LIP CASE OUTLINE

1. shampoo - Unilever v. Tan, 715 SCRA 36

2. jeans - Diaz v. People, 691 SCRA 139*
3. gasul - Republic Gas Corporation v. Petron Corporation, 698 SCRA 666
4. burner - Uyco v. Lo, 689 SCRA 378
5. air conditioner - EY Industrial v. Shen, 634 SCRA 363
6. coffee - Coffee Partners v. San Francisco Coffee, 614 SCRA 113
7. milk - Societe Des Produits v. Dy, 627 SCRA 223*
8. burger - McDonald's v. Big Mak, 437 SCRA 10
McDonald’s v. Macjoy, 514 SCRA 95
9. sauce - UFC v. Barrio Fiesta Manufacturing Corporation, 781 SCRA 124*
10. TV - Taiwan Kolin Corporation v. Kolin Electronics Company, 754 SCRA 556*
Mighty Corporation v. E&J Gallo Winery, 434 SCRA 437 (10 tests of relatedness)*
11. news report - ABS CBN v. Gozon, 753 SCRA 38*
12. format of TV show - Joaquin v. Drilon, 302 SCRA 225
13. medicine - Dermaline v. Myra, 628 SCRA 356
Zuneca Pharmaceutical v. Natrapharm, G.R. No. 197802 (2015)
14. book - Habana v. Robles, 310 SCRA 511
15. clothes - Great White Shark v. Caralde, 686 SCRA 201*
Skechers v. Inter Pacific, 646 SCRA 448
16. tennis racket - Superior v. Kunnan, 618 SCRA 531*
17. bank - GSIS Family Bank v. BPI Family Bank, 781 SCRA 284
18. school - Fredco v. Harvard, 650 SCRA 232 (12 criteria in determining whether a mark
is well-known)
19. course - Industrial Refractories Corporation v. CA, 390 SCRA 252

*Probable bar question

Unilever v. Tan, 715 SCRA 36
FACTS: Several boxes containing
thousands of Creamsilk, Vaseline and
Sunsilk sachet shampoos were found in
the warehouse of Michael Tan. He insisted
that these were not counterfeit products
as they were for personal consumption,
and not for sale. Cream Silk, Vaseline and
Sunsilk are registered trademarks owned
by Unilever, Inc. The latter claimed that
the confiscated sachets were all
counterfeit products.
ISSUE: Is there probable cause to hold
Michael Tan for prosecution of unfair
competition?
RULING: Yes. The huge volume and the
location where these shampoos were
found belie Michael’s claim of personal
consumption. Human experience and
common sense dictate that shampoo
products intended for personal
consumption will ordinarily and logically
be found inside the house, specifically,
inside the bathroom or in a private room,
not in the consumer’s warehouse.
Diaz v. People, 691 SCRA 139*
FACTS: Levi Strauss and Company is
engaged in the apparel business. It is the
registered owner of trademarks and
designs of Levi’s jeans like Levi’s 501,
which has the following registered
trademarks: (1) the leather patch showing
two horses pulling a pair of pants; and (2)
the arcuate pattern with the inscription
“LEVI STRAUSS & CO.” Levi’s sued Diaz for
trademark infringement claiming that he
was making fake Levi’s jeans. Diaz
countered that he used the label “LS
Jeans Tailoring” in the jeans that he made
and sold; that LS stood for “Latest Style;”
and that the leather patch on his jeans
had two buffaloes, not two horses.
ISSUE: Is Diaz guilty of trademark
infringement?
RULING: No. The likelihood of confusion is
the gravamen of the offense of
trademark infringement. The ordinarily
intelligent buyer would not be confused
with the use of two-horse design of Levi’s
from the two-buffalo design of Diaz. The
red tab of Levi’s indicates the word
“Levi’s” while the jeans of Diaz had “LSJT”
on it which means “LS Jeans Tailoring.”
The customers of Levi’s are mall goers
belonging to Class A and B market group,
while that of Diaz are those who belong
to class D and E market who can only
afford Php 300.00 for a pair of made-to-
order pants. Under these circumstances,
confusion and deception are remote.
What are the factors in determining if
there is trademark infringement? There
are five.
The elements of trademark infringement
are as follows:
1. The trademark being infringed is
registered in the IPO. In case of trade
name, the same need not be registered.
2. The trademark is reproduced,
counterfeited, copied or colorably
imitated by the infringer.
3. The infringing mark is used in
connection with the sale, offering for sale,
or advertising of any goods, business or
services; or the infringing mark is applied
to labels, signs, prints, packages,
wrappers, receptacles or advertisements
intended to be used upon or in
connection with such goods, business or
services.
4. The use or application of the infringing
mark is likely to cause confusion, mistake
or to deceive purchasers or others as to
the goods or services themselves or as to
the source of origin of such goods or
services or the identity of such business.
5. The use or application of the infringing
mark is without the consent of the
trademark owner or the assignee thereof.
Republic Gas Corporation v. Petron
Corporation, 698 SCRA 666
Petron Corporation owns the trademark
“Gasul LPG,” while Shell corporation owns
the marks “Shellane” and “Shell device”
in connection with the production, sale
and distribution of Shellane LPGs. Petron
and Shell learned that Republic Gas
Corporation has been engaged in the
unauthorized refilling and sale of LPGs
bearing the registered trademarks “Gasul
LPG” and “Shellane LPG.” They sued Diaz
for trademark infringement and unfair
competition. Regasco countered that
since it was in the refilling business, it
merely refilled empty cylinders with
liquefied petroleum gas. It did not pass off
the goods of Petron and Shell as no other
act was done other than to refill them in
the normal course of business. The end-
users know fully well that the contents of
their cylinders are not those produced by
Petron and Shell.
ISSUE: Is Regasco guilty of trademark
infringement?
RULING: Yes. Mere unauthorized use of a
container bearing a registered trademark
in connection with the sale, distribution or
advertising of goods or services which is
likely to cause confusion, mistake or
deception among the buyers or
consumers can be considered as
trademark infringement. The consuming
public have no way of knowing that the
gas contained in the LPG tanks bearing
the marks of Petron and Shell is in reality
not the latter’s LPG product after the
same had been illegally refilled.
ISSUE: Is Regasco guilty of unfair
competition?
RULING: Yes. Regasco, by refilling and
selling LPG cylinders bearing the
registered marks of Petron and Shell, is
selling goods by giving them the general
appearance of goods of another
manufacturer. This is unfair competition
which has been defined as 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.
What is meant by “passing off” or
“palming off”?
It refers to the act of giving one’s goods
the general appearance of goods of
another manufacturer, with the end and
probable effect of deceiving the public.
Uyco v. Lo, 689 SCRA 378
FACTS: Loren owns the trademarks
“Hipolito & Sea Horse & Triangular Device”
and “FAMA” of the company, Casa
Hipolito S.A. Portugal. He sells kerosene intent
burners made in the Philippines with the As to There is No similarity
trademarks “Hipolito & Sea Horse & similarity of similarity of of goods.
Triangular Device” and “FAMA” and the goods goods.
As to The It is broader
designations “Made in Portugal” and
coverage coverage is in scope. It
“Original Portugal” written in the limited under does not
wrappers. Lemar counters that the the only include
designations “Made in Portugal” and Intellectual the IP Code
“Original Portugal” do not refer to the Property but also the
origin of the goods, but are merely Code. New Civil
descriptive and refer to the source of the Code in
Article 28
design and the history of manufacture.
thereof.
Loren alleges that she previously dealt
and authorized Lemar to sell the kerosene Note: The last two distinctions are
burners but such authority has long been supplement to the ruling of the Supreme
revoked. Court.

ISSUE: Is there probable cause to indict EYIS Corporation v. Shen Dar Corporation,
Lemar for false designation of origin under 634 SCRA 363
the trademark law? FACTS: EYIS Corporation and Shen Dar
Corporation were both issued certificates
RULING: Yes. The law on trademarks and of registration of the trademark “Vespa”
trade names precisely precludes a person for air compressors. Shen Dar filed a
from profiting from the business reputation petition for cancellation of trademark
built by another and from deceiving the against EYIS before the IPO. After due
public as to the origins of products. hearing, the IPO rendered judgment in
favor of EYIS on the ground that it is the
Do you still recall the distinctions between latter which first used the disputed
trademark infringement and unfair trademark, and thus ordered the
competition? cancellation of Shen Dar’s certificate of
Trademark Unfair registration.
infringement competition
As to cause It refers to It is the
ISSUE: Can the IPO order the cancellation
of action the passing off
unauthorized or palming of Shen Dar’s certificate of registration
use of the off of one’s even if EYIS did not file a petition therefor?
registered goods as
trademark. those of RULING: Yes. The fact that no petition for
another. cancellation was filed against the
As to It is essential. It is not
certificate of registration issued to Shen
registration essential.
Dar does not preclude the cancellation
As to It is not It is
fraudulent necessary. necessary. of its certificate of registration. It must be
emphasized that, during the hearing for
the cancellation of EYIS’ certificate of
registration, Shen Dar tried to establish
that it, not EYIS, was the true owner of the
mark VESPA and, thus, entitled to have it
registered. Shen Dar had more than
sufficient opportunity to present its
evidence and argue its case, and it did. It
was given its day in court and its right to
due process was respected. The IPO
Director General’s disregard of the
procedure for the cancellation of a
registered mark was a valid exercise of his
discretion. Administrative bodies like the
Intellectual Property Office are not bound
by technical rules of procedure.
What is the peculiar circumstance in this
case?
Shen Dar filed for cancellation of
registration filed by EYIS, but it is Shen Dar
whose registration was cancelled. If one
files a petition for cancellation of mark
registration, it is expected that it will be
either granted or denied. In this case, the
petition was not only denied, the
registration of the petitioner had also
been cancelled.
Is there a violation of administrative due
process in this case?
No. During the hearing for the
cancellation of EYIS’ certificate of
registration, Shen Dar tried to establish
that it, not EYIS, was the true owner of the
mark VESPA and, thus, entitled to have it
registered. Shen Dar had more than
sufficient opportunity to present its
evidence and argue its case, and it did. It
was given its day in court and its right to
due process was respected.
Is the IPO bound by the technical rules of
evidence?
No. Administrative bodies like the
Intellectual Property Office are not bound
by technical rules of procedure.
What is the quantum of evidence required
before the Bureau of Legal Affairs-IPO?
Substantial evidence.
Why substantial evidence?
It is because the proceedings before the
BLA-IPO are administrative in nature.
What do you mean by substantial
evidence?
It is such evidence that a reasonable
mind might accept as adequate to
produce a conclusion.
Coffee Partners v. San Francisco Coffee,
614 SCRA 113
FACTS: San Francisco Coffee & Roastery,
Inc., engaged in the wholesale and retail
sale of coffee, had built a customer base
that included Figaro Company, Tagaytay
Highlands, Fat Willy’s, and other
companies. In June 2014, it discovered
that Coffee Partners, Inc. was about to
open a coffee shop under the name “San
Francisco Coffee” in Libis, Quezon City,
impelling it to sue Coffee Partners for
infringement. The latter argued that the
name “San Francisco Coffee” is not
registered with the IPO, and that “San
Francisco” is a geographic term, while
“coffee” is a generic term.
ISSUE: Is there a trade name infringement?
RULING: Yes. Republic Act No. 8293,
which took effect on January 1, 1998, has
dispensed with the registration
requirement of trade names. It is the
likelihood of confusion that is the
gravamen of infringement. But there is no
absolute standard for likelihood of
confusion. In determining similarity and
likelihood of confusion, our jurisprudence
has developed two tests: the dominancy
test and the holistic test.
Applying either the dominancy test or the
holistic test, Coffee Partners’ “San
Francisco coffee” trademark is a clear
infringement of San Francisco Coffee &
Roastery’s trade name. The parties are
engaged in the same business of selling
coffee, whether wholesale or retail. The
likelihood of confusion is higher in cases
where the business of one corporation is
the same or substantially the same as that
of another corporation. In this case, the
consuming public will likely be confused
as to the source of the coffee being sold
at Coffee Partners’ coffee shops.
The argument that “San Francisco” is just
a proper name referring to the famous
city in California and that “coffee” is
simply a generic term, is untenable. San
Francisco Coffee & Roastery has acquired
an exclusive right to the use of the trade
name “San Francisco Coffee & Roastery,
Inc.” since the registration of the business
name with the DTI in 1995. Thus, its use of
its trade name from then on must be free
from any infringement by similarity. Of
course, this does not mean that San
Francisco Coffee & Roastery has exclusive
use of the geographic word “San
Francisco” or the generic word “coffee.”
Geographic or generic words are not, per
se, subject to exclusive appropriation. It is
only the combination of the words “San
Francisco coffee,” which is the trade
name in its coffee business, that is
protected against infringement on
matters related to the coffee business to
avoid confusing or deceiving the public.
Is the mark “San Francisco” protected by
the Paris Convention, under this case?
The Court made no mention of the Paris
Convention. It ruled that Republic Act No.
8293, which took effect on January 1,
1998, has dispensed with the registration
requirement of trade names. Thus, San
Francisco Coffee is protected from
appropriation of its trade name by
another without the former’s consent.
Societe Des Produits v. Dy, 627 SCRA 223*
FACTS: Nestle owns the “Nan” trademark
for its line of infant powdered milk
products. Dy repacks and sells imported
powdered milk from Australia bearing the
name “Nanny,” which is a full cream milk
for adults. Dy insists that consumers would
not be confused with Nanny and Nan
because (1) Nan products are in tin cans,
while Nanny are contained in plastic
packs; (2) the predominant colors used in
the labels of Nan products are blue and
white, whereas Nanny’s products are blue
and green; (3) the labels of Nan products
have at the bottom portion an elliptical
shaped figure containing inside it a
drawing of nestling birds, which is
overlapped by the trade-name “Nestle,”
while the plastic packs of Nanny have a
drawing of milking cows lazing on a vast
green field, back-dropped with snow
covered mountains; and (4) all Nan
products are milk formulas intended for
infants, while Nanny is an instant full
cream powdered milk intended for
adults.
ISSUE: Is Dy liable for trademark
infringement?
RULING: Yes. The dominancy test is
applicable to the case at bar.
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.
Applying the dominancy test in the
present case, the Court finds that Nanny is
confusingly similar to Nan. It bears stress
that “Nan” is the prevalent feature of
Nestle’s line of infant powdered milk
products. It is written in bold letters and
used in all products. The first three letters
of “Nanny” are exactly the same as the
letters of “Nan”. When “Nan” and
“Nanny” are pronounced, the aural
effect is confusingly similar.
Dy cannot assert that Nan and Nanny are
non-competing products because one is
an adult milk and the other is an infant
formula. A registered trademark owner
enjoys protection in product and market
areas that are the normal potential
expansion of his business. 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. Nanny
and Nan have the same classification,
descriptive properties and physical
attributes. Both are classified under Class
6 as milk products, and both are in
powder form. Also, Nanny and Nan are
displayed in the same section of stores
the milk section. The use of Nanny is likely
to cause confusion or mistake in the mind
of the buying public.
What is the ruling of the Court of Appeals?
The Court of Appeals reversed the trial
court ruling. It ruled that Dy is not liable for
infringement. “While it is true that both
Nan and Nanny are milk products and
that the word Nan is contained in the
word Nanny, there are more glaring
dissimilarities in the entirety of their
trademarks as they appear in their
respective labels and also 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. Even the trial court
found these glaring dissimilarities.” In view
of the foregoing, the mark Nanny is not
confusingly similar to Nan.
What is the ruling of the Supreme Court?
The Supreme Court affirmed the ruling of
the trial court.
What is the rationale?
The Court agreed with the lower courts
that there are differences between Nan
and Nanny. 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. The Court has
recognized that the scope of protection
afforded to registered trademark owners
extends to market areas that are the
normal expansion of business.
What is the test applied by the Court?
It applied the dominancy test.
Is it correctly applied here?
Yes.
Is holistic test more appropriate?
No. The holistic test is not the one
applicable in this case, the dominancy
test being the one more suitable,
considering the facts of the case.
Where lies the difference?
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.
What is the idem sonans rule?
It dictates that two names are said to be
“idem sonantes” if the attentive ear finds
difficulty in distinguishing them when
pronounced, or if common and long-
continued usage has by corruption or
abbreviation made them identical in
pronunciation.
Is the idem sonans rule applied here?
Yes. In determining the issue of confusing
similarity, the Court takes into account the
aural effect of the letters contained in the
marks. In Marvex Commercial Company,
Inc. v. Petra Hawpia & Company, the
Court held that the trademarks SALONPAS
and LIONPAS are confusingly similar in
sound. Both these words have the same
suffix, PAS, which is used to denote a
plaster that adheres to the body with
curative powers. The following random list
of confusingly similar sounds in the matter
of trademarks will reinforce our view that
SALONPAS and LIONPAS are confusingly
similar in sound: Gold Dust and Gold Drop;
Jantzen and Jass-Sea; Silver Flash and
Supper Flash; Cascarete and Celborite;
Celluloid and Cellonite; Chartreuse and
Charseurs; Cutex and Cuticlean; Hebe
and Meje; Kotex and Femetex; Zuso and
Hoo Hoo. Leon Amdur, in his book Trade-
Mark Law and Practice, pp. 419-421, cities
[sic], as coming within the purview of the
idem sonans rule, Yusea and U-C-A,
Steinway Pianos and Steinberg Pianos,
and Seven-Up and Lemon-Up. In Co Tiong
vs. Director of Patents, this Court
unequivocally said that Celdura and
Condura are confusingly similar in sound;
this Court held in Sapolin Co. vs.
Balmaceda, 67 Phil. 795 that the name
Lusolin is an infringement of the trademark
Sapolin, as the sound of the two names is
almost the same.
McDonald's v. Big Mak, 437 SCRA 10
FACTS: McDonald’s Corporation is
operating a global chain of fast-food
restaurants. It owns a family of trademarks
including the “Big Mac” mark for its
double-decker hamburger sandwich,
which are all registered with the United
States Trademarks Registry as well as with
the Intellectual Property Office. L.C. Big
Mak Burger, Inc. operates fast-food
outlets and snack vans in Metro Manila
and nearby provinces. It offers hamburger
sandwiches bearing the mark “Big Mak,”
ISSUE: Is L.C. Big Mak liable for trademark
infringement?
RULING: Yes. The use of the “Big Mak”
mark results in likelihood of confusion. First,
“Big Mak” sounds exactly the same as
“Big Mac.” Second, the first word in “Big
Mak” is exactly the same as the first word
in “Big Mac.” Third, the first two letters in
“Mak” are the same as the first two letters
in “Mac.” Fourth, the last letter in “Mak”
while a “k” sounds the same as “c” when
the word “Mak” is pronounced. Fifth, in
Filipino, the letter “k” replaces “c” in
spelling, thus Caloocan is spelled
Kalookan. In short, aurally the two marks
are the same, with the first word of both
marks phonetically the same, and the
second word of both marks also
phonetically the same. Visually, the two
marks have both two words and six letters,
with the first word of both marks having
the same letters and the second word
having the same first two letters. In
spelling, considering the Filipino
language, even the last letters of both
marks are the same. Clearly, L.C. Big Mark
Burger adopted in “Big Mak” not only the
dominant but also almost all the features
of McDonald’s “Big Mac.” Applied to the
same food product of hamburgers, the
two marks will likely result in confusion in
the public mind.
What are the four reasons behind the
ruling?
The reasons include:
1. “Big Mak” sounds exactly the same as
“Big Mac.”
2. The first word in “Big Mak” is exactly the
same as the first word in “Big Mac.”
3. The first two letters in “Mak” are the
same as the first two letters in “Mac.”
4. The last letter in “Mak” while a “k”
sounds the same as “c” when the word
“Mak” is pronounced.
The Court considers the visual and aural
effect. How do you apply it here?
Aurally, the two marks are the same, with
the first word of both marks phonetically
the same, and the second word of both
marks also phonetically the same.
Visually, the two marks have both two
words and six letters, with the first word of
both marks having the same letters and
the second word having the same first
two letters.
There is another ruling of the Court in
McDonald’s v. Macjoy. What is the ruling
therein?
Applying the dominancy test, the Court
finds that McDonald’s and Macjoy marks
are confusingly similar with each other
such that an ordinary purchaser can
conclude an association or relation
between the marks. To begin with, both
marks use the corporate M design logo
and the prefixes Mc and/or Mac as
dominant features. The first letter M in
both marks puts emphasis on the prefixes
Mc and/or Mac by the similar way in
which they are depicted i.e. in an arch-
like, capitalized and stylized manner. For
sure, it is the prefix Mc, an abbreviation of
Mac, which visually and aurally catches
the attention of the consuming public.
Verily, the word Macjoy attracts attention
the same way as did McDonald’s,
MacFries, McSpaghetti, McDo, Big Mac
and the rest of the MCDONALDS marks
which all use the prefixes Mc and/or Mac.
UFC v. Barrio Fiesta Manufacturing
Corporation, 781 SCRA 124*
FACTS: Barrio Fiesta Manufacturing
Corporation filed an application for the
registration of the trademark “Papa Boy &
Device” for lechon sauce. Nutri-Asia, Inc.,
which is the surviving entity in a merger
with UFC Philippines, Inc., filed a verified
opposition against the application of
Barrio Fiesta. Nutri-Asia alleged in its
opposition 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
including “Papa Ketsarap,” and that
Barrio Fiesta'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 same mark is a
variation or derivative of Nutri-Asia's
"Papa" marks, especially considering that
the latter's ketchup product and Barrio
Fiesta's lechon sauce product are related
articles.
ISSUE: Is Barrio Fiesta liable for trademark
infringement?
RULING: Yes. A scrutiny of both marks
would show that the IPO-BLA and the IPO
Director General correctly found the word
“Papa” as the dominant feature of Nutri-
Asia'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. The
word “Papa” is written on top of and
before the other words such that it is the
first word or figure that catches the eyes.
Furthermore, the part of Barrio Fiesta's
mark which appears prominently to the
eyes and ears is the phrase "Papa Boy"
and that is what a purchaser of its
product would immediately recall, not
the smiling hog. Its 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
Nutri-Asia is in. Thus, if allowed registration,
confusion of business may set in, and
Nutri-Asia's hard-earned goodwill may be
associated to the newer product
introduced by Barrio Fiesta, all because of
the use of the dominant feature of Nutria-
Asia's mark, which is the word “Papa.” The
words “Barrio Fiesta” are not included in
the mark, and although printed on the
label of the 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.
“Papa,” being a common term of
endearment for one's father, is not a
generic term. 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.
Is the ruling of the Bureau of Legal Affairs
sustained by the IPO Director General?
Yes.
Did the Court of Appeals sustain the ruling
of the IPO?
No. It is of the view that the trademark
"Papa Boy & Device" is not confusingly
similar to "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.
(1) While respondent's products are both
labeled as banana sauces, that of
petitioner Barrio Fiesta is labeled as
lechon sauce.
(2) 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.
(3) 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.
(4) Lastly, while "Papa" is a surname, it is
more widely known as a term of
endearment for one's father. (Nutri-Asia
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.)
What is the settled jurisprudence on the
likelihood of confusion?
In likelihood of confusion, 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 “ordinary purchaser” is 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.
Taiwan Kolin Corporation v. Kolin
Electronics Company, 754 SCRA 556*
FACTS: Taiwan Kolin Corporation filed with
the Intellectual Property Office an
application for the use of “Kolin” on
television sets, cassette recorder, VCD
amplifiers, camcorders and other audio or
video electronic equipment, flat iron,
vacuum cleaners, cordless handsets,
videophones, facsimile machines,
teleprinters, cellular phones and
automatic goods vending machine. Kolin
Electronics Co., Inc. opposed Taiwan
Kolin’s application. As argued, the mark
Taiwan Kolin seeks to register is identical, if
not confusingly similar, with its “Kolin”
mark registered on November 23, 2003,
covering the following products:
automatic voltage regulator, converter,
recharger, stereo booster, AC-DC
regulated power supply, step-down
transformer, and PA amplified AC-DC. In
answer to respondent’s opposition,
Taiwan Kolin argued that the benefits
accorded to a well-known mark should
be accorded to it.
ISSUE: Is Taiwan Kolin Corporation entitled
to its trademark registration of “Kolin” over
its specific goods of television sets and
DVD players?
RULING: Yes. Mere uniformity in
categorization, by itself, does not
automatically preclude the registration of
what appears to be an identical mark, if
that be the case. In fact, this Court, in a
long line of cases, has held that such
circumstance does not necessarily result
in any trademark infringement. Verily,
whether or not the products covered by
the trademark sought to be registered by
Taiwan Kolin, on the one hand, and those
covered by the prior issued certificate of
registration in favor of Kolin Electronics, on
the other, fall under the same categories
in the Nice Classification is not the sole
and decisive factor in determining a
possible violation of Kolin Electronics’
intellectual property right should
petitioner’s application be granted.
In resolving one of the pivotal issues in this
case––whether or not the products of the
parties involved are related––the doctrine
in Mighty Corporation is authoritative. The
Court held therein that the goods should
be tested against several factors before
arriving at a sound conclusion on the
question of relatedness. Clearly then, it
was erroneous for respondent to assume
over the CA to conclude that all
electronic products are related and that
the coverage of one electronic product
necessarily precludes the registration of a
similar mark over another. In this digital
age wherein electronic products have
not only diversified by leaps and bounds,
and are geared towards interoperability,
it is difficult to assert readily, as
respondent simplistically did, that all
devices that require plugging into sockets
are necessarily related goods. It cannot
be stressed enough that the products
involved in the case at bar are, generally
speaking, various kinds of electronic
products. These are not ordinary
consumable household items, like catsup,
soy sauce or soap which are of minimal
cost. The products of the contending
parties are relatively luxury items not easily
considered affordable. Accordingly, the
casual buyer is predisposed to be more
cautious and discriminating in and would
prefer to mull over his purchase.
Confusion and deception, then, is less
likely.
What are the tests of relatedness as
pronounced by the Court in Mighty
Corporation v. E&J Gallo Winery, 434
SCRA 437?*
In resolving whether goods are related,
several factors come into play:
(a) the business (and its location) to which
the goods belong;
(b) the class of product to which the
goods belong;
(c) the product's quality, quantity, or size,
including the nature of the package,
wrapper or container;
(d) the nature and cost of the articles;
(e) the descriptive properties, physical
attributes or essential characteristics with
reference to their form, composition,
texture or quality;
(f) the purpose of the goods;
(g) whether the article is bought for
immediate consumption, that is, day-to-
day household items;
(h) the fields of manufacture;
(i) the conditions under which the article is
usually purchased; and
(j) the channels of trade through which
the goods flow, how they are distributed,
marketed, displayed and sold.
Note: I may ask this as a hypothetical
question. For example, apply the tests of
relatedness to determine if X good is
related to Y good.
Mention three factors used by Supreme
Court in the Taiwan Kolin case. Explain
each.
The factors used in the Taiwan Kolin case
are:
1. the class of product to which the
goods belong;
 2. the purpose of the goods; and
3. the channels of trade through
which the goods flow, how they
are distributed, marketed,
displayed and sold.
Thus:
1. Taiwan Kolin’s goods are classified
as home appliances as opposed
to Kolin Electronics’ goods which
are power supply and audio
equipment accessories;
2. Taiwan Kolin’s television sets and
DVD players perform distinct
function and purpose from Kolin
Electronics’ power supply and
audio equipment; and
3. Taiwan Kolin sells and distributes its
various home appliance products
on wholesale and to accredited
dealers, whereas Kolin Electronics’
goods are sold and flow through
electrical and hardware stores.
Note: What do you think that test of
relatedness which had not been
discussed by the Court in this case? Think.
ABS CBN v. Gozon, 753 SCRA 38*
FACTS: ABS-CBN conducted live audio-
video coverage of and broadcasted the
arrival at the Ninoy Aquino International
Airport of Angelo dela Cruz, an overseas
Filipino worker in Iraq who was kidnapped
by Iraqi militants, and the subsequent
press conference. ABS-CBN allowed
Reuters Television Service to air the
footages it had taken earlier under a
special embargo agreement. GMA-7,
unaware that Reuters was airing footages
of ABS-CBN, immediately carried the live
newsfeed in its program “Flash Report,”
together with its live broadcast.
ISSUE: Is the news footage copyrightable?
RULING: Yes. Under the Intellectual
Property Code, “works are protected by
the sole fact of their creation, irrespective
of their mode or form of expression, as
well as of their content, quality and
purpose.” These include “audiovisual
works and cinematographic works and
works produced by a process analogous
to cinematography or any process for
making audiovisual recordings. It true that
news of the day and other miscellaneous
facts having the character of mere items
of press information are considered
unprotected subject matter. However,
the Code does not state that expression
of the news of the day, particularly when
it underwent a creative process, is not
entitled to protection. News coverage in
television involves framing shots, using
images, graphics and sound effects. It
involves creative process and originality.
Television news footage is an expression
of the news. Hence, it is copyrightable.
True or False:
1. News report is copyrightable.
False.
2. News footage is copyrightable,
True.
Is the doctrine laid down in Joaquin v.
Drilon applicable here?
Yes.
Where lies the difference between the two
cases?
In ABS-CBN v. Gozon, the Court noted
that the Code does not state that
expression of the news of the day,
particularly when it underwent a creative
process, is not entitled to protection.
An idea or event must be distinguished
from the expression of that idea or event.
An idea has been likened to a ghost in
that it "must be spoken to a little before it
will explain itself."
In Joaquin, Jr. v. Drilon, a television format
(i.e., a dating show format) is not
copyrightable because it is a mere
concept. The copyright does not extend
to the general concept or format of its
dating game show. What is copyrightable
in this case is the audio-visual recordings
of each episode of Rhoda and Me,
classified as cinematographic works and
works produced by a process analogous
to cinematography or any process for
making audio-visual recordings. Mere
description by words of the general
format of the two dating game shows is
insufficient
Joaquin v. Drilon, 302 SCRA 225
FACTS: BJ Productions, Inc. has copyright
over “Rhoda and Me,” a dating game
show aired on television. Its President saw
an episode of “It’s a Date,” a show aired
in Channel 9 and produced by IXL
Productions. He wrote IXL Productions,
informing the latter that it has copyright
over “Rhoda and Me” and demanded
that the airing of “It’s a Date” be
discontinued as the latter show has
substantially the same format as that of
“Rhoda and Me.”
ISSUE: Is IXL Productions guilty of copyright
infringement?
RULING: No. The format of a show is not
copyrightable. The format or mechanics
of a television show is not included in the
list of protected works. For this reason, the
protection afforded by the law cannot be
extended to cover them. Under Section
175 of the Intellectual Property Code,
copyright does not extend to an idea,
procedure, system, method or operation,
concept, principle, discovery or mere
data as such, regardless of the form in
which it is described, expressed,
explained, illustrated or embodied in such
work. A television show includes more
than mere words can describe because it
involves a whole spectrum of visuals and
effects, video and audio, such that no
similarity or dissimilarity may be found by
merely describing the general copyright
or format of both dating game shows.
If you are a Court of Appeals Justice, how
will you decide the Wowowee case?
Research
The Court of Appeals (CA) has dismissed
a copyright infringement case media
giant ABS-CBN filed against former talent
Willie Revillame, ABC Development
Corporation and its president Ray
Espinosa, and Wilproductions Inc. before
a Makati City trial court in connection
with "striking similarities" between
Revillame's now-defunct show
"Wowowee" with ABS-CBN and his
subsequent game show "Willing Willie"
with ABC.
In a 16-page decision by the Former First
Division promulgated on September 5,
2011 and penned by Associate Justice
Japar Dimaampao, the appellate court
said "ABS-CBN is guilty of forum shopping
having filed two cases based on the
same cause of action" even as reliefs it
prayed for were "divergent."
On August 10, 2010, then ABS-CBN talent
Revillame, host of "Wowowee," filed a
Complaint for Judicial Confirmation of
Rescission of his Talent Agreement with
ABS-CBN with the Quezon City Regional
Trial Court (RTC) Branch 84 after "the
harmonious relationship between
Revillame and ABS-CBN turned sour
prompting the host to leave his home
studio."
The court noted that ABS-CBN, in
opposing Revillame's complaint, asked
the trial court to issue a Temporary
Restraining Order (TRO) or an injunctive
writ to prohibit Revillame "from creating or
performing work similar to the work under
the Talent Agreement; engaging in
activities which were adverse to the
interests of ABS-CBN; and, appearing or
permitting his name, voice or likeness to
be used, directly or indirectly to promote
any product or service in print, radio or
television or any form of advertisements,
in direct competition with ABS-CBN."
More than three months after Revillame
filed his complaint before the QC RTC,
ABS-CBN filed with the Makati City RTC
Branch 66 the complaint for Infringement
of Copyright Under Section 172.1 of the
Intellectual Property Code against
Revillame, et al., asking for damages and
issuance injunctive relief to prevent the
showing/airing of "Willing Willie."
ABS-CBN alleged that each segment of
the defunct "Wowowee" was
"reproduced" in "Willing Willie" namely: 1)
introduction of the host by one "DJ Coki,"
2) dance number of Revillame, 3) "Biga-
ten" segment named as "Bigtime Ka," and
4) "Willie of Fortune" was repackaged as
"Willtime Bigtime."
ABS-CBN also claimed that "the look and
feel of the new show was strikingly similar
to the previous one" from set design,
stage, studio viewers' layout, sequencing,
blocking, and camera angles.
Forum shopping
The appellate court ruled that the two
actions by ABS-CBN before the two trial
courts, constitute forum shopping on the
part of the media network, the appellate
court said.
"In the suit pending before the RTC-QC, it
(ABS-CBN) implored to uphold its Talent
Agreement with intervenor Revillame.
Upon the other hand, private respondent
prayed for the protection of its alleged
copyright over the Wowowee show in the
suit filed before the court a quo," the
decision read.
"These reliefs may be different;
nonetheless, they emanate from one
cause of action -- the purportedly
wrongful conduct of intervenor Revillame
in refusing to honor his Talent Agreement.
"Forum shopping occurs although the
actions seem to be different, when it can
be seen that there is a splitting of a cause
of action," the decision read.
In asking the appellate court to dismiss
the Complaint for Infringement, ABC
claimed that ABS-CBN "shrewdly and
astutely instituted before different courts
two suits predicated on the same or
related cause of action which prayed for
the same of substantially the same reliefs."
Not forum shopping
ABS-CBN, for its part, claimed that it was
not guilty of forum shopping since the
case before the Quezon City Regional
Trial Court was for rescission of talent
agreement while that before the Makati
RTC, where ABC's principal place of
business was as stated in its Articles of
Incorporation and General Information
Sheet, was for infringement.
The appellate court, however, was
unconvinced, ruling that "where there is
only one delict or wrong, there is but a
single cause of action regardless of the
number of rights that may have been
violated belonging to one person."
"With the denial of its supplication for the
issuance of a TRO to enjoin intervenor
Revillame from rendering service with a
rival network, private respondent (ABS-
CBN) cavalierly instituted the Complaint
for Infringement before the court a quo
(Makati RTC)," the decision read.
"While its suit was for the protection of its
purported copyright over Wowowee, a
review of the aforesaid complaint evinces
that private respondent persisted that
intervenor Revillame violated its Talent
Agreement by working for petitioner ABC.
"Without a doubt, in both suits, private
respondent has the same cause, and
what differs is the ground upon which the
cause of action is predicated," the
decision read.
The appellate court said that its earlier
Writ of Preliminary Injunction issued on
March 10, 2011 in favor of ABC is now
declared "permanent" and the cash
bond of P102,400,000 be released in favor
of ABC.
Dermaline v. Myra, 628 SCRA 356
FACTS: Dermaline, Inc. filed an
application for registration of the mark
“Dermaline.” Myra Pharmaceuticals, Inc.
opposed the application claiming that
the trademark sought to be registered so
ensembles its trademark “Dermalin” and
will likely cause confusion to the
purchasing public. Dermaline argues that
its products are for skin health and beauty
while those of Myra’s are medicinal goods
against skin disorders.
ISSUE: Should the application of
Dermaline, Inc. for registration be
allowed?
RULING: No. The two marks are almost
spelled in the same way, except for
Dermaline’s mark which ends with the
letter E, and they are pronounced
practically in the same manner in three
syllables, with the ending letter E in
Dermaline’s mark pronounced silently.
Thus, when an ordinary purchaser, for
example, hears an advertisement of
Dermaline’s applied trademark over the
radio, chances are he will associate it with
Myra’s registered mark. 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 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 or is in any way
connected with the activities of the
infringer; or when it forestalls the normal
potential expansion of his business. 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.
What is the ruling of the Court in the
Zynaps(e) case? Read Zuneca
Pharmaceutical v. Natrapharm, G.R. No.
197802 (2015).
FACTS: "Zynapse" is the registered
trademark of Natrapharm, Inc. As such
owner, it filed an injunction case against
Zuneca Pharmaceutical from using the
mark "Zynaps" for being nearly identical to
"Zynapse." It also alleged that because
there is confusing similarity between the
two marks, there is a danger of medicine
switching, with the patient on "Zynapse"
medication placed in a more injurious
situation given the Steven-Johnson
Syndrome side effect of the "Zynaps"
Carnamazepine.
RULING: The Court ruled that the remedy
of Zuneca is to file a timely appeal
against the decision of the trial court to
permanently enjoin Zuneca from using
the mark “Zynaps.”
Habana v. Robles, 310 SCRA 511
FACTS: Habana, Cinco and Fernando are
authors and copyright owners of their
published works, produced through their
combined resources and efforts, entitled
“College English for Today, Books 1 and
2,” and “Workbook for College Freshman
English, Series 1.” Robles and Goodwill
Trading Co., Inc. are the author and
publisher of “Developing English
Proficiency, Books 1 and 2” (1985 edition)
which book was covered by copyrights
issued to them. In the course of revising
their published works, Habana and
company chanced upon the book of
Robles and upon perusal of said book
they were surprised to see that the book
was strikingly similar to the contents,
scheme of presentation, illustrations and
illustrative examples in their own book.
After an itemized examination and
comparison of the two books (CET and
DEP), petitioners found that several pages
of the respondents book are similar, if not
all together a copy of petitioners book.
ISSUE: Is Robles guilty of copyright
infringement?
RULING: Yes. To constitute infringement, it
is not necessary that the whole or even a
large portion of the work shall have been
copied. If so much is taken that the value
of the original is sensibly diminished, or the
labors of the original author are
substantially and to an injurious extent
appropriated by another, that is sufficient
in point of law to constitute piracy. In the
case at bar, it may be correct that the
books being grammar books may contain
materials similar as to some technical
contents with other grammar books, such
as the segment about the Author Card.
However, the numerous pages that the
petitioners presented showing similarity in
the style and the manner the books were
presented and the identical examples
cannot pass as similarities merely because
of technical consideration. The
respondents claim that their similarity in
style can be attributed to the fact that
both of them were exposed to the APCAS
syllabus and their respective academic
experience, teaching approach and
methodology are almost identical
because they were of the same
background. However, it is not an excuse
for them to be identical even in examples
contained in their books. The similarities in
examples and material contents are so
obviously present in this case. Moreover,
the act of respondent Robles of pulling
out from Goodwill bookstores the book
DEP upon learning of petitioners’
complaint while pharisaically denying
petitioners demand is considered an
indicia of guilt. It was further noted that
when the book DEP was re-issued as a
revised version, all the pages cited by
petitioners to contain portion of their book
College English for Today were
eliminated. In cases of infringement,
copying alone is not what is prohibited.
The copying must produce an injurious
effect. Here, the work of authors is the
product of their long and assiduous
research and for another to represent it as
her own is injury enough. To allow another
to copy the book without appropriate
acknowledgment is injury enough.
What is the test in determining whether or
not there is fair use of the copyrighted
work?
To constitute infringement, it is not
necessary that the whole or even a large
portion of the work shall have been
copied. If so much is taken that the value
of the original is sensibly diminished, or the
labors of the original author are
substantially and to an injurious extent
appropriated by another, that is sufficient
in point of law to constitute piracy.
How many pages were copied in Habana
v. Robles?
Several pages. Numerous pages.
What are the so-called moral rights in
copyright? There are four, but actually
there are five.
The moral rights are as follows:
1. Right to paternity and attribution;
2. Right to alteration and/or withhold
publication;
3. Right to integrity; and
4. Right to non-attribution.
Note: Research for the fifth moral right.
Explain each moral right.
Right to paternity and attribution is to
require that the authorship of the works
be attributed to him, in particular, the
right that his name, as far as practicable,
be indicated in a prominent way on the
copies, and in connection with the public
use of his work;
Right to alteration and or withhold
publication refers to the right to make any
alterations of his work prior to, or to
withhold it from publication;
Right to integrity pertains to the right to
object to any distortion, mutilation or
other modification of, or other derogatory
action in relation to, his work which would
be prejudicial to his honor or reputation;
and
Right to non-attribution means to restrain
the use of his name with respect to any
work not of his own creation or in a
distorted version of his work.
What is the Fair Use Doctrine?
It contemplates that the fair use of a
copyrighted work for criticism, comment,
news reporting, teaching including
multiple copies for classroom use,
scholarship, research, and similar
purposes is not an infringement of
copyright.
What are the factors to be considered in
determining whether the use of a
copyrighted work is fair use?
Section 185 of the IP Code provides for
the following factors:
1. the purpose and character of the use
2. the amount and substantiality of the
portion used in relation to the copyrighted
work as a whole
3. the nature of the copyrighted work
4. the effect of the use upon the potential
market for, or value of, the copyrighted
work
Keyword: CANE – character, amount,
nature, effect
Great White Shark v. Caralde, 686 SCRA
201*
FACTS: Caralde filed before the IPO a
trademark application seeking to register
the mark “Shark & Logo” for slippers,
shoes and sandals. Great White Shark
Enterprises, Inc., claiming to be the owner
of the mark consisting of a shark in logo,
known as the “Greg Norman Logo” for
apparels, opposed the application. It
alleged that being a world famous mark,
the confusing similarity between the two
marks is likely to deceive or confuse the
purchasing public into believing that
Caralde’s goods are produced by or
originated from Great White Shark or
under its sponsorship.
ISSUE: Should the application of Caralde
be given due course?
RULING: Yes. The benchmark of
trademark registrability is distinctiveness. A
generic figure, as that of a shark in this
case, if employed and designed in a
distinctive manner, can be a registerable
trademark device. The visual dissimilarities
between the two marks are evident and
significant, negating the possibility of
confusion in the minds of the ordinary
purchaser, especially considering the
distinct aural difference between the
marks. There being no confusing similarity
between the subject marks, the matter of
whether Great White Shark’s mark has
gained recognition becomes
unnecessary.
What is the test used by the Supreme
Court?
The Court did not employ any test.
Irrespective of both Dominancy and
Holistic tests, the Court found no
confusing similarity between the subject
marks. While both marks use the shape of
a shark, the Court noted distinct visual
and aural differences between them.
What is the ruling of the court in Skechers
v. Inter Pacific Trading Corporation?
Applying the Dominancy Test to the case
at bar, the 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, 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.
Superior v. Kunnan, 618 SCRA 531*
FACTS: Superior, Inc. sued Kunnan
Enterprises for infringement and unfair
competition, claiming that it is the owner
of the trademarks “Kennex,” “Kennex &
Device,” “Pro Kennex,” and “Pro-Kennex.”
Kunnan disputed Superior’s claim of
ownership and maintained that Superior
was its distributor until the latter
fraudulently registered the trademarks in
its name. Kunnan claimed that it created
and first used “Pro Kennex,” derived from
its original corporate name as a
distinctive mark for its products in 1976.
Kunnan registered the mark not only in
the Philippines but also in 31 other
countries, and widely promoted the
“Kennex” and “Pro Kennex” trademarks
through worldwide advertisements in print
media and sponsorships of known tennis
players.
ISSUE: Is Kennex liable for trademark
infringement?
RULING: No. Superior, as a mere distributor
and not the owner, cannot assert any
protection from trademark infringement
as it had no right in the first place to the
registration of the disputed trademarks. In
the absence of any inequitable conduct
on the part of Kunnan, an exclusive
distributor who employs the trademark of
the manufacturer does not acquire any
proprietary rights, and a registration of the
trademark by the distributor belongs to
the manufacturer, provided the fiduciary
relationship does not terminate before
application for registration is filed.
ISSUE: Did Kennex commit unfair
competition?
RULING: No. There is no evidence that
Kunnan ever attempted to pass off the
goods it sold as those of the Superior.
There is no proof that Kunnan intended to
deceive the public as to the identity of
the goods sold. No issue of confusion
arises because the same manufactured
products are sold; only the ownership of
the trademarks is at issue. The suit for
unfair competition must fail.
GSIS Family Bank v. BPI Family Bank, 781
SCRA 284
FACTS: Royal Savings Bank underwent
receivership and was later acquired by
the GSIS. To improve its marketability, GSIS
sought the approval of the SEC to
change the bank’s corporate name to
“GSIS Family Bank, a Thrift Bank.” On the
other hand, BPI Family Bank was a
product of the merger between the
Family Bank and Trust Company and the
Bank of the Philippine Islands. BPI Family
Bank petitioned the SEC to disallow or
prevent the registration of the name "GSIS
Family Bank" or any other corporate
name with the words "Family Bank" in it,
alleging that it has claimed exclusive
ownership to the name "Family Bank"
since its purchase and merger with Family
Bank and Trust Company way back 1985;
that through the years, it has been known
as "BPI Family Bank" or simply "Family Bank"
both locally and internationally; and that
as such, it has acquired a reputation and
goodwill under the name, not only with
clients here and abroad, but also with
correspondent and competitor banks,
and the public in general.
ISSUE: Is GSIS Family Bank-Thrift Bank
allowed to use the term “Family Bank” in
its corporate name?
RULING: No. To fall within the prohibition of
the law on the right to the exclusive use of
a corporate name, two requisites must be
proven, namely: (1) that the complainant
corporation acquired a prior right over
the use of such corporate name; and (2)
the proposed name is either (a) identical
or (b) deceptive or confusingly similar to
that of any existing corporation or to any
other name already protected by law; or
(c) patently deceptive, confusing or
contrary to existing law. These two
requisites are present in this case.
On the first requisite, the Court considered
the fact that BPI Family Bank was
incorporated in 1969 as Family Savings
Bank and in 1985 as BPI Family Bank. GSIS
Family Bank-Thrift Bank, on the other
hand, was incorporated as such only in
2002, or at least 17 years after respondent
started using its name. Thus, BPI Family
Bank has the prior right over the use of the
corporate name.
On the second requisite, there is a
deceptive and confusing similarity
between GSIS's proposed name and BPI
Family Bank's corporate name. In
determining the existence of confusing
similarity in corporate names, the test is
whether the similarity is such as to mislead
a person using ordinary care and
discrimination. And even without such
proof of actual confusion between the
two corporate names, it suffices that
confusion is probable or likely to occur.
The only words that distinguish the two
corporate names are "BPI," "GSIS," and
"Thrift." The first two words are merely the
acronyms of the proper names by which
the two corporations identify themselves;
and the third word simply describes the
classification of the bank. The overriding
consideration in determining whether a
person, using ordinary care and
discrimination, might be misled is the
circumstance that both are engaged in
the same business of banking. The
likelihood of confusion is accentuated in
cases where the goods or business of one
corporation are the same or substantially
the same to that of another corporation.
The SEC made a finding that "it is not a
remote possibility that the public may
entertain the idea that a relationship or
arrangement indeed exists between BPI
and GSIS due to the use of the term
‘Family Bank’ in their corporate names."
ISSUE: Is the term “family bank” capable
of exclusive appropriation?
RULING: Yes. “Family,” as used in BPI
Family Bank's corporate name, is not
generic. Under the facts of this case, the
word "family" cannot be separated from
the word "bank." In asserting their claims
before the SEC up to the Court of
Appeals, both refer to the phrase "Family
Bank" in their submissions. This coined
phrase, neither being generic nor
descriptive, is merely suggestive and may
properly be regarded as arbitrary.
Arbitrary marks are "words or phrases used
as a mark that appear to be random in
the context of its use. They are generally
considered to be easily remembered
because of their arbitrariness. They are
original and unexpected in relation to the
products they endorse, thus, becoming
themselves distinctive." Suggestive marks,
on the other hand, "are marks which
merely suggest some quality or ingredient
of goods. xxx The strength of the
suggestive marks lies on how the public
perceives the word in relation to the
product or service." The word "family" is
defined as "a group consisting of parents
and children living together in a
household" or "a group of people related
to one another by blood or marriage."
Bank, on the other hand, is defined as "a
financial establishment that invests money
deposited by customers, pays it out when
requested, makes loans at interest, and
exchanges currency." By definition, there
can be no expected relation between
the word "family" and the banking
business of respondent. Rather, the words
suggest that respondent’s bank is where
family savings should be deposited.
Moreover, the phrase "family bank"
cannot be used to define an object.
When did BPI start using “Family Bank” in
its corporate name?
BPI Family Bank was incorporated in 1969
as Family Savings Bank and in 1985 as BPI
Family Bank.
When did GSIS start using “Family Bank” in
its corporate name?
GSIS Family Bank-Thrift Bank was
incorporated as such only in 2002, or at
least 17 years after respondent started
using its name.
As between the two, which first used
“Family Bank” as name?
BPI Family Bank has the prior right over the
use of the corporate name “Family Bank.”
Fredco v. Harvard, 650 SCRA 232
FACTS: On 10 August 2005, Fredco
Manufacturing Corporation filed a
Petition for cancellation of Harvard
University’s registration for the mark
“Harvard Veritas Shield Symbol” for
decals, tote bags, serving trays,
sweatshirts, t-shirts, hats and flying discs.
Fredco alleged that the mark “Harvard”
for t-shirts, polo shirts, sandos, briefs,
jackets and slacks was first used in the
Philippines on 2 January 1982 and
registered on 24 January 1985 by New
York Garments Manufacturing & Export
Co., Inc., a domestic corporation and
Fredco’s predecessor-in-interest. Harvard
University, on the other hand, alleged that
it is the lawful owner of the name and
mark “Harvard” in numerous countries
worldwide, including the Philippines; that
Harvard University is over 350 years old
and is a highly regarded institution of
higher learning in the United States and
throughout the world; and that Harvard is
an internationally well-known mark.
ISSUE: Is Harvard University entitled to
trademark protection despite failure to
use and register the mark in the
Philippines?
RULING: Yes. Even without registration or
prior use of “Harvard” in the Philippines,
Harvard University is entitled to protection
of its trade name under the Paris
Convention. The Philippines and the
United States of America are both
signatories to the Paris Convention for the
Protection of Industrial Property. Under the
Paris Convention, a trade name shall be
protected in all the countries of the Union
without the obligation of filing or
registration, whether or not it forms part of
a trademark. Indeed, Section 123.1(e) of
R.A. No. 8293 now categorically states
that 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, cannot be registered by another in
the Philippines. Section 123.1(e) does not
require that the well-known mark be used
in commerce in the Philippines but only
that it be well-known in the Philippines.
Harvard is a well-known name and mark
not only in the United States but also
internationally, including the Philippines.
The mark Harvard is rated as one of the
most famous marks in the world. It has
been registered in at least 50 countries. It
has been used and promoted extensively
in numerous publications worldwide. It has
established a considerable goodwill
worldwide since the founding of Harvard
University more than 350 years ago. It is
easily recognizable as the trade name
and mark of Harvard University of
Cambridge, Massachusetts, U.S.A.,
internationally known as one of the
leading educational institutions in the
world. As such, even before Harvard
University applied for registration of the
mark Harvard in the Philippines, the mark
was already protected under the Paris
Convention.
Harvard is well-known in how many
countries?
It is well-known in at least 50 countries.
When was Harvard established?
The name and mark Harvard was
adopted in 1639 as the name of Harvard
College of Cambridge, Massachusetts,
U.S.A. The name and mark Harvard was
allegedly used in commerce as early as
1872. Harvard University is over 350 years
old and is a highly regarded institution of
higher learning in the United States and
throughout the world.
When did the Philippines become a
signatory to the Paris Convention?
The Philippines became a signatory to the
Paris Convention on 27 September 1965.
What are the other trade names
protected by the Paris Convention?
Lacoste (La Chemise Lacoste v.
Fernandez)
Ecole de Cuisine (Ecole De Cuisine
Manille v. Cointreau)
What are the 12 criteria in determining
whether a mark is well-known as
enunciated in Fredco v. Harvard?
Rule 102 of the Rules and Regulations on
Trademarks, Service Marks, Trade Names
and Marked or Stamped Containers,
which implement R.A. No. 8293, provides:
“In determining whether a mark is well-
known, the following criteria or any
combination thereof may be taken into
account:
(a) the duration, extent and
geographical area of any use of the
mark, in particular, the duration, extent
and geographical area of any promotion
of the mark, including advertising or
publicity and the presentation, at fairs or
exhibitions, of the goods and/or services
to which the mark applies;
(b) the market share, in the Philippines
and in other countries, of the goods
and/or services to which the mark
applies;
(c) the degree of the inherent or
acquired distinction of the mark;
(d) the quality-image or reputation
acquired by the mark;
(e) the extent to which the mark has
been registered in the world;
(f) the exclusivity of registration attained
by the mark in the world;
(g) the extent to which the mark has
been used in the world;
(h) the exclusivity of use attained by the
mark in the world;
(i) the commercial value attributed to the
mark in the world;
(j) the record of successful protection of
the rights in the mark;
(k) the outcome of litigations dealing with
the issue of whether the mark is a well-
known mark; and
(l) the presence or absence of identical
or similar marks validly registered for or
used on identical or similar goods or
services and owned by persons other
than the person claiming that his mark is a
well-known mark.
Industrial Refractories Corporation v. CA,
390 SCRA 252
FACTS: Refractories Corporation of the
Philippines is a corporation duly organized
on October 13, 1976 for the purpose of
engaging in the business of
manufacturing, producing, selling,
exporting and otherwise dealing in any
and all refractory bricks, its by-products
and derivatives. Industrial Refractories
Corporation of the Philippines, on the
other hand, was incorporated on August
23, 1979 originally under the name
Synclaire Manufacturing Corporation. It
amended its Articles of Incorporation on
August 23, 1985 to change its corporate
name to Industrial Refractories Corp. of
the Philippines. It is engaged in the
business of manufacturing all kinds of
ceramics and other products, except
paints and zincs. Both companies are the
only local suppliers of monolithic gunning
mix. Discovering that petitioner was using
such corporate name, respondent RCP
filed on April 14, 1988 with the SEC a
petition to compel petitioner to change
its corporate name on the ground that its
corporate name is confusingly similar with
that of petitioners such that the public
may be confused or deceived into
believing that they are one and the same
corporation.
ISSUE: Is there confusing similarity in the
two corporate names?
RULING: Yes. The only word that
distinguishes the two corporate names
from one another is the word Industrial
which merely identifies a corporation’s
general field of activities or operations.
They are patently similar that even with
reasonable care and observation,
confusion might arise. It must be noted
that both cater to the same clientele, i.e.
the steel industry. In fact, the SEC found
that there were instances when different
steel companies were actually confused
between the two, especially since they
also have similar product packaging.
Such findings are accorded not only
great respect but even finality, and are
binding upon this Court, unless it is shown
that it had arbitrarily disregarded or
misapprehended evidence before it to
such an extent as to compel a contrary
conclusion had such evidence been
properly appreciated. And even without
such proof of actual confusion between
the two corporate names, it suffices that
confusion is probable or likely to occur.
Refractory materials are described as
follows: “Refractories are structural
materials used at high temperatures for
industrial furnaces. They are supplied
mainly in the form of brick of standard
sizes and of special shapes. Refractories
also include refractory cements, bonding
mortars, plastic firebrick, castables,
ramming mixtures, and other bulk
materials such as dead-burned grain
magneside, chrome or ground ganister
and special clay.” While the word
refractories is a generic term, its usage is
not widespread and is limited merely to
the industry/trade in which it is used, and
its continuous use by respondent RCP for
a considerable period has made the term
so closely identified with it. A contrary
ruling would encourage other
corporations to adopt verbatim and
register an existing and protected
corporate name, to the detriment of the
public.
In this case, the Court discussed the tests
of confusion. How do you know if the
corporate names are confusingly similar?
In determining the existence of confusing
similarity in corporate names, the test is
whether the similarity is such as to mislead
a person using ordinary care and
discrimination and the Court must look to
the record as well as the names
themselves. In this case, both corporate
names contain the identical words
Refractories, Corporation and Philippines.
The only word that distinguishes the two is
the word Industrial which merely identifies
a corporation’s general field of activities
or operations. We need not linger on
these two corporate names to conclude
that they are patently similar that even
with reasonable care and observation,
confusion might arise. It must be noted
that both cater to the same clientele, i.e.
the steel industry. In fact, the SEC found
that there were instances when different
steel companies were actually confused
between the two, especially since they
also have similar product packaging.
What is the rule adopted here?
It has been held that the right to the
exclusive use of a corporate name with
freedom from infringement by similarity is
determined by priority of adoption.
ASSIGNMENT FOR NEXT WEEK:
A. Corporate Rehabilitation
1. 2016 case of Viva Shipping Lines, Inc. v. Keppel Philippines, Inc., 784 SCRA 173
*Discusses so many rules on corporate rehabilitation
2. 2014 case of Philippine Bank of Communications (PBCOM) v. Basic Polyprinters
and Packaging Corporation, 738 SCRA 561
*Two-pronged purpose of rehabilitation
3. 2013 case of Steel Corporation of the Philippines (SCP) v. Mapfre Insular
Insurance Corporation, 707 SCRA 601
*Potential bar question
4. 2012 case of Situs Development Corporation v. Asia Trust Bank, 677 SCRA 494/5
5. 2011 case of Panlilio v. RTC Branch 51 Manila, 641 SCRA 438
6. Exceptions to the stay or suspension order, Question No. 5 in the book
*This is the time to memorize these exceptions. Memorize!
7. Definition of cram down effect, Question No. 10 in the book
*Very important!
8. Rules on the conversion of rehabilitation proceedings into liquidation
proceedings, Question No. 23 in the book
*Memorize. I am quite confident that one of the questions will be based
on this.
B. Banking Laws
1. New Central Bank Act
2. General Banking Law
3. Law on Secrecy of Bank Deposits
4. Anti-Money Laundering Act
5. DOSRI, p. 326 of the book
*This is ALWAYS asked in the Bar.
a. Definition of related interests, Question No. 19 of the book
*Erratum: Quote the source of this because the definition has
typographical errors. That should not be 4th degree, but 1st degree. You
interject this “or by legal adoption.” It’s not more than 20%; it must be at least
20%. Read BSP Circular No. 423 of March 15, 2004 pursuant to Monetary
Board Resolution No. 241 of February 26, 2004.
b. Restrictions, Question No. 20 of the book
*Keyword: WERPA (a millennial term) – W waiver, E extended loan
(replacing aggregate interests), R reportorial requirement, P procedural
requirement, A arms-length rule
6. Predicate Crimes, pp. 429-432 of the book
*Keyword: There are 35 of them.
AFP SAVES MARAWI FROM MAUT2E – 24
PMA3 GHQ KBP – 11
 PMA is where the AFP soldiers graduate.
GHQ is their General Headquarters.
KBP is the Kapisanan ng mga Broadcasters sa Pilipinas, which covers the
Maute Massacre.
C. Letters of Credit
*Related to the Trust Receipts Law
D. Trust Receipts Law
E. Securities and Regulation Code
F. Transportation Law
*Least favorite commercial law. There is one bar exam where there is no questions on
this.

Note: The rumored examiner is a corporate rehabilitation expert.