Ang v. Teodoro (G.R. No. L-48226)

Facts:

Respondent Teodoro has long been using ‘Ang Tibay’ both as trademark and
tradename in the manufacture and sale of its slippers, shoes and indoor baseballs when
he formally registered it. Meanwhile, petitioner Ang registered the same trademark ‘Ang
Tibay’ for its products of pants and shirts. Respondent moved to cancel the registration
of petitioner’s mark. The trial court found for petitioner Ang. CA reversed the judgment.
Petitioner argues the validity of the mark being descriptive; that it had not acquired
secondary meaning in favor of respondent; and that there can be no infringement/unfair
competition because the goods are not similar.

Issues:

(1) Whether or not ‘ANG TIBAY’ is a descriptive term not registrable.

(2) Whether or not the trademark ‘ANG TIBAY’ has acquired a secondary meaning.

(3) Whether or not there is trademark infringement and/or unfair competition between
unrelated goods.

Ruling:                              

(1) NO. 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!”) 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 trademark or tradename. 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 trademark.
VENANCIO SAMBAR, doing business under the name and style of CVS Garment Enterprises vs. LEVI
STRAUSS & CO., LEVI STRAUSS (PHIL.), INC.

FACTS:

Private respondents alleged in their complaint that Levi Strauss and Co. (LS&Co.), an internationally
known clothing manufacturer, own the arcuate design trademark which was registered under US
Trademark Registration No. 404,248 on November 16, 1943. That sometime in 1987, CVSGIC and
Venancio Sambar, without the consent and authority of private respondents and in infringement and
unfair competition, sold and advertised, and despite demands to cease and desist, continued to
manufacture, sell and advertise denim, pants under the brand name “Europress” with back pockets
bearing a design similar to the arcuate trademark of private respondents, thereby causing confusion on
the buying public, prejudiced to private respondent’s goodwill and property right.

Sambar filed a separate answer. He admitted that copyright Registration No. 1-1998 was issued to him,
but he denied using it. He said he did not authorize anyone to use the copyrighted design.

Trial court issued a writ of preliminary injunction enjoining CVSGIC and petitioner from manufacturing,
advertising and selling pants with the arcuate design on their back pockets.

Private respondents moved for reconsideration praying for the cancellation of petitioner’s copyright
registration.

Trial court granted the prayer.

Petitioner appealed to the Court of Appeals which affirmed the ruling of the trial court.

ISSUE:

Whether petitioner infringe on private respondent’s arcuate design.

HELD:

To be entitled to a copyright, the thing being copyrighted must be original, created by the author
through his own skill, labor and judgment, without directly copying or evasively imitating the work of
another.

Both the trail court and the Court of Appeals found there was infringement.

 
MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. petitioners, vs. E. & J. GALLO
WINERY and THE ANDRESONS GROUP, INC. respondents. G.R. No. 154342. July 14, 2004

DOCTRINE: In resolving whether goods are related, several factors come into play: (a) the business (and
its location) to which the goods belong (b) the class of product to which the goods belong (c) the
product’s quality, quantity, or size, including the nature of the package, wrapper or container   (d) the
nature and cost of the articles (e) the descriptive properties, physical attributes or essential
characteristics with reference to their form, composition, texture or quality (f) the purpose of the
goods (g) whether the article is bought for immediate consumption, that is, day-to-day household
items (h) the fields of manufacture (i) the conditions under which the article is usually purchased
and (j) the channels of trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

FACTS: Respondent Gallo Winery is a foreign corporation not doing business in the Philippines but
organized and existing under the laws of the State of California, United States of America (U.S.), where
all its wineries are located. Gallo Winery produces 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.Respondent domestic corporation, Andresons, has been Gallo Winerys
exclusive wine importer and distributor in the Philippines since 1991, selling these products in its own
name and for its own account.Gallo Winerys GALLO wine trademark was registered in the principal
register of the Philippine Patent Office (now Intellectual Property Office) on November 16, 1971 under
Certificate of Registration No. 17021 which was renewed on November 16, 1991 for another 20 years.
Gallo Winery also applied for registration of its ERNEST & JULIO GALLO wine trademark on October 11,
1990 under Application Serial No. 901011-00073599-PN but the records do not disclose if it was ever
approved by the Director of Patents.

On the other hand, petitioners Mighty Corporation and La Campana and their sister company, Tobacco
Industries of the Philippines (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. The Bureau of Internal Revenue (BIR) approved Tobacco Industries use of GALLO 100s
cigarette mark on September 14, 1973 and GALLO filter cigarette mark on March 26, 1976, both for the
manufacture and sale of its cigarette products. In 1976, Tobacco Industries filed its manufacturers sworn
statement as basis for BIRs collection of specific tax on GALLO cigarettes. On February 5, 1974, Tobacco
Industries applied for, but eventually did not pursue, the registration of the GALLO cigarette trademark
in the principal register of the then Philippine Patent Office.

In May 1984, Tobacco Industries assigned the GALLO cigarette trademark to La Campana which, on July
16, 1985, applied for trademark registration in the Philippine Patent Office.  On July 17, 1985, the
National Library issued Certificate of Copyright Registration No. 5834 for La Campanas lifetime copyright
claim over GALLO cigarette labels.Subsequently, La Campana authorized Mighty  Corporation to
manufacture and sell cigarettes bearing the GALLO trademark. BIR approved Mighty Corporations use of
GALLO 100s cigarette brand, under licensing agreement with Tobacco Industries, on May 18, 1988, and
GALLO SPECIAL MENTHOL 100s cigarette brand on April 3, 1989. Petitioners claim that GALLO cigarettes
have been sold in the Philippines since 1973, initially by Tobacco Industries, then by La Campana and
finally by Mighty Corporation.
On the other hand, although the GALLO wine trademark was registered in the Philippines in 1971,
respondents claim that they first introduced and sold the GALLO and ERNEST & JULIO GALLO wines in
the Philippines circa 1974 within the then U.S. military facilities only. By 1979, they had expanded their
Philippine market through authorized distributors and independent outlets. Respondents claim that
they first learned about the existence of GALLO cigarettes in the latter part of 1992 when an Andresons
employee saw such cigarettes on display with GALLO wines in a Davao supermarket wine cellar section.
Forthwith, respondents sent a demand letter to petitioners asking them to stop using the GALLO
trademark, to no avail.

THE LEGAL DISPUTE

On March 12, 1993, respondents sued petitioners in the Makati RTC for trademark and tradename
infringement and unfair competition, with a prayer for damages and preliminary injunction.

Respondents charged petitioners with violating Article 6 bis of the Paris Convention for the Protection of
Industrial Property (Paris Convention) and RA 166 (Trademark Law), specifically, Sections 22 and 23 (for
trademark infringement), 29 and 30 (for unfair competition and false designation of origin) and 37 (for
tradename infringement). They claimed that petitioners adopted the GALLO trademark to ride on Gallo
Winerys 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 Winerys wines. 

In their answer, petitioners alleged, among other affirmative defenses, that: petitioners GALLO
cigarettes and Gallo Winerys wines were totally unrelated products; Gallo Winerys GALLO trademark
registration certificate covered wines only, not cigarettes; GALLO cigarettes and GALLO wines were sold
through different channels of trade; GALLO cigarettes, sold at P4.60 for GALLO filters and P3 for GALLO
menthols, were low-cost items compared to Gallo Winerys high-priced luxury wines which cost between
P98 to P242.50; the target market of Gallo Winerys wines was the middle or high-income bracket with at
least P10,000 monthly income while GALLO cigarette buyers were farmers, fishermen, laborers and
other low-income workers; the dominant feature of the GALLO cigarette mark was the rooster device
with the manufacturers name clearly indicated as MIGHTY CORPORATION while, in the case of Gallo
Winerys wines, it was the full names of the founders-owners ERNEST & JULIO GALLO or just their
surname GALLO; by their inaction and conduct, respondents were guilty of laches and estoppel; and
petitioners acted with honesty, justice and good faith in the exercise of their right to manufacture and
sell GALLO cigarettes.

IN AN ORDER DATED APRIL 21, 1993, THE MAKATI RTC denied, for lack of merit, respondents prayer for
the issuance of a writ of preliminary injunction, holding that respondents GALLO trademark registration
certificate covered wines only, that respondents wines and petitioners cigarettes were not related goods
and respondents failed to prove material damage or great irreparable injury as required by Section 5,
Rule 58 of the Rules of Court.

ON FEBRUARY 20, 1995, THE CA likewise dismissed respondents petition for review on certiorari,
docketed as CA-G.R. No. 32626, thereby affirming the Makati RTCs denial of the application for issuance
of a writ of preliminary injunction against petitioners.
After trial on the merits, however, the Makati RTC, on November 26, 1998, held petitioners liable for,
and permanently enjoined them from, committing trademark infringement and unfair competition with
respect to the GALLO trademark

ISSUE: WON the CA did not follow prevailing laws and jurisprudence when it held that: [a] RA 8293
(Intellectual Property Code of the Philippines [IP Code])  was applicable in this case; [b] GALLO cigarettes
and GALLO wines were identical, similar or related goods for the reason alone that they were
purportedly forms of vice; [c] both goods passed through the same channels of trade and [d] petitioners
were liable for trademark infringement, unfair competition and damages.

HELD: NO.

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, 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.

THE ACTUAL COMMERCIAL USE IN THE PHILIPPINES OF GALLO CIGARETTE TRADEMARK PRECEDED
THAT OF GALLO WINE TRADEMARK.

By respondents own judicial admission, the GALLO wine trademark was registered in the Philippines in
November 1971 but the wine itself was first marketed and sold in the country only in 1974 and only
within the former U.S. military facilities, and outside thereof, only in 1979. On the other hand, by
testimonial evidence supported by the BIR authorization letters, forms and manufacturers sworn
statement, it appears that petitioners and its predecessor-in-interest, Tobacco Industries, have indeed
been using and selling GALLO cigarettes in the Philippines since 1973 or before July 9, 1981.

RESPONDENTS GALLO TRADEMARK REGISTRATION IS LIMITED TO WINES ONLY

We also note that the GALLO trademark registration certificates in the Philippines and in other countries
expressly state that they cover wines only, without any evidence or indication that registrant Gallo
Winery expanded or intended to expand its business to cigarettes.

Thus, by strict application of Section 20 of the Trademark Law, Gallo Winerys exclusive right to use the
GALLO trademark should be limited to wines, the only product indicated in its registration certificates.

NO LIKELIHOOD OF CONFUSION, MISTAKE OR DECEIT AS TO THE IDENTITY OR SOURCE OF

PETITIONERS AND RESPONDENTS GOODS OR BUSINESS

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
roosters 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 Winerys 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 Winerys 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 Winerys
wines and a Spanish word for rooster for petitioners cigarettes.

WINES AND CIGARETTES ARE NOT IDENTICAL, SIMILAR, COMPETING OR RELATED GOODS

Confusion of goods is evident where the litigants are actually in competition; but confusion of business
may arise between non-competing interests as well.

Thus, apart from the strict application of Section 20 of the Trademark Law and Article 6 bis of the Paris
Convention which proscribe trademark infringement not only of goods specified in the certificate of
registration but also of identical or similar goods, we have also uniformly recognized and applied the
modern concept of related goods. Simply stated, when goods are so related that the public may be, or is
actually, deceived and misled that they come from the same maker or manufacturer, trademark
infringement occurs.

Non-competing goods may be those which, though they are not in actual competition, are so related to
each other that it can reasonably be assumed that they originate from one manufacturer, in which case,
confusion of business can arise out of the use of similar marks. They may also be those which, being
entirely unrelated, cannot be assumed to have a common source; hence, there is no confusion of
business, even though similar marks are used. Thus, 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.

In resolving whether goods are related, several factors come into play:

(a) the business (and its location) to which the goods belong (b) the class of product to which the goods
belong (c) the product’s quality, quantity, or size, including the nature of the package, wrapper or
container  (d) the nature and cost of the articles (e) the descriptive properties, physical attributes or
essential characteristics with reference to their form, composition, texture or quality (f) the purpose of
the goods (g) whether the article is bought for immediate consumption, that is, day-to-day household
items (h) the fields of manufacture (i) the conditions under which the article is usually purchased
and (j) the channels of trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

Applying these legal precepts to the present case, petitioners 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. Respondents GALLO wines belong to Class 33 under
Rule 84[a] Chapter III, Part II of the Rules of Practice in Trademark Cases while petitioners GALLO
cigarettes fall under Class 34.

Both the Makati RTC and the CA held that wines and cigarettes are related products because: (1) they
are related forms of vice, harmful when taken in excess, and used for pleasure and relaxation and (2)
they are grouped or classified in the same section of supermarkets and groceries.

We find these premises patently insufficient and too arbitrary to support the legal conclusion that wines
and cigarettes are related products within the contemplation of the Trademark Law and the Paris
Convention.

First, anything – not only wines and cigarettes ― can be used for pleasure and relaxation and can be
harmful when taken in excess. Indeed, it would be a grave abuse of discretion to treat wines and
cigarettes as similar or related products likely to cause confusion just because they are pleasure-giving,
relaxing or potentially harmful. Such reasoning makes no sense.

Second, it is common knowledge that supermarkets sell an infinite variety of wholly unrelated products
and the goods here involved, wines and cigarettes, have nothing whatsoever in common with respect to
their essential characteristics, quality, quantity, size, including the nature of their packages, wrappers or
containers.

Wines are bottled and consumed by drinking while cigarettes are packed in cartons or packages and
smoked. There is a whale of a difference between their descriptive properties, physical attributes or
essential characteristics like form, composition, texture and quality.

GALLO cigarettes are inexpensive items while GALLO wines are not.

GALLO cigarettes and GALLO wines 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. 

THE GALLO WINE TRADEMARK IS NOT A WELL-KNOWN MARK IN THE CONTEXT OF THE PARIS
CONVENTION IN THIS CASE SINCE WINES AND CIGARETTES ARE NOT IDENTICAL OR SIMILAR GOODS

First, the records bear out that most of the trademark registrations took place in the late 1980s and the
1990s, that is, after Tobacco Industries use of the GALLO cigarette trademark in 1973 and petitioners use
of the same mark in 1984.
GALLO wines and GALLO cigarettes are neither the same, identical, similar nor related goods, a requisite
element under both the Trademark Law and the Paris Convention.

Second, the GALLO trademark cannot be considered a strong and distinct mark in the Philippines.
Respondents do not dispute the documentary evidence that aside from Gallo Winerys GALLO trademark
registration, the Bureau of Patents, Trademarks and Technology Transfer also issued on September 4,
1992 Certificate of Registration No. 53356 under the Principal Register approving Productos Alimenticios
Gallo, S.As April 19, 1990 application for GALLO trademark registration and use for its noodles, prepared
food or canned noodles, ready or canned sauces for noodles, semolina, wheat flour and bread crumbs,
pastry, confectionery, ice cream, honey, molasses syrup, yeast, baking powder, salt, mustard, vinegar,
species and ice.

Third and most important, pursuant to our ruling in  Canon Kabushiki Kaisha vs. Court of Appeals and
NSR Rubber Corporation, GALLO cannot be considered a well-known mark within the contemplation and
protection of the Paris Convention in this case since wines and cigarettes are not identical or similar
goods:

PETITIONERS ARE ALSO NOT LIABLE FOR UNFAIR COMPETITION

Under Section 29 of the Trademark Law, any person who employs deception or any other means
contrary to good faith by which he passes off the goods manufactured by him or in which he deals, or his
business, or services for those of the one having established such goodwill, or who commits any acts
calculated to produce said result, is guilty of unfair competition.

The universal test question is whether the public is likely to be deceived. Nothing less than conduct
tending to pass off one mans goods or business as that of another constitutes unfair competition. Actual
or probable deception and confusion on the part of customers by reason of defendants 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.
Societe Des Produits Nestle v. Dy, Jr. (G.R.
No. 172276)
Facts:

Petitioner Nestle, a Swiss corporation, owns the ‘NAN’ trademark for its line of infant
powdered milk products in the Philippines. Respondent Dy, Jr. on the other hand, owner
of 5M Enterprises, imports and repacks powdered milk for adults bearing the mark
‘NANNY.’ Petitioner Nestle filed before the trial court an infringement complaint against
respondent. The trial court held that respondent’s trademark is an infringement to
petitioner’s mark because it would imply that respondent’s ‘NANNY’ product came from
petitioner. CA reversed and held that the two marks are not confusingly similar thus
respondent cannot be held liable for infringement.

Issue:

Whether or not respondent is liable for trademark infringement.

Ruling: YES.

In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A, 9-A, and 20
thereof, the following constitute the elements of trademark infringement: (a) A trademark
actually used in commerce in the Philippines and registered in the principal register of
the Philippine Patent Office; (b) It is used by another person in connection with the sale,
offering for sale, or advertising of any goods, business or services or in connection with
which such use is likely to cause confusion or mistake or to deceive purchasers or
others as to the source or origin of such goods or services, or identity of such business;
or such trademark is reproduced, counterfeited, copied or colorably imitated by another
person and such reproduction, counterfeit, copy or colorable imitation 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 as to likely cause
confusion or mistake or to deceive purchasers; (c) The trademark is used for identical or
similar goods; and (d) Such act is done without the consent of the trademark registrant
or assignee.

On the other hand, the elements of infringement under R.A. No. 8293 are as follows: (a)
The trademark being infringed is registered in the Intellectual Property Office; however,
in infringement of trade name, the same need not be registered; (b) The trademark or
trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;
(c) 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; (d) 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 (e) It is without the consent of the trademark or trade
name owner or the assignee thereof.

Among the elements, the element of likelihood of confusion is the gravamen of

trademark infringement. Applying the dominancy test in the present case, the Court
finds that “NANNY” is confusingly similar to “NAN.” “NAN” is the prevalent feature of
Nestle’s line of infant powdered milk products. It is written in bold letters and used in all
products. The line consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly,
“NANNY” contains the prevalent feature “NAN.” The first three letters of “NANNY” are
exactly the same as the letters of “NAN.” When “NAN” and “NANNY” are pronounced,
the aural effect is confusingly similar.

 C
SKECHERS, U.S.A., INC. vs. INTER PACIFIC INDUSTRIAL TRADING CORP., et.al.
G.R. No. 164321. March 28,2011.
FACTS:

Petitioner 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:

Whether or not is guilty of trademark infringement.

HELD:

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.

Ching v. Salinas, Sr. (G.R. No. 161295)

Facts:

Petitioner Ching is a maker and manufacturer of a utility model, Leaf Spring Eye
Bushing for Automobile, for which he holds certificates of copyright registration.
Petitioner’s request to the NBI to apprehend and prosecute illegal manufacturers of his
work led to the issuance of search warrants against respondent Salinas, alleged to be
reproducing and distributing said models in violation of the IP Code. Respondent
moved to quash the warrants on the ground that petitioner’s work is not artistic in
nature and is a proper subject of a patent, not copyright. Petitioner insists that the IP
Code protects a work from the moment of its creation regardless of its nature or
purpose. The trial court quashed the warrants. Petitioner argues that the copyright
certificates over the model are prima facie evidence of its validity. CA affirmed the trial
court’s decision.

Issues:

(1) Whether or not petitioner’s model is an artistic work subject to copyright protection.

(2) Whether or not petitioner is entitled to copyright protection on the basis of the
certificates of registration issued to it.

Ruling:

(1) NO. As gleaned from the specifications appended to the application for a copyright
certificate filed by the petitioner, the said Leaf Spring Eye Bushing for Automobile and
Vehicle Bearing Cushion are merely utility models. As gleaned from the description of
the models and their objectives, these articles are useful articles which are defined as
one having an intrinsic utilitarian function that is not merely to portray the appearance
of the article or to convey information. Plainly, these are not literary or artistic works.
They are not intellectual creations in the literary and artistic domain, or works of applied
art. They are certainly not ornamental designs or one having decorative quality or
value. Indeed, while works of applied art, original intellectual, literary and artistic works
are copyrightable, useful articles and works of industrial design are not. A useful article
may be copyrightable only if and only to the extent that such design incorporates
pictorial, graphic, or sculptural features that can be identified separately from, and are
capable of existing independently of the utilitarian aspects of the article. In this case,
the bushing and cushion are not works of art. They are, as the petitioner himself
admitted, utility models which may be the subject of a patent.

(2) NO. No copyright granted by law can be said to arise in favor of the petitioner
despite the issuance of the certificates of copyright registration and the deposit of the
Leaf Spring Eye Bushing and Vehicle Bearing Cushion. Indeed, in Joaquin, Jr. v. Drilon
and Pearl & Dean (Phil.), Incorporated v. Shoemart, Incorporated, the Court ruled that:

Copyright, in the strict sense of the term, is purely a statutory right. It is a new or
independent right granted by the statute, and not simply a pre-existing right regulated
by it. Being a statutory grant, the rights are only such as the statute confers, and may
be obtained and enjoyed only with respect to the subjects and by the persons, and on
terms and conditions specified in the statute. Accordingly, it can cover only the works
falling within the statutory enumeration or description.

Ownership of copyrighted material is shown by proof of originality and copyrightability.

To discharge his burden, the applicant may present the certificate of registration
covering the work or, in its absence, other evidence. A copyright certificate provides
prima facie evidence of originality which is one element of copyright validity. It
constitutes prima facie evidence of both validity and ownership and the validity of the
facts stated in the certificate.
Taiwan Kolin Corporation, Ltd., Petitioner v. Kolin Electronics Co. Inc.,

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Facts: On February 29, 1996, Taiwan Kolin filed with the Intellectual Property Office (IPO), docketed as
Application No. 4-1996-106310, for the use of “KOLIN” on a combination of goods, including colored
televisions, refrigerators, window-type and split-type air conditioners, electric fans and water
dispensers. Application No. 4-1996-106310 would eventually be considered abandoned for Taiwan
Kolin’s failure to respond to IPO’s Paper No. 5 requiring it to elect one class of good for its coverage.
However, the same application was subsequently revived through Application Serial No. 4-2002-011002,
with petitioner electing Class 9 as the subject of its application, particularly: television sets, cassette
recorder, VCD Amplifiers, camcorders and other audio/video electronic equipment, flat iron, vacuum
cleaners, cordless handsets, videophones, facsimile machines, teleprinters, cellular phones and
automatic goods vending machine.

On July 13, 2006, respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner’s revived
application arguing that the mark Taiwan Kolin seeks to register is identical, if not confusingly similar,
with its “KOLIN” mark registered on November 23, 2003, covering the following products under Class 9
of the NCL: automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power
supply, step-down transformer, and PA amplified AC-DC.5cralawred

Issue:

Whether or not petitioner is entitled to its trademark registration of “KOLIN” over its specific goods of
television sets and DVD players.

Ruling: The Supreme Court held that he petitioner’s trademark registration not only covers unrelated
good, but is also incapable of deceiving the ordinary intelligent buyer. The ordinary purchaser must be
thought of as having, and credited with, at least a modicum of intelligence to be able to see the
differences between the two trademarks in question.

On the arguments that both their goods belong to Class 9 of the NCL, the Supreme Court ruled that
identical marks may be registered for products from the same classification. The mere uniformity in
categorization, by itself, does not automatically preclude the registration of what appears to be an
identical mark, if that be the case.

Moreover, the Supreme Court stated that the products covered by petitioner’s application and
respondent’s registration are unrelated. It agreed with the petitioner on the following:
Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin Electronics’ goods which are
power supply and audio equipment accessories;ChanRoblesVirtualawlibrary

Taiwan Kolin’s television sets and DVD players perform distinct function and purpose from Kolin
Electronics’ power supply and audio equipment; and

Taiwan Kolin sells and distributes its various home appliance products on wholesale and to accredited
dealers, whereas Kolin Electronics’ goods are sold and flow through electrical and hardware stores.

TAIWAN KOLIN CORPORATION, LTD., Petitioner, v. KOLIN ELECTRONICS CO., INC., Respondent.

DOCTRINE:

Emphasis should be on the similarity or relatedness of the goods and/or services involved and not on
the arbitrary classification or general description of their properties or characteristics.

FACTS:

Taiwan Kolin filed with the Intellectual Property Office (IPO), a trademark application for the use of
“KOLIN” on a combination of goods, including colored televisions, refrigerators, window-type and split-
type air conditioners, electric fans and water dispensers. Said goods allegedly fall under Classes 9, 11,
and 21 of the Nice Classification (NCL).

Respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner’s revived application,
docketed as Inter Partes Case No. 14-2006-00096. As argued, the mark Taiwan Kolin seeks to register is
identical, if not confusingly similar, with its “KOLIN” mark registered on November 23, 2003, covering
the following products under Class 9 of the NCL: automatic voltage regulator, converter, recharger,
stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC.

The BLA-IPO sustained the opposition and held that a mark cannot be registered if it is identical with a
registered mark belonging to a different proprietor in respect of the same or closely-related goods.
Accordingly, respondent, as the registered owner of the mark “KOLIN” for goods falling under Class 9 of
the NCL, should then be protected against anyone who impinges on its right, including petitioner who
seeks to register an identical mark to be used on goods also belonging to Class 9 of the NCL.
The IPO Director General rendered a Decision reversing that of the BLA-IPO. In so ruling, the IPO Director
General ratiocinated that product classification alone cannot serve as the decisive factor in the
resolution of whether or not the goods are related and that emphasis should be on the similarity of the
products involved and not on the arbitrary classification or general description of their properties or
characteristics. As held, 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.

The CA reversed and set aside the decision of Director General and found for Kolin Electronics, on the
strength of the following premises: (a) the mark sought to be registered by Taiwan Kolin is confusingly
similar to the one already registered in favor of Kolin Electronics; (b) there are no other designs, special
shape or easily identifiable earmarks that would differentiate the products of both competing
companies; and (c) the intertwined use of television sets with amplifier, booster and voltage regulator
bolstered the fact that televisions can be considered as within the normal expansion of Kolin Electronics,
and is thereby deemed covered by its trademark as explicitly protected under Sec. 13819 of the IP Code.

According to Kolin Electronics, the goods associated with Taiwan Kolin’s trademark application are
closely-related and inherently similar with the goods covered by Kolin Electronics’ registered trademark
since they are all plugged into electric sockets and perform a useful function, and thus, will create
confusion.

On the other hand, Taiwan Kolin asserts that the goods of the competing marks are not related because
(a) its goods pertain to home appliances while Kolin Electronics’ goods involves power supply and audio
equipment accessories; (b) said goods perform distinct functions and purposes; and (c) Taiwan Kolin
sells and distributes its various home appliance products on wholesale and to accredited dealers as
opposed to Kolin Electronics’ goods which are sold in electrical and hardware stores.

ISSUE:

Whether or not the goods of Taiwan Kolin over its specific goods of television sets and DVD players are
closely-related to those of Kolin Electronics.

HELD:

No, the products are not related and the use of the trademark KOLIN on them would not likely cause
confusion. To confer exclusive use of a trademark, emphasis should be on the similarity or relatedness
of the goods and/or services involved and not on the arbitrary classification or general description of
their properties or characteristics.

In resolving one of the pivotal issues in this case––whether or not the products of the parties involved
are related––the doctrine in Mighty Corporation is authoritative. There, the Court held that the goods
should be tested against several factors before arriving at a sound conclusion on the question of
relatedness. Among these are:

(a) the business (and its location) to which the goods belong;

(b) the class of product to which the goods belong;

(c) the product’s quality, quantity, or size, including the nature of the package, wrapper or container;

(d) the nature and cost of the articles;

(e) the descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality;

(f) the purpose of the goods;

(g) whether the article is bought for immediate consumption, that is, day-to-day household items;

(h) the fields of manufacture;

(i) the conditions under which the article is usually purchased; and

(j) the channels of trade through which the goods flow, how they are distributed, marketed, displayed
and sold.
As mentioned, the classification of the products under the NCL is merely part and parcel of the factors to
be considered in ascertaining whether the goods are related. It is not sufficient to state that the goods
involved herein are electronic products under Class 9 in order to establish relatedness between the
goods, for this only accounts for one of many considerations enumerated in Mighty Corporation.

The Supreme Court found that Class 9 goods can be sub-categorized into five classifications and the
goods of the competing marks belong in different categories. Taiwan Kolin’s goods are categorized as
power supply audio equipment accessories. On the other hand, Kolin Electronics’ goods fall under
devices for controlling the distribution and use of electricity. Thus, although the goods of the competing
marks belong in the same class (Class 9), they are not related since their purpose, channels of trade and
nature are different.

In determining that there is NO likelihood of confusion between the competing marks, the Supreme
Court likewise noted that said marks have distinct visual and aural differences and, given that their
goods are deemed as relatively luxury items, the consumers of said goods are predisposed to be more
discerning, cautious and discriminating.

UFC PHILIPPINES VS. FIESTA BARRIO

Ponente: LEONARDO-DE CASTRO, J.

Decision Date: 2016-01-20

GR Number: G.R. No. 198889

Benedict Victa

1 year ago

Avg. Rating:

Summary:

The SC upheld the finding of the IPP in denying petitioner's prayer for registration for finding probability
of confusing similarity. The SC applied the Dominancy Test in the instant case.
Doctrine:

Under the Dominancy Test, the dominant features of the competing marks are considered in
determining whether these competing marks are confusingly similar. Greater weight is given to the
similarity of the appearance of the products arising from the adoption of the dominant features of the
registered mark, disregarding minor differences. The visual, aural, connotative, and overall comparisons
and impressions engendered by the marks in controversy as they are encountered in the realities of the
marketplace are the main considerations

Facts:

Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing under Philippine laws.
It is the emergent entity in a merger with UFC Philippines, Inc. that was completed on February 11,
2009. Respondent Barrio Fiesta Manufacturing Corporation (respondent) is likewise a corporation
organized and existing under Philippine laws.

On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark "PAPA BOY & DEVICE"
for goods under Class 30, specifically for "lechon sauce." The Intellectual Property Office (IPO) published
said application for opposition in the IP Phil. e-Gazette released on September 8, 2006.

In its verified opposition before the IPO, petitioner contended that "PAPA BOY & DEVICE" is confusingly
similar with its "PAPA" marks inasmuch as the former incorporates the term "PAPA," which is the
dominant feature of petitioner's "PAPA" marks. Petitioner averred that respondent's use of "PAPA BOY
& DEVICE" mark for its lechon sauce product, if allowed, would likely lead the consuming public to
believe that said lechon sauce product originates from or is authorized by petitioner, and that the "PAPA
BOY & DEVICE" mark is a variation or derivative of petitioner's "PAPA" marks. Petitioner argued that this
was especially true considering that petitioner's ketchup product and respondent's lechon sauce
product are related articles that fall under the same Class 30.
Petitioner alleged that the registration of respondent's challenged mark was also likely to damage the
petitioner, considering that its former sister company, Southeast Asia Food, Inc., and the latter's
predecessors-in-interest, had been major manufacturers and distributors of lechon and other table
sauces since 1965, such as products employing the registered "Mang Tomas" mark.

Issues Ratio:

Issue:

Whether “PAPA BOY & DEVICE” is confusingly similar with “PAPA BANANA KETSUP”.

Ruling:

There is confusing similarity. The guideline for courts in determining likelihood of confusion is found in
A.M. No. 10-3-10-SC, or the Rules of Procedure for Intellectual Property Rights Cases, Rule 18, which
provides:

SECTION 3. Presumption of Likelihood of Confusion. Likelihood of confusion shall be presumed in case

an identical sign or mark is used for identical goods or services.

SECTION 4. Likelihood of Confusion in Other Cases. In determining whether one trademark is confusingly
similar to or is a colorable imitation of another, the court must consider the general impression of the
ordinary purchaser, buying under the normally prevalent conditions in trade and giving the attention
such purchasers usually give in buying that class of goods. Visual, aural, connotative comparisons and
overall impressions engendered by the marks in controversy as they are encountered in the realities of
the marketplace must be taken into account. Where there are both similarities and differences in the
marks, these must be weighed against one another to see which predominates.

In determining likelihood of confusion between marks used on non-identical goods or services, several
factors may be taken into account, such as, but not limited to:

a) the strength of plaintiff s mark;

b) the degree of similarity between the plaintiffs and the defendant's marks;

c) the proximity of the products or services;

d) the likelihood that the plaintiff will bridge the gap;

e) evidence of actual confusion;

f) the defendant's good faith in adopting the mark;

g) the quality of defendant's product or service; and/or h) the sophistication of the buyers.

In trademark controversies, each case must be scrutinized according to its peculiar circumstances, such
that jurisprudential precedents should only be made to apply if they are specifically in point.

The SC likewise agree with the IPO-BLA that the word "PAPA" is also the dominant feature of
respondent's "PAPA BOY & DEVICE" mark subject of the application, such that "the word 'PAPA' is
written on top of and before the other words such that it is the first word/figure that catches the eyes."
Furthermore, as the IPO Director General put it, the part of respondent's mark which appears
prominently to the eyes and ears is the phrase "PAPA BOY" and that is what a purchaser of respondent's
product would immediately recall, not the smiling hog.

A careful examination of Opposer's and Respondent-applicant's respective marks shows that the word
"PAPA" is the dominant feature: In Opposer's marks, the word "PAPA" is either the mark by itself or the
predominant word considering its stylized font and the conspicuous placement of the word "PAPA"
before the other words. In Respondent-applicant's mark, the word "PAPA" is written on top of and
before the other words such that it is the first word figure that catches the eyes. The visual and aural
impressions created by such dominant word "PAPA" at the least is that the respective goods of the
parties originated from the other, or that one party has permitted or has been given license to the other
to use the word "PAPA" for the other party's product, or that there is a relation/connection between the
two parties when, in fact, there is none. This is especially true considering that the products of both
parties belong to the same class and are closely related: Catsup and lechon sauce or liver sauce are both
gravy-like condiments used to spice up dishes. Thus, confusion of goods and of business may likely
result.

Under the Dominancy Test, the dominant features of the competing marks are considered in
determining whether these competing marks are confusingly similar. Greater weight is given to the
similarity of the appearance of the products arising from the adoption of the dominant features of the
registered mark, disregarding minor differences. The visual, aural, connotative, and overall comparisons
and impressions engendered by the marks in controversy as they are encountered in the realities of the
marketplace are the main considerations

Dispositive:

WHEREFORE, we hereby GRANT the petition. We SETASIDE the June 23, 2011 Decision and the October
4, 2011 Resolution of the Court of Appeals in CA-G.R. SP No. 107570, and REINSTATE the March 26, 2008
Decision of the Bureau of Legal Affairs of the Intellectual Property Office (IPO-BLA) and the January 29,
2009 Decision of the Director General of the IPO.