in this jurisdiction.

Held:
The Court holds that the petitioner had the legal capacity to file an action in this jurisdiction. As early as 1927, the
Court was, and it still is, of the view that foreign corporation not doing business in the Philippines needs no license to
sue before Philippine courts for infringement of trademark and unfair competition. 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 trade
name, 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.