IPL CASES WEEK 1 AND 2

ANA L. ANG vs. TORIBIO TEODORO

Facts:

Respondent Toribio Teodoro, has continuously used "Ang Tibay," both as a trade-mark and as a
trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He
formally registered it as trade-mark on September 29, 1915, and as trade-name on January 3,
1933. Toribio Teodoro, then an unknown young man making slippers with his own hands but
now a prominent business magnate and manufacturer with a large factory operated with modern
machinery by a great number of employees, has steadily grown with his business to which he has
dedicated the best years of his life and which he has expanded to such proportions that his gross
sales from 1918 to 1938 aggregated P8,787,025.65. His sales in 1937 amounted to P1,299,343.10
and in 1938, P1,133,165.77. His expenses for advertisement from 1919 to 1938 aggregated
P210,641.56.

Petitioner, registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and
established a factory for the manufacture of said articles in the year 1937. In the following year
(1938) her gross sales amounted to P422,682.09. Neither the decision of the trial court nor that of
the Court of Appeals shows how much petitioner has spent or advertisement. But respondent in
his brief says that petitioner "was unable to prove that she had spent a single centavo advertising
"Ang Tibay" shirts and pants prior to 1938. In that year she advertised the factory which she had
just built and it was when this was brought to the attention of the appellee that he consulted his
attorneys and eventually brought the present suit."

TRIAL COURT

Absolved the defendant from the complaint, on the grounds that the two trademarks are
dissimilar and are used on different and non-competing goods; that there had been no exclusive
use of the trade-mark by the plaintiff; and that there had been no fraud in the use of the said
trade-mark by the defendant because the goods on which it is used are essentially different from
those of the plaintiff.

COURT OF APPEALS

Reversed that judgment, holding that by uninterrupted an exclusive use since 191 in the
manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning;
that the goods or articles on which the two trade-marks are used are similar or belong to the same
class; and that the use by petitioner of said trade-mark constitutes a violation of sections 3 and 7
of Act No. 666.

PETIONER’S CONTENTION

The phrase "Ang Tibay" as employed by the respondent on the articles manufactured by him is a
descriptive term because, "freely translate in English," it means "strong, durable, lasting." He
invokes section 2 of Act No. 666, which provides that words or devices which related only to the
name, quality, or description of the merchandise cannot be the subject of a trade-mark.

RESPONDENT’S CONTENTIO

On the other hand, counsel for the respondent, in an equally well-prepared and exhaustive brief,
contend that the words "Ang Tibay" are not descriptive but merely suggestive and may properly be
regarded as fanciful or arbitrary in the legal sense. The cite several cases in which similar words
have been sustained as valid trade-marks, such as "Holeproof" for hosiery,   "ideal for tooth
brushes,  and "Fashionknit" for neckties and sweaters.
Issues:

1. WON the words “Ang Tibay” are considered as descriptive terms

2. WON the words "Ang Tibay" had acquired a secondary meaning.

3. WON there is trademark infringement and/or unfair competition between unrelated goods.

Held:

I.

The word "ang" is a definite article meaning "the" in English. It is also used as an adverb, a
contraction of the word "anong" (what or how). "Ang Tibay" is not a descriptive term within the
meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and
legally be appropriated as a trade-mark or trade-name. In this connection we do not fail to note
that when the petitioner herself took the trouble and expense of securing the registration of these
same words as a trademark of her products she or her attorney as well as the Director of
Commerce was undoubtedly convinced that said words (Ang Tibay) were not a descriptive term
and hence could be legally used and validly registered as a trade-mark. It seems stultifying and
puerile for her now to contend otherwise, suggestive of the story of sour grapes. Counsel for the
petitioner says that the function of a trade-mark is to point distinctively, either by its own
meaning or by association, to the origin or ownership of the wares to which it is applied. That is
correct, and we find that "Ang Tibay," as used by the respondent to designate his wares, had
exactly performed that function for twenty-two years before the petitioner adopted it as a trade-
mark in her own business. Ang Tibay shoes and slippers are, by association, known throughout
the Philippines as products of the Ang Tibay factory owned and operated by the respondent
Toribio Teodoro.

II.

It is unnecessary to apply here the doctrine of "secondary meaning" in trade-mark parlance. This
doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with
reference to an article of the market, because geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively by one producer with reference to his
article that, in that trade and to that branch of the purchasing public, the word or phrase has
come to mean that the article was his product. We have said that the phrase "Ang Tibay," being
neither geographic nor descriptive, was originally capable of exclusive appropriation as a trade-
mark. But were it not so, the application of the doctrine of secondary meaning made by the Court
of Appeals could nevertheless be fully sustained because, in any event, by respondent's long and
exclusive use of said phrase with reference to his products and his business, it has acquired a
proprietary connotation.

III.

YES. In the present state of development of the law on Trade-Marks, Unfair Competition, and
Unfair Trading, the test employed by the courts to determine whether noncompeting goods are or
are not of the same class is confusion as to the origin of the goods of the second user. Although
two noncompeting articles may be classified under two different classes by the Patent Office
because they are deemed not to possess the same descriptive properties, they would, nevertheless,
be held by the courts to belong to the same class if the simultaneous use on them of identical or
closely similar trade-marks would be likely to cause confusion as to the origin, or personal source,
of the second user’s goods. They would be considered as not falling under the same class only if
they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would
think the first user made the second user’s goods. The Court of Appeals found in this case that by
uninterrupted and exclusive use since 1910 of respondent’s registered trade-mark on slippers and
shoes manufactured by him, it has come to indicate the origin and ownership of said goods. It is
certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for
pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it
has acquired at the hands of the respondent.

ARCE SONS AND COMPANY vs. SELECTA BISCUIT COMPANY, INC., ET AL

Facts:

Selecta Biscuit Company, Inc, filed with the Philippine Patent Office a petition for the registration
of the word "SELECTA" as trade-mark to be use in its bakery products alleging that it is in actual
use thereof for not less than two months before said date and that "no other persons, partnership,
corporation or association ... has the right to use said trade-mark in the Philippines, either in the
identical form or in any such near resemblance thereto, as might be calculated to deceive." Its
petition was referred to an examiner for study who found that the trade-mark sought to be
registered resembles the word "SELECTA" used by the Acre and Sons and Company, hereinafter
referred to as petitioner, in its milk and ice cream products so that its use by respondent will
cause confusion as to the origin of their respective goods. Consequently, he recommended that
the application be refused. However, upon reconsideration, the Patent Office ordered the
publication of the application for purposes of opposition.

Petitioner filed its opposition on thegrounds: (1) that the mark "SELECTA" had been continuously
used by petitioner in the manufacture and sale of its products, including cakes, bakery products,
milk and ice cream from the time of its organization and even prior thereto by its predecessor-in-
interest, Ramon Arce; (2) that the mark "SELECTA" has already become identified with name of
the petitioner and its business; (3) that petitioner had warned respondent not to use said mark
because it was already being used by the former, but that the latter ignored said warning; (4) that
respondent is using the word "SELECTA" as a trade-mark as bakery products in unfair
competition with the products of petitioner thus resulting in confusion in trade; (5) that the mark
to which the application of respondent refers has striking resemblance, both in appearance and
meaning, to petitioner's mark as to be mistaken therefor by the public and cause respondent's
goods to be sold as petitioner's; and (6) that actually a complaint has been filed by the petitioner
against respondent for unfair competition in the Court of First Instance of Manila asking for
damages and for the issuance of a writ of injunction against respondent enjoining the latter for
continuing with the use of said mark.

The Court of First Instance of Manila rendered decision in the unfair competition case perpetually
enjoining respondent from using the name "SELECTA" as a trade-mark on the goods
manufactured and/or sold by it.

The Director of Patents, rendered decision dismissing petitioner's opposition and stating that the
registration of the trade-mark "SELECTA" in favor of applicant Selecta Biscuits Company, Inc. will
not cause confusion or mistake nor will deceive the purchasers as to the cause damage to
petitioner. Hence, petitioner interposed the present petition for review.

Issue: WON petitioner’s mark has acquired secondary meaning in its favor.

It appears that Ramon Arce, predecessor-in-interest of petitioner, started his milk business as
early as 1933. He sold his milk products in bottles covered with caps on which the words
'SELECTA FRESH MILK' were inscribed. Expanding his business, he established a store at
Lepanto Street, City of Manila, where he sold, in addition to his products, ice cream, sandwiches
and other food products, placing right in front of his establishment a signboard with the name
'SELECTA' inscribed thereon. Special containers made of tin cans with the word 'SELECTA'
written on their covers were used for his products. Bottle with the same word embossed on their
sides were used for his milk products. The sandwiches he sold and distributed were wrapped in
carton boxes with covers bearing the same name. He used several cars and trucks for delivery
purposes on the sides of which were written the same word. As new products were produced for
sale, the same were placed in containers with the same name written on their covers. After the
war, he added to his business such items as cakes, bread, cookies, pastries, and assorted bakery
products. Then his business was acquired by petitioner, a co-partnership organized by his sons,
the purposes of which are "to conduct a first class restaurant business; to engage in the
manufacture and sale of ice cream, milk, cakes and other products; and to carry on such other
legitimate business as may produce profit."

The foregoing unmistakably show that petitioner, through its predecessor-in-interest, had made
use of the word "SELECTA" not only as a trade-name indicative of the location of the restaurant
where it manufactures and sells its products, but as trade-mark is used.

Verily, the word 'SELECTA' has been chosen by petitioner and has been inscribed on all its
products to serve not only as a sign or symbol that may indicate that they are manufactured and
sold by it but as a mark of authenticity that may distinguish them from the products
manufactured and sold by other merchants or businessmen. The Director of Patents, therefore,
erred in holding that petitioner made use of that word merely as a trade-name and not as a trade-
mark within the meaning of the law.1

The word 'SELECTA', it is true, may be an ordinary or common word in the sense that may be
used or employed by any one in promoting his business or enterprise, but once adopted or coined
in connection with one's business as an emblem, sign or device to characterize its products, or as
a badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with
its products and business.2 In this sense, its used by another may lead to confusion in trade and
cause damage to its business. And this is the situation of petitioner when it used the word
'SELECTA' as a trade-mark. In this sense, the law gives its protection and guarantees its used to
the exclusion of all others a (G. & C. Merriam Co. v. Saalfield, 198 F. 369, 373). And it is also in
the sense that the law postulates that "The ownership or possession of a trade-mark, . . . shall be
recognized and protected in the same manner and to the same extent, as are other property rights
known to the law," thereby giving to any person entitled to the exclusive use of such trade-mark
the right to recover damages in a civil action from any person who may have sold goods of similar
kind bearing such trade-mark (Sections 2-A and 23, Republic Act No. 166, as amended).

The term 'SELECTA' may be placed at par with the words "Ang Tibay" which this Court has
considered not merely as a descriptive term within the meaning of the Trade-mark Law but as a
fanciful or coined phrase, or a trade-mark. In that case, this Court found that respondent has
constantly used the term "Ang Tibay" , both as a trade-mark and a trade-name, in the
manufacture and sale of slippers, shoes and indoor baseballs for twenty-two years before
petitioner registered it as a trade-name for pants and shirts so that it has performed during that
period the function of a trade-mark to point distinctively, or by its own meaning or by association,
to the origin or ownership of the wares to which it applies.

MCDONALD'S CORPORATIONvsL.C. BIG MAK BURGER, INC (G.R. No. 143993 August 18,
2004)

Facts:

Petitioner McDonald's Corporation ("McDonald's") is a corporation organized under the laws of

Delaware, UnitedStates. McDonald's operates, by itself or through its franchisees, a global chain
of fast-food restaurants. McDonald's owns a family of marks including the "Big Mac" mark for its
"double-decker hamburger sandwich." McDonald's registered this trademark with the United
States Trademark Registry on 16 October 1979. Based onthis Home Registration, McDonald's
applied for the registration of the same mark in the Principal Register of thethen Philippine
Bureau of Patents, Trademarks and Technology ("PBPTT"), now the Intellectual Property
Office("IPO"). Pending approval of its application, McDonald's introduced its "Big Mac" hamburger
sandwiches in thePhilippine market in September 1981. On 18 July 1985, the PBPTT allowed
registration of the "Big Mac" mark in thePrincipal Register based on its Home Registration in the
United States.

From 1982 to 1990, McDonald's spent P10.5 million in advertisement for "Big Mac"hamburger
sandwiches alone.
Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a domestic corporation which
operates fast-foodoutlets and snack vans in Metro Manila and nearby provinces. Respondent
corporation's menu includeshamburger sandwiches and other food items.

On 21 October 1988, respondent corporation applied with the PBPTT for the registration of the
"Big Mak" mark forits hamburger sandwiches. McDonald's opposed respondent corporation's
application on the ground that "Big Mak"was a colorable imitation of its registered "Big Mac" mark
for the same food products.

Petitioner sued respondents in the RTC for trademark infringement and unfair competition.RTC
issued a temporary restraining order ("TRO") against respondents enjoining them from using the
"Big Mak"mark in the operation of their business in the NCR this was later on replaced by a
preliminary injunction.

Respondent claim that McDonald's does not have an exclusive right to the "Big Mac" markor to
any other similar mark. Respondents point out that the Isaiyas Group of Corporations ("Isaiyas
Group")registered the same mark for hamburger sandwiches with the PBPTT on 31 March 1979.
One Rodolfo Topacio("Topacio") similarly registered the same mark on 24 June 1983, prior to
McDonald's registration on 18 July 1985.Alternatively, respondents claimed that they are not
liable for trademark infringement or for unfair competition, as the"Big Mak" mark they sought to
register does not constitute a colorable imitation of the "Big Mac" mark.

Petitioners asserted that while the Isaiyas Group and Topacio did register the "Big Mac" mark
ahead ofMcDonald's, the Isaiyas Group did so only in the Supplemental Register of the PBPTT and
such registration doesnot provide any protection. McDonald's disclosed that it had acquired
Topacio's rights to his registration in a Deed ofAssignment dated 18 May 1981.

The RTC found respondent liable as charged

Respondents appealed to the CA which reversed the RTC as it held that there it is not sufficient
that a similarity exists in both names, but that more importantly, the over-allpresentation, or in
their essential, substantive and distinctive parts is such as would likely MISLEAD orCONFUSE
persons in the ordinary course of purchasing the genuine article. It further stated that that there
appears a vast difference in the appearance of theproduct and the manner that the tradename
"Big Mak" is being used and presented to the public. Finally the CA held that meresuspected
similarity in the sound of the defendants-appellants' corporate name with the plaintiffs-
appellees'trademark is not sufficient evidence to conclude unfair competition.

Petitioners sought reconsideration, hence this petition.

Issue:

Whether or not there is colorable imitation of the McDonal’s trademark “Big Mac” with the
defendant “L.C. Big Mak”

Whether or not respondent corporationis liable for trademark infringement and unfair
competition.

Held:

Section 22 ("Section 22) of Republic Act No. 166, as amended ("RA 166"), the law applicable to this
case,32 definestrademark infringement as follows:

Infringement, what constitutes. — Any person who [1] shall use, without the consent of the
registrant, anyreproduction, counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection withthe sale, offering for sale, or advertising of any goods, business or
services on or in connection with whichsuch use is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or originof such goods or services, or identity of
such business; or [2] reproduce, counterfeit, copy, or colorably imitateany such mark or trade-
name and apply such reproduction, counterfeit, copy, or colorable imitation to labels,signs,
prints, packages, wrappers, receptacles or advertisements intended to be used upon or in
connectionwith such goods, business or services, shall be liable to a civil action by the registrant
for any or all of theremedies herein provided.

To establish trademark infringement, the following elements must be shown: (1) the validity of
plaintiff's mark; (2) theplaintiff's ownership of the mark; and (3) the use of the mark or its
colorable imitation by the alleged infringer resultsin "likelihood of confusion." Of these, it is the
element of likelihood of confusion that is the gravamen of trademarkinfringement.

A mark is valid if it is "distinctive" and thus not barred from registration under Section 4 of RA
166 ("Section 4").However, once registered, not only the mark's validity but also the registrant's
ownership of the mark is prima faciePresumed.

Generic marks are commonly used as the name or description of a kind ofgoods, such as "Lite" for
beer or "Chocolate Fudge" for chocolate soda drink. Descriptive marks, on the otherhand, convey
the characteristics, functions, qualities or ingredients of a product to one who has never seen it
ordoes not know it exists, such as "Arthriticare" for arthritis medication. On the contrary, "Big
Mac" falls under theclass of fanciful or arbitrary marks as it bears no logical relation to the actual
characteristics of the product itrepresents. As such, it is highly distinctive and thus valid.

Section 22 covers two types of confusion arising from the use of similar or colorable imitation
marks, namely,confusion of goods (product confusion) and confusion of business (source or origin
confusion).

The first is the confusion of goods "in which event theordinarily prudent purchaser would be
induced to purchase one product in the belief that he was purchasingthe other." The other is the
confusion of business: "Here though the goods of the parties are different, thedefendant's product
is such as might reasonably be assumed to originate with the plaintiff, and the publicwould then
be deceived either into that belief or into the belief that there is some connection between
theplaintiff and defendant which, in fact, does not exist."

Respondents assert that their "Big Mak" hamburgers cater mainly to the low-income group while
petitioners' "BigMac" hamburgers cater to the middle and upper income groups. Even if this is
true, the likelihood of confusion ofbusiness remains, since the low-income group might be led to
believe that the "Big Mak" hamburgers are the low-endhamburgers marketed by petitioners. After
all, petitioners have the exclusive right to use the "Big Mac" mark.On the other hand, respondents
would benefit by associating their low-end hamburgers, through the use of the "BigMak" mark,
with petitioners' high-end "Big Mac" hamburgers, leading to likelihood of confusion in the identity
ofbusiness.

Whether a hamburger is single, double or triple-decker, and whether wrapped in plastic or

styrofoam, it remains thesame hamburger food product. Even respondents' use of the "Big Mak"
mark on non-hamburger food productscannot excuse their infringement of petitioners' registered
mark, otherwise registered marks will lose their protectionunder the law.

In determining likelihood of confusion, jurisprudence has developed two tests, the dominancy test
and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the
competing trademarks that mightcause confusion. In contrast, the holistic test requires the court
to consider the entirety of the marks as applied tothe products, including the labels and
packaging, in determining confusing similarity.

The dominancy test considers thedominant features in the competing marks in determining
whether they are confusingly similar. Under the dominancytest, courts give greater weight to the
similarity of the appearance of the product arising from the adoption of thedominant features of
the registered mark, disregarding minor differences. Courts will consider more the aural andvisual
impressions created by the marks in the public mind, giving little weight to factors like prices,
quality, salesoutlets and market segments.

Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results
in likelihood ofconfusion. First, "Big Mak" sounds exactly the same as "Big Mac." Second, the first
word in "Big Mak" is exactly thesame 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, inFilipino, 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 thesecond 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. Inspelling, considering the Filipino language,
even the last letters of both marks are the same.

Absent proof that respondents' adoption of the "Big Mak" mark was due to honest mistake or was
fortuitous, theinescapable conclusion is that respondents adopted the "Big Mak" mark to "ride on
the coattails" of the more established "Big Mac" mark. This saves respondents much of the
expense in advertising to create marketrecognition of their mark and hamburgers.

The essential elements of an action for unfair competition are (1) confusing similarity in the
general appearance ofthe goods, and (2) intent to deceive the public and defraud a competitor. The
confusing similarity may or may notresult from similarity in the marks, but may result from other
external factors in the packaging or presentation of thegoods. The intent to deceive and defraud
may be inferred from the similarity of the appearance of the goods asoffered for sale to the public.
Actual fraudulent intent need not be shown.

What attracts the attention of the buying public are the words "Big Mak"which are almost the
same, aurally and visually, as the words "Big Mac." The dissimilarities in the material and
otherdevices are insignificant compared to the glaring similarity in the words used in the
wrappings.

Since respondents chose to apply the "Big Mak" mark on hamburgers, just likepetitioner's use of
the "Big Mac" mark on hamburgers, respondents have obviously clothed their goods with
thegeneral appearance of petitioners' goods.

ONG AI GUIvsDirector of the Philippines Patent Office (G.R. No. L-6235 March 28, 1955)

Facts:

Ong Ai Gui alias Tan Ai Gui filed an application (No. 803) with the Director of Patents for
theregistration of the following trade-name: "20th Century Nylon Shirts Factory.” It is stated in
connection with theapplication that the trade-name was used for the first time by the applicant on
September 12, 1941 for his businessdescribed as follows: "General merchandise dealing
principally in textiles, haberdasheries; also operating asmanufacturer of shirts, pants and other
men's and woman's wears." Upon the filing of the application, the same wasreferred by the
Director to an examiner. The latter in a report dated August 18, 1950 held that the words
"shirtsfactory" are not registrable; so the applicant made a disclaimer of said words (shirts factory)
inserting a statement tothat effect in his original application.

Atty. J. A. Wolfson, on behalf of E.I. De Pont de Nemours and Company, opposed on the ground
that the word"nylon" was a name coined by E. I. Du Pont de Nemours and Company as the
generic name of a synthetic fabricmaterial, invented, patented, manufactured and sold by it and
that this word is a generic term; that the use of thename "nylon" is descriptive or deceptively
misdescriptive of the goods, business of manufactures of the applicant;that the use of the name
would produce confusion in trade and would deceive the public; and that "nylon" is notdistinctive
of applicant's goods; business and manufactures and applicant does not claim that it has so
become.

The Director ruled that the application must be disapproved unless the word"nylon" is also
disclaimed. It held that "Nylon" is merely descriptive of the business of shirt-making if the shirts
are made of nylon. It is deceptivelymisdescriptive of said business, if the shirts are not made of
nylon. In either case, its registration in thePrincipal Register as a trade-name, or as a part of a
trade-name, is expressly forbidden by subsection (e) ofSection 4 of Republic Act No. 166, as
amended by Section 2 of Republic Act No. 638.

Issue:
Whether or not the trade-name applied by petitioner is not registrable

Held:

If the trade-name consists of a descriptive word, no monopoly of the right to use the same can
beacquired. This is but a corollary of the proposition that a descriptive word cannot be the subject
of a trademark. Other may use the same or similar descriptiveword in connection with their own
wares, provided they take proper steps to prevent the public beingdeceived.

The so-called descriptive terms, which may be used to described the product adequately, cannot
bemonopolized by a single user and are available to all. It is only natural that the trade will prefer
those markswhich bear some reference to the article itself. Therefore, even those descriptive
marks which are distinctiveby themselves can be appropriated by others with impunity. A
descriptive word may be admittedly distinctive,especially if the user is the first creator of the
article. It will, however, be denied protection, not because itlacks distinctiveness, but rather
because others are equally entitled to its use.

The claim that a combination of words may be registered as a trade-name is no justification for
not applying therules or principles hereinabove mentioned. The use of a generic term in a trade-
name is always conditional, i.e.,subject to the limitation that the registrant does not acquire the
exclusive right to the descriptive or generic term orword.

The use of the term"nylon" in the trade-name is both "descriptive" and "deceptively and
misdescriptive" of the applicant-appellant'sbusiness, for apparently he does not use nylon in the
manufacture of the shirts, pants and wears that he producesand sells. How can a secondary
meaning be acquired if appellant's products are not made of nylon? Certainly noexclusive right
can be acquired by deception of fraud.

Asia Brewery vs. CA

GR. No. 103543
July 5, 1993

Facts

On September 15, 1988, SMC filed a complaint against Asia Brewery for infringement of
trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA
BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of
the local beer market.

The trial court ruled that ABI has not committed trademark infringement or unfair competition
against" SMC.

The CA reversed the trial court.

ABI appealed via Rule 45 before the SC

Issue

Whether ABI infringes SMC's trademark: San Miguel Pale Pilsen with Rectangular Hops and Malt
Design, and thereby commits unfair competition against the latter.

Held

Palse Pilsen is a Generic Word

No one may appropriate generic or descriptive words. They belong to the public domain.

The fact that the words pale pilsen are part of ABI's trademark does not constitute an
infringement of SMC's trademark: SAN MIGUEL PALE PILSEN,
For "pale pilsen" are generic words descriptive of the color ("pale"), of a type of beer ("pilsen"),
which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia and became famous in the Middle Ages.

"Pilsen" is a "primarily geographically descriptive word," (Sec. 4, subpar. [e] Republic Act No. 166,
as inserted by Sec. 2 of R.A. No. 638)

Hence, non-registerable and not appropriable by any beer manufacturer.

The words "pale pilsen" may not be appropriated by SMC for its exclusive use even if they are part
of its registered trademark: SAN MIGUEL PALE PILSEN, any more than such descriptive words as
"evaporated milk," "tomato ketchup," "cheddar cheese," "corn flakes" and "cooking oil" may be
appropriated by any single manufacturer of these food products, for no other reason than that he
was the first to use them in his registered trademark.

East Pacific vs. Director of Patents

GR No. L-14377
Dec. 29, 1960

Facts

On June 14, 1947, Marcelo Pua filed with the Office of the Director of Commerce an application
for the registration under Act 666 of the composite trademark consisting of the word "Verbena"
and representation of a Spanish lady.

That the trademark applied for has continuously been used by him in commerce since August 15,
1947 on such merchandise as lotion, face powder, hair pomade, brillantine, and other allied
products.

On or about November 4, 1953, Pua assigned his rights to the trademark and its pending
application for the registration thereof, to the East Pacific.

The registration was approved for publication in the Official Gazette.

On May 23, 1957, Luis Pellicer filed an opposition to the application because the picture of a lady
is common in trade and the name "Verbena" is the generic name of a flower a.

Petitioner contends that

 its own mark had already acquired a secondary significance as a trademark.
 Pellicer was ordered by the CA in GR No. 10698 to refrain from using the trademark "Verbena"

Director of Patents denied the registration. It ruled that the term "Verbena" is "generically
descriptive or misdescriptive of the products, namely lotion, face powder, hair pomade and
brillantine,

Also, it dismissed the opposition filed by Pellicer. That the latter is barred for perfecting his
opposition in light of the CA’s ruling in GR No. 10698, where the court ruled in favor of Pua, the
herein petitioner's predecessor-in-interests.

Both parties filed MR.The Director, denied the MR filed by East Pacific. While, reinstating
Pellicer’s opposition it opined that the CA, GR No. 10698, did not actually pass upon the validity
of the word "Verbena" as a registerable trademark.

Petitioner urges that it was entitled to the registration for the reason that:
 the composite trademark "Verbena" and the figure of a lady, considered as a whole, is not
generic in nature or descriptive or deceptively misdescriptive of the products to which it is
associated;
 the trademark has acquired a secondary meaning before the public
 appropriation of the trademark having occured under the former law (Commonwealth Act 666),
the right thereto cannot be taken away under the subsequent law.

Issue

Whether or not the word Verbena is registrable trademark.

Held

Unless the petitioner makes a disclaimer of the word "Verbena", the application should be held as
properly denied by the Director of Patents.

Issue on Registrability of “Verbena”

The term "Verbena" being descriptive of a whole genus of garden plants with fragrant flowers
(Verbenaceae).It is used in connection with cosmetic products, wherein fragrance is of substantial
import.It evokes the idea that the products are perfumed with the extract of verbena flowers, or of
some oil of similar aroma.Regardless of other connotations of the word, the use of the term cannot
be denied to other traders using such extract or oils in their own products. The term is non-
registerable in the sense that petitioner company would be entitled to appropriate its use to the
exclusion of others legitimately entitled.Also, East Pacific does not use verbena essences in his
products.

Issue that it already acquired Secondary Meaning

The provisions of law (Rep. Act No. 166, sec. 4) require that the trademark applied for must have
"become distinctive of the applicant's goods", and that a prima facie proof of this fact exists when
the applicant has been in the "substantially exclusive and continuous use thereof as a mark or
tradename ..for five years next preceding the date of the filing of the application for its
registration". Here it appears not only that applicant and Pua only began use of the alleged mark
in the year 1947, the same year when the application was filed.

That such trademarks as "Verbena Povil" and "Lupel Verbena" had long been in use by Pellicer on
his own cosmetic products.In fact, Pellicer is the holder of the certificate of registration from the
Patents Office for the trademark "Lupel Verbena".

Said facts preclude us from concluding that the trademark in question has become distinctive of
applicant's goods within the meaning of the law.

Other Issues:

1. That once the publication of the application for registration is approved by the Director of
Patents, it becomes his ministerial duty to issue the corresponding certificate of registration
upon payment of the required fees.
2. That there was no valid motion for reconsideration filed by Pellicer as a basis for reinstatement.
3. That Pellicer may not file an opposition as he was ordered by the CA in GR No. 10698 to refrain
from using the trademark "Verbena"

Ruling

Issue on the Propriety of the denial of the application for registration, notwithstanding the
previous order of publication
It is evident that the decision of the Director ordering publication, can not have any finality. His
first decision is merely provisional; leading to the more formal and important second step of
hearing and trial, where the public and interested parties are allowed to take part.That the
Director instead caused the dismissal of the application only after its due publication is not, in
our opinion, a procedural error that is reversible on appeal. Neither did such publication divest
the Director of the prerogative to dismiss the application.
Issue on Reinstating the Opposition for Application
The Director of Patents could have reinstated Pellicer's opposition even motu proprio, with or
without a valid motion for reconsideration, provided, of course, the same was done by him in due
time or while he still had jurisdiction over the case(and the contrary has not been shown in this
case).

Issue on Propriety of Pellicer’s Opposition due to the decision in GR No. 10698

In that case, Pellicer alleged that the sale between Alien Property Administrator and Pua of the
“Verbena” trademark was void. Thus, he had sought to enjoin Pua from using the same.The case
has nothing to do with the the regiserability of the "Verbena" trademark, nor the possible
confusion with Pellicer's own "Lupel Verbena" trademark, Thus, the dismissal of the complaint did
not work an estoppel on Pellicer, barring him from contesting the registration of petitioner's
trademark.

FREDCO MANUFACTURING CORPORATION Petitioner, vs. PRESIDENT AND

FELLOWS OF HARVARD COLLEGE (HARVARD UNIVERSITY), Respondents.

G.R. No. 185917, SECOND DIVISION, June 1, 2011,

CARPIO, J.

TOPIC

Trademark Infringement

Well Known Mark

FACTS

Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of
the Philippine Intellectual Property Office a Petition for Cancellation of Registration
No. 56561 issued to President and Fellows of Harvard College (Harvard University)
for the mark “Harvard Veritas Shield Symbol” under classes 16,18,21,25 and28.

Fredco claimed that Harvard University had no right to register the mark in class 25,
since its Philippine registration was based on a foreign registration. Thus, Harvard
University could not have been considered as a prior adopter and user of the mark in
the Philippines. 

Fredco explained that the mark was first used in the Philippines by its predecessor-
in-interest New York Garments as early as 1982, and a certificate of registration was
issued in 1988 for goods under class 25. Although the registration was cancelled for
the non-filing of an affidavit of use, the fact remained that the registration preceded
Harvard University’s use of the subject mark in the Philippines.  

Harvard University, on the other hand claimed that the name and mark“Harvard” was
adopted in 1639 as the name of Harvard College of Cambridge, Massachusetts, USA.
The marks “Harvard” and “Harvard Veritas Shield Symbol,” had been used in
commerce since 1872, and was registered in more than 50 countries.  

The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Registration
No. 56561. It found Fredco to be the prior user and adopter of the mark “Harvard” in the
Philippines.
On appeal, the Office of the Director General of the Intellectual Property Office reversed the
BLA ruling on the ground that more than the use of the trademark in the Philippines, the
applicant must be the owner of the mark sought to be registered. Fredco, not being the owner of
the mark, had no right to register it.

The Court Appeals affirmed the decision of the Office of the Director General.

Fredco appealed the decision with the Supreme Court. Fredco insisted that the date of actual use
in the Philippines should prevail on the issue of who had a better right to the mark.

ISSUE

Whether or not Fredco has a better right on the registered trademark?

RULING

No.

Harvard University's registration of the name "Harvard" is based on home registration allowed
under Section 37 of R.A. No. 166.

As correctly pointed out by the respondent in its position paper, that although Section 2 of the
Trademark law (R.A. 166) requires for the registration of trademark that the applicant thereof
must prove that the same has been actually in use in commerce or services for not less than two
(2) months in the Philippines before the application for registration is filed, where the trademark
sought to be registered has already been registered in a foreign country that is a member of the
Paris Convention, the requirement of proof of use in the commerce in the Philippines for the said
period is not necessary.

An applicant for registration based on home certificate of registration need not even have used the
mark or trade name in this country.”

“In any event, under Section 239.2 of Republic Act No. 8293 (R.A. No. 8293), marks registered
under Republic Act No. 166 shall remain in force but shall be deemed to have been granted under
this Act x xx," which does not require actual prior use of the mark in the Philippines.

Since the mark "Harvard Veritas Shield Symbol" is now deemed granted under R.A. No. 8293, any
alleged defect arising from the absence of actual prior use in the Philippines has been cured by
Section 239.2.”

The Supreme Court further ruled that Harvard University is entitled to protection in the
Philippines of its trade name “Harvard” even without registration of such trade name in the
Philippines.

Under Philippine law, a trade name of a national of a State that is a party to the Paris Convention,
whether or not the trade name forms part of a trademark, is protected “without the obligation of
filing or registration.” “Harvard” is the trade name of the world-famous Harvard University, and it
is also a trademark of Harvard University. Under Article 8 of the Paris Convention, as well as
Section 37 of R.A. No. 166, Harvard University is entitled to protection in the Philippines of its
trade name “Harvard” even without registration of such trade name in the Philippines. This means
that no educational entity in the Philippines can use the trade name “Harvard” without the
consent of Harvard University. Likewise, no entity in the Philippines can claim, expressly or
impliedly through the use of the name and mark “Harvard,” that its products or services are
authorized, approved, or licensed by, or sourced from, Harvard University without the latter’s
consent.

MATAL, INTERIM DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE v. TAM

TOPIC

TRADEMARK REGISTRATION

FACTS

Tam, sought to register the mark THE SLANTS for services identified as “entertainment in the
nature of live performances by a musical band.” The trademark registration was refused on the
grounds that the mark consisted of or included matter which may disparage or bring into
contempt or disrepute persons, institutions, beliefs or national symbols under section 2(a) of the
Lanham Act (“the disparagement clause”).

When the refusal was made final, Tam appealed and requested reconsideration. The examining
attorney at the PTO denied this request finding that “there is a substantial composite of persons
who find the term in the applied for mark offensive.”

Tam had submitted that he chose this moniker specifically in order to “reclaim” and “take
ownership” of stereotypes about people of Asian ethnicity.

The Trademark Trial and Appeal Board (Board) affirmed the PTO’s decision and denied the
trademark request because of concern that the band name was “a highly disparaging reference to
people of Asian descent.”

Tam contested the denial of registration before the examining attorney and before the PTO’s
Trademark Trial and Appeal Board (TTAB) but to no avail.

Eventually, he took the case to federal courtwhere, on December 22, 2015, an en banc Federal
Circuit ultimately found the disparagement clause facially unconstitutional under the First
Amendment’s Free Speech Clause.

The majority found that the clause engages in viewpoint-based discrimination, that the clause
regulates the expressive component of trademarks and consequently cannot be treated as
commercial speech, and that the clause is subject to and cannot satisfy strict scrutiny. The Court
vacated the ruling of the Trademark Trial and Appeal Board and remanded the case to the Board.

ISSUE

Whether or not the trademark sought to be registered is valid?

RULING
YES

A trademark cannot be denied because it disparages a person or group of people because such
denial violates freedom of speech under the First Amendment.

The U.S. Supreme Court affirmed that the disparagement clause in the Lanham Act denying
registration for trademarks that “may disparage any persons” was facially unconstitutional under
the First Amendment.

The Disparagement Clause applies to members of a racial or ethnic group.  While Tam argues that
it only applies to natural persons, the Court finds that the plain language of the Disparagement
Clause applies to groups of people.

Trademarks are private speech, not government speech.  The Court noted that if trademark
registration transforms private speech into government speech, then the government is “babbling
prodigiously and incoherently.”

In denying trademarks that allegedly disparage groups of people, the Disparagement Clause is
viewpoint discrimination.  Speech is still protected even if it is offensive.  Offensive speech is a
viewpoint.  Therefore, denying offensive speech is denying a particular viewpoint.

Coffee Partners vs San Francsico Coffee

Roastery Inc, GR NO. 169504, Mar 3 2010

Facts:

Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to
operate coffee shops in the country using the trademark ‘San Francisco Coffee.’ Respondent on
the other hand, is a local corporation engaged in the wholesale and retail sale of coffee and
uses the business name ‘San Francisco Coffee & Roastery’ registered with the DTI. Later,
respondent filed an infringement and/or unfair competition complaint against petitioner
alleging that the latter was about to open a coffee shop under the name ‘San Francisco Coffee’
causing confusion in the minds of the public as it bore a similar name and is engaged also in
selling of coffee. Petitioner contended no infringement would arise because respondent’s
tradename was not registered.

Issue:
Whether or not petitioner’s trademark would infringe respondent’s tradename.

Ruling:

YES.

In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what
constitutes infringement of an unregistered trade name, thus:

(1) The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;

(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by
the infringer;

(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or trade name is applied
to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used
upon or in connection with such goods, business, or services;
(4) The use or application of the infringing mark or trade name is likely to cause confusion or
mistake or to deceive purchasers or others as to the goods or services themselves or as to the
source or origin of such goods or services or the identity of such business; and

(5) It is without the consent of the trademark or trade name owner or the assignee thereof.

RA 8293, which took effect on 1 January 1998, has dispensed with the registration requirement.
Section
165.2 of RA 8293 categorically states that trade names shall be protected, even prior to or
without registration with the IPO, against any unlawful act including any subsequent use of
the trade name by a third party, whether as a trade name or a trademark likely to mislead the
public.

It is the likelihood of confusion that is the gravamen of infringement. Applying the dominancy
test or the holistic test, petitioner’s “SAN FRANCISCO COFFEE” trademark is a clear
infringement of respondent’s
 “SAN FRANCISCO COFFEE & ROASTERY, INC.” trade name. The descriptive words “SAN FRANCISCO
COFFEE” are precisely the dominant features of respondent’s trade name. Petitioner and respondent 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 petitioner’s coffee shops.

COMPAÑIA GENERAL DE TABACOS DE FILIPINAS vs. ALHAMBRA CIGAR AND

CIGARETTE MANUFACTURING CO.

FACTS:

It is admitted that plaintiff’s trade name as evidenced by the certificate issued under the
Spanish regime, consists solely of the words “La Flor de la Isabela”. Plaintiff does not claim
that the word “Isabela” has been registered by it as a trade name or that it has a title from
any source conferring on it the exclusive right to use that word.

Defendant began the manufacture of cigarettes, offering them to the public in packages on
the front side of each of which appeared the words “Alhambra Isabelas”.

Action is brought to enjoin the defendant from using the word “Isabelas”.

The exclusive right to use this name, plaintiff claim arises from two causes: First, the
contraction of the phrase “La Flor de la Isabela” into the word “Isabela” by popular
expression and use; and second, the use for more than twenty years of the word “Isabela”.

Judgment was for plaintiff and defendant

appealed. ISSUE:

Whether defendant’s use of the word “Alhambra Isabela” is an infringement to the use of

trade name. HELD:

The statute prohibits the registration of a trade name when the trade name represents the
geographical place of production or origin of the products or goods to which the trade name
refers, or when it is merely the name, quality or description of the merchandise with respect
to which the trade name is to be used. In such cases, therefore, no trade name can exist.

The two claims of the plaintiff are identical; for, there could have been no contraction
brought about by popular expression except after long lapse of time. The contraction of the
phrase in to the word would create no rights, there being no registration, unless it resulted
from long use.

The opinion of the plaintiff must fail. It shows that in not a single instance in the history of
the plaintiff corporation, so far as is disclosed by the record, has a package of its cigarettes
gone into the market, either at wholesale or retail with the word “Isabela” alone on the
package as a separate or distinct word or name.
 QUALITEX CO. v. JACOBSON PRODUCTS CO., INC.

FACTS;Petitioner Qualitex Company used (since the 1950’s) a special shade of green-gold color
on the pads that it makes and sells to dry cleaning firms for use on dry cleaning presses. In
1989, respondent Jacobson Products (a Qualitex rival) began to sell its own press pads to dry
cleaning firms; and it colored those pads a similar green gold. In 1991, Qualitex registered the
special greengold color on press pads with the Patent and Trademark Office as a trademark.
Qualitex subsequently added a trademark infringement count, to an unfair competition claim,
in a lawsuit it had already filed challenging Jacobson’s use of the green-gold color.

Qualitex won the lawsuit in the District Court, but, the Court of Appealsfor the Ninth Circuit
set aside the judgment in Qualitex’sfavor on the trademark infringement claim because, inthat
Circuit’s view, the Lanham Act does not permit Qualitex,or anyone else, to register “color alone”
as a trademark.

ISSUE: Whether or not a color alone is capable of registration as a trademark.

RULING: The Court held that there is no rule absolutelybarring the use of color alone, and
reversed thejudgment of the Ninth Circuit.

The Lanham Act gives a seller or producer the exclusiveright to “register” a trademark,
and to prevent his or her competitors fromusing that trademark. Both the language of theAct
and the basic underlying principles of trademark lawwould seem to include color within the
universe of thingsthat can qualify as a trademark. The language of the LanhamAct describes
that universe in the broadest of terms.It says that trademarks “includ[e] any word, name,
symbol,or device, or any combination thereof”. Sincehuman beings might use as a “symbol” or
“device” almostanything at all that is capable of carrying meaning, this language,read literally,
is not restrictive. The courts and thePatent and Trademark Office have authorized for use as
amark a particular shape (of a Coca-Cola bottle), a particularsound (of NBC’s three chimes),
and even a particular scent(of plumeria blossoms on sewing thread).If a shape, a sound,and a
fragrance can act as symbols why, one might ask, cana color not do the same?

A color is also capable of satisfying the more importantpart of the statutory definition of a
trademark, which requiresthat a person “us[e]” or “inten[d] to use” the mark“to identify and
distinguish his or her goods, includinga unique product, from those manufactured or sold by
others and to indicate the source of the goods, even ifthat source is unknown.”

True, a product’s color is unlike “fanciful,” “arbitrary,” or“suggestive” words or designs, which
almost automaticallytell a customer that they refer to a brand. But, over time, customersmay
come to treat a particular color on a product or its packagingas signifying a brand. And, if so,
thatcolor would have come to identify and distinguish thegoods—i. e., “to indicate” their
“source”—much in the waythat descriptive words on a product.In this circumstance,
trademarklaw says that the word although notinherently distinctive, has developed “secondary
meaning.”“Secondary meaning” is acquiredwhen “in the minds of the public, the primary
significanceof a product feature . . . is to identify the source of theproduct rather than the
product itself”. Again, one mightask, if trademark law permits a descriptive word with
secondarymeaning to act as a mark, why would it not permit acolor, under similar
circumstances, to do the same?

The Court cannot find in the basic objectives of trademark lawany obvious theoretical objection
to the use of color aloneas a trademark, where that color has attained “secondarymeaning” and
therefore identifies and distinguishes a particularbrand (and thus indicates its “source”).
Neither a principled objection to the use ofcolor as a mark in the important functionality”
doctrine oftrademark law. The functionality doctrine prevents trademarklaw,which seeks to
promote competition by protectinga firm’s reputation, from instead inhibitinglegitimate
competitionby allowing a producer to control a useful product feature.It is theprovince of
patent law, not trademark law, toencourage invention by granting inventors a monopoly
overnew product designs or functions for a limited time, after which competitors are free to
usethe innovation. If a product’s functional features could beused as trademarks, however, a
monopoly over such featurescould be obtained without regard to whether they qualify
aspatents and could be extended forever because trademarksmay be renewed in perpetuity. (“A
functional characteristic is ‘an important ingredientin the commercial success of the product,’
and, afterexpiration of a patent, it is no more the property of the originatorthan the product
itself ”) Functionalitydoctrine therefore would require, to take an imaginaryexample, that
even if customers have come to identify thespecial illumination-enhancing shape of a new
patented lightbulb with a particular manufacturer, the manufacturer maynot use that shape as
a trademark, for doing so, after thepatent had expired, would impede competition—not by
protectingthe reputation of the original bulb maker, but byfrustrating competitors’ legitimate
efforts to produce anequivalent illumination-enhancing bulb.

In general terms, a productfeature is functional,” and cannot serve as a trademark,“if it is

essential to the use or purpose of the article or ifit affects the cost or quality of the article,” that
is, if exclusiveuse of the feature would put competitors at a significantnon-reputation-related
disadvantage. Although sometimes colorplays an important role (unrelated to source
identification) inmaking a product more desirable, sometimes it does not.And, this latter fact—
the fact that sometimes color is notessential to a product’s use or purpose and does not
affectcost or quality—indicates that the doctrine of “functionality”does not create an absolute
bar to the use of color alone as amark.

Having determined that a color may sometimes meet thebasic legal requirements for use as a
trademark and that respondentJacobson’s arguments do not justify a special legalrule
preventing color alone from serving as a trademark(and, in light of the District Court’s here
undisputed findingsthat Qualitex’s use of the green-gold color on its press padsmeets the basic
trademark requirements), the Court concluded thatthe Ninth Circuit erred in barring Qualitex’s
use of color asa trademark. For these reasons, the judgment of the NinthCircuit isReversed.

G.R. No. L-31380             January 13, 1930

E. SPINNER and COMPANY, plaintiff-appellant,
vs. NEUSS HESSLEIN CORPORATION, defendant-appellee.

FACTS: E. Spinner & Co. is a co-partnership with head offices in Manchester, England, and
Bombay, India, being represented in the Philippine Islands by Wise & Co., a domestic
corporation with principal office in the City of Manila. The plaintiff, E. Spinner & Co., has long
been engaged in the manufacture and sale of textile fabrics, including khaki cloth, with
distributing business connection in different parts of the world. Defendant Neuss Hesslein
Corporation, was organized in the Philippine Islands in December, 1922, as subsidiary of
Neuss Hesslein& Co., Inc., of New York
Due to the superior qualities of its goods, such as the fastness of its color, the consistency of
its texture, and its proven durability, the plaintiff's khaki made favorable impression in the
Philippine market, enjoying a popular favor and preference which resulted in a lucrative trade.
Among the brands of khaki enjoying such favor was the grade indicated by the manufacturer
as "Wigan." A higher grade was marketed by the plaintiff under the brand "Stockport;" while
still other grades were put upon the market under the brands "Jackton" and "Ashford.

After the defendant corporation had assumed the agency in the Philippine Islands for the
products of the New York house, the manager of the defendant, at the request of Chinese
customers, began to give orders to the New York house for the printing of the word "Wigan"
conspicuously upon the bolts of khaki intended for sale in Philippine Islands; and in the latter
part of 1923 or in the early part of the year 1924, the defendant's khaki began to be marketed
here with the word "Wigan" thereon.

ISSUE: Whether or not defendant corporation violated the trademark law and has engaged in
unfair competition by using the word Wigan.

RULING: The appropriation by the defendant of the word "Wigan" for use in the sale of its
khaki did not constitute a violation of trade-mark prior to April, 1925, when the word "Wigan"
was first incorporated in the plaintiff's registered trade-mark; but after that date it was
certainly illegal for the defendant to use the word "Wigan" stamped upon the khaki sold by it;
and this act was an infringement of trade-mark right. It is true that the plaintiff's trade-mark
proper consisted of a pictorial representation of the heads of two elephants,embellished by
leaves, and the word "Wigan" was only a part of said trade-mark. Nevertheless, the
misappropriation of this word by the competitor was a violation of the plaintiff's right. It has
been held in the Supreme Court of the United States that the use of only one of the words
constituting a trade-mark may be sufficient to constitute an infringement, and it is not
necessary to this end that all of the words comprising the trade-mark should be
appropriated.
In section 2 of Act No. 666 it is declared that a designation or part of a designation which
relates only to the name, quality, or description of the merchandise, or geographical place of its
production or origin, cannot be made the subject of a trade-mark; and it seems to be supposed
by the defendant that this provision disables the plaintiff from complaining of the use made of
the word "Wigan" by the defendant. But it will be noted that the word "Wigan" as applied to
quality, is not an English word in common use for describing quality. The word "Wigan" is here
used in an entirely artificial sense and its association with quality had the origin exclusively
in the use which the plaintiff has made of it. The designation of name, quality, or description,
as used in the statute, has reference to linguistic terms in common use. In words of this
character no particular manufacturer can acquire an exclusive property right. Again, it will be
noted that, although "Wigan," being the name of a town, was an original geographical term, it is
not used upon the plaintiff's khaki to indicate the geographical place of production of the
product. Even geographical terms can be used in an arbitrary and artificial sense, and when so
used by one manufacturer the improper appropriation of the same term by another may be
enjoined as an invasion of trade-mark right. Of course, if the defendant were manufacturing its
khaki in the town of "Wigan," it would be entitled to use that name to indicate the place of
manufacture of its goods. But such is not the case here.

As stated in section 7 of Act No. 666, a person is guilty of unfair competition who "in selling his
goods shall give them the general appearance of goods of another manufacturer or dealer,
either 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," etc. This language is very broad; and as applied to the case
before us it is evident that, in using the word "Wigan" on the khaki cloth sold by it, the
defendant has appropriated a word likely to lead purchasers to believe that the goods sold by
the defendant are those of the plaintiff. The representation that the khaki sold by the defendant
is of the kind known to the trade as "Wigan" directly tends to deceive the purchaser and,
therefore, constitutes unfair competition as against the plaintiff.

It is no doubt true that the adoption of the word "Wigan" by the defendant does not deceive
merchants or tailors buying from the defendant. But the person most to be considered in this
connection is the consumer, and when the word "Wigan" is found upon a bolt of khaki, the
ultimate buyer, or consumer, would naturally be led to suppose that the goods sold under
this name is the goods sold by the plaintiff. In the case before us it is revealed that the word
"Wigan" was first stamped upon the khaki sold by the defendant at the suggestion or request of
a Chinese customer, presumably a tailor or merchant, and the purpose behind the suggestion
undoubtedly was that, if this term were found stamped upon the khaki thus sold it could be
represented to the ultimate purchaser that the khaki thus sold was the plaintiff's "Wigan." In
this connection it should be noted that, in the action to enjoin unfair competition, the
fraudulent intention on the part of the defendant may be inferred from the similarity of the
goods offered for sale by him to the goods of the plaintiff (Act No. 666, sec. 7, end). In the case
before us the use of the word "Wigan," stamped by the defendant upon the bolts of khaki sold
by it, sufficiently discloses an intention to mislead the consumer. Moreover, as was observed by
the Court of Appeals of the Third Circuit in Barton vs. Rex-Oil Co., (40 A. L. R., 424), it makes
no difference that dealers in the article are not deceived. They are informed and usually know
what they are buying. The law concerns itself with the casual purchaser who knows the
commodity only by its name. In obtaining what he asks for he is entitled to protection against
unfair dealing.

Andres Romero vsMaiden Form Brassiers, 1964

Justice: Barrera

(Trademark)

The Facts:

 On Feb 12, 1957, Maiden Form Brassiers (MFB), a foreign corporation, filed with
respondent Director of Patents an application for registration (pursuant to Republic Act
No. 166) or the trademark "Adagio" for the Brassieres manufactured by it. said
trademark was first used by it in the United States on October 26, 1937, and in the
Philippines on August 31, 1946; that it had been continuously used by it in trade in, or
with the Philippines for over 10 years.
 In August 1957, Director of Patent approved the application and issued a certificate of
registration to MFB. However, Andres Romero (Petitioner) filed a petition for cancellation
of the certificate of registration on the grounds that it is common descriptive name of an
article or substance on which the patent has expired.
 In January 1961, Director of Patent dismissed the petition.
Issue: WON THE TRADEMARK “ADIAGO” HAS BECOME A COMMON DESCRPTIVE NAME
OF A PARTICULAR STYLE OF BRASSIERE AND IS, THEREFORE, UNREGISTRABLE.

Ruling: No.

Reason: - The evidence shows that the trademark "Adagio" is a musicalterm, which means
slowly or in an easy manner, and was used as a trademark by the ownersthereof (the
Rosenthals of Maiden Form Co., New York) because they are musically inclined. xxx As
respondent Director pointed out, "the fact that said mark is used also to designatea particular
style of brassiere, does not affect its registrability as a trademark"
Being a musical term, it is used in an arbitrary (fanciful) sense as a trademark for brassieres
manufactured by respondent company.The records show that respondent company's agent, Mr.
Schwarzt, warned the Valleson Department Store to desist from the sale of the"Adagio" Royal
Form brassieres manufactured by petitioner and even placed an advertisement in the local
newspapers warning the public against unlawful use of... said trademark. The advertisement in
the Manila Times made by respondent company on February 9, 1958, was brought to
petitioner's attention, which must have prompted him to file this present petition for...
cancellation, on February 26, 1958.

respondent company's long and continuous use of the trademark" Adagio" has not rendered it
merely descriptive of the product.As to the testimonies of Bautista and Barro, they are mere
conclusions of said witnesses. Note that when Bautista was asked why he considered the
trademark "Adagio" as a style, he replied that the brand "Adagio" is attached to distinguish the
style.

Inchausti Co. vs Song Fo, 1912

Justice: Carson

(Trademark)

The Facts:

 In October 1903, INCHAUSTI & COMPANYcaused to be registered in the division of

archieves, patents,copyrights and trademarks of the Government of the Philippine
Islands a trade-mark for "anisados yalcohols.”
 this trade-mark is a part to be a circulardesign inclosed within two concentric circles
with the symbol of a demijohn in the center; across theface of the design, running in a
horizontal direction are two parallel lines, and between these linesthe word "Tanduay" is
placed thus: TANDUAY; this horizontal design serves to divide the trade-markinto an
upper and lower section; in the upper part between the two circles appears the
word"Inchausti" and in the lower arc of the design in a similar position is the word
"Compañia." "Y” appears just underneath the symbol of the demijohn within the smaller
circle.Labels bearing thistrade-mark were affixed to the corks used by plaintiff in the
bottling of their products.
 SONG FO & COMPANYsince 1906 have been using, among other labels, affixed to the
corks used in thebottling of their products, a circular label bearing a design
substantially similar to the registeredtrade-mark of plaintiffs. It is a label of practically
the same size as that of plaintiffs.
 The main difference in the two horizontal designs lies in the factthat in plaintiffs'
registered trade-mark the horizontal design passes across the entire face of bothcircles,
while in the trade-mark used by the defendants the horizontal design passes only
across theface of the inner circle.
 The wording of the two designs is different, but the general position of thewording is the
same in both designs.
Issue: WON THE TRADEMARKS USED BY SONGFO ARE INFRINGEMENTS OF
INCHAUSTI’s REGISTRATION MARK.

Ruling: Yes.

Reasons: While the symbol of the demijohn alone mightnot be the subject of an exclusive
trade-mark, yet we think that the demijohn used as it is in plaintiffs'trade-mark in combination
with the other distinguishing elements therein may fairly be made the subject of an exclusive
trade-mark. The component elements of a design are not to be considered separate and apart.

We can not escape the conclusion that the two trade-mark are so nearly alike in design and
general appearance that only the most careful examination could detect that they were not in
fact the same. Such an examination discloses the points of difference, but it is to be
remembered that the purchasing public has, ordinary, no such opportunity to make such an
examination nor is there any reason to impose such an obligation on the public.

The true test of unfair competition is whether certain goods have been intentionally clothed
with an appearance which is likely to deceive the ordinary purchaser exercising ordinary care
xxx

G.R. No. 34497 September 12, 1931

LA YEBANA COMPANY, INC., plaintiff-appellant,vs.ALHAMBRA CIGAR and CIGARETTE
MANUFACTURING CO., ET AL., defendants-appellees.

MALCOLM, J.:

FACTS:

On October 6, 1904, a label forming the wrapper for cigarette packages and containing
the words "Alhambra 25 Chorritos" was registered with the Government by the Alhambra
Fabrica de Tabacos, Cigarrillos y Picadura of Manila, P.I. On February 23, 1922, another label
forming the wrapper for cigarette packages and containing the words "20 Chorritos de Gamu"
was registered by Enrique Ga. Caruana. On March 3, 1925, La Yebana Company, Inc., secured
the registration of a trade-mark as La YebanaChorritos. On August 21, 1928, the Alhambra
Cigar and Cigarette Mfg. Company, the successor of the Alhambra Fabrica de Tabacos,
Cigarrillos y Picadura, presented to the Bureau of Commerce and Industry an application to
register a trade-mark consisting of the words "Alhambra Chorritos" with a design for cigarettes.
La Yebana Company filed an opposition to this application. Thereupon, the chief of the Bureau
of Commerce and Industry decided to accept the application of the Alhambra Cigar and
Cigarette Mfg. Company and to overrule the opposition thereto.

ISSUE: WON the registration of a trade-mark for cigarette wrappers, the La Yebanaacquired the
exclusive right to use the word "Chorritos" as a trade-mark as against all competitors
RULING:

The registration of the trade-mark of the appellee does not constitute an infringement of
appellant's trade-mark. The word "Chorritos" has come to be a local name given to a special
kind of cigarettes the tobacco of which is rolled in sweetened black paper.Like the words
"Corona," Especiales," "Perfectos," etc., which are used in common by local cigar
manufacturers to designate the different shapes or forms of cigars manufactured by them, for
cigarettes there could be "La YebanaChorritos," "Alhambra Chorritos," "Chorritos de Gamu,"
etc. This is particularly true in so far as the appellant is concerned, since the appellant was
one of the last to make use of the word "Chorritos" as a trade-mark, and since all that appellee
has been endeavoring to do has consisted in perfecting a trade-mark originally registered many
years ago. On such facts, the appellee, rather than the appellant, could more logically contend
that it has acquired the exclusive right to use the word "Chorritos" as a trade-mark for
cigarettes. In addition, it need only be remarked that a superficial examination is sufficient to
show an entire lack of deceitful similarly between the trade-mark of the appellant and the
trade-mark of the appellee.

G.R. No. L-28499 September 30, 1977

VICTORIAS MILLING COMPANY, INC., petitioner, vs. ONG SU AND THE HONORABLE
TIBURCIO S. EVALLE IN HIS CAPACITY AS DIRECTOR OF PATENT'S, respondents.

FERNANDEZ, J.:

FACTS:

The petitioner, Victorias Milling Company, Inc., a domestic corporation and engaged in the
manufacture and sale of refined granulated sugar is the owner of the trademark "VICTORIAS"
and d design registered in the Philippines Patent Office on November 9, 1961.

The respondent Ong Su is engaged in the repacking and sale of refine sugar and is the owner of
the trademark "VALENTINE" and design registered in the Philippines Patent Office on June 20,
1961.

On October 4, 1963, Victorias Mining Company, Inc. filed with the Philippine Patent Office a
petition to cancel the registration of the Ong Su trademark "Valentine."
The petitioner allied that its tradermark "Victorias" and diamond design has distinctive of its
sugar long before the respondent used its trademark; that the registration of "Valentine" and
design has caused and will cause great damage to petitioner by reason of mistake, confusion,
or deception among the purchasers because it is similar to its "Victorias" trademark; that
registration was fradulently obtained by Ong Su and that "Valentine" falsely suggests a
connection with Saint Valentine or with an institution or belief connected therewith.

In his answer to the petition the respondent averred that he is doing business under the name
and style "Valentine Packaging" and has registered the trademark "Valentine" with a design for
sugar and was issued Certificate of Registration No. 8891 dated June 20, 1961; that the
trademark "Victorias" with diamond design and the trademark "Valentine" with a design are
two different marks; and that there is absolutely no likelihood of confusion, mistake or
deception to purchasers through the concurrent use of the petitioner's mark "Victorias" with a
diamond design and the respondents' mark "Valentine" with a design in connection with sugar.

The Director of Patents denied the petition to cancel the certificate of registration of the
respondent Ong Su covering the trademark "Valentine" and design

ISSUE: WON the Director of Patents correctly dismissed the petition to cancel the registration
of the trademark Valentine in favor of the respondent

RULING: Yes.

The contention of petitioner that the diamond design in its trademark is an index of origin has
no merit. The petitioner has not shown that the design portion of the mark has been so used
that purchasers recognize the design, standing alone, as indicating goods coming from the
registrant. As correctly stated by the Director of Patents, common geometric shapes such as
diamonds ordinarily are not regarded as indicia of origin for goods to which the remarks are
applied unless they have acquired a secondary meaning. And there is no evidence that the
diamond design in the trademark of the petitioner has acquired a secondary meaning with
respect to its sugar business. The word "Victorias" is what Identifies the sugar contained in the
bag as the product of the petitioner. Indeed, the petitioner has advertised its sugar in bags
marked "Victorias" with oval, hexagon and other designs.

The evidence is that Ong Su has been using his trademark since prior to the last World War
and he obtained the registration thereof on June 20, 1961. Vijandre declared that the
petitioner started to use its trademark only in 1947. Said trademark was registered on
November 9, 1961. It cannot be said, therefore, that the respondent Ong Su imitated the
trademark of the petitioner.

It seems clear that the words "Valentine" and "Victorias" and the names and places of business
of Victorias Milling Company, Inc. and Ong Su are the dominant features of the trademarks in
question. The petitioner has not established such a substantial similarity between the two
trademarks in question as to warrant the cancellation of the trademark 'Valentine'of the
respondent Su. The Director of Patents correctly ruled that he has no jurisdiction over the
issue of unfair competition. Under Section 27 of the Trade Mark Law, Republic Act No. 166,
after actions for unfair competition shall be brought before the proper Court of First Instance.
Qualitex Co. vs. Jacobson Products Co.

Facts:

Qualitex Company (Petitioner) uses a special shade of green-gold for press pads that it sells to
dry cleaning firms. Jacobson Products (Respondent) began to use the same color. Petitioner
registered the color as a trademark and then added a trademark infringement count to an
unfair competition claim in a lawsuit it had already filed against Petitioner for use of the color.
The Lanham Act gives a seller or producer the exclusive right to register a trademark and to
prevent competitors from using that trademark.

Issue: WON a color can be considered as a trademark?

Held:

The language of the Act and the basic underlying principles of trademark law seem to include
color in the realm of what can qualify as a trademark.

A color is also capable of satisfying the requirement that a person use or intend to use the
mark to identify and distinguish the goods. Over time, customers may come to treat a
particular color as signifying a brand to the extent that it develops a secondary meaning.

There is no objection to the use of color alone as a trademark, when that color has attained a
secondary meaning and therefore identifies and distinguishes a particular brand. It is the
source-distinguishing ability of a mark, and not its status as a color, that permits it to provide
a financial gain to a producer and to provide a distinguishing feature for customers.

There is no objection to the use of color as a mark under the functionality doctrine of
trademark law. This doctrine prevents trademark law from inhibiting legitimate competition by
allowing a producer to control a useful product feature. A patent may be given for a limited
time over new designs or functions, but after it expires, competitors are free to use the
innovation. A product feature is functional if exclusive use of the feature would put competitors
at a significant non-reputation-related disadvantage. Sometimes color does not play an
essential role in the product’s use or purpose and does not affect cost or quality, so the
doctrine of functionality does not create an absolute bar to the use of color alone as a mark.

So, color can sometimes meet the basic requirements for use as a trademark. It can be a
symbol that distinguishes a company’s goods and identifies their source, without serving any
other significant function.

When a color serves as a trademark, other colors will be available for similar use by
competitors. If colors become scarce, the functionality doctrine is available to prevent
problems.

PHILIPPINE NUT INDUSTRY, INC., vs. STANDARD BRANDS INCORPORATED 

Facts:

Philippine Nut, a domestic corporation, obtained from the Patent Office on August 10, 1961,
Certificate of Registration No. SR-416 covering the trademark "PHILIPPINE PLANTERS
CORDIAL PEANUTS," the label used on its product of salted peanuts.
Standard Brands a foreign corporation, filed with the Director of Patents asking for the
cancellation of Philippine Nut's certificate of registration on the ground that "the registrant was
not entitled to register the mark at the time of its application for registration thereof" for the
reason that it is the owner of the trademark "PLANTERS COCKTAIL PEANUTS" covered by
Certificate of Registration No. SR-172, issued by the Patent Office on July 28, 1958. Standard
Brands alleged in its petition that Philippine Nut's trademark "PHILIPPINE PLANTERS
CORDIAL PEANUTS" closely resembles and is confusingly similar to its trademark "PLANTERS
COCKTAIL PEANUTS" used also on salted peanuts, and that the registration of the former is
likely to deceive the buying public and cause damage to it.

Philippine Nut filed invoke that its registered label is not confusingly similar to that of
Standard Brands.

Director of Patents rendered a ddecision giving due course to Standard Brand's petition and
ordering the cancellation of Philippine Nut's Certificate of Registration. It held that in the labels
using the two trademarks in question, the dominant part is the word "Planters", displayed "in a
very similar manner" so much so that "as to appearance and general impression" there is "a
very confusing similarity," and he concluded that Philippine Nut "was not entitled to register
the mark at the time of its filing the application for registration" as Standard Brands will be
damaged by the registration of the same. Its motion for reconsideration having been denied,
Philippine Nut came up to this Court for a review of said decision.

Issue:

1. WON the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by Philippine

Nut on its label for salted peanuts confusingly similar to the trademark "PLANTERS
COCKTAIL PEANUTS" used by Standard Brands on its product so as to constitute an
infringement of the latter's trademark rights and justify its cancellation.

2. WON the doctrine of secondary meaning is applicable

Held:

According to petitioner, PLANTERS cannot be considered as the dominant feature of the

trademarks in question because it is a mere descriptive term, an ordinary word which is
defined in Webster International Dictionary as "one who or that which plants or sows, a farmer
or an agriculturist.". We find the argument without merit. While it is true that PLANTERS is an
ordinary word, nevertheless it is used in the labels not to describe the nature of the product,
but to project the source or origin of the salted peanuts contained in the cans. The word
PLANTERS printed across the upper portion of the label in bold letters easily attracts and
catches the eye of the ordinary consumer and it is that word and none other that sticks in his
mind when he thinks of salted peanuts.

It is quite obvious from the record, that respondent Director's decision is based not only on the
fact that petitioner herein adopted the same dominant mark of Standard Brands, that is, the
word PLANTERS, but that it also used in its label the same coloring scheme of gold, blue, and
white, and basically the same lay-out of words such as "salted peanuts" and "vacuum packed"
with similar type and size of lettering as appearing in Standard Brands' own trademark, all of
which result in a confusing similarity between the two labels. 4 Thus, the decision states:
"Furthermore, as to appearance and general impression of the two trademarks, I find a
very confusing similarity."
The striking similarity between the two labels is quite evident not only in the common use of
PLANTERS but also in the other words employed. As a matter of fact, the capital letter "C" of
petitioner's "Cordial" is alike to the capital "C" of Standard's "Cocktail", with both words ending
with an "1".

Admittedly, no producer or manufacturer may have a monopoly of any color scheme or form of
words in a label. But when a competitor adopts a distinctive or dominant mark or feature of
another's trademark and with it makes use of the same color ensemble, employs similar words
written in a style, type and size of lettering almost identical with those found in the other
trademark, the intent to pass to the public his product as that of the other is quite obvious.
Hence, there is good reason for Standard Brands' to ask why did petitioner herein use the word
PLANTERS, the same coloring scheme, even almost identical size and contour of the cans, the
same lay-out of words on its label when there is a myriad of other words, colors, phrases,
symbols, and arrangements to choose from to distinguish its product from Standard Brands.

It is correctly observed by respondent Director that the merchandize or goods being sold by the
parties herein are very ordinary commodities purchased by the average person and many times
by the ignorant and unlettered 6 and these are the persons who will not as a rule examine the
printed small letterings on the container but will simply be guided by the presence of the
striking mark PLANTERS on the label. Differences there will always be, but whatever
differences exist, these pale into insignificance in the face of an evident similarity in the
dominant feature and overall appearance of the labels of the parties.

II.

This Court held that the doctrine is to the effect that a word or phrase originally incapable of
exclusive appropriation with reference to an article on the market, because geographically or
otherwise descriptive, might nevertheless have been used so long and so exclusively by one
producer with reference to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product. 7

By way of illustration, is the word "Selecta" which according to this Court is a common
ordinary term in the sense that it may be used or employed by any one in promoting his
business or enterprise, but which once adopted or coined in connection with one's business as
an emblem, sign or device to characterize its products, or as a badge of authenticity, may
acquire a secondary meaning as to be exclusively associated with its products and business, so
that its use by another may lead to confusion in trade and cause damage to its business. 8

The applicability of the doctrine of secondary meaning to the situation now before Us is
appropriate because there is oral and documentary evidence showing that the word PLANTERS
has been used by and closely associated with Standard Brands for its canned salted peanuts
since 1938 in this country. Not only is that fact admitted by petitioner in the amended
stipulation of facts (see p. 2 of this Decision), but the matter has been established by
testimonial (tsn October 4, 1962, pp. 2-8) and documentary evidence consisting of invoices
covering the sale of "PLANTERS cocktail peanuts". (Exhibits C to C-4; D to D-10; E to E-10; F
to F-2) In other words, there is evidence to show that the term PLANTERS has become a
distinctive mark or symbol insofar as salted peanuts are concerned, and by priority of use
dating as far back as 1938, respondent Standard Brands has acquired a preferential right to its
adoption as its trademark warranting protection against its usurpation by another. Ubi jus ibi
remedium. Where there is a right there is a remedy. Standard Brands has shown the existence
of a property right(Arce Sons & Co. vs. Selecta Biscuit Co., Inc., supra, pp. 262-263) and
respondent Director, has afforded the remedy.
Still on this point, petitioner contends that Standard Brands' use of the trademark PLANTERS
was interrupted during the Japanese occupation and in fact was discontinued when the
importation of peanuts was prohibited by Central Bank regulations effective July 1, 1953,
hence it cannot be presumed that it has acquired a secondary meaning. We hold otherwise.
Respondent Director correctly applied the rule that non-use of a trademark on an article of
merchandize due to legal restrictions or circumstances beyond one's control is not to be
considered as an abandonment.

THE EAST PACIFIC MERCHANDISING CORPORATIONvsDIRECTOR OF PATENTS (G.R. No.

L-14377 December 29, 1960)

Facts:

Marcelo T. Pua filed with the Office of the Director of Commerce anapplication for the
registration under Act 666 of the composite trademark consisting of the word "Verbena"
andrepresentation of a Spanish lady.

The applicant further alleged that the trademark applied for has continuously been used by
him in commerce sinceAugust 15, 1947 on such merchandise as lotion, face powder, hair
pomade, brillantine, and other allied products.

On or about November 4, 1953, Pua assigned his rights to the trademark in question, as well
as to pendingapplication for the registration thereof, to the herein petitioner. East Pacific
Merchandising Corporation. The latterrenewed the application under the new trademark law
(R.A. 166) at the Patents Office on November 8, 1957.

It was later allowed for publication.

On May 23, 1957, Luis P. Pellicer filed an opposition to the application on the following
grounds: (a) that the pictureof a lady is common in trade and the name "Verbena" is the generic
name of a flower and, therefore, neither may beexclusively appropriated or registered by the
applicant; (b) the applicant should not be allowed to bar fromemploying this term those whose
the genuine verbena essence in the manufacture of their products; and(c) theapplicant in the
adoption and used of said trademark is deceiving the public. In support of his allegation that
hewould be damaged by the registration of the trademark applied for, Pellicer attached to the
opposition certain labelsbearing the trademark "Lupel Verbena", which trademark, oppositor
avers, was registered in his favor and is used to identify his hair pomade.

Petitioner moved to dismiss the opposition, averring that respondent Pellicer was ordered by
the CA from using the trademark "Verbena" in any form in connection with his business; and
that its own mark hadalready acquired a secondary significance as a trademark.

Director opined that the term "Verbena" is "generically descriptive or misdescriptive of the
products, namely lotion,face powder, hair pomade and brillantine, while the representation of a
Spanish lady is not only deceptivelymisdescriptive of the source or origin, but also common in
trade," and, consequently, denied their registration.

Upon motions for reconsideration filed by both parties, the Director of Patents reiterated the
denial of registration yet reinstated Pellicer’s opposition.

Issue:

Whether or not the term Verbena is generic and misdescriptive, hence not registrable as
trademark.
Held:

There are two steps in the proceedings for the approval of an application forregistration; the
first is that conducted in the Office of the Director and taking place prior to publication, andthe
second, that conducted after publication, in which the public is given the opportunity to
contest theapplication. In the first, the application is referred to an examiner, who, after study
and investigation makes areport and recommendation to the Director who, upon finding that
applicant is entitled to registration, orderspublication of the application. (Sec. 7, Rep. Act No.
166) If he finds that applicant is not entitled to registration,he may then and there dismiss the
application. In the second, opportunity is offered the public or anyinterested party to come in
and object to the petition. (Sec. 8, id.), giving proofs and reasons for the objection,applicant
being given opportunity also to submit proofs or arguments in support of the application. (Sec.
9, Id.)It is the decision of the Director, given after this hearing, or opportunity to every
interested party to be heard,that finally terminates the proceedings and in which the
registration is finally approved or disapproved.Thereafter, notice of the issuance of the
certificate of registration is published.

It is evident that the decision of the Director after the first step, ordering publication, cannot
have any finality.Of what use is the second step in the proceedings, if the Director is bound by
his first decision, giving courseto the publication? His first decision is merely provisional, in the
sense that the application appears to bemeritorious and is entitled to be given course leading to
the more formal and important second step of hearingand trial, where the public and interested
parties are allowed to take part.

The term "Verbena" being descriptive of a whole genus of garden plants with fragrant flowers
(Verbenaceae), its usein connection with cosmetic products, wherein fragrance is of substantial
import, evokes the idea that the productsare perfumed with the extract of verbena flowers, or of
some oil of similar aroma; and, regardless of otherconnotations of the word, the use of the term
cannot be denied to other traders using such extract or oils in theirown products. It follows
that the Director of Patents correctly held the term to be non-registerable in the sense
thatpetitioner company would be entitled to appropriate its use to the exclusion of others
legitimately entitled, such asoppositorPellicer. The denial of registration is further strengthened
by the Director's express findings that petitionerdoes not use verbena essences in his products.

The result would not change even if the Director erred in ruling that the figure of a lady, as
previously described, islikewise is not registerable as a trademark. The figure, it may be
granted, was drawn on arbitrary on whimsical linesand styled in a peculiary distinctive
manner; but the fact will not qualify the word "Verbena" for registration, since thecombination
of the two marks would still be inadequate to guard against the misleading effects that flow
from theuse of the term by petitioner.

The claim that the petitioner is entitled to registration because the term "Verbena" has already
acquired a secondarysignificance is without merit. The provisions of law (Rep. Act No. 166, sec.
4) require that the trademark applied formust have "become distinctive of the applicant's
goods", and that a prima facie proof of this fact exists when theapplicant has been in the
"substantially exclusive and continuous use thereof as a mark or tradenamefor fiveyears next
preceding the date of the filing of the application for its registration". Here it appears not only
thatapplicant and his assignor(Pua) only began use of the alleged mark in the year 1947, the
same year when theapplication was filed; but that such trademarks as "Verbena Povil" and
"Lupel Verbena" had long been in use byrespondent Pellicer on his own cosmetic products, and
that, as a matter of fact, he is the holder of the certificate ofregistration from the Patents Office
for the trademark "Lupel Verbena". Said facts preclude us from concluding thatthe trademark
in question has become distinctive of applicant's goods within the meaning of the law.
Conformably to the foregoing, unless the petitioner makes a disclaimer of the word "Verbena",
the application shouldbe held as properly denied by the Director of Patents. The orders
reinstating respondent Pellicer's opposition areaffirmed.

LA CHEMISE LACOSTEvsHON. OSCAR C. FERNANDEZ (G.R. No. L-63796-97 May 2, 1984)

Facts:

The petitioner is a foreign corporation, organized and existing under the laws ofFrance and not
doing business in the Philippines, It is undeniable from the records that it is the actual owner
of theabovementioned trademarks used on clothings and other goods specifically sporting
apparels sold in many parts ofthe world and which have been marketed in the Philippines since
1964, The main basis of the private respondent'scase is its claim of alleged prior registration.

In 1975, Hemandas& Co., a duly licensed domestic firm applied for and was issued the
trademark "CHEMISE LACOSTE & CROCODILE DEVICE" by the PhilippinePatent Office for use
on T-shirts, sportswear and other garment products of the company. Two years later, it
appliedfor the registration of the same trademark under the Principal Register.

On November 21, 1980, the petitioner filed its application for registration of the trademark
"Crocodile Device"and "Lacoste". The former was approved forpublication while the latter was
opposed by Games and Garments in Inter Partes Case.

On March 21, 1983, the petitioner filed with the National Bureau of Investigation (NBI) a letter-
complaint allegingtherein the acts of unfair competition being committed by Hemandas and
requesting their assistance in hisapprehension and prosecution. The NBI conducted an
investigation and subsequently filed with the respondentcourt two applications for the issuance
of search warrants which would authorize the search of the premises usedand occupied by the
Lacoste Sports Center and Games and Garments both owned and operated by Hemandas.

The respondent court issued Search Warrantfor violation of Article 189 of the RevisedPenal
Code. The NBI agents executed the twosearch warrants and as a result of the search found and
seized various goods and articles described in thewarrants.

Hemandas filed a motion to quash the search warrants alleging that the trademark used by
him was different frompetitioner's trademark and that pending the resolution of IPC No. 1658
before the Patent Office, any criminal or civilaction on the same subject matter and between
the same parties would be premature.

The petitioner and the State Prosecutor filed its opposition but respondent court was court
was, however, convinced that there was no probable cause to justify the issuance of thesearch
warrants. Thus,the search warrants were recalled and set aside and theNBI agents or officers
in custody of the seized items were ordered to return the same to Hemandas.

Issue:

Whether or not the issuance of the search warrants is premature in the face of the fact that
(a)Lacoste's registration of the subject trademarks is still pending with the Patent Office with
oppositionfrom Hemandas; and (b) the subject trademarks had been earlier registered by
Hemandas in his namein the Supplemental Register of the Philippine Patent Office.

Whether the petitioner being a corporation not doing business in the Philippines has the legal
right to maintain an action in the court absent its license.

Held:
In upholding the right of the petitioner to maintain the present suit before our courts for unfair
competition orinfringement of trademarks of a foreign corporation, we are moreover recognizing
our duties and the rights of foreignstates under the Paris Convention for the Protection of
Industrial Property to which the Philippines and France areparties. We are simply interpreting
and enforcing a solemn international commitment of the Philippines embodied ina multilateral
treaty to which we are a party and which we entered into because it is in our national interest
to do so.

By the same token, the petitioner should be given the same treatment in the Philippines as we
make available to ourown citizens. We are obligated to assure to nationals of "countries of the
Union" an effective protection againstunfair competition in the same way that they are
obligated to similarly protect Filipino citizens and firms.

Registration in the Supplemental Register, therefore, serves as notice that the registrant is
using or has appropriatedthe trademark. By the very fact that the trademark cannot as yet be
entered in the Principal Register, all who dealwith it should be on guard that there are certain
defects, some obstacles which the user must Still overcome beforehe can claim legal ownership
of the mark or ask the courts to vindicate his claims of an exclusive right to the use ofthe
same. It would be deceptive for a party with nothing more than a registration in the
Supplemental Register toposture before courts of justice as if the registration is in the Principal
Register.

We have carefully gone over the records of all the cases filed in this Court and find more than
enough evidence tosustain a finding that the petitioner is the owner of the trademarks
"LACOSTE", "CHEMISE LACOSTE", thecrocodile or alligator device, and the composite mark of
LACOSTE and the representation of the crocodile oralligator. Any pretensions of the private
respondent that he is the owner are absolutely without basis. Any furtherventilation of the
issue of ownership before the Patent Office will be a superfluity and a dilatory tactic.

The legislature has enacted laws to regulate the use of trademarks and provide for the
protection thereof. Moderntrade and commerce demands that depredations on legitimate
trademarks of non-nationals including those whohave not shown prior registration thereof
should not be countenanced. The law against such depredations is notonly for the protection of
the owner of the trademark but also, and more importantly, for the protection of
purchasersfrom confusion, mistake, or deception as to the goods they are buying.

The records show that the goodwill and reputation of the petitioner's products bearing the
trademark LACOSTE dateback even before 1964 when LACOSTE clothing apparels were first
marketed in the Philippines. To allow Hemandas to continue using the trademark Lacoste for
the simple reason that he was the first registrant in theSupplemental Register of a trademark
used in international commerce and not belonging to him is to rendernugatory the very essence
of the law on trademarks and tradenames.

Fredco Mfg. Co. vs. Harvard

G.R. No. 185917
June 1, 2011

Facts

On 10 August 2005, Fredco, a domestic corporation filed a Petition for Cancellation of

Registration No. 56561, before the Bureau of Legal Affairs of IPO against Harvard College.

Harvard College is a corporation organized and existing under the laws of Massachusetts,
United States of America.
On November 25, 1993 Registration No. 56561 was issued to Harvard University for the mark
"Harvard Veritas Shield Symbol"

It alleged that:
 Mark “Harvard” for t-shirts, polo shirts, sandos was 1 st used in the Philippines on January 2,
1982 by New York Garments, a domestic corporation.
 New York Garments is Fredco’s predecessor-in-interest.
 On January 24, 1985 New York Garments filed for trademark registration of the mark
"Harvard" for goods under Class 25.
 A Certificate of Registration was issued on 12 December 1988, with a 20-year term subject to
renewal at the end of the term.
 the registration was cancelled on 30 July 1998 when New York Garments inadvertently failed
to file an affidavit of use/non-use on the fifth anniversary of the registration but the right to
the mark "Harvard" remained with its predecessor New York Garments and now with Fredco.

Harvard University contends alleged that

 it is the lawful owner of the name and mark "Harvard" in numerous countries worldwide,
including the Philippines.
 The name and mark "Harvard" was adopted in 1639 as the name of Harvard College of
Cambridge, Massachusetts, U.S.A.
 Harvard University is over 350 years old and is a highly regarded institution of higher
learning in the United States and throughout the world.
 Harvard University promotes, uses, and advertises its name "Harvard" through various
publications, services, and products in foreign countries, including the Philippines.

Harvard University alleged that its valid and existing certificates of trademark registration in
the Philippines.

Director of the Bureau of Legal Affairs, IPO granted the petition.

The Office of the Director General, IPO reversed the decision of the Bureau of Legal Affairs, IPO.

The CA affirmed the decision of the Office of the Director General of the IPO.

Fredco filed a MR but was denied.

Issue

Whether not the petition for cancellation should be granted.

Held

There are two compelling reasons why Fredco’s petition must fail.

First
Fredco’s registration of the mark "Harvard" and its identification of origin as "Cambridge,
Massachusetts" falsely suggest that Fredco or its goods are connected with Harvard University,
which uses the same mark "Harvard" and is also located in Cambridge, Massachusetts.

Fredco’s registration of the mark "Harvard" should not have been allowed because Section 4(a)
of R.A. No. 166 prohibits the registration of a mark "which may disparage or falsely suggest a
connection with persons, living or dead, institutions, beliefs x x x."
Fredco’s use of the mark "Harvard," coupled with its claimed origin in Cambridge,
Massachusetts, obviously suggests a false connection with Harvard University. On this ground
alone, Fredco’s registration of the mark "Harvard" should have been disallowed.

Section 4(a) of R.A. No. 166 is intended to protect the right of publicity of famous individuals
and institutions from commercial exploitation of their goodwill by others.

What Fredco has done in using the mark "Harvard" and the words "Cambridge,
Massachusetts," "USA" to evoke a "desirable aura" to its products is precisely to exploit
commercially the goodwill of Harvard University without the latter’s consent.

Second
The Philippines and the United States of America are both signatories to the Paris Convention
for the Protection of Industrial Property (Paris Convention).

The Philippines is obligated to assure nationals of countries of the Paris Convention that they
are afforded an effective protection against violation of their intellectual property rights in the
Philippines in the same way that their own countries are obligated to accord similar protection
to Philippine nationals.

Thus, under Philippine law, a trade name of a national of a State that is a party to the Paris
Convention, whether or not the trade name forms part of a trademark, is protected "without the
obligation of filing or registration."

Harvard" is the trade name of the world famous Harvard University, and it is also a trademark
of Harvard University.

Under Article 8 of the Paris Convention, as well as Section 37 of R.A. No. 166, Harvard
University is entitled to protection in the Philippines of its trade name "Harvard" even without
registration of such trade name in the Philippines.

Well-known Marks
In Mirpuri, the Court ruled that the essential requirement under Article 6 of the Paris
Convention is that the trademark to be protected must be "well-known" in the country where
protection is sought.

The power to determine whether a trademark is well-known lies in the competent authority of
the country of registration or use; either be the registering authority if it has the power to
decide, or the courts of the country in question if the issue comes before the courts.

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.

While under the territoriality principle a mark must be used in commerce in the Philippines to
be entitled to protection, internationally well-known marks are the exceptions to this rule.

We also note that in a Decisiondated 18 December 2008 involving a separate case between
Harvard University and Streetward International, Inc., the Bureau of Legal Affairs of the IPO
ruled that the mark "Harvard" is a "well-known mark."
This Decision, which cites among others the numerous trademark registrations of Harvard
University in various countries, has become final and executory.

This Court so declares, that "Harvard" is a well-known name and mark not only in the US 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.
 Even before Harvard University applied for registration of the mark "Harvard" in the
Philippines, the mark was already protected under Article 6bis and Article 8 of the Paris
Convention.
 Even without applying the Paris Convention, Harvard University can invoke Section 4(a) of
R.A. No. 166 which prohibits the registration of a mark "which may disparage or falsely
suggest a connection with persons, living or dead, institutions, beliefs x x x."

In the assailed Decision of the Office of the Director General dated 21 April 2008, the Director
General found that:

Issue that Petitioner was the 1st in using Harvard in the Philippines
Assuming in arguendo, that the Appellate may have used the mark HARVARD in the
Philippines ahead of the Appellant, it still cannot be denied that the Appellant’s use thereof was
decades, even centuries, ahead of the Appellee’s.

Records show that Harvard University is the oldest and one of the foremost educational
institutions in the United States, it being established in 1636.

The mark "Harvard College" was first used in commerce in the United States in 1638 for
educational services, specifically, providing courses of instruction and training at the university
level.

More importantly, the name HARVARD was the name of a person whose deeds were considered
to be a cornerstone of the university. The Appellant’s logos, emblems or symbols are owned by
Harvard University. The name HARVARD and the logos, emblems or symbols are endemic and
cannot be separated from the institution.

Pribhdas J. Mirpuri vs. CA and Barbizon Corporation

G.R. No. 114508
November 19, 1999

Facts

Lolita Escobar filed an application with the Bureau of Patents for the registration of the
trademark “Barbizon" for use in brassieres and ladies undergarments.

Escobar alleged that she had been manufacturing and selling these products under the firm
name "L & BM Commercial" since March 3, 1970.

This was opposed by Barbizon Corporation, a foreign corp. in NY US.; In IPC No. 686.
Private respondent's opposition therein was anchored on:
a. "confusing similarity" of its trademark with that of Escobar's;
b. that the registration of Escobar's similar trademark will cause damage to private
respondent's business reputation and goodwill; and
c. that Escobar's use of the trademark amounts to an unlawful appropriation of a mark
previously used in the Philippines which act is penalized under Section 4 of the Trademark
Law.

On June 18, 1974, the opposition was dismissed and Lolita Escobar was issued a certificate of
registration for the trademark "Barbizon."

Escobar later assigned all her rights and interest over the trademark to Mirpuri, the latter is
the owner of Bonito Enterprises.

In 1979, the Bureau of Patents cancelled Escobar's certificate of registration, when it failed to
file the Affidavit of Use of the Trademark required under Section 12 of RA 166(the Philippine
Trademark Law).

Escobar and Mirpuri reapplied for registration of the cancelled trademark.

Again, the same was opposed by Barbizon Corporation; in IPC No. 2049. It asserts that:
 Its trademark is entitled to protection as a well-known mark under
 Article 6 of the Paris Convention,
 Executive Order No. 913
 the two Memoranda dated November 20, 1980 and October 25, 1983 of the Minister of Trade
and Industry to the Director of Patents;
 Escobar's trademark is identical to private respondent's and its use on the same class of
goods as the latter's amounts to a violation of the Trademark Law and Article 189 of the
Revised Penal Code.

Petitioner raised the defense of res judicata.

The Director of Patents favored the petitioners.

The CA reversed the decision.

Issue

 Whether or not the principle of res judicata proper.

 Whether or not the treaty affords protection to a foreign corporation against a Philippine
applicant for the registration of a similar trademark is the principal issue in this case.

Held

Issue on Res judicata

That the oppositions in the first and second cases are based on different laws.

The opposition in IPC No. 686 was based on specific provisions of the Trademark Law
 Section 4 (d) on confusing similarity of trademarks
 Section 8 on the requisite damage to file an opposition to a petition for registration.

The opposition in IPC No. 2049

 Article 6 of Paris Convention
 E.O. No. 913
 two (2) Memoranda of the Minister of Trade and Industry.
 Article 189 of the RPC

Causes of action which are distinct and independent from each other, although arising out of
the same contract, transaction, or state of facts, may be sued on separately, recovery on one
being no bar to subsequent actions on others.

The mere fact that the same relief is sought in the subsequent action will not render the
judgment in the prior action operative as res judicata, such as where the two actions are based
on different statutes.

Res judicata therefore does not apply to the instant case and respondent Court of Appeals did
not err in so ruling.
Protection to Well-known Marks
Article 6 of the Paris Convention governs protection of well-known trademarks.

It provides that, when the competent authority of a union member country has considered a
mark of a person entitled to the benefits of the convention as well-known mark in their
country, such union-member country shallrefuse or cancel the registration or prohibit the use
of such mark.

The essential that the trademark to be protected must be "well-known" in the country where
protection is sought.

The power to determine whether a trademark is well-known lies in the "competent authority of
the country of registration or use."

This competent authority would be either the registering authority if it has the power to decide
this, or the courts of the country in question if the issue comes before a court.

Consequently, the following Minister of Trade, during their respective terms issued separate
memorandumdirected to the Director of Patents

In the Villafuerte Memorandum

 to reject all pending applications for Philippine registration of signature and other world-
famous trademarks by applicants other than their original owners or users.
 Also in the memo he enumerated several internationally-known trademarks and ordered the
Director of Patents to require Philippine registrants of such marks to surrender their
certificates of registration.

In the Ongpin Memorandum

It laid down guidelines for the Director of Patents to observe in determining whether a
trademark is entitled to protection as a well-known mark in the Philippines under Article 6of
the Paris Convention.

Both the Villafuerte and Ongpin Memoranda were sustained by the SC in La Chemise Lacoste,
S.A. vs. Fernandez. It ruled that the Minister of Trade and Industry was the "competent
authority" to determine whether a trademark is well-known in this country.

Both the Philippines and the USA, herein private respondent's country, are signatories to the
Convention.
The Philippines and the United States of America have acceded to the WTO Agreement.

This Agreement has revolutionized international business and economic relations among
states, and has propelled the world towards trade liberalization and economic globalization. 92
Protectionism and isolationism belong to the past. Trade is no longer confined to a bilateral
system. There is now "a new era of global economic cooperation, reflecting the widespread
desire to operate in a fairer and more open multilateral trading system."

Conformably, the State must reaffirm its commitment to the global community and take part in
evolving a new international economic order at the dawn of the new millenium.

LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC., Petitioners,

vs. CLINTON APPARELLE, INC., Respondent.

G.R. No. 138900 September 20, 2005

Tinga, J.:

TOPIC

Trademark Infringement
Trademark Dilution

FACTS

LS & Co., a foreign corporation duly organized and existing under the laws of the State of
Delaware, U.S.A., and engaged in the apparel business, is the owner by prior adoption and use
since 1986 of the internationally famous "Dockers and Design" trademark. This ownership is
evidenced by its valid and existing registrations in various member countries of the Paris
Convention.

In the Philippines, it has a Certificate of Registration No. 46619 in the Principal Register for use
of said trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and jackets under Class
25.9. The "Dockers and Design" trademark was first used in the Philippines in or about May
1988, by LSPI, a domestic corporation engaged in the manufacture, sale and distribution of
various products bearing trademarks owned by LS & Co.

LS & Co. and LSPI alleged that they discovered the presence in the local market of jeans under
the brand name "Paddocks" using a device which is substantially, if not exactly, similar to the
"Dockers and Design" trademark owned by and registered in the name of LS & Co., without its
consent. Based on their information and belief, Clinton Apparelle manufactured and continues
to manufacture such "Paddocks" jeans and other apparel.

Hence, a complaint for Trademark Infringement, Injunction and Damages was filed by
petitioners LS & Co. and LSPI against respondent Clinton Apparelle, Inc. together with an
alternative defendant, Olympian Garments, Inc. (Olympian Garments), before the Regional Trial
Court of Quezon City, Branch 90.

A TRO was issued which was neither attended during the hearing by ClintonApparelle nor
Olympian Garments andwhich Clinton Apparelle claimed that it was not notified of such
hearing and that only Olympian Garments allegedlyhad been issued with summons.

The RTC then issued an order granting the writ of preliminary injunction which was opposed
by Clinton Apparelle by filing a Motion to Dismiss and a Motion for Reconsideration of the
Order granting the writ of preliminary injunction which was subsequently denied by the RTC.

Clinton Apparelle filed with the Court ofAppeals a petitionfor certiorari, prohibition and
mandamus which was granted by the CA

The CA said that the TRO had been improperly issued and that the issuance of the writ of
preliminary injunction is questionable.

With the denial of Motion for Reconsideration, LS & Co. and LSPI filed a petition for review on
certiorari before the SC.

ISSUE/S

Whether or not issuance of the writ of preliminary injunction by the trial court was proper as
regards to the alleged infringement of "Dockers and Design" trademark owned and registered
by LS& Co.?

SC RULING

NO.

The Supreme Court find that there was scant justification for the issuance of the writ of
preliminary injunction.Petitioners’ right has yet to be determined. Petitioners also failed to
show proof that there is material and substantial invasion of their right to warrant the
issuance of an injunctive writ. Neither were petitioners able to show any urgent and permanent
necessity for the writ to prevent serious damage.

Section 1, Rule 58 of the Rules of Court defines a preliminary injunction as an order granted at
any stage of an action prior to the judgment or final order requiring a party or a court, agency
or a person to refrain from a particular act or acts.

Injunction is granted when a clear and positive right especially calling for judicial protection is
shown. Injunction is not a remedy to protect or enforce contingent, abstract, or future rights.

Petitioners’ registered trademark consists of two elements:

(1) the word mark "Dockers" and

(2) the wing-shaped design or logo.

Notably, there is only one registration for both features of the trademark giving the impression
that the two should be considered as a single unit.

Clinton Apparelle’s trademark, on the other hand, uses the "Paddocks" word mark on top of a
logo which according to petitioners is a slavish imitation of the "Dockers" design.

The two trademarks apparently differ in their word marks ("Dockers" and "Paddocks").It could
thus be said that respondent only "appropriates" petitioners’ logo and not the word mark
"Dockers"; it uses only a portion of the registered trademark and not the whole.

Given the single registration of the trademark "Dockers and Design" and considering that
respondent only uses the assailed device but a different word mark, the right to prevent the
latter from using the challenged "Paddocks" device is far from clear.

Stated otherwise, it is not evident whether the single registration of the trademark "Dockers
and Design" confers on the owner the right to prevent the use of a fraction thereof in the course
of trade. It is also unclear whether the use without the owner’s consent of a portion of a
trademark registered in its entirety constitutes material or substantial invasion of the owner’s
right.

It is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the
dominant or central feature of petitioners’ trademark—the feature that prevails or is retained in
the minds of the public—an imitation of which creates the likelihood of deceiving the public
and constitutes trademark infringement.

In sum, there are vital matters which have yet and may only be established through a full-
blown trial.

As to petitioners’ contention that the erosion or dilution of their trademark is protectable.

They assert that a trademark owner does not have to wait until the mark loses its
distinctiveness to obtain injunctive relief, and that the mere use by an infringer of a registered
mark is already actionable even if he has not yet profited thereby or has damaged the
trademark owner.

Trademark dilution is the lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or absence of:

(1) competition between the owner of the famous mark and other parties; or

(2) likelihood of confusion, mistake or deception.

Subject to the principles of equity, the owner of a famous mark is entitled to an injunction
"against another person’s commercial use in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes dilution of the distinctive quality of the
mark." This is intended to protect famous marks from subsequent uses that blur
distinctiveness of the mark or tarnish or disparage it.
In the case at bar, petitioners have yet to establish whether "Dockers and Design" has acquired
a strong degree of distinctiveness and whether the other two elements are present for their
cause to fall within the ambit of the invoked protection. The Trends MBL Survey Report which
petitioners presented in a bid to establish that there was confusing similarity between two
marks is not sufficient proof of any dilution that the trial court must enjoin.

SEHWANI, INCORPORATED vs. IN-N-OUT BURGER, INC., 

Facts:

IN-N-OUT Burger, Inc., a foreign corporation organized under the laws of California, U.S.A.,
and not doing business in the Philippines, filed before the Bureau of Legal Affairs of the IPO, an
administrative complaint against petitioners Sehwani, Inc. and Benita's Frites, Inc. for violation
of intellectual property rights. It alleged that it is the owner of the tradename "IN-N-OUT" and
trademarks "IN-N-OUT," "IN-N-OUT Burger & Arrow Design" and "IN-N-OUT Burger Logo,"
which are used in its business since 1948 up to the present. These tradename and trademarks
were registered in the United States as well as in other parts of the world.

Respondent applied with the IPO for the registration of its trademark "IN-N-OUT Burger &
Arrow Design" and servicemark "IN-N-OUT." In the course of its application, respondent
discovered that petitioner Sehwani, Inc. had obtained Trademark Registration No. 56666 for
the mark "IN N OUT" without its authority.

Petitioners alleged that respondent lack the legal capacity to sue because it was not doing
business in the Philippines and that it has no cause of action because its mark is not
registered or used in the Philippines. Petitioner Sehwani, Inc. also claimed that as the
registered owner of the "IN-N-OUT" mark, it enjoys the presumption that the same was validly
acquired and that it has the exclusive right to use the mark.

Bureau Director Estrellita Beltran-Abelardo rendered a decision finding that respondent has
the legal capacity to sue and that it is the owner of the internationally well-known trademarks;
however, she held that petitioners are not guilty of unfair competition.

Office of the Director General rendered an order dismissing petitioners' appeal for being filed
out of time.

Court of Appeals dismissed the appeal for lack of merit. It held that the right to appeal is not a
natural right or a part of due process, but a procedural remedy of statutory origin, hence, its
requirements must be strictly complied with.

Issues:

1. WON respondent has the legal capacity to sue for the protection of its trademarks

2.  WON respondent's trademarks are considered "well-known" is factual in nature

Held:

I.
Contrary to petitioners' argument, respondent has the legal capacity to sue for the protection of
its trademarks, albeit it is not doing business in the Philippines. Section 160 in relation to
Section 3 of R.A. No. 8293, provides:

SECTION 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement
Action. - Any foreign national or juridical person who meets the requirements of Section 3 of
this Act and does not engage in business in the Philippines may bring a civil or administrative
action hereunder for opposition, cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or not it is licensed to do business in the
Philippines under existing laws.

Article 8

A tradename shall be protected in all countries of the Union without the obligation of filing or
registration whether or not it forms part of a trademark.

Article 6 which governs the protection of well-known trademarks, is a self-executing provision

and does not require legislative enactment to give it effect in the member country. It may be
applied directly by the tribunals and officials of each member country by the mere publication
or proclamation of the Convention, after its ratification according to the public law of each state
and the order for its execution. The essential requirement under this Article is that the
trademark to be protected must be "well-known" in the country where protection is sought. The
power to determine whether a trademark is well-known lies in the "competent authority of the
country of registration or use." This competent authority would be either the registering
authority if it has the power to decide this, or the courts of the country in question if the issue
comes before a court.

II.

We are inclined to favor the declaration of the mark "IN-N-OUT" as an internationally well-
known mark on the basis of "registrations in various countries around the world and its
comprehensive advertisements therein."

As shown by the records of the instant case, Complainant submitted evidence consisting of
articles about "IN-N-OUT Burger" appearing in magazines, newspapers and print-out of what
appears to be printed representations of its internet website (www.innout.com) (Exhibits "CCC"
to "QQQ"), as well as object evidence consisting of videotapes of famous celebrities mentioning
IN-N-OUT burgers in the course of their interviews (Exhibits "EEEE" and "FFFF") showing a
tremendous following among celebrities.

The quality image and reputation acquired by the complainant's IN-N-OUT mark is
unmistakable. With this, complainant's mark have met other criteria set in the Implementing
Rules of Republic Act 8293, namely, 'a' and 'd' of Rule 102, to wit:

"Rule 102:

(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 publicity and
the presentation at fairs or exhibitions, of the goods and/or services to which the mark applies;

xxx
(d) the quality image or reputation acquired by the mark"

Hence, on the basis of evidence presented consisting of worldwide registration of mark "IN-N-
OUT" almost all of which were issued earlier than the respondent's date of filing of its
application and the subsequent registration of the mark "IN-N-OUT" in this Office, as well as
the advertisements therein by the complainant, this Office hereby affirms its earlier declaration
that indeed, the mark "IN-N-OUT BURGER LOGO" is an internally well-known mark. 29

We find the foregoing findings and conclusions of Director Beltran-Abelardo fully substantiated
by the evidence on record and in accord with law.

The fact that respondent's marks are neither registered nor used in the Philippines is of no
moment. The scope of protection initially afforded by Article 6 bis of the Paris Convention has
been expanded in the 1999 Joint Recommendation Concerning Provisions on the Protection of
Well-Known Marks, wherein the World Intellectual Property Organization (WIPO) General
Assembly and the Paris Union agreed to a nonbinding recommendation that a well-known
mark should be protected in a country even if the mark is neither registered nor used in that
country. Part I, Article 2(3) thereof provides:

(3) [Factors Which Shall Not Be Required] (a) A Member State shall not require, as a condition
for determining whether a mark is a well-known mark:

(i) that the mark has been used in, or that the mark has been registered or that an application
for registration of the mark has been filed in or in respect of, the Member State;

(ii) that the mark is well known in, or that the mark has been registered or that an application
for registration of the mark has been filed in or in respect of, any jurisdiction other than the
Member State; or

(iii) that the mark is well known by the public at large in the Member State. (Underscoring
supplied)cralawlibrary

Moreover, petitioners' claim that no ground exists for the cancellation of their registration lacks
merit. Section 151(b) of RA 8293 provides:

SECTION 151. Cancellation. - 151.1. A petition to cancel a registration of a mark under this
Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will
be damaged by the registration of a mark under this Act as follows:

xxx

(b) At any time, if the registered mark becomes the generic name for the goods or services, or a
portion thereof, for which it is registered, or has been abandoned, or its registration was
obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being
used by, or with the permission of, the registrant so as to misrepresent the source of the goods
or services on or in connection with which the mark is used. x x x

The evidence on record shows that not only did the petitioners use the IN-N-OUT Burger
trademark for the name of their restaurant, but they also used identical or confusingly similar
mark for their hamburger wrappers and french-fries receptacles, thereby effectively
misrepresenting the source of the goods and services.
STERLING (SPI) vs. BAYER (FBA) G.R. No. L-19906, April 30, 1969

FACTS: The word BAYER was the surname of Friedrich Bayer, a German, who, on August 1,
1868, organized a drug company bearing his name — Friedr Bayer et comp. — at Barmen,
Germany. The company was at first engaged in the manufacture and sale of chemicals. At
about the year 1888 it started to manufacture pharmaceutical preparations also

In 1935, SPI, a Delaware corporation, a subsidiary of Sterling Drug, Inc. of New York, was
issued a license to do business in the Philippines.

The trademarks BAYER and BAYER CROSS IN CIRCLE were then registered in the Philippines
under the old Trademark Law (Act 666) by The Bayer Co., Inc.:

- the BAYER CROSS IN CIRCLE trademark on April 18, 1939 for which it was issued Certificate
of Registration No. 13081;

- the BAYER trademark on April 22, 1939 for which it was issued Registration Certificate No.
13089.

These trademark rights were assigned to SPI on December 30, 1942 and the assignment was
recorded in the Philippines Patent Office on March 5, 1947. With the passage of Republic Act
166 repealing the old Trademark Law (Act 666), SPI was issued by the Philippines Patent Office
on June 18, 1948 two new certificates of registration: No. 1260-S for BAYER CROSS IN
CIRCLE; No. 1262-S for BAYER. The registration of these trademarks was only for "Medicines".

Sometime in 1958, defendant Allied Manufacturing & Trading Co., Inc. (AMATCO) started
selling FBA's products especially "Folidol" a chemical insecticide which bears the BAYER
CROSS IN CIRCLE trademark. On November 18, 1959, FBA applied for the registration of the
BAYER CROSS IN CIRCLE trademark with the Philippines Patent Office for animal and plant
destroying agents. The examiner's report dated December 17, 1959 stated that the subject
mark appears to be similar to SPI's registered BAYER trademarks as covered by Certificates of
Registration Nos. 1260-S and 1262-S. He concluded that "[r]egistration of applicant's mark is
proscribed by Section 4-d of the Statute because it would cause confusion or mistake or [to]
deceive purchasers."17 This action of the Philippines Patent Office drew a reply from FBA. In
its letter dated February 1, 1960 applicant FBA, thru counsel, said that it "offers no question
or objection to the assertion of the Examiner that the registrant's mark and that of the
applicant are similar to each other. It emphasized the fact that it was seeking registration in
the Supplemental Register.

On February 25, 1960, FBA was issued a certificate of registration in the Supplemental
Register, SR-304.

ISSUE: WON SPI’s ownership of the trademarks extends to products not related to medicine.

RULING:

Actual use in commerce or business is a prerequisite to the acquisition of the right of

ownership over a trademark. This rule is spelled out in our Trademark Law thus:

SEC. 2-A. Ownership of trade-marks, trademark names and service-mark; how acquired. —
Anyone who lawfully produces or deals in merchandise of any kind or who engages in any
lawful business, or who renders any lawful service in commerce, by actual use thereof in
manufacture or trade, in business, and in the service rendered, may appropriate to his,
exclusive use a trademark, a trade-name, or a service-mark not so appropriated by another, to
distinguish his merchandise, business, or service from the merchandise, business or service of
others. The ownership or possession of a trademark, trade-name, service mark, heretofore or
hereafter appropriated, as in this section provided, shall be recognized and protected in the
same manner and to the same extent as are other property rights known to the law. (As
inserted by Section 1 of Republic Act 638)

Adoption alone of a trademark would not give exclusive right thereto. Such right grows out of
their actual use.

The BAYER trademarks registered in the Philippines, to which plaintiff SPI may lay claim, are
those which cover medicines only. For, it was on said goods that the BAYER trademarks were
actually used by it in the Philippines. Therefore, the certificates of registration for medicines
issued by the Director of Patents upon which the protection is enjoyed are only for medicines.
Nothing in those certificates recited would include chemical or insecticides.

If the certificate of registration were to be deemed as including goods not specified therein, then
a situation may arise whereby an applicant may be tempted to register a trademark on any and
all goods which his mind may conceive even if he had never intended to use the trademark for
the said goods. We believe that such omnibus registration is not contemplated by our
Trademark Law. Because of this and of the fact that the Bayer trademarks were never used in
the Philippines by plaintiff except for medicines — Aspirin, Aspirin for Children and
Cafiaspirina — we find ourselves unwilling to draw a hard and fast rule which would absolutely
and under all circumstances give unqualified protection to plaintiff against the use of said
trademarks by all others on goods other than medicines

In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair
Trading, the test employed by the courts to determine whether noncompeting goods are or are
not of the same class is confusion as to the origin of the goods of the second user. Although
two noncompeting articles may be classified under two different classes by the Patent Office
because they are deemed not to possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class if the simultaneous use on them
of identical or closely similar trademarks would be likely to cause confusion as to the origin, or
personal source, of the second user's goods. They would be considered as not falling under the
same class only if they are so dissimilar or so foreign to each other as to make it unlikely that
the purchaser would think the first user made the second user's goods. (relating to “Ang Tibay”
case)

The Courts have come to realize that there can be unfair competition or unfair trading even if
the goods are noncompeting, and that such unfair trading can cause injury or damage to the
first user of a given trade mark, first, by prevention of the natural expansion of his business,
and second, by having his business reputation confused with and put at the mercy of the
second user.

The net result is that, as the trial court aptly observed, plaintiff may hold on to its BAYER
trademarks for medicines. And defendants may continue using the same trademarks for
insecticides and other chemicals, not medicines.

PAGASA INDUSTRIAL CORPORATION, petitioner,

vs. HE HONORABLE COURT OF APPEALS, TIBURCIO S. EVALLE Director of Patents, and
YOSHIDA KOGYO KABUSHIKI KAISHA, respondents.
FACTS: Sometime on November 9, 1961, the Philippines Patent Office issued Certificate of
Registration No. 9331 in favor of respondent Kaisha covering the trademark "YKK" for slide
fasteners and zippers in class 41. On April 27, 1967 or 51/2 years after respondent's
registration was issued by the Philippines Patent Office, petitioner Pagasa filed an application
for registration of exactly the same or Identical trademark of "YKK" for zippers under class 41
which was allowed on April 4, 1968 with Certificate of Registration No. 13756.

Alleging that both trademark ("YKK") are confusingly similar, being used on similar products
(slide fasteners or zippers) under the same classification of goods, respondent Kaisha filed with
the Director of Patents a petition for cancellation of petitioner's registration of exactly the same
trademark "YKK".

On May 5, 1977, the Director of Patents, finding the trademark in question "YKK" brand to be
confusingly similar, cancelled Registration No. 13756 in the name of Petitioner Corporation.
The Court of Appeals affirmed the decision of the Director of Patents, and held that the
equitable principles of laches, estoppel and acquiescence would not apply in this case for it has
not been shown that Kaisha abandoned the use of the trademark.

ISSUES: Whether or not the equitable principles of laches, estoppel and acquiescence can be
applied in the instant case.
Whether or not Respondent Kaisha complied with the requirement of two months commercial
use of the trademark prior to the filing of' an application for registration.

RULING: The Trademark Law is very clear. It requires actual commercial use of the mark prior
to its registration. There is no dispute that respondent corporation was the first registrant, yet
it failed to fully substantiate its claim that it used in trade or business in the Philippines the
subject mark; it did not present proof to invest it with exclusive, continuous adoption of the
trademark which should consist among others, of considerable sales since its first use. The
invoices 3 submitted by respondent which were dated way back in 1957 show that the zippers
sent to the Philippines were to be used as "samples" and "of no commercial, value." The
evidence for respondent must, definite and free from inconsistencies. "Samples" are not for sale
and therefore, the fact of exporting them to the Philippines cannot be considered to be
equivalent to the "use" contemplated by the law. Respondent did not expect income from such
"samples." There were no receipts to establish sale, and no proof were presented to show that
they were subsequently sold in the Philippines.

It appears that it was only after more than seven (7) years when respondent sought the
cancellation of the trademark. An unreasonable length of time had already passed before
respondent asserted its right to the trademark. There is a presumption of neglect already
amounting to "abandonment" of a right after a party had remained silent for quite a long time
during which petitioner had been openly using the trademark in question. Such inaction on
the part of respondent entitles petitioner to the equitable principle of laches.

A perusal of the pleadings showed no explanation why respondent allowed the use by petitioner
of the trademark under a duly approved application of registration thereof for as long as almost
eight (8) years before filing the instant petition for cancellation. Obviously, respondent wanted
goodwill and a wide market established at the expense of the petitioner but for its benefit. It is
precisely the intention of the law, including a provision on equitable principle to protect only
the vigilant, not those guilty of laches. It is most unfair if at any time, a previous registrant,
even after a lapse of more than five (5) years, can ask for the cancellation of a similar or the
same trademark, the registration of which was never opposed by the prior registrant. Why, in
the first place did respondent not file an opposition to the application of petitioner, as it ought
to have done? It could be because by the fact that its own registration was defective for there
being no compliance with the requirement of the law such as the two (2) months commercial
use of the trademark prior to the filing of the application, its own registration may be cancelled,
specially as it had no evidence of actual use of the trademark after its registration up to the
time of the filing of petitioner's application, a fact easily deducible from the fact of respondent's
complete silence and having taken no action to cancel petitioner's trademark until after the
lapse of more than seven (7) years from the approval of petitioner's application to respondent
filing a petition for cancellation.

Section 9-A of the Trademark Law as amended provides:

Equitable principles to govern proceedings: In opposition proceedings and all
other inter partes proceedings in the Patent Office under this Act, equitable principle of
laches, estoppel and acquiescence where applicable, may be considered applied.

Respondent by its silence, must be aware that its "title" to the subject mark is defective since it
failed to conform with the provision of the law regarding prior use of the mark; and it must
have been afraid that it cannot fully substantiate its claim that the mark was commercially
used in the Philippines. Surely, the evidence of respondent showing that it had advertised in
magazines such as Life and Time, cannot be considered as compliance with the law, for it is of
general knowledge that said magazines are not published in the Philippines, nor was there any
showing that the product so advertised was even sold here. Hence, to grant the application for
cancellation would greatly prejudice petitioner since respondent would be taking advantage of
the goodwill already established by petitioner in selling its product, without the respondent
having incurred in any expense to gain this priceless asset.

WHEREFORE, the decision dated February 6, 1980 of the Court of Appeals is hereby set aside.
No costs.

Converse Rubber Corp. vs Universal Rubber Products, 1987

Justice: Fernan

(What constitutes valid use)

The Facts:
 Universal Rubber Products, Inc. filed an application with the Philippine Patent
office for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE"
used on rubber shoes and rubber slippers.
 Petitioner Converse Rubber Corporation filed its opposition to the application for
registration ongrounds that: (1) The trademark sought to be registered is
confusingly similar to the word"CONVERSE" XXX; (2) The registration of
respondent's trademark will cause great and irreparable injuryto the business
reputation and goodwill of petitioner XXX.
 the parties submitted the following partialstipulation of facts:
1.) The petitioners corporate’s name is “CONVERSE RUBBER CORPORATION”
has been in existence since July 31, 1946 xxx.
2.) Petitioner is not licensed to do business in the Philippines and it is not doing
business on its own in the Philippines
3.) Petitioner manufacturers rubber shoes and uses thereon the trademarks
“CHUCK TAYLOR” and “ALL STAR AND DEVICE”.
 the Director of Patents dismissed the opposition of the petitioner and gave due
course torespondent's application.
Issue: whether or not the respondent's partial appropriation of petitioner'scorporate
nameis of such character that it is calculated to deceive or confuse the public to the
injury of the petitionerto which the name belongs.

Rulings: Yes.

Reasons: I - From a cursory appreciation of the petitioner's corporate name "CONVERSE

RUBBERCORPORATION,' it is evident that the word "CONVERSE" is the dominant word which
Identifiespetitioner from other corporations engaged in similar business.Respondent, in the
stipulation offacts, admitted petitioner's existence since 1946 as a duly organized foreign
corporation engaged inthe manufacture of rubber shoes. This admission necessarily betrays its
knowledge of the reputationand business of petitioner even before it applied for registration of
the trademark in question.Knowing, therefore, that the word "CONVERSE" belongs to and is
being used by petitioner, and is infact the dominant word in petitioner's corporate name,
respondent has no right to appropriate thesame for use on its products which are similar to
those being produced by petitioner.

II - Respondent's witness had no Idea why respondent chose "UNIVERSAL CONVERSE" as

trademarkand the record discloses no reasonable explanation for respondent's use of the word
"CONVERSE"in its trademark. Such unexplained use by respondent of the dominant word of
petitioner's corporatename lends itself open to the suspicion of fraudulent motive to trade upon
petitioner's reputation, XXXX

III- The determinative factor in ascertaining whether or not marks are confusingly similar to
eachother "is not whether the challenged mark would actually cause confusion or deception of
thepurchasers but whether the use of such mark would likely cause confusion or mistake on
the part ofthe buying public. It would be sufficient, for purposes of the law, that the similarity
between the twolabels is such that there is a possibility or likelihood of the purchaser of the
older brand mistaking thenew brand for it." Even if not an the details just mentioned were
identical, with the general appearance alone of the two products,any ordinary, or even perhaps
even [sic] a not too perceptive and discriminating customer could be deceived. By appropriating
the word "CONVERSE,"respondent's products are likely to be mistaken as having been
produced by petitioner. "The risk ofdamage is not limited to a possible confusion of goods but
also includes confusion of reputation ifthe public could reasonably assume that the goods of
the parties originated from the same source.

G.R. No. 222366, December 04, 2017

W LAND HOLDINGS, INC., Petitioner, v. STARWOOD HOTELS AND RESORTS
WORLDWIDE, INC., Respondent.

PERLAS-BERNABE, J.:

FACTS:
On December 2, 2005, Starwood filed before the IPO an application for registration of the
trademark "W" for Classes 436 and 447 of the International Classification of Goods and
Services for the Purposes of the Registration of Marks (Nice Classification). On February 26,
2007, Starwood's application was granted and thus, the "W" mark was registered in its name.
However, on April 20, 2006, W Land applied for the registration of its own "W" mark for Class
36, which thereby prompted Starwood to oppose the same. In a Decision dated April 23, 2008,
the BLA found merit in Starwood's opposition, and ruled that W Land's "W" mark is confusingly
similar with Starwood's mark, which had an earlier filing date. W Land filed a motion for
reconsideration on June 11, 2008, which was denied by the BLA in a Resolution dated July 23,
2010.

On May 29, 2009, W Land filed a Petition for Cancellation of Starwood's mark for non-use
under Section 151.1.

In its defense, Starwood denied having abandoned the subject mark on the ground of non-use,
asserting that it filed with the Director of Trademarks a notarized Declaration of Actual Use23
(DAU) with evidence of use on December 2, 2008, which was not rejected.In this relation,
Starwood argued that it conducts hotel and leisure business both directly and indirectly
through subsidiaries and franchisees, and operates interactive websites for its W Hotels in
order to accommodate its potential clients worldwide.

BLA RULING: The BLA ruled in W Land's favor, and accordingly ordered the cancellation of
Starwood's registration for the "W" mark. The BLA found that the DAU and the attachments
thereto submitted by Starwood did not prove actual use of the "W" mark in the Philippines.

The IPO DG Ruling: IPO DG dismissed W Land's Petition for Cancellation. IPO DG found that
Starwood's submission of its DAU and attachments, coupled by the acceptance thereof by the
IPO Bureau of Trademarks, shows that the "W" mark still bears a "registered" status. Therefore,
there is a presumption that Starwood sufficiently complied with the registration requirements
for its mark.

ISSUE: WON the CA correctly affirmed the IPO DG's dismissal of W Land's Petition for
Cancellation of Starwood's "W'' mark.

RULING:The petition is without merit.

The IP Code defines a "mark" as "any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise." Case law explains that "[t]rademarks
deal with the psychological function of symbols and the effect of these symbols on the public at
large.”

The protection of trademarks as intellectual property is intended not only to preserve the
goodwill and reputation of the business established on the goods or services bearing the mark
through actual use over a period of time, but also to safeguard the public as consumers
against confusion on these goods or services.As viewed by modern authorities on trademark
law, trademarks perform three (3) 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.
It is understood that the "use" which the law requires to maintain the registration of a mark
must be genuine, and not merely token. Based on foreign authorities, genuine use may be
characterized as a bona fide use which results or tends to result, in one way or another, into a
commercial interaction or transaction "in the ordinary course of trade.

Cognizant of this current state of affairs, the Court therefore agrees with the IPO DG, as
affirmed by the CA, that the use of a registered mark representing the owner's goods or services
by means of an interactive website may constitute proof of actual use that is sufficient to
maintain the registration of the same. Since the internet has turned the world into one vast
marketplace, the owner of a registered mark is clearly entitled to generate and further
strengthen his commercial goodwill by actively marketing and commercially transacting his
wares or services throughout multiple platforms on the internet.