1. MIGHTY CORP. vs. E&J GALLO; G.R. NO.
O. 154342 ISSUE/S: Whether GALLO cigarettes and GALLO wines were identical,
FACTS:
On March 12, 1993, E. & J. GALLO WINERY and THE ANDRESONS
GROUP, INC (respondents) sued MIGHTY CORPORATION and LA
CAMPANA FABRICA DE TABACO, INC. (petitioners) in the RTC-Makati
for trademark and trade name infringement and unfair competition,
with a prayer for damages and preliminary injunction.
They claimed that petitioners adopted the Gallo trademark to ride on
Gallo Winery’s and Gallo and Ernest & Julio Gallo trademark’s
established reputation and popularity, thus causing confusion,
deception and mistake on the part of the purchasing public who had
always associated Gallo and Ernest and Julio & Gallo trademarks with
Gallo Winery’s wines.
In their answer, petitioners alleged, among other affirmative defenses
that: petitioners Gallo cigarettes and Gallo Winery’s wine were totally
unrelated products. To wit:
1. Gallo Winery’s GALLO trademark registration certificates covered
wines only, and not cigarettes;
2. GALLO cigarettes and GALLO wines were sold through different
channels of trade;
3. the target market of Gallo Winery’s wines was the middle or high-
income bracket while Gallo cigarette buyers were farmers, fishermen,
laborers and other low-income workers;
4. that the dominant feature of the Gallo cigarette was the rooster
device with the manufacturer’s name clearly indicated as MIGHTY
CORPORATION, while in the case of Gallo Winery’s wines, it was the
full names of the founders-owners ERNEST & JULIO GALLO or just
their surname GALLO;
The Makati RTC denied, for lack of merit, respondent’s prayer for the
issuance of a writ of preliminary injunction. CA likewise dismissed
respondent’s petition for review on certiorari.
After the trial on the merits, however, the Makati RTC held petitioners
liable for committing trademark infringement and unfair competition
with respect to the GALLO trademark.
On appeal, the CA affirmed the Makati RTC’s decision and
subsequently denied petitioner’s motion for reconsideration.
similar or related goods for the reason alone that they were
purportedly forms of vice.
RULING: NO.
Wines and cigarettes are not identical, similar, competing or related
goods.
In resolving whether goods are related, several factors come into
play:
· the business (and its location) to which the goods belong
· the class of product to which the good belong
· the product’s quality, quantity, or size, including the nature of the
package, wrapper or container
· the nature and cost of the articles
· the descriptive properties, physical attributes or essential
characteristics with reference to their form, composition, texture or
quality
· the purpose of the goods
· whether the article is bought for immediate consumption, that is,
day-to-day household items
· the field of manufacture
· the conditions under which the article is usually purchased and
· the articles of the trade through which the goods flow, how they are
distributed, marketed, displayed and sold.
The test of fraudulent simulation is to the likelihood of the deception
of some persons in some measure acquainted with an established
design and desirous of purchasing the commodity with which that
design has been associated. The simulation, in order to be
objectionable, must be 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.
The petitioners are not liable for trademark infringement, unfair
competition or damages.
 2. Fruit of the Loom v. CA (G.R. No. L-32747)
Facts:
Petitioner Fruit of the Loom, an American corporation, is the
registrant of the trademark ‘Fruit of the Loom’ covering goods such as
underwear and other textile fabrics. Respondent General Garments
on the other hand, is a domestic corporation and a registrant of the
trademark ‘Fruit for Eve’ covering garments similar to petitioner.
Alleging respondent’s mark and hang tag is confusingly similar with its
own, petitioner filed a complaint for trademark infringement and
unfair competition. The trial court found for petitioner. CA reversed
the judgment.
Issue: Whether or not respondent’s mark and hang tag is confusingly
similar with that of petitioner.
3. BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG.
G.R. No. 183404. October 13, 2010
FACTS:
Abyadang fied a trademark application with the IPO for the mark "NS
D-10 PLUS" for use in connection with Fungicide. Berris Agricultural
Co., Inc. filed an opposition against the trademark citing that it is
confusingly similar with their trademark, "D-10 80 WP" which is also
used for Fungicide also with the same active ingredient.
The IPO ruled in favor of Berries but on appeal with the CA, the CA
ruled in favor of Abyadang.
ISSUE: Whether there is confusing similarity between the trademarks.

Ruling: NO. RULING:

WE agree with the respondent court that by mere pronouncing the Yes. The SC found that both products have the component D-10 as
two marks, it could hardly be said that it will provoke a confusion as their ingredient and that it is the dominant feature in both their
to mistake one for the other. Standing by itself, FRUIT OF THE LOOM marks. Applying the Dominancy Test, Abyadang's product is similar to
is wholly different from FRUIT FOR EVE. WE do not agree with Berris' and that confusion may likely to occur especially that both in
petitioner that the dominant feature of both trademarks is the word the same type of goods. Also using the Holistic Test, it was more
FRUIT for even in the printing of the trademark in both hang tags, the obvious that there is likelihood of confusion in their packaging and
word FRUIT is not at all made dominant over the other words. As to color schemes of the marks. The SC states that buyers would think
the design and coloring scheme of the hang tags, the shape of that Abyadang's product is an upgrade of Berris'.
petitioner’s hang tag is round with a base that looks like a paper rolled
a few inches in both ends; while that of private respondent is plain
rectangle without any base. The designs differ. Petitioner’s trademark
is written in almost semi-circle while that of private respondent is
written in straight line in bigger letters than petitioner’s. Private
respondent’s tag has only an apple in its center but that of petitioner
has also clusters of grapes that surround the apple in the center. The
colors of the hang tag are also very distinct from each other. WE hold
that the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE do not
resemble each other as to confuse or deceive an ordinary purchaser.
WE hold that the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE
do not resemble each other as to confuse or deceive an ordinary
purchaser.
WHAT IS THE DOMINANCY TEST? :
4. WILTON DY and/or PHILITES ELECTRONIC & LIGHTING
PRODUCTS v KONINKLIJKE PHILIPS ELECTRONICS, N.V. G.R.
No. 186088
FACTS: On March 2006, Koninklijke Philips Electronics, N .V.
("PHILIPS") opposed the trademark application of petitioner PHILITES
on the ground that PHILITES' registration will mislead the public over
an identical or confusingly similar mark of PHILIPS, which is registered
and internationally well-known mark specifically invoking the
provisions of Section 123 of the Intellectual Property Law of the
Philippines which states that a mark cannot be registered if it Is
identical with a registered mark belonging to a different proprietor or
a mark with an earlier filing or priority date xxx 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.
Petitioner filed its answer denying the allegations made by the
respondent. IPP-BLA denied the opposition of the respondent which,
later on was upheld by IPP-DG. On appeal to the Court of Appeals, the
appellate court reversed the decision finding the trademark applied
by the petitioner is confusingly similar with that of respondent’s
registered trademark and packaging. Also, the appellate court belied
asseveration that the mark 'PHILITES' is a coined or arbitrary mark
from the words 'Philippines' and 'lights stating that of all the marks
that petitioner could possibly think of for his light bulbs, it is odd that
the latter chose a mark with the letters 'PHILI,' which are the same
prevalent or dominant five letters found in respondent's trademark
'PHILIPS' for the same products, light bulbs.
ISSUE/S: WoN the mark applied for by petitioner is identical or
confusingly similar with that of respondent?
RULING:
AFFIRMATIVE. A trademark is "any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof, adopted and
used by a manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by others."
It is "intellectual property deserving protection by law," and
"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.
In determining similarity and likelihood of confusion, jurisprudence
has developed two tests: the dominancy test, and the holistic or
totality test.
On one hand, the dominancy test focuses on "the similarity of the
prevalent or dominant features of the competing trademarks that
might cause confusion, mistake, and deception in the mind of the
purchasing public. Duplication or imitation is not necessary; neither is
it required that the mark sought to be registered suggests an effort to
imitate. Given more consideration are the aural and visual
impressions created by the marks on the buyers of goods, giving little
weight to factors like prices, quality, sales outlets, and market
segments. Applying the dominancy test, the Supreme Court upheld
the CA in ruling that there is uncanny resemblance or confusing
similarity between the trademarks 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.
On the other hand, the holistic or totality test necessitates a
"consideration of the entirety of the marks as applied to the products,
including the labels and packaging, in determining confusing
similarity. The discerning eye of the observer must focus not only on
the predominant words, but also on the other features appearing on
both labels so that the observer may draw conclusion on whether one
is confusingly similar to the other." Applying the test in the case, SC
agrees with the appellate court that 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, mark will be damaged because of the inferior quality of the
respondent's trademark "PHILITES" will likely cause confusion or good or services of the user.
deception to the ordinary purchaser with a modicum of intelligence. *Section 123.1(f) is clearly in point because the Music Lounge of
DENIED. petitioner is entirely unrelated to respondents’ business involving
watches, clocks, bracelets, etc. However, the Court cannot yet resolve
the merits of the present controversy considering that the requisites
5. Corporation v. Daway (G.R. No. 157216)
for the application of Section 123.1(f), which constitute the kernel
Facts:
issue at bar, clearly require determination facts of which need to be
Respondents Montres Rolex and Rolex Centre Phil.,
resolved at the trial court.
owners/proprietors of Rolex and Crown Device, filed a complaint for
trademark infringement alleging petitioner adopted and used without
6. Ecole De Cuisine Manille v. Cointreau (G.R. No. 185830)
authority the mark ‘Rolex’ in its business name ‘Rolex Music Lounge.’
Facts:
Petitioner argued that there is no trademark infringement since no
Respondent Cointreau, a partnership registered under the laws of
confusion would arise by the use of ‘Rolex’ considering that its
France, applied for the registration of the mark ‘Le Cordon Bleu &
entertainment business is totally unrelated to respondent’s business
Device.’ Petitioner Ecole De Cuisine opposed on the ground that it is
or products such as watches, clocks, etc.
the owner of the mark ‘Le Cordon Bleu, Ecole De Cuisine Manille’ used
in its culinary activities and restaurant business and that the
Issue: Whether or not likelihood of confusion would arise from the
registration will create confusion to the public. Respondent Cointreau
use of identical marks over unrelated goods/business.
answered claiming it is the true and lawful owner of the mark and had
long been using it worldwide. The IPO Bureau of Legal Affairs
Ruling: YES.
sustained petitioner’s opposition stating that Cointreau had no prior
Under the old Trademark Law where the goods for which the identical
use of the mark in the Philippines to be entitled to a proprietary right
marks are used are unrelated, there can be no likelihood of confusion
over it. The IPO Director General reversed the decision and allowed
and there is therefore no infringement in the use by the junior user of
the mark’s registration holding that under RA No. 166, actual use in
the registered mark on the entirely different goods. This ruling,
the Philippines is not necessary to acquire ownership of the mark.
however, has been to some extent, modified by Section 123.1(f) of
the Intellectual Property Code.
Issue: Whether or not respondent’s prior use of the mark is a
A junior user of a well-known mark on goods or services which are not
requirement for its registration.
similar to the goods or services, and are therefore unrelated, to those
specified in the certificate of registration of the well-known mark is
Ruling: YES.
precluded from using the same on the entirely unrelated goods or
Under Section 2 of R.A. No. 166, in order to register a trademark, one
services, subject to the following requisites, to wit:
must be the owner thereof and must have actually used the mark in
1. The mark is well-known internationally and in the Philippines.
commerce in the Philippines for 2 months prior to the application for
2. The use of the well-known mark on the entirely unrelated
registration. Section 2-A of the same law sets out to define how one
goods or services would indicate a connection between such
goes about acquiring ownership thereof. Under Section 2-A, it is clear
unrelated goods or services and those goods or services
that actual use in commerce is also the test of ownership but the
specified in the certificate of registration in the well known
provision went further by saying that the mark must not have been so
mark. This requirement refers to the likelihood of confusion of
appropriated by another. Additionally, it is significant to note that
origin or business or some business connection or relationship
Section 2-A does not require that the actual use of a trademark must
between the registrant and the user of the mark.
be within the Philippines. Thus, as correctly mentioned by the CA,
3. The interests of the owner of the well-known mark are likely to
under R.A. No. 166, one may be an owner of a mark due to its actual
be damaged. For instance, if the registrant will be precluded
use but may not yet have the right to register such ownership here
from expanding its business to those unrelated good or
due to the owner’s failure to use the same in the Philippines for 2
services, or if the interests of the registrant of the well-known
months prior to registration. In the instant case, it is undisputed that
Cointreau has been using the subject mark in France, prior to Ecole’s
averred first use of the same in the Philippines, of which the latter
was fully aware thereof. On the other hand, Ecole has no certificate
of registration over the subject mark but only a pending application.
Under the foregoing circumstances, even if Ecole was the first to use
the mark in the Philippines, it cannot be said to have validly
appropriated the same.
Nevertheless, foreign marks which are not registered are still
accorded protection against infringement and/or unfair competition.
At this point, it is worthy to emphasize that the Philippines and
France, Cointreau’s country of origin, are both signatories to the Paris
Convention for the Protection of Industrial Property (Paris
Convention).
The Philippines is obligated to assure nationals of the
signatory-countries that they are afforded an effective protection
against violation of their intellectual property rights in the Philippines
in the same way that their own countries are obligated to accord
similar protection to Philippine nationals. “Thus, under Philippine law,
a trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a
trademark, is protected “without the obligation of filing or
registration.’
n any case, the present law on trademarks, Republic Act No. 8293,
otherwise known as the Intellectual Property Code of the Philippines,
as amended, has already dispensed with the requirement of prior
actual use at the time of registration. Thus, there is more reason to
allow the registration of the subject mark under the name of
Cointreau as its true and lawful owner.
As a final note, “the function of a trademark is to point out distinctly
the origin or ownership of the goods (or services) to which it is affixed;
to secure to him, who has been instrumental in bringing into the
market a superior article of merchandise, the fruit of his industry and
skill; to assure the public that they are procuring the genuine article;
to prevent fraud and imposition; and to protect the manufacturer
against substitution and sale of an inferior and different article as his
product.” As such, courts will protect trade names or marks, although
not registered or properly selected as trademarks, on the broad
ground of enforcing justice and protecting one in the fruits of his toil.
7. Lyceum of the Philippines v. CA (G.R. No. 101897)
Facts:
Petitioner Lyceum of the Philippines had commenced before the SEC
a proceeding against the Lyceum of Baguio to change its corporate
name alleging that the 2 names are substantially identical because of
the word ‘Lyceum’. SEC found for petitioner and the SC denied the
consequent appeal of Lyceum of Baguio in a resolution. Petitioner
then basing its ground on the resolution, wrote to all educational
institutions which made use of the word ‘Lyceum’ as part of their
corporate name to discontinue their use. When this recourse failed,
petitioner moved before the SEC to enforce its exclusive use of the
word ‘Lyceum.’ Petitioner further claimed that the word ‘Lyceum’ has
acquired a secondary meaning in its favor. The SEC Hearing Officer
found for petitioner. Both SEC En Banc and CA ruled otherwise.
Issues:
(1) Whether or not ‘Lyceum’ is a generic word which cannot be
appropriated by petitioner to the exclusion of others.
(2) Whether or not the word ‘Lyceum’ has acquired a secondary
meaning in favor of petitioner.
(3) Whether or not petitioner is infringed by respondent institutions’
corporate names.
Ruling:
(1) YES. “Lyceum” is in fact as generic in character as the word
“university.” In the name of the petitioner, “Lyceum” appears to be a
substitute for “university;” in other places, however, “Lyceum,” or
“Liceo” or “Lycee” frequently denotes a secondary school or a college.
It may be that the use of the word “Lyceum” may not yet be as
widespread as the use of “university,” but it is clear that a not
inconsiderable number of educational institutions have adopted
“Lyceum” or “Liceo” as part of their corporate names. Since “Lyceum”
or “Liceo” denotes a school or institution of learning, it is not
unnatural to use this word to designate an entity which is organized
and operating as an educational institution.
(2) NO. Under the doctrine of secondary meaning, a word or phrase
originally incapable of exclusive appropriation with reference to an
article in the market, because geographical or otherwise descriptive
might nevertheless have been used so long and so exclusively by one
producer with reference to this article that, in that trade and to that
group of the purchasing public, the word or phrase has come to mean
that the article was his produce. With the foregoing as a yardstick,
[we] believe the appellant failed to satisfy the aforementioned
requisites. While the appellant may have proved that it had been
using the word ‘Lyceum’ for a long period of time, this fact alone did
not amount to mean that the said word had acquired secondary
meaning in its favor because the appellant failed to prove that it had
been using the same word all by itself to the exclusion of others. More
so, there was no evidence presented to prove that confusion will
surely arise if the same word were to be used by other educational
institutions.
(3) NO. We do not consider that the corporate names of private
respondent institutions are “identical with, or deceptively or
confusingly similar” to that of the petitioner institution. True enough,
the corporate names of private respondent entities all carry the word
“Lyceum” but confusion and deception are effectively precluded by
the appending of geographic names to the word “Lyceum.” Thus, we
do not believe that the “Lyceum of Aparri” can be mistaken by the
general public for the Lyceum of the Philippines, or that the “Lyceum
of Camalaniugan” would be confused with the Lyceum of the
Philippines. We conclude and so hold that petitioner institution is not
entitled to a legally enforceable exclusive right to use the word
“Lyceum” in its corporate name and that other institutions may use
“Lyceum” as part of their corporate names.
8. Societe Des Produits Nestle v. CA (G.R. No. 112012)
Facts:
Respondent CFC Corporation filed an application for the registration
of the trademark FLAVOR MASTER for instant coffee. Petitioners, a
Swiss company and a domestic corporation licensee of Societe,
opposed on the ground that it is confusingly similar to its trademark
for coffee and coffee extracts: MASTER ROAST and MASTER BLEND.
Petitioners contend that the dominant word MASTER is present in the
3 trademarks. Respondent CFC argued that the word MASTER cannot
be exclusively appropriated being a descriptive or generic term.
BPTTT denied CFC’s application. CA held otherwise.
Issue: Whether or not the word MASTER is descriptive or generic term
incapable of exclusive appropriation.
Ruling: NO.
The word “MASTER” is neither a generic nor a descriptive term. As
such, said term cannot be invalidated as a trademark and, therefore,
may be legally protected. Generic terms are those which constitute
“the common descriptive name of an article or substance,” or
comprise the “genus of which the particular product is a species,” or
are “commonly used as the name or description of a kind of goods,”
or “imply reference to every member of a genus and the exclusion of
individuating characters,” or “refer to the basic nature of the wares
or services provided rather than to the more idiosyncratic
characteristics of a particular product,” and are not legally
protectable. On the other hand, a term is descriptive and therefore
invalid as a trademark if, as understood in its normal and natural
sense, it “forthwith conveys the characteristics, functions, qualities or
ingredients of a product to one who has never seen it and does not
know what it is,” or “if it forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods,” or if it clearly
denotes what goods or services are provided in such a way that the
consumer does not have to exercise powers of perception or
imagination.
Rather, the term “MASTER” is a suggestive term brought about by the
advertising scheme of Nestle. Suggestive terms are those which, in
the phraseology of one court, require “imagination, thought and
perception to reach a conclusion as to the nature of the goods.” Such
terms, “which subtly connote something about the product,” are
eligible for protection in the absence of secondary meaning. While
suggestive marks are capable of shedding “some light” upon certain
characteristics of the goods or services in dispute, they nevertheless
involve “an element of incongruity,” “figurativeness,” or ” imaginative
effort on the part of the observer.” The term “MASTER”, therefore,
has acquired a certain connotation to mean the coffee products
MASTER ROAST and MASTER BLEND produced by Nestle. As such, the
use by CFC of the term “MASTER” in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion or mistake or
even to deceive the ordinary purchasers.
WHAT IS THE CRITERIA IN DETERMINING WHEN A MARK IS WELL-
KNOWN?
HOW DO YOU REGISTER A MARK?