1 (1) Infringement of trademark is the unauthorized use of a trademark, whereas unfair competition is
Del Monte Corp. v CA, G.R. No. 78325, January 25, 1990 the passing off of one's goods as those of another.
FACTS: Petitioner Del Monte Corporation is a foreign company organized under the laws of the US
and not engaged in business in the PH. Both are signatories to the Convention of Paris  which grants
to the nationals of the parties’ rights and advantages for the repression of acts of infringement and
unfair competition. Petitioner Philippine Packing Corporation (Philpack) is a domestic corporation. On
Del Monte granted Philpack the right to manufacture, distribute and sell in the Philippines various
agricultural products, including catsup, under the Del Monte trademark and logo.Del Monte
authorized Philpack to register with the Philippine Patent Office the Del Monte catsup bottle
configuration, for which it was granted Certificate of Trademark Registration under the Supplemental
Register. Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of
Registration by the Bureau of Domestic Trade to engage in the manufacture, packing, distribution and
sale of various kinds of sauce, identified by the logo Sunshine Fruit Catsup. The product itself was
contained in various kinds of bottles, including the Del Monte bottle, which the private respondent
bought from the junk shops for recycling.
Having received reports that the private respondent was using its exclusively designed bottles and a
logo confusingly similar to Del Monte's, Philpack warned it to desist. Unheeded, Philpack and Del
Monte filed a complaint against the private respondent for infringement of trademark and unfair
competition, with a prayer for damages and the issuance of a writ of preliminary injunction. Sunshine
alleged that it had long ceased to use the Del Monte bottle and that its logo was substantially different
from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners.
RTC of Makati dismissed the complaint. It held that there were substantial differences between the
logos or trademarks of the parties;Furthermore, the complainants had failed to establish the
defendant's malice or bad faith, which was an essential element of infringement of trademark or unfair
competition. The respondent court agreed with the findings of the trial court that:In order to resolve
the said issue, the Court now attempts to make a comparison of the two products, to wit:
1. As to the shape of label or make: Del Monte: Semi-rectangular with a crown or tomato shape
design on top of the rectangle. Sunshine: Regular rectangle.
2. As to brand printed on label: Del Monte: Tomato catsup mark. Sunshine: Fruit catsup.
3. As to the words or lettering on label or mark: Del Monte: Clearly indicated words packed by Sysu
International, Inc., Q.C., Philippines. Sunshine: Sunshine fruit catsup is clearly indicated "made in the
Philippines by Sunshine Sauce Manufacturing Industries" No. 1 Del Monte Avenue, Malabon, Metro
Manila.
4. As to color of logo: Del Monte: Combination of yellow and dark red, with words "Del Monte Quality"
in white.Sunshine: White, light green and light red, with words "Sunshine Brand" in yellow.
5. As to shape of logo: Del Monte: In the shape of a tomato.Sunshine: Entirely different in shape.
ISSUE: W/N Sunshine was guilty of unfair competition and infringement
RULING: Yes. To arrive at a proper resolution of this case, it is important to bear in mind the
following distinctions between infringement of trademark and unfair competition.
(2) In infringement of trademark fraudulent intent is unnecessary whereas in unfair competition
fraudulent intent is essential.
(3) In infringement of trademark the prior registration of the trademark is a prerequisite to the action,
whereas in unfair competition registration is not necessary. 
While the Court does recognize these distinctions, it does not agree with the conclusion that there
was no infringement or unfair competition. It seems to us that the lower courts have been so pre-
occupied with the details that they have not seen the total picture. It has been correctly held that side-
by-side comparison is not the final test of similarity.  Such comparison requires a careful scrutiny to
determine in what points the labels of the products differ, as was done by the trial judge. The ordinary
buyer does not usually make such scrutiny nor does he usually have the time to do so. It has been
held that in making purchases, the consumer must depend upon his recollection of the appearance of
the product which he intends to purchase. to determine whether a trademark has been infringed, we
must consider the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to
the marks as a totality, not usually to any part of it. It has also been held that it is not the function of
the court in cases of infringement and unfair competition to educate purchasers but rather to take
their carelessness for granted, and to be ever conscious of the fact that marks need not be identical. 
At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is a
colorable imitation of the Del Monte trademark. The predominant colors used in the Del Monte label
are green and red-orange, the same with Sunshine. The word "catsup" in both bottles is printed in
white and the style of the print/letter is the same. As previously stated, the person who infringes a
trade mark does not normally copy out but only makes colorable changes, employing enough points
of similarity to confuse the public with enough points of differences to confuse the courts. What is
undeniable is the fact that when a manufacturer prepares to package his product, he has before him
a boundless choice of words, phrases, colors and symbols sufficient to distinguish his product from
the others.
Coming now to the second issue, we find that the private respondent is not guilty of infringement
for having used the Del Monte bottle. (It is unfair competition) The reason is that the configuration of
the said bottle was merely registered in the Supplemental Register. Registration in the Principal
Register is constructive notice of the registrant's claim of ownership, while registration in the
Supplemental Register is merely proof of actual use of the trademark. Corollarily, registration in the
Principal Register is a basis for an action for infringement while registration in the Supplemental
Register is not.
As Sunshine's label is an infringement of the Del Monte's trademark, law and equity call for the
cancellation of the private respondent's registration and withdrawal of all its products. With regard to
the use of Del Monte's bottle, the same constitutes unfair competition; hence, the respondent should
be permanently enjoined from the use of such bottles.
 2 RA 166, the governing law for Registration No. 56334, requires the filing of a DAU on
Birkenstock Orthopädie GmBH & Co. Kg v. Philippine Shoe Expo Marketing Corp. g.r. No.
194307
FACTS: Petitioner, a corporation organized and existing under the laws of Germany, applied for
various trademark registrations before the IPO, namely: (a) "BIRKENSTOCK" for goods falling under
Class 25 of the International Classification of Goods and Services (Nice Classification); (b)
"BIRKENSTOCK BAD HONNEF -RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL
AND REPRESENTATION OF A FOOT, CROSS AND SUNBEA M". However, registration
proceedings were suspended in view of an existing registration of the mark "BIRKENSTOCK AND
DEVICE" in the name of Shoe Town International and Industrial Corporation, the predecessor-in-
interest of respondent Philippine Shoe Expo Marketing Corporation. petitioner filed a petition for
cancellation of Registration on the ground that it is the lawful and rightful owner of the Birkenstock
marks. During its pendency, however, respondent and/or its predecessor-in-interest failed to file the
required 10th Year Declaration of Actual Use thereby resulting in the cancellation of such mark.
The aforesaid cancellation paved the way for the publication of the subject applications.
Respondent filed three (3) separate verified notices of oppositions claiming, that: (a) it, together with
its predecessor-in-interest, has been using Birkenstock marks in the Philippines for more than 16
years; (b) the marks covered are identical to the one covered by Registration No. 56334; While
respondent and its predecessor-in-interest failed to file the 10th Year DAU, it continued the use of
"BIRKENSTOCK AND DEVICE" in lawful commerce.
The BLA of the IPO sustained respondent’s opposition. It ruled that the competing marks of
the parties are confusingly similar since they contained the word "BIRKENSTOCK" and are used on
the same and related goods. The BLA likewise opined that petitioner’s marks are not well -known in
the Philippines and internationally and that the various certificates of registration submitted by
petitioners were all photocopies and, therefore, not admissible as evidence. The IPO Director General
reversed and set aside the ruling of the BLA, thus allowing the registration of the subject applications.
He held that with the cancellation of Registration No. 56334 for respondent’s failure to file the 10th
Year DAU, there is no more reason to reject the subject applications on the ground of prior
registration by another proprietor. The CA reversed. It disallowed the registration of the subject
applications on the ground that the marks covered by such applications "are confusingly similar, if not
outright identical" with respondent’s mark.
ISSUE: W/N the subject marks should be allowed registration in the name of petitioner.
RULING: Yes. It is well-settled that "the rules of procedure are mere tools aimed at facilitating the
attainment of justice, rather than its frustration. A strict and rigid application of the rules must always
be eschewed when it would subvert the primary objective of the rules, that is, to enhance fair trials
and expedite justice. In the case at bar, while petitioner submitted mere photocopies as documentary
evidence in the Consolidated Opposition Cases, it should be noted that the IPO had already obtained
the originals of such documentary evidence in the related Cancellation Case earlier filed before it.
specified periods:
Section 12. Duration. – Each certificate of registration shall remain in force for twenty years:
Provided, That registrations under the provisions of this Act shall be cancelled by the Director, unless
within one year following the fifth, tenth and fifteenth anniversaries of the date of issue of the
certificate of registration, the registrant shall file in the Patent Office an affidavit showing that the mark
or trade-name is still in use or showing that its non-use is due to special circumstance which excuse
such non-use and is not due to any intention to abandon the same, and pay the required fee.
The aforementioned provision clearly reveals that failure to file the DAU within the requisite
period results in the automatic cancellation of registration of a trademark. In turn, such failure is
tantamount to the abandonment or withdrawal of any right or interest the registrant has over his
trademark. In this case, respondent admitted that it failed to file the 10th Year DAU. As a
consequence, it was deemed to have abandoned or withdrawn any right or interest over the mark
"BIRKENSTOCK." Besides, petitioner has duly established its true and lawful ownership of the mark
"BIRKENSTOCK." Under Section 2 of RA 166, which is also the law governing the subject
applications, in order to register a trademark, one must be the owner thereof and must have actually
used the mark in commerce in the Philippines for 2 months prior to the application for registration. It is
clear that actual use in commerce is also the test of ownership but the provision went further by
saying that the mark must not have been so appropriated by another. 
It must be emphasized that registration of a trademark, by itself, is not a mode of acquiring
ownership.  Clearly, it is not the application or registration of a trademark that vests ownership
thereof, but it is the ownership of a trademark that confers the right to register the same.
A trademark is an industrial property over which its owner is entitled to property rights which
cannot be appropriated by unscrupulous entities that, in one way or another, happen to register such
trademark ahead of its true and lawful owner. In the instant case, petitioner was able to establish that
it is the owner of the mark "BIRKENSTOCK. It has sufficiently proven that "BIRKENSTOCK" was first
adopted in Europe in 1774 by its inventor, Johann Birkenstock, on his line of quality footwear. On the
other hand, aside from Registration No. 56334 which had been cancelled, respondent only presented
copies of sales invoices and advertisements, which are not conclusive evidence of its claim of
ownership of the mark "BIRKENSTOCK" as these merely show the transactions made by respondent
involving the same.
The facts and evidence fail to show that [respondent] was in good faith in using and in registering the
mark BIRKENSTOCK. BIRKENSTOCK, obviously of German origin, is a highly distinct and arbitrary
mark. It is very remote that two persons did coin the same or identical marks. To come up with a
highly distinct and uncommon mark previously appropriated by another, for use in the same line of
business, and without any plausible explanation, is incredible. 
3. Fredco Manufacturing corp v. President and fellows Harvard college
G.r. No. 185917, June 1, 2011
FACTS: Petitioner Fredco Manufacturing Corporation (Fredco), a corporation organized and existing
under the laws of the Philippines, filed a Petition for Cancellation of Registration before the Bureau of
Legal Affairs of the IPO against respondents President and Fellows of Harvard College (Harvard
University), a corporation organized and existing under the laws of Massachusetts, United States of
America.
a. Fredco alleged that Registration was issued to Harvard University on 25 November 1993 for the
mark "Harvard Veritas Shield Symbol" for decals, tote bags, serving trays, sweatshirts, t-shirts,
hats and flying discs under Classes 16, 18, 21, 25 and 28 of the Nice International Classification of
Goods and Services.
b. Fredco alleged that the mark "Harvard" for t-shirts, polo shirts, sandos, briefs, jackets and slacks
was first used in the Philippines on 2 January 1982 by New York Garments Manufacturing &
Export Co., Inc. (New York Garments), a domestic corporation and Fredco’s predecessor-in-
interest.
c. On 24 January 1985, New York Garments filed for trademark registration of the mark "Harvard" for
goods under Class 25. The application matured into a registration and 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 later assigned to Romeo Chuateco, a member of the family that owned New
York Garments.
d. Fredco alleged that it was formed and registered with the SEC on 9 November 1995 and had
since then handled the manufacture, promotion and marketing of "Harvard" clothing articles.
Fredco alleged that at the time of issuance of Registration to Harvard University, New York
Garments had already registered the mark "Harvard" for goods under Class 25. Fredco alleged
that 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.
e. The mark "Harvard" used by Fredco is the same as the mark "Harvard" in the "Harvard Veritas
Shield Symbol" of Harvard University.
f. Harvard University was named Harvard College in 1639 and that then, as now, Harvard University
is located in Cambridge, Massachusetts, U.S.A.
g. Harvard University has been using the mark "Harvard" in commerce since 1872.
h. Harvard University has been using the marks "Harvard" and "Harvard Veritas Shield Symbol" for
Class 25 goods in the United States since 1953.
i. Harvard University has registered the name and mark "Harvard" in at least 50 countries.
j. On the other hand, Fredco’s predecessor-in-interest, New York Garments, started using the mark
"Harvard" in the Philippines only in 1982. New York Garments filed an application with the
Philippine Patent Office in 1985 to register the mark "Harvard," which application was approved in
1988. Fredco insists that the date of actual use in the Philippines should prevail on the issue of
who has the better right to register the marks.
ISSUE: Whether the petition for cancelation of registration shall fail
RULING: Yes, 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. This can easily be
gleaned from the following oblong logo of Fredco that it attaches to its clothing line:
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.
Indisputably, Fredco does not have any affiliation or connection with Harvard University, or
even with Cambridge, Massachusetts. Fredco or its predecessor New York Garments was not
established in 1936, or in the U.S.A. as indicated by Fredco in its oblong logo. Fredco offered no
explanation to the Court of Appeals or to the IPO why it used the mark "Harvard" on its oblong logo
with the words "Cambridge, Massachusetts," "Established in 1936," and "USA." Fredco now claims
before this Court that it used these words "to evoke a ‘lifestyle’ or suggest a ‘desirable aura’ of
petitioner’s clothing lines." Fredco’s belated justification merely confirms that it sought to connect or
associate its products with Harvard University, riding on the prestige and popularity of Harvard
University, and thus appropriating part of Harvard University’s goodwill without the latter’s consent.
Section 4(a) of R.A. No. 166 is identical to Section 2(a) of the Lanham Act,20 the trademark
law of the United States. These provisions are 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. This is a clear violation of Section 4(a) of R.A. No. 166. Under Section
17(c) of R.A. No. 166, such violation is a ground for cancellation of Fredco’s registration of the mark
"Harvard" because the registration was obtained in violation of Section 4 of R.A. No. 166.
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 became a
signatory to the Paris Convention on 27 September 1965. Articles 6bis and 8 of the Paris Convention
state:
ARTICLE 6bis
(i) The countries of the Union undertake either administratively if their legislation so permits, or at the
request of an interested party, to refuse or to cancel the registration and to prohibit the use of a
trademark which constitutes a reproduction, imitation or translation, liable to create confusion or a
mark considered by the competent authority of the country as being already the mark of a person
entitled to the benefits of the present Convention and used for identical or similar goods. These
provisions shall also apply when the essential part of the mark constitutes a reproduction of any such
well-known mark or an imitation liable to create confusion therewith.
ARTICLE 8
A trade name shall be protected in all the countries of the Union without the obligation of filing
or registration, whether or not it forms part of a trademark.
4. Ana Ang v Toribio
G.r. No. L-48226, December 14, 1942
FACTS:
1. Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later as sole proprietor,
has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture
and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade-
mark on September 29, 1915, and as trade-name on January 3, 1933. The growth of his business
is a thrilling epic of Filipino industry and business capacity.
 2. Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. In
the following year (1938) her gross sales amounted to P422,682.09.
3. 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."
4. Petitioner 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.
ISSUE:
1. Whether 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."
2. Whether pants and shirts are goods similar to shoes and slippers within the meaning of
sections 3 and 7 of Act No. 666.
RULING:
1. We find it necessary to go into the etymology and meaning of the Tagalog words "Ang Tibay" to
determine whether they are a descriptive term, i.e., whether they relate to the quality or
description of the merchandise to which respondent has applied them as a trade-mark. 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). For instance, instead of saying, "Anong ganda!" ("How
beautiful!"), we ordinarily say, "Ang ganda!" Tibay is a root word from which are derived the verb
magpatibay (to strenghten; the nouns pagkamatibay (strength, durability), katibayan (proof,
support, strength), katibay-tibayan (superior strength); and the adjectives matibay (strong,
durable, lasting), napakatibay (very strong), kasintibay or magkasintibay (as strong as, or of equal
strength). The phrase "Ang Tibay" is an exclamation denoting administration of strength or
durability. For instance, one who tries hard but fails to break an object exclaims, "Ang tibay!"
(How strong!") It may also be used in a sentence thus, "Ang tibay ng sapatos mo!" (How durable
your shoes are!") The phrase "ang tibay" is never used adjectively to define or describe an object.
One does not say, "ang tibay sapatos" or "sapatos ang tibay" is never used adjectively to define
or describe an object. One does not say, "ang tibay sapatos" or "sapatos ang tibay" to mean
"durable shoes," but "matibay na sapatos" or "sapatos na matibay."
From all of this we deduce that "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.
2. 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.
Such construction of the law is induced by cogent reasons of equity and fair dealing. The courts
have come to realize that there can be unfair competition or unfair trading even if the goods are
non-competing, 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. Then
noncompetitive products are sold under the same mark, the gradual whittling away or dispersion
of the identity and hold upon the public mind of the mark created by its first user, inevitably
results. The original owner is entitled to the preservation of the valuable link between him and the
public that has been created by his ingenuity and the merit of his wares or services.
5
Mighty Corporation vs. E & J Gallo Winery
G.R. No. 154342, July 14, 2004
FACTS:
 Gallo Winery is a foreign corporation not doing business in PH but organized and existing under
the laws of California, USA, where all its wineries are located; they produce different kinds of
wines and brandy products and sells them in many countries under different registered
trademarks, including the GALLO and ERNEST & JULIO GALLO wine trademarks
o GALLO wine trademark were registered in the IPO in 1971; renewed in 1991 for another
20 years
o ERNEST & JULIO GALLO wine trademark was also registered in 1990
 Andresons has been Gallo Winery’s exclusive wine importer and distributor in the PH, selling
these products in its own name and for its own account
 Mighty Corporation and La Campana and their sister company, Tobacco Industries, are
engaged in the cultivation, manufacture, distribution and sale of tobacco products for which they
have been using the GALLO cigarette trademark since 1973, initially by Tobacco Industries,
then by La Campana and finally by Mighty Corporation.
 Gallo Winery and Andresons sued petitioner companies Mighty Corporation, La Campana and
Tobacco Industries for trademark and trade name infringement and unfair competition:
o Claiming that petitioner companies adopted the GALLO trademark to ride on Gallo
Winery’s GALLO and ERNEST & JULIO GALLO trademarks’ established reputation and
popularity, thus causing confusion, deception and mistake on the part of the purchasing
public who had always associated GALLO and ERNEST & JULIO GALLO trademarks
with Gallo Winery’s wines.
 On the other hand, petitioner companies claim that:
o Their GALLO cigarettes and Gallo Winery’s wines were totally unrelated products
o Gallo Winery’s GALLO trademark registration certificate covered wines only, not
cigarettes
ISSUE: W/N there was trademark infringement.
RULING: NO. Wines and cigarettes are not identical, similar, competing or related goods.
There is no trademark infringement if the public does not expect the plaintiff to make or sell the same
class of goods as those made or sold by the defendant. Here, wines and cigarettes are non-
competing and are totally unrelated products not likely to cause confusion vis-à-vis the goods or the
business of the petitioners and respondents. Petitioner’s use of the GALLO cigarette trademark is not
likely to cause confusion or mistake, or to deceive the "ordinarily intelligent buyer" of either wines or
cigarettes or both as to the identity of the goods, their source and origin, or identity of the business of
petitioners and respondents. Obviously, wines and cigarettes are not identical or competing products.
Neither do they belong to the same class of goods. The mere fact that one person has adopted and
used a particular trademark for his goods does not prevent the adoption and use of the same
trademark by others on articles of a different description.
Not sold through the same channels of trade
Moreover, both products are not sold through the same channels of trade. GALLO cigarettes are
Philippine-made and petitioners neither claim nor pass off their goods as imported or emanating from
Gallo Winery. GALLO cigarettes are distributed, marketed and sold through ambulant and sidewalk
vendors, small local sari-sari stores and grocery stores in Philippine rural areas, mainly in Misamis
Oriental, Pangasinan, Bohol, and Cebu. On the other hand, GALLO wines are imported, distributed
and sold in the Philippines through Gallo Winery’s exclusive contracts with a domestic entity, which is
currently Andresons. By respondents’ own testimonial evidence, GALLO wines are sold in hotels,
expensive bars and restaurants, and high-end grocery stores and supermarkets, not through sari-sari
stores or ambulant vendors.
Application of dominancy and holistic test
Although petitioners and respondents use GALLO in the labels of their respective cigarette and wine
products, the use of an identical mark does not, by itself, lead to a legal conclusion that there is
trademark infringement. Applying the Dominancy and Holistic Tests, we find that the dominant feature
of the GALLO cigarette trademark is the device of a large rooster facing left, outlined in black against
a gold background. The rooster’s color is either green or red – green for GALLO menthols and red for
GALLO filters. Directly below the large rooster device is the word GALLO. The rooster device is given
prominence in the GALLO cigarette packs in terms of size and location on the labels. The GALLO
mark appears to be a fanciful and arbitrary mark for the cigarettes as it has no relation at all to the
product but was chosen merely as a trademark due to the fondness for fighting cocks of the son of
petitioners’ president. Furthermore, petitioners adopted GALLO, the Spanish word for rooster, as a
cigarette trademark to appeal to one of their target markets, the sabungeros (cockfight aficionados).
Also, as admitted by respondents themselves, on the side of the GALLO cigarette packs are the
words "MADE BY MIGHTY CORPORATION," thus clearly informing the public as to the identity of the
manufacturer of the cigarettes.
On the other hand, GALLO Winery’s wine and brandy labels are diverse. In many of them, the labels
are embellished with sketches of buildings and trees, vineyards or a bunch of grapes while in a few,
one or two small roosters facing right or facing each other (atop the EJG crest, surrounded by leaves
or ribbons), with additional designs in green, red and yellow colors, appear as minor features thereof.
Directly below or above these sketches is the entire printed name of the founder-owners, "ERNEST &
JULIO GALLO" or just their surname "GALLO," which appears in different fonts, sizes, styles and
labels, unlike petitioners’ uniform casque-font bold-lettered GALLO mark. Moreover, on the labels of
Gallo Winery’s wines are printed the words "VINTED AND BOTTLED BY ERNEST & JULIO GALLO,
MODESTO, CALIFORNIA."
The many different features like color schemes, art works and other markings of both products drown
out the similarity between them – the use of the word “GALLO” ― a family surname for the Gallo
Winery’s wines and a Spanish word for rooster for petitioners’ cigarettes.
No unfair competition
The universal test question is whether the public is likely to be deceived. Nothing less than conduct
tending to pass off one man’s goods or business as that of another constitutes unfair competition.
Actual or probable deception and confusion on the part of customers by reason of defendant’s
practices must always appear. On this score, we find that petitioners never attempted to pass off their
cigarettes as those of respondents. There is no evidence of bad faith or fraud imputable to petitioners
in using their GALLO cigarette mark.
All told, after applying all the tests provided by the governing laws as well as those recognized by
jurisprudence, we conclude that petitioners are not liable for trademark infringement, unfair
competition or damages.
The Trademark Law and the Paris Convention are the applicable laws, not the Intellectual
Property Code
We note that respondents sued petitioners on March 12, 1993 for trademark infringement and unfair
competition committed during the effectivity of the Paris Convention and the Trademark Law. The IP
Code cannot be retroactively applied here. The IP Code, repealing the Trademark Law, was
approved on June 6, 1997. Section 241 thereof expressly decreed that it was to take effect only on
January 1, 1998, without any provision for retroactive application. Thus, the Makati RTC and the CA
should have limited the consideration of the present case within the parameters of the Trademark
Law and the Paris Convention, the laws in force at the time of the filing of the complaint.
Trademark infringement vs. unfair competition
(1) Infringement of trademark is the unauthorized use of a trademark, whereas unfair competition is
the passing off of one's goods as those of another.
(2) In infringement of trademark fraudulent intent is unnecessary, whereas in unfair competition
fraudulent intent is essential.
(3) In infringement of trademark the prior registration of the trademark is a prerequisite to the action,
whereas in unfair competition registration is not necessary.
6
Mang Inasal vs. IFP Manufacturing Corporation
G.R. No. 221717, June 19, 2017
FACTS:
 IFP Manufacturing is a local manufacturer of snacks and beverages; in 2011, IFP filed with
IPO an application for registration of the mark “OK Hotdog Inasal Cheese Hotdog Flavor
Mark” (OK Hotdog Inasal mark) in connection with goods under Class 30 of the Nice
Classification.
 Mang Inasal is a domestic fast food company and the owner of the mark “Mang Inasal, Home
of Real Pinoy Style Barbeque and Device” (Mang Inasal mark) for services which was
 registered with IPO in 2006 and had been used by Mang Inasal for its chain of restaurants
since 2003.
 Mang Inasal opposed IFP’s application for registration, contending that the OK Hotdog Inasal
mark and the Mang Inasal mark share similarities both as to their appearance and as to the
goods or services that they represent which tend to suggest a false connection or association
between the said marks and, in that regard, would likely cause confusion on the part of the
public
o The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Both marks feature
the same dominant element – the word INASAL – printed and stylized in the exact
same manner:
 “INASAL” spelled using the same font style and red color;
 “INASAL” placed inside the same black outline and yellow background; and
 “INASAL” arranged in the same staggered format.
o The goods that the OK Hotdog Inasal mark is intended to identify (i.e., curl snack
products) are also closely related to the services represented by the Mang Inasal
mark (i.e., fast food restaurants). Both marks cover inasal or inasal-flavored food
products.
 IPO-BLA, Director General, and CA – dismissed the opposition
o The OK Hotdog Inasal mark is not similar to the Mang !nasal mark. In terms of
appearance, the only similarity between the two marks is the word "INASAL."
However, there are other words like "OK," "HOTDOG," and "CHEESE' and images
like that of curls and cheese that are found in the OK Hotdog Inasal mark but are not
present in the Mang Inasal mark.
o In addition, petitioner cannot prevent the application of the word "INASAL" in the OK
Hotdog Inasal mark. No person or entity can claim exclusive right to use the word
"INASAL" because it is merely a generic or descriptive word that means barbeque or
barbeque products.
o Neither can the underlying goods and services of the two marks be considered as
closely related. The products represented by the two marks are not competitive and
are sold in different channels of trade. The curl snack products of the OK Hotdog
Inasal mark are sold in sari-sari stores, grocery stores and other small distributor
outlets, whereas the food products associated with the Mang Inasal mark are sold in
petitioner's restaurants.
ISSUE: W/N the OK Hotdog Inasal mark is entitled to be registered.
RULING: NO. Section 123.l(d)(iii) of RA 8293 provides that a mark that is similar to a registered mark
or a mark with an earlier filing or priority date (earlier mark) and which is likely to cause confusion on
the part of the public cannot be registered with the IPO. To fall under this proscription, a prospective
mark must be shown to meet two minimum conditions:
1. The prospective mark must nearly resemble or be similar to an earlier mark; and
2. The prospective mark must pertain to goods or services that are either identical, similar
or related to the goods or services represented by the earlier mark.
The first condition of the proscription requires resemblance or similarity between a prospective mark
and an earlier mark. To be regarded as similar to an earlier mark, it is enough that a prospective mark
be a colorable imitation of the former. The second condition of the proscription requires that the
prospective mark pertain to goods or services that are either identical, similar or related to the goods
or services represented by the earlier mark.
Here, the OK Hotdog Inasal mark meets the two conditions of the proscription under Sec.
123.l(d)(iii) of RA 8293. First, it is similar to the Mang Inasal mark, an earlier mark. Second, it
pertains to goods that are related to the services represented by such earlier mark. Petitioner
was, therefore, correct; and the IPO-BLA, IPO-DG, and the CA's rulings must be reversed. The OK
Hotdog Inasal mark is not entitled to be registered as its use will likely deceive or cause
confusion on the part of the public and, thus, also likely to infringe the Mang Inasal mark. The
law, in instances such as this, must come to the succor of the owner of the earlier mark.
(1) The OK Hotdog Inasal mark is a colorable imitation of the Mang Inasal mark
First. The fact that the conflicting marks have exactly the same dominant element is key. It is
undisputed that the OK Hotdog Inasal mark copied and adopted as one of its dominant features the
"INASAL" element of the Mang Inasal mark. Given that the "INASAL" element is, at the same time,
the dominant and most distinctive feature of the Mang Inasal mark, the said element's incorporation in
the OK Hotdog Inasal mark, thus, has the potential to project the deceptive and false impression that
the latter mark is somehow linked or associated with the former mark. Second. The differences
between the two marks are trumped by the overall impression created by their similarity. The
mere fact that there are other elements in the OK Hotdog Inasal mark that are not present in the
Mang Inasal mark actually does little to change the probable public perception that both marks are
linked or associated. It is worth reiterating that the OK Hotdog Inasal mark actually brandishes a
literal copy of the most recognizable feature of the Mang Inasal mark. We doubt that an average
buyer catching a casual glimpse of the OK Hotdog Inasal mark would pay more attention to the
peripheral details of the said mark than it would to the mark's more prominent feature, especially
when the same invokes the distinctive feature of another more popular brand.
(2) The goods for which the registration of the OK Hotdog Inasal mark is sought are related to
the services being represented by the Mang Inasal mark
First. Petitioner uses the Mang Inasal mark in connection with its restaurant services that is
particularly known for its chicken inasal, i.e., grilled chicken doused in a special inasal
marinade. The inasal marinade is different from the typical barbeque marinade and it is what gives
the chicken inasal its unique taste and distinct orange color. Inasal refers to the manner of grilling
meat products using an inasal marinade. Second. The Mang Inasal mark has been used for
petitioner's restaurant business since 2003. The restaurant started in Iloilo but has since
expanded its business throughout the country. Currently, the Mang Inasal chain of restaurants has a
total of 464 branches scattered throughout the nation's three major islands. It is, thus, fair to say that
a sizeable portion of the population is knowledgeable of the Mang Inasal mark. Third. Respondent,
on the other hand, seeks to market under the OK Hotdog Inasal mark curl snack products
which it publicizes as having a cheese hotdog inasal flavor.
Accordingly, it is the fact that the underlying goods and services of both marks deal with inasal
and inasal-flavored products which ultimately fixes the relations between such goods and
services. Given the foregoing circumstances and the aforesaid similarity between the marks in
controversy, we are convinced that an average buyer who comes across the curls marketed under
the OK Hotdog Inasal mark is likely to be confused as to the true source of such curls. To our mind, it
is not unlikely that such buyer would be led into the assumption that the curls are of petitioner and
that the latter has ventured into snack manufacturing or, if not, that the petitioner has supplied the
flavorings for respondent's product. Either way, the reputation of petitioner would be taken advantage
of and placed at the mercy of respondent. All in all, we find that the goods for which the registration of
the OK Hotdog Inasal mark is sought are related to the services being represented by the Mang
Inasal mark.
OK Hotdog Inasal mark – IFP Manufacturing
Mang Inasal mark – Mang Inasal Corporation
7. McDonald’s Corp v. L.C Big Mak Inc
G.r. No. 143993, August 18, 2004
FACTS: Petition for Review
 Petitioner McDonald’s Corporation is a corporation organized under the laws of Delaware,
United States. 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.
 On 18 July 1985, the IPO (then PBPTT) allowed registration of the “Big Mac” mark in the
Principal Register based on its Home Registration in the United States.
 Respondent L.C. Big Mak Burger, Inc. is a domestic corporation which operates fastfood
outlets and snack vans in Metro Manila and nearby provinces. Its menu includes hamburger
sandwiches and other food items.
 On 21 October 1988, respondent corporation applied with the IPO for the registration of the
“Big Mak” mark for its 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.
 RTC - in favor of McDonalds
 CA - reversed the RTCs ruling
 Hence this petition.
ISSUES AND RULINGS: PETITION GRANTED
(a) On Whether the Questions Raised in the Petition are Proper for a Petition for Review.
YES (proper). A party intending to appeal from a judgment of the Court of Appeals may file with this
Court a petition for review under Section 1 of Rule 45 (“Section 1”) raising only questions of law.
Here, petitioners raise questions of fact and law in assailing the Court of Appeals’ findings on
respondent corporation’s non-liability for trademark infringement and unfair competition. Ordinarily,
the Court can deny due course to such a petition. In view, however, of the contradictory findings of
fact of the RTC and Court of Appeals, the Court opts to accept the petition, this being one of the
recognized exceptions to Section 1.
(b) On the Manner Respondents Used “Big Mak” in their Business
There is evidence that it was used. The evidence presented during the hearings on petitioners’
motion for the issuance of a writ of preliminary injunction shows that the plastic wrappings and plastic
bags used by respondents for their hamburger sandwiches bore the words “Big Mak.” Respondents’
plastic wrappers and bags were identical with those petitioners presented during the hearings for the
injunctive writ except that the letters “L.C.” and the words “Burger, Inc.” in respondents’ evidence
were added above and below the words “Big Mak,” respectively.
(c) On the Issue of Trademark Infringement
YES, there is Infringement. To establish trademark infringement, the following elements must be
shown: (1) the validity of plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the use of
the mark or its colorable imitation by the alleged infringer results in “likelihood of confusion.” Of these,
it is the element of likelihood of confusion that is the gravamen of trademark infringement. In the case
at bar, respondents used, without petitioners’ consent, acolorable imitation of the “Big Mac” mark in
advertising and selling respondents’ hamburger sandwiches. This likely caused confusion in the mind
of the purchasing public on the source of the hamburgers or the identity of the business.
(d) On the Validity of the “Big Mac” Mark and McDonald’s Ownership of such Mark
YES VALID!! 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 facie presumed. The “Big Mac” mark, which should be
treated in its entirety and not dissected word for word, is neither generic nor descriptive.
Generic Descriptive
commonly used as the name or description of a convey the characteristics, functions, qualities or
kind of goods, such as “Lite” for beer or ingredients of a product to one who has never
“Chocolate Fudge” for chocolate soda drink. seen it or does not know it exists, such as
 “Arthriticare” for arthritis medication.
“Big Mac” falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual
characteristics of the product it represents. As such, it is highly distinctive and thus valid. The Court
also finds that petitioners have duly established McDonald’s exclusive ownership of the “Big Mac”
mark. The Isaiyas Group, on the other hand, registered its trademark only in the Supplemental
Register. A mark which is not registered in the Principal Register, and thus not distinctive, has no real
protection.
(e) On Whether Confusion of Goods and Confusion of Business are Applicable
Confusion of Goods Confusion of Business
“in which event the ordinarily prudent purchaser “Here though the goods of the parties are
would be induced to purchase one product in the different, the defendant’s product is such as
belief that he was purchasing the other.” might reasonably be assumed to originate with
the plaintiff, and the public would then be
deceived either into that belief or into the belief
that there is some connection between the
plaintiff and defendant which, in fact, does not
exist.”
YES. Section 22 of RA 166 deleted the requirement in question and expanded its scope to include
such use of the mark or its colorable imitation that is likely to result in confusion on “the source or
origin of such goods or services, or identity of such business.” Thus, while there is confusion of goods
when the products are competing, confusion of business exists when the products are non-competing
but related enough to produce confusion of affiliation.
Thus, factors respondents cite cannot negate the undisputed fact that respondents use their “Big
Mak” mark on hamburgers, the same food product that petitioners’ sell with the use of their registered
mark “Big Mac.” Whether a hamburger is single, double or triple-decker, and whether wrapped in
plastic or styrofoam, it remains the same hamburger food product. Even respondents’ use of the “Big
Mak” mark on non-hamburger food products cannot excuse
their infringement of petitioners’ registered mark, otherwise registered marks will lose their protection
under the law. The registered trademark owner may use his mark on the same or similar products, in
different segments of the market, and at different price levels depending on variations of the products
for specific segments of the market. The Court has recognized that the registered trademark owner
enjoys protection in product and market areas that are the normal potential expansion of his
business.
"the protection to which the owner of a trademark is entitled is not limited to guarding his
goods or business from actual market competition with identical or similar products of the
parties, but extends to all cases in which the use by a junior appropriator of a trade-mark or
trade-name is likely to lead to a confusion of source, as where prospective purchasers would
be misled into thinking that the complaining party has extended his business into the field or
when it forestalls the normal potential expansion of his business"
(f) On Whether Respondents’ Use of the “Big Mak” Mark Results in Likelihood of Confusion
Tests in determining likelihood of Confusion
Dominancy Test Holistic Test
focuses on the similarity of the prevalent features Holistic Test - requires the court to consider the
of the competing trademarks that might cause entirety of the marks as applied to the products,
confusion. including the labels and packaging, in
determining confusing similarity.
YES, under the dominancy test rather than the holistic test. The dominancy test considers the
dominant features in the competing marks in determining whether they are confusingly similar. The
SC give greater weight to the similarity of the appearance of the product arising from the adoption of
the dominant features of the registered mark, disregarding minor differences.
Applying the dominancy test, the Court finds that respondents’ use of the “Big Mak” mark results in
likelihood of confusion. First, “Big Mak” sounds exactly the same as “Big Mac.” Second, the first word
in “Big Mak” is exactly the same as the first word in “Big Mac.” Third, the first two letters in “Mak” are
the same as the first two letters in “Mac.” Fourth, the last letter in “Mak” while a “k” sounds the same
as “c” when the word “Mak” is pronounced. Fifth, in Filipino, the letter “k” replaces “c” in spelling, thus
“Caloocan” is spelled “Kalookan.” Therefore, the two marks are the same, with the first word of both
marks phonetically the same, and the second word of both marks also phonetically the same.
(g) On the Lack of Proof of Actual Confusion
Petitioners’ failure to present proof of actual confusion does not negate their claim of trademark
infringement. As noted in American Wire & Cable Co. v. Director of Patents, Section 22 requires the
less stringent standard of “likelihood of confusion” only. While proof of actual confusion is the best
evidence of infringement, its absence is inconsequential.
(h) On the Issue of Unfair Competition
YES, there is Unfair Competition. The essential elements of an action for unfair competition are (1)
confusing similarity in the general appearance of the goods, and (2) intent to deceive the public and
defraud a competitor. Unfair competition is broader than trademark infringement and includes passing
off goods with or without trademark infringement. There can be trademark infringement without unfair
competition as when the infringer discloses on the labels containing the mark that he manufactures
the goods, thus preventing the public from being deceived that the goods originate from the
trademark owner.
The dissimilarities in the material and other devices are insignificant compared to the glaring similarity
in the words used in the wrappings. If respondents sold egg sandwiches only instead of hamburger
sandwiches, their use of the “Big Mak” mark would not give their goods the general appearance of
petitioners’ “Big Mac” hamburgers. In such case, there is only trademark infringement but no unfair
competition. However, since respondents chose to apply the “Big Mak” mark on hamburgers, just like
petitioner’s use of the “Big Mac” mark on hamburgers, respondents have obviously clothed their
goods with the general appearance of petitioners’ goods.

(i) The Remedies Available to Petitioners
A plaintiff who successfully maintains trademark infringement and unfair competition claims is entitled
to injunctive and monetary reliefs.
8. McDonald’s Corp. v. Macjoy Fastfood Corp.
G.r. No. 166115, February 2, 2007
TRADEMARK INFRINGEMENT
FACTS:
 On 14 March 1991, respondent MacJoy Fastfood Corporation, a domestic corporation
engaged in the sale of fast food products in Cebu City, filed with the Intellectual Property
Office (IPO) (then Bureau of Patents, Trademarks and Technology Transfer (BPTT)), an
application for the registration of the trademark “MACJOY & DEVICE” for fried chicken,
chicken barbeque, burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and
steaks under classes 29 and 30 of the International Classification of Goods.
 Petitioner McDonald’s Corporation, a corporation duly organized and existing under the laws
of the State of Delaware, USA, filed a verified Notice of Opposition against the respondent’s
application claiming that the trademark “MACJOY & DEVICE” so resembles its corporate
logo, otherwise known as the Golden Arches or “M” design, and its marks “McDonalds,”
McChicken,” “MacFries,” “BigMac,” “McDo,” “McSpaghetti,” “McSnack,” and “Mc,” such that
when used on identical or related goods, the trademark applied for would confuse or deceive
purchasers into believing that the goods originate from the same source or origin.
 Respondent denied the allegations averred that:
(a) it has used the mark “MACJOY” for the past many years in good faith and has
spent considerable sums of money for said mark’s extensive promotion in tri-media,
especially in Cebu City where it has been doing business long before the petitioner
opened its outlet thereat sometime in 1992;
(b) its use of said mark would not confuse affiliation with the petitioner’s restaurant
services and food products because of the differences in the design and detail of the
two (2) marks.
 IPO - in favor of McDonalds
 CA - reversed IPO's decision and ruled in favor of Macjoy Fastfood Corp.
 Hence this petition.
ISSUE: W/N CA erred in ruling that respondent's "Macjoy & Device" mark is not confusingly similar to
petitioner's "McDOnalds Marks."
RULING: YES. The CA erred. (PETITION GRANTED)
As to the procedural matter.
The filing of non-forum shopping was proper. It was held that authority given to Lehr (authorized by
Board of Directors of McDo) necessarily includes the authority to execute and sign the mandatorily
required certification of non-forum shopping to support the instant petition for review which stemmed
from the “opposition proceedings” lodged by the petitioner before the IPO. Considering that the
person who executed and signed the certification against forum shopping has the authority to do so,
the petition, therefore, is not procedurally defective.
The filing of this petition was PROPER. It was held that the issues raised in this case is one of the
recognized exceptions to Section 1, Rule 45 of the Rules of Court. True, this Court is not the proper
venue to consider factual issues as it is not a trier of facts. Nevertheless, when the factual findings of
the appellate court are mistaken, absurd, speculative, conjectural, conflicting, tainted with grave
abuse of discretion, or contrary to the findings culled by the court of origin, as here, this Court will
review them.
Trademark - any distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof adopted and used by a manufacturer or merchant on his goods to identify and distinguish
them from those manufactured, sold, or dealt in by others.
Under the same law, the registration of a trademark is required to distinguish his goods, business or
services of others.
As to the issue of whether there is a confusing similarity between the MCDONALD’S marks of
the petitioner and the respondent’s “MACJOY & DEVICE” trademark
YES. The SC held that while they agree with the CA’s detailed enumeration of differences between
the two (2) competing trademarks herein involved, we believe that the holistic test is not the one
applicable in this case, the dominancy test being the one more suitable. Thus, applying the
dominancy test to the instant case, the Court finds that herein petitioner’s “MCDONALD’S” and
respondent’s “MACJOY” marks are confusingly similar with each other such that an ordinary
purchaser can conclude an association or relation between the marks. To begin with, both marks use
the corporate “M” design logo and the prefixes “Mc” and/or “Mac” as dominant features. The first letter
“M” in both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar way in which they
are depicted i.e., in an arch-like, capitalized and stylized manner.
Besides and most importantly, both trademarks are used in the sale of fastfood products.
Indisputably, the respondent’s trademark application for the “MACJOY & DEVICE” trademark covers
goods under Classes 29 and 30 of the International Classification of Goods, namely, fried chicken,
chicken barbeque, burgers, fries, spaghetti, etc. Likewise, the petitioner’s trademark registration for
the MCDONALD’S marks in the Philippines covers goods which are similar if not identical to those
covered by the respondent’s application.
As to who has the rightful claim of ownership over the said marks.
MCDONALDS! The SC held that a mark is valid if it is distinctive and hence not barred from
registration under the Trademark Law. However, once registered, not only the mark’s validity but also
the registrant’s ownership thereof is prima facie presumed.

McDonalds was able to register its MCDONALD’S marks successively, i.e., “McDonald’s” in 04
October, 1971. While respondent's application for registration of its trademark “MACJOY & DEVICE”
was filed only on March 14, 1991 albeit the date of first use in the Philippines was December 7, 1987.
Hence, from the evidence on record, it is clear that the petitioner has duly established its ownership of
the mark/s.
Once a trademark has been registered, the validity of the mark is prima facie presumed. In this case,
the respondent failed to overcome such presumption. By reason of the respondent’s implausible and
insufficient explanation as to how and why out of the many choices of words it could have used for its
trade name and/or trademark, it chose the word “MACJOY,” the only logical conclusion deducible
therefrom is that the respondent would want to ride high on the established reputation and goodwill of
the MCDONALD’s marks, which, as applied to petitioner’s restaurant business and food products, is
undoubtedly beyond question.
9. Skechers USA v Inter Pacific Industrial Trading Corp
G.r. 164321, March 23, 2011
FACTS:
 Skechers USA engaged the services of a private investigation firm to check if respondents are
indeed engaged in the importation, distribution and sale of unauthorized products bearing
counterfeit or unauthorized trademarks owned by petitioner.
 An investigator went to respondents’ warehouse and saw different kinds and models of rubber
shoes including shoes bearing the “S” logo. He found that the shoes bearing the “Strong” name
with the “S” logo have the same style as petitioner’s shoes.
 Petitioner filed a complaint with the National Bureau of Investigation (NBI) requesting assistance
in stopping the illegal importation, manufacture and sale of counterfeit products bearing the
trademarks it owns and in prosecuting the owners of the establishments engaged therein. NBI
representatives bought 24 pairs of rubber shoes bearing the “Strong” name and the “S” logo.
They then applied for search warrants with the court, which eventually issued the same.
 After seizure of their goods, respondents sought to quash the search warrants on the ground that
there is no confusing similarity between the petitioner’s Skechers’ rubber shoes and respondent’s
Strong rubber shoes. The court eventually issued an order quashing the search warrants.
 Petitioner’s Claim: Petitioner filed with Regional Trial Court (RTC) an application for the issuance
of search warrants against an outlet and warehouse operated by respondents for infringement of
trademark. In the course of its business, petitioner has registered the trademark “SKECHERS”
and the trademark “S” (within an oval design) with the Intellectual Property Office (IPO).
 Respondent’s Claim: Respondents moved to quash the search warrants, arguing that there was
no confusing similarity between petitioner’s “Skechers” rubber shoes and its “Strong” rubber
shoes.
ISSUE: W/N the private respondent is guilty of trademark infringement.
RULING: Yes. The Dominancy Test focuses on the similarity of the prevalent or dominant features of
the competing trademarks that might cause confusion, mistake, and deception in the mind of the
purchasing public. Duplication or imitation is not necessary; neither is it required that the mark sought
to be registered suggests an effort to imitate. Given more consideration are the aural and visual
impressions created by the marks on the buyers of goods, giving little weight to factors like prices,
quality, sales outlets, and market segments.
Applying the Dominancy Test to the case at bar, this Court finds that the use of the stylized “S” by
respondent in its Strong rubber shoes infringes on the mark already registered by petitioner with the
IPO. While it is undisputed that petitioner’s stylized “S” is within an oval design, to this Court’s mind,
the dominant feature of the trademark is the stylized “S,” as it is precisely the stylized “S” which
catches the eye of the purchaser. Thus, even if respondent did not use an oval design, the mere fact
that it used the same stylized “S”, the same being the dominant feature of petitioner’s trademark,
already constitutes infringement under the Dominancy Test.
Respondent did not simply use the letter “S,” but it appears to this Court that based on the font and
the size of the lettering, the stylized “S” utilized by respondent is the very same stylized “S” used by
petitioner; a stylized “S” which is unique and distinguishes petitioner’s trademark. Indubitably, the
likelihood of confusion is present as purchasers will associate the respondent’s use of the stylized “S”
as having been authorized by petitioner or that respondent’s product is connected with petitioner’s
business.
While there may be dissimilarities between the appearances of the shoes, to this Court’s mind such
dissimilarities do not outweigh the stark and blatant similarities in their general features. As can be
readily observed by simply comparing petitioner’s Energy model and respondent’s Strong rubber
shoes, respondent also used the color scheme of blue, white and gray utilized by petitioner. Even the
design and “wavelike” pattern of the midsole and outer sole of respondent’s shoes are very similar to
petitioner’s shoes, if not exact patterns thereof. At the side of the midsole near the heel of both shoes
are two elongated designs in practically the same location. Even the outer soles of both shoes have
the same number of ridges, five at the back and six in front. On the side of respondent’s shoes, near
the upper part, appears the stylized “S,” placed in the exact location as that of the stylized “S” on
petitioner’s shoes. On top of the “tongue” of both shoes appears the stylized “S” in practically the
same location and size. Moreover, at the back of petitioner’s shoes, near the heel counter, appears
“Skechers Sport Trail” written in white lettering. However, on respondent’s shoes appears “Strong
Sport Trail” noticeably written in the same white lettering, font size, direction and orientation as that of
petitioner’s shoes. On top of the heel collar of petitioner’s shoes are two grayish-white semi-
transparent circles. Not surprisingly, respondent’s shoes also have two grayish-white semi-
transparent circles in the exact same location.
The dissimilarities between the shoes are too trifling and frivolous that it is indubitable that
respondent’s products will cause confusion and mistake in the eyes of the public. Respondent’s
shoes may not be an exact replica of petitioner’s shoes, but the features and overall design are so
similar and alike that confusion is highly likely.
10. Asia Brewery, Inc. CA and San Miguel Corp
G.R. No. 103543, July 5, 1993
FACTS:
 Respondent San Miguel Corporation filed a complaint against petitioner Asia Brewery for
trademark infringement and unfair competition on account of the latter’s BEER PALE PILSEN or
BEER NA BEER product which has been competing with petitioner’s SAN MIGUEL PALE
PILSEN for a share of the local beer market.
 The trial court dismissed the complaint. On appeal, CA found petitioner guilty of trademark
infringement.
ISSUES:
(1) Whether or not the words ‘pale pilsen’ may be exclusively appropriated and used by SMC;
(2) Whether or not there is confusing similarity between the two trademarks.
RULING:
(1) NO. 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,” hence, non-registrable 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. No
one may appropriate generic or descriptive words. They belong to the public domain.
(2) NO. Infringement is determined by the "test of dominancy" rather than by differences or variations
in the details of one trademark and of another. It has been consistently held that the question of
infringement of a trademark is to be determined by the test of dominancy. Similarity in size, form and
color, while relevant, is not conclusive. If the competing trademark contains the main or essential or
dominant features of another, and confusion and deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; not it is necessary that the infringing label should
suggest an effort to imitate.
There is hardly any dispute that the dominant feature of SMC’s trademark is the name of the product:
SAN MIGUEL PALE PILSEN, written in white Gothic letters with elaborate serifs at the beginning and
end of the letters “S” and “M” on an amber background across the upper portion of the rectangular
design. On the other hand, the dominant feature of ABI’s trademark is the name: BEER PALE
PILSEN, with the word “Beer” written in large amber letters, larger than any of the letters found in the
SMC label.
The trial court perceptively observed that the word “BEER” does not appear in SMC’s trademark, just
as the words “SAN MIGUEL” do not appear in ABI’s trademark. Hence, there is absolutely no
similarity in the dominant features of both trademarks. Neither in sound, spelling or appearance can
BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who
purchases BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No
evidence whatsoever was presented by SMC proving otherwise. There is no confusing similarity
between the competing beers for the name of one is “SAN MIGUEL” while the competitor is plain
“BEER” and the points of dissimilarity between the two outnumber their points of similarity.
11.
Prosource International, Inc. v. Horphag Research Management SA
(605 SCRA 523, 2009)
FACTS:
 Respondent Horphag is a corporation duly organized and existing under the laws of
Switzerland and the owner of trademark PYCNOGENOL, a food supplement sold and
distributed by Zuellig Pharma Corporation.
 Petitioner Prosource International, Inc. was also distributing a similar food supplement using
the mark PCO-GENOLS since 1996.
 Respondent demand that petitioner cease and desist from using the aforesaid mark.
 Petitioner discontinued the use of, and withdrew from the market, the products under the
name PCO-GENOLS as of June 19, 2000. It, likewise, changed its mark from PCO-GENOLS
to PCO-PLUS.
 Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary
Injunction damages against petitioner.
 Petitioner claimed that the two marks were not confusingly similar.. RTC and CA ruled in
favour of horphag.
ISSUE: WON CA erred in ruling that PYCOGENOL and PCO-GENOLS are confusingly similar;
hence, petitioner is guilty of infringement.
RULING: No. The Court identified the elements of infringement under the Intellectual Property Code:
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 tradename is reproduced, counterfeited, copied or colorably imitated by
the infringer;
3. The infringing mark or tradename is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or tradename 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.
(as cited in Intellectual Property Law, 2012 Edition by Denis B. Funa).
In the foregoing enumeration, it is the element of "likelihood of confusion" that is the gravamen
of trademark infringement. But "likelihood of confusion" is a relative concept.
In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the
Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity
of the prevalent features of the competing trademarks that might cause confusion and deception, thus
constituting infringement. The question is whether the use of the marks involved is likely to cause
confusion or mistake in the mind of the public or to deceive purchasers.  In contrast, the Holistic
Test entails a consideration of the entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity.
The Dominancy Test was applied in determining whether there was a confusing similarity between
the marks PYCNOGENOL and PCO-GENOL. Both the word[s] PYCNOGENOL and PCO-GENOLS
have the same suffix "GENOL" when the two words are pronounced, the sound effects are
confusingly similar not to mention that they are both described by their manufacturers as a
food supplement and thus, identified as such by their public consumers. And although there
were dissimilarities in the trademark due to the type of letters used as well as the size, color and
design employed on their individual packages/bottles, still the close relationship of the competing
products' name in sounds as they were pronounced, clearly indicates that purchasers could be misled
into believing that they are the same and/or originates from a common source and manufacturer.
12
FRUIT OF THE LOOM V. CA 133 SCRA 405
FACTS:
 Petitioner is a corporation duly organized and existing under the laws of the State of Rhode
Island, USA. It is the registrant of the trademark FRUIT OF THE LOOM in the Philippine
Patent Office and was issued two Certificates of Registration, one of which was in 1957 and
the other in 1958.
 Private Respondent, general garments corporation, a domestic corporation, is the registrant
of the trademark FRUIT FOR EVE in the Philippine Patent Office.
 Both are involved in the merchandise of garments.
 Petitioner filed a complaint for infringement of trademark and unfair competition against
private respondent, alleging that:
 a. The latter’s trademark is confusingly similar to the former’s, both trademarks being used in
women’s panties and other textile products;
b. That the hang tags used by private respondent are a colourable imitation of those of the
petitioner.
ISSUE: Whether or not private respondents trademark FRUIT FOR EVE and its hang tag are
confusingly similar to petitioner's trademark FRUIT OF THE LOOM and its hang tag.
RULING: No. In cases involving infringement of trademark brought before this Court, it has been
consistently held that there is infringement of trademark when the use of the mark involved would be
likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin
or source of the commodity. According to the petitioner, the dominant features of both trademarks is
the word FRUIT. However, In determining whether the trademarks are confusingly similar, a
comparison of the words is not the only determinant factor. The trademarks in their entirety as they
appear in their respective labels or hang tags must also be considered in relation to the goods to
which they are attached.
In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is FRUIT. WE
agree with the respondent court that by mere pronouncing the two marks, it could hardly be said that
it will provoke confusion, as to mistake one for the other. Standing by itself, FRUIT OF THE LOOM is
wholly different from FRUIT FOR EVE. WE do not agree with petitioner that the dominant feature of
both trademarks is the word FRUIT for even in the printing of the trademark in both hang tags, the
word FRUIT is not at all made dominant over the other words. As to the design and coloring scheme
of the hang tags, We believe that while there are similarities in the two marks like the red apple at the
center of each mark, We also find differences or dissimilarities which are glaring and striking to the
eye such, The shape of petitioner's hang tag is round with a base that looks like a paper rolled a few
inches in both ends; while that of private respondent is plain rectangle without any base.
13
BERRIS AGRICULTURAL CO vs. NORVY ABYADANG
FACTS:
 Respondendt Abyadang filed a trademark application with the IPO for the mark "NS D-10
PLUS" for use in connection with Fungicide.
 Petitioner Berris Agricultural Co., Inc. filed an opposition against the trademark citing that it is
confusingly similar with their trademark, "D-10 80 WP" which is also used for Fungicide also
with the same active ingredient.
 The IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of
Abyadang.
ISSUE: Whether there is confusing similarity between "NS D-10 PLUS" and D-10 80 WP".
RULING: Yes. Comparing Berris’ mark "D-10 80 WP" with Abyadang’s mark "NS D-10 PLUS," as
appearing on their respective packages, one cannot but notice that both have a common component
which is "D-10." On Berris’ package, the "D-10" is written with a bigger font than the "80 WP."
Admittedly, the "D-10" is the dominant feature of the mark. The "D-10," being at the beginning of the
mark, is what is most remembered of it. Although, it appears in Berris’ certificate of registration in the
same font size as the "80 WP," its dominancy in the "D-10 80 WP" mark stands since the difference in
the form does not alter its distinctive character.
Applying the Dominancy Test, it cannot be gainsaid that Abyadang’s "NS D-10 PLUS" is similar to
Berris’ "D-10 80 WP," that confusion or mistake is more likely to occur. Undeniably, both marks
pertain to the same type of goods – fungicide with 80% Mancozeb as an active ingredient and used
for the same group of fruits, crops, vegetables, and ornamental plants, using the same dosage and
manner of application. They also belong to the same classification of goods under R.A. No. 8293.
Both depictions of "D-10," as found in both marks, are similar in size, such that this portion is what
catches the eye of the purchaser. Undeniably, the likelihood of confusion is present.
This likelihood of confusion and mistake is made more manifest when the Holistic Test is applied,
taking into consideration the packaging, for both use the same type of material (foil type) and have
identical color schemes (red, green, and white); and the marks are both predominantly red in color,
with the same phrase "BROAD SPECTRUM FUNGICIDE" written underneath. Considering these
striking similarities, predominantly the "D-10," the buyers of both products, mainly farmers, may be
misled into thinking that "NS D-10 PLUS" could be an upgraded formulation of the "D-10 80 WP."
On one hand, the dominancy test focuses on "the similarity of the prevalent or dominant features of
the competing trademarks that might cause confusion, mistake, and deception in the mind of the
purchasing public. Duplication or imitation is not necessary; neither is it required that the mark sought
to be registered suggests an effort to imitate. Given more consideration are the aural and visual
impressions created by the marks on the buyers of goods, giving little weight to factors like prices,
quality, sales outlets, and market segments. Applying the dominancy test, the Supreme Court upheld
the CA in ruling that there is uncanny resemblance or confusing similarity between the trademarks
applied for by respondent with that of petitioner's registered trademark. An examination of the
trademarks shows that their dominant or prevalent feature is the five-letter "PHILI", "PHILIPS" for
petitioner, and "PHILITES" for respondent. The marks are confusingly similar with each other such
that an ordinary purchaser can conclude an association or relation between the marks.

14. Wilton Dy v Koninklijke Philips Electronics
G.R. No. 186088, March 22, 2017
FACTS:
 March 2006, Koninklijke Philips Electronics, N .V. ("PHILIPS") opposed the trademark application
of petitioner PHILITES on the ground that PHILITES' registration will mislead the public over an
identical or confusingly similar mark of PHILIPS, which is registered and internationally well-
known mark specifically invoking the provisions of Section 123 of the Intellectual Property Law
 Petitioner filed its answer denying the allegations made by the respondent. IPP-BLA denied the
opposition of the respondent which, later on was upheld by IPP-DG.
 The CA reversed the decision finding the trademark applied by the petitioner is confusingly similar
with that of respondent’s registered trademark and packaging.
 The CA also belied asseveration that the mark 'PHILITES' is a coined or arbitrary mark from the
words 'Philippines' and 'lights stating that of all the marks that petitioner could possibly think of for
his light bulbs, it is odd that the latter chose a mark with the letters 'PHILI,' which are the same
prevalent or dominant five letters found in respondent's trademark 'PHILIPS' for the same
products, light bulbs.
On the other hand, the holistic or totality test necessitates a "consideration of the entirety of the marks
as applied to the products, including the labels and packaging, in determining confusing similarity.
The discerning eye of the observer must focus not only on the predominant words, but also on the
other features appearing on both labels so that the observer may draw conclusion on whether one is
confusingly similar to the other." Applying the test in the case, SC agrees with the appellate court that
a comparison between petitioner's registered trademark "PHILIPS'' as used in the wrapper or
packaging of its light bulbs and that of respondent's applied for trademark "PHILITES" as depicted in
the container or actual wrapper/packaging of the latter's light bulbs will readily show that there is a
strong similitude and likeness between the two trademarks that will likely cause deception or
confusion to the purchasing public. The fact that the parties' wrapper or packaging reflects negligible
differences considering the use of a slightly different font and hue of the yellow is of no moment
because taken in their entirety, respondent's trademark "PHILITES" will likely cause confusion or
deception to the ordinary purchaser with a modicum of intelligence.

ISSUE: W/N the trademark applied for by petitioner is identical or confusingly similar with that of
respondent?

RULING: YES. A trademark is "any distinctive word, name, symbol, emblem, sign, or device, or any
combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by others." It is "intellectual property
deserving protection by law," and "susceptible to registration if it is crafted fancifully or arbitrarily and
is capable of identifying and distinguishing the goods of one manufacturer or seller from those of
another.

In determining similarity and likelihood of confusion, jurisprudence has developed two tests:
the dominancy test, and the holistic or totality test.