Trademark Cases

1. ABS-CBN PUBLISHING, INC., PETITIONER, VS.
DIRECTOR OF THE
BUREAU OF TRADEMARKS, RESPONDENT.
SECOND DIVISION
[ G.R. No. 217916, June 20, 2018 ]
DECISION
REYES, JR., J:
The Case
Challenged before the Court via this Petition for Review on Certiorari under Rule 45 of the
Rules of Court is the Resolution[1] of the Court of Appeals promulgated on May 20, 2014, which
denied ABS-CBN Publishing, Inc.'s (petitioner) "Motion for Extension of Time [To File Petition
for Review]." Likewise challenged is the subsequent Resolution [2] of the Court of Appeals
promulgated on April 15, 2015, which upheld the earlier Resolution.
The Antecedent Facts
In 2004,[3] the petitioner filed with the Intellectual Property Office of the Philippines (IPO) its
application for the registration of its trademark "METRO" (applicant mark) under class 16 of
the Nice classification, with specific reference to "magazines."[4] The case was assigned to
Examiner Arlene M. Icban (Examiner Icban), who, after a judicious examination of the
application, refused the applicant mark's registration.
According to Examiner Icban, the applicant mark is identical with three other cited marks, and
is therefore unregistrable according to Section 123.1(d) of the Intellectual Property Code of
the Philippines (IPC).[5] The cited marks were identified as (1) "Metro" (word) by applicant
Metro International S.A. with Application No. 42000002584,[6] (2) "Metro" (logo) also by
applicant Metro International S.A. with Application No. 42000002585, [7] and (3) "Inquirer
Metro" by applicant Philippine Daily Inquirer, Inc. with Application No. 42000003811.[8]
On August 16, 2005, the petitioner wrote a letter[9] in response to Examiner Icban's
assessment, and the latter, through Official Action Paper No. 04, subsequently reiterated her
earlier finding which denied the registration of the applicant mark. Eventually, in the "Final
Rejection"[10] of the petitioner's application, Examiner Icban "determined that the mark
subject of the application cannot be registered because it is identical with the cited marks
METRO with Regn. No. 42000002584 ['Metro' (word)] and Regn. No. 42000003811 ['Inquirer
Metro']."[11]
The petitioner appealed the assessment of Examiner Icban before the Director of the Bureau
of Trademarks of the IPO, who eventually affirmed Examiner Icban's findings. The decision
averred that the applicant and cited marks were indeed confusingly similar, so much so that
there may not only be a confusion as to the goods but also a confusion as to the source or
origin of the goods. The fallo of the Bureau Director's decision reads:
WHEREFORE, premises considered, the instant appeal is hereby DENIED and the Final
Rejection contained in Official Action Paper No. 04, SUSTAINED. Serve copies of this Decision
to [petitioner] and herein Examiner Arlene M. Icban.
SO ORDERED.[12]
Upon the denial of the petitioner's motion for reconsideration, the petitioner appealed to the
Office of the Director General (ODG) of the IPO. After the submission of the memoranda from
the parties, the ODG, on September 19, 2013, rendered a Decision which upheld Examiner
Icban's assessment and the Bureau Director's decision.
According to the ODG; there is no merit in the petitioner's appeal because (1) the applicant
and cited marks are identical and confusingly similar,[13] (2) the petitioner's mark was deemed
abandoned under the old Trademark Law, and thus, petitioner's prior use of the same did not
create a vested right[14] under the IPC,[15] and (3) the applicant mark has not acquired
secondary meaning.[16] The fallo of the ODG decision reads:
Wherefore, premises considered, the appeal is hereby DENIED and the Decision dated 29
March 2010 and the Order denying the Appellant's Motion for Reconsideration, of the Director
of the Bureau of Trademarks, are hereby SUSTAINED. The Appellant's Trademark Application
No. 4-2004-004507 for METRO is likewise DENIED.
Let a copy of this Decision as well as the trademark application and records be furnished and
returned to the Director of the Bureau of Trademarks. Let a copy of this Decision be furnished
also the library of the Documentation, Information and Technology Transfer Bureau for its
information and records purposes.
SO ORDERED.[17]
The petitioner received a copy of the ODG decision only on October 9, 2013. On the same day,
the petitioner filed before the Court of Appeals its "Motion for Extension of Time (To File
Petition for Review)" which requested for an extension of fifteen (15) days from October 24,
2013, or until November 8, 2013, to file its petition for review. [18] On October 25, 2013, the
petitioner once more filed a motion for extension of time. In the second motion, the petitioner
asked the appellate court for another extension of the deadline from November 8, 2013 to
November 23, 2013.[19]
Meanwhile, on October 25, 2013, the Court of Appeals issued a Resolution which granted the
petitioner's first motion praying for an extension of time to file its petition for review, subject
to the "warning against further extension." Thus, the Court of Appeals extended the deadline
only until November 8, 2013.[20]
Relying on the appellate court's favorable response to its second motion for extension (which
was not acted upon by the Court of Appeals), the petitioner failed to file its petition for review
on the deadline set in the Resolution dated October 25, 2013. Instead, the petitioner filed its
petition for review only on November 11, 2013-three (3) days after the deadline. [21]
To justify this delay in filing, the petitioner stated that: (1) it received a copy of the October
25, 2013 Resolution only on November 8, 2013 at 11:30 in the morning; (2) on that same day,
this Court, through its Public Information Office, suspended offices in the National Capital
Judicial Region in view of Typhoon Yolanda; and (3) November 9 and 10, 2013 fell on a
Saturday and Sunday, respectively.[22]
On May 20, 2014, the Court of Appeals rendered the assailed Resolution. It ruled that the
petitioner violated its October 25, 2013 Resolution, as well as Section 4, Rule 43 of the Rules
of Court, which provides for the period of appeal.[23]
On the basis of the foregoing, and the prevailing jurisprudence, the Court of Appeals
consequently denied the petitioner's second motion for extension of time, and dismissed the
petition for the petitioner's failure to file its petition for review within the deadline. [24]
On April 15, 2015, the appellate court denied the petitioner's motion for reconsideration. [25]
Hence, this petition.
The Issues
The ground upon which the petitioner prays for the reversal of the ruling of the Court of
Appeals is two-fold: first is on procedural law-whether or not the Court of Appeals erred in
dismissing the petition outright for the petitioner's failure to file its petition for review within
the time prescribed by the Court of Appeals; and second is on substantive law-whether or not
the ODG was correct in refusing to register the applicant mark for being identical and
confusingly similar with the cited marks already registered with the IPO .
The Court's Ruling
After a careful perusal of the arguments presented and the evidence submitted, the Court
finds no merit in the petition.
First, on the procedural issue:
In Bañez vs. Social Security System,[26] the Court had occasion to reiterate that appeal is not
a constitutional right, but a mere statutory privilege. Hence, parties who seek to avail
themselves of it must comply with the statutes or rules allowing it.[27] The rule is that failure
to file or perfect an appeal within the reglementary period will make the judgment final and
executory by operation of law. Perfection of an appeal within the statutory or reglementary
period is not only mandatory but also jurisdictional; failure to do so renders the questioned
decision/resolution final and executory, and deprives the appellate court of jurisdiction to alter
the decision/resolution, much less to entertain the appeal.[28]
In connection herewith, Section 4, Rule 43 of the Rules of Court is clear. The appeal shall be
taken within fifteen (15) days from the notice of the award, judgment, final order or resolution,
or from the date of its last publication, if publication is required by law for its effectivity, or of
the denial of petitioner's motion for new trial or reconsideration duly filed in accordance with
the governing law of the court or agency a quo.[29]
More, a litigant is allowed to file only one (1) motion for reconsideration, subject to the
payment of the full amount of the docket fee prior to the expiration of the reglementary period.
Beyond this, another motion for extension of time may be granted but only for the most
compelling reasons.[30]
Again, in Bañez, the Court ruled that filing of an appeal beyond the reglementary period may,
under meritorious cases, be excused if the barring of the appeal would be inequitable and
unjust in light of certain circumstances therein.[31] While there are instances when the Court
has relaxed the governing periods of appeal in order to serve substantial justice, this was
done only in exceptional cases.[32]
In this case, no exceptional circumstance exists.
In asking the Court of Appeals for a second extension to file its petition for review, the
petitioner merely cited as its excuse the following: (1) heavy pressure of other professional
work; and (2) attendance of the lawyers in charge in an international lawyers' conference. It
said:
However, due to the heavy pressure of other equally important professional work coupled with
intervening delays and the fact of the necessary attendance of the lawyers in charge of the
case in an international lawyer's (sic) conference, the undersigned counsel will need more
time to review and finalize petitioner ABS-CBN Publishing, Inc.'s Petition for Review.[33]
As the Court has ruled upon in a number of cases, a lawyer has the responsibility of monitoring
and keeping track of the period of time left to file pleadings, and to see to it that said
pleadings are filed before the lapse of the period.[34] Personal obligations and heavy workload
do not excuse a lawyer from complying with his obligations particularly in timely filing the
pleadings required by the Court.[35] Indeed, if the failure of the petitioner's counsel to cope
with his heavy workload should be considered a valid justification to sidestep the
reglementary period, there would be no end to litigations so long as counsel had not been
sufficiently diligent or experienced.[36]
Further, the petitioner should not assume that its motion for extension of time would be
granted by the appellate court. Otherwise, the Court will be setting a dangerous precedent
where all litigants will assume a favorable outcome of a motion which is addressed to the
discretion of the courts based on the prevailing circumstances of the case.
To be sure, there is a dearth of jurisprudence that upholds the Court of Appeals' power of
discretion in disallowing a second extension of fifteen (15) days. As correctly cited by the
appellate court, Spouses Dycoco vs. Court of Appeals[37] explains that the Court of Appeals
could not be faulted for merely applying the rules, and that a dismissal of a petition in
accordance therewith is discretion duly exercised, and not misused or abused. [38]
Based on the foregoing, and for the guidance of both the bench and the bar, the rule as it
currently stands is that, in the absence of, or in the event of a party's failure to receive, any
resolution from the courts which specifically grants a motion for extension of time to file the
necessary pleading, the parties are required to abide by the reglementary period provided for
in the Rules of Court. Failure to comply thereto would result to a dismissal or denial of the
pleadings for being filed beyond the reglementary period.
In the case at hand, the Court of Appeals was correct in dismissing the petition. The petitioner
could not assume that its motion would be granted, especially in light of its flimsy excuse for
asking the second extension of time to file its petition for review.
On this ground alone, the dismissal of the current petition for review is justifiable. The Court
reiterates its warning in the case of Hernandez vs. Agoncillo:[39]
Time and again, this Court has cautioned lawyers to handle only as many cases as they can
efficiently handle. The zeal and fidelity demanded of a lawyer to his client's cause require that
not only should he be qualified to handle a legal matter, he must also prepare adequately and
give appropriate attention to his legal work. Since a client is, as a rule, bound by the acts of
his counsel, a lawyer, once he agrees to take a case, should undertake the task with
dedication and care. This Court frowns upon a lawyer's practice of repeatedly seeking
extensions of time to file pleadings and thereafter simply letting the period lapse without
submitting any pleading or even any explanation or manifestation for his omission. Failure of
a lawyer to seasonably file a pleading constitutes inexcusable negligence on his part.
[40]
(Emphasis and underscoring supplied)
That said, however, even on the merits, the petition still fails to convince.
Second, on the substantive issue:
According to Section 123.1(d) of the Intellectual Property Code of the Philippines (IPC), [41] a
mark cannot be registered if it is "identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date," in respect of the following: (i) the
same goods or services, or (ii) closely related goods or services, or (iii) if it nearly resembles
such a mark as to be likely to deceive or cause confusion.[42]
To determine whether a mark is to be considered as "identical" or that which is confusingly

similar with that of another, the Court has developed two (2) tests: the dominancy and holistic
tests. While the Court has time and again ruled that the application of the tests is on a case to
case basis, upon the passage of the IPC, the trend has been to veer away from the usage of
the holistic test and to focus more on the usage of the dominancy test. As stated by the Court
in the case of McDonald's Corporation vs. L.C. Big Mak Burger, Inc.,[43] 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 x x x or a dominant
feature thereof.'"[44] This is rightly so because Sec. 155.1 provides that:
SECTION 155. Remedies; Infringement. - Any person who shall, without the consent of the
owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a

registered mark or the same container or a dominant feature thereof in connection with the
sale, offering for sale, distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake, or to deceive; or x x x.
In using this test, focus is to be given to the dominant features of the marks in question. In the
1954 case of Co Tiong Sa vs. Director of Patents,[45] the Court, in using the dominancy test,
taught that:
But differences of variations in the details of one trademark and of another are not the legal!y
accepted tests of similarity in trademarks. 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.[46] (Emphasis and underscoring supplied)
The Court, in Skechers, U.S.A., Inc. vs. Inter Pacific Industrial Trading Corp. ,[47] and in once
again using the dominancy test, reiterated Del Monte Corporation vs. Court of Appeals[48] in
saying that "the defendants in cases of infringement do not normally copy but only make
colorable changes."[49] The Court emphasized that "the most successful form of copying is to
employ enough points of similarity to confuse the public, with enough points of difference to
confuse the courts."[50]
In other words, in committing the infringing act, the infringer merely introduces negligible
changes in an already registered mark, and then banks on these slight differences to state
that there was no identity or confusing similarity, which would result in no infringement. This
kind of act, which leads to confusion in the eyes of the public, is exactly the evil that the
dominancy test refuses to accept. The small deviations from a registered mark are insufficient
to remove the applicant mark from the ambit of infringement.
In the present case, the dominant feature of the applicant mark is the word "METRO" which is
identical, BOTH VISUALLY AND AURALLY, to the cited marks already registered with the IPO.
As held by the ODG-and correctly at that -
x x x there is no dispute that the subject and cited marks share the same dominant word,
"Metro". (sic) Even if, as the Appellant (petitioner herein) points out, the second cited mark
owned by Metro International contains an accompanying device, and the third cited mark
contains the terms "Philippine Daily Inquirer", (sic) the dominant feature of the subject and
cited marks is still clearly the word "Metro", (sic) spelled and pronounced in exactly the same
way. The identity between the marks would indubitably result in confusion of origin as well as
goods.[51] (Emphasis and underscoring supplied, citations omitted)
Also, greater relevance is to be accorded to the finding of Examiner Icban on the confusing
similarity between, if not the total identity of, the applicant and cited marks. Examiner Icban,
in reiterating with finality her earlier findings, said that the applicant and cited marks are " the
same in sound, spelling, meaning, overall commercial impression, covers substantially the
same goods and flows through the same channel of trade," which leads to no other conclusion
than that "confusion as to the source of origin is likely to occur." [52] This is also the tenor of
Examiner Icban's "Final Rejection" of the application, which stated that:
After an examination of the application, the undersigned IPRS has determined that the mark
subject of the application cannot be registered because it is identical with the cited marks
METRO with Regn. No. 42000002584 and Regn. No. 42000003811. METRO being dominant
word (sic) among the marks causes remarkable similarity in sound, spelling, meaning,
connotation, overall commercial impression, covers identical goods and flows through the
same channel of trade. The concurrent use by the parties of the word METRO is likely to
cause confusion among purchasers as well as confusion of business or origin hence,
registration of this subject application is proscribed under R.A. 8293, Sec. 123.1(d).
[53]
The findings of Examiner Icban, reviewed first by the Director of the Bureau of Trademarks,
and again by the Director General of the IPO, are the result of a judicious study of the case by
no less than the government agency duly empowered to examine applications for the
registration of marks.[54] These findings deserve great respect from the Court. Absent any
strong justification for the reversal thereof-as in this case-the Court shall not reverse and set
aside the same. As such, the prior findings remain: the applicant mark, "METRO," is identical
to and confusingly similar with the other cited marks already registered. By authority of the
Sec. 123.l(d) of the IPC, the applicant mark cannot be registered. The ODG is correct in
upholding the Decision of both the Director of the Bureau of Trademarks and Examiner Icban.
This ruling stands despite the specious arguments presented by the petitioner in the current
petition.
The petitioner asserts that it has a vested right over the applicant mark because Metro Media
Publishers, Inc. (Metro Media), the corporation from which the petitioner acquired the
applicant mark, first applied for the registration of the same under the old Trademark Law,
[55]
and since then, actually used the applicant mark in commerce. The petitioner belabors the
point that under the old Trademark law, actual use in commerce is a prerequisite to the
acquisition of ownership over a trademark and a trade name.[56] The petitioner even went on
further in asserting that its actual use of the applicant mark enabled it to automatically
acquire trademark rights, which should have extended even upon the promulgation of the IPC
in 1998.
Two things must be said of this argument.
First, there is no question that the petitioner's predecessor already applied for the registration
of the applicant mark "METRO" on November 3, 1994 under Class 16 of the Nice classification.
It was docketed as Application No. 4-1994-096162.[57] There is likewise no question that as
early as 1989, Metro Media has already used the applicant mark "METRO" in its magazine
publication. At that point, Metro Media exercised all the rights conferred by law to a
trademark applicant.
Second, however, the petitioner itself admitted in its petition that its application/registration
with the IPO under Application No. 4-1994-096162 was already " deemed abandoned."[58]
While it is quite noticeable that the petitioner failed to discuss the implications of this
abandonment, it remains a fact that once a trademark is considered abandoned, the
protection accorded by the IPC, or in this case the old Trademark Law, is also withdrawn. The
petitioner, in allowing this abandonment, cannot now come before the Court to cry foul if
another entity has, in the time that it has abandoned its trademark and in full cognizance of
the IPC and the IPO rules, registered its own.
In fact, in Birkenstock Orthopaedie GMBH and Co. KG. vs. Philippine Shoe Expo Marketing
Corporation,[59] the Court accorded no right at all to a trademark owner whose trademark was
abandoned for failure to file the declaration of actual use as required by Sec. 12 of the old
Trademark Law.[60] In Mattel, Inc. vs. Francisco,[61] the Court rendered a petition as moot and
academic because the cited mark has effectively been abandoned for the non-filing of a
declaration of actual use, and thus presents no hindrance to the registration of the applicant
mark.
Also, as correctly pointed out by the ODG, this abandonment is the very reason why the
petitioner lost its rights over its trademark, and that it is also the reason why, after twenty
years (20) from the initial application and after actual use of the applicant mark, the petitioner
once again came before the IPO to apply for registration. The ODG said:
Records show that this is the very situation the [petitioner] finds itself in. It has acquired no
right under the old trademark law since its original application way back 1994 has been
deemed abandoned, which is the reason why it filed the current application in 2004 under the
new law. Clearly, then, if [petitioner] has acquired no right under R.A. 166, it possesses no
existing right that ought to be preserved by virtue of Section 236 of the IP Code. [62] (Emphasis
and underscoring supplied)
Anent the petitioner's argument that "confusion between the marks is highly unlikely," [63] the
petitioner asserts that the applicant mark "METRO" (word) is covered by class 16 of the Nice
classification under "magazines," the copies of which are sold in "numerous retail outlets in
the Philippines,"[64] whereas the cited mark "METRO" (word) is used in the Philippines only in
the internet through its website and does not have any printed circulation. [65]
But like the petitioner's earlier argument, this does not hold water. Section 3, Rule 18 of the
Rules of Procedure for Intellectual Property Cases[66] provides for the legal presumption that
there is likelihood of confusion if an identical mark is used for identical goods. The provision
states:
SEC. 3. Presumption of likelihood of confusion. - Likelihood of confusion shall be presumed in
case an identical sign or mark is used for identical goods or services.
In the present case, the applicant mark is classified under "magazines," which is found in
class 16 of the Nice classification. A perusal of the records would reveal, however, that the
cited marks "METRO" (word) and "METRO" (logo) are also both classified under magazines. In
fact, Examiner Icban found that the cited marks were used on the following classification of
goods:
Paper, cardboard and goods made from these materials, not included in other classes;
newspapers, magazines, printed matter and other printed publications; bookbinding material;
photographs; stationery; adhesives for stationery or household purposes; artists materials;
paint brushes; typewriters and office requisites (except furniture); instructional and teaching
material (except apparatus); plastics materials for packaging (not included in other classes);
playing cards; printers types; printing blocks.[67] (Emphasis and underscoring supplied)
Thus, the presumption arises.
Even then, it must be emphasized that absolute certainty of confusion or even actual
confusion is not required to refuse registration. Indeed, it is the mere likelihood of confusion
that provides the impetus to accord protection to trademarks already registered with the IPO.
The Court cannot emphasize enough that the cited marks "METRO" (word) and "METRO" (logo)
are identical with the registrant mark "METRO" both in spelling and in sound. In fact, it is the
same exact word. Considering that both marks are used in goods which are classified as
magazines, it requires no stretch of imagination that a likelihood of confusion may occur.
Again, the Court points to the finding of Examiner Icban which was reviewed and upheld
twice: one by the Director of the Bureau of Trademarks and another by the Director General of
the IPO.
As a final point, the petitioner, in the pleadings submitted, manifested that the cited marks are
no longer valid. It said that: (1) the cited mark "METRO" (logo) was removed from the IPO
register for non-use, citing the IPO online database,[68] (2) the cited mark "INQUIRER METRO,"
while valid according to the IPO online database, was cancelled according to a certain
certification from the Bureau of Trademarks of the IPO; and (3) the cited mark "METRO" (word)
already expired on June 26, 2016 according to yet another certification from the IPO.s
A perusal of the records, however, would reveal that these alleged de-registration and
cancellation all allegedly occurred after the ODG has already ruled on the instant case.
Considering that the Court is not a trier of facts, the Court could therefore not make a
determination of the validity and accuracy of the statements made in the petitioner's
manifestation. As such, the Court, through the limited facts extant in the records, could not
give weight and credence thereto.
Nonetheless, not all is lost for the petitioner. Should it be true that the cited marks, which
were the basis of the IPO in refusing to register the applicant mark, were already de-
registered and cancelled, nothing prevents the petitioner from once again applying for the
registration of the applicant mark before the IPO.
WHEREFORE, premises considered, the Resolutions of the Court of Appeals dated May 20,
2014 and April 15, 2015, are hereby AFFIRMED without prejudice to the petitioner's refiling of
its application for the registration of the trademark "METRO" before the Intellectual Property
Office.
SO ORDERED.
Peralta, (Acting Chairperson), Del Castillo,* Perlas-Bernabe, and Caguioa, JJ., concur.
*
Designated as additional Member per Raffle dated January 22, 2018.
[1]
Penned by Associate Justice Michael P. Elbinias, and concurred in by Associate Justices
Isaias P. Dicdican and Ricardo R. Rosario; rollo, Vol. I, pp. 58-61.
[2]
This time penned by Associate Justice Isaias P. Dicdican, and concurred in by Associate
Justices Rosmari D. Carnndang and Ricardo R. Rosario; id. at 63-67.
[3]
Rollo, Vol. I, p. 46.
[4]
Id. at 10.
[5]
Rep. Act No. 8293 (1997), as amended.
[6]
[7]
Id.
[8]
Id.
[9]
Id. at 420-423.
[10]
Id. at 446.
[11]
[12]
[13]
Id. at 107-108.
[14]
Id. at 108-109.
[15]
Rollo, Vol. I, pp. 109-110.

[16]
[17]
Id. at 110.
Id. at 122-126; rollo, Vol. II, pp. 624-628.

[18]
[19]
Id. at 127-130, id. at 629-632.
Rollo, Vol. II, p. 633.

[20]

[21]
[22]
Id. at 15-16.
[23]
Id. at 58-61.
[24]
Id.
[25]
Id. at 63-67.
[26]
739 Phil. 148 (2014).
Id. at 154, citing Calipay v. NLRC, 640 Phil. 458, 466 (2010).

[27]
Id., citing Miel v. Malindog, 598 Phil. 594, 606 (2009). See also Sapitan v. JB Line Bicol
[28]
Express, Inc., Lao Huan Ling/Baritua, 562 Phil. 817, 831-832 (2007); Sehwani Inc. and/or
Benita's Frites, Inc. v. IN-N-OUT Burger, Inc., 562 Phil. 217, 227 (2007).
[29]
Rules of Court (1997), Rule 43, Sec. 4.
[30]
Id.
Id., citing Philippine National Bank v. Court of Appeals, 316 Phil. 371, 384 (1995).
[31]
Boardwalk Business Ventures v. Villareal, 708 Phil. 443, 454-456 (2013).

[32]
Rollo, p. 630.
[33]
Hernandez v. Agoncillo, 697 Phil. 459, 469-470 (2012), citing LTS Philippines Corporation v.
[34]
Maliwat, 489 Phil. 230, 235 (2005).
Iloilo Jar Corporation v. COMGLASCO Corporation Aguila Glass , G.R. No. 219509. January
[35]
18, 2017.
[36]
Id.
[37]
715 Phil. 550 (2013).
[38]
Id. at 563.
[39]
Supra, note 34.
[40]
Id. at 470-471.
[41]
[42]
Id., Sec. 123.1(d).
[43]
480 Phil. 402 (2004).
[44]
Id. at 435.
[45]
95 Phil. 1 (1954).
[46]
Id. at 4.
[47]
662 Phil. 11 (2011).
[48]
260 Phil. 435 (1990).
[49]
Id. at 443.
[50]
Id.

[51]

[52]

[53]
[54]
Rep. Act No. 8293 (1997), as amended, Sec. 5(b).
[55]

[56]
Rollo, Vol. I. p. 10.

[57]
[58]
Id.
[59]
721 Phil. 867 (2013).
[60]
Section 12. Duration. - Each certificate of registration shall remain in force for twenty
years: Provided, That registrations under the provisions of this Act shall be cancelled by the
Director, unless within one year following the fifth, tenth and fifteenth anniversaries of the
date of issue of the certificate of registration, the registrant shall file in the Patent Office an
affidavit showing that the mark or trade-name is still in use or showing that its non-use is due
to special circumstance which excuse such non-use and is not due to any intention to
abandon the same, and pay the required fee.
The Director shall notify the registrant who files the above-prescribed affidavits of his
acceptance or refusal thereof and, if a refusal, the reasons therefor.
[61]
582 Phil. 492, 499 (2008).
Rollo. Vol. I, p. 109.

[62]
[63]
Id. at 37.
[64]
Id. at 40.
[65]
Id.
[66]
A.M. No. 10-3-10-SC (2011).

[67]
[68]
Id. at 38, citing Annex "R" of the petition.
2. CITIGROUP, INC., PETITIONER, VS. CITYSTATE SAVINGS BANK, INC.

RESPONDENT.
DECISION
THIRD DIVISION
[ G.R. No. 205409, June 13, 2018 ]
LEONEN, J.:
This resolves a Petition for Review on Certiorari[1] assailing the August 29, 2012
Decision[2] and the January 15, 2013 Resolution[3] of the Court of Appeals in CA-G.R. SP No.
109679.
The facts which led to the controversy before this Court, as summarized by the Court of
Appeals, are as follows:
Petitioner Citigroup, Inc. is a corporation duly organized under the laws of the State of
Delaware engaged in banking and financial services.
In the late 1970s, Citibank N.A., a wholly-owned subsidiary of petitioner, installed its first
automated teller machines in over a hundred New York City branches. In 1984, Citibank N.A.,
Philippine Branch, began the development of its domestic Automated Teller Machine (ATM)
network, and started operating ATMs and issuing ATM cards in the Philippines. Citibank N.A.,
Philippine Branch then joined Bancnet Inc. ("Bancnet") in 1990, the first year Bancnet
commenced operations. To date, Citibank N.A., Philippine Branch has six branches and 22
ATMs in the Philippines.
In 2005, Citibank Savings, Inc. became an indirect wholly-owned subsidiary of Citibank, N.A.
As a pre-existing thrift bank, it offered ATM services in the Philippines in 1995 and joined
Bancnet in 2005. Citibank Savings, Inc. now has 36 branches and 27 ATMs in the Philippines.
Combining the branches and ATMs of Citibank N.A., Philippine Branch and Citibank Savings,
Inc., there are a total of 42 branches and 29 ATMs in the Philippines marketed and identified
to the public under the CITI family of marks.
The ATM cards issued by Citibank N.A., Philippine Branch and Citibank Savings, Inc. are
labelled "CITICARD". The trademark CITICARD is owned by Citibank N.A. and is registered in
the [Intellectual Property Office] of the Philippines on 27 September 1995 under Registration
Number 34731.
In addition, petitioner or Citibank N.A., a wholly-owned subsidiary of petitioner, owns the

following other trademarks currently registered with the Philippine [Intellectual Property
Office], to wit: "CITI and arc design", "CITIBANK", "CITIBANK PAYLINK", "CITIBANK
SPEEDCOLLECT", "CITIBANKING", "CITICARD", "CITICORP", "CITIFINANCIAL", "CITIGOLD",
"CITIGROUP", "CITIPHONE BANKING'', and "CITISERVICE".
On the other hand, sometime in the mid-nineties, a group of Filipinos and Singaporean
companies formed a consortium to establish respondent Citystate Savings Bank, Inc. The
consortium included established Singaporean companies, specifically Citystate Insurance
Group and Citystate Management Group Holdings Pte, Ltd.
Respondent's registered mark has in its name affixed a lion's head, which is likened to the
national symbol of Singapore, the Merlion. On 08 August 1997, respondent opened its initial
branch in Makati City. From then on, it endeavored to expand its branch network. At present it
has 19 branches in key cities and municipalities including 3 branches in the province of
Bulacan and 1 in Cebu City. Respondent had also established off site ATMs in key locations in
the Philippines as one of its banking products and services.
In line with this, respondent filed an application for registration with the [Intellectual Property
Office] on 21 June 2005 of the trademark "CITY CASH WITH GOLDEN LION'S HEAD" for its
ATM service, under Application Serial No. 42005005673.[4]
After respondent Citystate Savings Bank, Inc. (Citystate) applied for registration of its
trademark "CITY CASH WITH GOLDEN LION'S HEAD" with the Intellectual Property Office,
Citigroup, Inc. (Citigroup) filed an opposition to Citystate's application. Citigroup claimed that
the "CITY CASH WITH GOLDEN LION'S HEAD" mark is confusingly similar to its own "CITI"
marks.[5] After an exchange of pleadings, the Director of the Bureau of Legal Affairs of the
Intellectual Property Office rendered a Decision[6] dated November 20, 2008. The Intellectual
Property Office concluded that the dominant features of the marks were the words "CITI" and
"CITY," which were almost the same in all aspects. It further ratiocinated that Citigroup had
the better right over the mark, considering that 'its "CITI" and "CITI"-related marks have been
registered with the Intellectual Property Office, as well as with the United States Patent and
Trademark Office, covering "financial services" under Class 36 of the International
Classification of Goods.[7] Thus, applying the dominancy test and considering that Citystate's
dominant feature of the applicant's mark was identical or confusingly similar to a registered
trademark, the Intellectual Property Office ruled that approving it would be contrary to Section
138 of the Intellectual Property Code and Citigroup's exclusive right to use its marks.
This was appealed to the Office of the Director General of the Intellectual Property Office. In a
Decision[8] dated July 3, 2009, Director General Adrian S. Cristobal, Jr. (Director General
Cristobal) reversed the November 20, 2008 Decision of the Director of the Bureau of Legal
Affairs and gave due course to Citystate's trademark application. He made a visual
comparison of the parties' respective marks and considered the golden lion head device to be
the prominent or dominant feature of Citystate's mark, and not the word "CITY." Thus,
Citystate's mark did not resemble Citigroup's mark such that deception or confusion was
likely. Director General Cristobal found plausible Citystate's explanation for choosing
"CITYSTATE," i.e., that its name was based on the country of Singapore, which was referred to
as "city-state," and that the golden lion head device was similar to the national symbol of
Singapore, the merlion.[9] He appreciated that availing of the products and services related to
the parties' marks would entail very detailed procedures, like sales representatives explaining
the products and clients filling up and submitting application forms, such that customers
would necessarily be well informed and not confused.[10]
Thus, Citigroup filed a Petition for Review[11] before the Court of Appeals, which dismissed the
petition. The Court of Appeals found that Director General Cristobal did not act with grave
abuse of discretion in ruling that the parties' trademarks were not confusingly similar, and in
giving due course to Citystate's trademark application.[12] It found that Citystate's mark was
not confusingly or deceptively similar to Citigroup's marks:
[Citystate's] trademark is the entire "CITY CASH WITH GOLDEN LION'S HEAD". Although the
words "CITY CASH" are prominent, the entirety of the trademark must be considered, and
focus should not be made solely on the phonetic similarity of the words "CITY" and "CITI".
The dissimilarities between the two marks are noticeable and substantial. [Citystate's] mark,
"CITY CASH WITH GOLDEN LION'S HEAD", has an insignia of a golden lion's head at the left
side of the words "CITY CASH", while [Citigroup's] "CITI" mark usually has an arc between the
two I's. A further scrutiny of the other "CITI" marks of [Citigroup] would show that their font
type, font size, and color schemes of the said "CITI" marks vary for each product or service.
Most of the time, [Citigroup's] "CITI" mark is joined with another term to form a single word,
with each product or service having different font types and color schemes. On the contrary,
the trademark of [Citystate] consists of the words "CITY CASH", with a golden lion's head
emblem on the left side. It is, therefore, improbable that the public would immediately and
naturally conclude that [Citystate's] "CITY CASH WITH GOLDEN LION'S HEAD" is but another
variation under [Citigroup's] "CITI" marks.
Verily, the variations in the appearance of the "CITI" marks by [Citigroup], when conjoined
with other words, would dissolve the alleged similarity between them and the trademark of
[Citystate]. These dissimilarities, and the insignia of a golden lion's head before the words
"CITY CASH" in the mark of [Citystate] would sufficiently acquaint and apprise the public that
[Citystate's] trademark "CITY CASH WITH GOLDEN LION'S HEAD" is not connected with the
"CITI" marks of [Citigroup].
Moreover, 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. It bears to emphasize
that the mark "CITY CASH WITH GOLDEN LION'S HEAD" is a mark of [Citystate] for its ATM
services which it offers to the public. It cannot be gainsaid that an ATM service is not an
ordinary product which could be obtained at any store without the public noticing its
association with the banking institution that provides said service. Naturally, the customer
must first open an account with a bank before it could avail of its ATM service. Moreover, the
name of the banking institution is written and posted either inside or outside the ATM booth,
not to mention the fact that the name of the bank that operates the ATM is constantly flashed
at the screen of the ATM itself. With this, the public would accordingly be apprised that
[Citystate's] "CITY CASH" is an ATM service of [Citystate], and not that of [Citigroup's].
[13]
(Citation omitted)
Thus, the Court of Appeals quoted Director General Cristobal:
In evaluating the relevance of the prefix "CITI", due attention should be given not only to the
other features of the competing marks but also to the attendant circumstances of the case.
Otherwise, a blind adherence to [Citigroup's] claim over the prefix CITI is tantamount to
handing it a monopoly of all marks with such prefix or with a prefix that sounds alike but with
a different spelling like the word "city". Accordingly, the kind of products and services
involved should likewise be scrutinized.
....
Thus, this Court finds no cogent reason to believe [Citigroup's] contention that consumers may
confuse the products and services covered by the competing trademarks as coming from the
same source of origin. The fear that the consumer may mistake the products as to the source
or origin, or that the consumers seeking its products and services will be redirected or
diverted to [Citystate], is unfounded. The products or services involved are not the ordinary
everyday products that one can just pick up in a supermarket or grocery stores (sic). These
products generally require sales representatives explaining to their prospective customers the
features of and entitlements thereto. Availing the products and services involved follows
certain procedures that ordinarily and routinely gives the prospective customers or clients
opportunity to know exactly with whom they are dealing with (sic). The procedures usually
include the clients filling-up and submitting a pro-forma application form and other
documentary requirements, which means that the person is wel[l]informed and thus, cannot
be misled into believing that the product or service is that of [Citystate] when in fact it is
different from [Citigroup's].
The likelihood of confusion between two marks should be taken from the viewpoint of the
prospective buyer. In Emerald Garment Manufacturing Corp. vs. Court of Appeals, et al. , the
Supreme Court ruled that:
"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."[14]
Citigroup filed a Motion for Reconsideration,[15] which the Court of Appeals denied in its
January 15, 2013 Resolution.[16]
Thus, Citigroup filed a Petition for Review[17] against Citystate before this Court. After
respondent filed its Comment/Opposition[18] and petitioner filed its Reply,[19] respondent filed
its Memorandum.[20]
Petitioner claims that the Court of Appeals erred in finding that there was no confusing
similarity between the trademark that respondent applied for and petitioner's own trademarks.
[21]
It avers that Emerald Manufacturing Company v. Court of Appeals[22] is not applicable to
this case.[23] Contrary to the Court of Appeals' finding, the arc design is not an integral part of
petitioner's "CITI" family of marks.[24]
Petitioner asserts that when the dominancy test is applied to the Court of Appeals' findings of
fact, the necessary result is a finding of confusing similarity. [25] It points out that the Court of
Appeals found that "CITY CASH" is the dominant feature of respondent's applied trademark.
However, because the word "CASH" was disclaimed in respondent's trademark application,
only "CITY" may be considered the dominant part of the mark. "'CITY' ... appears nearly
identical to 'CITI'."[26]
Further, petitioner argues that the Court of Appeals did not understand the services offered in
relation to respondent's mark when it said that the mark is to be applied only in relation to
respondent's ATMs and within the bank premises. It insists that in actuality, the mark could be
used outside the bank premises, such as in radio, newspapers, and the internet, where there
would not necessarily be a "GOLDEN LION'S HEAD" symbol to disambiguate the mark from any
of petitioner's marks. It argues that the Court of Appeals should have appreciated the
difference between basic financial services on one hand, which include ATM services, and
sophisticated financial services on the other hand. It avers that customers do not select ATM
services after cautious evaluation, and that ATM services are marketed to ordinary
consumers. Thus, petitioner claims that the Court of Appeals erred when it concluded that
customers are intelligent purchasers, and failed to consider ordinary purchasers who have not
yet used the financial services of petitioner and respondent. [27]
It further holds that it is not claiming a monopoly of all marks prefixed by words sounding like
"city." It stresses that it opposes only marks which are registered under class 36 used in
products directly related and in competition with its "CITI" family of marks, sold under the
same business channels, and sold to the same group of consumers.[28]
Respondent argues that its mark is not confusingly similar to petitioner's [29] and that
petitioner's fears are purely speculative.[30] It claims that the phonetic similarity between
"CITY" and "CITI" is not sufficient to deny its registration, asserting that this Court has ruled
that idem sonans alone is insufficient basis for a determination of the existence of confusing
similarity. As for petitioner's arguments on possible confusion due to advertising, respondent
states that advertisement aims to inform the public of a certain entity's product and that not
mentioning a supplier's trade name in its advertisement defeats the purpose of advertisement.
It disputes petitioner's claims on ATM services and the kind of caution exercised prior to
obtaining an ATM card, asserting that before customers may avail of ATM services, they have
to open an account with the bank offering them.[31]
This Court denies the Petition.
The sole issue for this Court's resolution is whether or not the Court of Appeals committed an
error of law in finding that there exists no confusing similarity between petitioner Citigroup,
Inc.'s and respondent Citystate Savings Bank, Inc.'s marks.
In La Chemise Lacoste, S.A. v. Fernandez,[32] this Court explained why trademarks are
protected in the market:
The purpose of the law protecting a trademark cannot be overemphasized. They are to point
out distinctly the origin or ownership of the article to which it is affixed, to secure to him, who
has been instrumental in bringing into market a superior article of merchandise, the fruit of his
industry and skill, and to prevent fraud and imposition (Etepha v. Director of Patents, 16 SCRA
495).
The legislature has enacted laws to regulate the use of trademarks and provide for the
protection thereof. Modem trade and commerce demands that depredations on legitimate
trade marks of non-nationals including those who have not shown prior registration thereof
should not be countenanced. The law against such depredations is not only for the protection
of the owner of the trademark but also, and more importantly, for the protection of purchasers
from confusion, mistake, or deception as to the goods they are buying. (Asari Yoko Co., Ltd. v.
Kee Boc, 1 SCRA 1; General Garments Corporation v. Director of Patents, 41 SCRA 50).
The law on trademarks and tradenames is based on the principle of business integrity and
common justice. This law, both in letter and spirit, is laid upon the premise that, while it
encourages fair trade in every way and aims to foster, and not to hamper, competition, no one,
especially a trader, is justified in damaging or jeopardizing another's business by fraud, deceit,
trickery or unfair methods of any sort. This necessarily precludes the trading by one dealer
upon the good name and reputation built up by another (Baltimore v. Moses, 182 Md 229, 34 A
(2d) 338).[33]
In Mirpuri v. Court of Appeals,[34] this Court traced the historical development of trademark
law:
A "trademark" is defined under R.A. 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 from those
manufactured, sold or dealt in by others." This definition has been simplified in R.A. No. 8293,
the Intellectual Property Code of the Philippines, which defines a "trademark" as "any visible
sign capable of distinguishing goods." In Philippine jurisprudence, the function of a trademark
is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to
him, who has been instrumental in bringing into the market a superior article of merchandise,
the fruit of his industry and skill; to assure the public that they are procuring the genuine
article; to prevent fraud and imposition; and to protect the manufacturer against substitution
and sale of an inferior and different article as his product.
Modern authorities on trademark law view trademarks as performing three distinct 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.
Symbols have been used to identify the ownership or origin of articles for several centuries. As
early as 5,000 B.C., markings on pottery have been found by archaeologists. Cave drawings in
southwestern Europe show bison with symbols on their flanks. Archaeological discoveries of
ancient Greek and Roman inscriptions on sculptural works, paintings, vases, precious stones,
glassworks, bricks, etc. reveal some features which are thought to be marks or symbols.
These marks were affixed by the creator or maker of the article, or by public authorities as
indicators for the payment of tax, for disclosing state monopoly, or devices for the settlement
of accounts between an entrepreneur and his workmen.
In the Middle Ages, the use of many kinds of marks on a variety of goods was commonplace.
Fifteenth century England saw the compulsory use of identifying marks in certain trades.
There were the baker's mark on bread, bottlemaker's marks, smith's marks, tanner's marks,
watermarks on paper, etc. Every guild had its own mark and every master belonging to it had
a special mark of his own. The marks were not trademarks but police marks compulsorily
imposed by the sovereign to let the public know that the goods were not "foreign" goods
smuggled into an area where the guild had a monopoly, as well as to aid in tracing defective
work or poor craftsmanship to the artisan. For a similar reason, merchants also used
merchants' marks. Merchants dealt in goods acquired from many sources and the marks
enabled them to identify and reclaim their goods upon recovery after shipwreck or piracy.
With constant use, the mark acquired popularity and became voluntarily adopted. It was not
intended to create or continue monopoly but to give the customer an index or guarantee of
quality. It was in the late 18th century when the industrial revolution gave rise to mass
production and distribution of consumer goods that the mark became an important
instrumentality of trade and commerce. By this time, trademarks did not merely identify the
goods; they also indicated the goods to be of satisfactory quality, and thereby stimulated
further purchases by the consuming public. Eventually, they came to symbolize the goodwill
and business reputation of the owner of the product and became a property right protected by
law. The common law developed the doctrine of trademarks and tradenames "to prevent a
person from palming off his goods as another's, from getting another's business or injuring his
reputation by unfair means, and, from defrauding the public." Subsequently, England and the
United States enacted national legislation on trademarks as part of the law regulating unfair
trade. It became the right of the trademark owner to exclude others from the use of his mark,
or of a confusingly similar mark where confusion resulted in diversion of trade or financial
injury. At the same time, the trademark served as a warning against the imitation or faking of
products to prevent the imposition of fraud upon the public.
Today, the trademark is not merely a symbol of origin and goodwill; it is often the most
effective agent for the actual creation and protection of goodwill. It imprints upon the public
mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further
satisfaction. In other words, the mark actually sells the goods. The mark has become the
"silent salesman," the conduit through which direct contact between the trademark owner and
the consumer is assured. It has invaded popular culture in ways never anticipated that it has
become a more convincing selling point than even the quality of the article to which it refers.
In the last half century, the unparalleled growth of industry and the rapid development of
communications technology have enabled trademarks, tradenames and other distinctive signs
of a product to penetrate regions where the owner does not actually manufacture or sell the
product itself. Goodwill is no longer confined to the territory of actual market penetration; it
extends to zones where the marked article has been fixed in the public mind through
advertising. Whether in the print, broadcast or electronic communications medium,
particularly on the Internet, advertising has paved the way for growth and expansion of the
product by creating and earning a reputation that crosses over borders, virtually turning the
whole world into one vast marketplace.[35] (Citations omitted)
There is also an underlying economic justification for the protection of trademarks: an
effective trademark system helps bridge the information gap between producers and
consumers, and thus, lowers the costs incurred by consumers in searching for and deciding
what products to purchase. As summarized in a report of the World Intellectual Property
Organization:
Economic research has shown that brands play an important role in bridging so-called
asymmetries of information between producers and consumers. In many modem markets,
product offerings differ across a wide range of quality characteristics. Consumers, in turn,
cannot always discern these characteristics at the moment of purchase; they spend time and
money researching different offerings before deciding which product to buy. Brand reputation
helps consumers to reduce these search costs. It enables them to draw on their past
experience and other information about products - such as advertisements and third party
consumer reviews. However, the reputation mechanism only works if consumers are confident
that they will purchase what they intend to purchase. The trademark system provides the
legal framework underpinning this confidence. It does so by granting exclusive rights to
names, signs and other identifiers in commerce. In addition, by employing trademarks,
producers and sellers create concise identifiers for specific goods and services, thereby
improving communication about those goods and services.[36]
Recognizing the significance, and to further the effectivity of our trademark system, [37] our
legislators proscribed the registration of marks under certain circumstances:
Section 123. Registrability. - 123.1. A mark cannot be registered if it:
(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or
falsely suggest a connection with persons, living or dead, institutions, beliefs, or national
symbols, or bring them into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying a particular living individual except by
his written consent, or the name, signature, or portrait of a deceased President of the
Philippines, during the life of his widow, if any, except by written consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an
earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well-known internationally and
in the Philippines, whether or not it is registered here, as being already the mark of a person
other than the applicant for registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark is well known, account shall be taken
of the knowledge of the relevant sector of the public, rather than of the public at large,
including knowledge in the Philippines which has been obtained as a result of the promotion of
the mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered
well-known in accordance with the preceding paragraph, which is registered in the Philippines
with respect to goods or services which are not similar to those with respect to which
registration is applied for: Provided, That use of the 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;
(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or
geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic for the goods or services that they seek to
identify;
(i) Consists exclusively of signs or of indications that have become customary or usual to
designate the goods or services in everyday language or in bona fide and established trade
practice;
(j) Consists exclusively of signs or of indications that may serve in trade to designate the kind,
quality, quantity, intended purpose, value, geographical origin, time or production of the goods
or rendering of the services, or other characteristics of the goods or services;
(k) Consists of shapes that may be necessitated by technical factors or by the nature of the
goods themselves or factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.

Based on this proscription, petitioner insists that respondent's mark cannot be registered
because it is confusingly similar to its own set of marks. Thus, granting the petition rests
solely on the question of likelihood of confusion between petitioner's and respondent's
respective marks.
There is no objective test for determining whether the confusion is likely. Likelihood of
confusion must be determined according to the particular circumstances of each case.[38] To
aid in determining the similarity and likelihood of confusion between marks, our jurisprudence
has developed two (2) tests: the dominancy test and the holistic test. This Court explained
these tests in Coffee Partners, Inc. v. San Francisco Coffee & Roastery, Inc. [39]:
The dominancy test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion and deception, thus constituting infringement. If the
competing trademark contains the main, essential, and dominant features of another, and
confusion or deception is likely to result, infringement occurs. Exact duplication or imitation is
not required. The question is whether the use of the marks involved is likely to cause
confusion or mistake in the mind of the public or to deceive consumers.
In contrast, the holistic test entails a consideration of the entirety of the marks as applied to
the products, including the labels and packaging, in determining confusing similarity. The
discerning eye of the observer must focus not only on the predominant words but also on the
other features appearing on both marks in order that the observer may draw his conclusion
whether one is confusingly similar to the other.[40] (Citations omitted)
With these guidelines in mind, this Court considered "the main, essential, and dominant
features" of the marks in this case, as well as the contexts in which the marks are to be used.
This Court finds that the use of the "CITY CASH WITH GOLDEN LION'S HEAD" mark will not
result in the likelihood of confusion in the minds of customers.
A visual comparison of the marks reveals no likelihood of confusion.
Respondent's mark is:

This Court agrees with the observation of Director General Cristobal that the most noticeable
part of this mark is the golden lion's head device,[41] and finds that after noticing the image of
the lion's head, the words "CITY" and "CASH" are equally prominent.
On the other hand, petitioner's marks, as noted by the Court of Appeals, often include the red
arc device:
Petitioner's other registered marks which do not contain the red arc device include the
following:
(See image)
Examining these marks, this Court finds that petitioner's marks can best be described as
consisting of the prefix "CITI" added to other words.
Applying the dominancy test, this Court sees that the prevalent feature of respondent's mark,
the golden lion's head device, is not present at all in any of petitioner's marks. The only similar
feature between respondent's mark and petitioner's collection of marks is the word "CITY" in
the former, and the "CITI" prefix found in the latter. This Court agrees with the findings of the
Court of Appeals that this similarity alone is not enough to create a likelihood of confusion.
The dis[s]imilarities between the two marks are noticeable and substantial. Respondent's
mark, "CITY CASH WITH GOLDEN LION'S HEAD", has an insignia of a golden lion's head at the
left side of the words "CITY CASH", while petitioner's "CITI" mark usually has an arc between
the two I's. A further scrutiny of the other "CITI" marks of petitioner would show that their font
type, font size, and color schemes of the said "CITI" marks vary for each product or service.
Most of the time, petitioner's "CITI" mark is joined with another term to form a single word,
with each product or service having different font types and color schemes. On the contrary,
the trademark of respondent consists of the words "CITY CASH", with a golden lion's head
emblem on the left side. It is, therefore, improbable that the public would immediately and
naturally conclude that respondent's "CITY CASH WITH GOLDEN LION'S HEAD" is but another
variation under petitioner's "CITI" marks.
Verily, the variations in the appearance of the "CITI" marks by petitioner, when conjoined with
other words, would dissolve the alleged similarity between them and the trademark of
respondent. These dissimilarities, and the insignia of a golden lion's head before the words
"CITY CASH" in the mark of the respondent would sufficiently acquaint and apprise the public
that respondent's trademark "CITY CASH WITH GOLDEN LION'S HEAD" is not connected with
the "CITI" marks of petitioner.[42]
This Court also agrees with the Court of Appeals that the context where respondent's mark is
to be used, namely, for its ATM services, which could only be secured at respondent's
premises and not in an open market of ATM services, further diminishes the possibility of
confusion on the part of prospective customers. Thus, this Court quotes with approval the
Court of Appeals, which made reference to Emerald Manufacturing:
Moreover, 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. It bears to emphasize
that the mark "CITY CASH WITH GOLDEN LION'S HEAD" is a mark of respondent for its ATM
services which it offers to the public. It cannot be gainsaid that an ATM SERVICE IS NOT AN
ORDINARY PRODUCT which could be obtained at any store without the public noticing its
association with the banking institution that provides said service. Naturally, the customer
must first open an account with a bank before it could avail of its ATM service. Moreover, the
name of the banking institution is written and posted either inside or outside the ATM booth,
not to mention the fact that the name of the bank that operates the ATM is constantly flashed
at the screen of the ATM itself. With this, the public would accordingly be apprised that
respondent's "CITY CASH" is an ATM service of the respondent bank, and not of the
petitioner's.[43]
Petitioner argues that Emerald Manufacturing is distinguishable from this case, insisting that
ATM services are more akin to ordinary household items than they are akin to brand name
jeans, in terms of how their customers choose their providers:
73. The Emerald Manufacturing case involved the marks "Lee" and "Stylistic Mr. Lee", and
the Supreme Court focused on the nature of the products as "not the ordinary household
items", pointing to the fact that, "the average Filipino consumer generally buys his jeans by
brand. He does not ask the sales clerk for his generic jeans but for, say a Levis, Guess,
Wrangler or even an Armani."
74. In contrast, when an ordinary consumer of ATM services wishes to withdraw cash, more
often than not he will simply locate the nearest ATM, without reference to brand as long as
the ATM accepts his card. When dealing with banks that belong to an ATM network such as
Bancnet, which both parties do, the cards are almost universally and interchangeably
accepted.[44]
This scenario is unclear, and thus, unconvincing and insufficient to support a finding of error
on the part of the Court of Appeals. Petitioner hypothesizes that there could be some
confusion because ATM users "simply locate the nearest ATM, without reference to brand as
long as the ATM accepts [their] card."[45] This Court is at a loss to see how this supports
petitioner's claims that ATM users locate the nearest ATMs and use them without reference to
brand as long as the ATM accepts their cards. If petitioner's speculation is true, then bank
branding is wholly irrelevant after the ATM service has been secured. This Court is hard
pressed to accept this assumption. In any case, this Court simply cannot agree that a bank or
ATM service is more akin to ordinary household items than it is to brand name Jeans.
More relevant than the scenario discussed by petitioner is the stage when a bank is trying to
attract customers to avail of its services. Petitioner points out that in advertisements, such as
in radio, newspapers, and the internet, which are shown beyond the bank premises, there may
be no golden lion's head device to disambiguate "CITY CASH" from any of petitioner's own
marks and services.[46] This Court finds this unconvincing. ATM SERVICES, LIKE OTHER BANK
SERVICES, ARE GENERALLY NOT MARKETED AS INDEPENDENT PRODUCTS. Indeed, as
pointed out by petitioner itself, ATM cards accompany the basic deposit product in most
banks.[47] They are generally adjunct to the main deposit service provided by a bank. Since
ATM services must be secured and contracted for at the offering bank's premises, any
marketing campaign for an ATM service must focus first and foremost on the offering bank.
Hence, any effective internet and newspaper advertisement for respondent would include and
emphasize the golden lion's head device. Indeed, a radio advertisement would not have it. IT
SHOULD NOT BE FORGOTTEN, HOWEVER, THAT A MARK IS A QUESTION OF VISUALS, BY
STATUTORY DEFINITION.[48] Thus, the similarity between the sounds of "CITI" and "CITY" in a
radio advertisement alone neither is sufficient for this Court to conclude that there is a
likelihood that a customer would be confused nor can operate to bar respondent from
registering its mark. This Court notes that any confusion that may arise from using "CITY
CASH" in a radio advertisement would be the same confusion that might arise from using
respondent's own trade name. Aurally, respondent's very trade name, which is not questioned,
could be mistaken as "CITISTATE SAVINGS BANK," and all of petitioner's fears of possible
confusion would be just as likely.
This Court agrees with Director General Cristobal's recognition of respondent's history and of
"Citystate" as part of its name.[49] Upon consideration, it notes that it may have been more
aligned with the purpose of trademark protection for respondent to have chosen the
trademark "CITYSTATE CASH" instead of "CITY CASH" to create a stronger association
between its trade name and the service provided. Nonetheless, there is no law requiring that
trademarks match the offeror's trade name precisely to be registrable. The only relevant issue
is the likelihood of confusion.
This Court also recognizes that there could be other situations involving a combination of the
word "city" and another word that could result in confusion among customers. However, it is
not convinced that this is one of those situations.
Thus, having examined the particularities of this case, this Court affirms the Court of Appeals'
finding that Director General Cristobal of the Intellectual Property Office did not commit any
grave abuse of discretion in allowing the registration of respondent's trademark.
WHEREFORE, the petition is DENIED. The Court of Appeals August 29, 2012 Decision and
January 15, 2013 Resolution in CA-G.R. SP No. 109679 are AFFIRMED.
SO ORDERED.
3. SAN MIGUEL PURE FOODS COMPANY, INC., PETITIONER, VS.

FOODSPHERE, INC., RESPONDENT.
[G.R. No. 217788]
FOODSPHERE, INC., PETITIONER, VS. SAN MIGUEL PURE FOODS

COMPANY, INC., RESPONDENT.
SECOND DIVISION
[ G.R. No. 217781, June 20, 2018 ]
PERALTA, J.:
Before the Court are the consolidated cases of G.R. No. 217781 and G.R. No. 217788. On the
one hand, San Miguel Pure Foods Company, Inc. (SMPFCI), in G.R. No. 217781, filed a Petition
for Review on Certiorari under Rule 45 of the Rules of Court, questioning the
Resolution[1] dated April 8, 2015 of the Court of Appeals (CA), Former Fourteenth Division, in
CA-G.R. SP No. 131945, but only insofar as the same resolved to delete from the body of its
Decision[2] dated September 24, 2014 the award of exemplary damages. On the other hand, in
G.R. No. 217788, Foodsphere, Inc., via a Petition for Review on Certiorari under Rule 45 of the
Rules of Court, seeks to reverse and set aside the same September 24, 2014 Decision and
April 8, 2015 Resolution of the CA declaring it guilty of unfair competition and holding it liable
for damages.
The antecedent facts are as follows:

The parties herein are both engaged in the business of the manufacture, sale, and distribution
of food products, with SMPFCI owning the trademark "PUREFOODS FIESTA HAM" while
Foodsphere, Inc. products (Foodsphere) bear the "CDO" brand.
On November 4, 2010, SMPFCI filed a Complaint[3] for trademark infringement and unfair

competition with prayer for preliminary injunction and temporary restraining order against
Foodsphere before the Bureau of Legal Affairs (BLA) of the Intellectual Property Office (IPO)
pursuant to Sections 155 and 168 of Republic Act (R.A.) No. 8293, otherwise known as
the Intellectual Property Code (IP Code), for using, in commerce, a colorable imitation of its
registered trademark in connection with the sale, offering for sale, and advertising of goods
that are confusingly similar to that of its registered trademark. [4]
In its complaint, SMPFCI alleged that its "FIESTA" ham, first introduced in 1980, has been sold
in countless supermarkets in the country with an average annual sales of P10,791,537.25 and
is, therefore, a popular fixture in dining tables during the Christmas season. Its registered
"FIESTA" mark has acquired goodwill to mean sumptuous ham of great taste, superior quality,
and food safety, and its trade dress "FIESTA", combined with a figure of a partly sliced ham
served on a plate with fruits on the side had likewise earned goodwill. Notwithstanding such
tremendous goodwill already earned by its mark, SMPFCI continues to invest considerable
resources to promote the FIESTA ham, amounting to no less than P3,678,407.95. [5]
Sometime in 2006, however, Foodsphere introduced its "PISTA" ham and aggressively
promoted it in 2007, claiming the same to be the real premium ham. In 2008, SMPFCI launched
its "Dapat ganito ka-espesyal" campaign, utilizing the promotional material showing a picture
of a whole meat ham served on a plate with fresh fruits on the side. The ham is being sliced
with a knife and the other portion, held in place by a serving fork.
But in the same year, Foodsphere launched its "Christmas Ham with Taste" campaign
featuring a similar picture. Moreover, in 2009, Foodsphere launched its "Make Christmas even
more special" campaign, directly copying SMPFCI's "Dapat ganito ka-espesyal" campaign.
Also in 2009, Foodsphere introduced its paper ham bag which looked significantly similar to
SMPFCI's own paper ham bag and its trade dress and its use of the word "PISTA" in its
packages were confusingly similar to SMPFCI's "FIESTA" mark.[6]
Thus, according to SMPFCI, the striking similarities between the marks and products of
Foodsphere with those of SMPFCI warrant its claim of trademark infringement on the ground
of likelihood of confusion as to origin, and being the owner of "FIESTA," it has the right to
prevent Foodsphere from the unauthorized use of a deceptively similar mark. The word
"PISTA" in Foodsphere's mark means "fiesta," "feast," or "festival" and connotes the same
meaning or commercial impression to the buying public of SMPFCI's "FIESTA" trademark.
Moreover, "FIESTA" and "PISTA" are similarly pronounced, have the same number of syllables,
share common consonants and vowels, and have the same general appearance in their
respective product packages. In addition, the "FIESTA" and "PISTA" marks are used in the
same product which are distributed and marketed in the same channels of trade under similar
conditions, and even placed in the same freezer and/or displayed in the same section of
supermarkets. Foodsphere's use, therefore, of the "PISTA" mark will mislead the public into
believing that its goods originated from, or are licensed or sponsored by SMPFCI, or that
Foodsphere is associated with SMPFCI, or its affiliate. The use of the "PISTA" trademark
would not only result in likelihood of confusion, but in actual confusion. [7]
Apart from trademark infringement, SMPFCI further alleged that Foodsphere is likewise guilty
of unfair competition. This is because there is confusing similarity in the general appearance
of the goods of the parties and intent on the part of Foodsphere, to deceive the public and
defraud SMPFCL According to SMPFCI, there is confusing similarity because the display panel
of both products have a picture of a partly sliced ham served on a plate of fruits, while the
back panel features other ham varieties offered, both "FIESTA" and "PISTA" are printed in
white bold stylized font, and the product packaging for both "FIESTA" and "PISTA" consists of
box-typed paper bags made of cardboard materials with cut-out holes on the middle top
portion for use as handles and predominantly red in color with a background design of
Christmas balls, stars, snowflakes, and ornate scroll. Moreover, Foodsphere's intent to
deceive the public is seen from its continued use of the word "PISTA" for its ham products and
its adoption of packaging with a strong resemblance of SMPFCI's "FIESTA" ham packaging.
For SMPFCI, this is deliberately carried out for the purpose of capitalizing on the valuable
goodwill of its trademark and causing not only confusion of goods but also confusion as to the
source of the ham product. Consequently, SMPFCI claimed to have failed to realize income of
at least P27,668,538.38 and P899,294.77 per month in estimated actual damages representing
foregone income in sales. Thus, it is entitled to actual damages and attorney's fees. [8]
For its part, Foodsphere denied the charges of trademark infringement and countered that the
marks "PISTA" and "PUREFOODS FIESTA HAM" are not confusingly similar and are, in fact,
visually and aurally distinct from each other. This is because PISTA is always used in
conjunction with its house mark "CDO" and that "PUREFOODS FIESTA HAM" bears the
housemark "PUREFOODS," rendering confusion impossible. Moreover, Foodsphere maintained
that SMPFCI does not have a monopoly on the mark "FIESTA" for the IPO database shows that
there are two (2) other registrations for "FIESTA," namely "FIESTA TROPICALE" and "HAPPY
FIESTA." Also, there are other products in supermarkets that bear the mark "FIESTA" such as
"ARO FIESTA HAM," "ROYAL FIESTA," and "PUREGOLD FIESTA HAM," but SMPFCI has done
nothing against those manufacturers, making it guilty of estoppel in pais, and is, therefore,
estopped from claiming that the use of other manufacturers of the mark "FIESTA" will result in
confusion and/or damage to itself. Even assuming that the marks are confusingly similar,
Foodsphere asserted that it is SMPFCI who is guilty of infringement vis-a-vis its registered
trademark "HOLIDAY," a translation and word bearing the same meaning as "FIESTA."
Foodsphere has been using its "HOLIDAY" trademark since 1970 and had registered the same
in 1986, while SMPFCI registered its "FIESTA" trademark only in 2007. In fact, Foodsphere
noted that it has been using "PISTA" since 2006 which is earlier than SMPFCI's filing for
registration of "FIESTA" in 2007. In addition, Foodsphere asseverated that SMPFCI cannot
appropriate for itself images of traditional utensils and garnishing of ham in its
advertisements. Confusion between the marks, moreover, is rendered impossible because the
products are sold in booths manned by different "promodisers." Also, hams are expensive
products and their purchasers are well-informed not only as to their features but also as to the
manufacturers thereof.[9]
Furthermore, Foodsphere similarly denied the allegation that it is guilty of unfair competition
or passing off its product as that of SMPFCI. As mentioned, the "PISTA" and "FIESTA" labels
are substantially different in the manner of presentation, carrying their respective house
marks. Moreover, its paper ham bags are labeled with their respective house marks and are
given to consumers only after purchase, hence, they do not factor in when the choice of ham
is being made. Also, Foodsphere claims to have been using the red color for its boxes and it
was SMPFCI, by its own admission, that switched colors from green to red in 2009 for its own
ham bags.[10]
On July 17, 2012, the BLA, through its Director, rendered its Decision[11] dismissing SMPFCI's
complaint for lack of merit. First, the BLA held that there could be no trademark infringement
because Foodsphere began using the "PISTA" mark in 2006 and even filed a trademark
application therefor in the same year, while SMPFCI's application for trademark registration
for "FIESTA" was filed and approved only in 2007. SMPFCI, thus, had no cause of
action. Second, SMPFCI's complaint was filed beyond the four (4)-year prescriptive period
prescribed under the Rules and Regulation on Administrative Complaints for Violation of Law
Involving Intellectual Property Rights. Third, the BLA found the testimonies and surveys
adduced in evidence by SMPFCI to be self-serving. Fourth, comparing the competing marks
would not lead to confusion, much less deception of the public. Finally, the BLA ruled that
SMPFCI failed to convincingly prove the presence of the elements of unfair competition. [12]
On September 10, 2013, however, the Office of the Director General partially granted SMPFCI's
appeal, affirming the BLA's ruling on the absence of trademark infringement but finding
Foodsphere liable for unfair competition.[13] The Director General held that one can see the
obvious differences in the marks of the parties. SMPFCI's mark is a composite mark where its
house mark, namely "PURE FOODS," is clearly indicated and is followed by the phrase "FIESTA
HAM" written in stylized font whereas Foodsphere's mark is the word "PISTA" written also in
stylized font. Applying the 'Dominancy Test' and the 'Holistic Test' show that Foodsphere
cannot be held liable for trademark infringement due to the fact that the marks are not
visually or aurally similar and that the glaring differences in the presentation of these marks
will prevent any likely confusion, mistake, or deception to the purchasing public. Moreover,
"PISTA" was duly registered in the IPO, strengthening the position that "PISTA" is not an
infringement of "PURE FOODS FIESTA HAM" for a certificate of registration of a mark is prima
facie evidence of the validity of the registration, the registrant's ownership of the mark, and
of the registrant's exclusive right to use the same.[14] On the other hand, the Director General
found Foodsphere to be guilty of unfair competition for it gave its "PISTA" ham the general
appearance that would likely influence purchasers to believe that it is similar with SMPFCI's
"FIESTA" ham. Moreover, its intention to deceive is inferred from the similarity of the goods as
packed and offered for sale. Thus, the Director General ordered Foodsphere to pay nominal
damages in the amount of P100,000.00 and attorney's fees in the amount of P300,000.00 and
to cease and desist from using the labels, signs, prints, packages, wrappers, receptacles, and
materials used in committing unfair competition, as well as the seizure and disposal thereof.[15]
Both SMPFCI and Foodsphere filed their appeals before the CA via Petitions for Review dated
October 8, 2013[16] and October 29, 2013,[17] respectively. SMPFCI sought a reconsideration of
the Director General's finding that Foodsphere is not guilty of trademark infringement while
Foodsphere faulted said Director General for declaring it guilty of unfair competition.
On March 6, 2014, the CA, Eleventh Division, denied SMPFCI's petition and affirmed the ruling
of the Director General on the absence of trademark infringement. According to the appellate
court, Foodsphere was merely exercising, in good faith, its right to use its duly registered
trademark "PISTA" in the lawful pursuit of its business.[18] Thereafter, in a Decision dated
September 24, 2014, the CA Fourteenth Division likewise denied Foodsphere's petition,
affirming the Director General's finding that Foodsphere was guilty of unfair competition. The
CA held that the elements thereof are present herein. Consequently, it ordered Foodsphere to
pay SMPFCI nominal and exemplary damages as well as attorney' fees. [19] In a Resolution
dated April 8, 2015, however, the CA clarified its September 24, 2014 Decision and resolved to
delete the award of exemplary damages for SMPFCI never prayed for the same. [20]
In a Resolution[21] dated June 13, 2016, the Court, in G.R. No. 215475, denied SMPFCI's
Petition for Review on Certiorari for failure to sufficiently show that the CA, in its Decision
and Resolution, dated March 6, 2014 and November 13, 2014, respectively, finding that
Foodsphere is not liable for trademark infringement, and committed any reversible error in the
challenged decision and resolution as to warrant the exercise of the Court's discretionary
appellate jurisdiction. The Court also found that the issues raised by SMPFCI are factual in
nature.
Meanwhile, on June 8, 2015, both SMPFCI and Foodsphere filed the instant Petitions for
Review on Certiorari docketed as G.R. No. 217781 and 217788, respectively. In G.R. No.
217781, SMPFCI invoked the following argument:
I.
THE HONORABLE COURT OF APPEALS ERRED IN RESOLVING THAT THE AWARD OF

EXEMPLARY DAMAGES BE DELETED FROM THE BODY OF ITS DECISION DATED 24
SEPTEMBER 2014 WHEN SMPFCI'S ENTITLEMENT THERETO IS CLEARLY SUPPORTED NOT
ONLY BY PLEADINGS AND EVIDENCE ON RECORD, BUT ALSO BY THE HONORABLE COURT OF
APPEALS' OWN RATIOCINATIONS FOUND IN THE BODY OF ITS DECISION.
Conversely, G.R. No. 217788, Foodsphere raised the following argument:
I.
THE COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION IN EXCESS OF OR

AMOUNTING TO LACK OF JURISDICTION WHEN IT ISSUED THE ASSAILED DECISION AND
RESOLUTION BEING NOT IN ACCORDANCE WITH LAW OR WITH APPLICABLE DECISIONS OF
THE HONORABLE COURT WHEN IT DECLARED THAT FOODSPHERE WAS GUILTY OF UNFAIR
COMPETITION.
In G.R. No. 217781, SMPFCI clarifies that it assails the April 8, 2015 Resolution of the CA, not
on its finding that Foodsphere was guilty of unfair competition, but only insofar as it deleted
its award of exemplary damages in its September 24, 2014 Decision. According to SMPFCI, it
was a mere mistake that the said Decision failed to state the amount of exemplary damages
and that its dispositive portion failed to award said exemplary damages, merely stating that
"the petition is DENIED, and the Decision x x x of the Director General is
AFFIRMED."[22] SMPFCI asserts that where there is a conflict between the dispositive portion
and the body of the decision, the dispositive portion controls. But where the inevitable
conclusion from the body of the decision is so clear as to show that there was a mistake in
the dispositive portion, the body of the decision will prevail.[23] Here, when the CA held that
"as for exemplary damages, the award thereof was warranted," it is beyond cavil that SMPFCI
is entitled thereto.
Moreover, SMPFCI maintains that the CA ruling that it never prayed for exemplary damages in
the proceedings, its prayer for damages being limited only to actual damages and attorney's
fees, is utterly false for it specifically prayed for the same in several pleadings it filed before
the BLA and the Office of the Director General. Even assuming that it indeed failed to pray for
exemplary damages, SMPFCI alleges that it was still erroneous for the CA to delete the award
of the same. It is well settled that a court may grant relief to a party, even if said party did not
pray for it in his pleadings for a prayer for "other remedies just and equitable under the
premises" is broad enough to justify the extension of a remedy different from that requested.
Thus, in view of the foregoing, coupled with the factual circumstances of the case leading to
the conclusion that Foodsphere is guilty of unfair competition, SMPFCI essentially prays that
the Court: (1) issue a permanent injunction against Foodsphere to prevent it from infringing
the rights of SMPFCI by seizing all products violative of SMPFCI's IP rights and by forfeiting all
properties used in the infringing acts; (2) order Foodsphere to pay SMPFCI the amount of
P27,668,538.38, representing lost income of SMPFCI, P899,294.77 per month in estimated
actual damages, or moderate or temperate damages; (3) order Foodsphere to pay attorney's
fees in the amount of P300,000.00; and (4) order Foodsphere to pay exemplary damages in the
amount of P300,000.00.[24]
In G.R. No. 217788, Foodsphere denied the allegations of unfair competition, denying SMPFCI's
claim that the confusing similarity between the respective packaging of the parties' products
began in 2009 when Foodsphere changed its packaging from a paper box to a paper ham bag,
significantly similar to SMPFCI's paper ham bag. According to Foodsphere, while the packages
were both in the form of bags, their respective trademarks were boldly printed thereon.
Moreover, even prior to SMPFCI's use of the questioned ham bags in 2009, Foodsphere had
already been adopting the image of partly-sliced hams laced with fruits and red color on its
packages.[25] In addition, Foodsphere alleged that any similarity in the general appearance of
the packaging does not, by itself, constitute unfair competition. This is because first,
packaging is not the exclusive ownership of SMPFCI which does not have a patent or
trademark protection therefor. Second, the mere fact of being the first user does not bestow
vested right to use the packaging to the exclusion of everyone else. Third, the circumstance
that the manufacturer has printed its name all over the packaging negates fraudulent intent to
palm off its goods as another's product. Fourth, SMPFCI cannot claim that it has exclusive
right or monopoly to use the colors red and green in its packaging or the image of partly sliced
hams. Fifth, similarity in the packaging does not necessarily constitute "confusing"
similarity. Sixth, the circumstances under which the competing products are sold negates the
likelihood of confusion for consumers are more discerning on the Christmas ham they will
purchase, which is not any ordinary, low priced product. Seventh, SMPFCI failed to prove
likelihood of confusion or intent to deceive on the part of Foodsphere. Finally, Foodsphere
maintained that there was no basis for the CA to award nominal damages and attorney's fees
in view of the absence of any violation of SMPFCI's right.[26]
The petitions are devoid of merit.
With respect to G.R. No. 217781, the. Court finds no reason to reverse the April 8, 2015
Resolution of the CA insofar as it resolved to delete from the body of its September 24, 2014
Decision the award of exemplary damages. SMPFCI said so itself, when there is a conflict
between the dispositive portion or fallo of a decision and the opinion of the court contained
in the text or body of the judgment, the former prevails over the latter. This rule rests on the
theory that the fallo is the final order, while the opinion in the body is merely a statement
ordering nothing. Thus, an order of execution is based on the disposition, not on the body, of
the Decision.[27] Contrary to SMPFCI's assertion, moreover, the Court finds inapplicable the
exception to the foregoing rule which states that the body of the decision will prevail in
instances where the inevitable conclusion from the body of the decision is so clear as to show
that there was a mistake in the dispositive portion.
A cursory perusal of the challenged September 24, 2014 Decision reveals that the mistake lies
not in the fallo or dispositive portion but in the body thereof, the pertinent portions of which
provide:
Having been found guilty of unfair competition, Foodsphere was correctly ordered to pay
nominal damages of P100,000.00. Under Article 2221 of the Civil Code, nominal damages are
recoverable in order to vindicate or recognize the rights of the plaintiff which have been
violated or invaded by the defendant. x x x
As for SMPFCI's claim for lost profit or unrealized income of more than P27 Million, its failure
to properly substantiate. the same left the Office of the Director General without any basis to
award it.
As for exemplary damages, the award thereof was warranted on the strength of In-N-Out
Burger, Inc. v. Sehwani, for correction or example for public good, such as the enhancement of
the protection accorded to intellectual property and the prevention of similar acts of unfair
competition. The award of attorney's fees must likewise be upheld as SMPFCI was compelled
to engage the services of counsel to protect its rights.[28]
As can be gleaned from above, the intention of the CA was merely to affirm the findings of the
Director General insofar as the award of damage was concerned. This was shown in its
statements such as "Foodsphere was correctly ordered to pay nominal damages," "its failure
to properly substantiate the same left the Office of the Director General without any basis to
award it," "as for exemplary damages, the award thereof was warranted," and "the award of
attorney's fees must likewise be upheld." This was also shown when the CA clearly disposed
as follows: "ACCORDINGLY, the petition is DENIED, and the Decision dated September 10,
2013 of the Office of the Director General, AFFIRMED."[29] It can, therefore, be derived, from
the wording of the CA Decision, that it merely intended to adopt the resolution of the Director
General on the award of damages. Consequently, since nowhere in the affirmed Decision did
the Director General award exemplary damages to SMPFCI, for what was awarded was only
nominal damages and attorney's fees, it follows then that the CA likewise did not intend on
awarding the same to SMPFCI. Thus, what controls herein is the fallo.
Besides, it bears stressing that SMPFCI failed to prove its entitlement to exemplary damages.
Article 2233 of the Civil Code provides that exemplary damages cannot be recovered as a
matter of right; the court will decide whether or not they should be adjudicated while Article
2234 thereof provides that while the amount of the exemplary damages need not be proven,
the plaintiff must show that he is entitled to moral, temperate or compensatory damages
before the court may consider the question of whether or not exemplary damages should be
awarded.
Thus, the Court has held, time and again, that exemplary damages may be awarded for as long
as the following requisites are present: (1) they may be imposed, by way of example, only in
addition, among others, to compensatory damages, only after the claimant's right to them has
been established, and cannot be recovered as a matter of right, their determination depending
upon the amount of compensatory damages that may be awarded to the claimant; (2) the
claimant must first establish his right to moral, temperate, liquidated or compensatory
damages; and (3) the act must be accompanied by bad faith or done in a wanton, fraudulent,
oppressive or malevolent manner.[30]
Here, SMPFCI particularly failed to prove its right to moral, temperate, liquidated or
compensatory damages. In its complaint, SMPFCI prayed that Foodsphere be ordered to pay
P27,668,538.38 representing income it would have made if not for the infringement and
P899,294.77 per month in estimated actual damages, representing foregone income in sales
for the continuous use of the "PISTA" mark in connection with the selling, offering for sale and
distribution of its ham product during the pendency of the case. [31] But as the Director General
aptly found, SMPFCI neither adduced sufficient evidence to prove its claim of foregone income
or sales nor presented evidence to show the profit or sales. Thus,.in view of such failure to
prove its right to compensatory damages, as well as to moral and temperate damages, the CA
correctly resolved to delete from the body of its September 24, 2014 Decision the award of
exemplary damages.
As regards G.R. No. 217788, the Court likewise affirms the ruling of the CA, which in turn,
affirmed the findings of the Director General.
Section 168 of the IP Code provides that:

Section 168. Unfair Competition, Rights, Regulation and Remedies. - 168.1. A person who has
identified in the mind of the public the goods he manufactures or deals in, his business or
services from those of others, whether or not a registered mark is employed, has a property
right in the goodwill of the said goods, business or services so identified, which will be
protected in the same manner as other property rights.
168.2. Any person who shall 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, shall be guilty of unfair competition, and shall be
subject to an action therefor.
168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall. be deemed guilty of unfair competition:
(a) Any person, who is selling his goods and gives them the general appearance of goods of
another manufacturer or dealer, either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words thereon, or in any other feature
of their appearance, which would be likely to influence purchasers to believe that the goods
offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or
who otherwise clothes the goods with such appearance as shall deceive the public and
defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent
of any vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs any other means calculated to
induce the false belief that such person is offering the services of another who has identified
such services in the mind of the public; or
(c) Any person who shall make any false statement in the course of trade or who shall commit
any other act contrary to good faith of a nature calculated to discredit the goods, business or
services of another.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis.
(Sec. 29, R.A. No. 166a)
Time and again, the Court has held that unfair competition consists of the passing off (or
palming off) or attempting to pass off upon the public of the goods or business of one person
as the goods or business of another with the end and probable effect of deceiving the public.
Passing off (or palming off) takes place where the defendant, by imitative devices on the
general appearance of the goods, misleads prospective purchasers into buying his
merchandise under the impression that they are buying that of his competitors. In other
words, the defendant gives his goods the general appearance of the goods of his competitor
with the intention of deceiving the public that the goods are those of his competitor.[32] The
"true test," therefore, of unfair competition has thus been "whether the acts of the defendant
have the intent of deceiving or are calculated to deceive the ordinary buyer making his
purchases under the ordinary conditions of the particular trade to which the controversy
relates."[33]
Thus, 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. [34]
In the instant case, the Court finds no error with the findings of the CA and Director General
insofar as the presence of the foregoing elements is concerned. First of all, there exists a
substantial and confusing similarity in the packaging of Foodsphere's product with that of
SMPFCI, which, as the records reveal, was changed by Foodsphere from a paper box to a
paper ham bag that is significantly similar to SMPFCI's paper ham bag. As duly noted by the
Director General and the CA, both packages use paper ham bags as the container for the
hams, both paper ham bags use the red color as the main colors, and both have the layout
design appearing on the bags consisting of a partly sliced ham and fruits on the front and
other ham varieties offered at the back. Thus, Foodsphere's packaging in its entirety, and not
merely its "PISTA" mark thereon, renders the general appearance thereof confusingly similar
with the packaging of SMPFCI's ham, that would likely influence purchasers to believe that
these products are similar, if not the same, as those of SMPFCI.
Second of all, Foodsphere's intent to deceive the public, to defraud its competitor, and to ride
on the goodwill of SMPFCI's products is evidenced by the fact that not only did Foodsphere
switch from its old box packaging to the same paper ham bag packaging as that used by
SMPFCI, it also used the same layout design printed on the same. As the Director General
observed, why, of the millions of terms and combinations of letters, designs, and packaging
available, Foodsphere had to choose those so closely similar to SMPFCI's if there was no
intent to pass off upon the public the ham of SMPFCI as its own with the end and probable
effect of deceiving the public.
At this juncture, it is worthy to note that unfair competition is always a question of fact. There
is no inflexible rule that can be laid down as to what will constitute the same, each case
being, in the measure, a law unto itself. Thus, the question to be determined is whether or not,
as a matter of fact, the name or mark used by the defendant has previously come to indicate
and designate plaintiffs goods, or, to state it in another way, whether defendant, as a matter
of fact, is, by his conduct, passing off defendant's goods as plaintiffs goods or his business as
plaintiffs business.[35] As such, the Court is of the opinion that the case records readily
supports the findings of fact made by the Director General as to Foodsphere's commission of
unfair competition. Settled is the rule that factual findings of administrative agencies are
generally accorded respect and even finality by this Court, if such findings are supported by
substantial evidence, as it is presumed that these agencies have the knowledge and expertise
over matters under their jurisdiction,[36] more so when these findings are affirmed by the Court
of Appeals.[37]
WHEREFORE, premises considered, the instant petitions in G.R. Nos. 217781 and 217788
are DENIED. The assailed Decision dated September 24, 2014 and Resolution dated April 8,
2015 of the Court of Appeals in CA-G.R. SP No. 131945 are hereby AFFIRMED.
SO ORDERED.
Carpio, Senior Associate Justice, (Chairperson), Perlas-Bernabe, Caguioa , and Reyes, Jr., JJ.,
concur.
[1]
Penned by Associate Justice Amy C. Lazaro-Javier, with Associate Justices Mariflor P.
Punzalan Castillo and Zenaida T. Galapate-Laguilles, concurring; rollo (G.R. No. 217781), pp.
48-50.
[2]
Penned by Associate Justice Amy C. Lazaro-Javier, with Associate Justices Mariflor P.
Punzalan Castillo and Zenaida T. Galapate-Laguilles, concurring; id. at 493-516.
Rollo (G.R. No. 217788), at 98-132.

[3]
Id. at 114.
[4]
Id. at 115-117.
[5]
Rollo (G.R. No. 217781), p. 495.

[6]
Id. at 496.
[7]
Id. at 496-497.
[8]
Id. at 498-499.
[9]
Id. at 500.
[10]
Id. at 199-224.
[11]
Id. at 501-502.
[12]
Id. at 379-397.
[13]
Rollo (G.R. No. 217788), pp. 413-414.

[14]
Rollo (G.R. No. 217781), p. 503.

[15]
Id. at 398-426.
[16]
Id. at 427-456.
[17]
Rollo (G.R. No. 217788), p. 423.

[18]
Rollo (G.R. No. 217781), pp. 507-515.

[19]
Id. at 49.
[20]
Rollo (G.R. No. 217788), p. 609.

[21]
Rollo (G.R. No. 217781) p. 21.

[22]
Id. at 22.
[23]
Id. at 23-32.
[24]
Rollo (G.R. No. 217788), pp. 25-30.

[25]
Id. at 30-46.
[26]
The Law Firm of Raymundo A. Armovit v. CA, et al., 614 Phil. 344, 356 (2011).
[27]
Rollo (G.R. No. 217781), p. 514.

[28]
Id. at 513-515.
[29]
Arco Pulp and Paper Co., Inc. v. Lim, 737 Phil. 133, 153 (2014); Mendoza v. Spouses
[30]
Gomez, et al., 736 Phil. 460, 482 (2014).
Rollo (G.R. No. 217781), p. 131.

[31]
Shang Properties Realty Corporation, et al. v. St. Francis Development Corporation , 739
[32]
Phil. 244, 256 (2014).
Id.
[33]
In-N-Out Burger, Inc. v. Sehwani, Incorporated and/or Benita's Frites, Inc. , 595 Phil. 1119,
[34]
1149 (2008).
Levi Strauss (Phils.), Inc. v. Lim, 593 Phil. 435, 457 (2008).
[35]
Espiritu, et al. v. Del Rosario, 745 Phil. 566, 588 (2014).

[36]
Union Bank of the Philippines v. The Honorable Regional Agrarian Reform Officer, et al. ,
[37]
G.R. No. 200369, March 1, 2017.
4. SOCIETE DES PRODUITS, NESTLE, S.A., PETITIONER, VS. PUREGOLD PRICE

CLUB, INC., RESPONDENT.
SECOND DIVISION
[ G.R. No. 217194, September 06, 2017 ]
DECISION
CARPIO, ACTING C.J.:
The Case
Before the Court is a petition for review on certiorari[1] assailing the 15 May 2014
Resolution[2] and the 14 October 2014 Resolution[3] of the Court of Appeals (CA) in CA-G.R. SP
No. 134592.
The Facts
Petitioner Societe des Produits Nestle, S.A. (Nestle) is a corporation organized and existing
under the laws of Switzerland which is engaged in the business of marketing and selling of
coffee, ice cream, chocolates, cereals, sauces, soups, condiment mixes, dairy and non-dairy
products, etc.[4]
Respondent Puregold Price Club, Inc. (Puregold) is a corporation organized under Philippine
law which is engaged in the business of trading goods such as consumer goods on wholesale
or on retail basis.[5]
On 14 June 2007, Puregold filed an application[6] for the registration of the trademark

"COFFEE MATCH" with the Intellectual Property Office (IPO). The registration was filed by
Puregold for use on coffee, tea, cocoa, sugar, artificial coffee, flour and preparations made
from cereals, bread, pastry and confectionery, and honey under Class 30 of the International
Classification of Goods.[7]
On 5 December 2008, Nestle filed an opposition[8] against Puregold's application for

registration. Nestle alleged that it is the exclusive owner of the "COFFEE-MATE" trademark
and
that there is confusing similarity between the "COFFEE-MATE" trademark and Puregold's
"COFFEE MATCH" application.[9] Nestle alleged that "COFFEE-MATE" has been declared an
internationally well-known mark and Puregold's use of "COFFEE MATCH" would indicate a
connection with the goods covered in Nestle's "COFFEE-MATE" mark because of its distinct
similarity. Nestle claimed that it would suffer damages if the application were granted since
Puregold's "COFFEE MATCH" would likely mislead the public that the mark originated from
Nestle.[10]
The Decision of the Bureau of Legal Affairs-Intellectual Property Office
In a Decision[11] dated 16 April 2012, the Bureau of Legal Affairs-Intellectual Property Office

(BLA-IPO) dismissed Nestle's opposition. The BLA-IPO ruled that Nestle's opposition was
defective because the verification and certification against forum shopping attached to
Nestle's opposition did not include a board of directors' resolution or secretary's certificate
stating Mr. Dennis Jose R. Barot's (Barot) authority to act on behalf of Nestle. The BLA-IPO
ruled that the defect in Nestle's opposition was sufficient ground to dismiss. [12]
The BLA-IPO held that the word "COFFEE" as a mark, or as part of a trademark, which is used
on coffee and similar or closely related goods, is not unique or highly distinctive. Nestle
combined the word "COFFEE" with the word "-MATE," while Puregold combined the word
"COFFEE" with the word "MATCH." The BLA-IPO ruled that while both Nestle's "-MATE" and
Puregold's "MATCH" contain the same first three letters, the last two in Puregold's mark
rendered a visual and aural character that makes it easily distinguishable from Nestle's
"COFFEE-MATE."[13] Also, the letter "M" in Puregold's mark is written as an upper case
character and the eyes of a consumer would not be confused or deceived by Nestle's
"COFFEE-MATE" where the letter "M" is written in lower case. Consequently, the BLA-IPO held
that the consumer cannot mistake the mark and the products of Nestle as those of Puregold's.
[14]
The dispositive portion of the Decision states:

WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the
filewrapper of Trademark Application Serial No. 4-2007-006134 be returned, together with a
copy of this DECISION, to the Bureau of Trademarks for information and appropriate action.
SO ORDERED.[15]
On 11 June 2012, Nestle filed an appeal[16] with the Office of the Director General of the
Intellectual Property Office (ODG-IPO).
The Decision of the ODG-IPO
In a Decision[17] dated 7 February 2014, the Office of the ODG-IPO dismissed Nestle's appeal.
The ODG-IPO held that Barot's authority to sign the certification against forum shopping was
not sufficiently proven by Nestle. The ODG-IPO ruled that Barot's authority, which was
contained in the power of attorney executed, should not be given weight unless accompanied
by proof or evidence of his authority from Nestle.[18]
The ODG-IPO held that the competing marks are not confusingly similar and that consumers
would unlikely be deceived or confused from Puregold's use of "COFFEE MATCH."
The ODG-IPO ruled that the common feature of "COFFEE" between the two marks cannot be
exclusively appropriated since it is generic or descriptive of the goods in question.
The ODG-IPO ruled that there is no visual, phonetic, or conceptual similarity between the two
marks. Visual similarity is not present in the two marks, as Nestle's mark consists of a
hyphenated word with the paired word being "MATE" while Puregold's mark consists of the
paired word "MATCH." While it is true that the first three letters "M," "A," and "T" are common
in the two marks, Puregold's mark, which are two separate words, with the capitalization of
the letters "C" and "M," is readily apparent when "COFFEE MATCH" and "COFFEE-MATE" are
compared side by side.[19]
The dispositive portion of the Decision states:
WHEREFORE, premises considered, the appeal is hereby DISMISSED. Let a copy of this
Decision and the records of this case be furnished and returned to the Director of Bureau of
Legal Affairs for appropriate action. Further, let also the Director of the Bureau of Trademarks
and the library of the Documentation, Information and Technology Transfer Bureau be
furnished a copy of this Decision for information, guidance, and records purposes.
SO ORDERED.[20]
On 14 April 2014, Nestle filed a Petition for Review[21] with the Court of Appeals.
The Decision of the CA
In a Resolution dated 15 May 2014, the CA dismissed Nestle's petition for review on
procedural grounds.
The Resolution states:

A perusal of the Petition for Review shows that:
1. the title thereof does not bear the name of party respondent Puregold Price Club, Inc.
2. there is no board resolution and/or secretary's certificate to prove the authority of Dennis
Jose R. Barot to file the petition and to sign the Verification/Certification of Non-Forum
Shopping on behalf of petitioner-corporation; and
3. certified true copies of material [portions] of the record which were mentioned therein were
not attached, such as respondent's trademark application (rollo, p. 12), petitioner's Opposition
thereto, Reply, the parties' respective position papers, petitioner's appeal, respondent's
Comment, the parties' respective memoranda, etc.
The above considering, the Court RESOLVES to DISMISS the petition outright. [22]
On 13 June 2014, Nestle filed a Motion for Reconsideration [23] which was denied by the CA on
14 October 2014.[24] The Resolution of the CA states:
We DENY the Motion for Reconsideration because it is without merit.
The petitioner filed the Petition beyond the 15-day reglementary period.
Under Rule 43, Section 4 of the Rules of Court, a party may file an appeal to this Court from
quasi-judicial bodies like the Intellectual Property Office, within 15 days from receipt of the
assailed judgment, order, or resolution.
Petitioner's counsel of record before the Intellectual Property Office ("IPO"), the Sapalo Velez
Bundang & Bulilan Law Offices ("SVBB Law Offices") received a copy of the assailed Decision
on 19 February 2014. Thus, petitioner had until 7 March 2014 to appeal. While the Bengzon
Negre & Untalan Law Offices ("Bengzon Law Offices") entered its appearance before the IPO,
no evidence was submitted before this Court showing that the Bengzon Law Offices was
properly substituted as petitioner's counsel in place of SVBB Law Offices (petitioner's counsel
of record). Thus, the 15-day reglementary period started to run from the date SVBB Law
Offices received a copy of the Decision.
Clearly, when petitioner filed the Motion for Extension on 27 March 2014, and the Petition on
14 April 2014, the reglementary period had already lapsed.
Further, the petitioner obstinately refuses to cure the procedural infirmities we observed in
the Resolution of 15 May 2014.
SO ORDERED.[25]
The Issues
Nestle presented the following issues in this petition:

1. The Honorable Court of Appeals erred in dismissing petitioner's motion for reconsideration
upon an erroneous appreciation of certain antecedent facts, and similarly erred in dismissing
the petition for review on procedural grounds.
2. There is merit to the substantive issues raised by petitioner, which deserves to be given
due course and a final ruling.[26]
The Ruling of this Court
We deny the petition.
Before discussing the substantive issues, we shall first discuss the procedural issues in this
case.
Nestle filed its petition for review within the period granted by the Court of Appeals.
The CA dismissed Nestle's petition for review on the ground that Nestle filed its petition for
review after the 15-day reglementary period required by Section 4, Rule 43 of the Rules of
Court.
The CA is wrong.
Section 4, Rule 43 of the Rules of Court states:

Section 4. Period of appeal. — The appeal shall be taken within fifteen (15) days from notice
of the award, judgment, final order or resolution, or from the date of its last publication, if
publication is required by law for its effectivity, or of the denial of petitioner's motion for new
trial or reconsideration duly filed in accordance with the governing law of the court or
agency a quo. Only one (1) motion for reconsideration shall be allowed. Upon proper motion
and the payment of the full amount of the docket fee before the expiration of the reglementary
period, the Court of Appeals may grant an additional period of fifteen (15) days only within
which to file the petition for review. No further extension shall be granted except for the most
compelling reason and in no case to exceed fifteen (15) days.
During the proceedings in the ODG-IPO, Nestle substituted its counsel, Sapalo, Velez, Bundang
and Bulilan Law Offices, with Bengzon, Negre and Untalan Law Offices (Nestle's substituted
counsel). On 20 September 2013, Nestle's substituted counsel entered its appearance in the
ODG-IPO.[27] In an Order[28] dated 1 October 2013, the ODG-IPO noted the appearance of
Nestle's substituted counsel and included their appearance in the records of the case, to wit:
Wherefore, the APPEARANCE is hereby noted and included in the records. Accordingly, let
copies of all pleadings, orders, notices and communications, be sent to the aforementioned
address.
SO ORDERED.[29]
The Decision of the ODG-IPO was received by Nestle's substituted counsel on 14 March 2014.
On 27 March 2014, within the 15-day reglementary period provided for by Section 4 of Rule 43,
Nestle filed a Motion for Extension of Time to file Verified Petition for Review [30] (motion for
extension) with the CA. In a Resolution[31] dated 3 April 2014, the CA granted Nestle's motion
for extension and gave Nestle until 13 April 2014 to file its petition for review. The resolution
states:
The Court GRANTS petitioner's Motion for Extension of Time to File Verified Petition for
Review and gives petitioner until April 13, 2014 within which to do so. [32]
Since 13 April 2014 fell on a Sunday, Nestle had until 14 April 2014, which was the next
working day, within which to file the petition for review. Nestle did file the petition for review
with the CA on 14 April 2014. Accordingly, the CA committed a grave error when it ruled that
Nestle's petition for review was filed beyond the prescribed period.
Nestle failed to properly execute a certification against forum shopping as required by Section
5, Rule 7 of the Rules of Court.
Section 5, Rule 7 of the Rules of Court provides:

Section 5. Certification against forum shopping. — The plaintiff or principal party shall certify
under oath in the complaint or other initiatory pleading asserting a claim for relief, or in a
sworn certification annexed thereto and simultaneously filed therewith: (a) that he has not
theretofore commenced any action or filed any claim involving the same issues in any court,
tribunal or quasi-judicial agency and, to the best of his knowledge, no such other action or
claim is pending therein; (b) if there is such other pending action or claim, a complete
statement of the present status thereof; and (c) if he should thereafter learn that the same or
similar action or claim has been filed or is pending, he shall report that fact within five (5)
days therefrom to the court wherein his aforesaid complaint or initiatory pleading has been
filed.
Failure to comply with the foregoing requirements shall not be curable by mere amendment of
the complaint or other initiatory pleading but shall be cause for the dismissal of the case
without prejudice, unless otherwise provided, upon motion and after hearing. The submission
of a false certification or non-compliance with any of the undertakings therein shall constitute
indirect contempt of court, without prejudice to the corresponding administrative and criminal
actions. If the acts of the party or his counsel clearly constitute willful and deliberate forum
shopping, the same shall be ground for summary dismissal with prejudice and shall constitute
direct contempt, as well as a cause for administrative sanctions. (Emphasis supplied)
In Zulueta v. Asia Brewery, Inc.,[33] this Court ruled that the requirements under the Rules of
Court involving the certification against forum shopping apply both to natural and juridical
persons, to wit: "[t]he requirement that the petitioner should sign the certificate of non-forum
shopping applies even to corporations, considering that the mandatory directives of the
Circular and the Rules of Court make no distinction between natural and juridical persons." [34]
In Fuentebella v. Castro,[35] this Court held that the certification against forum shopping must
be signed by the principal party. In case the principal party cannot sign, the one signing on his
or her behalf must have been duly authorized, to wit: "the petitioner or the principal party must
execute the certification against forum shopping. The reason for this is that the principal party
has actual knowledge whether a petition has previously been filed involving the same case or
substantially the same issues. If, for any reason, the principal party cannot sign the petition,
the one signing on his behalf must have been duly authorized." [36]
Juridical persons, including corporations, that cannot personally sign the certification against
forum shopping, must act through an authorized representative. The exercise of corporate
powers including the power to sue is lodged with the board of directors which acts as a body
representing the stockholders. For corporations, the authorized representative to sign the
certification against forum shopping must be selected or authorized collectively by the board
of directors. In Eslaban, Jr. v. Vda. de Onorio,[37] this Court ruled that if the real party in
interest is a corporation, an officer of the corporation acting alone has no authority to sign the
certification against forum shopping. An officer of the corporation can only validly sign the
certification against forum shopping if he or she is authorized by the board of directors
through a board resolution or secretary's certificate. In Gonzales v. Climax Mining Ltd.,[38] this
Court ruled that a board resolution authorizing a corporate officer to execute the certification
against forum shopping is a necessary requirement under the Rules. A certification signed by
a person who was not duly authorized by the board of directors renders the petition for review
subject to dismissal.[39]
The authority of the representative of a corporation to sign the certification against forum
shopping originates from the board of directors through either a board of directors' resolution
or secretary's certificate which must be submitted together with the certification against
forum shopping. In Zulueta, this Court declared invalid a petition for review with a
certification against forum shopping signed by the party's counsel which was not supported by
a board resolution or secretary's certificate proving the counsel's authority. This Court
dismissed the case and held: "[t]he signatory in the Certification of the Petition before the CA
should not have been respondents' retained counsel, who would not know whether there were
other similar cases of the corporation. Otherwise, this requirement would easily be
circumvented by the signature of every counsel representing corporate parties." [40] Likewise,
in Eslaban, this Court held that a certification signed by counsel alone is defective and
constitutes a valid cause for the dismissal of the petition.[41]
Nestle, itself, acknowledged in this petition the absence of a board resolution or secretary's
certificate issued by the board of directors of Nestle to prove the authority of Barot to sign the
certification against forum shopping on behalf of Nestle, to wit: "[t]hus, while there is no
board resolution and/or secretary's certificate to prove the authority of Dennis Jose R. Barot to
file the petition and Verification/Certification of Non-Forum Shopping on behalf of petitioner-
corporation, there is a Power of Attorney evidencing such authority."[42] The power of attorney
submitted by Nestle in favor of Barot was signed by Celine Jorge. However, the authority of
Celine Jorge to sign the power of attorney on behalf of Nestle, allowing Barot to represent
Nestle, was not accompanied by a board resolution or secretary's certificate from Nestle
showing that Celine Jorge was authorized by the board of directors of Nestle to execute the
power of attorney in favor of Barot. In Development Bank of the Philippines v. Court of
Appeals,[43] this Court held that the failure to attach a copy of a board resolution proving the
authority of the representative to sign the certification against forum shopping was fatal to its
petition and was sufficient ground to dismiss since the courts are not expected to take
judicial notice of board resolutions or secretary's certificates issued by corporations, to wit:
What petitioners failed to explain, however, is their failure to attach a certified true copy of
Resolution No. 0912 to their petition for certiorari in CA-G.R. SP No. 60838. Their omission is
fatal to their case. Courts are not, after all, expected to take judicial notice of corporate board
resolutions or a corporate officer's authority to represent a corporation. To be sure,
petitioners' failure to submit proof that Atty. Demecillo has been authorized by the DBP to file
the petition is a "sufficient ground for the dismissal thereof." [44] (Emphasis supplied)
Accordingly, the CA did not err in ruling that the petition for review should be dismissed due to
the failure of Nestle to comply with the proper execution of the certification against forum
shopping required by Section 5, Rule 7 of the Rules of Court.
Puregold's mark may be registered.
A trademark is any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods to identify
and distinguish them from those manufactured, sold, or dealt by others. [45] Section 123 of
Republic Act No. 8293[46] (RA 8293) provides for trademarks which cannot be registered, to
wit:
Sec. 123. Registrability. -
123.1 A mark[47] cannot be registered if it:
xxxx
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines to be well- known internationally and
in the Philippines, whether or not it is registered here, as being already the mark of a person
other than the applicant for registration, and used for identical or similar goods or services:
Provided, That in determining whether a mark is well-known, account shall be taken of the
knowledge of the relevant sector of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a result of the promotion of the
mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered
well-known in accordance with the preceding paragraph, which is registered in the Philippines
with respect to goods or services which are not similar to those with respect to which
registration is applied for: Provided, That use of the 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;
(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or
geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic for the goods or services that they seek to
identify;
x x x x (Emphasis supplied)
In Coffee Partners, Inc. v. San Francisco & Roastery, Inc.,[48] this Court held that the
gravamen of trademark infringement is the likelihood of confusion. There is no absolute
standard for the likelihood of confusion. Only the particular, and sometimes peculiar,
circumstances of each case can determine its existence. Thus, in infringement cases,
precedents must be evaluated in the light of each particular case. [49]
In determining similarity or likelihood of confusion, our jurisprudence has developed two tests:
the dominancy test and the holistic test.[50] The dominancy test focuses on the similarity of
the prevalent features of the competing trademarks that might cause confusion and
deception. If the competing trademark contains the main, essential, and dominant features of
another, and confusion or deception is likely to result, likelihood of confusion exists. The
question is whether the use of the marks involved is likely to cause confusion or mistake in
the mind of the public or to deceive consumers.[51] In McDonald's Corporation v. L.C. Big Mak
Burger, Inc.,[52] this Court gave greater weight to the similarity of the appearance of the
product arising from the adoption of the dominant features of the registered mark, to wit:
"[c]ourts will consider more the aural and visual impressions created by the marks in the
public mind, giving little weight to factors like prices, quality, sales outlets and market
segments."[53] The dominancy test is now incorporated into law in Section 155.1 of RA 8293
which states:
SECTION 155. Remedies; Infringement. — Any person who shall, without the consent of the
owner of the registered mark:
155.1 Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a
registered mark or the same container or a dominant feature thereof in connection with the
sale, offering for sale, distribution, advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any goods or services on or in connection
with which such use is likely to cause confusion, or to cause mistake, or to deceive;
(Emphasis supplied)
In contrast, the holistic test entails a consideration of the entirety of the marks as applied to
the products, including the labels and packaging, in determining confusing similarity. The
discerning eye of the observer must focus not only on the predominant words but also on the
other features appearing on both marks in order that the observer may draw his conclusion
whether one is confusingly similar to the other.[54]
The word "COFFEE" is the common dominant feature between Nestle's mark "COFFEE-MATE"
and Puregold's mark "COFFEE MATCH." However, following Section 123, paragraph (h) of RA
8293 which prohibits exclusive registration of generic marks, the word "COFFEE" cannot be
exclusively appropriated by either Nestle or Puregold since it is generic or descriptive of the
goods they seek to identify.
In Asia Brewery, Inc. v. Court of Appeals,[55] this Court held that generic or descriptive words
are not subject to registration and belong to the public domain. Consequently, we must look at
the word or words paired with the generic or descriptive word, in this particular case "-MATE"
for Nestle's mark and "MATCH" for Puregold's mark, to determine the distinctiveness and
registrability of Puregold's mark "COFFEE MATCH."
We agree with the findings of the BLA-IPO and ODG-IPO. The distinctive features of both marks
are sufficient to warn the purchasing public which are Nestle's products and which are
Puregold's products.
While both "-MATE" and "MATCH" contain the same first three letters, the last two letters in
Puregold's mark, "C" and "H," rendered a visual and aural character that made it easily
distinguishable from Nestle's mark.
Also, the distinctiveness of Puregold's mark with two separate words with capital letters "C"
and "M" made it distinguishable from Nestle's mark which is one word with a hyphenated
small letter "-m" in its mark.
In addition, there is a phonetic difference in pronunciation between Nestle's "-MATE" and

Puregold's "MATCH."
As a result, the eyes and ears of the consumer would not mistake Nestle's product for
Puregold's product.
Accordingly, this Court sustains the findings of the BLA-IPO and ODG-IPO that the likelihood of
confusion between Nestle's product and Puregold's product does not exist and upholds the
registration of Puregold's mark.
WHEREFORE, we DENY the petition. We AFFIRM the 15 May 2014 Resolution and the 14

October 2014 Resolution of the Court of Appeals in CA-G.R. SP No. 134592.
SO ORDERED.
Peralta, Perlas-Bernabe, Caguioa, and Reyes, Jr., JJ., concur.

Rollo, pp. 12-46. Under Rule 45 of the Rules of Court.
[1]
[2]
Id. at 62. Signed by Division Clerk of Court Atty. Celedonia M. Ogsimer.
[3]
Id. at 64-67. Penned by Associate Justice Nina G. Antonio-Valenzuela, with Associate
Justices Apolinario D. Bruselas, Jr. and Eduardo B. Peralta, Jr. concurring.
[4]
Id. at 189.
[5]
Id. at 230.
[6]
Id. at 218-220.
[7]
Id. at 218.
[8]
Id. at 68-76.
[9]
Id. at 70-71.
[10]
Id. at 72-73.
[11]
Id. at 294-301.
[12]
Id. at 299.
[13]
Id. at 300.
[14]
Id.
[15]
Id. at 301.
[16]
Id. at 302-331.
[17]
Id. at 412-418.
[18]
Id. at 415.
[19]
Id. at 417.
[20]
Id. at 418.
[21]
Id. at 425-455.
[22]
Id. at 62.
[23]
Id. at 480-492.
[24]
Id. at 64-67.
[25]
Id. at 65-66.
[26]
Id. at 17-18.
[27]
Id. at 404-405.
[28]
Id. at 410-411.
[29]
Id. at 410.
[30]
Id. at 419-422.
[31]
Id. at 424. Signed by Division Clerk of Court Atty. Celedonia M. Ogsimer.
[32]
Id.
[33]
406 Phil. 543 (2001).
[34]
Id. at 553.
[35]
526 Phil. 668 (2006).
[36]
Id. at 675.
[37]
412 Phil. 667 (2001).
[38]
492 Phil. 682 (2005).
[39]
Id. at 691.
[40]
Supra note 33, at 554.
[41]
Supra note 37, at 675.
Rollo, p. 23.
[42]
[43]
483 Phil. 216 (2004).
[44]
Id. at 221.
Dermaline, Inc. v. Myra Pharmaceuticals, Inc., 642 Phil. 503 (2010).

[45]
[46]
AN ACT PRESCRIBING THE INTELLECTUAL PROPERTY CODE AND ESTABLISHING THE
INTELLECTUAL PROPERTY OFFICE, PROVIDING FOR ITS POWERS AND FUNCTIONS, AND FOR
OTHER PURPOSES.
[47]
A visible sign capable of distinguishing goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked container of goods.
[48]
628 Phil. 13 (2010).
Id. at 23, citing Philip Morris. Inc. v. Fortune Tobacco Corporation, G.R. No. 158589, 27
[49]
June 2006, 493 SCRA 333.
[50]
Id. at 23-24.
[51]
Id. at 24.
[52]
480 Phil. 402 (2004).
[53]
Id. at 434.
[54]
Id.
[55]
296 Phil. 298 (1993).
5. MANG INASAL PHILIPPINES, INC., PETITIONER, VS. IFP

MANUFACTURING CORPORATION, RESPONDENT.
THIRD DIVISION
[ G.R. No. 221717, June 19, 2017 ]
DECISION
VELASCO JR., J.:
Before us is a Petition for Review on Certiorari under Rule 45 of the Rules of Court of the
Resolutions dated June 10, 2015[1] and December 2, 2015[2] of the Court of Appeals (CA) in CA-
G.R. SP No. 139020.
The Facts
The Trademark Application and the Opposition
Respondent IFP Manufacturing Corporation is a local manufacturer of snacks and beverages.
On May 26, 2011, respondent filed with the Intellectual Property Office (IPO) an
application[3] for the registration of the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark"
(OK Hotdog Inasal mark) in connection with goods under Class 30 of the Nice Classification.
[4]
The said mark, which respondent intends to use on one of its curl snack products, appears
as follows:
(See Image)
The application of respondent was opposed[5] by petitioner Mang Inasal Philippines, Inc.
Petitioner is a domestic fast food company and the owner of the mark "Mang Inasal, Home of
Real Pinoy Style Barbeque and Device" Mang Inasal mark) for services under Class 43 of the
Nice Classification.[6] The said mark, which was registered with the IPO in 2006[7] and had
been used by petitioner for its chain of restaurants since 2003, [8] consists of the following
insignia:
Petitioner, in its opposition, contended that the registration of respondent's OK Hotdog Inasal
mark is prohibited under Section 123.1(d)(iii) of Republic Act No. (RA) 8293. [9] Petitioner
averred that the OK Hotdog Inasal mark and the Mang Inasal mark share similarities—both as
to their appearance and as to the goods or services that they represent—which tend to
suggest a false connection or association between the said marks and, in that regard, would
likely cause confusion on the part of the public.[10] As petitioner explained:
1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Both marks feature the
same dominant element—i.e., the word "INASAL"—printed and stylized in the exact same
manner, viz:
a. In both marks, the word "INASAL" is spelled using the same font style and red
color;
b. In both marks, the word "INASAL" is placed inside the same black outline and
yellow background; and
c. In both marks, the word "INASAL" is arranged in the same staggered format.
2. The goods that the OK Hotdog Inasal mark is intended to identify (i.e., curl snack
products) are also closely related to the services represented by the Mang Inasal mark (i.e.,
fast food restaurants). Both marks cover inasal or inasal-flavored food products.
Petitioner's opposition was referred to the Bureau of Legal Affairs (BLA) of the IPO for hearing
and disposition.
Decisions of the IPO-BLA and the IPO-DG
On September 19, 2013, after due proceedings, the IPO-BLA issued a Decision [11] dismissing
petitioner's opposition. The dispositive portion of the Decision reads:
WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the

filewrapper [sic] of Trademark Application Serial No. 4-2011-006098 be returned, together with
a copy of this Decision, to the Bureau of Trademarks for further information and appropriate
action.
SO ORDERED.
Aggrieved, petitioner appealed the Decision of IPO-BLA to the Director General (DG) of the IPO.
[12]
On December 15, 2014, the IPO-DG rendered a Decision[13] dismissing the appeal of

petitioner. The fallo of the Decision accordingly reads:
Wherefore, premises considered, the appeal is hereby dismissed. Let a copy of this Decision
be furnished to the Director ofBureau ofLegal Affairs and the Director of Bureau of Trademarks
for their appropriate action and information. Further, let a copy of this Decision be furnished to
the library ofthe Documentation, Information and Technology Transfer Bureau for records
purposes.
SO ORDERED.
Both the IPO-BLA and the IPO-DG were not convinced that the OK Hotdog Inasal mark is
confusingly similar to the Mang Inasal mark. They rebuffed petitioner's contention, thusly:
1. The OK Hotdog Inasal mark is not similar to the Mang Inasal mark. In terms of
appearance, the only similarity between the two marks is the word "INASAL." However,
there are other words like "OK," "HOTDOG," and "CHEESE" and images like that of curls
and cheese that are found in the OK Hotdog Inasal mark but are not present in the Mang
Inasal mark.[14]
In addition, petitioner cannot prevent the application of the word "INASAL" in the OK
Hotdog Inasal mark. No person or entity can claim exclusive right to use the
word "INASAL" because it is merely a generic or descriptive word that means barbeque or
barbeque products.[15]
2. Neither can the underlying goods and services of the two marks be considered as
closely related. The products represented by the two marks are not competitive and are
sold in different channels of trade. The curl snack products of the OK Hotdog Inasal mark
are sold in sari-sari stores, grocery stores and other small distributor outlets, whereas the
food products associated with the Mang Inasal mark are sold in petitioner's restaurants. [16]
Undeterred, petitioner appealed to the CA.
Resolutions of the CA and the Instant Appeal
On June 10, 2015, the CA issued a Resolution[17] denying the appeal of petitioner. Petitioner
filed a motion for reconsideration, but this too was denied by the CA through its
Resolution[18] dated December 2, 2015. The CA, in its Resolutions, simply agreed with the
ratiocinations of the IPO-BLA and IPO-DG.
Hence, the instant appeal.
Here, petitioner prays for the reversal of the CA Resolutions. Petitioner maintains that the OK
Hotdog Inasal mark is confusingly similar to the Mang Inasal mark and insists that the
trademark application of respondent ought to be denied for that reason.
Our Ruling
We have examined the OK Hotdog Inasal and Mang Inasal marks under the lens of pertinent
law and jurisprudence. And, through it, we have determined the justness of petitioner's claim.
By our legal and jurisprudential standards, the respondent's OK Hotdog Inasal mark is, indeed,
likely to cause deception or confusion on the part of the public. Hence, contrary to what the
IPO-BLA, IPO-DG, and the CA had ruled, the respondent's application should have been denied.
We, therefore, grant the appeal.
The Proscription: Sec. 123.1 (d)(iii) of RA 8293
A mark that is similar to a registered mark or a mark with an earlier filing or priority date
(earlier mark) and which is likely to cause confusion on the part of the public cannot be
registered with the IPO. Such is the import of Sec. 123.1(d)(iii) of RA 8293:
SECTION 123. Registrability. -
123. 1. A mark cannot be registered if it:

xxxx
d. x x x:
i. xxx
ii. xxx
iii. ...nearly resembles [a registered mark belonging to a different proprietor or a mark with
an earlier filing or priority date] as to be likely to deceive or cause confusion.
The concept of confusion, which is at the heart of the proscription, could either refer
to confusion of goods or confusion of business. In Skechers U.S.A., Inc. v. Trendworks
International Corporation,[19] we discussed and differentiated both types of confusion, as
follows:
Relative to the question on confusion of marks and trade names, jurisprudence has noted two
(2) types of confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily
prudent purchaser would be induced to purchase one product in the belief that he was
purchasing the other; and (2) confusion of business (source or origin confusion), where,
although the goods of the parties are different, the product, the mark of which registration is
applied for by one party, is such as might reasonably be assumed to originate with the
registrant of an earlier product, and the public would then be deceived either into that belief
or into the belief that there is some connection between the two parties, though inexistent.
Confusion, in either of its forms, is, thus, only possible when the goods or services covered by
allegedly similar marks are identical, similar or re1ated in some manner.[20]
Verily, to fall under the ambit of Sec. 123.1(d)(iii) and be regarded as likely to deceive or cause
confusion upon the purchasing public, a prospective mark must be shown to meet two (2)
minimum conditions:
1. The prospective mark must nearly resemble or be similar to an earlier mark; and
2. The prospective mark must pertain to goods or services that are either identical,
similar or related to the goods or services represented by the earlier mark.
The rulings of the IPO-BLA, IPO-DG, and the CA all rest on the notion that the OK Hotdog Inasal
mark does not fulfill both conditions and so may be granted registration.
We disagree.
II
The OK Hotdog Inasal Mark Is Similar to the Mang Inasal Mark
The first condition of the proscription requires resemblance or similarity between a

prospective mark and an earlier mark Similarity does not mean absolute identity of marks.
[21]
To be regarded as similar to an earlier mark, it is enough that a prospective mark be a
colorable imitation of the former.[22] Colorable imitation denotes such likeness in form,
content, words, sound, meaning, special arrangement or general appearance of one mark with
respect to another as would likely mislead an average buyer in the ordinary course of
purchase.[23]
In determining whether there is similarity or colorable imitation between two marks,

authorities employ either the dominancy test or the holistic test.[24] In Mighty Corporation v.
E. & J. Gallo Winery,[25] we distinguished between the two tests as follows:
The Dominancy Test focuses on the similarity of the prevalent features of the competing

trademarks which might cause confusion or deception, and thus infringement. If the
competing trademark contains the main, essential or dominant features of another, and
confusion or 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 is whether the use of the marks involved is likely to cause confusion or mistake
in the mind of the public or deceive purchasers.
On the other hand, the Holistic Test requires that the entirety of the marks in question be
considered in resolving confusing similarity. Comparison of words is not the only determining
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. (citations omitted and emphasis supplied)
There are currently no fixed rules as to which of the two tests can be applied in any given
case.[26] However, recent case law on trademark seems to indicate an overwhelming judicial
preference towards applying the dominancy test.[27] We conform.
Our examination of the marks in controversy yielded the following findings:
1. The petitioner's Mang Inasal mark has a single dominant feature—the

word "INASAL" written in a bold red typeface against a black outline and yellow
background with staggered design. The other perceptible elements of the mark—such as
the word "MANG" written in black colored font at the upper left side of the mark and the
phrase "HOME OF REAL PINOY STYLE BARBEQUE" written in a black colored stylized font
at the lower portion of the mark—are not as visually outstanding as the mentioned feature.
2. Being the sole dominant element, the word "INASAL," as stylized in the Mang Inasal
mark, is also the most distinctive and recognizable feature of the said mark.
3. The dominant element "INASAL," as stylized in the Mang Inasal mark, is different

from the term "inasaf' per se. The term "inasal" per se is a descriptive term that cannot
be appropriated. However, the dominant element "INASAL," as stylized in the Mang Inasal
mark, is not. Petitioner, as the registered owner of the Mang Inasal mark, can claim
exclusive use of such element.
4. The respondent's OK Hotdog Inasal mark, on the other hand, has three (3) dominant
features: (a) the word "INASAL" written in a bold red typeface against a black and yellow
outline with staggered design; (b) the word "HOTDOG" written in green colored font; and
(c) a picture of three pieces of curls. Though there are other observable elements in the
mark—such as the word "OK" written in red colored font at the upper left side of the mark,
the small red banner overlaying the picture of the curls with the words "CHEESE HOTDOG
FLAVOR" written on it, and the image of a block of cheese beside the picture of the curls—
none of those are as prevalent as the two features aforementioned.
5. The dominant element "INASAL" in the OK Hotdog Inasal mark is exactly the same as
the dominant element "NASAL" in the Mang Inasal mark. Both elements in both marks are
printed using the exact same red colored font, against the exact same black outline and
yellow background and is arranged in the exact same staggered format.
6. Apart from the element "INASAL," there appear no other perceivable similarities

between the two marks.
Given the foregoing premises, and applying the dominancy test, we hold that the OK Hotdog
Inasal mark is a colorable imitation of the Mang Inasal mark.
First. The fact that the conflicting marks have exactly the same dominant element is key. It is
undisputed that the OK Hotdog Inasal mark copied and adopted as one of its dominant
features the "INASAL" element of the Mang Inasal mark. Given that the "INASAL" element
is, at the same time, the dominant and most distinctive feature of the Mang Inasal mark, the
said element's incorporation in the OK Hotdog Inasal mark, thus, has the potential to project
the deceptive and false impression that the latter mark is somehow linked or associated with
the former mark.
Second. The differences between the two marks are trumped by the
overall impression created by their similarity. The mere fact that there are other elements in
the OK Hotdog Inasal mark that are not present in the Mang Inasal mark actually does little to
change the probable public perception that both marks are linked or associated. It is worth
reiterating that the OK Hotdog Inasal mark actually brandishes a literal copy of the most
recognizable feature of the Mang Inasal mark. We doubt that an average buyer catching a
casual glimpse of the OK Hotdog Inasal mark would pay more attention to the peripheral
details of the said mark than it would to the mark's more prominent feature, especially when
the same invokes the distinctive feature of another more popular brand.
All in all, we find that the OK Hotdog Inasal mark is similar to the Mang Inasal mark.
III
The Goods for which the Registration of the

OK Hotdog Inasal Mark Is Sought Are Related to the
Services Being Represented by the Mang Inasal Mark
The second condition of the proscription requires that the prospective mark pertain to goods
or services that are either identical, similar or related to the goods or services represented by
the earlier mark. While there can be no quibble that the curl snack product for which the
registration of the OK Hotdog Inasal mark is sought cannot be considered as identical or
similar to the restaurant services represented by the Mang Inasal mark, there is ample reason
to conclude that the said product and services may nonetheless be regarded as related to
each other.
Related goods and services are those that, though non-identical or non-similar, are so logically
connected to each other that they may reasonably be assumed to originate from one
manufacturer or from economically-linked manufacturers.[28] In determining whether goods or
services are related, several factors may be considered. Some of those factors recognized in
our jurisprudence are:[29]
1. the business (and its location) to which the goods belong;
2. the class of product to which the goods belong;
3. the product's quality, quantity, or size, including the nature of the package, wrapper or
container;
4. the nature and cost of the articles;
5. the descriptive properties, physical attributes or essential characteristics with

reference to their form, composition, texture or quality;
6. the purpose of the goods;
7. whether the article is bought for immediate consumption, that is, day-to-day household
items;
8. the fields of manufacture;
9. the conditions under which the article is usually purchased, and
10. the channels of trade through which the goods flow, how they are distributed,
marketed, displayed and sold.
Relative to the consideration of the foregoing factors, however, Mighty

Corporation[30] significantly imparted:
The wisdom of this approach is its recognition that each trademark infringement case
presents its own unique set of facts. No single factor is preeminent, nor can the presence or
absence of one determine, without analysis of the others, the outcome of an infringement suit.
Rather, the court is required to sift the evidence relevant to each of the criteria. This requires
that the entire panoply of elements constituting the relevant factual landscape be
comprehensively examined. It is a weighing and balancing process. With reference to this
ultimate question, and from a balancing of the determinations reached on all of the factors, a
conclusion is reached whether the parties have a right to the relief sought.
A very important circumstance though is whether there exists a likelihood that an appreciable
number of ordinarily prudent purchasers will be misled, or simply confused, as to the source of
the goods in question. The "purchaser" is not the "completely unwary consumer" but is the
"ordinarily intelligent buyer" considering the type of product involved he is 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. (citations
omitted and emphasis supplied)
Mindful of the foregoing precepts, we hold that the curl snack product for which the
registration of the OK Hotdog Inasal mark is sought is related to the restaurant services
represented by the Mang Inasal mark, in such a way that may lead to a confusion of business.
In holding so, we took into account the specific kind of restaurant business that petitioner is
engaged in, the reputation of the petitioner's mark, and the particular type of curls sought to
be marketed by the respondent, thus:
First. Petitioner uses the Mang Inasal mark in connection with its restaurant services that is
particularly known for its chicken inasal, i.e., grilled chicken doused in a
special inasal marinade.[31] The inasal marinade is different from the typical barbeque
marinade and it is what gives the chicken inasal its unique taste and distinct orange color.
[32]
Inasal refers to the manner of grilling meat products using an inasal marinade.
Second. The Mang Inasal mark has been used for petitioner's restaurant business since 2003.
The restaurant started in Iloilo but has since expanded its business throughout the country.
Currently, the Mang Inasal chain of restaurants has a total of 464 branches scattered
throughout the nation's three major islands.[33] It is, thus, fair to say that a sizeable portion of
the population is knowledgeable of the Mang Inasal mark.
Third. Respondent, on the other hand, seeks to market under the OK Hotdog Inasal mark curl
snack products which it publicizes as having a cheese hotdog inasal flavor.[34]
Accordingly, it is the fact that the underlying goods and services of both marks deal
with inasal and inasal-flavored products which ultimately fixes the relations between such
goods and services. Given the foregoing circumstances and the aforesaid similarity between
the marks in controversy, we are convinced that an average buyer who comes across the
curls marketed under the OK Hotdog Inasal mark is likely to be confused as to the true source
of such curls. To our mind, it is not unlikely that such buyer would be led into the assumption
that the curls are of petitioner and that the latter has ventured into snack manufacturing or, if
not, that the petitioner has supplied the flavorings for respondent's product. Either way, the
reputation of petitioner would be taken advantage of and placed at the mercy of respondent.
All in all, we find that the goods for which the registration of the OK Hotdog Inasal mark is
sought are related to the services being represented by the Mang Inasal mark.
IV
Conclusion
The OK Hotdog Inasal mark meets the two conditions of the proscription under Sec. 123.1(d)
(iii) ofRA 8293. First, it is similar to the Mang Inasal mark, an earlier mark Second, it
pertains to goods that are related to the services represented by such earlier mark Petitioner
was, therefore, correct; and the IPO-BLA, IPO-DG, and the CA's rulings must be reversed. The
OK Hotdog Inasal mark is not entitled to be registered as its use will likely deceive or cause
confusion on the part of the public and, thus, also likely to infringe the Mang Inasal mark The
law, in instances such as this, must come to the succor of the owner of the earlier mark.
WHEREFORE, premises considered, the petition is hereby GRANTED. We hereby render a

decision as follows:
1. REVERSING and SETTING ASIDE the Resolutions dated June 10, 2015 and December

2, 2015 of the Court of Appeals in CA-G.R. SP No. 139020;
2. SETTING ASIDE the Decision dated December 15, 2014 of the Director General of the
Intellectual Property Office in Appeal No. 14-2013-0052;
3. SETTING ASIDE the Decision dated September 19, 2013 of the Director of the Bureau
of Legal Affairs of the Intellectual Property Office in IPC No. 14-2012-00369; and
4. DIRECTING the incumbent Director General and Director of the Bureau of Legal Affairs
of the Intellectual Property Office to DENY respondent's Application No. 4-2011-006098 for
the registration of the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark."
SO ORDERED.
Bersamin, Reyes, Jardeleza, and Tijam, JJ., concur.
July 10, 2017
N O T I C E O F J U D G M E N T
Sirs /Mesdames:
Please take notice that on June 19, 2017 a Decision, copy attached hereto, was rendered by
the Supreme Court in the above-entitled case, the original of which was received by this Office
on July 10, 2017 at 10:12 a.m.
Very truly yours,
(SGD.) WILFREDO V. LAPITAN

Division Clerk of Court
Rollo, pp. 854-857. Penned by Associate Justice Normandie B. Pizarro and concurred in by
[1]
Associate Justices Victoria Isabel A. Paredes and Zenaida T. Galapate-Laguilles.
[2]
Id. at 55-58.
[3]
Trademark Application No. 4-2011-006098. The application was published in the IPO E-
Gazette on July 16, 2012.
[4]
Otherwise known as the "International Classification of Goods."
Rollo, pp. 65-76. Via Notice of Opposition dated October 15, 2012. The Notice of Opposition
[5]
was docketed in the IPO as IPC No. 14-2012-00369.
[6]
Per Certificate of Registration No. 4-2006-009050.
Rollo, p. 122. The Mang Inasal mark was registered with the IPO on August 17,
[7]
2006. See Certificate of Registration No. 4-2006-009050,
[8]
Id. at 25.
[9]
The provision reads:
SECTION 123. Registrability. —
123.1. A mark cannot be registered if it:
xxxx
d. Is identical with a registered mark belonging to a different proprietor or a mark with an

i. The same goods or services, or

ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion.

[10]
Rollo, pp. 65-76
[11]
Id. at 203-207.
[12]
The appeal was docketed as Appeal No. 14-2013-0052.
[13]
Rollo, pp. 408-411. Rendered by then Director General Ricardo R. Blancaflor.
[14]
Id. at 410.
[15]
Id. at 410-411.
[16]
Id. at 206-207; 411.
[17]
Id. at 854-857.
[18]
Id. at 55-58.
[19]
G.R. No. 164321, March 23, 2011, 646 SCRA 448.
See Faberge, Inc. v. Intermediate Appellate Court, G.R. No. 71189, November 4, 1992, 215
[20]
SCRA 316.
See Emerald Garment Manufacturing v. Court of Appeals, G.R. No. 100098, December 29,

[21]
1995, 251 SCRA 600.
Clark v. Manila Candy Company, 36 Phil. 100 (1917).

[22]
Emerald Garment Manufacturing, supra note 21.

[23]
Mighty Corporation v. E. & J. Gallo Winery, G.R. No. 154342, July 14, 2004, 434 SCRA 473.
[24]
[25]
Id.
See Diaz v. People of the Philippines, G.R. No. 180677, February 18, 2013, 691 SCRA 139.
[26]
See UFC Philippines, Inc. v. Fiesta Barrio Manufacturing Corporation, G.R. No. 198889,
[27]
January 20, 2016; Skechers U.SA., Inc., supra note 19; Berris Agricultural Company, Inc. v.
Abyadang, G.R. No. 183404, October 13, 2010, 633 SCRA 196; Dermaline, Inc. v. Myra
Pharmaceuticals, G.R. No. 190065, August 16, 2010, 628 SCRA 356; Societe Des Produits
Nestlé, S.A. v. Dy, Jr., G.R. No. 172276, August 8, 2010, 627 SCRA 223; Prosource
International, Inc. v. Horphag Research Management SA, G.R. No. 180073, November 25,
2009, 605 SCRA 523.
See Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, No.

[28]
L-19906, April 30, 1969, 27 SCRA 1214.
Mighty Corporation, supra note 24.

[29]
[30]
Id.
Rollo, p. 25.
[31]
Gapultos, Marvin. The Adobo Road Cookbook: A Filipino Food Journey from Food Blog, to
[32]
Food Truck and Beyond (2013), p. 84.
Rollo, p. 25.
[33]
[34]
Id. at 39-40.
6.UFC PHILIPPINES, INC. (NOW MERGED WITH NUTRI-ASIA, INC., WITH NUTRI-
ASIA, INC. AS THE SURVIVING ENTITY), Petitioner, v. FIESTA BARRIO
MANUFACTURING CORPORATION, Respondent
DECISION
VELASCO JR., J.:
FIRST DIVISION
G.R. No. 198889, January 20, 2016
DECISION
LEONARDO-DE CASTRO, J.:
For our disposition is a petition for review on certiorari under Rule 45 seeking to annul
and set aside the June 23, 2011 Decision1 and the October 4, 2011 Resolution2 of the
Court of Appeals in CA-G.R. SP No. 107570, which reversed and set aside the March 26,
2008 Decision3 of the Bureau of Legal Affairs of the Intellectual Property Office (IPO-
BLA) and the January 29, 2009 Decision4 of the Director General of the IPO. Petitioner
Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing under Philippine
laws.5 It is the emergent entity in a merger with UFC Philippines, Inc. that was
completed on February 11, 2009.6 Respondent Barrio Fiesta Manufacturing Corporation
(respondent) is likewise a corporation organized and existing under Philippine laws.
On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark "PAPA
BOY & DEVICE" for goods under Class 30, specifically for "lechon sauce." 7 The
Intellectual Property Office (IPO) published said application for opposition in the IP Phil.
e-Gazette released on September 8, 2006. The mark appears as follows:
(Please see image G.R. No. 198889 pg. 2)
On December 11, 2006, petitioner filed with the IPO-BLA a Verified Notice of Opposition
to the above-mentioned application and alleged that:
7. The mark "PAPA" for use on banana catsup and other similar goods was first
used [in] 1954 by Neri Papa, and thus, was taken from his surname;
8. After using the mark "PAPA" for about twenty-seven (27) years, Neri Papa
subsequently assigned the mark "PAPA" to Hernan D. Reyes who, on September
17, 1981, filed an application to register said mark "PAPA" for use on banana
catsup, chili sauce, achara, banana chips, and instant ube powder;
9. On August 14, 1983, Hernan D. Reyes was issued Certificate of Registration No.
32416;
10.[Certificate of] Registration No. 32416 was subsequently assigned to the
following in successive fashion: Acres & Acres Food, Inc., Southeast Asia Food,
Inc., Heinz-UFC Philippines, Inc., and Opposer UFC Philippines, Inc.;
11.Last October 28, 2005, Heinz-UFC Philippines, Inc. filed Application Serial No. 4-
2005-010788 which, in effect, is a re- registration of Registration No. 32416
which expired on August 11, 2003;
12.Hernan D. Reyes also filed on March 04, 1982 an application to register in the
Supplemental Register the "PAPA BANANA CATSUP Label";
13.On August 11, 1983, Hernan D. Reyes was issued Certificate of Registration No.
SR-6282 which was subsequently assigned to Acres & Acres Food, Inc.,
Southeast Asia Food, Inc., Heinz-UFC Philippines, Inc.;
14.After its expiration, Opposer filed on November 15, 2006 Trademark Application
Serial No. 4-2006-012346 for the re-registration of the "PAPA Label Design";
15.The mark "PAPA KETSARAP" for use on banana sauce falling under Class 30 was
also registered in favor of Acres & Acres Food, Inc. under Registration No. 34681
issued on August 23, 1985 and renewed last August 23, 2005 by Heinz-UFC
Philippines, Inc. for ten (10) years;
16.On November 07, 2006, Registration No. 34681 was assigned to Opposer;
17.Opposer has not abandoned the use of the mark "PAPA" and the variations
thereof as Opposer has continued their use up to the present;
18.The mark "PAPA BOY & DEVICE" is identical to the mark "PAPA" owned by
Opposer and duly registered in its favor, particularly the dominant feature
thereof;
19.[With the] dominant feature of respondent-applicant's mark "PAPA BOY &

DEVICE", which is Opposer's "PAPA" and the variations thereof, confusion and
deception is likely to result: The consuming public, particularly the unwary
customers, will be deceived, confused, and mistaken into believing that
respondent-applicant's goods come from Opposer or are authorized by Opposer
to Opposer's prejudice, which is particularly true considering that Opposer's
sister company, Southeast Asia Food, Inc., and its predecessors-in-interest have
been major manufacturers and distributors of lechon sauce and other table
sauces since 1965 under its registered mark "Mang Tomas";
20.Respondent-applicant's mark "PAPA BOY & DEVICE" which nearly resembles

Opposer's mark "PAPA" and the variations thereof will impress upon the gullible
or unsuspecting public that it is the same or related to Opposer as to source
because its dominant part is the same as Opposer's mark and, thus, will likely be
mistaken to be the mark, or related to, or a derivative or variation of, Opposer's
mark;
21.The goods covered by respondent-applicant's application fall under Class 30, the
same Class under which Opposer's goods enumerated in its earlier issued
registrations;
22.The test of dominancy is now explicitly incorporated into law in Section 155.1 of
the IP Code which defines infringement as the colorable imitation of a registered
mark or a dominant feature thereof, and is provided for by jurisprudence;
23.As a corporation also engaged in the food business, Respondent- applicant knew
and/or ought to know that Opposer and its predecessors-in-interest have been
using the mark "PAPA" and the variations thereof for the last fifty-two (52) years
while its sister company is engaged in the business of manufacturing and
distributing "lechon sauce" and other table sauces for the last forty-one (41)
years;
24.The approval of the subject application will violate Opposer's right to the
exclusive use of its registered mark "PAPA" and the variations thereof per
Section 13 8 of the IP Code;
25.The approval of the subject application has caused and will continue to cause
great and irreparable damage and injury to Opposer;
26.Respondent-applicant filed the subject application fraudulently and in bad faith;

and
27.Respondent-applicant is not entitled to register the subject mark in its favor. 8
In its verified opposition before the IPO, petitioner contended that "PAPA BOY &
DEVICE" is confusingly similar with its "PAPA" marks inasmuch as the former
incorporates the term "PAPA," which is the dominant feature of petitioner's "PAPA"
marks. Petitioner averred that respondent's use of "PAPA BOY & DEVICE" mark for its
lechon sauce product, if allowed, would likely lead the consuming public to believe that
said lechon sauce product originates from or is authorized by petitioner, and that the
"PAPA BOY & DEVICE" mark is a variation or derivative of petitioner's "PAPA" marks.
Petitioner argued that this was especially true considering that petitioner's ketchup
product and respondent's lechon sauce product are related articles that fall under the
same Class 30.9 chanroblesvirtuallawlibrary
Petitioner alleged that the registration of respondent's challenged mark was also likely
to damage the petitioner, considering that its former sister company, Southeast Asia
Food, Inc., and the latter's predecessors-in-interest, had been major manufacturers and
distributors of lechon and other table sauces since 1965, such as products employing
the registered "Mang Tomas" mark.
In its Verified Answer, respondent argued that there is no likelihood of confusion

between petitioner's family of "PAPA" trademarks and respondent's "PAPA BOY &
DEVICE" trademark. Respondent raised affirmative defenses and we quote the relevant
ones below:
3. Opposer cites several of its following marks in support of its opposition to the
application but an examination of said marks [reveals] that these have already expired
and/or that no confusing similarity exists x xx;
4. Assuming that the mark "PAPA KETSARAP" had been timely renewed on August 23,
2005 for "banana sauce" under Class 30, the same is not a hindrance to the successful
registration of the mark "PAPA BOY & DEVICE": Jurisprudence provides that a 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;
5. As a result, Opposer's right to use the mark "PAPAKETSARAP" is limited to the

products covered by its certificate of registration which is Class 30 for banana sauce;
6. Contrary to Opposer's belief, the dominant features of Respondent-applicant's mark

"PAPA BOY & DEVICE" are the words "PAPA BOY" and the representation of a smiling
hog-like character gesturing the thumbs-up sign and wearing a traditional Filipino hat
and scarf while the dominant feature of Opposer's mark "PAPA KETSARAP" are the
words "Papa" and "Ketsarap", not the word "Papa"; and the word "Ketsarap " is more
prominently printed and displayed in the foreground than the word "Papa" for which
reasons opposer's reference to the Dominancy Test fails;
7. Opposer's allegation that the registration of Respondent-applicant's mark "PAPA BOY

& DEVICE" will damage and prejudice the mark "MANG TOMAS" is irrelevant considering
that Opposer's basis for filing this opposition is the alleged confusing similarity between
Respondent-applicant's mark and Opposer's mark "PAPA KETSARAP", not the mark
"MANG TOMAS";
8. Respondent-applicant's mark "PAPA BOY & DEVICE" is neither identical nor

confusingly similar to Opposer's mark "PAPA KETSARAP": Respondent-applicant's mark
"PAPABOY & DEVICE" is an arbitrary mark which differs in overall sound, spelling,
meaning, style, configuration, presentation, and appearance from Opposer's mark
"PAPA KETSARAP";
9. The dissimilarities between the marks are so distinct, thus, confusion is very
unlikely: While Opposer's mark is a plain word mark, Respondent-applicant's mark
"PAPA BOY & DEVICE" is much more intricate and distinctive such as Opposer's mark
not having the words "Lechon Sauce" printed inside a blue ribbon-like device which is
illustrated below the words "PAPA BOY", Opposer's mark not having a prominent
smiling hog-like character gesturing a thumbs-up sign and wearing a Filipino hat and
scarf stands beside the words "PAPA BOY", and Opposer's mark not having the words
"Barrio Fiesta" albeit conspicuously displayed above the mark, all which leave no doubt
in the consumer's mind on the product that he is purchasing;
10. Aside from the fact that Respondent-applicant's mark "PAPA BOY & DEVICE" is
distinct and different in appearance, spelling, sound, meaning, and style from Opposer's
mark "PAPA KETSARAP", the difference in the goods covered by both marks is obvious:
Since the goods covered by Respondent-applicant's mark is unrelated and non-
competing to those covered by Opposer's mark, the doctrine allowing the registrations
of marks covering unrelated and non-competing goods as enunciated by the Supreme
Court is therefore applicable in this case;
11. Respondent-applicant's mark cannot be confusingly similar to Opposer's mark

considering that the products covered by these marks are different: While Respondent-
applicant's mark "PAPA BOY & DEVICE" covers lechon sauce under Class 30, Opposer's
mark "PAPA KETSARAP" covers banana sauce;
12. If a consumer is in the market for banana sauce, he will not buy lechon sauce and
vice-versa and as a result, the margin of error in the acquisition of one from the other
is simply remote;
13. Respondent-applicant is the exclusive owner of the mark "PAPA BOY & DEVICE" for
lechon sauce under Class 30: The words "PAPA BOY" is a combination of the nickname
of Bonifacio Ongpauco who is one of Respondent-applicant's incorporators and
founders- "BOY"- and the word "PAPA" as Bonifacio Ongpauco's mother, Sixta P.
Evangelista, had been fondly known as "Mama Chit", making Respondent-applicant the
prior adopter, user, and applicant of the mark "PAPA BOY & DEVICE" in the Philippines;
14. To protect its ownership over the mark "PAPA BOY & DEVICE" considering that it is
the first to adopt and use said mark, Respondent-applicant applied for its registration
under Application Serial No. 4-2002-002757 for Class 30, and said application was
found registrable by the Examiner as a consequence of which the same was
recommended for allowance after undergoing a thorough process of examination, which
recommendation was then approved by the Director of the Bureau of Trademarks
(BOT);
15. Respondent-applicant's mark "PAPA BOY & DEVICE" has been commercially used in
the Philippines;
16. Respondent-applicant's mark "PAPA BOY & DEVICE" has been promoted and
advertised for a considerable duration of time and over wide geographical areas:
Respondent-applicant has invested tremendous amount of resources in the promotion
of its mark "PAPA BOY & DEVICE" through various media including print publications
and promotional materials;
17. The widespread local commercial use of the subject mark by Respondent-applicant
to distinguish and identify its various high-quality consumer products has earned
Respondent-applicant a well-deserved business reputation and goodwill;
18. Respondent-applicant's mark is distinctive and capable of identifying its goods and
distinguishing them from those offered for sale by others in the market including
Opposer's goods for which reason no confusion will result because Respondent-
applicant's mark is for lechon sauce while Opposer's mark is for banana sauce; and
19. The presence of a common prefix "PAPA" in the marks of both parties does not
render said marks identical or confusingly similar: Opposer cannot exclusively
appropriate said prefix considering that other marks such as "Papa Heinz Pizza", "Papa
Heinz Sausage", "Papa Beaver", "Papa Pop", "Pizza Papa John's & Design",
"Papadoods", and "Papa in Wine and Device" are valid and active. 10 chanrobleslaw
Petitioner's mark and its variations appear as follows:
1. 1. "PAPA" under Registration No. 32416 for Class 29 goods;11
(Please see image G.R. No. 198889 page 7.)
2. The mark "PAPA" as it appeared upon re-registration of Certificate No. 32416,

under Application No. 4-2005-010788 for Classes 29 and 30 goods; 12
3. "PAPA LABEL DESIGN" under Registration No. 4-2006-012364; 13 and
4. "PAPA KETSARAP" under Certificate of Registration No. 34681, for banana sauce
(Class 30).14
PROCEEDINGS BEFORE THE INTELLECTUAL PROPERTY OFFICE
The case was referred to mediation but the parties failed to arrive at an amicable
settlement. The case was thus set for preliminary conference. Subsequently, the IPO-
BLA directed the parties to file their respective position papers and draft decisions.
The IPO-BLA rendered a Decision on March 26, 2008 sustaining petitioner's Opposition
and rejecting respondent's application for "PAPA BOY & DEVICE." The fallo of said
decision reads as follows:
WHEREFORE, the VERIFIED NOTICE OF OPPOSITION filed by UFC Philippines, Inc. is, as
it is hereby, SUSTAINED. Consequently, Application Serial No. 4-2002-002757 for the
mark "PAPA BOY & DEVICE" for lechon sauce under Class 30 filed on April 04, 2002 by
Barrio Fiesta Manufacturing Corporation, is, as it is hereby, REJECTED. Let the file
wrapper of PAPA BOY & Device subject matter of this case be forwarded to the Bureau
of Trademarks (BOT) for appropriate action in accordance with this Decision. 15
chanrobleslaw
Respondent filed an appeal before the IPO Director General, who found it
unmeritorious, and disposed of the case in the following manner:
WHEREFORE, the instant appeal is hereby DISMISSED. Let a copy of this Decision as
well as the trademark application and records be furnished and returned to the Director
of the Bureau of Legal Affairs for appropriate action. Further, let also the Director of the
Bureau of Trademarks and the library of the Documentation, Information and
Technology Transfer Bureau be furnished a copy of this Decision for information,
guidance, and records purposes."16
DECISION OF THE COURT OF APPEALS
Respondent then filed a petition with the Court of Appeals, questioning the above
decision of the IPO Director General that affirmed the decision of the IPO Bureau of
Legal Affairs Director, which disallowed respondent's application for trademark
registration. Respondent's arguments before the Court of Appeals are quoted below:
A.
REGISTRATION NOS. 32416 AND 42005010788 ISSUED FOR THE "PAPA" MARK AND
REGISTRATION NOS. SR-6282 AND 42006012364 ISSUED FOR THE TRADEMARK "PAPA
BANANA CATSUP LABEL/PAPA LABEL DESIGN" SHOULD NOT BE USED AS BASIS IN
DETERMINING THE EXISTENCE OF CONFUSING SIMILARITY.
B.
THERE IS NO CONFUSING SIMILARITY BETWEEN PETITIONER-APPLICANT'S "PAPA BOY

& DEVICE" AND RESPONDENT'S "PAPA KETSARAP" MARK.
C.
PETITIONER-APPLICANT IS ENTITLED TO THE REGISTRATION OF THE MARK "PAPA BOY

& DEVICE."
D.
THE OPPOSITION STATES NO CAUSE OF ACTION, AND HENCE, SHOULD BE DENIED

OUTRIGHT.17 chanrobleslaw
As regards the first ground, the Court of Appeals held:
Records show that respondent UFC has Certificates of Registration for the trademarks
PAPA, PAPA BANANA CATSUP label and PAPA KETSARAP. A closer look at the respective
Certificate[s] of Registration of the aforementioned marks, however, reveals that at the
time the trademark application of petitioner was published in the IPO e-Gazette on
September 8, 2006, the duration of the trademark registration of respondent over the
marks PAPA and PAPA BANANA CATSUP have already expired. On the other hand, the
mark PAPA KETSARAP was timely renewed by respondent as shown by the
Certificate of Renewal of Registration issued on September 1, 2006 by the
Director of the Bureau of Trademarks.
Under R.A. No. 8293, as amended by R.A. No. 9150, the duration of a trademark
registration is 10 years, renewable for periods of 10 years each renewal. The request
for renewal must be made within 6 months before or after the expiration of the
registration. Respondent's PAPA mark was not renewed within the period provided for
under RA No. 8293. Its registered term ended on August 11, 2003 but was reapplied
for registration only on April 4, 2005. Meanwhile, the mark PAPA BANANA CATSUP was
registered by respondent only in the Supplemental Register, hence, was not provided
any protection, x x x. It is noted that the PAPA BANANA CATSUP label was applied for
registration on November 15, 2006, over three years after the expiration of its
registration in the Supplemental Register of the Philippine Patent Office on August 11,
2003. Thus, while petitioner has a point that the marks PAPA and PAPA
BANANA CATSUP have already expired and the latter having been afforded no
protection at all and should not be juxtaposed with petitioner's trademark,
respondent can still use the marks PAPA KETSARAP and PAPA BANANA
CATSUP, it appearing that the Intellectual Property Office issued a Certificate
of Registration No. 4-2006-012364 for the latter on April 30, 2007, to bar the
registration of petitioner's "PAPA BOY & DEVICE" mark.18 (Emphases supplied,
citations omitted.)
Anent the second ground, the Court of Appeals ruled in the following manner:
After taking into account the aforementioned doctrines and the factual
circumstances of the case at bar, this Court, after considering the trademarks
involved as a whole, is of the view that petitioner's trademark "PAPA BOY &
DEVICE" is not confusingly similar to respondent's "PAPA KETSARAP" and
"PAPA BANANA CATSUP" trademark. Petitioner's trademark is "PAPA BOY" as a
whole as opposed to respondent's "PAPA". Although on its label the word "PAPA" is
prominent, the trademark should be taken as a whole and not piecemeal. The
difference between the two marks are conspicuous and noticeable. While respondent's
products are both labeled as banana sauces, that of petitioner Barrio Fiesta is labeled
as lechon sauce.
Moreover, it appears on the label of petitioner's product that the said lechon sauce is
manufactured by Barrio Fiesta thus, clearly informing the public [of) the identity of the
manufacturer of the lechon sauce. As claimed by respondent, its products have been in
commercial use for decades. It is safe to assume then that the consumers are already
aware that "PAPA KETSARAP" and "PAPA BANANA CATSUP" are products of UFC and not
of petitioner or the other way around. In addition, as correctly pointed out by
petitioner, if a consumer is in the market for banana sauce, he will not buy lechon
sauce and vice-versa because aside from the fact that the labels of both parties'
products contain the kind of sauce they are marketing, the color of the products is
visibly different. An ordinary consumer is familiar with the fact that the color of a
banana sauce is red while a lechon sauce is dark brown. There can be no deception as
both products are marketed in bottles making the distinction visible to the eye of the
consumer and the likelihood of acquiring a wrong sauce, remote. Even if the products
are placed side by side, the dissimilarities between the two marks are conspicuous,
noticeable and substantial enough to matter especially in the light of the following
variables that must be factored in.
Lastly, respondent avers that the word "PAPA" was coined after the surname of the
person who first created and made use of the mark. Admittedly, while "PAPA" is a
surname, it is more widely known as a term of endearment for one's father.
Respondent cannot, therefore, claim exclusive ownership over and singular use of [the]
term. Petitioner was able to explain that it adopted the word "PAPA" in parallel to the
nickname of the founder of Barrio fiesta which is "MAMA CHIT". "PAPA BOY" was
derived from the nickname of one of the incorporators of herein petitioner, a certain
Bonifacio Ongpauco, son of Mama Chit. 19(Emphasis ours, citation omitted.)
THEORY OF PETITIONER
Thus, petitioner came to this Court, seeking the reversal of the questioned decision and
resolution of the Court of Appeals, and the reinstatement of the decision of the IPO
Director General affirming the decision of the IPO-BLA. Petitioner raises the following
grounds:
I.
The court a quo erred in applying the "holistic test" to determine whether there is
confusing similarity between the contending marks, and in reversing the IPO-BLA and
the Director General's application of the "dominancy test."
II.
The court a quo erred in holding that there is no likelihood of confusion between the
contending marks given that the "PAPA BOY & DEVICE" mark is used on lechon sauce,
as opposed to ketchup products.
III.
The court a quo erred in holding that Petitioner cannot claim exclusive ownership and
use of the "PAPA" mark for its sauce products because "PAPA" is supposedly a common
term of endearment for one's father.20 chanrobleslaw
Under the first ground, petitioner submitted the following arguments:
1. The findings of administrative agencies, if supported by substantial

evidence, are binding upon the courts.21
Petitioner alleges that the Court of Appeals should have respected the ruling of the IPO
Director General, which was consistent with the ruling of the IPO-BLA and supported by
substantial evidence, instead of substituting its findings of fact for those of the Director
General and the IPO-BLA.
2. The dominancy test should have been applied to determine if there is

confusing similarity between the competing marks.22
Petitioner points out that the Director General and the IPO-BLA found that the dominant
feature of the competing marks is the word "PAPA" and the minor additions to
respondent's "PAPA BOY & DEVICE" mark do not negate likelihood of confusion caused
by the latter's use of the dominant word "PAPA." Petitioner claims that even compared
solely to petitioner's "PAPA KETSARAP" mark (Registration No. 34681), which is
conceded to have been timely renewed and to have never expired, respondent's "PAPA
BOY & DEVICE" would still create the likelihood of confusion. 23 chanroblesvirtuallawlibrary
According to petitioner, the Court of Appeals based its decision on Mead Johnson & Co.
v. N.V.J. Van Dorp, Ltd.,24 a case decided almost five decades ago, long before Republic
Act No. 8293 or the 1998 Intellectual Property Code was enforced. Thus, the Court of
Appeals erroneously applied the holistic test since given the nature of the products
bearing the competing marks, the dominancy test should have been applied.
Petitioner claims that "[k]etchup and lechon sauce are common and inexpensive
household products that are sold in groceries and regularly encountered by the ordinary
or common purchaser who is not expected to examine, scrutinize, and compare the
details of the competing marks."25 cralawred
Petitioner distinguishes this case from Mead Johnson and claims that the ordinary
purchaser of ketchup or lechon sauce is not likely to closely scrutinize each mark as a
whole, for the latter is "undiscerningly rash" and usually in a hurry, and cannot be
expected to take note of the smiling hog-like character or the blue ribbon-like device
with the words "Lechon Sauce." Petitioner argues that under the Intellectual Property
Code, it is not necessary for one to colorably imitate the competing trademark as a
whole. It is sufficient that one imitates a "dominant feature" of the mark to constitute
trademark infringement.
Petitioner asserts that as the IPO-BLA and the Director General observed that the
ordinary purchaser is most likely to notice the words "PAPA BOY," which, in turn, may
lead him to believe that there is a connection between respondent's lechon sauce and
petitioner's ketchup products.
Under the second ground, petitioner argues that the Court of Appeals seemed to be
unmindful that two kinds of confusion may arise from the use of similar or colorable
imitation marks, i.e., confusion of goods (product confusion) and confusion of business
(source or origin confusion). Petitioner claims that it is reasonable to assume that it
may expand its business to producing lechon sauce, inasmuch as it already produces
food sauce products and its Articles of Incorporation authorizes it to do so.
Petitioner alleges that the IPO-BLA recognized that confusion of business may arise
from respondent's use of its "PAPA BOY & DEVICE" mark for lechon sauce products, and
that the Director-General agreed with the IPO-BLA's findings on this issue.
Petitioner asserts that ketchup and lechon sauce are undeniably related goods; that
they belong to the same class, i.e., Class 30 of the Nice Classifications; that they serve
practically the same purpose, i.e., to spice up dishes; and that they are sold in similar
bottles in the same shelves in grocery stores. Petitioner argues that the Court of
Appeals had absolutely no basis for stating that a person who is out to buy ketchup is
not likely to buy lechon sauce by mistake, as this analysis allegedly only applies to
"product confusion" and does not consider confusion of business. Petitioner alleges that
"[t]here equally is actionable confusion when a buyer purchases Respondent's 'PAPA
BOY' lechon sauce believing that the said product is related to or associated with the
famous 'PAPA KETSUP' makers." Petitioner further alleges that "it is reasonable and
likely for a consumer to believe that Respondent's 'PAPA BOY' lechon sauce originated
from or is otherwise connected with Petitioner's line of sauces" and that this is "the
precise evil that recognition of confusion of business seeks to prevent." 26
chanroblesvirtuallawlibrary
Petitioner avers that "PAPA" is a well-known mark and that it has been in commercial
use as early as 1954 on banana ketchup and similar goods. The "PAPA" mark is also
registered as a trademark and in commercial use in other parts of the world such as the
United States of America and the Middle East. Petitioner claims that "[bjeing a
trademark that is registered and well-known both locally and internationally,
Petitioner's 'PAPA' marks cannot be appropriated by another person or entity not only
with respect to goods similar to those with respect to which it is registered, but also
with respect to goods which are not similar to those for which the 'PAPA' marks are
registered."27
Under the third ground, petitioner claims that the fact that the word "PAPA" is a known
term of endearment for fathers does not preclude it from being used as a mark to
identify goods. Petitioner claims that their mark falls under a type of mark known as
"arbitrary or fanciful marks," which are "marks that bear no logical relation to the actual
characteristics of the products they represent," are "highly distinctive and valid," and
"are entitled to the greatest protection."28
Petitioner claims that the mark "PAPA" falls under this class of arbitrary marks, even if
"PAPA" is also a common term of endearment for one's father. Petitioner states that
there is no logical connection between one's father and food sauces, such as ketchup;
thus, with respect to ketchup, food sauces, and their related products, and for the
purpose of identifying its products, petitioner claims exclusive ownership of the term
"PAPA" as an arbitrary mark.
Petitioner alleges that if respondent "has a good faith and proud desire to unmistakably
and distinctly identify its lechon sauce product out in the market, it should have coined
a mark that departs from and is distinguished from those of its competitors." Petitioner
claims that respondent, with full knowledge of the fame and the decades-long
commercial use of petitioner's "PAPA" marks, opted for "PAPA BOY & DEVICE," which
obviously is just a "colorable imitation." 29
THEORY OF RESPONDENT
In its Comment,30 respondent claims that petitioner's marks have either expired and/or

"that no confusing similarity exists between them and respondent's "PAPA BOY &
DEVICE' mark." Respondent alleges that under Section 15 of Republic Act No. 166, a
renewal application should be filed within six months before the expiration of the period
or within three months after such expiration. Respondent avers that the expiration of
the 20-year term for the "PAPA" mark under Registration No. 32416 issued on August
11, 1983 was August 11, 2003. The sixth month before August 11, 2003 was February
11, 2003 and the third month after August 11, 2003 was November 11, 2003.
Respondent claims that the application that petitioner filed on October 28, 2005 was
almost two years late. Thus, it was not a renewal application, but could only be
considered a new application under the new Trademark Law, with the filing date
reckoned on October 28, 2005. The registrability of the mark under the new application
was examined again, and any certificate issued for the registration of "PAPA" could not
have been a renewal certificate.
As for petitioner's other mark "PAPA BANANA CATSUP LABEL," respondent claims that
its 20-year term also expired on August 11, 2003 and that petitioner only filed its
application for the new "PAPA LABEL DESIGN" on November 15, 2006. Having been
filed three years beyond the renewal application deadline, petitioner was not able to
renew its application on time, and cannot claim a "continuous existence of its rights
over the 'PAPA BANANA CATSUP LABEL.'" Respondent claims that the two marks are
different from each other and that the registration of one is independent of the other.
Respondent concludes that the certificate of registration issued for "PAPA LABEL
DESIGN" is "not and will never be a renewal certificate." 31
Respondent also avers as follows:
1.3. With regard to the two new registrations of petitioner namely: "PAPA" (Reg. No. 4-
2005-010788) and "PAPA LABEL DESIGN" (Reg. No. 4-2006-012364), these were filed
on October 28, 2005 and November 15, 2006, respectively, under the Intellectual
Property Code (RA 8293), which follows the "first to file" rule, and were obviously filed
later than respondent's "PAPA BOY & DEVICE" mark filed on April 4, 2002. These new
marks filed much later than the opposed "PAPA BOY & DEVICE" mark cannot, therefore,
be used as basis for the opposition and should in fact, be denied outrightly.
xxxx
A search of the Online Trademark Database of Intellectual Property Office (IPO) will
show that only Registration No. 34681 issued for "PAPA KETSARAP" was properly
renewed on August 23, 2005. x x x Clearly, the registrations of "PAPA" and "PAPA
BANANA CATSUP LABEL" marks under registration nos. 32416 and SR-6282
respectively, have already expired when Petitioner filed its opposition proceeding
against Respondent's trademark on December 11, 2006. Having expired, and therefore,
no longer legally existing, the "PAPA" and "PAPA BANANA CATSUP LABEL" marks
CANNOT BAR the registration of respondent's mark. To allow petitioner's expired marks
to prevent respondent's distinct "PAPA BOY & DEVICE" mark from being registered
would be the ultimate absurdity. 32 chanrobleslaw
Respondent posits that the Court of Appeals did not err in reversing the decisions of the
administrative agencies, alleging that "[while] it is true that the general rule is that the
factual findings of administrative bodies deserve utmost respect when supported by
evidence, the same is subject to exceptions," 33 and that the Court of Appeals had
justifiable reasons to disregard the factual finding of the IPO. Here, the Court of
Appeals wisely identified certain material facts that were overlooked by the IPO-BLA
and the IPO Director General which it opined, when correctly appreciated, would alter
the result of the case.
Respondent alleges that the IPO-BLA erroneously considered petitioner's marks "PAPA"
and "PAPA BANANA CATSUP LABEL" when it applied the dominancy test in determining
whether petitioner's marks are confusingly similar to those of respondent's mark "PAPA
BOY & DEVICE."
Respondent avers that the IPO-BLA absurdly took emphasis on the mark "PAPA" to
arrive at its decision and did not take into consideration that petitioner's mark was
already expired when respondent applied for the registration of its "PAPA BOY &
DEVICE" mark. Respondent compares its "PAPA BOY & DEVICE" with the only mark that
respondent allegedly has, "PAPA KETSARAP," and found no confusing similarity between
the two.
We quote below respondent's discussion of its application of the dominancy test to the
marks in question:
Applying the Dominancy test, as correctly emphasized by the Court of Appeals, the
dominant feature in respondent's mark is "PAPA BOY" and not "PAPA". It can be
gleaned from respondent's mark that the word "PAPA" was written in the same font,
style and color as the word "BOY". There is also the presence of a "smiling hog-like
character" which is positioned very prominently, both in size and location in said mark,
at glance (sic) even more dominant than the word "PAPA BOY".
xxxx
On the other hand, the dominant feature in petitioner's mark is "KETSARAP", not
"PAPA". Even an ordinary examiner could observe that the word "KETSARAP" in
petitioner's mark is more prominently printed than the word "PAPA".
xxxx
In a dominancy test, the prominent feature of the competing trademarks must be

similar to cause confusion or deception, x x x.
Verily, respondent's dominant feature "PAPA BOY" and the smiling hog-like character
and petitioner's dominant feature "KETSARAP", being the word written in a larger font,
are neither confusing nor deceiving to the public. In fact, the differences between their
dominant marks are very noticeable and conspicuous to every purchaser.
Furthermore, the Supreme Court in Societe des Produits Nestle, S.A. v. Dy [641 Phil.
345], applied the dominancy test by taking into account the aural effects of the words
and letters contained in the marks in determining the issue of confusing similarity.
Obviously, petitioners' "PAPA KETSARAP" mark does not in any way sounds (sic) like
respondent's "PAPA BOY" mark. The common prefix "PAPA" does not render the marks
aurally the same. As discussed above, the dominant feature in petitioner's mark is
"KETSARAP" and the dominant feature in respondent's mark is "PAPA BOY". Thus, the
words "KETSARAP" and "PAPA BOY" in petitioner's and respondent's respective marks
are obviously different in sound, making "PAPA BOY & DEVICE" even more distinct from
petitioner's "PAPA KETSARAP" mark.35 chanrobleslaw
Using the holistic test, respondent further discusses the differences in the marks in this
wise:
Even the use of the holistic test x x x takes into consideration the entirety of the marks
in question [to] be considered in resolving confusing similarity. The differences are
again very obvious. Respondent's mark has (1) the word "lechon sauce" printed inside a
blue ribbon-like device which is illustrated below the word "PAPA BOY"; (2) a prominent
smiling hog-like character gesturing a thumbs-up sign and wearing a Filipino hat and
scarf stands beside the word "PAPA BOY"; and the word "BARRIO FIESTA"
conspicuously displayed above the said trademark which leaves no doubt in the
consumer's mind on the product that he or she is purchasing. On the other hand,
petitioner's mark is the word "PAPA" enclosed by a cloud on top of the word
"KETSARAP' enclosed by a geometrical figure.
xxxx
In the instant case, the respective marks are obviously different in color scheme, logo,
spelling, sound, meaning and connotation. Thus, yet again, under the holistic test there
can be no confusion or deception between these marks.
It also bears stressing that petitioner's "PAPA KETSARAP" mark covers "banana catsup"
while respondent's "PAPA BOY & DEVICE" covers "lechon sauce", thereby obliterating
any confusion of products of both marks as they travel different channels of trade. If a
consumer is in the market for banana catsup, he or she will not buy lechon sauce and
vice-versa. As a result, the margin of error in the acquisition of one for the other is
simply remote. Lechon sauce which is liver sauce is distinct from catsup extracted/
made from banana fruit. The flavor and taste of a lechon sauce are far from those of a
banana catsup. Lechon sauce is sauce for "lechon" while banana catsup is apparently
catsup made from banana.36 chanrobleslaw
Respondent also contends that "PAPA BOY & DEVICE" mark is not confusingly similar to
petitioner's trademark "PAPA KETSARAP" in terms of appearance, sound, spelling and
meaning. The difference in nature, usage, taste and appearance of products decreases
the possibility of deception among buyers. 37 chanroblesvirtuallawlibrary
Respondent alleges that since petitioner merely included banana catsup as its product
in its certificate, it cannot claim any further right to the mark "PAPA KETSARAP" on
products other than banana catsup. Respondent also alleges that petitioner cannot raise
"international notoriety of the mark" for the first time on appeal and that there is no
proof that petitioner's mark is internationally well-known. 38 chanroblesvirtuallawlibrary
Furthermore, respondent argues that petitioner cannot claim exclusive ownership over
the use of the word "PAPA," a term of endearment for one's father. Respondent points
out that there are several other valid and active marks owned by third parties which
use the word "PAPA," even in classes of goods similar to those of petitioner's.
Respondent avers that petitioner's claim that its "PAPA" mark is an arbitrary mark is
belatedly raised in the instant petition, and cannot be allowed because the "PAPA
KETSARAP" mark would immediately bring the consuming public to thinking that the
product involved is catsup and the description of said catsup is "masarap" (delicious)
and due to the logical relation of the petitioner's mark to the actual product, it being
descriptive or generic, it is far from being arbitrary or fanciful. 39
Lastly, respondent claims that the Court of Appeals correctly ruled that respondent's
product cannot be confused as originating from the petitioner. Since it clearly appears
in the product label of the respondent that it is manufactured by Barrio Fiesta, the
public is dutifully informed of the identity of the lechon sauce manufacturer. The Court
of Appeals further took into account the fact that petitioner's products have been in
commercial use for decades.40 chanroblesvirtuallawlibrary
Petitioner, in its Reply41 to respondent's Comment, contends that respondent cannot

invoke a prior filing date for the "PAPA BOY" mark as against Petitioner's "PAPA" and
"PAPA BANANA CATSUP LABEL" marks, because the latter marks were still registered
when respondent applied for registration of its "PAPA BOY" mark. Thus, the IPO-BLA
and Director General correctly considered them in deciding whether the "PAPA BOY"
mark should be registered, using the "first to file" rule under Section 123.1(d) of
Republic Act No. 8293, or the Intellectual Property Code (IP Code).
Petitioner reiterates its argument that the Court of Appeals erred in applying the holistic
test and that the proper test under the circumstances is the dominancy test, which was
correctly applied by the IPO-BLA and the Director General. 42
THIS COURT'S RULING
The petition has merit. We find that the Court of Appeals erred in applying the holistic
test and in reversing and setting aside the decision of the IPO-BLA and that of the IPO
Director General, both of which rejected respondent's application for the mark "PAPA
BOY & DEVICE."
In Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,43 we defined 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 others." We held that a
trademark is "an intellectual property deserving protection by law."
The rights of the trademark owner are found in the Intellectual Property Code, which
provides:
Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have
the exclusive right to prevent all third parties not having the owner's consent from
using in the course of trade identical or similar signs or containers for goods or services
which are identical or similar to those in respect of which the trademark is registered
where such use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion shall be
presumed.
Section 168. Unfair Competition, Rights, Regulation and Remedies. - 168.1. A

person who has identified in the mind of the public the goods he manufactures or deals
in, his business or services from those of others, whether or not a registered mark is
employed, has a property right in the goodwill of the said goods, business or services
so identified, which will be protected in the same manner as other property rights.
The guideline for courts in determining likelihood of confusion is found in A.M. No. 10-3-
10-SC, or the Rules of Procedure for Intellectual Property Rights Cases, Rule 18, which
provides:
RULE 18
Evidence in Trademark Infringement and Unfair Competition Cases SECTION

1. Certificate of Registration. — A certificate of registration of a mark shall be prima
facie evidence of:
a) the validity of the registration; b) the registrant's ownership of the mark; and
c) 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.
xxxx
SECTION 3. Presumption of Likelihood of Confusion. — Likelihood of confusion shall be

presumed in case an identical sign or mark is used for identical goods or services.
SECTION 4. Likelihood of Confusion in Other Cases. — In determining whether one

trademark is confusingly similar to or is a colorable imitation of another, the court must
consider the general impression of the ordinary purchaser, buying under the normally
prevalent conditions in trade and giving the attention such purchasers usually give in
buying that class of goods. Visual, aural, connotative comparisons and overall
impressions engendered by the marks in controversy as they are encountered in the
realities of the marketplace must be taken into account. Where there are both
similarities and differences in the marks, these must be weighed against one another to
see which predominates.
In determining likelihood of confusion between marks used on non-identical goods or

services, several factors may be taken into account, such as, but not limited to:
a) the strength of plaintiff s mark;

b) the degree of similarity between the plaintiffs and the defendant's marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or h) the sophistication of the

buyers.
"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, as to cause him
to purchase the one supposing it to be the other.
SECTION 5. Determination of Similar and Dissimilar Goods or Services. — Goods or

services may not be considered as being similar or dissimilar to each other on the
ground that, in any registration or publication by the Office, they appear in different
classes of the Nice Classification.
In this case, the findings of fact of the highly technical agency, the Intellectual Property
Office, which has the expertise in this field, should have been given great weight by the
Court of Appeals. As we held in Berris Agricultural Co., Inc. v. Abyadang44:
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. 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. 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 122 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. R.A. No. 8293, however, requires the applicant for
registration or the registrant to file a declaration of actual use (DAU) of the mark, with
evidence to that effect, within three (3) years from the filing of the application for
registration; otherwise, the application shall be refused or the mark shall be removed
from the register. In other words, the prima facie presumption brought about by the
registration of a mark may be challenged and overcome, in an appropriate action, by
proof of the nullity of the registration or of non-use of the mark, except when excused.
Moreover, the presumption may likewise be defeated by evidence of prior use by
another person, i.e., it will controvert a claim of legal appropriation or of ownership
based on registration by a subsequent user. This is because a trademark is a creation of
use and belongs to one who first used it in trade or commerce.
The determination of priority of use of a mark is a question of fact. Adoption of the

mark alone does not suffice. One may make advertisements, issue circulars, distribute
price lists on certain goods, but these alone will not inure to the claim of ownership of
the mark until the goods bearing the mark are sold to the public in the market.
Accordingly, receipts, sales invoices, and testimonies of witnesses as customers, or
orders of buyers, best prove the actual use of a mark in trade and commerce during a
certain period of time.
xxxx
Verily, the protection of trademarks as intellectual property is intended not only to

preserve the goodwill and reputation of the business established on the goods bearing
the mark through actual use over a period of time, but also to safeguard the public as
consumers against confusion on these goods. On this matter of particular concern,
administrative agencies, such as the IPO, by reason of their special knowledge
and expertise over matters falling under their jurisdiction, are in a better
position to pass judgment thereon. Thus, their findings of fact in that regard
are generally accorded great respect, if not finality by the courts, as long as
they are supported by substantial evidence, even if such evidence might not
be overwhelming or even preponderant. It is not the task of the appellate
court to weigh once more the evidence submitted before the administrative
body and to substitute its own judgment for that of the administrative agency
in respect to sufficiency of evidence. (Emphasis added, citations omitted.)
In trademark controversies, each case must be scrutinized according to its peculiar

circumstances, such that jurisprudential precedents should only be made to apply if
they are specifically in point.45 The cases discussed below are mentioned only for
purposes of lifting the applicable doctrines, laws, and concepts, but not for their factual
circumstances, because of the uniqueness of each case in controversies such as this
one.
There are two tests used in jurisprudence to determine likelihood of confusion, namely
the dominancy test used by the IPO, and the holistic test adopted by the Court of
Appeals. In Skechers, U.S.A., Inc. v. Inter Pacific Industrial Trading Corp., 46 we held:
The essential element of infringement under R.A. No. 8293 is that the infringing mark is
likely to 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.
xxxx
Relative to the question on confusion of marks and trade names, jurisprudence has
noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion),
where the ordinarily prudent purchaser would be induced to purchase one product in
the belief that he was purchasing the other; and (2) confusion of business (source or
origin confusion), where, although the goods of the parties are different, the product,
the mark of which registration is applied for by one party, is such as might reasonably
be assumed to originate with the registrant of an earlier product, and the public would
then be deceived either into that belief or into the belief that there is some connection
between the two parties, though inexistent.
Applying the Dominancy Test to the case at bar, this Court finds that the use of the
stylized "S" by respondent in its Strong rubber shoes infringes on the mark already
registered by petitioner with the IPO. While it is undisputed that petitioner's stylized "S"
is within an oval design, to this Court's mind, the dominant feature of the trademark is
the stylized "S," as it is precisely the stylized "S" which catches the eye of the
purchaser. Thus, even if respondent did not use an oval design, the mere fact that it
used the same stylized "S", the same being the dominant feature of petitioner's
trademark, already constitutes infringement under the Dominancy Test.
This Court cannot agree with the observation of the CA that the use of the letter "S"
could hardly be considered as highly identifiable to the products of petitioner alone. The
CA even supported its conclusion by stating that the letter "S" has been used in so
many existing trademarks, the most popular of which is the trademark "S" enclosed by
an inverted triangle, which the CA says is identifiable to Superman. Such reasoning,
however, misses the entire point, which is that respondent had used a stylized "S," which
is the same stylized "S" which petitioner has a registered trademark for. The letter "S"
used in the Superman logo, on the other hand, has a block-like tip on the upper portion
and a round elongated tip on the lower portion. Accordingly, the comparison made by
the CA of the letter "S" used in the Superman trademark with petitioner's stylized "S" is
not appropriate to the case at bar.
Furthermore, respondent did not simply use the letter "S," but it appears to this Court
that based on the font and the size of the lettering, the stylized "S" utilized by
respondent is the very same stylized "S" used by petitioner; a stylized "S" which is
unique and distinguishes petitioner's trademark. Indubitably, the likelihood of confusion
is present as purchasers will associate the respondent's use of the stylized "S" as
having been authorized by petitioner or that respondent's product is connected with
petitioner's business.
XXXX
While there may be dissimilarities between the appearances of the shoes, to this
Court's mind such dissimilarities do not outweigh the stark and blatant similarities in
their general features, x x x.
Based on the foregoing, this Court is at a loss as to how the RTC and the CA, in
applying the holistic test, ruled that there was no colorable imitation, when it cannot be
any more clear and apparent to this Court that there is colorable imitation. The
dissimilarities between the shoes are too trifling and frivolous that it is indubitable that
respondent's products will cause confusion and mistake in the eyes of the public.
Respondent's shoes may not be an exact replica of petitioner's shoes, but the features
and overall design are so similar and alike that confusion is highly likely.
xxxx
Neither can the difference in price be a complete defense in trademark infringement.

In McDonald's Corporation v. L.C. Big Mak Burger, Inc., this Court held:
Modern law recognizes that the protection to which the owner of a trademark is entitled
is not limited to guarding his goods or business from actual market competition with
identical or similar products of the parties, but extends to all cases in which the use by
a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of
source, as where prospective purchasers would be misled into thinking that the
complaining party has extended his business into the field (see 148 ALR 56 et seq; 53
Am. Jur. 576) or is in any way connected with the activities of the infringer; or when it
forestalls the normal potential expansion of his business (v. 148 ALR 77, 84; 52 Am.
Jur. 576, 577). x x x.
Indeed, the registered trademark owner may use its mark on the same or similar
products, in different segments of the market, and at different price levels depending
on variations of the products for specific segments of the market. The purchasing public
might be mistaken in thinking that petitioner had ventured into a lower market segment
such that it is not inconceivable for the public to think that Strong or Strong Sport Trail
might be associated or connected with petitioner's brand, which scenario is plausible
especially since both petitioner and respondent manufacture rubber shoes.
Withal, the protection of trademarks as intellectual property is intended not only to

preserve the goodwill and reputation of the business established on the goods bearing
the mark through actual use over a period of time, but also to safeguard the public as
consumers against confusion on these goods. While respondent's shoes contain some
dissimilarities with petitioner's shoes, this Court cannot close its eye to the fact that for
all intents and purpose, respondent had deliberately attempted to copy petitioner's
mark and overall design and features of the shoes. Let it be remembered, that
defendants in cases of infringement do not normally copy but only make colorable
changes. The most successful form of copying is to employ enough points of similarity
to confuse the public, with enough points of difference to confuse the courts. (Citations
omitted.)
The Court discussed the concept of confusion of business in the case of Societe Des
Produits Nestle, S.A. v. Dy, Jr.,47 as quoted below:
Among the elements, the element of likelihood of confusion is the gravamen of
trademark infringement. There are two types of confusion in trademark infringement:
confusion of goods and confusion of business. In Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft, the Court distinguished the two types of
confusion:
Callman 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 plaintiffs, and the poorer quality of the former reflects adversely on the
plaintiffs 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."
There are two tests to determine likelihood of confusion: the dominancy test and
holistic test. The dominancy test focuses on the similarity of the main, prevalent or
essential features of the competing trademarks that might cause confusion.
Infringement takes place when the competing trademark contains the essential features
of another. Imitation or an effort to imitate is unnecessary. The question is whether the
use of the marks is likely to cause confusion or deceive purchasers.
xxxx
In cases involving trademark infringement, no set of rules can be deduced. Each case
must be decided on its own merits. Jurisprudential precedents must be studied in the
light of the facts of each particular case. In McDonald's Corporation v. MacJoy Fastfood
Corporation, the Court held:
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 the light of the facts of the present case, the Court holds that the dominancy test is
applicable. In recent cases with similar factual milieus, the Court has consistently
applied the dominancy test, x x x.
xxxx
In McDonald's Corporation v. MacJoy Fastfood Corporation, the Court applied the

dominancy test in holding that "MACJOY" is confusingly similar to "MCDONALD'S." The
Court held:
While we agree with the CA's detailed enumeration of differences between the two (2)
competing trademarks herein involved, we believe that the holistic test is not the one
applicable in this case, the dominancy test being the one more suitable. In recent cases
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.
xxxx
Applying the dominancy test to the instant case, the Court finds that herein petitioner's
"MCDONALD'S" and respondent's "MACJOY" marks are confusingly similar with each
other 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 "Me"
and/or "Mac" as dominant features, x x x.
For sure, it is the prefix "Me," and 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," "Mac Fries," "Me Spaghetti," "McDo," "Big
Mac" and the rest of the MCDONALD'S marks which all use the prefixes Me and/or Mac.
Besides and most importantly, both trademarks are used in the sale of fastfood
products. Indisputably, the respondent's trademark application for the "MACJOY &
DEVICE" trademark covers goods under Classes 29 and 30 of the International
Classification of Goods, namely, fried chicken, chicken barbeque, burgers, fries,
spaghetti, etc. Likewise, the petitioner's trademark registration for the MCDONALD'S
marks in the Philippines covers goods which are similar if not identical to those covered
by the respondent's application.
In McDonald's Corporation v. L.C. Big Mak Burger, Inc., the Court applied the
dominancy test in holding that "BIG MAK" is confusingly similar to "BIG MAC." The
Court held:
This Court x x x has relied on the dominancy test rather than the holistic test. The
dominancy test considers the dominant features in the competing marks in determining
whether they are confusingly similar. Under the dominancy test, courts give greater
weight to the similarity of the appearance of the product arising from the adoption of
the dominant features of the registered mark, disregarding minor differences. Courts
will consider more the aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales outlets and market
segments.
Thus, in the 1954 case of Co Tiong Sa v. Director of Patents, the Court ruled:
x x x 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. (G. Heilman Brewing Co.
vs. Independent Brewing Co., 191 F., 489, 495, citing Eagle White Lead Co. vs. Pflugh
(CC) 180 Fed. 579). 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. (Auburn Rubber Corporation vs. Honover
Rubber Co., 107 F. 2d 588; x x x)
xxxx
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 x x x 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. 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 "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 Societe Des Produits Nestle, S.A. v. Court of Appeals, the Court applied the
dominancy test in holding that "FLAVOR MASTER" is confusingly similar to "MASTER
ROAST" and "MASTER BLEND." The Court held:
While this Court agrees with the Court of Appeals' detailed enumeration of differences
between the respective trademarks of the two coffee products, this Court cannot agree
that totality test is the one applicable in this case. Rather, this Court believes that the
dominancy test is more suitable to this case in light of its peculiar factual milieu.
Moreover, the totality or holistic test is contrary to the elementary postulate of the law
on trademarks and unfair competition that confusing similarity is to be determined on
the basis of visual, aural, connotative comparisons and overall impressions engendered
by the marks in controversy as they are encountered in the realities of the marketplace.
The totality or holistic test only relies on visual comparison between two trademarks
whereas the dominancy test relies not only on the visual but also on the aural and
connotative comparisons and overall impressions between the two trademarks.
For this reason, this Court agrees with the BPTTT when it applied the test of dominancy
and held that:
xxxx
The scope of protection afforded to registered trademark owners is not limited

to protection from infringers with identical goods. The scope of protection
extends to protection from infringers with related goods, and to market areas
that are the normal expansion of business of the registered trademark owners.
Section 138 of R.A. No. 8293 states:
Certificates of Registration. — A certificate of registration of a mark shall be prima facie

evidence of validity of the registration, 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, x x x.
In Mighty Corporation v. E. & J. Gallo Winery, the Court held that, "Non-competing
goods may be those which, though they are not in actual competition, are so related to
each other that it can reasonably be assumed that they originate from one
manufacturer, in which case, confusion of business can arise out of the use of similar
marks." In that case, the Court enumerated factors in determining whether goods are
related: (1) classification of the goods; (2) nature of the goods; (3) descriptive
properties, physical attributes or essential characteristics of the goods, with reference
to their form, composition, texture or quality; and (4) style of distribution and
marketing of the goods, including how the goods are displayed and sold.
xxxx
xxx. However, as the registered owner of the "NAN" mark, Nestle should be free
to use its mark on similar products, in different segments of the market, and
at different price levels. In McDonald's Corporation v. L.C. Big Mak Burger, Inc., the
Court held that the scope of protection afforded to registered trademark owners
extends to market areas that are the normal expansion of business:
xxxx
Even respondent's use of the "Big Mak" mark on non-hamburger food products cannot
excuse their infringement of petitioners' registered mark, otherwise registered marks
will lose their protection under the law.
The registered trademark owner may use his mark on the same or similar
products, in different segments of the market, and at different price levels
depending on variations of the products for specific segments of the market.
The Court has recognized that the registered trademark owner enjoys
protection in product and market areas that are the normal potential
expansion of his business. Thus, the Court has declared:
a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of
source, as where prospective purchasers would be misled into thinking that the
complaining party has extended his business into the field (see 148 ALR 56 et sq; 53
Am. Jur. 576) or is in any way connected with the activities of the infringer; or when it
forestalls the normal potential expansion of his business (v. 148 ALR, 77, 84; 52 Am.
Jur. 576, 577). (Emphases supplied, citations omitted.)
Again, this Court discussed the dominancy test and confusion of business in Dermaline,
Inc. v. Myra Pharmaceuticals, Inc.,48 and we quote:
The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion or deception. It is applied when the
trademark sought to be registered contains the main, essential and dominant features
of the earlier registered trademark, and confusion or deception is likely to result.
Duplication or imitation is not even required; neither is it necessary that the label of the
applied mark for registration should suggest an effort to imitate. The important issue is
whether the use of the marks involved would likely cause confusion or mistake in the
mind of or deceive the ordinary purchaser, or one who is accustomed to buy, and
therefore to some extent familiar with, the goods in question. Given greater
consideration are the aural and visual impressions created by the marks in the public
mind, giving little weight to factors like prices, quality, sales outlets, and market
segments. The test of dominancy is now explicitly incorporated into law in Section
155.1 of R.A. No. 8293 which provides —
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of

a registered mark or the same container or a dominant feature thereof in connection
with the sale, offering for sale, distribution, advertising of any goods or services
including other preparatory steps necessary to carry out the sale of any goods or
services on or in connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive x x x.
xxxx
Relative to the question on confusion of marks and trade names, jurisprudence has
noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion),
where the ordinarily prudent purchaser would be induced to purchase one product in
the belief that he was purchasing the other; and (2) confusion of business (source or
origin confusion), where, although the goods of the parties are different, the product,
the mark of which registration is applied for by one party, is such as might reasonably
be assumed to originate with the registrant of an earlier product, and the public would
then be deceived either into that belief or into the belief that there is some connection
between the two parties, though inexistent.
xxxx
We agree with the findings of the IPO. As correctly applied by the IPO in this case,
while there are no set rules that can be deduced as what constitutes a dominant feature
with respect to trademarks applied for registration; usually, what are taken into
account are signs, color, design, peculiar shape or name, or some special, easily
remembered earmarks of the brand that readily attracts and catches the attention of
the ordinary consumer.
xxxx
Further, Dermaline's stance that its product belongs to a separate and different
classification from Myra's products with the registered trademark does not eradicate the
possibility of mistake on the part of the purchasing public to associate the former with
the latter, especially considering that both classifications pertain to treatments for the
skin.
Indeed, the registered trademark owner may use its mark on the same or similar
products, in different segments of the market, and at different price levels depending
on variations of the products for specific segments of the market. The Court is
cognizant that the registered trademark owner enjoys protection in product and market
areas that are the normal potential expansion of his business. Thus, we have held —
a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion
of source, as where prospective purchasers would be misled into thinking that
the complaining party has extended his business into the field (see 148 ALR
56 et seq; 53 Am Jur. 576) or is in any way connected with the activities of the
infringer; or when it forestalls the normal potential expansion of his
business (v. 148 ALR 77, 84; 52 Am. Jur. 576, 577).
Thus, the public may mistakenly think that Dermaline is connected to or associated with
Myra, such that, considering the current proliferation of health and beauty products in
the market, the purchasers would likely be misled that Myra has already expanded its
business through Dermaline from merely carrying pharmaceutical topical applications
for the skin to health and beauty services.
Verily, when one applies for the registration of a trademark or label which is almost the
same or that very closely resembles one already used and registered by another, the
application should be rejected and dismissed outright, even without any opposition on
the part of the owner and user of a previously registered label or trademark. This is
intended 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. (Citations omitted.)
Section 123. l(d) of the IP Code provides:
A mark cannot be registered if it:
xxxx
(d) Is identical with a registered mark belonging to a different proprietor or a mark with
an earlier filing or priority date, in respect of:
i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause

confusion[.]
A scrutiny of petitioner's and respondent's respective marks would show that the IPO-
BLA and the IPO Director General correctly found the word "PAPA" as the dominant
feature of petitioner's mark "PAPA KETSARAP." Contrary to respondent's contention,
"KETSARAP" cannot be the dominant feature of the mark as it is merely descriptive of
the product. Furthermore, it is the "PAPA" mark that has been in commercial use for
decades and has established awareness and goodwill among consumers.
We likewise agree with the IPO-BLA that the word "PAPA" is also the dominant feature
of respondent's "PAPA BOY & DEVICE" mark subject of the application, such that "the
word 'PAPA' is written on top of and before the other words such that it is the first
word/figure that catches the eyes."49 Furthermore, as the IPO Director General put it,
the part of respondent's mark which appears prominently to the eyes and ears is the
phrase "PAPA BOY" and that is what a purchaser of respondent's product would
immediately recall, not the smiling hog.
We quote the relevant portion of the IPO-BLA decision on this point below:
A careful examination of Opposer's and Respondent-applicant's respective marks shows

that the word "PAPA" is the dominant feature: In Opposer's marks, the word "PAPA" is
either the mark by itself or the predominant word considering its stylized font and the
conspicuous placement of the word "PAPA" before the other words. In Respondent-
applicant's mark, the word "PAPA" is written on top of and before the other words such
that it is the first word figure that catches the eyes. The visual and aural impressions
created by such dominant word "PAPA" at the least is that the respective goods of the
parties originated from the other, or that one party has permitted or has been given
license to the other to use the word "PAPA" for the other party's product, or that there
is a relation/connection between the two parties when, in fact, there is none. This is
especially true considering that the products of both parties belong to the same class
and are closely related: Catsup and lechon sauce or liver sauce are both gravy-like
condiments used to spice up dishes. Thus, confusion of goods and of business may
likely result.
Under the Dominancy Test, the dominant features of the competing marks are
considered in determining whether these competing marks are confusingly similar.
Greater weight is given to the similarity of the appearance of the products arising from
the adoption of the dominant features of the registered mark, disregarding minor
differences. The visual, aural, connotative, and overall comparisons and impressions
engendered by the marks in controversy as they are encountered in the realities of the
marketplace are the main considerations (McDonald's Corporation, et al., v. L. C. Big
Mak Burger, Inc., et al., G. R. No. 143993, August 18, 2004; Societe Des Produits
Nestle, S. A." et al. v. Court of Appeals, et al., G. R. No. 112012, April 4, 2001). 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. (Lim Hoa v.
Director of Patents, 100 Phil. 214 [1956]); Co Tiong Sa v. Director of Patents, et al., G.
R. No. L-5378, May 24, 1954). Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an effort to imitate (Lim Hoa v.
Director of Patents, supra, and Co Liong Sa v. Director of Patents, supra). Actual
confusion is not required: Only likelihood of confusion on the part of the buying public is
necessary so as to render two marks confusingly similar so as to deny the registration
of the junior mark (Sterling Products International, Inc. v. Farbenfabriken Bayer
Aktiengesellschaft, 137 Phil. 838 [1969]).
As to the first issue of whether PAPA BOY is confusingly similar to Opposer's PAPA
mark, this Bureau rules in the affirmative.
The records bear the following:
1. Registration No. 32416 issued for the mark "PAPA" under Class 29 goods was
deemed expired as of February 11, 2004 (Exhibit "A" attached to the VERIFIED NOTICE
OF OPPOSITION). Application Serial No. 4- 2005-010788 was filed on October 28, 2005
for the same mark "PAPA" for Class 30 goods and Registration No. 42005010788 was
issued on March 19,2007;
2. Opposer was issued for the mark "PAPA BANANA CATSUP LABEL" on August 11, 1983
Registration No. SR-6282 for Class 30 goods in the Supplemental Register, which
registration expired in 2003. Application Serial No. 4-2006-012364 was filed for the
mark "PAPA LABEL DESIGN" for Class 30 goods on November 15, 2006, and
Registration No. 42006012364 was issued on April 30, 2007; and
3. Lastly, Registration No. 34681 for the mark "PAPA KETSARAP" for Class 30 goods
was issued on August 23, 1985 and was renewed on August 23, 2005.
Though Respondent-applicant was first to file the subject application on April 04, 2002
vis-a-vis the mark "PAPA" the filing date of which is reckoned on October 28, 2005, and
the mark "PAPA LABEL DESIGN" the filing date of which is reckoned on November 15,
2006, Opposer was able to secure a registration for the mark "PAPA KETSARAP" on
August 23, 1985 considering that Opposer was the prior registrant and that its renewal
application timely filed on August 23, 2005.
xxxx
Pursuant to [Section 123.l(d) of the IP Code], the application for registration of the
subject mark cannot be allowed considering that Opposer was earlier registrant of the
marks PAPA and PAPA KETSARAP which registrations were timely renewed upon its
expiration.
Respondent-applicant's mark "PAPA BOY & DEVICE" is confusingly similar to Opposer's

mark "PAPA KETSARAP" and is applied to goods that are related to Opposer's goods,
but Opposer's mark "PAPA KETSARAP" was registered on August 23, 1985 per
Certificate of Registration No. 34681, which registration was renewed for a period of 10
years counted from August 23, 2005 per Certificate of Renewal of Registration No.
34681 issued on August 23, 2005. To repeat, Opposer has already registered a mark
which Respondent-applicant's mark nearly resembles as to likely deceive or cause
confusion as to origin and which is applied to goods to which respondent-applicant's
goods under Class 30 are closely related.
Section 138 of the IP Code provides that a certificate of registration of a mark is prima
facie evidence of the validity of the registration, the registrant's ownership of the mark,
and of the registrant's exclusive right to use the same in connection with the goods and
those that are related thereto specified in the certificate.
We agree that respondent's mark cannot be registered. Respondent's mark is related to

a product, lechon sauce, an everyday all-purpose condiment and sauce, that is not
subjected to great scrutiny and care by the casual purchaser, who knows from regular
visits to the grocery store under what aisle to find it, in which bottle it is contained, and
approximately how much it costs. Since petitioner's product, catsup, is also a household
product found on the same grocery aisle, in similar packaging, the public could think
that petitioner had expanded its product mix to include lechon sauce, and that the
"PAPA BOY" lechon sauce is now part of the "PAPA" family of sauces, which is not
unlikely considering the nature of business that petitioner is in.
Thus, if allowed registration, confusion of business may set in, and petitioner's hard-
earned goodwill may be associated to the newer product introduced by respondent, all
because of the use of the dominant feature of petitioner's mark on respondent's mark,
which is the word "PAPA." The words "Barrio Fiesta" are not included in the mark, and
although printed on the label of respondent's lechon sauce packaging, still do not
remove the impression that "PAPA BOY" is a product owned by the manufacturer of
"PAPA" catsup, by virtue of the use of the dominant feature. It is possible that
petitioner could expand its business to include lechon sauce, and that would be well
within petitioner's rights, but the existence of a "PAPA BOY" lechon sauce would already
eliminate this possibility and deprive petitioner of its rights as an owner of a valid mark
included in the Intellectual Property Code.
The Court of Appeals likewise erred in finding that "PAPA," being a common term of
endearment for one's father, is a word over which petitioner could not claim exclusive
use and ownership. The Merriam-Webster dictionary defines "Papa" simply as "a
person's father." True, a person's father has no logical connection with catsup products,
and that precisely makes "PAPA" as an arbitrary mark capable of being registered, as it
is distinctive, coming from a family name that started the brand several decades ago.
What was registered was not the word "Papa" as defined in the dictionary, but the word
"Papa" as the last name of the original owner of the brand.
In fact, being part of several of petitioner's marks, there is no question that the IPO has
found "PAPA" to be a registrable mark.
Respondent had an infinite field of words and combinations of words to choose from to
coin a mark for its lechon sauce. While its claim as to the origin of the term "PAPA BOY"
is plausible, it is not a strong enough claim to overrule the rights of the owner of an
existing and valid mark. Furthermore, this Court cannot equitably allow respondent to
profit by the name and reputation carefully built by petitioner without running afoul of
the basic demands of fair play.51
WHEREFORE, we hereby GRANT the petition. We SET ASIDE the June 23, 2011

Decision and the October 4, 2011 Resolution of the Court of Appeals in CA-G.R. SP
No. 107570, and REINSTATE the March 26, 2008 Decision of the Bureau of Legal
Affairs of the Intellectual Property Office (IPO-BLA) and the January 29,
2009 Decision of the Director General of the IPO.
SO ORDERED.
Sereno, C.J., (Chairperson), Bersamin, Perlas-Bernabe, and Jardeleza, JJ., concur.

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1. ABS-CBN PUBLISHING, INC., PETITIONER, VS.

[ G.R. No. 217916, June 20, 2018 ]

The Antecedent Facts

Hence, this petition.

The Court's Ruling

First, on the procedural issue:

In this case, no exceptional circumstance exists.

Second, on the substantive issue:

To determine whether a mark is to be considered as "identical" or that which is confusingly

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a

Two things must be said of this argument.

Peralta, (Acting Chairperson), Del Castillo,* Perlas-Bernabe, and Caguioa, JJ., concur.

Rollo, Vol. I, pp. 109-110.

Id. at 122-126; rollo, Vol. II, pp. 624-628.

Rollo, Vol. II, p. 633.

Rollo, Vol. I, p. 68.

Id. at 154, citing Calipay v. NLRC, 640 Phil. 458, 466 (2010).

Boardwalk Business Ventures v. Villareal, 708 Phil. 443, 454-456 (2013).

Maliwat, 489 Phil. 230, 235 (2005).

Rollo, Vol. I, p. 108.

Rollo, Vol. I, p. 31.

Rollo, Vol. I, p. 446.

Rollo, Vol. I, p. 27.

Rollo, Vol. I. p. 10.

Rollo. Vol. I, p. 109.

Rollo, Vol. I, p. 417.

2. CITIGROUP, INC., PETITIONER, VS. CITYSTATE SAVINGS BANK, INC.

[ G.R. No. 205409, June 13, 2018 ]

In addition, petitioner or Citibank N.A., a wholly-owned subsidiary of petitioner, owns the

This Court denies the Petition.

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(l) Consists of color alone, unless defined by a given form; or

(m) Is contrary to public order or morality.

A visual comparison of the marks reveals no likelihood of confusion.

Respondent's mark is:

3. SAN MIGUEL PURE FOODS COMPANY, INC., PETITIONER, VS.

[G.R. No. 217788]

FOODSPHERE, INC., PETITIONER, VS. SAN MIGUEL PURE FOODS

[ G.R. No. 217781, June 20, 2018 ]

The antecedent facts are as follows:

On November 4, 2010, SMPFCI filed a Complaint[3] for trademark infringement and unfair

THE HONORABLE COURT OF APPEALS ERRED IN RESOLVING THAT THE AWARD OF

THE COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION IN EXCESS OF OR

The petitions are devoid of merit.

Section 168 of the IP Code provides that:

Thus, the essential elements of an action for unfair competition are:

Rollo (G.R. No. 217788), at 98-132.

Rollo (G.R. No. 217781), p. 495.

Rollo (G.R. No. 217788), pp. 413-414.

Rollo (G.R. No. 217781), p. 503.

Rollo (G.R. No. 217788), p. 423.

Rollo (G.R. No. 217781), pp. 507-515.

Rollo (G.R. No. 217788), p. 609.

Rollo (G.R. No. 217781) p. 21.

Rollo (G.R. No. 217788), pp. 25-30.

Rollo (G.R. No. 217781), p. 514.

Gomez, et al., 736 Phil. 460, 482 (2014).

Rollo (G.R. No. 217781), p. 131.

Phil. 244, 256 (2014).

Espiritu, et al. v. Del Rosario, 745 Phil. 566, 588 (2014).

G.R. No. 200369, March 1, 2017.

4. SOCIETE DES PRODUITS, NESTLE, S.A., PETITIONER, VS. PUREGOLD PRICE