IPLTrademark Casescomplete

INTELLECTUAL PROPERTY LAW | TRADEMARK | Case Digest
THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES
1. Purpose of the Trademark Law

 Philip Moris Inc. vs. Fortune Tobacco Corp., G.R. No. 158589, June 27,
2006
DOCTRINE: The protection of trademarks is the laws recognition of the psychological function
of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them.
A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or
what he has been led to believe what he wants. The owner of a mark exploits this human
propensity by making every effort to impregnate the atmosphere of the market with the drawing
power of a congenial symbol. Whatever the means employed, the aim is the same - to convey
through the mark, in the minds of potential customers, the desirability of the commodity upon
which it appears. Once this is attained, the trade-mark owner has something of value. If another
poaches upon the commercial magnetism of the symbol he has created, the owner can obtain
legal redress.
FACTS: This is a petition for review under Rule 45 of the Rules of Court, to seek the reversal
and setting aside of the following issuances of the Court of Appeals (CA). Philip Morris, Inc. and
two other petitioners are ascribing whimsical exercise of the faculty conferred upon magistrates
by Section 6, Rule 58 of the Revised Rules of Court when respondent Court of Appeals lifted the
writ of preliminary injunction it earlier had issued against Fortune Tobacco Corporation, from
manufacturing and selling “MARK” cigarettes in the local market. Banking on the thesis that
petitioners’ respective symbols “MARK VII”, ‘MARK TEN”, and “MARK”, also for cigarettes,
must be protected against unauthorized appropriation. All petitioners are not doing business in the
Philippines but are suing on an isolated transaction, They Invoked provisions of the Paris
Convention for the Protection of Industrial and Intellectual Property. As corporate nationals of
member-countries of the Paris Union, they can sue before Philippine courts for infringement of
trademarks, or for unfair competition, without need of obtaining registration or a license to do
business in the Philippines, and without necessity of actually doing business in the Philippines.
Philip Morris and its subsidiaries filed the complaint for infringement and damages against
Fortune Tobacco before the Pasig Regional Trial Court (RTC) for manufacturing and selling
cigarettes bearing the trademark “Mark” which is identical and confusingly similar to Philip
Morris trademarks. The said act was dismissed. Hence, this petition at bar.
ISSUE: WON there has been an invasion of plaintiffs’ right of property to such trademark or
trade name.
RULING: No. There is no proof that any of petitioner’s products which they seek to protect from
any adverse effect of the trademark applied for by defendant, is in actual use and available for
commercial purposes anywhere in the Philippines. A fundamental principle of Philippine
Trademark Law is that actual use in commerce in the Philippines is a pre-requisite to the
acquisition of ownership over a trademark or a trade name. In view of the explicit representation
of petitioners in the complaint that they are not engaged in business in the Philippines, it
inevitably follows that no conceivable damage can be suffered by them not to mention the
foremost consideration heretofore discussed on the absence of their “right” to be protected.
Following universal acquiescence and comity, our municipal law on trademarks regarding the
requirement of actual use in the Philippines must subordinate an international agreement
inasmuch as the apparent clash is being decided by a municipal tribunal. Withal, the fact that
UNIVERSITY OF SAN JOSE RECOLETOS – SCHOOL OF LAW P a g e 1 | 90

international law has been made part of the law of the land does not by any means imply the
primacy of international law over national law in the municipal sphere. Under the doctrine of
incorporation as applied in most countries, rules of international law are given a standing equal,
not superior, to national legislative enactments.
2. Historical Development
 Mirpuri vs. CA, G.R. No. 114508, Nov. 19, 1999
DOCTRINE: As early as 5000 DC, markings have been discovered. In the middle ages, in the
early industrial revolution, marks have been used and for different reasons. It would vary from
identifying the source or protecting the interest of traders sharing common interest or a guild or
as a result of a government using a mark for taxation purposes. But in modern times, a mark has
acquired three functions:
1) They indicate origin or ownership of the articles to which they are attached;
(2) They guarantee that those articles come up to a certain standard of quality; and
(3) They advertise the articles they symbolize.
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: WON the treaty (Paris Convention) affords protection to a foreign corporation against a
Philippine applicant for the registration of a similar trademark.
RULING: 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.
3. Definition of marks, service marks & collective marks
 Sec. 121; 121.1; 121.2
 Canon Kabushiki Kaisha vs. CA, G.R. 120900, July 20, 2000
DOCTRINE: Ordinarily, the ownership of a trademark or tradename is a property right that the
owner is entitled to protect as mandated by the Trademark Law. However, when a trademark is
used by a party for a product in which the other party does not deal, the use of the same
trademark on the latter’s product cannot be validly objected to.
FACTS: On January 15, 1985, private respondent NSR Rubber Corporation filed an application
for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and

Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition
alleging that it will be damaged by the registration of the trademark CANON in the name of
private respondent since they were using the same trademark for their footwear line of products.
The private respondent will also use the name Canon for its footwear products.
Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2,
paints, chemical products, toner, and dye stuff. Petitioner also submitted in evidence its
Philippine Trademark Registration No. 39398, showing its ownership over the trademark
CANON. The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of
petitioner and giving due course to NSR's application for the registration of the trademark
CANON. Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually
affirmed the decision of the BPTTT.
ISSUE: Is the use of trademark, CANON, by the private respondent affects the business of
Canon Kabushiki Kaisha who has an existing ownership of a trademark also known as CANON?
RULING: The Supreme Court says that ordinarily, the ownership of a trademark or trade name is
a property right that the owner is entitled to protect as mandated by the Trademark Law.
However, when a trademark is used by a party for a product in which the other party does not
deal, the use of the same trademark on the latter's product cannot be validly objected to. The
BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark
CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent can use
the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a world of
difference between the paints, chemical products, toner, and dyestuff of petitioner and the sandals
of private respondent
 Societes des Produits vs. CA, G.R. No. 112012, April 4, 2001
DOCTRINE: 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.
FACTS: Respondent filed an application for the registration of the trademark “FLAVOR
MASTER” for instant coffee and was published. Petitioners, a Swiss company registered under
Swiss laws and domiciled in Switzerland, and a Philippine corporation and licensee of Societe,
respectively, filed an opposition claiming that the trademark of Respondent’s product is
confusingly similar to its trademarks for coffee and coffee extracts: MASTER ROAST and
MASTER BLEND, and its registration would likely cause confusion in trade; or deceive
purchasers and would falsely suggest to the purchasing public a connection, as the dominant word
present in the 3 trademarks is “MASTER”; or that the goods of Respondent might be mistaken as
having originated from Petitioners. BPTTT denied Respondent’s application, to which the latter
appealed to the CA. CA ordered the approval of Respondent’s application holding that the glaring
dissimilarities far outweigh the similarities thus; there can be no likelihood of confusion.

ISSUE: WON the word “MASTER” is a generic or descriptive term not capable of registration.
RULING: The petition is impressed with merit. In addition, 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.”
In associating its coffee products with the term “MASTER” and thereby impressing them with the
attributes of said term… x x x
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.
4. Functions of a Trademark
 Phil. Refining Co. vs. Ng Sam, G.R. No. L-26676, July 30, 1982
DOCTRINE: A trademark is designed to identify the user. But it should be so distinctive and
sufficiently original as to enable those who come into contact with it to recognize instantly the
Identity of the user. It must be affirmative and definite, significant and distinctive, capable to
indicate origin.
FACTS: 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?
RULING: 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.
5. Nature of a Trademark Right
 Arce Sons and Co. vs. Selects Biscuits, 1 SCRA 253 (1961)
DOCTRINE: "The ownership or possession of a trade-mark, . . . shall be recognized and

protected in the same manner and to the same extent, as are other property rights known to the
law," thereby giving to any person entitled to the exclusive use of such trade-mark the right to
recover damages in a civil action from any person who may have sold goods of similar kind
bearing such trade-mark.
FACTS: Respondent filed for registration of the word “SELECTA” as trade-mark to be use in its
bakery products. The E found that the trade-mark sought to be registered resembles the word
“SELECTA” used by the P in its milk and ice cream products so that its use by R will cause
confusion as to the origin of their respective goods, recommending then that the application be
refused. Upon reconsideration, PO ordered the publication.
Petitioner filed its opposition thereto on several grounds, among which are: that the mark
“SELECTA” had been continuously used by Petitioner in the manufacture and sale of its
products, including cakes, bakery products, milk and ice cream from the time of its organization
and even prior thereto by its predecessor-in-interest, Ramon Arce; that the mark “SELECTA” has
already become identified with name of the Petitioner and its business; that the mark to which the
application of R refers has striking resemblance, both in appearance and meaning, to Petitioner’s
mark as to be mistaken therefor by the public and cause Respondent’ s goods to be sold as
Petitioner’s; Petitioner actually filed a complaint for UC asking for damages and for the issuance
of a WI. CFI rendered decision perpetually enjoining R from using the name “SELECTA” and
ordering it to pay P by way of damages. Respondent appealed this to the CA. Meanwhile, the
Director of Patent dismissed Petitioner’s opposition. Hence, Petitioner interposed the present
petition for review. The two cases are now before the SC for consolidated decision.
ISSUE: WON the tradename “SELECTA” has acquired secondary meaning in favor of
petitioner.
RULING: YES. The word ‘SELECTA’, it is true, may be an ordinary or common word in the
sense that may be used or employed by anyone 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 use 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 use to the exclusion of all others. And it is also in the sense that the law postulates
that “The ownership or possession of a trademark, . . . shall be recognized and protected in the
same manner and to the same extent, as are other property rights known to the law,” thereby

giving to any person entitled to the exclusive use of such trade-mark the right to recover damages
in a civil action from any person who may have sold goods of similar kind bearing such trade-
mark (Sections 2-A and 23, Republic Act No. 166, as amended).
The term ‘SELECTA’ may be placed at par with the words “Ang Tibay” which this Court has
considered not merely as a descriptive term within the meaning of the Trade-mark Law but as a
fanciful or coined phrase, or a trade-mark. In that case, this Court found that respondent has
constantly used the term “Ang Tibay”, both as a trade-mark and a trade-name, in the manufacture
and sale of slippers, shoes and indoor baseballs for twenty-two years before petitioner registered
it as a trade-name for pants and shirts so that it has performed during that period the function of a
trade-mark to point distinctively, or by its own meaning or by association, to the origin or
ownership of the wares to which it applies.
The rationale in the Ang Tibay case applies on all fours to the case of petitioner.
In view of the foregoing, we hold that the Director of Patent committed an error in dismissing the
Petitioner’s opposition, and consequently, we hereby reverse his decision. Consistently with this
finding, we hereby affirm the decision of the court a quo.
 Converse Rubber vs. Universal Rubber, G.R. no. L-27906, Jan. 8,

1987
DOCTRINE: The ownership of a trademark is a property right which the owner is entitled to
protect since there is damage to him from confusion or reputation. When you have acquired the
drawing power of your mark, and the consumers are accustomed to your goods, patronizes your
goods, you have acquired a right known as a goodwill.
FACTS: Respondent Universal Rubber applied for the registration of the trademark ‘Universal
Converse and Device’ used on its rubber shoes and rubber slippers. Petitioner Converse opposed
on the ground that the trademark sought to be registered is confusingly similar to the word
‘Converse’ which is part of its corporate name ‘Converse Rubber Corporation’ and will likely
deceive purchasers and cause irreparable injury to its reputation and goodwill in the Philippines.
Respondent argued that the trademarks petitioner uses on its rubber shoes are ‘Chuck Taylor’ and
‘All Star Device.’ The Director of Patents gave due course to respondent’s application. MR was
denied.
ISSUE: WON there is confusing similarity between the two trademarks.
RULING: YES. The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is

imprinted in a circular manner on the side of its rubber shoes. In the same manner, the trademark
of petitioner which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base
attached to the side of its rubber shoes. The determinative factor in ascertaining whether or not
marks are confusingly similar to each other “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. 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 new brand for it.” Even if not all the details just
mentioned were identical, with the general appearance alone of the two products, any ordinary, or
even perhaps even [sic] a not too perceptive and discriminating customer could be deceived … “
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 origins 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 parties originated from the same source.
6. Trademark vs. Trade name

 Sec. 121.3; 165
 Canon Kabushiki Kaisha vs. CA, supra
DOCTRINE: A trade name refers to the business and its goodwill; a trademark refers to the
goods.
FACTS: Respondent NSR Rubber filed an application for registration of the mark CANON for
sandals. Petitioner Canon, a Japanese corporation, opposed alleging it will be damaged by the
registration. Petitioner presented evidence that it was the owner of the mark CANON in various
countries and in the Philippines for goods such as paints, chemical products, toner and dye stuff.
BPTTT dismissed the opposition and gave due course to respondent’s application. CA affirmed.
Petitioner invokes Article 8 of the Paris Convention which affords protection to a tradename
whether or not it forms part of a trademark.
ISSUE: WON petitioner may be afforded protection of its trade name.
RULING: NO. The term “trademark” is defined by RA 166, the Trademark Law, as including
“any word, name, symbol, emblem, sign or device or any combination thereof adopted and used
by a manufacturer or merchant to identify his goods and distinguish them for those manufactured,
sold or dealt in by others.” Tradename is defined by the same law as including “individual names
and surnames, firm names, tradenames, devices or words used by manufacturers, industrialists,
merchants, agriculturists, and others to identify their business, vocations, or occupations; the
names or titles lawfully adopted and used by natural or juridical persons, unions, and any
manufacturing, industrial, commercial, agricultural or other organizations engaged in trade or
commerce.” Simply put, a trade name refers to the business and its goodwill; a trademark refers
to the goods.
The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris
Convention, of which both the Philippines and Japan, the country of petitioner, are signatories, 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. We agree with
public respondents that the controlling doctrine with respect to the applicability of Article 8 of the
Paris Convention is that established in Kabushi Kaisha Isetan vs. IAC.As pointed out by the
BPTTT: “Regarding the applicability of Article 8 of the Paris Convention, this Office believes
that there is no automatic protection afforded an entity whose tradename is alleged to have been
infringed through the use of that name as a trademark by a local entity. To illustrate – if a taxicab
or bus company in a town in the United Kingdom or India happens to use the tradename “Rapid
Transportation”, it does not necessarily follow that “Rapid” can no longer be registered in
Uganda, Fiji, or the Philippines.”
7. Basis of the Right to a Mark

 Sec. 122
 Puma Sportsshenfabriken vs. IAC, G.R. No. 75067, Feb. 26, 1988

DOCTRINE: There are three basic requirements for marks to acquire right even without
registration:
1. Use of the mark should be widespread (in Philippines, doesn’t have to be nationwide, as long
as widespread in so far as intended market is concerned)
2. Products have been favorable received.
3. The goods have borne the corporate name, the trade name of the enterprise.
FACTS: Puma, a West German Corporation and producer of Puma products, filed a complaint
for patent or trademark infringement with a prayer for the issuance of a writ of prelim injunction
against Mil-Oro Manufacturing Corp. Mil-Oro had been producing Puma socks and belts. MTD
filed for lack of capacity to sue. MTD denied, injunction granted. CA reversed. Hence this
petition for review on certiorari.
ISSUE: WON Puma has capacity to sue.
RULING: YES. Puma had substantially complied with Sec. 21-A of RA 166. Its complaint
specifically alleged that it is not doing business in the Philippines and is suing under that law,
which provides that "the country of which the said corporation or juristic person is a citizen, or in
which it is domiciled, by treaty, convention or law, grants a similar privilege to corporate or
juristic persons of the Philippines." The Federal Republic of Germany and the Philippines are
both parties of the Paris Convention, which forms part of the law of the land.
As held in La Chemise Lacoste, S.A .v. Fernandez,, a foreign corporation not doing business in
the Philippines needs no license to sue before Philippine courts for infringement of trademark and
unfair competition. Further, 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.This is in accordance with
Section 37 of RA No. 166, otherwise known as the trademark Law, which provides that “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.”Thus, Puma had
the legal capacity to file the action.
 Marvex Commercial Co., Inc. vs. Petra Hawpia & Co, L-16297,
Dec. 22, 1926
DOCTRINE: In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much
alike. Similarity of sound is sufficient ground for this Court to rule that the two marks are
confusingly similar when applied to merchandise of the same descriptive properties.
FACTS: Petra Hawpia & Co., a partnership duly organized under the laws of the Philippines
filed a petition for the registration of the trademark "LIONPAS" used on medicated plaster, with
the Philippine Patent Office, asserting its continuous use in the Philippines since June 9,

1958. The Marvex Commercial Co., Inc., a corporation also duly organized under the laws of the
Philippines, on July 24, 1959 filed an opposition thereto, alleging that the registration of such
trademark would violate its right to and interest in the trademark "SALONPAS" used on another
medicated plaster, which is registered its name under Certificate of Registration 5486, issued by
the Director of Patents on September 29, 1956, and that both trademarks when used on medicated
plaster would mislead the public as they are confusingly similar. The Director of Patents
dismissed the opposition and gave due course to the petition, stating in part that "confusion,
mistake, or deception among the purchasers will not likely and reasonably occur" when both
trademarks are applied to medicated plaster.
ISSUE:
(1) Is the applicant the owner of the trademark "LIONPAS"?;
(2) Is the trademark "LIONPAS" confusingly similar to the trademark "SALONPAS"?
RULING: On the 1st issue:
The assignment must be in writing, acknowledged before a notary public or other officer
authorized to administer oaths or perform other notarial acts and certified under the hand and
official seal of the notary or other officer. (Sec. 31, par. 2)
In this case, although a sheet of paper is attached to exh. 6, on which is typewritten a certification
that the signatures of the presidents of the two named companies (referring to the signatures in
exh. 6) "have been duly written by themselves", this sheet is unmarked, unpaged, unsigned,
undated and unsealed. We have thumbed the record in quest of any definitive evidence that it is a
correct translation of the Japanese characters found on another unmarked and unpaged sheet, and
have found none.
The documents are legally insufficient to prove that the applicant is the owner of the trademark in
question. As a matter of fact, the other evidence on record states that the applicant is merely the
"exclusive distributor" in the Philippines of the "LIONPAS" penetrative plaster; describes the
applicant as the "Philippine sole distributor" of "LIONPAS"; exh. B simply states that
"LIONPAS" is "manufactured exclusively for Petra Hawpia & Co. for distribution in the
Philippines." Not being the owner of the trademark "LIONPAS" but being merely an importer
and/or distributor of the said penetrative plaster, the applicant is not entitled under the law to
register it in its name.
On the 2nd issue:
The trademarks "SALONPAS" and "LIONPAS" are confusingly similar in sound. Both these
words have the same suffix, "PAS", which is used to denote a plaster that adheres to the body
with curative powers. "Pas, being merely descriptive, furnishes no indication of the origin of the
article and therefore is open for appropriation by anyone (Ethepa vs. Director of Patents, L-
20635, March 31, 1966) and may properly become the subject of a trademark by combination
with another word or phrase.
Two letters of "SALONPAS" are missing in "LIONPAS"; the first letter a and the letter s. Be that
as it may, when the two words are pronounced, the sound effects are confusingly similar. And
where goods are advertised over the radio, similarity in sound is of especial significance (Co

Tiong Sa vs. Director of Patents, 95 Phil. 1 citing Nims, The Law of Unfair Competition and
Trademarks, 4th ed., vol. 2, pp. 678-679). "The importance of this rule is emphasized by the
increase of radio advertising in which we are deprived of help of our eyes and must depend
entirely on the ear" (Operators, Inc. vs. Director of Patents, supra).The registration of
"LIONPAS" cannot therefore be given due course. Decision of the respondent Director of Patents
is set aside, and the petition of the respondent Petra Hawpia & Co. is hereby dismissed.
 Operators Inc. vs. Director of Patents, L-17901, Oct. 29, 1965
DOCTRINE: The question of infringement is to be determined by the test of dominancy. The

dissimilarity in size, form and color of the label and the place where applied are not conclusive.
If the competing label contains the trademark of another, and confusion or deception is likely to
result, infringement takes place, regardless of the fact that the accessories are dissimilar.
Duplication or exact imitation is not necessary; nor is it necessary that the infringing label
should suggest an effort to imitate.
FACTS: Petitioner, a domestic corporation, applied to the Philippine Patent Office for
registration of AMBISCO as a trademark for its locally manufactured candy products. It has been
using said trademark since May 1956. The National Biscuit Company opposed the application,
having previously registered NABISCO as trademark for its own bakery goods, such as biscuits,
crackers, cakes and wafers. The oppositor, has had the said trademark registered in the
Philippines since 1930.
ISSUE: WON the petitioner’s trademark would cause confusion or mistakes in the mind of the
public or deceive purchasers?
RULING: Yes, the court considered that the similarities in appearance and sound between the
marks AMBISCO and NABISCO, the nature and similarity of the products of the parties together
with the fact that opposer's NABISCO has been used in commerce in the Philippines for more
than fifty five (55) years before AMBISCO was adopted by applicant, confusion of purchasers is
likely.
 Gabriel vs. Perez, G.R. L-24075, jan. 31, 1974
DOCTRINE: The right to register trademark is based on ownership and a mere distributor of a
product bearing a trademark, even if permitted to use said trademark, has right to and cannot
register the said trademark.
FACTS: Dr. Jose R. Perez filed with the Patents Office on February 23, 1961 an application for
registration of the trademark "WONDER" in the Supplemental Register. On October 19, 1962,
petitioner Crisanta Y. Gabriel claiming that he had been using the subject mark since 1959 filed
with the Patent Office a petition for cancellation of the trademark "WONDER from the
supplemental register alleging that the registrant was not entitled to register the said trademark at
the time of his application for registration.
In support of her petition, she further alleged the written contract between her and the registrant
(respondent) wherein, according to her, the latter has recognized her right of use and ownership
of said trademark; and that the labels submitted by the registrant are the very containers bearing
the trademark "WONDER" which are owned by her and which she has been exclusively and
continuously using in commerce after Dr. Perz had perfected his research and obtained a
certificate of label, he made an agreement (January, 1959) with a certain company named
'Manserco' for the distribution of his soap. It was then being managed by Mariano S. Yangga who

happens to be the brother of the Petitioner Crisanta Y. Gabriel “Because the corporation was
allegedly going bankrupt and the members were deserting, the Respondent terminated the
agreement in July, 1959, and thereafter he asked the Petitioner to become the distributor of his
products. Director of Patents rendered his decision denying the petition of Gabriel to cancel the
certificate of registration.
ISSUE: WON Gabriel, as a mere distributor have the right to register the subject mark in her own
name/ negative.
RULING: "Because the corporation was allegedly going bankrupt and the members were
deserting, the Respondent terminated the agreement in July, 1959, and thereafter he asked the
Petitioner to become the distributor of his products. Crisanta Y. Gabriel appears to be a mere
distributor of the product by contract with the manufacturer, respondent Dr. Jose R. Perez and the
same was only for a term. Under Sections 2 and 2-A of the Trademark Law, Republic Act No.
166, as amended, the right to register trademark is based on ownership and a mere distributor of a
product bearing a trademark, even if permitted to use said trademark, has no right to and cannot
register the said trademark. Petitioner urges that the agreement of exclusive distributorship
executed by and between her and respondent vested in her the exclusive ownership of the
trademark "WONDER". But a scrutiny of the provisions of said contract does not yield any right
in favor of petitioner other than that expressly granted to her — to be the sole and exclusive
distributor of respondent Dr. Perez' product. The agreement never mentioned transfer of
ownership of the trademark. It merely empowers the petitioner as exclusive distributor to own the
package and to create a design at her pleasure, but not the right to appropriate unto herself the
sole ownership of the trademark so as to entitle her to registration in the Patent Office. The
exclusive distributor does not acquire any proprietary interest in the principal's trademark. The
trademark "WONDER" has long been identified and associated with the product manufactured
and produced by the Dr. Jose R. Perez Cosmetic Laboratory. Petitioner's act in defraying
substantial expenses in the promotion of the Jmvdg Trademark Cases 17 Intellectual Property
Law AUF School of Law Atty. Eric Recalde Respondent's goods and the printing of the packages
are the necessary or essential consequences of Paragraph 6 of the agreement because, anyway,
those activities are normal in the field of sale and distribution, as it would redound to her own
benefit as distributor, and those acts are incumbent upon her to do.
 Unno vs. General Milling, G.R. no. L-28554, Feb. 28, 1983
DOCTRINE: The right to register trademark is based on ownership. 4 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. 5 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. 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.
FACTS: On December 11, 1962, respondent General Milling Corporation filed an application for
the registration of the trademark "All Montana" to be used in the sale of wheat flour. In view of
the fact that the same trademark was previously, registered in favor of petitioner Unno
Commercial Enterprises, Inc., the Chief Trademark Examiner of the Philippines Patent Office
declared an interference proceeding between respondent corporation's application (Serial No.
9732), as Junior - Party-Applicant and petitioner company's registration (Registration No. 9589),

as Senior Party-Applicant, docketed in the Philippines Patent Office as Inter Partes Case No. 313,
to determine which party has previously adopted and used the trademark "All Montana".
ISSUE: WON the Director of Patents can order cancellation of its certificate of registration
interference proceeding and that the question of whether or not a certificate of registration is to be
cancelled should have been brought in cancellation proceedings?
RULING: No. The Court finds without merit petitioner's argument that the Director of Patents
could not order the cancellation of' its certificate of registration in an interference proceeding and
that the question of whether or not a certificate of registration is to be cancelled should have been
brought in cancellation proceedings. Under Rule 178 of the Rules of the Patent Office in
Trademark Cases, 14 the Director of Patents is expressly authorized to order the cancellation of a
registered mark or trade name or name or other mark of ownership in an inter partes case, such as
the interference proceeding at bar.
Petitioner's contention that it is the owner of the mark "All Montana" because of its certificate of
registration issued by the Director of Patents, must fail, since ownership of a trademark is not
acquired by the mere fact of registration alone. 9 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. 10 Registration does not perfect a trademark right. 11 As
conceded itself by petitioner, evidence may be presented to overcome the presumption. Prior use
by one will controvert a claim of legal appropriation, by subsequent users. In the case at bar, the
Director of Patents found that "ample evidence was presented in the record that Centennial Mills,
Inc. was the owner and prior user in the Philippines of the trademark 'All Montana' through a
local importer and broker. Use of a trademark by a mere importer, indentor or exporter (the
Senior Party herein) inures to the benefit of the foreign manufacturer whose goods are identified
by the trademark. The Junior Party has hereby established a continuous chain of title and,
consequently, prior adoption and use" and ruled that "based on the facts established, it is safe to
conclude that the Junior Party has satisfactorily discharged the burden of proving priority of
adoption and use and is entitled to registration." It is well-settled that we are precluded from
making further inquiry, since the findings of fact of the Director of Patents in the absence of any
showing that there was grave abuse of discretion is binding on us 12 and the findings of facts by
the Director of Patents are deemed conclusive in the Supreme Court provided that they are
supported by substantial evidence. 13 Petitioner has failed to show that the findings of fact of the
Director of Patents are not substantially supported by evidence nor that any grave abuse of
discretion was committed.
 Emerald Garments Mfg. Corp. vs. Court of Appeals, G.R. 100098,

December 29, 1995, 251 SCRA 600
DOCTRINE: Any person who shall use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with
the sale, offering for sale, or advertising of any goods, business or services on or in connection
with which such use is likely to cause confusion or mistake or to deceive purchasers or others as
to the source or origin of such goods or services, or identity of such business; or reproduce,
counterfeit, copy or colorably imitable any such mark or trade-name and apply such
reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with such
goods, business or services; shall be liable to a civil action by the registrant for any or all of the
remedies herein provided.

FACTS: In 1981, H.D Lee Co., Inc., a foreign company, filed an opposition against the
trademark application of Emerald Garment. Allegedly, the trademark “Stylistic Mr. Lee” sought
to be applied for by Emerald Garment is too confusingly similar with the brand “Lee” which has
for its variations “Lee Riders”, “Lee Sures”, and “Lee Leens”. The Director of Patents as well as
the Court of Appeals ruled in favor of H.D. Lee Co.
ISSUE: WON petitioners trademark stylistic Mr. Lee is confusingly similar with the private
respondent’s trademark Lee or Lee-Rider, Lee – Leens and Lee – Sures.
WON the decision of the Court of Appeals is correct.
RULING: No. The Supreme Court considered that the trademarks involved as a whole and ruled
that Emerald Garment’s “STYLISTIC MR. LEE” is not confusingly similar to H.D. Lee’s “LEE”
trademark. The trademark “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.
First, the products involved in the case at bar are, in the main, various kinds of jeans. These are
not your ordinary household items like catsup, soysauce or soap which are of minimal cost.
Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be
more cautious and discriminating in and would prefer to mull over his purchase. Confusion and
deception, then, is less likely.
Second, like his beer, the average Filipino consumer generally buys his jeans by brand. He does
not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani.
He is, therefore, more or less knowledgeable and familiar with his preference and will not easily
be distracted.
Finally, in line with the foregoing discussions, more credit should be given to the “ordinary
purchaser.” Cast in this particular controversy, the ordinary purchaser is not the “completely
unwary consumer” but is the “ordinarily intelligent buyer” considering the type of product
involved.
There is no cause for the Court of Appeal’s apprehension that Emerald Garment’s products might
be mistaken as “another variation or line of garments under H.D. Lee’s ‘LEE’ trademark”. As
one would readily observe, H.D. Lee’s variation follows a standard format “LEERIDERS,”
“LEESURES” and “LEELEENS.” It is, therefore, improbable that the public would immediately
and naturally conclude that petitioner’s “STYLISTIC MR. LEE” is but another variation under
H.D. Lee’s “LEE” mark. The issue of confusing similarity between trademarks is resolved by
considering the distinct characteristics of each case. In the present controversy, taking into
account these unique factors, we conclude that the similarities in the trademarks in question are
not sufficient as to likely cause deception and confusion tantamount to infringement. Further,
H.D. Lee failed to prove in court that it had prior actual commercial use of its “LEE” trademark
in the Philippines. H.D. Lee did show certificates of registrations for its brand but registration is
not sufficient. Actual use in commerce in the Philippines is an essential prerequisite for the
acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine
Trademark Law (R.A. No. 166).

A rule widely accepted and firmly entrenched because it has come down through the years is that
actual use in commerce or business is a prerequisite in the acquisition of the right of ownership
over a trademark.
It would seem quite clear that 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. For trademark is a creation of use. The underlying reason for all these
is that purchasers have come to understand the mark as indicating the origin of the wares.
Flowing from this is the trader’s right to protection in the trade he has built up and the goodwill
he has accumulated from use of the trademark. Registration of a trademark, of course, has value:
it is an administrative act declaratory of a pre-existing right. Registration does not, however,
perfect a trademark right.
 Converse Rubber vs. Universal Rubber, G.R. No. L-27906, Jan. 8,

1987
DOCTRINE: Persons who are nationals of, domiciled 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 repression of unfair competition to
which the Philippines may be a party, shall be entitled to the benefits and subject to the
provisions of this Act. Trade names 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 parts
of marks.
FACTS: Respondent Universal Rubber Products, Inc. filed an application with the Philippine
Patent office for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used
on rubber shoes and rubber slippers. Petitioner Converse Rubber Corporation filed its opposition
to the application for registration on grounds that:
a] The trademark sought to be registered is confusingly similar to the word "CONVERSE" which
is part of petitioner's corporate name "CONVERSE RUBBER CORPORATION" 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 the petitioner; and,
b] The registration of respondent's trademark will cause great and irreparable injury to the
business reputation and goodwill of petitioner in the Philippines and would cause damage to said
petitioner within the, meaning of Section 8, R.A. No. 166, as amended.
Universal Rubber Products filed an application with the Patents office for the registration of the
Trademark “Universal Converse and Device” used on rubber shoes and rubber slippers. Converse
Rubber Corp. filed its opposition on the ground that the trademark is confusingly similar to the
word “converse” which was part of its corporate name, and which would result in injury to its
business reputation and goodwill. The director of Patents dismissed converse Rubber’s
opposition. With its motion for reconsideration denied, it filed a petition for review with the
Supreme Court.
ISSUE: WON the respondent's partial appropriation of petitioner's corporate name is of such
character that it is calculated to deceive or confuse the public to the injury of the petitioner to
which the name belongs

RULING: No. The trademark of respondent "UNIVERSAL CONVERSE and DEVICE" is
imprinted in a circular manner on the side of its rubber shoes. In the same manner, the trademark
of petitioner which reads "CONVERSE CHUCK TAYLOR" is imprinted on a circular base
attached to the side of its rubber shoes. The determinative factor in ascertaining whether or not
marks are confusingly similar to each other "is not whether the challenged mark would actually
cause confusion or mistake on the part of the buying public. 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 new brand for it."
The similarity in the general appearance of respondent's trademark and that of 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 origins 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 parties originated from the
same source. 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.
 Sterling Products International, Inc. vs. Farbenfabriken Bayer

Aktiebgesellschaft, G.R. No. L- 19906, April 30, 1969, 27 SCRA
1214
DOCTRINE: Anyone who lawfully produces or deals in merchandise of any kind or who
engages in any lawful business, or who renders any lawful service in commerce, by actual use
thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his,
exclusive use a trademark, a trade-name, or a service-mark not so appropriated by another, to
distinguish his merchandise, business, or service from the merchandise, business or service of
others. The ownership or possession of a trademark, trade-name, service mark, heretofore or
hereafter appropriated, as in this section provided, shall be recognized and protected in the same
manner and to the same extent as are other property rights known to the law.
FACTS: The word BAYER was the surname of Friedrich Bayer, a German, who, on August 1,
1868, organized a drug company bearing his name — Friedr Bayer et comp. — at Barmen,
Germany. The company was at first engaged in the manufacture and sale of chemicals. At about
the year 1888 it started to manufacture pharmaceutical preparations also. A change of name from
Friedr Bayer to Farbenfabriken vorm. Friedr. Bayer & Co. (FFB, for short) effective July 1, 1881
was followed in 1912 by a change of principal place of business from Elberfeld to Luverkusen,
Germany. Its products came to be known outside Germany. With the discovery in 1899 of the
Bayer Aspirin, the mark BAYER acquired prestige. The time was ripe to register the trademarks.
The record, however, does not clearly show when the word BAYER was registered as a
trademark in Germany. The BAYER CROSS IN CIRCLE trademark was registered in Germany
on January 6, 1904 — No. 65777.8 It was intended to be used on "medicines for human beings
and animals, disinfectants preservatives, tar dyestuffs and chemical preparations for dyes and for

photographic purposes."9 This registered trademark consists of the BAYER CROSS encircled by
the company's name Farbenfabriken vorm. Friedr. Bayer & Co. Elberfeld.
Sterling Drug, Inc. secured registrations of the BAYER trademarks in different countries of the
world. It would appear that the trademark BAYER for medicines was known in the Philippines
about the close of the 19th century. This appears on page 88 of the Revista Farmaceutica de
Filipinos Año I, Numero 7, 3 de Julio de 1893. Before World War I, BAYER products entering
the Philippines came from Germany.
ISSUE: Whether SPI’s ownership of the trademarks extends to products not related to medicine.
RULING: No. SPI’s certificate of registration as to the Bayer trademarks registered in the
Philippines cover medicines only. Nothing in the certificates includes 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 tempted 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 insecticides
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.
 Berris Agricultural Co., Inc. vs. Norby Abyadang, G.R. No.

183404, October 13, 2010
DOCTRINE: R.A. No. 8293 defines a "mark" 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.17 It also defines a "collective mark" as any visible sign designated as
such in the application for registration and capable of distinguishing the origin or any other
common characteristic, including the quality of goods or services of different enterprises which
use the sign under the control of the registered owner of the collective mark.
On the other hand, R.A. No. 166 defines a "trademark" as 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
another.19 A trademark, being a special property, is afforded protection by law. But for one to
enjoy this legal protection, legal protection ownership of the trademark should rightly be
established.
The ownership of a trademark is acquired by its registration and its actual use by the
manufacturer or distributor of the goods made available to the purchasing public. Section 12220
of R.A. No. 8293 provides that the rights in a mark shall be acquired by means of its valid
registration with the IPO. A certificate of registration of a mark, once issued, constitutes prima
facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of
the registrant’s exclusive right to use the same in connection with the goods or services and those
that are related thereto specified in the certificate.
FACTS: On January 16, 2004, respondent Norvy A. Abyadang (Abyadang), proprietor of NS

Northern Organic Fertilizer, with address at No. 43 Lower QM, Baguio City, filed with the
Intellectual Property Office (IPO) a trademark application for the mark "NS D-10 PLUS" for use

in connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. The application,
under Application Serial No. 4-2004-00450, was given due course and was published in the IPO
e-Gazette for opposition on July 28, 2005.
The Bureau finds and so holds that Respondent-Applicant’s mark "NS D-10 PLUS" is
confusingly similar to the Opposer’s mark and as such, the opposition is hereby SUSTAINED.
Consequently, trademark application bearing Serial No. 4-2004-00450 for the mark "NS D-10
PLUS" filed on January 16, 2004 by Norvy A. Ab[yada]ng covering the goods fungicide under
Class 5 of the International Classification of goods is, as it is hereby, REJECTED. Abyadang
filed a motion for reconsideration, and Berris, in turn, filed its opposition to the motion. The basic
law on trademark, infringement, and unfair competition is Republic Act (R.A.) No. 829314
(Intellectual Property Code of the Philippines), specifically Sections 121 to 170 thereof. It took
effect on January 1, 1998. Prior to its effectivity, the applicable law was R.A. No. 166,15 as
amended.
Interestingly, R.A. No. 8293 did not expressly repeal in its entirety R.A. No. 166, but merely
provided in Section 239.116 that Acts and parts of Acts inconsistent with it were repealed. In
other words, only in the instances where a substantial and irreconcilable conflict is found between
the provisions of R.A. No. 8293 and of R.A. No. 166 would the provisions of the latter be deemed
repealed.
ISSUE: Is Abyadang’s mark ‘NS D-10 PLUS’ confusingly similar to that of Berris’ ‘D-10 80
WP’ such that the latter can rightfully prevent the IPO registration of the former?"
RULING: Yes. According to Section 123.1(d) of R.A. No. 8293, a mark cannot be registered if
it is identical with a registered mark belonging to a different proprietor with an earlier filing or
priority date, with respect to: (1) the same goods or services; (2) closely related goods or services;
or (3) near resemblance of such mark as to likely deceive or cause confusion.
In determining similarity and likelihood of confusion, jurisprudence has developed tests—the

Dominancy Test and the Holistic or Totality Test. 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.43
In contrast, 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.44
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.
Inasmuch as the ownership of the mark "D-10 80 WP" fittingly belongs to Berris, and because the
same should not have been cancelled by the CA, we consider it proper not to belabor anymore the
issue of whether cancellation of a registered mark may be done absent a petition for cancellation.
8. Prior Use of a Mark

 Sec. 124.2, 138 and 152
9. Who may apply for a mark?
 Sec. 123
10. Registrability of a Mark
 Sec. 123.1; 123.3
 Emerald Garments Mfg. Corp. vs. Court of Appeals, G.R. No.
100098, December 29, 1995
DOCTRINE: Actual use in commerce in the Philippines is an essential prerequisite for the
acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine
Trademark Law (R.A. No. 166). In Sterling Products International, Inc. v. Farbenfabriken Bayer
Aktiengesellschaft, 27 SCRA 1214 (1969), we declared: . . . "It would seem quite clear that
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.
For trademark is a creation of use. The underlying reason for all these is that purchasers have
come to understand the mark as indicating the origin of the wares. Flowing from this is the
trader's right to protection in the trade he has built up and the goodwill he has accumulated from
use of the trademark. Registration of a trademark, of course, has value: it is an administrative act
declaratory of a preexisting right. Registration does not, however, perfect a trademark right."
The credibility placed on a certificate of registration of one's trademark, or its weight as evidence
of validity, ownership and exclusive use, is qualified. A registration certificate serves merely as
prima facie evidence. It is not conclusive but can and may be rebutted by controverting evidence.
FACTS: On 18 September 1981, private respondent H.D. Lee Co., Inc., a foreign corporation
organized under the laws of Delaware, U.S.A., 􀁆led with the Bureau of Patents, Trademarks &
Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054
(Supplemental Register) for the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses,
socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on
27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation, a
domestic corporation organized and existing under Philippine laws. The petition was docketed as
Inter Partes Case No. 1558. Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark
Law) and Art. VIII of the Paris Convention for the Protection of Industrial Property, averred that
petitioner's trademark "so closely resembled its own trademark, 'LEE' as previously registered
and used in the Philippines, and not abandoned, as to be likely, when applied to or used in
connection with petitioner's goods, to cause confusion, mistake and deception on the part of the
purchasing public as to the origin of the goods."

ISSUE: WON petitioner’s “Stylistic” Mr. Lee trademark cannot be confused with private
respondent’s Lee trademark.
RULING: No. Petitioner's trademark is registered in the supplemental register. The Trademark
Law (R.A.
No. 166) provides that "marks and trade names for the supplemental register shall not be
published for or be subject to opposition, but shall be published on registration in the Official
Gazette." The reckoning point, therefore, should not be 1 May 1975, the date of alleged use by
petitioner of its assailed trademark but 27 October 1980, 20 the date the certificate of registration
SR No. 5054 was published in the Official Gazette and issued to petitioner.
It was only on the date of publication and issuance of the registration certificate that private
respondent may be considered "officially" put on notice that petitioner has appropriated or is
using said mark, which, after all, is the function and purpose of registration in the supplemental
register. 21 The record is bereft of evidence that private respondent was aware of petitioner's
trademark before the date of said publication and issuance. Hence, when private respondent
instituted cancellation proceedings on September 1981, less than a year had passed. Corollary,
private respondent could hardly be accused of inexcusable delay in filling its notice of opposition
to petitioner's application for registration in the principal register since said application was
published only on 20 February 1984. 22 From the time of publication to the time of filing the
opposition on 27 July 1984 barely five (5) months had elapsed. To be barred from bringing suit
on grounds of estoppel and laches, the delay must be lengthy.
More crucial is the issue of confusing similarity between the two trademarks. Petitioner
vehemently contends that its trademark "STYLISTIC MR. LEE" is entirely different from and not
confusingly similar to private respondent's "LEE" trademark. Private respondent maintains
otherwise. It asserts that petitioner's trademark tends to mislead and confuse the public and thus
constitutes an infringement of its own mark, since the dominant feature therein is the word
"LEE."
 Ang vs. Wellington, 92 Phil 448 (1953)
DOCTRINE: It cannot be used because it is a geographical name. Wellington is the capital of

New Zealand. In fact, also a surname of a person. It says they are ordinarily regarded as
common property and it is a general rule that the same cannot be appropriated as a subject of an
exclusive trademark or trade name.
FACTS: Si Heng & Dee are engaged in the business of manufacturing shirts, pants, drawers, and
other articles of wear for men, women, and children. They have been in that business since the
year 1938, having obtained the registration for the said articles the trademark of "Wellington."
Benjamin Chua applied for the registration of the business name "Wellington Department Store"
on May 7, 1946. His application therefor was approved by the Bureau of Commerce, and a
certificate issued in his favor. Petitioners allege that the use of the words "Wellington Department
Store" as a business name and as a corporate name by the defendant-appellee deceives the public
into buying defendant corporation's goods under the mistaken belief that the names are the
plaintiff's or have the same source as plaintiffs' goods, thereby resulting in damage to them.
Defendants raises the defense of dissimilarity of the goods that they deal in. The court a quo
dismissed the complaint and held that Wellington Co. has not been used by any enterprise.
ISSUE: WON the name Wellington can be registered – negative
WON defendant is guilty of unfair competition - negative

RULING: Mere geographical names are ordinarily regarded as common property, and it is a
general rule that the same cannot be appropriated as the subject of an exclusive trademark or
tradename. As the term cannot be appropriated as a trademark or a tradename, no action for
violation thereof can be maintained, as none is granted by the statute in such cases. No action
may lie in favor of the plaintiffs-appellants herein for damages or injunctive relief for the use by
the defendants-appellees of the name "Wellington."
Issue of unfair competition: While there is similarity between the trademark or tradename
"Wellington Company" and that of "Wellington Department Store," no confusion or deception
can possibly result or arise from such similarity because the latter is a "department store," while
the former does not purport to be so. Neither can the public be said to be deceived into the belief
that the goods being sold in defendant's store originate from the plaintiffs, because the evidence
shows that defendant's store sells no shirts or wear bearing the trademark "Wellington," but other
trademarks. The doctrine in Ang vs Teodoro cannot be applied because the evidence submitted by
the appellants did not prove that their business has continued for so long a time that it has become
of consequence and acquired a goodwill of considerable value, such that its articles and products
have acquired a well-known reputation, and confusion will result by the use of the disputed name
by the defendants' department store. The plaintiffs- appellants have not been able to show the
existence of a cause of action for unfair competition against the defendants-appellees.
11. Identical with Prior Marks

 Chuanchow Soy & Canning Co. vs. Director of Patents, 108 Phil
833, 836
DOCTRINE: It does not mean that there is no opposition for registration that your application
will be granted because the examiner can right away deny the application. To determine if that
competing trade are similar, placed them side by side, and compare them.
FACTS: Both petitioner Chuanchow Soy & Canning Co. and respondent Rosario Villapania are
engaged in the manufacture and sale of soy sauce. Since 1950, petitioner had been using as trade
mark the words "Carp Brand Soy", printed in a distinctive style of lettering above the drawing of
a fish to distinguish its product, on labels affixed directly to the bottles containing soy sauce, and
on tissue paper in which these bottles were wrapped. Respondent Villapania since 1956 had been
using as trademark of her soy sauce the name of "Bangos Brand" written in the same distinctive
style of lettering as that of the petitioner's "Carp Brand", above the drawing of the fish similar to
the fish drawing on the trademark of petitioner, on labels also attached to the bottles containing
her soy sauce, and the bottles were wrapped also in tissue paper bearing a similar design.
Villapania applied for registration of her trademark. Petitioner company filed its opposition to
respondent's application. Respondent Director of Patents rendered a decision dismissing
petitioner's opposition to the application.
ISSUE: WON the features of the respondent’s trademark would cause confusion or mistakes in
the mind of the public or deceive purchasers?
RULING: Yes, The court held that the trademarks of the parties involves in this case were very
close resemblance between the two not only in the style of lettering of the words "Carp" and
“Brand" and the words "Bangos Brand", but also in the size of the letters, as well as the word
"Soy" and the Chinese characters underneath the said three words, including the letters beneath
the two fishes, all of which words are correspondingly in the same color, to say nothing of the
similarity of the two fishes not only in their size but even in the length and position of their

respective tails and fin. This not only to avoid confusion on the part of the public, but also to
protect an already used and registered trademark and an established goodwill.
DOCTRINE: Obviously, cooking oil on the one hand, and ham on the other are not the same.
They are not closely related. There is no likelihood of confusion. Ham is a relatively expensive
product. Cooking oil is not so. The Court said that although they are identical marks, they can be
used simultaneously because they are not the same goods or services. Neither are they closely
related goods or services. It has been held that "if a mark is so commonplace that it cannot be
readily distinguished from others, then it is apparent that it cannot identify a particular business;
and he who first adopted it cannot be injured by any subsequent appropriation or imitation by
others, and the public will not be deceived.
FACTS: Private respondent filed with the Philippine Patent Office an application for registration
of the trademark "CAMIA" for his product, ham, which falls under Class 47 (Foods and
Ingredients of Food). Petitioner opposed the application claiming that it first used said trademark
on his products: lard, butter, cooking oil, abrasive detergents, polishing materials and soap of all
kinds, some of which are likewise classified under Class 47. The trademark "CAMIA" was first
used in the Philippines by petitioner on its products in 1922 and registered the same in 1949. On
November 25, 1960, respondent Ng Sam, a Chinese citizen residing in Iloilo City, filed an
application with the Philippine Patent Office for registration of the identical trademark "CAMIA"
for his product, ham, which likewise falls under Class 47. Alleged date of first use of the
trademark by respondent was on February 10, 1959. The Director of Patents rendered a decision
allowing registration of the trademark "CAMIA" in favor of Ng Sam, finding that `the goods of
the parties are not of a character which purchasers would be likely to attribute to a common
origin.
ISSUE: WON the product of respondent Ng Sam, which is ham, and those of petitioner
consisting of lard, butter, cooking oil and soap are so related that the use of the same trademark
"CAMIA'' on said goods would likely result in confusion as to their source or origin. / negative
RULING: The right to a trademark is a limited one, in the sense that others may use the same
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. Where no confusion is likely to arise, as in this case, registration of a similar
or even identical mark may be allowed. The term "CAMIA" is descriptive of a whole genus of
garden plants with fragrant white flowers. A trademark is designed to identify the user. But it
should be so distinctive and sufficiently original as to enable those who come into contact with it
to recognize instantly the identity of the user. "It must be affirmative and definite, significant and
distinctive, capable to indicate origin. If a mark is so commonplace that it cannot be readily
distinguished from others, then it is apparent that it cannot identify a particular business; and he
who first adopted it cannot be injured by any subsequent appropriation or imitation by others, and
the public will not be deceived." While ham and some of the products of petitioner are classified
under Class 47 (Foods and Ingredients of Food), 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 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.
 Esso Standards Eastern Inc. vs. Ca, G.R. No. L-29971, Aug. 31,
1982
DOCTRINE: The related goods principle – Goods are related when they belong to the same
class or have the same descriptive properties or physical attributes, or they serve the same
purpose or flow through the same channel of trade. The registrant of the mark “Esso” for
petroleum products may not validly prevent others from using “Esso” for cigarettes because
there is a marked difference between oil and tobacco, the respective goods flow through different
channels of trade, and the business of one is beyond the zone of potential or natural and logical
expansion of the other. "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."
FACTS: Esso filed a case against United Cigarette Corp for trademark infringement alleging that
after the latter had acquired in November, 1963 the business, factory and patent rights of La
Oriental Tobacco Corporation, it began to use the trademark ESSO on its cigarettes, the same
trademark used by petitioner in its quality petroleum products which was likely to cause
confusion or deception on the part of the purchasing public as to its origin or source, to the
detriment of its own products. In its answer, private respondent admitted the use of the trademark
ESSO on its own product of cigarettes but claimed that these were not identical to those produced
and sold by the petitioner. The trial court found United Cigarette Corp guilty of infringement of
trademark. On appeal, the judgment was reversed and the complaint was dismissed.
ISSUE: WON United Cigarette Corp can be held liable for trademark infringement / negative
RULING: The law defines infringement as the use without consent of the trademark owner of
any "reproduction, counterfeit, copy or colorable imitation of any registered mark or tradename in
connection with the sale, offering for sale, or advertising of any goods, business or services on or
in connection with which such use is likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of such goods or services, or identity of such
business; or reproduce, counterfeit, copy or colorably imitate any such mark or tradename and
apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with such
goods, business or services. Implicit in this definition is the concept that the goods must be so
related that there is a likelihood either of confusion of goods or business. It is undisputed that the
goods on which petitioner uses the trademark ESSO, petroleum products, and the product of
respondent, cigarettes, are non-competing.
Non-competing goods may be those which, though they are not in actual competition, are so
related to each other that it might reasonably be assumed that they originate from one
manufacturer. Goods are related when they belong to the same class or have the same descriptive
properties; when they possess the same physical attributes or essential characteristics with
reference to their form, composition, texture or quality. 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 articles of a different kind. The

products of each party move along and are disposed through different channels of distribution. A
comparison of the labels of the samples of the goods submitted by the parties shows a great many
differences on the trademarks used. CA decision affirmed.
 Canon Kabushiki Kaisha vs. CA, G.R. No. 12090, July 20, 2000
DOCTRINE: In this case, the products of Canon Kabushiki are not related to NSR Rubber
because they belong to different classes. Class 2 for Canon Kabushiki, whereas for NSR, they are
used for sandals. The likelihood of confusion of goods or business is a relative concept, to be
determined only according to the particular, and sometimes peculiar, circumstances of each case.
Indeed, in trademark law cases, even more than in other litigation, precedent must be studied in
the light of the facts of the particular case.
for registration of the mark CANON for sandals in the BPTTT. A Verified Notice of Opposition
was filed by petitioner alleging that it will be damaged by the registration of the trademark
CANON in the name of NSR Rubber Corp. On November 10, 1992, the BPTTT issued its
decision dismissing the opposition of petitioner and giving due course to private respondent's
application for the registration of the trademark CANON. CA affirmed the BPTTT decision and
held that “CANON” can be used by private respondent for its sandals because the products of
these two parties are dissimilar.
ISSUE: WON the use of the tradename CANON by defendant would cause prejudice to
petitioner / negative
RULING: The ownership of a trademark or tradename is a property right that the owner is
entitled to protect as mandated by the Trademark Law. However, when a trademark is used by a
party for a product in which the other party does not deal, the use of the same trademark on the
latter's product cannot be validly objected to. Since the certificate of registration of petitioner for
the trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods classified as class 25 (sandals). Clearly,
there is a world of difference between the paints, chemical products, toner, and dyestuff of
petitioner and the sandals of private respondent. Petitioner failed to attach evidence that would
convince the Court that petitioner has also embarked in the production of footwear products. In
Faberge, Incorporated vs. Intermediate Appellate Court, the Court held: since the senior user has
not ventured in the production of briefs, an item which is not listed in its certificate of
registration, the senior user, cannot and should not be allowed to feign that the junior user had
invaded the senior user's exclusive domain. The certificate of registration confers upon the
trademark owner the exclusive right to use its own symbol only to those goods specified in the
certificate, subject to the conditions and limitations stated therein. The exclusive right of
petitioner in this case to use the trademark CANON is limited to the products covered by its
certificate of registration.
The two classes of products in this case flow through different trade channels. The products of
petitioner are sold through special chemical stores or distributors while the products of private
respondent are sold in grocery stores, sari-sari stores and department stores. Thus, the evident
disparity of the products of the parties in the case at bar renders unfounded the apprehension of
petitioner that confusion of business or origin might occur if private respondent is allowed to use
the mark CANON. The term "trademark" is defined by RA 166, the Trademark Law, as including
"any word, name, symbol, emblem, sign or device or any combination thereof adopted and used
by a manufacturer or merchant to identify his goods and distinguish them for those manufactured,
sold or dealt in by others." The Paris Convention, of which both the Philippines and Japan, the

country of petitioner, are signatories, 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. Regarding the applicability of Article 8 of the Paris Convention, this Office
believes that there is no automatic protection afforded an entity whose tradename is alleged to
have been infringed through the use of that name as a trademark by a local entity. Based on the
memorandum by Ongpin, Petitioner failed to comply with the third requirement of the said
memorandum that is the mark must be for use in the same or similar kinds of goods.
12. Confusingly Similar Marks

 American Wire Cable Co. vs. Director of Patents, G.R. No. L-
26557, Feb. 18, 1970
DOCTRINE: In this case, the actual purchasers here are engineers who are very knowledgeable
and familiar w/ the brands. But unfortunately, in the real scenario, it is delegated to those who
are not so interested with the brands, so there is likelihood of confusion. In confusing similarity,
there is no need for proof of actual confusion, for as long as it is established that there is a
likelihood of confusion: when consumers in purchasing a product will mistake it for another.
FACTS: Respondent Central Banahaw Industries, Inc., applied with the Director of Patents for
registration of the trademark DYNAFLEX and Device to be used in connection with electric
wires. Petitioner The American Wire and Cable Co., Inc. user of registered trade mark
DURAFLEX for electric wires, apparatus, machines and supplies opposed the application on the
ground that applicant's use of the trade mark DYNAFLEX would cause confusion or result in
mistake to purchasers intending to buy DURAFLEX electric wires and goods, Applicant-appellee
contends that the DYNAFLEX mark would not confuse or deceive the buyers and subscribers of
the DURAFLEX brand, because electrical wires are of great value and the purchasers thereof are
generally intelligent — the architects, engineers and building contractors. Director of Patents said
that the trademarks of the parties are different in appearance, meaning, sound and connotation and
hence, are not confusingly similar.
ISSUE: WON the respondent’s trademark would cause confusion or mistakes in the mind of the
public or deceive purchasers?
RULING: Yes, In big constructions, the designing architect or engineer, or the contractor who
will undertake the work of building, does not himself purchase or place the order for the purchase
of the materials to be used therein. The task is oftentimes delegated to another. So that even if the
engineer or contractor will specify in the bill of materials the particular brand of wires needed,
there is no certainty that the desired product will be acquired. Unlike the pharmacists, the
dispensers of hardware or electrical supplies are not generally known to pay as much concern to
the brand of articles asked for by the customer and of a person who knows the name of the brand
but is not acquainted with it is appearance. Hence, the likelihood of the DYNAFLEX product
being mistaken for DURAFLEX is not remote.
 Etepha vs. Director of Patents, G.R. No. L-20635, March 31, 1966
DOCTRINE: That the word “tussin” figures as a component of both trademarks is nothing to
wonder at, 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

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: WON 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.”
 Rueda Hermanos vs. Paglinawan, G.R. No. 10738, Jan. 14, 1916
DOCTRINE: The true test of unfair competition is whether certain goods have been clothed with
an appearance which is likely to deceive the ordinary purchaser exercising ordinary care, and
not whether a certain limited class of purchasers with special knowledge not possessed by the
ordinary purchaser could avoid mistake by the exercise of this special knowledge.
FACTS: Both parties are manufacturing a chocolate candy. Both parties made their products in
the shape of flat, circular pieces, each package containing five pieces. The packages were thus
cylindrical in shape, were of practically the same diameter and length, and were wrapped in the
same quality and color of paper.
ISSUE: WON the defendant is guilty of unfair competition.
RULING: The court resolved the case by citing previous jurisprudence.The true test of unfair
competition is whether certain goods have been clothed with an appearance which is likely to
deceive the ordinary purchaser exercising ordinary care, and not whether a certain limited class of
purchasers with special knowledge not possessed by the ordinary purchaser could avoid mistake
by the exercise of this special knowledge. (United States vs. Manuel)
If the contents of two packages are the same commodity, it is no defense to an action for unfair
competition to show minor differences in the size or shape of the packages or in the wording or
color of the labels or wrappers of the packages. If the exterior size, shape, color and description,
in other words, those things which go to make up the general outside appearances of the article,
are so substantially similar as to "likely deceive the ordinary purchaser exercising ordinary care,"
the defendant is guilty of unfair competition.

In so far as the finding of actual intent to imitate the plaintiff's product is concerned, it must be
remembered that this "may be inferred from similarity in the appearance of the goods as packed
or offered for sale to those of the complaining party." The similarity in the appearance of the
goods as packed and offered for sale is so striking that we are unable to attribute this fact to
anything other than an intent on the part of defendants to deceive the public and defraud plaintiffs
out of their legitimate trade and in this case we infer such intent from the likeness of the goods so
packed and offered for sale. (Inchausti & Co. vs. Song Fo & Co.,)Even if the resemblance is
accidental and not intentional, plaintiff is entitled to protection against its injurious results to his
trade.( Alhambra Cigar, etc., Co. vs. Mojica)
13. Ordinary Purchaser

 Fruit of the Loom vs. CA, G.R. No. L-32747, Nov. 29, 1984
DOCTRINE: 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.
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: WON respondent’s mark and hang tag is confusingly similar with that of petitioner.
RULING: NO.WE agree with the respondent court that by mere pronouncing the two 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 FOR EVE. WE do not agree with
petitioner that the dominant feature of both trademarks is the word FRUIT for even in the printing
of the trademark in both hang tags, the word FRUIT is not at all made dominant over the other
words. As to the design and coloring scheme of the hang tags, the shape of 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.
 Converse Rubber vs. Universal Rubber, supra
DOCTRINE: It is evident that the word “CONVERSE” is the dominant word which identifies
Converse Rubber from other corporations engaged in similar business.
FACTS: Converse Rubber Corporation is an American corporation while Universal Rubber
Products, Inc. is a corporation licensed to do business in the country. Converse has been operating
since 1946. Universal Rubber has been operating since 1963. Later, Universal Rubber filed an
application for the trademark “Universal Converse and Device” before the Philippine Patent
Office. Converse Rubber opposed as it averred that the word “Converse” which is part of its

corporate name cannot be granted as part of Universal Rubber’s trademark or trade name because
it will likely deceive purchasers of Universal Rubber’s products as it may be mistaken by unwary
customers to be manufactured by Converse Rubber. The Director of Patents did not grant the
opposition by Converse Rubber.
ISSUE: WON the decision of the Director of Patents is correct.
RULING: No. From a cursory appreciation of the Converse Rubber’s corporate name
“CONVERSE RUBBER CORPORATION” it is evident that the word “CONVERSE” is the
dominant word which identifies Converse Rubber from other corporations engaged in similar
business. Universal Rubber, in the stipulation of facts, admitted Converse Rubber’s existence
since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes.
This admission necessarily betrays its knowledge of the reputation and business of petitioner even
before it applied for registration of the trademark in question. Knowing, therefore, that the word
“CONVERSE” belongs to and is being used by Converse Rubber, and is in fact the dominant
word in its corporate name, Universal Rubber has no right to appropriate the same for use on its
products which are similar to those being produced by Converse Rubber.
 Etepha vs. Director of Patents, L-20635, March 31, 1966
DOCTRINE: “Colorable Imitation” denotes such a “close or ingenious imitation as to be

calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an
ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to
purchase the one supposing it to be the other.
FACTS: On April 23, 1959, respondent Westmont Pharmaceuticals, Inc., a New York
corporation, sought registration of trademark “Atussin” placed on its “medicinal preparation of
expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the
treatment of cough”. The trademark is used exclusively in the Philippines since January 21, 1959.
Petitioner, Etepha, A.G., a Liechtenstein (principality) corporation, objected. Petitioner claims
that it will be damaged because Atussin is so confusedly similar to its Pertussin (Registration No.
6089, issued on September 25, 1957) used on a preparation for the treatment of coughs, that the
buying public will be misled into believing that Westmont’s product is that of petitioner’s which
allegedly enjoys goodwill.
ISSUE: May trademark ATUSSIN be registered, given the fact that PERTUSSIN, another
trademark, had been previously registered in the Patent Office
RULING: YES. We concede the possibility that buyers might be able to obtain Pertussin or
Atussin without prescription. When this happens, then the buyer must be one thoroughly familiar
with what he intends to get, else he would not have the temerity to ask for a medicine —
specifically needed to cure a given ailment. In which case, the more improbable it will be to palm
off one for the other. For a person who purchases with open eyes is hardly the man to be
deceived. The validity of a cause for infringement is predicated upon colorable imitation. The
phrase “colorable imitation” denotes such a “close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one
supposing it to be the other.
 Lim Hoa vs. Director of Patents, G.R. No. L-8072, Oct. 31, 1956

DOCTRINE: Trademarks are similar to each other which would likely create confusion to the
ordinary buyer. Although the hen and the rooster are of different sexes, they still belong to the
same specie which is the “manok”. To the ordinary buyer, it may not look any different.
FACTS: Lim Hoa filed an application for registration of a trademark showing two midget
roosters in an attitude of combat with the word “Bantam” printed above them for a food
seasoning product. Agricom Development Co., Inc., opposed the application on the ground, 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.
ISSUE: Is there an infringement of trademark?
RULING: Yes. The court ruled that the trademarks are similar to each other which would likely
create confusion to the ordinary buyer. Although the hen and the rooster are of different sexes,
they still belong to the same specie which is the “manok”. To the ordinary buyer, it may not look
any different. The similarity may compel a person to buy one product thinking that it is the other.
Moreover, with all the animals in the land, ocean and air, the court could not phantom why the
plaintiff chose two roosters facing each other knowing that a similar trademark is used by another
establishment producing the same product.
 Asia Brewery Inc. vs. CA, G.R. No. 103543, July 5, 1993
DOCTRINE: In resolving cases of infringement and unfair competition, the courts should “take
into consideration several factors which would affect its conclusion, to wit: the age, training and
education of the usual purchaser, the nature and cost of the article, whether the article is bought
for immediate consumption and also the conditions under which is usually purchased. As pointed
out, beer is ordered by brand, and the customer surrenders his empty replacement bottles or pays
a deposit to guarantee the return of empties. In sari-sari stores, beer is also ordered from the
tindera by brand. Considering further that SAN MIGUEL PALE PILSEN has virtually
monopolized the domestic beer market for the past hundred years, those who have been drinking
no other beer but SAN MIGUEL PALE PILSEN these many years certainly know their beer too
well to be deceived by a newcomer in the market. If they gravitate to ABI’s cheaper beer, it will
not be because they are confused or deceived, but because they find the competing product to
their taste.
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 BERR PALE
PILSEN or BEER NA BEER product which has been competing with SMC’s SAN MIGUEL
PALE PILSEN.
ISSUE: Whether ABI, by manufacturing and selling its BEER PALE PILSEN in amber colored
steinie bottles of 320 ml. capacity with a white painted rectangular label has committed trademark
infringement and unfair competition against SMC.
RULING: No. Infringement is determined by the “test of dominancy” rather than by differences
or variations in the details of one trademark and of another. Thus in the case of Tiong sa vs.
Director of Patents it was held that: 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. The question at issue in cases of infringement of trademarks is whether the use of the

marks involved would likely cause confusion or mistakes in the mind of the public or deceive
purchasers.
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 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. The fact that the words pale pilsen are part of ABI's trademark does
not constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale
pilsen" are generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a
light bohemian beer with a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia. The Court believes it is quite unlikely that a customer of average intelligence
would mistake a bottle of BEER PALE PILSEN for SAN MIGUEL PALE PILSEN. SMC's
brand or trademark: "SAN MIGUEL PALE PILSEN" is not infringed by ABI's mark: "BEER NA
BEER" or "BEER PALE PILSEN." ABI makes its own bottle with a bulging neck to differentiate
it from SMC's bottle, and prints ABI's name in three (3) places on said bottle (front, back and
bottle cap) to prove that it has no intention to pass off its "BEER" as "SAN MIGUEL."
There is no confusing similarity between the competing beers for the name of one is "SAN
MIGUEL" while the competitor is plain "BEER" and the points of dissimilarity between the two
outnumber their points of similarity.
 Del Monte Corp. vs. CA, 181 SCRA 410 (1990)
DOCTRINE: It has been correctly held that side-by-side comparison is not the final test of
similarity. Such comparison requires a careful scrutiny to determine in what points the labels of
the products differ, as was done by the trial judge. The ordinary buyer does not usually make
such scrutiny nor does he usually have the time to do so. The average shopper is usually in a
hurry and does not inspect every product on the shelf as if he were browsing in a library. Where
the housewife has to return home as soon as possible to her baby or the working woman has to
make quick purchases during her off hours, she is apt to be confused by similar labels even if they
do have minute differences. The male shopper is worse as he usually does not bother about such
distinctions. The question is not whether the two articles are distinguishable by their label when
set side by side but whether the general confusion made by the article upon the eye of the casual
purchaser who is unsuspicious and off his guard, is such as to likely result in his confounding it
with the original.
FACTS: Del Monte authorized Philpack to register with the Philippine Patent Office the Del
Monte catsup bottle configuration which was granted. On November 20, 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 to engage in the manufacture, packing, distribution and sale of various kinds
of sauce, identified by the logo Sunshine Fruit Catsup which was registered. The product itself
was contained in various kinds of bottles, including the Del Monte bottle, which the respondent
bought from the junk shops for recycling.
ISSUE: Whether the general confusion made by the article upon the eye of the casual purchaser
who is unsuspicious and off his guard, is such as to likely result in his confounding it with the
original.
RULING: It has been held that in making purchases, the consumer must depend upon his

recollection of the appearance of the product which he intends to purchase. The buyer having in
mind the mark/label of the respondent must rely upon his memory of the petitioner's mark. Unlike
the judge who has ample time to minutely examine the labels in question in the comfort of his
sala, the ordinary shopper does not enjoy the same opportunity. What essentially determines the
attitude of the purchaser, specifically his inclination to be cautious, is the cost of the goods. To be
sure, a person who buys a box of candies will not exercise as much care as one who buys an
expensive watch. As a general rule, an ordinary buyer does not exercise as much prudence in
buying an article for which he pays a few centavos as he does in purchasing a more valuable
thing.
Expensive and valuable items are normally bought only after deliberate, comparative and
analytical investigation. But mass products, low priced articles in wide use, and matters of
everyday purchase requiring frequent replacement are bought by the casual consumer without
great care. In this latter category is catsup. At that, even if the labels were analyzed together it is
not difficult to see that the Sunshine label is a colorable imitation of the Del Monte trademark.
The predominant colors used in the Del Monte label are green and red-orange, the same with
Sunshine. The word "catsup" in both bottles is printed in white and the style of the print/letter is
the same. Although the logo of Sunshine is not a tomato, the figure nevertheless approximates
that of a tomato. In this case, Sunshine chose, without a reasonable explanation, to use the same
colors and letters as those used by Del Monte though the field of its selection was so broad, the
inevitable conclusion is that it was done deliberately to deceive.
14. Confusion of Goods vs. Confusion of Business

 Sterling Products International, Inc. vs. Farbenfabriken bayer
Aktiengesellschaft, G.R. no. L-19906, April 30, 1969, 27 SCRA
1214
DOCTRINE: The rule enunciated in Ang vs. Teodoro which state that - Although two
noncompeting articles may be classified under two different classes by the Patent Office because
they are deemed not to possess the same descriptive properties, they would, nevertheless, be held
by the courts to belong to the same class if the simultaneous use on them of identical or closely
similar trademarks would be likely to cause confusion as to the origin, or personal source, of the
second user's goods. They would be considered as not falling under the same class only if they
are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think
the first user made the second user's goods - is not applicable where the party seeking favor of the
rule is not the originator of the mark.
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 Aktiengesselschaft (FBA). The “Bayer, and “Bayer Cross in
circle” trademarks were acquired by SterlingDrug 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 19thcentury. 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 the rule on “Confusion of origin” is applicable in the case at bar.
RULING: As to the first issue, No. The rule is inapplicable in the case at bar. Plaintiff's
trenchant claim is that it should not be turned away because its case comes within the protection
of the confusion of origin rule. Callmann notes two types of confusion. The first is the confusion
of goods "in which event the ordinarily prudent purchaser would be induced to purchase one
product in the belief that he was purchasing the other." In which case, "defendant's goods are then
bought as the plaintiff's, and the poorer quality of the former reflects adversely on the plaintiff's
reputation." The other is the confusion of business: "Here though the goods of the parties are
different, the defendant's product is such as might reasonably be assumed to originate with the
plaintiff, and the public would then be deceived either into that belief or into the belief that there
is some connection between the plaintiff and defendant which, in fact, does not exist.”
Thus, in the case of Ang v Teodoro, the Court applied the rule where it stated that: "In the present
state of development of the law on Trade Marks, Unfair Competition, and Unfair Trading, the test
employed by the courts to determine whether noncompeting goods are or are not of the same
class is confusion as to the origin of the goods of the second user. Although two noncompeting
articles may be classified under two different classes by the Patent Office because they are
deemed not to possess the same descriptive properties, they would, nevertheless, be held by the
courts to belong to the same class if the simultaneous use on them of identical or closely similar
trademarks would be likely to cause confusion as to the origin, or personal source, of the second
user's goods. The courts have come to realize that there can be unfair competition or unfair
trading even if the goods are noncompeting, and that such unfair trading can cause injury or
damage to the first user of a given trade-mark, first, by prevention of the natural expansion of his
business and second, by having his business reputation confused with and put at the mercy of the
second user.
Nonetheless, such rule cannot be applied in the case at bar since plaintiff Sterling was not the
“originator” of the Bayer mark. The court found out that the “first user” was Bayer Germany. To
apply the Ang Tibay rule in the manner advocated by Sterling would, the Court fears, produce the
reverse result and the consequence would be not equity but injustice.
 McDonalds Corp. vs. L.C. Big Mak, G.R. No. 143993, Aug. 18,
2004
DOCTRINE: A mark is valid if it is “distinctive” and thus not barred from registration under
Section 4 of RA 166. However, once registered, not only the mark’s validity but also the
registrant’s ownership of the mark is prima facie presumed.
FACTS: Petitioner is a corporation organized under the laws of US and operates, a global chain
of fast-food restaurants, and owns a family of marks including the “BIG MAC” mark for its
double-decker hamburger sandwich. Petitioner McDo applied for the registration of the same
trademark (which was later approved) and pending approval, introduced its “Big Mac”
hamburger sandwiches. Respondent LC Big Mak is a domestic corporation which operates fast-
food outlets and snack vans in MM and nearby provinces, which menu includes hamburger
sandwiches and other food items. Respondent applied for the registration of the “BIG MAK”
mark for its hamburger sandwiches. Petitioner opposed on the ground that “Big Mak” is a
colorable imitation of its registered “Big Mac” mark for the same food products.
ISSUE:

 Whether or not R’s “BIG MAK” is confusingly similar with P’s “BIG MAC” trademark
that will constitute trademark infringement?
 Whether or not there is Unfair Competition?
 Whether or not the word “BIG”is incapable of exclusive appropriation?
RULING:
YES.
Trademark Infringement
RA 166 defines trademark infringement as “any person who (1) shall use, without the consent of
the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or advertising of any goods, business or
services on or in connection with which use is likely to CAUSE CONFUSION or otherwise
mistake or to deceive purchasers or others as to the source or origin of such goods or services or
identity of such business; or (2) reproduce, counterfeit, copy, or colorably imitate any such mark
or trade-name and apply such reproduction, counterfeit, copy, or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in
connection with such goods, business or services.”
Clearly, there is cause for confusion in the case at bar. By using the “Big Mak” mark on the same
goods, i.e. hamburger sandwiches, that petitioners’ “Big Mac” mark is used, they have unjustly
created the impression that its business is approved and sponsored by, or affiliated with plaintiffs.
Furthermore, using the dominancy test (rather than the holistic test), wherein the dominant
features in the competing marks are considered, Big Mak failed to show that there could be no
confusion. The Court found that respondents’ use of the “Big Mak” mark results in likelihood of
confusion. First, “Big Mak” sounds exactly the same as “Big Mac.” Second, the first word
in “Big Mak” is exactly the same as the first word in “Big Mac.” Third, the first two letters
in “Mak” are the same as the first two letters in “Mac.” Fourth, the last letter in “Mak” while
a “k” sounds the same as “c” when the word “Mak” is pronounced. Fifth, in Filipino, the
letter “k” replaces “c” in spelling, thus “Caloocan” is spelled “Kalookan.” In short, aurally, the
two marks are the same.
Unfair Competition
RA 166, Section 29 defines the same as any person who will employ deception or any other
means contrary to good faith by which he shall pass off the goods manufactured by him or in
which he deals, or his business, or services for those of the one having established such goodwill,
or who shall commit any acts calculated to produce said result.
Unfair competition is broader than trademark infringement and includes passing off goods with or
without trademark infringement. Trademark infringement is a form of unfair competition.
Trademark infringement constitutes unfair competition when there is not merely likelihood of
confusion, but also actual or probable deception on the public because of the general appearance
of the goods.
L.C. Big Mak tried to pass off their goods as though it were connected to “Big Mac.” The
mark “Big Mac” is used by plaintiff McDonald’s to identify its double decker hamburger
sandwich. The packaging material is a styrofoam box with the McDonald’s logo and trademark in
red with block capital letters printed on it. All letters of the “Big Mac” mark are also in red and
block capital letters. On the other hand, defendants’ “Big Mak” script print is in orange with only

the letter “B”and “M” being capitalized and the packaging material is plastic wrapper. x x x x
Further, plaintiffs logo and mascot are the umbrella “M” and “Ronald McDonald’s,” respectively,
compared to the mascot of defendant Corporation which is a chubby boy
called “Macky” displayed or printed between the words “Big” and “Mak.”(Emphasis supplied)
Respondents point to these dissimilarities as proof that they did not give their hamburgers the
general appearance of petitioners’ “Big Mac” hamburgers. The dissimilarities in the packaging
are minor compared to the stark similarities in the words that give respondents’ “Big
Mak” hamburgers the general appearance of petitioners’ “Big Mac”hamburgers. Section 29(a)
expressly provides that the similarity in the general appearance of the goods may be in
the “devices or words” used on the wrappings. Respondents have applied on their plastic
wrappers and bags almost the same words that petitioners use on their styrofoam box. What
attracts the attention of the buying public are the words “Big Mak” which are almost the same,
aurally and visually, as the words “Big Mac.” The dissimilarities in the material and other devices
are insignificant compared to the glaring similarity in the words used in the wrappings.
The word “BIG”is incapable of exclusive appropriation

YES.
A mark is valid if it is “distinctive” and thus not barred from registration under Section 4 of RA
166. However, once registered, not only the mark’s validity but also the registrant’s ownership of
the mark is prima facie presumed. Respondents contend that of the two words in the “Big
Mac” mark, it is only the word “Mac” that is valid because the word “Big” is generic and
descriptive (proscribed under Section 4[e]), and thus “incapable of exclusive appropriation.” The
contention has no merit. The “Big Mac” mark, which should be treated in its entirety and not
dissected word for word, is neither generic nor descriptive.
 Faberge Inc. vs. IAC, G.R. No. 71189, Nov. 4, 1992
DOCTRINE: Co Beng Kay may rightly appropriate the mark. In this case Sec. 20 Philippine
Intellectual Property Law is controlling. The certificate of registration issued confers the
exclusive right to use its own symbol only to those goods specified by the first user in the
certificate, subject to any conditions or limitations stated therein. Moreover, the two products are
so dissimilar that a purchaser of one ’a brief” (underwear) would not be misled or mistaken into
buying the other such as an aftershave.
FACTS: Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its
underwear (briefs) products. The petitioner opposed on the ground that there is similarity with
their own symbol (BRUT, Brut33 & Device) used on its aftershave, deodorant, cream shave,
hairspray and hair shampoo/soaps and that it would cause injury to their business reputation. It
must be noted that the petitioner never applied for registration of said trademark for its brief
products. The Patent Office allowed Co Beng Kay the registration and this was further affirmed
by the Court of Appeals.
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.
 Hickock Manufacturing vs. CA, G.R. No. L-44707, Aug. 31, 1982
DOCTRINE: 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.
FACTS: Hickok Manufacturing Co., Inc., a foreign corporation duly registered in the
Philippines, had earlier registered the trademark Hickok for its products namely: handkerchiefs,
underwear and briefs. Private respondent, Lim Bun Liong, later registered for his products,
Marikina shoes, the same trade name Hickok. The former filed a petition with the patent director
to cancel private respondent’s registration of the trademark Hickok. The petition was granted and
private respondent’s registration of the trademark was cancelled. The Court of Appeals reversed
the decision of the patent director and instead dismissed petitioner’s petition to cancel private
respondent’s registration of the trademark of Hickok for its shoes. Hence this petition for review.
ISSUE: WON there infringement in this case?
RULING: NONE. "It is an established doctrine that emphasis should be on the similarity of the
products involved and not on the arbitrary classification or general description of their properties
or characteristics" (Phil. Refining Co. v. Ng Sam G.R. No. L-26676) 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".

Taking into account the facts of record that 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 by licensee Quality House, Inc., but are so labelled as to
give the misimpression that said goods are of foreign manufacture and that respondent secured its
trademark registration exclusively for shoes 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
 Acoje Mining Co. vs. Director of Patents, G.R. No. L-28744, April
29, 1971
DOCTRINE: The determinative factor in a contest involving registration of trade mark is not
whether the challenging 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.
FACTS: On September 14, 1965, Acoje Mining Co., Inc. a domestic corporation, filed an
application for registration of the trademark LOTUS, used on Soy Sauce, Class 47. Use in
commerce in the Philippines since June 1, 1965 is asserted. The Chief trademark Examiner finally
rejected the application by reason of confusing similarity with the trademark LOTUS registered
in this Office under Certificate of Registration No. 12476 issued in favor of Philippine Refining
CO., Inc., another domestic corporation. The cited mark is being used on edible oil, Class 47."2
The matter was then elevated to respondent Director of Patents who, on January 31, 1968, upheld
the view of the Chief Trademark Examiner and rejected the application of Petitioner on the
ground that while there is a difference between soy sauce and edible oil and there were
dissimilarities in the trademarks due to type of letters used as well as in the size, color and design
employed, 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.
ISSUE: May petitioner Acoje Mining Company register for the purpose of advertising its
product, soy sauce, the trademark LOTUS, there being already in existence one such registered in
favor of the Philippine Refining Company for its product, edible oil, it being further shown that
the trademark applied for is in smaller type, colored differently, set on a background which is
dissimilar as to yield a distinct appearance?
RULING: It is clear from the above-quoted provision that the determinative factor in a contest
involving registration of trade mark is not whether the challenging mark would actually cause
confusion or deception of the purchasers but whether the use of such mark would likely cause
confusion or mistake on the part of the buying public. In short, to constitute an infringement of an
existing trade-mark patent and warrant a denial of an application for registration, the law does not
require that the competing trademarks must be so identical as to produce actual error or mistake;
it would be sufficient, for purposes of the law, that the similarity between the two labels, is such
that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer
brand for it.
 Luft Co. Inc. vs. Ngo Guan, G.R. No. L-21915, Dec. 17, 1966
DOCTRINE: One of the factors essential therefor is whether or not there is a general similarity
in the appearance of the trademarks in question, which cannot be determined with reasonable
certainty without a physical examination and comparison thereof.

FACTS: Tangee and Tango. Used for specified chemical, medical and pharmaceutical
preparations e.g. lipstick etc and hair pomade respectively.
ISSUE: WON “Tango” trademark is confusingly similar with the “Tangee” trademark.
RULING: To begin with, one of the factors essential therefor is whether or not there is a general
similarity in the appearance of the trademarks in question, which cannot be determined with
reasonable certainty without a physical examination and comparison thereof. Petitioner has
rendered such examination impossible, by not introducing any evidence whatsoever as to the
appearance of the "Tangee" trademark. What is more, such omission suggests that its appearance
is not analogous to that of respondent's "Tango", for, otherwise, petitioner would not have failed
to present a sample of its trademark, for comparison with that of respondent Ngo Guan.
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. Again, "Tango" is used by Ngo Guan for no other product than hair pomade, in
which petitioner does not deal. Upon the other hand, petitioner's trademark is used for specified
chemicals, medical and pharmaceutical preparations — namely: "lipstick, creme rouge, compact
rouge, cleansing cream, day cream, night cream, massage cream, face lotion, astringent, face
powder, powder compacts, cosmetics for lashes, brows, and hair, hair pencils, nail polish,
perfumes, and toilet waters — and it is not claimed that Ngo Guan uses or intends to use its
"Tango" trademark on articles of this kind.
 Emeralds Garments Mfg. Corp. vs. Court of Appeals, G.R. No.

100098, December 29, 1995, 251 SCRA 600
whether the challenging mark would actually cause confusion or deception of the purchasers but
public.
FACTS: H.D. Lee Co., Inc. sought for the cancellation of registration for the trademark “Stylistic
Mr. Lee” used on skirts, jeans, blouses, socks, brief etc. under Class 25 in the name of Emerald
Garment Manufacturing Corporation contending that the trademark “so closely resembled its own
trademark, “LEE” as previously registered and used in the Philippines cause confusion, mistake
and deception on the part of the purchasing public as to the origin of the goods.
ISSUE: WON the trademark causes confusion and is likely to deceive the “test of dominancy”,
meaning, if the competing trademark contains the main or essential or dominant features of
another by reason of which confusion and deception are likely to result.
RULING: The word "LEE" is the most prominent and distinctive feature of the appellant's
trademark and all of the appellee's "LEE" trademarks. It is the mark which draws the attention of
the buyer and leads him to conclude that the goods originated from the same manufacturer. The
alleged difference is too insubstantial to be noticeable. The likelihood of confusion is further
made more probable by the fact that both parties are engaged in the same line of business. It is
well to reiterate that the determinative factor in ascertaining whether or not the marks are
confusingly similar to each other is not whether the challenged mark would actually cause
confusion or mistake on the part of the buying public.

 Recaro vs. Embisan, G.R. No. L-17049, May 31, 1961
DOCTRINE: There is no genuine issue about the fact that the use of the trade-mark "Nel's Big
3" on vegetable lard repacked by the defendant constitutes an infringement upon plaintiff's
registered trade-mark "Big Five 5", which is similarly used on repacked vegetable lard, and the
lower court did not err in granting, by summary judgment, the injunction prayed for by the
plaintiff, in dismissing defendant's counterclaim, and in refusing to reconsider said judgment.
FACTS: Paula Recaro alleged that she is doing business under the registered name and style of
“Big Five Products”, namely in vegetable lard repacked for sale on retail. Nestor Embisan, doing
business under the name of and style “Nel-Coff Products” likewise, engaged in the business of
repacking of vegetable lard, on which he uses the printed labels bearing the trade-mark “Big
Three”
ISSUE: WON there is infringement of the labels
RULING: There is no genuine issue about the fact that the use of the trade-mark "Nel's Big 3" on
vegetable lard repacked by the defendant constitutes an infringement upon plaintiff's registered
trade-mark "Big Five 5", which is similarly used on repacked vegetable lard, and the lower court
did not err in granting, by summary judgment, the injunction prayed for by the plaintiff, in
dismissing defendant's counterclaim, and in refusing to reconsider said judgment.
15. Actual Confusion

 McDonalds Corp. vs. L.C. Big Mak, G.R. No. 143993, Aug. 18,
2004
DOCTRINE: In determining likelihood of confusion, jurisprudence has developed two tests, the
dominancy test and the holistic test. The dominancy test focuses on the similarity of the prevalent
features of the competing trademarks that might cause confusion. In contrast, the holistic test
requires the court to consider the entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity.
FACTS: Petitioner McDonald’s, an American corporation operating a global chain of fast-food
restaurants, is the owner of the ‘Big Mac’ mark for its double-decker hamburger sandwich here
and in the US. Meanwhile, respondent L.C., a domestic corporation which operates fast-food
outlets and snack vans applied for the registration of the ‘Big Mak’ mark for its hamburger
sandwiches. Petitioner opposed on the ground that ‘Big Mak’ was a colorable imitation of its
registered ‘Big Mac’ mark for the same food products. Respondents denied there is colorable
imitation and argued that petitioner cannot exclusively appropriate the mark ‘Big Mac’ because
the word ‘Big’ is a generic and descriptive term. Petitioner filed a complaint for trademark
infringement and unfair competition. The trial court found for petitioners. CA held otherwise.
ISSUE:
(1)Whether or not the word ‘Big Mac’ can be exclusively appropriated by petitioner;
(2) Whether or not there is colorable imitation resulting in likelihood of confusion;
(3) Whether or not there is unfair competition.
RULING:

(1) YES. A mark is valid if it is “distinctive” and thus not barred from registration under Section
4 of RA 166. However, once registered, not only the mark’s validity but also the registrant’s
ownership of the mark is prima facie presumed. The “Big Mac” mark, which should be treated in
its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks are
commonly used as the name or description of a kind of goods, such as “Lite” for beer or
“Chocolate Fudge” for chocolate soda drink. Descriptive marks, on the other hand, convey the
characteristics, functions, qualities or ingredients of a product to one who has never seen it or
does not know it exists, such as “Arthriticare” for arthritis medication. On the contrary, “Big
Mac” falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual
characteristics of the product it represents. As such, it is highly distinctive and thus valid.
Significantly, the trademark “Little Debbie” for snack cakes was found arbitrary or fanciful.
(2) YES. In determining likelihood of confusion, jurisprudence has developed two tests, the
dominancy test and the holistic test. The dominancy test focuses on the similarity of the prevalent
features of the competing trademarks that might cause confusion. In contrast, the holistic test
requires the court to consider the entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity. This Court, however, has relied on the
dominancy test rather than the holistic test. The test of dominancy is now explicitly incorporated
into law in Section 155.1 of the Intellectual Property Code which defines infringement as the
“colorable imitation of a registered mark xxx or a dominant feature thereof.”
Applying the dominancy test, the Court finds that respondents’ use of the “Big Mak” mark results
in likelihood of confusion. Aurally the two marks are the same, with the first word of both marks
phonetically the same, and the second word of both marks also phonetically the same. Visually,
the two marks have both two words and six letters, with the first word of both marks having the
same letters and the second word having the same first two letters. In spelling, considering the
Filipino language, even the last letters of both marks are the same. Clearly, respondents have
adopted in “Big Mak” not only the dominant but also almost all the features of “Big Mac.”
Applied to the same food product of hamburgers, the two marks will likely result in confusion in
the public mind. Certainly, “Big Mac” and “Big Mak” for hamburgers create even greater
confusion, not only aurally but also visually. Indeed, a person cannot distinguish “Big Mac” from
“Big Mak” by their sound. When one hears a “Big Mac” or “Big Mak” hamburger advertisement
over the radio, one would not know whether the “Mac” or “Mak” ends with a “c” or a “k.”
(3) YES. 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. The confusing similarity may or may not result from similarity in the marks, but may
result from other external factors in the packaging or presentation of the goods. The intent to
deceive and defraud may be inferred from the similarity of the appearance of the goods as offered
for sale to the public. Actual fraudulent intent need not be shown. Unfair competition is broader
than trademark infringement and includes passing off goods with or without trademark
infringement. Trademark infringement is a form of unfair competition. Trademark infringement
constitutes unfair competition when there is not merely likelihood of confusion, but also actual or
probable deception on the public because of the general appearance of the goods. There can be
trademark infringement without unfair competition as when the infringer discloses on the labels
containing the mark that he manufactures the goods, thus preventing the public from being
deceived that the goods originate from the trademark owner.
Respondents’ goods are hamburgers which are also the goods of petitioners. Since respondents
chose to apply the “Big Mak” mark on hamburgers, just like petitioner’s use of the “Big Mac”
mark on hamburgers, respondents have obviously clothed their goods with the general appearance
of petitioners’ goods. There is actually no notice to the public that the “Big Mak” hamburgers are

products of “L.C. Big Mak Burger, Inc.” and not those of petitioners who have the exclusive right
to the “Big Mac” mark. This clearly shows respondents’ intent to deceive the public. We hold that
as found by the RTC, respondent corporation is liable for unfair competition.

26557, Feb. 18, 1970
whether the challenged mark would actually cause confusion or deception of the purchasers but
public.
FACTS: trademark DYNAFLEX and Device to be used in connection with electric wires, class
20, which mark applicant allegedly had been using since 29 March 1962. The American Wire and
Cable Co., Inc., another domestic corporation and authorized user since 10 April 1958 of the
registered trade mark DURAFLEX and Globe representation, for electric wires, apparatus,
machines and supplies, class 20, opposed the application on the ground that applicant's use of the
trade mark DYNAFLEX would cause confusion or result in mistake to purchasers intending to
buy DURAFLEX electric wires and goods, the mark being registered allegedly having practically
the same spelling, pronunciation and sound, and covering the same good, as that of the opposer.
ISSUE: WON the mark DYNAFLEX and Device is registrable as label for electric wires, class
20, considering that the trademark DURAFLEX and Globe representation also for electric wires,
machines and supplies under class 20, has been registered more than 4 years earlier.
RULING: The determinative factor in a contest involving registration of trade mark is not
public. In short, to constitute an infringement of an existing trademark patent and warrant a denial
of an application for registration, the law does not require that the competing trademarks must be
so identical as to produce actual error or mistake; it would be sufficient, for purposes of the law,
that the similarity between the two labels is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the newer brand for it. It has been consistently held that
the question of infringement of a trademark is to be determined by the test of dominancy.
Similarity in size, form, and color, while relevant, is not conclusive. If the competing trademark
contains the main or essential or dominant features of another, and confusion and deception is
likely to result, infringement takes place. Duplication or imitation is not necessary, nor is it
necessary that the infringing label should suggest an effort to imitate.
 Acoje Mining Co. vs. Director of Patents, G.R. No. L-28744, April
29, 1971
DOCTRINE: It is clear from the above-quoted provision that the determinative factor in a
contest involving registration of trade mark is not whether the challenging mark would actually
cause confusion or mistake on the part of the buying public.
FACTS: On September 14, 1965, Acoje Mining Co., Inc. a domestic corporation, filed an
application for registration of the trademark LOTUS, used on Soy Sauce, Class 47. Use in
commerce in the Philippines since June 1, 1965 is asserted. The Chief trademark Examiner finally
rejected the application by reason of confusing similarity with the trademark LOTUS registered

in this Office under Certificate of Registration No. 12476 issued in favor of Philippine Refining
CO., Inc., another domestic corporation. The cited mark is being used on edible oil, Class 47."2
The matter was then elevated to respondent Director of Patents who, on January 31, 1968, upheld
the view of the Chief Trademark Examiner and rejected the application of Petitioner on the
ground that while there is a difference between soy sauce and edible oil and there were
dissimilarities in the trademarks due to type of letters used as well as in the size, color and design
employed, 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.
ISSUE: May petitioner Acoje Mining Company register for the purpose of advertising its
product, soy sauce, the trademark LOTUS, there being already in existence one such registered in
favor of the Philippine Refining Company for its product, edible oil, it being further shown that
the trademark applied for is in smaller type, colored differently, set on a background which is
dissimilar as to yield a distinct appearance?
RULING: It is clear from the above-quoted provision that the determinative factor in a contest
involving registration of trade mark is not whether the challenging mark would actually cause
confusion or mistake on the part of the buying public. In short, to constitute an infringement of an
existing trade-mark patent and warrant a denial of an application for registration, the law does not
require that the competing trademarks must be so identical as to produce actual error or mistake;
it would be sufficient, for purposes of the law, that the similarity between the two labels, is such
that there is a possibility or likelihood of the purchaser of the older brand mistaking the newer
brand for it.
16. Test of Confusing Similarity

a. Phonetic similarity
 Marvex Commercial Co., Inc. vs. Petra Hawpia & Co, L-16297,
Dec. 22, 1926
DOCTRINE: The trademarks "SALONPAS" and "LIONPAS" are confusingly similar in sound.
Both these words have the same suffix, "PAS", which is used to denote a plaster that adheres to
the body with curative powers. "Pas, being merely descriptive, furnishes no indication of the
origin of the article and therefore is open for appropriation by anyone (Ethepa vs. Director of
Patents, L-20635, March 31, 1966) and may properly become the subject of a trademark by
combination with another word or phrase.
FACTS: Petra Hawpia & Co., a partnership duly organized under the laws of the Philippines
filed a petition for the registration of the trademark "LIONPAS" used on medicated plaster, with
the Philippine Patent Office, asserting its continuous use in the Philippines since June 9,
1958. The Marvex Commercial Co., Inc., a corporation also duly organized under the laws of the
Philippines, on July 24, 1959 filed an opposition thereto, alleging that the registration of such
trademark would violate its right to and interest in the trademark "SALONPAS" used on another
medicated plaster, which is registered its name under Certificate of Registration 5486, issued by
the Director of Patents on September 29, 1956, and that both trademarks when used on medicated
plaster would mislead the public as they are confusingly similar.
ISSUE:
(1) Is the applicant the owner of the trademark "LIONPAS”?
(2) Is the trademark "LIONPAS" confusingly similar to the trademark "SALONPAS"?

RULING:
Is the applicant the owner of the trademark "LIONPAS?"
On the 1st issue:

The assignment must be in writing, acknowledged before a notary public or other officer
authorized to administer oaths or perform other notarial acts and certified under the hand and
official seal of the notary or other officer. (Sec. 31, par. 2) In this case, although a sheet of paper
is attached to exh. 6, on which is typewritten a certification that the signatures of the presidents of
the two named companies (referring to the signatures in exh. 6) "have been duly written by
themselves", this sheet is unmarked, unpaged, unsigned, undated and unsealed. We have thumbed
the record in quest of any definitive evidence that it is a correct translation of the Japanese
characters found on another unmarked and unpaged sheet, and have found none.
The documents are legally insufficient to prove that the applicant is the owner of the trademark in
question. As a matter of fact, the other evidence on record states that the applicant is merely the
"exclusive distributor" in the Philippines of the "LIONPAS" penetrative plaster; describes the
applicant as the "Philippine sole distributor" of "LIONPAS"; exh. B simply states that
"LIONPAS" is "manufactured exclusively for Petra Hawpia & Co. for distribution in the
Philippines." Not being the owner of the trademark "LIONPAS" but being merely an importer
and/or distributor of the said penetrative plaster, the applicant is not entitled under the law to
register it in its name.
On the 2nd issue:

Two letters of "SALONPAS" are missing in "LIONPAS"; the first letter a and the letter s. Be that
as it may, when the two words are pronounced, the sound effects are confusingly similar. And
where goods are advertised over the radio, similarity in sound is of especial significance (Co
Tiong Sa vs. Director of Patents, 95 Phil. 1 citing Nims, The Law of Unfair Competition and
Trademarks, 4th ed., vol. 2, pp. 678-679). "The importance of this rule is emphasized by the
increase of radio advertising in which we are deprived of help of our eyes and must depend
entirely on the ear" (Operators, Inc. vs. Director of Patents, supra).
In the case at bar, "SALONPAS" and "LIONPAS", when spoken, sound very much alike.
Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly
similar when applied to merchandise of the same descriptive properties (see Celanese Corporation
of America vs. E. I. Du Pont, 154 F. 2d. 146, 148). The registration of "LIONPAS" cannot
therefore be given due course. Decision of the respondent Director of Patents is set aside, and the
petition of the respondent Petra Hawpia & Co. is hereby dismissed.
 Sapoline Co., Inc. vs. Balmaceda, G.R. No. 45502, May 3, 1939
DOCTRINE: The manner of presentation, in extent and in pronunciation between the two
trademarks and tradenames are the same as it appears in the evidence. The violation of the
trademark is established by showing that the resemblance between the two is of such a nature
that one can be taken for the other.
FACTS: Sapolin Co. Inc is a foreign corporation who alleges to be the holder of patent
certificates issued by the US Patent Office for the exclusive use of the trademark and tradename
SAPOLIN, an enamel paint. The paints with the trademark and tradename SAPOLIN were first
imported into the Philippines by MULLER & PHIPPS, a foreign company, and thereafter by the
plaintiff. The demand for said paints in 1929 up to 1931 was such that the proceeds from the sales
would ran to between 70,000 to 80,000 USD, of which only 5 percent was spent to advertise and
popularize the goods in the Philippines. The trademark and tradename LUSOLIN first came into
existence only in 1932, when Co Lu So & Co, a local business entity who imports and sells

construction materials, sold for several years the paints marked SAPOLIN which he acquired
from MULLER & PHIPPS and from the plaintiff. Co Lu So later filed an application with the
Bureau of Commerce and Industry for the exclusive use of the trademark and tradename
LUSOLIN, to which the Bureau later granted a trademark certificate on said application. Co Lu
So, thereafter, conveyed the right to use the aforesaid trademark and tradename LUSOLIN to
defendant, who later registered the same with the Bureau of Commerce and Industry. The
defendant, later (after one month of sales) notified the plaintiff to stop using the trademark
SAPOLIN as this was violative of its rights as owner of the trademark LUSOLIN. The court
further noted that LUSOLIN paints are the same ones under the tradename HAWELIT, which
were imported from Germany to the Philippines by the defendant, prior to the European war.
When the war broke out in Europe, the defendant discontinued the importation of HAWELIT
paints and in 1927 SAPOLIN paints appeared and found its way in the local market. Thus
defendant, after acquiring from Co Lu So the certificate to use the tradename and trademark
LUSOLIN, the former resumed the sale of HAWELIT paints presenting them to the public as
LUSOLIN.
ISSUE: WON (the CFI of Manila erred in not holding that) the trade-mark "Lusolin" of the
defendant German & Co., Ltd., constitutes an infringement of the plaintiff's trade-mark "Sapolin";
RULING: The Court observed that the color, design, size and other characteristics as well as the
sound produced by the pronunciation of the tradename LUSOLIN and SAPOLIN are almost the
same. The defendant itself admits in its letter to the plaintiff the striking similarity between the
two trademarks and tradenames in question, “in shape, design, color, and printing as to deceive
the public specially that both are being used for paints” The manner of presentation, in extent and
in pronunciation between the two trademarks and tradenames are the same as it appears in the
evidence. The violation of the trademark is established by showing that the resemblance between
the two is of such a nature that one can be taken for the other. And it has been held that the
resemblance is the test of whether or not there is a trademark violation. The Court said that it is
not necessary to prove that an exact copy was made or that the same words appearing therein
were used. It is sufficient that its essential characteristics have been imitated or copied, to hold
that there is a violation of a trademark. As to syllabication and sound of the two tradenames
SAPOLIN and LUSOLIN, it seems plain that whoever hears or sees them cannot but think of
paints of the same kind and make.
And it has been held that tradenames “idem sonans” constitute a violation in matters of patents
and trademarks and tradenames. In conclusion, the appealed decision is reversed, and it is ordered
that this case be remanded to the court of origin to the end that it may enter therein the proper
orders and decision, upon presentation by the parties concerned of the evidence which they may
deem necessary to adduce, taking into account the findings and opinion herein set forth in favor
of the contention of the plaintiff
 Operators Inc. vs. Director of Patents, G.R. No. L-17901, Oct. 29,
1965
DOCTRINE: If the competing trademark contains the main or essential or dominant features of
another, and confusion and deception is likely to result, infringement takes place. Duplication or
imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to
imitate.
FACTS: Petitioner, a domestic corporation, applied to the Philippine Patent Office for
registration of AMBISCO as a trademark for its locally manufactured candy products. It has been
using said trademark since May 1956 by virtue of two contracts with the American Biscuit
Company, also a domestic corporation. The National Biscuit Company opposed the application,

having previously registered NABISCO as trademark for its own bakery goods, such as biscuits,
crackers, cakes and wafers. The oppositor, a corporation organized in the United States, has had
the said trademark registered in the Philippines since 1930, and renewed the registration in 1948
under the latest trademark law.
ISSUE:
(1) WON the two trademarks aforesaid are so similar to each other as to cause confusion, mistake
or deception of purchasers; and
(2) WON the applicant had a right in the first place to apply for registration of AMBISCO as a
trademark at all.
RULING: In the case of the trademark AMBISCO, the evidence shows that it is owned by the
American Biscuit Co., Inc., and not by petitioner Operators, Inc. Such evidence consists of the
certification signed jointly by Jorge B. Vargas and by Eu Chua Leh, presidents of the said
Corporations, respectively, as follows (Exh. 2): On September 26, 1953, and on June 12, 1954,
the American Biscuit Co., Inc., and the Operators Incorporated, both corporations organized
under the laws of the Philippines, entered into contracts, and under such contracts, the Operators
Incorporated is authorized by the American Biscuit Co., Inc. to operate the candy business of the
latter and among the various terms and stipulations in said contracts, the Operators Incorporated
agreed to distinctly label and display all products manufactured and sold by it as products of the
American Biscuit Co., Inc. and that all the trademarks contained in such labels shall be
considered as property of the American Biscuits Co., Petitioner objects to the consideration of the
question of ownership of the trademark as an issue on the ground that it was not raised by
respondent either in its opposition or in its memorandum filed after the parties had adduced their
evidence. In the first place respondent could not have known at the outset that petitioner was not
the owner of the trademark it was seeking to register. That fact was brought out for the first time
when the certification quoted above was presented. Secondly, it was incumbent upon petitioner,
as applicant, to prove that it had a right to register the trademark applied for and consequently, to
show compliance with all the legal requisites including ownership thereof. An application for
registration under the Patent Law is not an ordinary litigious controversy between private parties.
Public interest is involved and all questions as to whether or not the law is satisfied may be
considered by the Patent Office or by the Court even though not specifically raised by either of
the parties.
On the other issue, we find no cogent reason to disagree with the Director of Patents that
"considering the similarities in appearance and sound between the marks AMBISCO and
NABISCO, the nature and similarity of the products of the parties together with the fact that
opposer's NABISCO has been used in commerce in the Philippines for more than fifty-five (55)
years before AMBISCO was adopted by applicant, confusion of purchasers is likely. In the case
of Co Tiong vs. Director of Patents, 95 Phil. 1, this Court said: ... If the competing trademark
contains the main or essential or dominant features of another, and confusion and deception is
likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an effort to imitate. (G. Heilman Brewing Co.
vs. Independent Brewing, Co., 191 F. 489, 495, citing Eagle White Lead Co. vs. Pflugh [CC] 180
Fed. 579). ... ... The ordinary customer does not Scrutinize the details of the label; he forgets or
overlooks these, but retains a general impression, or a central figure, or a dominant characteristic.
The reason for the above has been explained in the following manner: "... This rule has a basis in
experience. The average person usually will not, and often cannot, take in at a casual glance all,
or even a large part of the details of what he looks at. What part or parts of two trademarks which
are alleged to be similar does the average ordinary buyer see when he looks at them? What
features of them are remembered by the average buyer? We do not really hear all that is spoken in

our hearing. Far from all we see or hear casually is retained sufficiently clearly or in sufficient
detail for us to get a lasting impression of it which we can remember when we encounter the mark
again. The importance of this rule is emphasized by the increase of radio advertising in which we
are deprived of the help of our eyes and must depend entirely on the ear. xxx xxx xxx "The
question of infringement is to be determined by the test of dominancy. The dissimilarity in size,
form and color of the label and the place where applied are not conclusive. If the competing label
contains the trademark of another, and confusion or deception is likely to result, infringement
takes place, regardless of the fact that the accessories are dissimilar. Thus, "Celdura" and
"Corduara" were held to be confusingly similar in sound when applied to merchandise of the
same descriptive properties (Celanese Corp. of America vs. Du Pont, 154 F. 2nd 146, 148); and
"Lusolin" was considered as an infringement of the trademark "Sapolin" for the same reason
(Sapolin Co. vs. Balmaceda, et al., 67 Phil. 705).
b. Holistic Test
 Bristol Myers vs. Director of Patents, 17 SCRA 128 (1966)
DOCTRINE: 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.
FACTS: A petition for registration in the Principal Register of the Patent Office of the trademark
"BIOFERIN" was filed on October 21, 1957 by United American Pharmaceuticals, Inc. Said
domestic corporation first used the aforestated trademark in the Philippines on August 13, 1957.
It covers "a medicinal preparation of antihistamic, analgesic, antipyritic with vitamin C and
Bioflavenoid used in the treatment of common colds, influenza and other febrile diseases with
capillary hemmorrhagic tendencies." The product falls under Class 6 of the official classification,
that is, "Medicines and Pharmaceutical Preparations". Bristol Myers Co., a corporation of the
State of Delaware, U.S.A., filed on January 6, 1959 an opposition to the application. Said
oppositor is the owner in the Philippines of the trademark "BUFFERIN" under Certificate of
Registration No. 4578 issued by the Philippine Patent Office on March 3, 1954. Its trademark is
also registered in the United States under Certificate of Registration No. 566190 issued on
November 4, 1952. It was first used in the Philippines on May 13, 1953. The product covered by
"BUFFERIN" also belongs to Class 6, Medicines and Pharmaceutical Preparations. Designated as
"Antacid analgesic", it is intended for relief in cases of "simple headaches, neuralgia, colds,
menstrual pain and minor muscular aches."
ISSUE: Are the trademarks "BIOFERIN" and "BUFFERIN", as presented to the public in their
respective labels, confusingly similar?
RULING: 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. Said rule was enunciated by this by this Court through Justice
Felix Bautista Angelo in Mead Johnson & Co. vs. N.V.J Van Dorp, Ltd., L-17501, April 27,
1963, thus: It is true that between petitioner's trademark "ALACTA" and respondent's
"ALASKA" there are similarities in spelling, appearance and sound for both are composed of six
letters of three syllables each and each syllable has the same vowel, but in determining if they are
confusingly similar a comparison of said words is not the only determining factor. The two marks
in their entirety as they appear in the respective labels must also be considered in relation to the
goods to which they are attached. The discerning eye of the observer must focus not only on the
predominant words but also on the other features appearing in both labels in order that he may
draw his conclusion whether one is confusingly similar to the other. ... Applying this test to the

trademarks involved in this case, it is at once evident that the Director of Patents did not err in
finding no confusing similarity. For though the words "BIOFERIN" and "BUFFERIN" have the
same suffix and similar sounding prefixes, they appear in their respective labels with strikingly
different backgrounds and surroundings, as to color, size and design. For convenience we sum up
these differences, as follows: Relevant Factors "BIOFERIN" "BUFFERIN" 1. Shape & Size of
Label Rectangular, about 3-3/4" 2-1/4" Rectangular, 3-3/4"' 1-1/4" 2. Color of Label
Predominantly Yellow Predominantly White 3. Color background of Word-mark Olive-green
Blue 4. Over-all Layout At the top center-word mark "BIOFERIN"; below it are contents of
medicine, arranged horizontally; at bottom, center, "United Pharmaceuticals, Inc." in olive-green
background. At left side — dosage, printed perpendicularly; at right side, indications, also
perpendicularly printed. At left side of label —Wood mark "BUFFERIN"; with "Bristol Myers
Co., New York, N.Y." below at right side, contents, indications dosage are grouped together,
printed perpendicularly 5. Form of Capsules — Tablets — product label says: "50 capsules" label
says: "36 Tablets" 6. Prescription Label states: "To be dispensed only by or on the prescription of
a physician"
No such statement accordingly, taken as they will appear to a prospective customer, the
trademark in question are not apt to confuse. Furthermore, the product of the applicant is
expressly stated as dispensable only upon doctor's prescription, while that of oppositor does not
require the same. The chances of being confused into purchasing one for the other are therefore
all the more rendered negligible. Although oppositor avers that some drugstores sell
"BIOFERIN" without asking for a doctor's prescription, the same if true would be an irregularity
not attributable to the applicant, who has already clearly stated the requirement of a doctor's
prescription upon the face of the label of its product.
 Mead Johnson & Co., NW Van Dorf Ltd, & SCRA 768 (1963)
DOCTRINE: 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.
FACTS: Mead Johnson & Comp., owner of the trademark “ALACTA” and a corporation
organized under the laws of Indiana, U.S.A. filed an opposition to the application for registration
of trademark “ALASKA” and pictorial representation of Boy’s Head within a rectangular design
by N.V.J. Van Dorp. Mead Johnson & Co. averred that the latter’s trademark which is
“ALASKA” is confusingly similar to “ALACTA”. Consequently, the Director of Patent Office
dismissed the opposition and hold that the trademark of N.V.J. Van Dorp does not sufficiently
resemble Mead Johnson & CO.’s mark. Thus, Mead Johnson & Co. filed petition for review
contending that trademarks “ALASKA” and “ALACTA” in appearance and sound are
sufficiently close.
ISSUE: Whether or not the “ALASKA” is confusingly similar to “ALACTA” which made N.V.J.
Van Dorp appeared to be infringing the trademark of Mead Johnson & Co.
RULING: No, N.V.J. Van Dorp does not infringe the trademark of Mead Johnson & Co. It is
true that between Mead Johnson & Co.’s trademark "ALACTA" and N.V.J. Van Dorp’s
"ALASKA" there are similarities in spelling, appearance and sound for both are composed of six
letters of three syllables each and each syllable has the same vowel, but in determining if they are
confusingly similar a comparison of said words is not the only 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.

 Del Monte Corp. vs. CA, 181 SCRA 410 (1990)
DOCTRINE: That there really are distinctions between the designs of the logos or trademarks
of Del Monte and Sunshine Sauce. However, it has been that side by side comparison is not the
final test of similarity.
FACTS: Del Monte Corporation is an American corporation which is not engaged in business in
the Philippines. Though not engaging business here, it has given authority to Philippine Packing
Corporation (Philpack) the right to manufacture, distribute and sell in the Philippines various
agricultural products, including catsup, under the Del Monte trademark and logo. In 1965, Del
Monte also authorized Philpack to register with the Patent Office the Del Monte catsup bottle
configuration. Philpack was issued a certificate of trademark registration under the Supplemental
Register.
Later, Del Monte and Philpack learned that Sunshine Sauce Manufacturing was using Del Monte
bottles in selling its products and that Sunshine Sauce’s logo is similar to that of Del Monte. The
RTC of Makati as well as the Court of Appeals ruled that there was no infringement because the
trademarks used between the two are different in designs and that the use of Del Monte bottles by
Sunshine Sauce does not constitute unfair competition because as ruled in Shell Company vs
Insular Petroleum: “selling oil in containers of another with markings erased, without intent to
deceive, was not unfair competition.”
ISSUE: WON there is unfair competition and infringement in the case at bar.
RULING: Yes. The Supreme Court recognizes that there really are distinctions between the
designs of the logos or trademarks of Del Monte and Sunshine Sauce. However, it has been that
side by side comparison is not the final test of similarity. Sunshine Sauce’s logo is a colorable
imitation of Del Monte’s trademark. The word “catsup” in both bottles is printed in white and the
style of the print/letter is the same. Although the logo of Sunshine is not a tomato, the figure
nevertheless approximates that of a tomato. The person who infringes a trade mark does not
normally copy out but only makes colorable changes, employing enough points of similarity to
confuse the public with enough points of differences to confuse the courts. What is undeniable is
the fact that when a manufacturer prepares to package his product, he has before him a boundless
choice of words, phrases, colors and symbols sufficient to distinguish his product from the others.
When as in this case, Sunshine chose, without a reasonable explanation, to use the same colors
and letters as those used by Del Monte though the field of its selection was so broad, the
inevitable conclusion is that it was done deliberately to deceive.
The Supreme Court also ruled that Del Monte does not have the exclusive right to use Del Monte
bottles in the Philippines because Philpack’s patent was only registered under the Supplemental
Register and not with the Principal Register. Under the law, registration under the Supplemental
Register is not a basis for a case of infringement because unlike registration under the Principal
Register, it does not grant exclusive use of the patent. However, the bottles of Del Monte do say
in embossed letters: “Del Monte Corporation, Not to be Refilled”. And yet Sunshine Sauce
refilled these bottles with its catsup products. This clearly shows the Sunshine Sauce’s bad faith
and its intention to capitalize on the Del Monte’s reputation and goodwill and pass off its own
product as that of Del Monte.
c. Dominancy Test

DOCTRINE: Infringement is determined by the "test of dominancy" rather than by differences
or variations in the details of one trademark and of another. If the competing trademark 1)
contains the main or essential or dominant features of another, and 2) confusion and deception is
likely to result, infringement takes place.
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. The trial court dismissed the complaint. On appeal, the Court of Appeals reversed the
decision of the trial court and found ABI guilty of infringement of trademark and unfair
competition.
ISSUE: WON Asia Brewery Inc. committed infringement of trademark and unfair competition
against San Miguel Corporation.
RULING: No infringement. Infringement is determined by the "test of dominancy" rather than

by differences or variations in the details of one trademark and of another. If the competing
trademark 1) contains the main or essential or dominant features of another, and 2) confusion and
deception is likely to result, infringement takes place. In the instant case, the dominant feature of
SMC is the words “SAN MIGUEL PALE PILSEN” with elaborate serifs at the beginning and
end of the letters "S" and "M." While the dominant feature of ABI's trademark is the name:
“BEER PALE PILSEN” with the word "Beer" written in large amber letters.
Based on the dissimilarity in their dominant features as well as in sound, spelling & appearance,
Beer na Beer cannot be said to be similarly confusing with San Miguel Pale Pilsen. The fact that
the words pale pilsen are part of ABI's trademark does not constitute an infringement of SMC's
trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words descriptive of the
color ("pale"), of a type of beer ("pilsen"), which originated in the City of Pilsen, Czechoslovakia.
No unfair competition. Sec 29, Republic Act No. 166 as amended describes unfair competition as
the employment of deception or any other means contrary to good faith by which a person shall
pass off the goods manufactured by him or in which he deals, or his business, or services, for
those of another who has already established goodwill for his similar goods, business or services,
or any acts calculated to produce the same result. Therefore, the universal test question is whether
the public is likely to be deceived. In this case, the use of similar but unidentical bottle size, shape
& color is not unlawful as aptly explained. The 320 ml capacity is the standard prescribed by the
Dept of Trade. The amber color is a functional feature for it prevents transmission of light and
provides the maximum protection to beer. Being of functional or common use, SMC’s being the
first to use does not give SMC exclusive right to such use. The bottle shape is usually
standardized just as a ketchup or vinegar bottle with its familiar elongated neck, thereby
dismissing the attendance of bad faith or the intention to deceive the public by ABI. Moreover,
buyers generally order their beer by brand in the supermarket, sari-sari stores, restaurants; thus
dismissing the idea that Beer na Beer can be passed off as San Miguel Beer. There can be no
confusion or the likelihood of deception among the consumers.
 Phil. Nut Industry vs. Standard, L-23055, July 31, 1975
DOCTRINE: 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. It
deceives the public.
FACTS: Philippine Nut Industry Inc., a domestic corporation, obtained from the Patent Office on
August 10, 1961, a certificate 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 a case with the Director of Patent, 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.
Thereafter, the Philippine Nut filed its answer invoking the special defense that its registered
label is not confusingly similar to that of Standard Brands as the latter alleges. Respondent
Director of Patents gave due course to Standard Brand's petition, ordering the cancellation of
Philippine Nut's Certificate of Registration. Upon denial of the motion for reconsideration, the
Philippine Nut petitioned for a review, seeking the reversal of the Director of Patents’ decision.
ISSUE: Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used
by Philippine Nut on its label for salted peanuts with the same coloring scheme and the same lay-
out of words, confusingly similar to the trademark "PLANTERS COCKTAIL PEANUTS" used
by Standard Brands on its product.
RULING: Yes. As to appearance and general impression of the two trademarks, the Supreme
Court said it found a very confusing similarity. 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 than sticks in his mind when he thinks of salted peanuts. The
Supreme Court also held that although it is true that 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. It deceives the public. Hence, the decision of respondent
Director of Patents was affirmed.

26557, Feb. 18, 1970
public.
FACTS: On 2 June 1962, Central Banahaw Industries, Inc., applied with the Director of Patents
for registration of the trademark DYNAFLEX and Device to be used in connection with electric
wires, class 20, which mark applicant allegedly had been using since 29 March 1962. The
American Wire and Cable Co., Inc., another domestic corporation and authorized user since 10
April 1958 of the registered trade mark DURAFLEX and Globe representation, for electric wires,
apparatus, machines and supplies, class 20, opposed the application on the ground that applicant's
use of the trade mark DYNAFLEX would cause confusion or result in mistakes to purchasers
intending to buy DURAFLEX electric wires and goods, the mark being registered allegedly
having practically the same spelling, pronunciation and sound, and covering the same goods, as

that of the opposer. Besides, opposer contended that there has been no continuous use in
commerce of the applicant's mark.
ISSUE: Whether or not the mark DYNAFLEX and Device is registrable as label for electric
wires, class 20, considering that the trademark DURAFLEX and Globe representation, also for
electric wires, machines and supplies under class 20, has been registered more than 4 years
earlier.
RULING: No. The determinative factor in a contest involving registration of trade mark is not
public. To constitute an infringement of an existing trademark patent and warrant a denial of an
application for registration, the law does not require that the competing trademarks must be so
identical as to produce actual error or mistake; it would be sufficient, for purposes of the law, that
the similarity between the two labels is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the newer brand for it.
The similarity between the competing trademarks, DURAFLEX and DYNAFLEX, is apparent.
Not only are the initial letters and the last half of the appellations identical, but the difference
exists only in two out of the eight literal elements of the designations. Coupled with the fact that
both marks cover insulated flexible wires under class 20; that both products are contained in
boxes of the same material, color, shape and size; that the dominant elements of the front designs
are a red circle and a diagonal zigzag commonly related to a spark or flash of electricity; that the
back of both boxes show similar circles of broken lines with arrows at the center pointing
outward, with the identical legend "Cut Out Ring" "Draw From Inside Circle", no difficulty is
experienced in reaching the conclusion that there is a deceptive similarity that would lead the
purchaser to confuse one product with the other.
Applying the dominancy test. In view of the close resemblance in the general appearance of the
box and the trade names of the articles. Indeed, the applicant's mark must be disallowed. For,
undeniably, the dominant and essential feature of the article is the trademark itself. Unlike in the
case of commodities that are ordinarily picked up by the purchaser himself from the grocery or
market counters, electric wires are purchased not by their appearance but by the size (voltage) and
length and, most importantly, by brand. It is even within layman's knowledge that different
brands of wire have different characteristics and properties; and for an essential building item as
electric wires and supplies, the owner of the building would not dare risk his property, perhaps his
life, on an unknown or untested brand. He would only demand for what is recognized to be the
best.
Confusion is very likely in view of the nature of the product. Unlike the pharmacists or druggists,
the dispensers of hardware or electrical supplies are not generally known to pay as much concern
to the brand of articles asked for by the customer and of a person who knows the name of the
brand but is not acquainted with its appearance, the likelihood of the DYNAFLEX product being
mistaken for DURAFLEX is not remote.
 Emeralds Garments Mfg. Corp. vs. Court of Appeals, G.R. No.

100098, December 29, 1995, 251 SCRA 600
DOCTRINE: In determining whether colorable imitation exists, jurisprudence has developed

two kinds of tests — the Dominancy Test and the Holistic Test.
The test of dominancy focuses on the similarity of the prevalent features of the competing
trademarks which might cause confusion or deception and thus constitutes infringement. The
holistic test mandates that the entirety of the marks in question must be considered in determining
confusing similarity. 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 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.
FACTS: H.D. Lee Co., Inc., a foreign corporation led with the Bureau of Patents, Trademarks &
Technology Transfer a Petition for Cancellation of Registration for the trademark "STYLISTIC
MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts,
shirts and lingerie in the the name of petitioner Emerald Garment Manufacturing Corporation, a
domestic corporation organized and existing under Philippine laws. H.D. Lee Co., Inc., invoking
Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the Paris Convention for the
Protection of Industrial Property, averred that petitioner's trademark "so closely resembled its
own trademark, 'LEE' as previously registered and used in the Philippines, and not abandoned, as
to be likely, when applied to or used in connection with petitioner's goods, to cause confusion,
mistake and deception on the part of the purchasing public as to the origin of the goods.
ISSUE: Whether or not the STYLISTIC MR. LEE trademark is confusingly similar with LEE or
LEE-RIDER, LEE-LEENS and LEE-SURES trademark of Emerald Garment Corp.
RULING: No. The essential element of infringement is colorable imitation. This term has been
defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers,
or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser
giving such attention as a purchaser usually gives, and to cause him to purchase the one
supposing it to be the other. Colorable imitation does not mean such similitude as amounts to
identity. Nor does it require that all the details be literally copied. Colorable imitation refers to
such similarity in form, content, words, sound, meaning, special arrangement, or general
appearance of the trademark or tradename with that of the other mark or tradename in their over-
all presentation or in their essential, substantive and distinctive parts as would likely mislead or
confuse persons in the ordinary course of purchasing the genuine article. In determining whether
colorable imitation exists, jurisprudence has developed two kinds of tests — the Dominancy Test
and the Holistic Test. As its title implies, the test of dominancy focuses on the similarity of the
prevalent features of the competing trademarks which might cause confusion or deception and
thus constitutes infringement.
. . . If the competing trademark contains the main or essential or dominant features of another,
and confusion and deception is likely to result, infringement takes place. Duplication or imitation
is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate.
The question at issue in cases of infringement of trademarks is whether the use of the marks
involved would be likely to cause confusion or mistakes in the mind of the public or deceive
purchasers. The holistic test mandates that the entirety of the marks in question must be
considered in determining confusing similarity. 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
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. Applying the
foregoing tenets to the present controversy and taking into account the factual circumstances of
this case, the court 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. First, the
products involved in the case at bar are, in the main, various kinds of jeans. These are not your
ordinary household items like catsup, soy sauce or soap which are of minimal cost. Maong pants
or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious
and discriminating in and would prefer to mull over his purchase. Confusion and deception, then,
is less likely. Second, like his beer, the average Filipino consumer generally buys his jeans by
brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or
even an Armani.
He is, therefore, more or less knowledgeable and familiar with his preference and will not easily
be distracted. Finally, in line with the foregoing discussions, more credit should be given to the
"ordinary purchaser." Cast in this particular controversy, the ordinary purchaser is not the
"completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of
product involved. The definition laid down in Dy Buncio v. Tan Tiao Bok is better suited to the
present case. There, the "ordinary purchaser" was defined as one "accustomed to buy, and
therefore to some extent familiar with, the goods in question. The test of fraudulent simulation is
to be found in 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 test is not found in the deception, or the possibility of deception, of the person
who knows nothing about the design which has been counterfeited, and who must be indifferent
between that and the other. 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." There is no cause for the Court of Appeal's apprehension that
petitioner's products might be mistaken as "another variation or line of garments under private
respondent's 'LEE' trademark". 36 As one would readily observe, private respondent's variation
follows a standard format "LEERIDERS," "LEESURES" and "LEELEENS." It is, therefore,
improbable that the public would immediately and naturally conclude that petitioner's
"STYLISTIC MR. LEE" is but another variation under private respondent's "LEE" mark.
 McDonald’s Corporation vs. MacJoy Fastfood Corp., G.R. No.

166115, Febrruary 2, 2007
DOCTRINE: The dominancy test not only looks at the visual comparisons between two
trademarks but also the aural impressions created by the marks in the public mind as well as
connotative comparisons, giving little weight to factors like prices, quality, sales outlets and
market segments.
FACTS: Macjoy Fastfood Corporation (Macjoy), a corporation selling fried chicken, chicken
barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks (fastfood
products) in Cebu City filed with the BPTT-IPO an application for the registration of the
trademark “MACJOY & DEVICE”. McDonald’s Corporation, a corporation organized under the
laws of Delaware, USA opposed against the respondent’s application claiming that such
trademark so resembles its corporate logo (Golden Arches) design and its McDONALD’s marks
such that when used on identical or related goods, the trademark applied for would confuse or
deceive purchasers into believing that the goods originated from the same source or origin.
Macjoy on the other hand averred that it has used the mark “MACJOY” for tha past many years
in good faith and has spent considerable sums of money for extensive promotions. The IPO
ratiocinated that the predominance of the letter “M” and the prefixes “Mac/Mc” in both the
Macjoy and McDonald’s marks lead to the conclusion that there is confusing similarity between
them x x x. Therefore, Macjoy’s application was denied. Upon appeal to the CA, it favored with

MacJoy and against McDonald’s. The Court of Appeals, in ruling over the case, actually used the
holistic test (which is a test commonly used in infringement cases). The holistic test looks upon
the visual comparisons between the two trademarks.
The justifications are the following:

1. The word “MacJoy” is written in round script while the word “McDonald’s is written in single
stroke gothic;
2. The word “MacJoy” comes with the picture of a chicken head with cap and bowtie and wings
sprouting on both sides, while the word “McDonald’s” comes with an arches “M” in gold colors,
and absolutely without any picture of a chicken;
3. The word “MacJoy” is set in deep pink and white color scheme while the
word“McDonald’s” is written in red, yellow, and black color combination;
4. The facade of the respective stores of the parties, are entirely different.
ISSUE: Whether there is a confusing similarity between the McDonald’s marks of the petitioner
and the respondent’s “MACJOY & DEVICE” trademark when it applied to classes 29 ad 30 of
the International Classification of Goods.
RULING: Yes. The Supreme Court ruled that the proper test to be used is the dominancy test.
The dominancy test not only looks at the visual comparisons between two trademarks but also the
aural impressions created by the marks in the public mind as well as connotative comparisons,
giving little weight to factors like prices, quality, sales outlets and market segments. In the case
at bar, the Supreme Court ruled that “McDonald’s” and “MacJoy” marks are confusingly similar
with each other such that an ordinary purchaser can conclude an association or relation between
the marks. To begin with, both marks use the corporate “M” design logo and the prefixes “Mc”
and/or “Mac”as dominant features. The first letter “M” in both marks puts emphasis on the
prefixes “Mc”and/or “Mac” by the similar way in which they are depicted i.e. in an arch-like,
capitalized and stylized manner. For sure, it is the prefix “Mc,” an abbreviation of “Mac,” which
visually and aurally catches the attention of the consuming public. Verily, the word “MACJOY”
attracts attention the same way as did “McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big
Mac” and the rest of the MCDONALD’S marks which all use the prefixes Mc and/or Mac.
Besides and most importantly, both trademarks are used in the sale of fast food products.
Further, the owner of MacJoy provided little explanation why in all the available names for a
restaurant he chose the prefix “Mac” to be the dominant feature of the trademark. The
prefix“Mac” and “Macjoy” has no relation or similarity whatsoever to the name Scarlett Yu
Carcel, which is the name of the niece of MacJoy’s president whom he said was the basis of the
trademark MacJoy. By reason of the MacJoy’s implausible and insufficient explanation as to how
and why out of the many choices of words it could have used for its trade-name and/or trademark,
it chose the word “Macjoy,” the only logical conclusion deducible therefrom is that the MacJoy
would want to ride high on the established reputation and goodwill of the McDonald’s marks,
which, as applied to its restaurant business and food products, is undoubtedly beyond question.
17. Generic & Descriptive Marks

 Societe des Produits vs. CA, G.R. No. 112012, April 4, 2001
DOCTRINE: 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. 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.”

FACTS: In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and
Technology Transfers an application for the registration of its trademark “Flavor Master” – an
instant coffee. Nestle opposed the application as it alleged that “Flavor Master” is confusingly
similar to Nestle coffee products like Master Blend and Master Roast. Nestle alleged that in
promoting their products, the word Master has been used so frequently so much so that when one
hears the word Master it connotes to a Nestle product. They provided as examples the fact that
they’ve been using Robert Jaworski and Ric Puno Jr. as their commercial advertisers; and that in
those commercials Jaworski is a master of basketball and that Puno is a master of talk shows; that
the brand of coffee equitable or fit to them is Master Blend and Master Roast. CFC Corporation
on the other hand alleged that the word “Master” is a generic and a descriptive term, hence not
subject to trademark. The Director of Patents ruled in favor of Nestle but the Court of Appeals,
using the Holistic Test, reversed the said decision.
ISSUE: WON the Court of Appeals is correct
RULING: No. The proper test that should have been used is the Dominancy Test. The
application of the totality or holistic test is improper since the ordinary purchaser would not be
inclined to notice the specific features, similarities or dissimilarities, considering that the product
is an inexpensive and common household item. The use of the word Master by Nestle in its
products and commercials has made Nestle acquire a connotation that if it’s a Master product it is
a Nestle product. 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.
In addition, 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.”
 East Pacific Merchandising Corp. vs. Director of Patents, G.R. No.

L- 14377, Dec. 29, 1960

DOCTRINE: The term "Verbena" is descriptive of a whole genus of garden plants with fragrant
flowers used in connection with cosmetic products. Regardless of other connotations of the word,
the use of the term cannot be denied to other traders using such extract or oils in their own
products.
FACTS: Marcelo T. Pua filed with the Office of the Director of Commerce an application for the
registration under Act 666 of the composite trademark consisting of the word "Verbena" and
representation of a Spanish lady, with specific evident set of designs. Respondent Luis P. Pellicer
filed an opposition to the application on the following grounds: (a) that the picture of a lady is
common in trade and the name "Verbena" is the generic name of a flower and, therefore, neither
may be exclusively appropriated or registered by the applicant. The Director of Patents favored
the Pellicer, alleging that the term "Verbena" is "generically descriptive or misdescriptive of the
products, namely lotion, face powder, hair pomade and brillantine, while the representation of a
Spanish lady is not only deceptively misdescriptive of the source or origin, but also common in
trade," and, resulting to the denial of East Pacific’s registration.
ISSUE: WON term “Verbena” is registerable.

RULING: The term "Verbena" is descriptive of a whole genus of garden plants with fragrant
flowers used in connection with cosmetic products. Regardless of other connotations of the word,
the use of the term cannot be denied to other traders using such extract or oils in their own
products. It follows that the Director of Patents correctly held the term to be non-registerable in
the sense that Petitioner Company would be entitled to appropriate its use to the exclusion of
others legitimately entitled, such as oppositor Pellicer. In a leading case, Caswell vs. Davis, 17
Am. Rep. 233, 241, 242, the court, on a similar issue, said: There is no principle more firmly
settled in the law of trademarks, than that words or phrases which have been in common use and
which indicate the character, kind, quality and composition of the thing, may not be appropriated
by anyone to his exclusive use. In the exclusive use of them the law will not protect. . . .
The claim that the petitioner is entitled to registration because the term "Verbena" has already
acquired a secondary significance is without merit. The provisions of law (Rep. Act No. 166, sec.
4) require that the trademark applied for must have "become distinctive of the applicant's goods",
and that a prima facie proof of this fact exists when the applicant has been in the "substantially
exclusive and continuous use thereof as a mark or tradename, for five years next preceding the
date of the filing of the application for its registration".
 Masso Hermanos vs. Director of Patents, G.R. No. L- 3952, Dec.

29, 1953
DOCTRINE: 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.
FACTS: Petitioner’s claim: Masso Hermanos, S.A., is the registered owner under Act No. 666 of
the trademark composed of the word "Cosmopolite" used on canned fish. On June 14, 1948, the
petitioner, Masso Hermanos, applied to the Director of Patents for a new certificate of registration
of said trademark under the provisions of section 41 (a) of Republic Act No. 166. Respondent’s
claim: 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 under the provisions of Act No.
666 and, consequently, is not entitled to registration under section 41 (a) of Republic Act No.

166.The respondent Director of Patents contends that the original registration of the trademark
under Act No. 666 was "null and void ab initio "because the word "cosmopolite" is descriptive
and, therefore, the registration thereunder is not subsisting.
ISSUE: WON the word Cosmopolite is descriptive and therefore cannot be registered as a
trademark
RULING: NO. 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. For example, a dealer in shoes cannot
register a trademark "Leather Shoes" because that would be descriptive and it would be right to
use the same words with reference to their merchandise. The court is, therefore, of the opinion
that the registration of the trademark "Cosmopolite" under Act No. 666 was valid and is
subsisting. In view of the foregoing, the ruling of the respondent Director of Patents is set aside
and he is ordered to issue to the petitioner a new certificate of registration of the trademark in
exchange for the old one No. 1881 surrendered to him on June 18, 1948.
DOCTRINE: 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.
FACTS: 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?
RULING: 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.

DOCTRINE: Nobody can acquire any exclusive right to market articles supplying the simple
human needs in containers or wrappers of the general form, size and character commonly and
immediately used in marketing such articles.
FACTS: In September 1988, San Miguel Corporation (SMC) sued Asia Brewery Inc. for
allegedly infringing upon their trademark on their beer product popularly known as “San Miguel
Pale Pilsen”; that Asia Brewery’s “Beer na Beer” product, by infringing upon SMC’s trademark
has committed unfair competition as “Beer na Beer” creates confusion between the two products.
The RTC ruled in favor of Asia Brewery but the Court of Appeals reversed the RTC.
ISSUE: WON ABI infringes SMC’s trademark and as such constitutes unfair competition
RULING: No. Infringement is determined by a test of dominancy. 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. A closer look at the trademark of both companies will
show that the dominant features of each absolutely bear no similarity to each other. SMC’s
dominant trademark is the name of the product, “San Miguel Pale Pilsen” written in white Gothic
letters with elaborate serifs at the beginning and end of the letters “S” and “M” on an amber
background while ABI’s is the name “Beer Pale Pilsen” with the word Beer written in large
amber letters, larger than any of the letter found in SMC label.
The bottle designs are different. SMC’s bottles have slender tapered neck while that of “Beer na
Beer” are fat. Though both beer products use steinie bottles, SMC cannot claim that Asia
Brewery copied the idea from SMC. SMC did not invent but merely borrowed the steinie bottle
from abroad and SMC does not have any patent or trademark to protect the steinie bottle shape
and design.
In SMC bottles, the words “pale pilsen” are written diagonally while in “Beer na Beer”, the words
“pale pilsen” are written horizontally. Further, the words “pale pilsen” cannot be said to be copied
from SMC for “pale pilsen” are generic words which originated from Pilsen, Czechoslovakia.
“Pilsen” is a geographically descriptive word and is non-registrable. SMC bottles have no slogans
written on them while Asia Brewery’s bottles have a copyrighted slogan written on them that is
“Beer na Beer”. In SMC bottles, it is expressly labeled as manufactured by SMC. In Asia
Brewery beer products, it is likewise expressly labeled as manufactured by Asia Brewery. Surely,
there is no intention on the part of Asia Brewery to confuse the public and make it appear that
“Beer na Beer” is a product of SMC, a long-established and more popular brand. The word “pale
pilsen” on ABI’s trademark does not constitute trademark infringement for it is a generic word
descriptive of the color of a type of beer. No one may appropriate generic or descriptive words for
they belong to the public domain.
ABI is likewise not guilty of unfair competition for unfair competition is the employment of
deception or any other means contrary to good faith by which a person shall pass off the goods
manufactured by him for those of another who has already established goodwill for his similar
goods. The universal test for this is whether the public is likely to be deceived. Actual or probable
deception and confusion on the part of the customers by reason of defendant’s practices must
appear. However, this is unlikely to happen in the case at bar for consumers generally order beer
by brand. Also, the fact that ABI also uses amber-colored steinie bottles cannot constitute unfair
competition for ABI did not copy SMC’s bottle. SMC did not invent but merely borrowed the

steinie bottle from abroad. Likewise, amber is the most effective color in preventing transmission
of light thus providing maximum protection to beer. 320 ml is likewise the standard prescribed
under Metrication Circular No. 778. The fact that it is the first to use the steinie bottle does not
give SMC a vested right to use it to the exclusion of everyone else. Nobody can acquire any
exclusive right to market articles supplying the simple human needs in containers or wrappers of
the general form, size and character commonly and immediately used in marketing such articles.
There is no confusing similarity between the competing beers therefore ABI neither infringed
SMC’s trademark nor did it commit unfair competition.
 Ong Ai Gui vs. Director of Patents, G.R. No. L-6235, March 28,
1955
DOCTRINE: The claim that a combination of words may be registered as a trade-name is no

justification for not applying the rules or principles hereinabove mentioned. The use of a generic
term in a trade-name is always conditional, i. e., subject to the limitation that the registrant does
not acquire the exclusive right to the descriptive or generic term or word.
FACTS: Ong Ai Gui applied for the registration of the trade name ‘20th Century Nylon Shirts
Factory’ to be used in his general merchandising business dealing principally with textiles.
Respondent E.I. De Pont de Nemours and Company opposed on the ground that the word ‘nylon’
is a generic term for a fabric material and it is descriptive and misdescriptive of petitioner’s
goods. The Director ruled that the application must be disapproved unless the word ‘nylon’ is
disclaimed.
ISSUE: WON the word ‘nylon’ being generic or descriptive can acquire a secondary meaning to
be registrable.
RULING: No. Used in connection with shirt-making, “Nylon” can never become distinctive,
can never acquire secondary meaning, because it is a generic term, like cotton, silk, linen, or
ramie. Just as no length of use and no amount of advertising will make “cotton,” “silk,” “linen,”
or “ramie,” distinctive of shirts or of the business of making them, so no length of use and no
amount of advertising will make “nylon” distinctive of shirts or of the business of manufacturing
them.”
It must also be noted that no claim is made in the application that the trade-name sought to be
registered has acquired what is known as a secondary meaning within the provisions of paragraph
(f) of section 4 of Republic Act No. 166. All that the applicant declares in his statement
accompanying his application is that the said trade-name has been continuously used by it in
business in the Philippines for about seven years, without allegation or proof that the trade-name
has become distinctive of the applicant’s business or services. Furthermore, the use of the term
“nylon” in the trade-name is both “descriptive” and “deceptively and misdescriptive” of the
applicant-appellant’s business, for apparently he does not use nylon in the manufacture of the
shirts, pants and wears that he produces and sells. How can a secondary meaning be acquired if
appellant’s products are not made of nylon? Certainly no exclusive right can be acquired by
deception of fraud.
18. Doctrine of Secondary Meaning

 Phil. Nut Industry vs. Standard, L-23055, July 31, 1975
DOCTRINE: A common term may apply secondary meaning when it is used or employed by any
one in promoting his business or enterprise, which once adopted or coined with one’s business as

an emblem, sign or device to characterize its products or as a badge of authenticity, as to be
exclusively associated with its product and business, which when used by another may lead to
confusion in trade and cause damage to its business.
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, asked 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.
ISSUE: Whether the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by

Philippine Nut on its label for salted peanuts is confusingly similar to the trademark "PLANTERS
COCKTAIL PEANUTS" used by Standard Brands on its product.
RULING: In the cases involving infringement of trademark brought before the Court it has been
consistently held that there is infringement of trademark when the use of the mark involved
would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers
as to the origin or source of the commodity; that whether or not a trademark causes confusion and
is likely to deceive the public is a question of fact which is to be resolved by applying the "test of
dominancy", meaning, if the competing trademark contains the main or essential or dominant
features of another by reason of which confusion and deception are likely to result, then
infringement takes pIace; that duplication or imitation is not necessary, a similarity in the
dominant features of the trademarks would be sufficient.
According to petitioner, PLANTERS cannot be considered as the dominant feature of the

trademarks in question because it is a mere descriptive term. We find the argument without merit.
While it is true that PLANTERS is an ordinary word, nevertheless it is used in the labels not to
describe the nature of the product, but to project the source or origin of the salted peanuts
contained in the cans. The word PLANTERS printed across the upper portion of the label in bold
letters easily attracts and catches the eye of the ordinary consumer and it is that word and none
other than sticks in his mind when he thinks of salted peanuts. It is true that there are other words
used such as "Cordial" in petitioner's can and "Cocktail" in Standard Brands', which are also
prominently displayed, but these words are mere adjectives describing the type of peanuts in the
labeled containers and are not sufficient to warn the unwary customer that the two products come
from distinct sources. As a whole it is the word PLANTERS which draws the attention of the
buyer and leads him to conclude that the salted peanuts contained in the two cans originate from
one and the same manufacturer. The next argument of petitioner is that respondent Director
should not have based his decision simply on the use of the term PLANTERS, and that what he
should have resolved is whether there is a confusing similarity in the trademarks of the parties. It
is quite obvious from the record, that respondent Director's decision is based not only on the fact
that petitioner herein adopted the same dominant mark of Standard Brands, that is, the word
PLANTERS, but that it also used in its label the same coloring scheme of gold, blue, and white,
and basically the same layout of words such as "salted peanuts" and "vacuum packed" with

similar type and size of lettering as appearing in Standard Brands' own trademark, all of which
result in a confusing similarity between the two labels.
Thus, the decision states: "Furthermore, as to appearance and general impression of the two
trademarks, I find a very confusing similarity." Petitioner contends, however, that there are
differences between the two trademarks, such as, the presence of the word "Philippine" above
PLANTERS on its label, and other phrases, to wit: "For Quality and Price, It’s Your Outstanding
Buy", the address of the manufacturer in Quezon City, etc., plus a pictorial representation of
peanuts overflowing from a tin can, while in the label of Standard Brands it is stated that the
product is manufactured in San Francisco, California, and on top of the tin can is printed "Mr.
Peanut" and the representation of a "humanized peanut. We have taken note of those alleged
differences but we find them insignificant in the sense that they are not sufficient to call the
attention of the ordinary buyer that the labeled cans come from distinct and separate sources. The
word "Philippine" printed in small type in petitioner's label may simply give to the purchaser the
impression that that particular can of PLANTERS salted peanuts is locally produced or canned
but that what he is buying is still PLANTERS canned salted peanuts and nothing else. As regards
"Mr. Peanut" on Standard Brands' label, the same appears on the top cover and is not visible
when the cans are displayed on the shelves, aside from the fact that the figure of "Mr. Peanut" is
printed on the tin cover which is thrown away after opening the can, leaving no lasting
impression on the consumer. It is also for this reason that We do not agree with petitioner that it is
"Mr. Peanut and the Humanized Peanut" which is the trademark of Standard Brands salted
peanuts, it being a mere descriptive pictorial representation of a peanut not prominently displayed
on the very body of the label covering the can, unlike the term PLANTERS which dominates the
label.
Petitioner, invoking American jurisprudence, asserts that the first user of a tradename composed
of common words is given no special preference unless it is shown that such words have acquired
secondary meaning, and this, respondent Standard Brands failed to do when no evidence was
presented to establish that fact.
The doctrine of secondary meaning is found in Sec. 4 (f), Chapter II-A of the Trade-Mark Law,
viz: Except as expressly excluded in paragraphs (a), (b), (c) and (d) of this section, nothing herein
shall prevent the registration of a mark or trade-name used by the applicant which has become
distinctive of the applicant's goods, business or services. The Director may accept as prima facie
evidence that the mark or trade-name has become distinctive, as applied to or used in connection
with the applicant's goods, business or services, proof of substantially exclusive and continuous
use thereof as a mark or trade-name by the applicant in connection with the sale of goods,
business or services for the five years next preceding the date of the filing of the application for
its registration. (As amended by Sec. 3, Rep. Act No. 638.) 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.
By way of illustration, is the word "Selecta" which according to this Court is a common ordinary
term in the sense that it may be used or employed by any one in promoting his business or
enterprise, but which once adopted or coined in connection with one's business as an emblem,
sign or device to characterize its products, or as a badge of authenticity, may acquire a secondary
meaning as to be exclusively associated with its products and business, so that its use by another
may lead to confusion in trade and cause damage to its business.

The applicability of the doctrine of secondary meaning to the situation now before Us is
appropriate because there is oral and documentary evidence showing that the word PLANTERS
has been used by and closely associated with Standard Brands for its canned salted peanuts since
1938 in this country. In other words, there is evidence to show that the term PLANTERS has
become a distinctive mark or symbol insofar as salted peanuts are concerned, and by priority of
use dating as far back as 1938, respondent Standard Brands has acquired a preferential right to its
adoption as its trademark warranting protection against its usurpation by another. Ubi jus ibi
remedium. Where there is a right there is a remedy. Standard Brands has shown the existence of a
property right and respondent Director, has afforded the remedy. Applying the words of Justice
Roman Ozaeta in the "Ang Tibay" case (Ang vs. Toribio Teodoro, p. 56, supra) to the case now
before Us, petitioner herein must not be allowed to get a free ride on the reputation and selling
power of Standard Brands PLANTERS salted peanuts, for a self-respecting person, or a reputable
business concern as is the case here, does not remain in the shelter of another's popularity and
goodwill but builds one of his own.
 Ang vs. Teodoro, 74 Phil 50 (1942)
DOCTRINE: When the etymology and meaning of a phrase or word is never used to define or
describe an object, is therefore not a descriptive term within the meaning of a Trademark Law
but rather a fanciful or coined phrase which may legally or properly be appropriated as a
trademark or a tradename.
FACTS: Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later as sole
proprietor, has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the
manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered
it as a trade-mark on September 29, 1915, and as a trade-name on January 3, 1933. The growth of
his business is a thrilling epic of Filipino industry and business capacity. Starting in an obscure
shop in 1910 with a modest capital of P210 but with tireless industry and unlimited perseverance,
Toribio Teodoro, then an unknown young man making slippers with his own hands but now a
prominent business magnate and manufacturer with a large factory operated with modern
machinery by a great number of employees, has steadily grown with his business to which he has
dedicated the best years of his life and which he has expanded to such proportions that his gross
sales from 1918 to 1938 aggregated P8,787,025.65. His sales in 1937 amounted to P1,299,343.10
and in 1938, P1,133,165.77. His expenses for advertisement from 1919 to 1938 aggregated
P210,641.56.
Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. In
the following year (1938) her gross sales amounted to P422,682.09. Neither the decision of the
trial court nor that of the Court of Appeals shows how much petitioner has spent for
advertisement. But respondent in his brief says that petitioner "was unable to prove that she had
spent a single centavo advertising 'Ang Tibay' shirts and pants prior to 1938. In that year she
advertised the factory which she had just built and it was when this was brought to the attention
of the appellee that he consulted his attorneys and eventually brought the present suit."
ISSUE: Whether or not the phrase "Ang Tibay," being neither geographic nor descriptive, was
originally capable of exclusive appropriation as a trademark.
RULING: Yes. We have said that the phrase "Ang Tibay," being neither geographic nor
descriptive, was originally capable of exclusive appropriation as a trade-mark. But were it not so,
the application of the doctrine of secondary meaning made by the Court of Appeals could

nevertheless be fully sustained because, in any event, by respondent's long and exclusive use of
said phrase with reference to his products and his business, it has acquired a proprietary
connotation.
Respondent has continuously used "Ang Tibay," both as a trade-mark and as a tradename, in the
manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered
it as a trademark on September 29, 1915, and as a trade-name on January 3, 1933. Petitioner
registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and
established a factory for the manufacture of said articles in the year 1937. That petitioner's
registration of the trade-mark "Ang Tibay" should be cancelled, and that she should be
perpetually enjoined from using said trade-mark on goods manufactured and sold by her.
An inquiry into the etymology and meaning of the Tagalog words "Ang Tibay," made in the
decision, shows that the phrase is never used adjectively to define or describe an object. It is,
therefore, not a descriptive term within the meaning of the Trademark Law but rather a fanciful or
coined phrase which may properly and legally be appropriated as a trademark or tradename.
Hence, it was originally capable of exclusive appropriation as a trade-mark by the respondent.
The function of a trade-mark is to point distinctively, either by its own meaning or by association,
to the origin or ownership of the wares to which it is applied. "Ang Tibay," as used by the
respondent to designate his wares, had exactly performed that function for twenty-two years
before the petitioner adopted it as a trade-mark in her own business. "Ang Tibay" shoes and
slippers are, by association, known throughout the Philippines as products of the "Ang Tibay"
factory owned and operated by the respondent. Even if "Ang Tibay," Therefore, were not capable
of exclusive appropriation as a trade-mark, the application of the doctrine of secondary meaning
could nevertheless be fully sustained because, in any event, by respondent's long and exclusive
use of said phrase with reference to his products and his business, it has acquired a proprietary
connotation. This 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.
In the present stage of development of the law on trade-marks, unfair competition, and unfair
trading, the test employed by the courts to determine whether noncompeting goods are or are not
of the same class is confusion as to the origin of the goods of the second user. Although two
noncompeting articles may be classified under two different classes by the Patent Office because
they are deemed not to possess the same descriptive properties, they would nevertheless be held
by the courts to belong to the same class.
 Arce Sons and Co. vs. Selects Biscuits, 1 SCRA 253 91961
DOCTRINE: The function of a trade-mark is to point distinctively, either by its own meaning or
by association, to the origin or ownership of the wares to which it is applied. An ordinary or
common word in the sense that it 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 use by
another may lead to confusion in trade and cause damage to its business.
FACTS: Respondent, Selecta Biscuit Company, Inc, filed with the Philippine Patent Office a
petition for the registration of the word "SELECTA" as trademark to be used on its bakery

products. Petitioner, filed its opposition thereto on several grounds, among which are: (1) that the
mark "SELECTA" had been continuously used by petitioner in the manufacture and sale of its
products, including cakes, bakery products, milk and ice cream, from the time of its organization
and even prior thereto by its predecessor-in-interest, Ramon Arce; (2) that the mark "SELECTA"
has already become identified with the name of petitioner and its business; (3) that petitioner had
warned respondent not to use said mark because it was already being used by the former, but that
the latter ignored said warning; (4) that respondent is using the word "SELECTA" as a trade-
mark in bakery products in unfair competition with the products of petitioner thus resulting in
confusion in trade; (5) that the mark to which the application of respondent refers has striking
resemblance, both in appearance and meaning, to petitioner's mark as to be mistaken therefore by
the public and cause respondent's goods to be sold as petitioner's.
ISSUE: Whether or not respondent application for registration of a mark is infringing on

petitioner’s mark.
RULING: YES, the word "SELECTA", it is true, may be an ordinary or common word in the
sense that it 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 use 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 trademark. In this sense, the law gives it protection and
guarantees its use to the exclusion of all others. It is also in this sense that the law postulates that
"The ownership or possession of a trademark, shall be recognized and protected in the same
manner and to the same extent, as are other property rights known to the law," thereby giving to
any person entitled to the exclusive use of such trademark the right to recover damages in a civil
action from any person who may have sold goods of similar kind bearing such trademark
(Sections 2-A and 23, Republic Act No. 166, as amended).
The term "SELECTA" may be placed at par with the words "Ang Tibay" which this Court has
considered not merely as a descriptive term within the meaning of the Trademark Law but as a
fanciful or coined phrase, or a trademark. In that case, this Court found that respondent has
consistently used the term "Ang Tibay", both as a trademark and a tradename, in the manufacture
and sale of slippers, shoes, and indoor baseballs for twenty-two years before petitioner registered
it as a trade-name for pants and shirts so that it has performed during that period the function of a
trade-mark to point distinctively, or by its own meaning or by association, to the origin or
ownership of the wares to which it applies. And in holding that respondent was entitled to
protection in the use of that trade-mark, this Court made the following comment:
"The function of a trade-mark is to point distinctively, either by its own meaning or by

association, to the origin or ownership of the wares to which it is applied. 'Ang Tibay,' as used by
the respondent to designate his wares, had exactly performed that function for twenty-two years
before the petitioner adopted it as a 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. Even if 'Ang Tibay, therefore, were not capable of
exclusive appropriation as a trademark, the application of the doctrine of secondary meaning
could nevertheless be fully sustained because, in any event, by respondent's long and exclusive
use of said phrase with reference to his products and business, it has acquired a proprietary
connotation. This 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." (Ang vs. Teodoro, supra.) The
rationale in the Ang Tibay case applies on all fours to the case of petitioner.
 Lyceum of the Philippines vs. Court of Appeals, G.R. No. 101897,

March 5, 1999
DOCTRINE: The doctrine of secondary meaning was elaborated in the following terms: 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.
FACTS: Lyceum of the Philippines Inc. had sometime before commenced in the SEC a
proceeding (SEC-Case No. 1241) against the Lyceum of Baguio, Inc. to require it to change its
corporate name and to adopt another name not "similar to or identical" with that of petitioner. In
an Order dated 20 April 1977, Associate Commissioner Julio Sulit held that the corporate name
of petitioner and that of the Lyceum of Baguio, Inc. were substantially identical because of the
presence of a "dominant" word "Lyceum," the name of the geographical location of the campus
being the only word which distinguished one from the other corporate name. The SEC also noted
that Lyceum of the Philippines Inc. had registered as a corporation ahead of the Lyceum of
Baguio, Inc. in point of time, and ordered the latter to change its name to another name "not
similar or identical [with]" the names of previously registered entities. The Lyceum of Baguio,
Inc. assailed the Order of the SEC before the Supreme Court (GR L-46595). In a Minute
Resolution dated 14 September 1977, the Court denied the Petition for Review for lack of merit.
Entry of judgment in that case was made on 21 October 1977.
Armed with the Resolution of the Supreme Court, the Lyceum of the Philippines then wrote all
the educational institutions it could find using the word "Lyceum" as part of their corporate name,
and advised them to discontinue such use of "Lyceum." When, with the passage of time, it
became clear that this recourse had failed, and on 24 February 1984, Lyceum of the Philippines
instituted before the SEC SEC-Case 2579 to enforce what Lyceum of the Philippines claims as its
proprietary right to the word "Lyceum." The SEC hearing officer rendered a decision sustaining
petitioner's claim to an exclusive right to use the word "Lyceum." The hearing officer relied upon
the SEC ruling in the Lyceum of Baguio, Inc. case (SEC-Case 1241) and held that the word
"Lyceum" was capable of appropriation and that petitioner had acquired an enforceable exclusive
right to the use of that word. On appeal, however, by Lyceum Of Aparri, Lyceum Of Cabagan,
Lyceum Of Camalaniugan, Inc., Lyceum Of Lallo, Inc., Lyceum Of Tuao, Inc., Buhi Lyceum,
Central Lyceum Of Catanduanes, Lyceum Of Southern Philippines, Lyceum Of Eastern
Mindanao, Inc. and Western Pangasinan Lyceum, Inc. which are also educational institutions, to
the SEC En Banc, the decision of the hearing officer was reversed and set aside. The SEC En
Banc did not consider the word "Lyceum" to have become so identified with Lyceum of the
Philippines as to render use thereof by other institutions as productive of confusion about the
identity of the schools concerned in the mind of the general public. Unlike its hearing officer, the
SEC En Banc held that the attaching of geographical names to the word "Lyceum" served
sufficiently to distinguish the schools from one another, especially in view of the fact that the
campuses of Lyceum of the Philippines and those of the other Lyceums were physically quite
remote from each other. Lyceum of the Philippines then went on appeal to the Court of Appeals.
In its Decision dated 28 June 1991, however, the Court of Appeals affirmed the questioned

Orders of the SEC En Banc. Lyceum of the Philippines filed a motion for reconsideration,
without success. Lyceum of the Philippines filed the petition for review.
ISSUE: Whether or not the use of the word “Lyceum” in such a length of time in the corporate
name of Lyceum of the Philippines serves exclusivity of the use in accord of the doctrine of
secondary meaning.
RULING: 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. The word "Lyceum" became associated with
schools and other institutions providing public lectures and concerts and public discussions. Thus
today, the word "Lyceum" generally refers to a school or an institution of learning. 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. It is
claimed, however, by petitioner that the word "Lyceum" has acquired a secondary meaning in
relation to petitioner with the result that that word, although originally a generic, has become
appropriable by petitioner to the exclusion of other institutions like private respondents herein.
The doctrine of secondary meaning originated in the field of trademark law. Its application has,
however, been extended to corporate names sine the right to use a corporate name to the
exclusion of others is based upon the same principle which underlies the right to use a particular
trademark or tradename. In Philippine Nut Industry, Inc. v. Standard Brands, Inc., the doctrine of
secondary meaning was elaborated in the following terms: 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." The question which
arises, therefore, is whether or not the use by petitioner of "Lyceum" in its corporate name has
been for such length of time and with such exclusivity as to have become associated or identified
with the petitioner institution in the mind of the general public (or at least that portion of the
general public which has to do with schools). The Court of Appeals recognized this issue and
answered it in the negative: This circumstance has been referred to as the distinctiveness into
which the name or phrase has evolved through the substantial and exclusive use of the same for a
considerable period of time. The same doctrine or principle cannot be made to apply where the
evidence did not prove that the business (of the plaintiff) has continued for so long a time that it
has become of consequence and acquired a good will of considerable value such that its articles
and produce have acquired a well-known reputation, and confusion will result by the use of the
disputed name (by the defendant) (Ang Si Heng vs. Wellington Department Store, Inc., 92 Phil.
448). With the foregoing as a yardstick, we believe the appellant failed to satisfy the
aforementioned requisites. No evidence was ever presented in the hearing before the Commission
which sufficiently proved that the word 'Lyceum' has indeed acquired secondary meaning in favor
of the appellant. If there was any of this kind, the same tend to prove only that the appellant had
been using the disputed word for a long period of time. Nevertheless, its (appellant) exclusive use
of the word (Lyceum) was never established or proven as in fact the evidence tend to convey that
the cross-claimant was already using the word 'Lyceum' seventeen (17) years prior to the date the
appellant started using the same word in its corporate name. In other words, 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. Consequently, the
allegations of the appellant in its first two assigned errors must necessarily fail." Petitioner's use
of the word "Lyceum" was not exclusive but was in truth shared with the Western Pangasinan
Lyceum and a little later with other private respondent institutions which registered with the SEC
using "Lyceum" as part of their corporation names. There may well be other schools using
Lyceum or Liceo in their names, but not registered with the SEC because they have not adopted
the corporate form of organization.
19. Well-known Marks

 Sec. 123.1 and 147.2
 Rule 100 par. C, Trademark Regulations
 Rule 102, Trademark Regulations
 246 Corp. vs. Daway, G.R. No. 157216, November 20, 2003
DOCTRINE: The use of a mark is precluded when that the mark is well known internationally
and in the Philippines, the use of the mark would indicate a connection or relationship between
the user and the registrant, and that the interests of the well-known mark are likely to be
damaged.
FACTS: Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and
Crown Device, filed against petitioner 246 Corporation the instant suit for trademark
infringement and damages with prayer for the issuance of a restraining order or writ of
preliminary injunction. Respondents alleged that sometime in July 1996, petitioner adopted and,
since then, has been using without authority the mark "Rolex" in its business name "Rolex Music
Lounge" as well as in its newspaper advertisements as – "Rolex Music Lounge, KTV, Disco &
Party Club."
Petitioner argued that respondents have no cause of action because no trademark infringement
exist; that no confusion would arise from the use by petitioner of the mark "Rolex" considering
that its entertainment business is totally unrelated to the items catered by respondents such as
watches, clocks, bracelets and parts thereof. It also contended that the complaint was not properly
verified and certified against forum shopping considering that Atty. Alonzo Ancheta, the counsel
of record of respondents who signed the verification and certification, was not authorized to
represent respondents. In 2000, 246 Corp. filed a motion for preliminary hearing on its
affirmative defense; which the court thereafter issued a subpoena ad testificandum to Atty.
Atienza. Montres Rolex opposed, and the trial court quashed the subpoena. 246 corp. filed a
petition for certiorari before the Court of Appeals, which was dismissed. Hence, the petition for
review on certiorari.
ISSUE: Whether or not, the use of the word “Rolex” in petitioner’s business name constitutes
trademark infringement of the business name of Rolex and Crown Device.
RULING: YES, there is an infringement in the trademark in the use of the word “Rolex” as this
is internationally well-known mark.
The rule, that there is no infringement in the use of a ‘junior user of the registered mark on the
entirely different goods, has been modified by Section 123.1 (f) of Republic Act No. 8293

(Intellectual Property code). His use is precluded when that the mark is well known
internationally and in the Philippines, the use of the mark would indicate a connection or
relationship between the user and the registrant, and that the interests of the well-known mark are
likely to be damaged. The court however cannot resolve the merits considering the facts as to the
existence/absence of the requisites should be addressed in a full-blown hearing and not on a mere
preliminary hearing.
Considering that the trial court correctly denied petitioner’s motion for preliminary hearing on its
affirmative defenses with motion to dismiss, there exists no reason to compel Atty. Ancheta to
testify. Hence, no abuse of discretion was committed by the trial court in quashing the subpoena
ad testificandum issued against Atty. Ancheta. Grave abuse of discretion implies such capricious
and whimsical exercise of judgment as equivalent to lack of jurisdiction, or, in other words,
where the power is exercised in an arbitrary or despotic manner by reason of passion or personal
hostility, and it must be so patent and gross as to amount to an evasion of positive duty or to a
virtual refusal to perform the duty enjoined or to act at all in contemplation of law. None of these
was committed by the trial court; hence, the Court of Appeals correctly dismissed the petition.
20. Trademark Infringement is a relative concept

DOCTRINE: The certificate of registration confers upon the trademark owner the exclusive
right to use its own symbol only to those goods specified in the certificate, subject to the
conditions and limitations stated therein.
FACTS: Petitioner Canon Kabushiki Kaisha seeks a review of the decision of the Court of
Appeals (CA) and the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) which
approved private respondent NSR Rubber, application for registration of the mark CANON for
sandals. Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2
(paints, chemical products, toner, and dye stuff). Petitioner also submitted in evidence its
CANON also under class 2. BPTTT dismissed the opposition and gave due course to
respondent’s application. CA affirmed. Petitioner invokes Article 8 of the Paris Convention
which affords protection to a tradename whether or not it forms part of a trademark. Hence, this
petition.
ISSUE: Whether or not the use of the respondent NSR rubber of the word CANON on its
products constitutes infringement as to the products of petitioner Canon Kabushiki Kaisha.
RULING: NO, the use of the respondent NSR Rubber the word CANON on its products does not
constitute infringement. On appeal, the Supreme Court upheld the decision of the CA and the
BPTTT ruling that the trademark "CANON" as used by petitioner for its paints, chemical
products, toner and dyestuff, can be used by private respondent for its sandals because the
products of these two parties are dissimilar; that petitioner failed to present evidence that it has
also embarked in the production of footwear products; and that the evident disparity of the
products of the parties in this case rendered unfounded the apprehension of petitioner that
confusion of business or origin might occur if private respondent is allowed to use the mark
CANON. Ordinarily, the ownership of a trademark or tradename is a property right that the
owner is entitled to protect as mandated by the Trademark Law. However, when a trademark is
used by a party for a product in which the other party does not deal, the use of the same

trademark on the latter's product cannot be validly objected to. A review of the records shows that
with the order of the BPTTT declaring private respondent in default for failure to file its answer,
petitioner had every opportunity to present ex-parte all of its evidence to prove that its certificates
of registration for the trademark CANON cover footwear. The certificates of registration for the
trademark CANON in other countries and in the Philippines as presented by petitioner, clearly
showed that said certificates of registration cover goods belonging to class 2 (paints, chemical
products, toner, dyestuff). On this basis, the BPTTT correctly ruled that since the certificate of
registration of petitioner for the trademark CANON covers class 2 (paints, chemical products,
toner, dyestuff), private respondent can use the trademark CANON for its goods classified as
class 25 (sandals).
Clearly, there is a world of difference between the paints, chemical products, toner, and dyestuff
of petitioner and the sandals of private respondent. Petitioner counters that notwithstanding the
dissimilarity of the products of the parties, the trademark owner is entitled to protection when the
use of by the junior user "forestalls the normal expansion of his business." Petitioner's opposition
to the registration of its trademark (CANON) by private respondent rests upon petitioner's
insistence that it would be precluded from using the mark CANON for various kinds of footwear,
when in fact it has earlier used said mark for said goods. Stretching this argument, petitioner
claims that it is possible that the public could presume that petitioner would also produce a wide
variety of footwear considering the diversity of its products marketed worldwide. We do not
agree. Even in this instant petition, except for its bare assertions, petitioner failed to attach
evidence that would convince this Court that petitioner has also embarked in the production of
footwear products. In Faberge, Incorporated vs. Intermediate Appellate Court. We reiterated the
principle that the certificate of registration confers upon the trademark owner the exclusive right
to use its own symbol only to those goods specified in the certificate, subject to the conditions
and limitations stated therein. Thus, the exclusive right of petitioner in this case to use the
trademark CANON is limited to the products covered by its certificate of registration. The
likelihood of confusion of goods or business is a relative concept, to be determined only
according to the particular, and sometimes peculiar, circumstances of each case. Indeed, in
trademark law cases, even more than in other litigation, precedent must be studied in the light of
the facts of the particular case. Contrary to petitioner's supposition, the facts of this case will
show that the cases of Sta. Ana vs. Maliwat, Ang vs. Teodoro and Converse Rubber Corporation
vs. Universal Rubber Products, Inc. are hardly in point. The just cited cases involved goods that
were confusingly similar, if not identical, as in the case of Converse Rubber Corporation vs.
Universal Rubber Products, Inc. Here, the products involved are so unrelated that the public will
not be misled that there is the slightest nexus between petitioner and the goods of private
respondent. In cases of confusion of business or origin, the question that usually arises is whether
the respective goods or services of the senior user and the junior user are as related as to likely
cause confusion of business or origin, and thereby render the trademark or tradenames
confusingly similar. Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner
that carry the trademark CANON are unrelated to sandals, the product of private respondent.
 McDonald’s Corporation vs. MacJoy Fastfood Corp., G.R. No.
166115, Febrruary 2, 2007
DOCTRINE: In trademark cases, particularly in ascertaining whether one trademark is

confusingly similar to another, no set rules can be deduced because each case must be decided on
its merits. In such cases, even more than in any other litigation, precedent must be studied in the
light of the facts of the particular case. That is the reason why in trademark cases, jurisprudential
precedents should be applied only to a case if they are specifically in point.
FACTS: Petitioner McDonald’s Corp filed a verified Notice of Opposition against the
respondent MACJOY Fastfood Corp on the grounds that the trademark of the latter so resembles

its corporate logo and its marks and that such adoption would falsely tend to suggest a connection
or affiliation to the former company. MACJOY countered that it has used the mark for past many
years in good faith even before McDonald’s opened its first branch in Cebu City around 1992.
IPO decided in favor of petitioner MacDonald’s. Thereafter, the CA reversed the IPO. The IPO
used the dominancy test in concluding that there was confusing similarity between the two (2)
trademarks in question as it took note of the appearance of the predominant features M, Mc
and/or Mac in both the marks. In reversing the conclusion reached by the IPO, the CA, while
seemingly applying the dominancy test, in fact actually applied the holistic test.
ISSUE: What is the rule on the selection of the appropriate test?
RULING: Selection of the appropriate test is on case-to-case or ad hoc basis. It is established
that in trademark cases, particularly in ascertaining whether one trademark is confusingly similar
to another, no set rules can be deduced because each case must be decided on its merits. In such
cases, even more than in any other litigation, precedent must be studied in the light of the facts of
the particular case. That is the reason why in trademark cases, jurisprudential precedents should
be applied only to a case if they are specifically in point.
In recent cases such as McDonalds Corp. v. LC Big Mak Burger, Inc. and in Societe des Produits
Nestle, S.A. v CA with a similar factual milieu as here, the Court has consistently used and
applied the dominancy test in determining confusing similarity or likelihood of confusion
between competing trademarks Applying the dominancy test to the instant case, the Court finds
that herein petitioners MCDONALDS and respondents MACJOY marks are confusingly similar
with each other such that an ordinary purchaser can conclude an association or relation between
the marks.
21. Well-known marks

 Sec. 123.1 (e) and (f), and 147.2
 McDonalds Corp. vs. L.C. Big Mak, supra
DOCTRINE: Well-known marks that are registered in the Philippines, shall extend to
goods and services which are not similar to those in respect of which the mark is
registered: Provided, That use of that mark in relation to those goods or services would
indicate a connection between those goods or services and the owner of the registered
mark: Provided, further, That the interests of the owner of the registered mark are likely
to be damaged by such use. This is emphasized in Sec. 147.2 that even with respect to
goods which are not identical, not even related, that if a mark is well-known, that is
registered, its protection shall extend even to those goods and services not related.
However, you must establish a connection between that mark of the registered owner and
that mark that is considered as identical or there is a likelihood of confusion.
 Fredco Manufacturing Corp. vs. President and Fellows of Harvard

College, G.R. No. 185917, June 1, 2011
DOCTRINE: While under the territoriality principle a mark must be used in commerce in the
Philippines to be entitled to protection, internationally well-known marks are the exceptions to
this rule.
FACTS: Petitioner Fredco filed a petition for cancellation of registration against respondent
Harvard University for the mark Harvard Veritas Shield Symbol. Petitioner Fredco alleged that it

registered the mark decades before Harvard University registered the said mark here in the
Philippines. Harvard countered that the name and mark Harvard was registered in numerous
countries worldwide. The Bureau of Legal Affairs decided in favor of Fredco. Upon appeal, the
Office of the Director General reversed the decision on which the CA affirmed.
ISSUE: Is it necessary that the well-known marks be registered or used in the Philippines to be
protected?
RULING: No. In Mirpuri, the Court ruled that the essential requirement under Article 6bis of the
Paris Convention is that the trademark to be protected must be well-known in the country where
protection is sought. The Court declared that the power to determine whether a trademark is well-
known lies in the competent authority of the country of registration or use. The Court then stated
that the competent authority would either be the registering authority if it has the power to decide
this, or the courts of the country in question if the issue comes before the courts. To be protected
under the two directives of the Ministry of Trade, an internationally well-known mark need not be
registered or used in the Philippines. All that is required is that the mark is well-known
internationally and in the Philippines for identical or similar goods, whether or not the mark is
registered or used in the Philippines. Furthermore, while under the territoriality principle a mark
must be used in commerce in the Philippines to be entitled to protection, internationally well-
known marks are the exceptions to this rule.
In this case, Harvard is a well-known name and mark not only in the United States but also
internationally. It has been registered in at least 50 countries. As such, even before Harvard
University applied for registration for the mark here in the Philippines, the mark was already
protected.
22. Trademark Dilution

 Levi Strauss vs. Clinton Apparelle, Inc., G.R. No. 138900,
September 20, 2005
DOCTRINE: Subject to the principles of equity, the owner of a famous mark is entitled to an
injunction against another person’s commercial use in commerce of a mark or trade name, if
such use begins after the mark has become famous and causes dilution of the distinctive quality of
the mark. This is intended to protect famous marks from subsequent uses that blur distinctiveness
of the mark or tarnish or disparage it.
FACTS: Petitioner Levi Strauss prayed for the issuance of TRO against respondent Clinton on
the ground that the latter was using the same device which is substantially, if not exactly, similar
to the Dockers and Design trademark owned and registered to the former. Upon appeal, CA ruled
that the TRO had been improperly issued. Petitioner Levi Strauss’ registered trademark consists
of two elements: (1) the word mark Dockers and the2) the wing-shaped design or logo. There is
only one registration for BOTH features. On the other hand, respondent Clinton uses the
“Paddocks” word on top of logo. As observed by the SC, the two trademarks apparently differ in
their word marks (“Dockers” and “Paddocks”).
ISSUE: Is there trademark dilution?
RULING: None. Trademark dilution is the lessening of the capacity of a famous mark to identify
and distinguish goods or services, regardless of the presence or absence of: (1) competition
between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake
or deception. Subject to the principles of equity, the owner of a famous mark is entitled to an

injunction against another person’s commercial use in commerce of a mark or trade name, if such
use begins after the mark has become famous and causes dilution of the distinctive quality of the
mark. This is intended to protect famous marks from subsequent uses that blur distinctiveness of
the mark or tarnish or disparage it. Based on the foregoing, to be eligible for protection from
dilution, there has to be a finding that: (1) the trademark sought to be protected is famous and
distinctive; (2) the use by respondent of Paddocks and Design began after the petitioners mark
became famous; and (3) such subsequent use defames petitioners mark. In the case at bar,
petitioners have yet to establish whether Dockers and Design has acquired a strong degree of
distinctiveness and whether the other two elements are present for their cause to fall within the
ambit of the invoked protection.
23. Formal Requirement for application for registration

 Sec. 124
24. Filing date
 Sec. 127; 127.2
25. Priority Right of a Foreign Applicant
 Sec. 131
26. Certificate of Registration
 Sec. 138
DOCTRINE: The Supreme Court says that ordinarily, the ownership of a trademark or
tradename is a property right that the owner is entitled to protect as mandated by the Trademark
Law. However, when a trademark is used by a party for a product in which the other party does
not deal, the use of the same trademark on the latter's product cannot be validly objected to.
RULING: The BPTTT correctly ruled that since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent
can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a
world of difference between the paints, chemical products, toner, and dyestuff of petitioner and
the sandals of private respondent. The certificate of registration confers upon the trademark
owner the exclusive right to use its own symbol only to those goods specified in the certificate,

subject to the conditions and limitations stated therein. Thus, the exclusive right of CKK to use
the trademark CANON is limited to the products covered by its certificate of registration.
 Faberge Inc. vs. IAC, G.R. No. 71189, Nov. 4, 1992
DOCTRINE: 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.
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.
27. Duration of the Registration

 Sec. 145; 146.2
28. Rights conferred with registration
 Sec. 147 as amended by RA 9502
29. Limitation of rights
 Sec. 148
DOCTRINE: The Supreme Court says that ordinarily, the ownership of a trademark or
tradename is a property right that the owner is entitled to protect as mandated by the Trademark
Law. However, when a trademark is used by a party for a product in which the other party does
not deal, the use of the same trademark on the latter's product cannot be validly objected to.

RULING: The BPTTT correctly ruled that since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private respondent
can use the trademark CANON for its goods classified as class 25 (sandals). Clearly, there is a
world of difference between the paints, chemical products, toner, and dyestuff of petitioner and
the sandals of private respondent. The certificate of registration confers upon the trademark
owner the exclusive right to use its own symbol only to those goods specified in the certificate,
subject to the conditions and limitations stated therein. Thus, the exclusive right of CKK to use
the trademark CANON is limited to the products covered by its certificate of registration.
30. Assignment and Transfer of Application and Registration

 Sec. 149; 149.2; 149.4; 149.5
31. License Contracts
 Sec. 150; 150.2
32. Cancellation of Registration
 Sec. 151; 151.2
 Bata Industries Ltd vs. CA, 114 SCRA 318 (1982)
DOCTRINE: Bata Industries has no Philippine goodwill that would be damaged by the
registration of the mark.
FACTS: The respondent New Olympian Rubber Products sought to register the mark "BATA"
for casual rubber shoe products, alleging it had used the said mark since the 1970s. The
petitioner, a Canadian corporation opposed with its allegations that it owns and has not
abandoned said trademark. The petitioner has no license to do business in the Philippines and the
trademark has never been registered in the Philippines by any foreign entity. Bata Industries does
not sell footwear under the said trademark in the Philippines nor does it have any licensing
agreement with any local entity to sell its product.
Evidence show that earlier, even before the World War II, Bata shoes made by Gerbec and
Hrdina (Czech company) were already sold in the country. Some shoes made by the petitioner
may have been sold in the Philippines ntil 1948. On the other hand, respondent spent money and
effort to popularize the trademark "BATA" since the 70's. Moreover, it also secures 3 copyright
registrations for the word "BATA". The Philippine Patent Office (PPO) dismissed the opposition
by the petitioner while the Court of Appeals (CA) reversed said decision. However, a 2nd
resolution by the CA affirmed the PPO decision.
ISSUE: Does the petitioner have the right to protect its goodwill alleged to be threatened with the
registration of the mark?
RULING: NO. Bata Industries has no Philippine goodwill that would be damaged by the
registration of the mark. Any slight goodwill obtained by the product before World War II was
completely abandoned and lost in the more than 35 years that passed since Manila's liberation
from Japan. The petitioner never used the trademark either before or after the war. It is also not
the successor-in-interest of Gerbec & Hrdina and there there was no privity of interest between
them, Furthermore, the Czech trademark has long been abandoned in Czechoslovakia.
 Emerald Garment Mfg. vs. CA, supra
DOCTRINE: Ownership of a mark or trade name may be acquired not necessarily by

registration but by adoption and use in trade or commerce, as between actual use of a mark

without registration, and registration of the mark without actual use thereof, the former prevail
over the latter.
FACTS: In 1981, H.D Lee Co., Inc., a foreign company, filed an opposition against the
trademark application of Emerald Garment. Allegedly, the trademark “Stylistic Mr. Lee” sought
to be applied for by Emerald Garment is too confusingly similar with the brand “Lee” which has
for its variations “Lee Riders”, “Lee Sures”, and “Lee Leens”. The Director of Patents as well as
the Court of Appeals ruled in favor of H.D. Lee Co.
ISSUE: Whether or not the CA is correct

RULING: No. H.D. Lee failed to prove in court that it had prior actual commercial use of its
“LEE” trademark in the Philippines. H.D. Lee did show certificates of registrations for its brand
but registration is not sufficient. Actual use in commerce in the Philippines is an essential
prerequisite for the acquisition of ownership over a trademark pursuant to Sec. 2 and 2-A of the
Philippine Trademark Law (R.A. No. 166).
A rule widely accepted and firmly entrenched because it has come down through the years is that
actual use in commerce or business is a prerequisite in the acquisition of the right of ownership
over a trademark.
It would seem quite clear that 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. For trademark is a creation of use. The underlying reason for all these
is that purchasers have come to understand the mark as indicating the origin of the wares.
Flowing from this is the trader’s right to protection in the trade he has built up and the goodwill
he has accumulated from use of the trademark. Registration of a trademark, of course, has value:
it is an administrative act declaratory of a pre-existing right. Registration does not, however,
perfect a trademark right.
33. Non-use of Mark when excused
 Sec. 152-152.4
34. Infringement; Elements
 Prosource International Inc. vs. Horphag Research Management
SA, G.R. No. 180073, November 25, 2009
DOCTRINE: It is the element of likelihood of confusion that is the gravamen of trademark

infringement.
FACTS: Respondent Horphag Research Management SA is a corporation duly organized and

existing under the laws of Switzerland and the owner of 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. CA ruled in favour of Respondent
ISSUE: WON CA erred in ruling that the respondent’s trademark was infringed by petitioner
RULING: No, petition denied. The elements of infringement under R.A. No. 8293 are as
follows:

(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. In the
foregoing enumeration, 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.
35. Remedies for Infringement

 Sec. 155
36. Actions, Damages and Injunction for Infringement
 Sec. 156-158; 170
 Shangri-la Int’l Hotel Management vs. CA, G.R. No. 111580, June
21, 2001
DOCTRINE: A cancellation and an infringement suit may continue separately, provided that the
cancellation case was filed before the infringement case.
FACTS: On June 21, 1988, the Shangri-La International Hotel Management filed with the
Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a petition praying for the
cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to the
Developers Group of Companies, Inc., on the ground that the same was illegally and fraudulently
obtained and appropriated for the latter’s restaurant business.
Shangri-La Group moved for the suspension of the proceedings in the infringement case on
account of the pendency of the administrative proceedings before the BPTTT.
ISSUE: May an infringement suit continue despite a cancellation for an infringement case was
filed?
RULING: Earlier institution of an Inter Partes case by the Shangri-La Group for the cancellation
of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot effectively bar the
subsequent filing of an infringement case by registrant Developers Group. The certificate of
registration, upon which the infringement case is based, remains valid and subsisting for as long
as it has not been cancelled by the Bureau or by an infringement court.
Since the certificate still subsists, Developers Group may thus file a corresponding infringement
suit and recover damages from any person who infringes upon the former's rights.

 Conrad and Company Inc. vs. Ca, G.R. No. 115115, 246 SCRA
691 (1995)
DOCTRINE: An administrative cancellation of a registered trademark cannot per se have the

effect of restraining or preventing the courts from the exercise of their lawfully conferred
jurisdiction.
FACTS: The respondents Fitrite, Inc. and its sister company, Victoria Biscuit Co., Inc. are
domestic corporations engaged in the business of manufacturing, selling and distributing biscuits
and cookies. Their products bear the trademark "SUNSHINE" in the Philippines which was
awarded by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) listing Fitrite
as principal registrant. Through their counsel, Fitrite and Victoria addressed a letter to Conrad
demanding that it cease and desist from continuing its operation and use of the subject trademark,
but was ignored. This led Fitrite and Victoria to file a complaint against Conrad for infringement
and unfair competition. Conrad sought to dismiss the complaint by invoking litis pendentia, the
doctrine of primary jurisdiction, and failure to state a cause of action.
ISSUE: Whether or not Fitrite and Victoria’s civil action against Conrad which was based on
infringement and unfair competition be dismissed because of the doctrine of litis pendentia.
RULING: No. An application for administrative cancellation of a registered trademark on any of

the grounds enumerated in Section 17 of R.A. No. 166 or the Trade-Mark Law, as amended, falls
under the exclusive jurisdiction of BPTTT. But, for infringement or unfair competition, as well as
the remedy of injunction and relief for damages, it is explicitly and unquestionably within the
competence and jurisdiction of ordinary courts. The 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. Such registration can serve as the basis for an action of
infringement which entitles the registrant whose right was invaded for court protection and relief.
37. Limitations to Actions for Infringement

 Sec. 159
38. Rights of Foreign Corporation to sue in Trademark or Service Mark Enforcement
action
 Sec. 160
 Leviton Industries vs. Salvador , 114 SCRA 420 (1982)
DOCTRINE: Sec 21-A of R.A. 166, Undoubtedly, the foregoing section grants to a foreign
corporation, whether or not licensed to do business in the Philippines, the right to seek redress
for unfair competition before Philippine courts. But the said law is not without qualifications. Its
literal tenor indicates as a condition sine qua non the registration of the trade mark of the suing
foreign corporation with the Philippine Patent Office or, in the least, that it be an asignee of such
registered trademark. The said section further requires that the country, of which the plaintiff
foreign corporation or juristic person is a citizen or domiciliary, grants to Filipino corporations
or juristic entities the same reciprocal treatment, either thru treaty, convention or law.
FACTS: private respondent Leviton Manufacturing Co., Inc. filed a complaint for unfair
competition against petitioners Leviton Industries, Nena de la Cruz Lim, Domingo Go and Lim
Kiat. The complaint substantially alleges that plaintiff is a foreign corporation organized and
existing under the laws of the State of New York, United States of America, with office located at

236 Greenpoint Avenue, Brooklyn City, State of New York, U.S.A.; that defendant Leviton
Industries is a partnership organized and existing under the laws of the Philippines with principal
office at 382 10th Avenue, Grace Park, Caloocan City; while defendants Nena de la Cruz Lim,
Domingo Go and Lim Kiat are the partners, with defendant Domingo Go acting as General
Manager of defendant Leviton Industries; that plaintiff, founded in 1906 by Isidor Leviton, is the
largest manufacturer of electrical wiring devices in the United States under the trademark
Leviton, which various electrical wiring devices bearing the trademark Leviton and trade name
Leviton Manufacturing Co., Inc. had been exported to the Philippines since 1954; that due to the
superior quality and widespread use of its products by the public, the same are well known to
Filipino consumers under the trade name Leviton Manufacturing Co., Inc. and trademark Leviton;
that long subsequent to the use of plaintiff's trademark and trade name in the Philippines,
defendants began manufacturing and selling electrical ballast, fuse and oval buzzer under the
trademark Leviton and trade name Leviton Industries Co.; that Domingo Go, partner and general
manager of defendant partnership, had registered with the Philippine Patent Office the trademarks
Leviton Label and Leviton with respect to ballast and fuse under, which registration was contrary
to paragraphs (d) and (e) of Section 4 of RA 166, as amended, and violative of plaintiff's right
over the trademark Leviton; that defendants not only used the trademark Leviton but likewise
copied the design used by plaintiff in distinguishing its trademark; and that the use thereof by
defendants of its products would cause confusion in the minds of the consumers and likely to
deceive them as to the source of origin, thereby enabling defendants to pass off their products as
those of plaintiff's. Invoking the provisions of Section 21-A of Republic Act No. 166, plaintiff
prayed for damages.
Complying with the said request, plaintiff admitted: That it does not manufacture ballasts; that it
has not registered its trademark in the Philippine Patent Office, but has filed with the same office
an application of its trade mark on April 16, 1971; and that it has no license to do business in the
Philippines.
ISSUE: Whether or not a foreign corporation has a legal capacity to maintain a suit for unfair
competition under Section 21-A of Republic Act No. 166, as amended, otherwise known as the
Trademark Law.
RULING: We agree with petitioners that respondent Leviton Marketing Co., Inc. had failed to
allege the essential facts bearing upon its capacity to sue before Philippine courts. Private
respondent's action is squarely founded on Section 21-A of Republic Act No. 166, as amended,
which we quote:
Sec. 21-A. Any foreign corporation or juristic person to which a mark or tradename has been
registered or assigned under this Act may bring an action hereunder for infringement, for unfair
competition, or false designation of origin and false description, whether or not it has been
licensed to do business in the Philippines under Act numbered Fourteen Hundred and Fifty-Nine,
as amended, otherwise known as the Corporation Law, at the time it brings the complaint;
Provided, That the country of which the said foreign corporation or juristic person is a citizen, or
in which it is domiciled, by treaty, convention or law, grants a similar privilege to corporate or
juristic persons of the Philippines. (As amended by R.A. No. 638)
Undoubtedly, the foregoing section grants to a foreign corporation, whether or not licensed to do
business in the Philippines, the right to seek redress for unfair competition before Philippine
courts. But the said law is not without qualifications. Its literal tenor indicates as a condition sine
qua non the registration of the trade mark of the suing foreign corporation with the Philippine
Patent Office or, in the least, that it be an asignee of such registered trademark. The said section

further requires that the country, of which the plaintiff foreign corporation or juristic person is a
citizen or domiciliary, grants to Filipino corporations or juristic entities the same reciprocal
treatment, either thru treaty, convention or law,
All that is alleged in private respondent's complaint is that it is a foreign corporation. Such bare
averment not only fails to comply with the requirements imposed by the aforesaid Section 21-A
but violates as well the directive of Section 4, Rule 8 of the Rules of Court that "facts showing the
capacity of a party to sue or be sued or the authority of a party to sue or be sued in a
representative capacity or the legal existence of an organized association of persons that is made a
party, must be averred” In the case at bar, private respondent has chosen to anchor its action
under the Trademark Law of the Philippines, a law which, as pointed out, explicitly sets down the
conditions precedent for the successful prosecution thereof. It is therefore incumbent upon private
respondent to comply with these requirements or aver its exemption therefrom, if such be the
case. It may be that private respondent has the right to sue before Philippine courts, but our rules
on pleadings require that the necessary qualifying circumstances which clothe it with such right
be affirmatively pleaded.
 General Garments vs. Director of Patents, 41 SCRA 50 (1971)
DOCTRINE: Respondent is not suing in our courts "for the recovery of any debt, claim
or demand," for which a license to transact business in the Philippines is required by Section 69
of the Corporation Law, subject only to the exception already noted. The purpose of such a suit is
to protect its reputation, corporate name and goodwill which has been established, through the
natural development of its trade for a long period of years, in the doing of which it does not seek
to enforce any legal or contract rights arising from, or growing out of any business which it has
transacted in the Philippine Islands.
FACTS: The General Garments Corporation, organized and existing under the laws of the
Philippines, is the owner of the trademark "Puritan," under Registration No. 10059, for assorted
men's wear, such as sweaters, shirts, jackets, undershirts and briefs. The Puritan Sportswear
Corporation, organized and existing in and under the laws of the state of Pennsylvania, U.S.A.,
filed a petition with the Philippine Patent Office for the cancellation of the trademark "Puritan"
registered in the name of General Garments Corporation, alleging ownership and prior use in the
Philippines of the said trademark on the same kinds of goods, which use it had not abandoned;
and alleging further that the registration thereof by General Garments Corporation had been
obtained fraudulently and in violation of Section 17(c) of Republic Act No. 166, as amended, in
relation to Section 4(d) thereof.
ISSUE: Whether or not Puritan Sportswear Corporation, which is a foreign corporation not
licensed to do business and not doing business in the Philippines, has legal capacity to maintain a
suit in the Philippine Patent Office for cancellation of a trademark registered therein.
RULING: To recognize respondent as a juridical person, however, does not resolve the issue in
this case. It should be postulated at this point that respondent is not suing in our courts "for the
recovery of any debt, claim or demand," for which a license to transact business in the Philippines
is required by Section 69 of the Corporation Law, subject only to the exception already noted.
Respondent went to the Philippine Patent Office on a petition for cancellation of a trademark
registered by petitioner, invoking Section 17(c) in relations to Section 4(d) of the Trademark
Law. A more or less analogous question arose in Western Equipment & Supply Co. v. Reyes, 51

Phil. 115. The syllabus of the report, which is a correct statement of the doctrine laid down in the
decision, reads as follows:
A foreign corporation which has never done ... business in the Philippine Islands and which is
unlicensed and unregistered to do business here, but is widely and favorably known in the Islands
through the use therein of its products bearing its corporate and trade name has a legal right to
maintain an action in the Islands.
The purpose of such a suit is to protect its reputation, corporate name and goodwill which has
been established, through the natural development of its trade for a long period of years, in the
doing of which it does not seek to enforce any legal or contract rights arising from, or growing
out of any business which it has transacted in the Philippine Islands.
The right to the use of the corporate or trade name is a property right, a right in rem, which it may
assert and protect in any of the courts of the world — even in jurisdictions where it does not
transact business — just the same as it may protect its tangible property, real or personal against
trespass or conversion.
Petitioner argues that Section 21-A militates against respondent's capacity to maintain a suit for
cancellation, since it requires, before a foreign corporation may bring an action, that its trademark
or tradename has been registered under the Trademark Law. The argument misses the essential
point in the said provision, which is that the foreign corporation is allowed there under to sue
"whether or not it has been licensed to do business in the Philippines" pursuant to the Corporation
Law.
In any event, respondent in the present case is not suing for infringement or unfair competition
under Section 21-A, but for cancellation under Section 17, on one of the grounds enumerated in
Section 4. The first kind of action, it maybe stated, is cognizable by the Courts of First Instance
(Sec. 27); the second partakes of an administrative proceeding before the Patent Office (Sec. 18,
in relation to Sec. 8). And while a suit under Section 21-A requires that the mark or tradename
alleged to have been infringed has been "registered or assigned" to the suing foreign corporation,
a suit for cancellation of the registration of a mark or tradename under Section 17 has no such
requirement. For such mark or tradename should not have been registered in the first place (and
consequently may be cancelled if so registered) if it "consists of or comprises a mark or
tradename which so resembles a mark or tradename ... previously used in the Philippines by
another and not abandoned, as to be likely, when applied to or used in connection with goods,
business or services of the applicant, to cause confusion or mistake or to deceive purchasers;
..."(Sec. 4d).
Petitioner's last argument is that under Section 37 of the Trademark Law respondent is not
entitled to the benefits of said law because the Philippines is not a signatory to any international
treaty or convention relating to marks or tradenames or to the repression of unfair competition.
Section 37 reads in part:
SEC. 37. 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 any international convention or treaty relating to marks or tradenames, or the repression
of unfair competition to which the Philippines may be a party, shall be entitled to the benefits and
subject to the provisions of this Act to the extent and under the conditions essential to give effect
to any such convention and treaties so long as the Philippines shall continue to be a party thereto,
except as provided in the following paragraphs of this section.

As correctly pointed out by respondents, this provision was incorporated in the law in anticipation
of the eventual adherence of the Philippines to any international convention or treaty for the
protection of industrial property. It speaks of 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 any international convention or treaty relating to industrial property to which the
Philippines may be a party. In other words, the provision will be operative only when the
Philippines becomes a party to such a convention or treaty. .That this was the intention of
Congress is clear from the explanatory note to House Bill No. 1157 (now Republic Act 166), in
reference to Section 37, which is the only provision in Chapter XI of the Trademark Law on
Foreign Industrial Property: "The necessary provisions to qualify the Philippines under the
international convention for the protection of industrial property have been specifically
incorporated in the Act." In the meantime, regardless of Section 37, aliens or foreign corporations
are accorded benefits under the law. Thus, under Section 2, for instance, the trademarks,
tradenames and service-marks owned by persons, corporations, partnerships or associations
domiciled in any foreign country may be registered in the Philippines, provided that the country
of which the applicant for registration is a citizen grants bylaw substantially similar privileges to
citizens of the Philippines.
 La Chemise Lacoste vs. Fernandez, supra
DOCTRINE: 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.
FACTS: The petitioner La Chemiste Lacoste is a foreign corporation, organized and existing
under the laws of France and not doing business in the Philippines, It is undeniable from the
records that it is the actual owner of the abovementioned trademarks used on clothings and other
goods specifically sporting apparels sold in many parts of the world and which have been
marketed in the Philippines since 1964, The main basis of the private respondent's case is its
claim of alleged prior registration. In 1975, Hemandas & Co., a duly licensed domestic firm
applied for and was issued Reg. No. SR-2225 (SR stands for Supplemental Register) for the
trademark "CHEMISE LACOSTE & CROCODILE DEVICE" by the Philippine Patent Office for
use on T-shirts, sportswear and other garment products of the company. Two years later, it
applied for the registration of the same trademark under the Principal Register. The Patent Office
eventually issued an order dated March 3, 1977 Thereafter, Hemandas & Co. assigned to
respondent Gobindram Hemandas all rights, title, and interest in the trademark "CHEMISE
LACOSTE & DEVICE".
On November 21, 1980, the petitioner filed its application for registration of the trademark
"Crocodile Device" (Application Serial No. 43242) and "Lacoste" (Application Serial No.
43241).The former was approved for publication while the latter was opposed by Games and
Garments in Inter Partes Case No. 1658. In 1982, the petitioner filed a Petition for the
Cancellation of Reg. No. SR-2225 docketed as Inter Partes Case No. 1689. Both cases have now
been considered by this Court in Hemandas v. Hon. Roberto Ongpin (G.R. No. 65659).
On March 21, 1983, the petitioner filed with the National Bureau of Investigation (NBI) a letter-
complaint alleging therein the acts of unfair competition being committed by Hemandas and
requesting their assistance in his apprehension and prosecution. The NBI conducted an
investigation and subsequently filed with the respondent court two applications for the issuance
of search warrants which would authorize the search of the premises used and occupied by the
Lacoste Sports Center and Games and Garments both owned and operated by Hemandas. The
respondent court issued Search Warrant Nos. 83-128 and 83-129 for violation of Article 189 of

the Revised Penal Code, "it appearing to the satisfaction of the judge after examining under oath
applicant and his witnesses that there are good and sufficient reasons to believe that Gobindram
Hemandas ... has in his control and possession in his premises the ... properties subject of the
offense," (Rollo, pp. 67 and 69) The NBI agents executed the two search warrants and as a result
of the search found and seized various goods and articles described in the warrants. The
respondent court was, however, convinced that there was no probable cause to justify the issuance
of the search warrants. Thus, in its order dated March 22, 1983, the search warrants were recalled
and set aside and the NBI agents or officers in custody of the seized items were ordered to return
the same to Hemandas. (Rollo, p. 25)
ISSUE: Whether or not the Petitioner has the capacity to sue before the Philippine Courts?
RULING: In the present case, however, the petitioner is a foreign corporation not doing
business in the Philippines. The marketing of its products in the Philippines is done through an
exclusive distributor, Rustan Commercial Corporation the latter is an independent entity which
buys and then markets not only products of the petitioner but also many other products bearing
equally well-known and established trademarks and tradenames. In other words, Rustan is not a
mere agent or conduit of the petitioner. But even assuming the truth of the private respondent's
allegation that the petitioner failed to allege material facts in its petition relative to capacity to
sue, the petitioner may still maintain the present suit against respondent Hemandas. 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. Thus, in Western Equipment and Supply Co. v. Reyes (51 Phil. 115), 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.
Our recognizing the capacity of the petitioner to sue is not by any means novel or precedent
setting. Our jurisprudence is replete with cases illustrating instances when foreign corporations
not doing business in the Philippines may nonetheless sue in our courts. In East Board
Navigation Ltd, v. Ysmael and Co., Inc. (102 Phil. 1), we recognized a right of foreign
corporation to sue on isolated transactions. In General Garments Corp. v. Director of Patents (41
SCRA 50), we sustained the right of Puritan Sportswear Corp., a foreign corporation not licensed
to do and not doing business in the Philippines, to file a petition for cancellation of a trademark
before the Patent Office.
In upholding the right of the petitioner to maintain the present suit before our courts for unfair
competition or infringement of trademarks of a foreign corporation, we are moreover recognizing
our duties and the rights of foreign states under the Paris Convention for the Protection of
Industrial Property to which the Philippines and France are parties. We are simply interpreting
and enforcing a solemn international commitment of the Philippines embodied in a multilateral
treaty to which we are a party and which we entered into because it is in our national interest to
do so. The records show that the goodwill and reputation of the petitioner's products bearing the
trademark LACOSTE date back even before 1964 when LACOSTE clothing apparels were first
marketed in the Philippines. To allow Hemandas to continue using the trademark Lacoste for the
simple reason that he was the first registrant in the Supplemental Register of a trademark used in
international commerce and not belonging to him is to render nugatory the very essence of the
law on trademarks and tradenames.

DOCTRINE: 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.
FACTS: Respondent Universal Rubber Products, Inc. filed an application with the Philippine
Patent office for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used
on rubber shoes and rubber slippers. Petitioner Converse Rubber Corporation filed its opposition
to the application for registration on grounds that:
a] The trademark sought to be registered is confusingly similar to the word "CONVERSE" which
is part of petitioner's corporate name "CONVERSE RUBBER CORPORATION" 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 the petitioner; and,
b] The registration of respondent's trademark will cause great and irreparable injury to the
business reputation and goodwill of petitioner in the Philippines and would cause damage to said
petitioner within the, meaning of Section 8, R.A. No. 166, as amended.
Thereafter, respondent filed its answer and at the pre-trial, the parties submitted the following
partial stipulation of facts:
1] The petitioner's corporate name is "CONVERSE RUBBER CORPORATION" and has been in
existence since July 31, 1946; it is duly organized under the laws of Massachusetts, USA and
doing business at 392 Pearl St., Malden, County of Middle sex, Massachusetts;
2] Petitioner is not licensed to do business in the Philippines and it is not doing business on its
own in the Philippines; and,
3] Petitioner manufacturers rubber shoes and uses thereon the trademarks "CHUCK TAYLOR
"and "ALL STAR AND DEVICE".
ISSUE: Whether or not Converse a Foreign Corporation has the capacity to sue before Philippine
Courts?
RULING: 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.
We further held:
xxx xxx xxx
That company is not here seeking to enforce any legal or control rights arising from or growing
out of, any business which it has transacted in the Philippine Islands. The sole purpose of the
action:
Is to protect its reputation, its corporate name, its goodwill whenever that reputation, corporate
name or goodwill have, through the natural development of its trade, established themselves.'
And it contends that its rights to the use of its corporate and trade name:
Is a property right, a right in recess which it may assert and protect against all the world, in any of
the courts of the world even in jurisdictions where it does not transact business-just the same as it
may protect its tangible property, real or personal against trespass, or conversion. Citing sec. 10,
Nims on Unfair Competition and Trademarks and cases cited; secs. 21-22, Hopkins on
Trademarks, Trade Names and Unfair Competition and cases cited That point is sustained by the
authorities, and is well stated in Hanover Star Milling Co. vs. Allen and Wheeler Co. [208 Fed.,
5131, in which the syllabus says:
Since it is the trade and not the mark that is to be protected, a trademark acknowledges no
territorial boundaries of municipalities or states or nations, but extends to every market where the
trader's goods have become known and Identified by the use of the mark. The ruling in the
aforecited case is in consonance with the Convention of 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 [corporate 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.”
39. Trade names or business names

 Sec. 165-165.4
DOCTRINE: A corporation is entitled to the cancellation of a mark that is confusingly similar

to its corporate name. Appropriation by another of the dominant part of a corporate name is an
infringement.
FACTS: Converse Rubber Corporation is an American corporation while Universal Rubber

Product is a corporation licensed to do business in the country. Converse has been operating since
1946. Universal Rubber has been operating since 1963. Later, Universal Rubber filed an
application for the trademark “Universal Converse and Device” before the Philippine Patent

Office. Converse Rubber opposed as it averred that the word “Converse” which is part of its
corporate name cannot be granted as part of Universal Rubber’s trademark or trade name because
it will likely deceive purchasers of Universal Rubber’s products as it may be mistaken by unwary
customers to be manufactured by Converse Rubber. The Director of Patents did not grant the
opposition by Converse Rubber.
ISSUE: Whether or not the respondent’s partial appropriation of petitioner’s corporate name is
of such character that it is calculated to deceive or confuse the public to the injury of the
petitioner to which the name belongs.
RULING: Yes. From a cursory appreciation of the petitioner's corporate name "CONVERSE
RUBBER CORPORATION,' it is evident that the word "CONVERSE" is the dominant word
which Identifies petitioner from other corporations engaged in similar business. Respondent, in
the stipulation of facts, admitted petitioner's existence since 1946 as a duly organized foreign
corporation engaged in the manufacture of rubber shoes. This admission necessarily betrays its
knowledge of the reputation and business of petitioner even before it applied for registration of
the trademark in question. Knowing, therefore, that the word "CONVERSE" belongs to and is
being used by petitioner, and is in fact the dominant word in petitioner's corporate name,
respondent has no right to appropriate the same for use on its products which are similar to those
being produced by petitioner. A corporation is entitled to the cancellation of a mark that is
confusingly similar to its corporate name. Appropriation by another of the dominant part
of a corporate name is an infringement.
 Philips Export vs. CA, 206 SCRA 457 (1992)
DOCTRINE: A corporation’s right to use its corporate and trade name is a property right, a
right in rem, which it may assert and protect against the whole world.
FACTS: Philips Export B.V. (PEBV) filed with the SEC for the cancellation of the word
“Philips” the corporate name of Standard Philips Corporation in view of its prior registration with
the Bureau of Patents and the SEC. However, Standard Philips refused to amend its Articles of
Incorporation so PEBV filed with the SEC a petition for the issuance of a Writ of Preliminary
Injunction, however this was denied ruling that it can only be done when the corporate names are
identical and they have at least 2 words different. This was affirmed by the SEC en banc and the
Court of Appeals thus the case at bar.
ISSUE: Whether or not Standard Philips can be enjoined from using Philips in its corporate
name.
RULING: Yes, a corporation’s right to use its corporate and trade name is a property right, a
right in rem, which it may assert and protect against the whole world. According to Sec. 18 of the
Corporation Code, no corporate name may be allowed if the proposed name is identical or
deceptively confusingly similar to that of any existing corporation or to any other name already
protected by law or is patently deceptive, confusing or contrary to existing law.
For the prohibition to apply, 2 requisites must be present:
(1) The complainant corporation must have acquired a prior right over the use of such corporate
name and
(2) The proposed name is either identical or deceptively or confusingly similar to that of any
existing corporation or to any other name already protected by law or patently deceptive,
confusing or contrary to existing law.

With regard to the 1st requisite, PEBV adopted the name “Philips” part of its name 26 years
before Standard Philips. As regards the 2nd, the test for the existence of confusing similarity is
whether the similarity is such as to mislead a person using ordinary care and discrimination.
Standard Philips only contains one word, “Standard”, different from that of PEBV. The 2
companies’ products are also the same, or cover the same line of products. Although PEBV
primarily deals with electrical products, it has also shipped to its subsidiaries machines and parts
which fall under the classification of “chains, rollers, belts, bearings and cutting saw”, the goods
which Standard Philips also produce. Also, among Standard Philips’ primary purposes are to buy,
sell trade x x x electrical wiring devices, electrical component, electrical supplies. Given these,
there is nothing to prevent Standard Philips from dealing in the same line of business of electrical
devices. The use of “Philips” by Standard Philips tends to show its intention to ride on the
popularity and established goodwill of PEBV.
 Coffee Partners, Inc. Vs. San Francisco Coffee and Roastery, Inc.,
G.R. No. 169504, March 3, 2010
DOCTRINE: 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 commerce in the Philippines.
FACTS: Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of
establishing and maintaining coffee shops in the country. It has a franchise agreement with
Coffee Partners Ltd. (CPL), a business entity organized and existing under the laws of British
Virgin Islands, for a non-exclusive right to operate coffee shops in the Philippines using
trademarks “SAN FRANCISCO COFFEE.” Respondent is registered under the business name
“SAN FRANCISCO COFFEE & ROASTERY, INC.” with the Department of Trade and Industry
(DTI) in June 1995. In June 2001, respondent discovered that petitioner was about to open a
coffee shop under the name “SAN FRANCISCO COFFEE” in Libis, Quezon City. Respondent
sent a letter to petitioner demanding that the latter stop using the name “SAN FRANCISCO
COFFEE.” Respondent filed an infringement and/or unfair competition complaint against
petitioner alleging that the latter was about to open a coffee shop under the name ‘San Francisco
Coffee’ causing confusion in the minds of the public as it bore a similar name and is engaged also
in selling of coffee. Petitioner contended no infringement would arise because respondent’s
tradename was not registered.
ISSUE: Whether petitioner’s use of the trademark “SAN FRANCISCO COFFEE” constitutes
infringement of respondent’s trade name “SAN FRANCISCO COFFEE & ROASTERY, INC.,”
even if the trade name is not registered with the Intellectual Property Office (IPO).
RULING: In Prosource International, Inc. v. Horphag Research Management SA, this Court laid
down what constitutes infringement of an unregistered trade name, thus:
 The trademark being infringed is registered in the Intellectual Property Office;

however, in infringement of trade name, the same need not be registered;
 The trademark or trade name is reproduced, counterfeited, copied, or colorably
imitated by the infringer;
 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;
 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
 It is without the consent of the trademark or trade name owner or the assignee
thereof.
Clearly, 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 commerce in the Philippines.
40. Goods bearing infringing marks of Trade Names

 Sec. 166
41. Unfair Competition, rights, regulations and remedies
 Sec. 168
 Proline Sports Center vs. CA, 281 SCRA 162
DOCTRINE: Proline as the authorized agent of Questor, exercised sound judgment in

taking the necessary legal steps to safeguard the interest of its principal with respect to the
trademark in question.
FACTS: Proline is the exclusive distributor of Spalding sports products in the Philippines, while
Questor, a US-based corporation became the owner of the trademark “Spalding”. They
filed a petition against respondent Universal, a domestic corporation which
manufactures and sell sports goods including fake “spalding balls”. By virtue of valid
search warrant, Universal’s factory was searched resulting to the seizure of fake “spalding balls”
and the instruments used in the manufacture thereof. Civil and criminal cases were filed
against Universal. The civil case was dropped for it was doubtful whether Questor had
indeed acquired the registration rights over the mark “spalding”. The criminal case was
also dismissed due to insufficiency of evidence through ademurrer. The CA affirmed the
lower court’s decision. Universal thereafter, filed for damages against Proline and Questor
which was granted by the lower court and affirmed by the CA.
ISSUE: Are Proline and Questor liable for damages to Universal for the wrongful recourse to
court proceedings?
RULING: Proline and Questor cannot be adjudged liable for damages for the alleged
unfounded suit. Universal failed to show that the filing of criminal charges of
petitioner herein was bereft of probable cause. Petitioners could not have been moved by
legal malice in instituting the criminal complaint for unfair competition. We are disposed,
under circumstances, to hold that Proline as the authorized agent of Questor,
exercised sound judgment in taking the necessary legal steps to safeguard the interest of
its principal with respect to the trademark in question.
 American Wire Cable Co. vs. Director of Patents, 31 SCRA 544
DOCTRINE: "xxx the similarity between the two competing trademarks, DURAFLEX and
DYNAFLEX is apparent. Not only are the initial letters and the last half of the appellations
identical but the difference exists in only two out of the eight literal elements of the designations.
Coupled with the fact that both marks cover insulated flexible wires under Class 20; xxx no
difficulty is experienced in reaching the conclusion that there is a deceptive similarity that would
lead the purchaser to confuse one product with the other ."

FACTS: Petitioner American Wire and Cable Company (American) is the owner of the
registered trademark DURAFLEX and Device for electric wires. On June 1962, private
respondent/applicant Central Banahaw (Central) sought to register the label DYNAFLEX for
electric wires. Petitioner opposed on the ground that Central’s use of the trademark DYNAFLEX
would confuse purchasers looking for DURAFLEX. The mark sought to beregistered allegedly
having practically the same spelling, pronunciation and sound, and covering the same good, but
had not been in use continuously, unlike DURAFLEX which was in use since 1958. Director of
Patents held that DYNAFLEX was not similar to DURAFLEX, since the logo design was
dissimilar, the DURAFLEX logo being in all caps while DYNAFLEX was in miniscule, and thus
gave Central’s application to trademark DYNAFLEX due course.
ISSUE: Whether or not the mark DYNAFLEX and Device is registrable as label for electric
wires, class 20, considering that the trademark DURAFLEX and Globe representation also for
electric wires, machines and supplies under class 20, has been registered more than 4 years
earlier.
RULING: NO, the mark sought to be registered failed to “dominancy test”
The pertinent law, Republic Act 166, as amended, on registrability of trademarks, prescribes:
SEC. 4. — The owner of a trademark, trade name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others shall have the right to register
the same, unless it:
xxx xxx xxx
(d) Consists of or comprises a mark or trade name which so resembles a mark or trade-name
registered in the Philippines by another and not abandoned, as to be likely, when applied to or
used in connection with the goods, business or services of the applicant, to cause confusion or
mistake or to deceive purchasers. (Emphasis supplied)
It is clear from the above-quoted provision that the determinative factor in a contest involving the
registration of trademark is whether the use of such mark would likely cause confusion or mistake
on the part of the buying public. The test of “likelihood” is the “dominancy test” or the
assessment of the essential ordominant features in the competing labels to determine whether they
are confusingly similar. In fact, even their similarity in sound is taken into consideration, where
the marks refer to merchandise of the same descriptive properties, for the reason that trade idem
sonans constitutes a violation of trade mark patents.
The court found: The similarity between the competing trademarks, DURAFLEX and
DYNAFLEX, is apparent. Not only are the initial letters and the last half of the appellations
identical, but the difference exists only in two out of the eight literal elements of the designations.
Coupled with the fact that both marks cover insulated flexible wires under class 20; that both
products are contained in boxes of the same material, color, shape and size; that the dominant
elements of the front designs are a red circle and a diagonal zigzag commonly related to a spark
or flash of electricity; that the back of both boxes show similar circles of broken lines with arrows
at the center pointing outward, with the identical legend "Cut Out Ring" "Draw From Inside
Circle", no difficulty is experienced in reaching the conclusion that there is a deceptive similarity
that would lead the purchaser to confuse one product with the other.

The Director of Patents has predicated his decision mostly on the semantic difference and
connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately
forgetting that the buyers are less concerned with the etymology of the words as with their sound
and the dominant features of the design.
The court further explained that "unlike the pharmacists or druggists, the dispensers of hardware
or electrical supplies are not generally known to pay as much concern to the brand of articles
asked for by the customer and of a person who knows the name of the brand but is not acquainted
with it is appearance, the likelihood of the DYNAFLEX product being mistaken for DURAFLEX
is not remote." Thus the request to register this trademark must be denied.
 In-N-Out Burger, Inc., vs. Sehwani, Incorporated and/or Benita’s

Frites, Inc., G.R. No. 179127, December 24, 2008
DOCTRINE: 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.
FACTS: Petitioner IN-N-OUT BURGER, INC., is a business entity incorporated under the laws
of California. It is a signatory to the Convention of Paris on Protection of Industrial Property and
the TRIPS Agreement. It is engaged mainly in the restaurant business, but it has never engaged in
business in the Philippines. Respondents Sehwani, Incorporated and Benita Frites, Inc. are
corporations organized in the Philippines. Sometime in 1991, Sehwani filed with the BPTTT an
application for the registration of the mark “IN N OUT (the inside of the letter “O” formed like a
star). Its application was approved and a certificate of registration was issued in its name on 1993.
In 2000, Sehwani, Incorporated and Benita Frites, Inc. entered into a Licensing Agreement,
wherein the former entitled the latter to use its registered mark, “IN N OUT.” Sometime in 1997,
In-N-Out Burger filed trademark and service mark applications with the Bureau of Trademarks
for the “IN-N-OUT” and “IN-N-OUT Burger & Arrow Design. In 2000, In-N-Out Burger found
out that Sehwani, Incorporated had already obtained Trademark Registration for the mark “IN N
OUT (the inside of the letter “O” formed like a star).” Also in 2000, In-N-Out Burger sent a
demand letter directing Sehwani, Inc. to cease and desist from claiming ownership of the mark
“IN-N-OUT” and to voluntarily cancel its trademark registration. Sehwani Inc. did not accede to
In-N-Out Burger’s demand but it expressed its willingness to surrender its registration for a
consideration.
In 2001 In-N-Out Burger filed before the Bureau of Legal Affairs an administrative complaint
against the Sehwani, Inc. and Benita Frites, Inc. for unfair competition and cancellation of
trademark registration.
ISSUE:
1. Whether or not the Intellectual Property Office (an administrative body) have jurisdiction
of cases involving provisions of the IPC (e.g. unfair competition).
2. Whether or not there was unfair competition.
RULING:
First Issue:
Yes, the IPO (an administrative body) has jurisdiction in cases involving provisions of the IPC
(e.g. unfair competition) due to the following reasons:
 Section 10 of the Intellectual Property Code specifically identifies the functions of the
Bureau of Legal Affairs, thus:

Section 10. The Bureau of Legal Affairs.“The Bureau of Legal Affairs shall have the following
functions:
10.1 Hear and decide opposition to the application for registration of marks; cancellation of
trademarks; subject to the provisions of Section 64, cancellation of patents and utility models, and
industrial designs; and petitions for compulsory licensing of patents;
10.2 (a) Exercise original jurisdiction in administrative complaints for violations of laws
involving intellectual property rights; Provided, That its jurisdiction is limited to complaints
where the total damages claimed are not less than Two hundred thousand pesos
(P200,000): Provided, futher, That availment of the provisional remedies may be granted in
accordance with the Rules of Court. Xxx
xxx
(vi) The cancellation of any permit, license, authority, or registration which may have been
granted by the Office, or the suspension of the validity thereof for such period of time as the
Director of Legal Affairs may deem reasonable which shall not exceed one (1) year;
xxx
(viii) The assessment of damages;
Unquestionably, petitioner’s complaint, which seeks the cancellation of the disputed mark in the
name of respondent Sehwani, Incorporated, and damages for violation of petitioner’s intellectual
property rights, falls within the jurisdiction of the IPO Director of Legal Affairs.
 While Section 163 thereof vests in civil courts jurisdiction over cases of unfair
competition, nothing in the said section states that the regular courts have sole
jurisdiction over unfair competition cases, to the exclusion of administrative bodies.
 Sections 160 and 170, which are also found under Part III of the Intellectual Property
Code, recognize the concurrent jurisdiction of civil courts and the IPO over unfair
competition cases.
These two provisions read:
Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement
Action. Any foreign national or juridical person who meets the requirements of Section 3 of this
Act and does not engage in business in the Philippines may bring a civil or administrative
action hereunder for opposition, cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or not it is licensed to do business in the
Philippines under existing laws.
Section 170. Penalties. Independent of the civil and administrative sanctions imposed by law, a
criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from
Fifty thousand pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be imposed on
any person who is found guilty of committing any of the acts mentioned in Section 155,
Section168, and Subsection169.1.
Based on the foregoing discussion, the IPO Director of Legal Affairs had jurisdiction to decide
the petitioner’s administrative case against respondents and the IPO Director General had
exclusive jurisdiction over the appeal of the judgment of the IPO Director of Legal Affairs.
Second Issue:
Yes. The evidence on record shows that Sehwani Inc. and Benita Frites were not using their
registered trademark but that of In-n-Out Burger. Sehwani and Benita Frites are also giving their
products the general appearance that would likely influence the purchasers to believe that their
products are that of In-N-Out Burger. The intention to deceive may be inferred from the similarity
of the goods as packed and offered for sale, and, thus, an action will lie to restrain unfair

competition. The respondents’ fraudulent intention to deceive purchasers is also apparent in their
use of the In-N-Out Burger in business signages. 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. The confusing similarity may or may not result from
similarity in the marks, but may result from other external factors in the packaging or presentation
of the goods. The intent to deceive and defraud may be inferred from the similarity of the
appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be
shown.
42. False Designations of Origin, False Description or Representation

 Sec. 169

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INTELLECTUAL PROPERTY LAW | TRADEMARK | Case Digest

THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES

1. Purpose of the Trademark Law

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DOCTRINE: "The ownership or possession of a trade-mark, . . . shall be recognized and

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 Converse Rubber vs. Universal Rubber, G.R. no. L-27906, Jan. 8,

ISSUE: WON there is confusing similarity between the two trademarks.

RULING: YES. The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is

UNIVERSITY OF SAN JOSE RECOLETOS – SCHOOL OF LAW P a g e 6 | 90

6. Trademark vs. Trade name

ISSUE: WON petitioner may be afforded protection of its trade name.

7. Basis of the Right to a Mark

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ISSUE: WON Puma has capacity to sue.

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(1) Is the applicant the owner of the trademark "LIONPAS"?;

(2) Is the trademark "LIONPAS" confusingly similar to the trademark "SALONPAS"?

RULING: On the 1st issue:

On the 2nd issue:

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 Operators Inc. vs. Director of Patents, L-17901, Oct. 29, 1965

DOCTRINE: The question of infringement is to be determined by the test of dominancy. The

 Gabriel vs. Perez, G.R. L-24075, jan. 31, 1974

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 Emerald Garments Mfg. Corp. vs. Court of Appeals, G.R. 100098,

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WON the decision of the Court of Appeals is correct.

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 Converse Rubber vs. Universal Rubber, G.R. No. L-27906, Jan. 8,

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 Sterling Products International, Inc. vs. Farbenfabriken Bayer

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 Berris Agricultural Co., Inc. vs. Norby Abyadang, G.R. No.

FACTS: On January 16, 2004, respondent Norvy A. Abyadang (Abyadang), proprietor of NS

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In determining similarity and likelihood of confusion, jurisprudence has developed tests—the

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8. Prior Use of a Mark

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 Ang vs. Wellington, 92 Phil 448 (1953)

DOCTRINE: It cannot be used because it is a geographical name. Wellington is the capital of

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11. Identical with Prior Marks

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12. Confusingly Similar Marks

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13. Ordinary Purchaser

 Converse Rubber vs. Universal Rubber, supra

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 Etepha vs. Director of Patents, L-20635, March 31, 1966

DOCTRINE: “Colorable Imitation” denotes such a “close or ingenious imitation as to be

UNIVERSITY OF SAN JOSE RECOLETOS – SCHOOL OF LAW P a g e 27 | 90

ISSUE: Is there an infringement of trademark?