LIM HOA VS. DIRECTOR OF PATENTS such as air conditioning units, machinery, etc.

, for
the prospective buyer makes a more or less
Facts:
thorough study of the same. However, in the sale of
Lim Hoa filed with the Patent Office an application a food seasoning product, it is generally purchased
for the registration of a trademark which consisted by cooks and household help, sometimes illiterate
of a representation of two midget roosters in an who are merely guided by pictorial representations
attitude of combat with the word “Bantam” printed and the sound of the word descriptive of said
above them. Petitioner claimed that he had used representation.
said trademark on a food seasoning product. After
In the case, the two roosters appearing in the
such application was published in the Official
trademark of the applicant and the hen appearing
Gazette, Agricom Development Co., Inc., a
on the trademark of the Oppositor, although of
domestic corporation, opposed the application on
different sexes, belong to the same family of
several grounds, among others, that the trademark
chicken. Hence, when one buys a food seasoning
sought to be registered was confusingly similar to
product for the kitchen, the brand of “Manok” or
its register mark which consisted of a pictorial
“Marca Manok” would most likely be upper most in
representation of a hen with the words “Hen Brand”
her mind and would influence her in selecting the
and “Marca Manok” and was also used on a food
product, regardless of whether the brand pictures a
seasoning product since 1946, before the use of
hen or a rooster or two roosters. Therein lies the
the trademark by the applicant.
confusion, even deception. The Court also
After consideration, the Director of Patents issued contended that the applicant could have stretched
his order wherein he held that allowing the his imagination even a little and extended his
registration of the applicant’s trademark would likely choice to other members of the animal kingdom in
cause confusion or mistake or deceive purchasers. order to differentiate his product from similar
Thus, he refused registration of said trademark of products in the market.
petitioner under Rule 178 of the Revised Rules of
Practice in Trademark Cases, 1953. Hence,
the petitioner appealed such order.

Issue: Whether or not the application of petitioner

for the registration of a trademark should be denied
as it is confusingly similar to the mark of Agricom
Development Co., Inc.?

Ruling:
YES. The Supreme Court held that there is such
similarity between the two brands as to cause
confusion in the mind of the public that buys the
food seasoning product on the strength and on the
indication of the trademark or brand identifying or
distinguishing the same.
It cited the case of Go Tiong Sa vs. Director of
Patents, wherein it 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; it is
necessary that the infringing label should suggest
an effort to imitate.” In cases of infringement of
trademarks, the issue involved is whether the use
of the marks would be likely to cause confusion or
mistakes in the mind of the public or deceive
purchasers.
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,