IRKENSTOCK ORTHOPAEDIE GMBH AND CO.

KG
(FORMERLY BIRKENSTOCK ORTHOPAEDIE GMBH) vs.
PHILIPPINE SHOE EXPO MARKETING CORPORATION
G.R. No. 194307
Nov. 20, 2013
FACTS:
Petitioner applied for various trademark registrations before the
Philippine IPO, namely: a) “BIRKENSTOCK”; b) “BIRKENSTOCK
BAD HONNEF-RHEIN & DEVICE COMPRISING OF ROUND
COMPANY SEAL AND REPRESENTATION OF A FOOT,
CROSS AND SUNBEAM”; c) “BIRKENSTOCK BAD HONNEF-
RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL
AND REPRESENTATION OF A FOOT, CROSS AND
SUNBEAM”. However, the registration proceedings were
suspended in view of an existing registration of 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. Here, petitioner filed a petition for cancellation of the
registration on the ground that it is the lawful and rightful owner of
the Birkenstock marks.
Respondent filed an opposition, alleging that: a) it, together with
its predecessor-in-interest, has been using Birkenstock marks in
the Philippines for more than 16 years through the mark
“BIRKENSTOCK AND DEVICE”; b) the marks covered by the
subject applications are identical to the one covered by the
registration and thus, petitioner has no right to the registration of
such marks; d) that while respondent failed to file the 10th Year
DAU, it continued the use of “BIRKENSTOCK AND DEVICE” in
lawful commerce, among others.
The BLA rejected the petitioner’s application for registration. It
ruled that the competing marks of the parties are confusingly
similar since they contained the work “BIRKENSTOCK” and are
used on the same and related goods. It found respondent as the
prior user and adopter of “BIRKENSTOCK” in the Philippines.
IPO Director General reversed BLA’s ruling, and allowed the
registration of petitioner’s application. CA reversed, and reinstated
BLA’s ruling.
ISSUE:
Whether or not the subject marks should be allowed registration
in the name of petitioner.
HELD:
Yes.
Respondent is deemed to have abandoned the mark when it
failed to file the 10th Year DAU for Registration on or before the
lawful period. As a consequence, it was deemed to have
abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK”.
Petitioner has duly established its true and lawful ownership of the
mark “BIRKENSTOCK”. Under Sec. 2 of RA 166, 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.
The registration of a trademark is not a mode of acquiring
ownership. If the applicant is not the owner of the trademark, he
has no right to apply for its registration. Registration merely
creates a prima facie presumption of validity of the registration, of
the registrant’s ownership of the trademark, and of the exclusive
right to the use thereof. 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.
Here, petitioner was able to establish that it is the owner of the
mark “BIRKENSTOCK”. It has used it in commerce long before
respondent was able to register the same here in the Philippines.

FREDCO MANUFACTURING CORPORATION vs PRESIDENT

AND FELLOWS OF HARVARD COLLEGE (HARVARD
UNIVERSITY G.R. no. 185917. January 1, 2011

FACTS:

         Since 1982, New York Garments, a domestic corporation

and predecessor of FREDCO, has been using the mark “Harvard
for t-shirts, sandos, briefs, and jackets. It applied for registration of
the mark and was granted a certificate of registration in 1988.
Fredco was formed and registered in 1995 and since then
handled the manufacture, promotion, and marketing of “Harvard”
clothing articles. Its registration was cancelled subsequently on
1998 for failure to file an affidavit of use/non-use on the fifth
anniversary of registration. On the other hand, Harvard acquired
registration of the mark “Harvard Veritas Shield Symbol” in the
Philippines in 1993.

PETITIONER’S CONTENTION:

         Fredco filed before the Bureau of Legal Affairs of IPO a

petition for cancellation of registration 56561 issued to Harvard in
1993 since, at the time of the issuance of such certificate, the
mark “Harvard” had been already registered by New York
Garments in 1988.
RESPONDENT’S CONTENTION:

         Respondent alleged that it is the owner of the mark

“Harvard” in more than 50 countries. Such name was adopted in
1639 as the name of Harvard College in Cambridge,
Massachusetts, U.S.A. it was used in commerce in 1872. It also
alleged that the mark have been rated as one of the most famous
brands in the world. Respondent also alleged that in 2002, it
discovered petitioner’s website which promotes and advertises
the brand name “Harvard Jeans USA” without its consent. The
main page of such website shows an oblong logo bearing the
mark “Harvard Jeans USA” “Established 1936” and “Cambridge,
Massachusetts”.

         The Director of Bureau of Legal Affairs ruled in favor of

petitioner and ordered the cancellation of the certificate of
registration of the respondent. On appeal, the Director General of
the IPO reversed the decision of Director of Bureau of Legal
Affairs of IPO and decided in favor of the respondent. The Court
of Appeals affirmed the decision of the Director General.

ISSUE:

1.  Whether or not the CA is correct in affirming the decision of the

Director General of IPO.

RULING: Yes

Fredco’s registration of the mark “Harvard” should not have been

allowed because section 4(a) of R.A. 166 prohibits the registration
of mark which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs… Fredco falsely
suggests that their goods are connected with Harvard University
when they registered the mark “Harvard” and uses “Cambridge,
Massachusetts” as identification of origin since Harvard University
also uses the mark “Harvard” and is also located in Cambridge,
Massachusetts. Fredco does not have any connection with
Harvard University; it was not established in 1936 or in the USA.

         Furthermore, both the USA and the Philippines are

signatories to the Paris Convention for the Protection of Industrial
Property. Under such convention, a trade name shall be protected
in all the countries of the Union without the obligation of filing or
registration, whether or not it forms part of a trademark. Hence,
the tradename “Harvard” of Harvard University is entitled to
protection in the Philippines even without the registration of such
trade name in the Philippines. No other entity may use such
tradename without the Harvard University’s consent.

DOCTRINE:

Well-known marks, whether or not it is registered here, cannot be

registered by another in the Philippines. It is not required that the
well-known mark be used in commerce in the Philippines but only
that it is well-known.

Ana Ang vs. Toribio Teodoro

Facts:

Respondent Toribio Teodoro has continuously used "Ang Tibay,"

both as a trade-mark and as a trade-name, in the manufacture
and sale of slippers, shoes, and indoor baseballs since 1910. On
September 29, 1915, he formally registered it as trade-mark and
as trade-name on January 3, 1933.
Petitioner Ana Ang 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.

The Court of First Instance of Manila absolved the defendant (Ms.

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

The Court of Appeals reversed said judgment, directing the

Director of Commerce to cancel the registration of the trade-mark
"Ang Tibay" in favor of petitioner, and perpetually enjoining the
latter from using said trade-mark on goods manufactured and sold
by her.

Thus, this case, a petition for certiorari.

Issue:

Are the goods or articles or which the two trademarks are used
similar or belong to the same class of merchandise? 

Ruling:

Yes, pants and shirts are goods closely similar to shoes and
slippers. They belong to the same class of merchandise as shoes
and slippers. They are closely related goods.
The Supreme Court affirmed the judgment of the Court of Appeals
and added that “although two non-competing articles may be
classified under to different classes by the Patent Office because
they are deemed not to possess the same descriptive properties,
they would, nevertheless, be held by the courts to belong to the
same class if the simultaneous use on them of identical or closely
similar trademarks would be likely to cause confusion as to the
origin, or personal source, of the second user’s goods. They
would be considered as not falling under the same class only if
they are so dissimilar or so foreign to each other as to make it
unlikely that the purchaser would think that the first user made the
second user’s goods”. 

MANG INASAL PHILIPPINES, INC., Petitioner Vs.  IFP

MANUFACTURING CORPORATION, Respondent
G.R. No. 221717
June 19, 2017

FACTS:
The Trademark Application and the Opposition Respondent IFP
Manufacturing Corporation is a local manufacturer of snacks and
beverages.

On May 26, 2011, respondent filed with the Intellectual Property

Office (IPO) an application for the registration of the mark "OK
Hotdog Inasal Cheese Hotdog Flavor Mark"in connection with
goods under Class 30 of the Nice Classification. The said mark,
which respondent intends to use on one of its curl snack products.
The application of respondent was opposed by petitioner Mang
Inasal Philippines, Inc. Petitioner is a domestic fast food company
and the owner of the mark "Mang Inasal, Home of Real Pinoy
Style Barbeque and Device" (Mang Inasal mark) for services
under Class 43 of the Nice Classification. The said mark, which
was registered with the IPO in 2006 and had been used by
petitioner for its chain of restaurants since 2003.

Petitioner, in its opposition, contended that the registration of

respondent's OK Hotdog Inasal mark is prohibited under Section
123.l (d)(iii) of Republic Act No. (RA) 8293. Petitioner averred that
the OK Hotdog Inasal mark and the Mang Inasal mark share
similarities-both as to their appearance and as to the goods or
services that they epresent 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. As
petitioner explained:

1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark.

Both marks feature the same dominant element-i.e., the word
"INASAL"-printed and stylized in the exact same manner, viz:
a. In both marks, the word "INASAL" is spelled using the same
font style and red color;
b. In both marks, the word "INASAL" is placed inside the same
black outline and yellow background; and
c. In both marks, the word "INASAL" is arranged in the same
staggered format.
2. The goods that the OK Hotdog Inasal mark is intended to
identify (i.e., curl snack products) are also closely related to the
services represented by the Mang Inasal mark (i.e., fast food
restaurants). Both marks cover inasal or inasal-flavored food
products. Petitioner's opposition was referred to the Bureau of
Legal Affairs (BLA) of the IPO for hearing and disposition.

ISSUE:

Whether or not the registration of respondent's OK Hotdog Inasal

mark is prohibited under Section 123.l (d) (iii) of Republic Act No.
(RA) 8293
HELD:
Yes. 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.
The Proscription: Sec. 123.l(d)(iii) of RA 8293 A mark that is
similar to a registered mark or a mark with an earlier filing or
priority date (earlier mark) and which is likely to cause confusion
on the part of the public cannot be registered with the IPO. Such
is the import of Sec. 123.l(d)(iii) of RA 8293: SECTION 123.
Registrability. – 123. 1. A mark cannot be registered if it:
Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be regarded
as likely to deceive or cause confusion upon the purchasing
public, a prospective mark must be shown to meet two (2)
minimum conditions:
1. The prospective mark must nearly resemble or be similar to an
earlier mark; and
2. The prospective mark must pertain to goods or services that
are either identical, similar or related to the goods or services
represented by the earlier mark.

MCDONALD’S CORPORATION VS. L.C. BIG MAK BURGER,

INC.
G.R. No. 143993
18 August 2004
PONENTE: CARPIO, J.
FACTS:

Petitioner McDonald’s Corporation is a corporation organized

under the laws of Delaware, United States. McDonald’s operates
a global chain of fast-food restaurants. McDonald’s own a family
of marks including the “Big Mac” mark for its double-decker
hamburger sandwich.

McDonald’s registered this trademark with the United States

Trademark Registry on 16 October 1979. Based on this Home
Registration, McDonald’s applied for the registration of the same
mark in the Principal Register of then then Philippine Bureau of
Patents, Trademarks and Technology (PBPTT) – now the
Intellectual Property Office (IPO).

Pending approval of its application, McDonald’s introduced

its “Big Mac” hamburger sandwiches in the Philippine market in
September 1981. On 18 July 1985, the PBPTT allowed
registration of the “Big Mac” mark in the Philippine Register based
on its Home Registration in the United States. From 1982 to 1990,
McDonald’s spent P10.5 million in advertisement for “Big
Mac” hamburger sandwiches alone.

Respondent L.C. Big Mak Burger, Inc. is a domestic corporation

which operates fast-food 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

PBPTT 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.

ISSUES:
1.      Is the respondent guilty of trademark infringement and unfair
competition?
2.      Is the “Big Mac” mark valid and does McDonald’s have rightful
ownership to the same?

RULING:

1. YES.

Trademark Infringement

RA 166 defines trademark infringement as “any person who (1)

shall use, without the consent of the registrant, any reproduction,
counterfeit, copy or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection
with which use is likely to CAUSE CONFUSION or otherwise
mistake or to deceive purchasers or others as to the source or
origin of such goods or services or identity of such business; or
(2) reproduce, counterfeit, copy, or colorably imitate any such
mark or trade-name and apply such reproduction, counterfeit,
copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used
upon or in connection with such goods, business or services.”

Clearly, there is cause for confusion in the case at bar. By using

the “Big Mak” mark on the same goods, i.e. hamburger
sandwiches, that petitioners’ “Big Mac” mark is used, they have
unjustly created the impression that its business is approved and
sponsored by, or affiliated with plaintiffs.

Furthermore, using the dominancy test (rather than the holistic

test), wherein the dominant features in the competing marks are
considered, Big Mak failed to show that there could be no
confusion. The Court found 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.” In short, aurally, the two
marks are the same.

Unfair Competition

With regard to unfair competition, RA 166, Section 29 defines the

same as any person who will employ deception or any other
means contrary to good faith by which he shall pass off the goods
manufactured by him or in which he deals, or his business, or
services for those of the one having established such goodwill, or
who shall commit any acts calculated to produce said result.

Unfair competition is broader than trademark infringement and

includes passing off goods with or without trademark
infringement. Trademark infringement is a form of unfair
competition. Trademark infringement constitutes unfair
competition when there is not merely likelihood of confusion, but
also actual or probable deception on the public because of the
general appearance of the goods.
L.C. Big Mak tried to pass off their goods as though it were
connected to “Big Mac.” The mark “B[ig] M[ac]” is used by plaintiff
McDonald’s to identify its double decker hamburger sandwich.
The packaging material is a styrofoam box with the McDonald’s
logo and trademark in red with block capital letters printed on it.
All letters of the “B[ig] M[ac]” mark are also in red and block
capital letters. On the other hand, defendants’ “B[ig] M[ak]” script
print is in orange with only the letter “B” and “M” being
capitalized and the packaging material is plastic wrapper. x x x x
Further, plaintiffs’ logo and mascot are the
umbrella “M” and “Ronald McDonald’s,” respectively, compared to
the mascot of defendant Corporation which is a chubby boy
called “Macky” displayed or printed between the
words “Big” and “Mak.”(Emphasis supplied)

Respondents point to these dissimilarities as proof that they did

not give their hamburgers the general appearance of
petitioners’ “Big Mac” hamburgers.

The dissimilarities in the packaging are minor compared to

the stark similarities in the words that give respondents’ “Big
Mak” hamburgers the general appearance of petitioners’ “Big
Mac” hamburgers. Section 29(a) expressly provides that the
similarity in the general appearance of the goods may be in
the “devices or words” used on the wrappings. Respondents have
applied on their plastic wrappers and bags almost the same
words that petitioners use on their styrofoam box. What attracts
the attention of the buying public are the words “Big Mak” which
are almost the same, aurally and visually, as the words “Big
Mac.” The dissimilarities in the material and other devices are
insignificant compared to the glaring similarity in the words used
in the wrappings.

YES.
A mark is valid if it is “distinctive” and thus not barred from
registration under Section 4 of RA 166. However, once registered,
not only the mark’s validity but also the registrant’s ownership of
the mark is prima facie presumed.

Respondents contend that of the two words in the “Big

Mac” mark, it is only the word “Mac” that is valid because the
word “Big” is generic and descriptive (proscribed under Section
4[e]), and thus “incapable of exclusive appropriation.”

The contention has no merit. The “Big Mac” mark, which should

be treated in its entirety and not dissected word for word,is neither
generic nor descriptive.

MCDONALD’S CORP. v. MCJOY

G.R. NO. 166115
February 2, 2007
PONENTE GARCIA; J.

FACTS:
Macjoy Fastfood Corporation (Macjoy), a corporation selling fried chicken, chicken barbeque, burgers,
fries, spaghetti, palabok, tacos, sandwiches, halo-halo and steaks (fastfood products) in Cebu City filed
with the BPTT-IPO an application for the registration of the trademark “MACJOY & DEVICE”.

McDonald’s Corporation, a corporation organized under the laws of Delaware, USA opposed against the
respondent’s application claiming that such trademark so resembles its corporate logo (Golden Arches)
design and its McDONALD’s marks such that when used on identical or related goods, the trademark
applied for would confuse or deceive purchasers into believing that the goods originated from the same
source or origin.

Macjoy on the other hand averred that the it has used the mark “MACJOY” for tha past many years in
good faith and has spent considerable sums of money for extensive promotions x x x.

The IPO ratiocinated that the predominance of the letter “M” and the prefixes “Mac/Mc” in both the
Macjoy and McDonald’s marks lead to the conclusion that there is confusing similarity between them x x
x. Therefore, Macjoy’s application was denied.

Upon appeal to the CA it favored with MacJoy and against McDonald’s. The Court of Appeals, in ruling
over the case, actually used the holistic test (which is a test commonly used in infringement cases). The
holistic test looks upon the visual comparisons between the two trademarks. The justifications are the
following:
1. The word “MacJoy” is written in round script while the word “McDonald’s is written in single stroke
gothic;
2. The word “MacJoy” comes with the picture of a chicken head with cap and bowtie and wings sprouting
on both sides, while the word “McDonald’s” comes with an arches “M” in gold colors, and absolutely
without any picture of a chicken;
3. The word “MacJoy” is set in deep pink and white color scheme while the word “McDonald’s” is written
in red, yellow, and black color combination;
4. The facade of the respective stores of the parties, are entirely different.

ISSUE: Whether there is a confusing similarity between the McDonald’s marks of the petitioner and the
respondent’s “MACJOY & DEVICE” trademark when it applied to classes 29 ad 30 of the International
Classification of Goods.

RULING: YES.

The Supreme Court ruled that the proper test to be used is the dominancy test. The dominancy test not
only looks at the visual comparisons between two trademarks but also the aural impressions created by
the marks in the public mind as well as connotative comparisons, giving little weight to factors like prices,
quality, sales outlets and market segments. In the case at bar, the Supreme Court ruled
that “McDonald’s” and “MacJoy” marks are confusingly similar with each other such that an ordinary
purchaser can conclude an association or relation between the marks. To begin with, both marks use the
corporate “M” design logo and the prefixes “Mc” and/or “Mac” as dominant features. The first letter “M” in
both marks puts emphasis on the prefixes “Mc” and/or “Mac” by the similar way in which they are
depicted i.e. in an arch-like, capitalized and stylized manner. For sure, it is the prefix “Mc,” an
abbreviation of “Mac,” which visually and aurally catches the attention of the consuming public. Verily,
the word “MACJOY” attracts attention the same way as
did “McDonalds,” “MacFries,” “McSpaghetti,” “McDo,” “Big Mac” and the rest of the MCDONALD’S marks
which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks are used in the
sale of fastfood products.

Further, the owner of MacJoy provided little explanation why in all the available names for a restaurant
he chose the prefix “Mac” to be the dominant feature of the trademark. The
prefix “Mac” and “Macjoy” has no relation or similarity whatsoever to the name Scarlett Yu Carcel, which
is the name of the niece of MacJoy’s president whom he said was the basis of the trademark MacJoy. By
reason of the MacJoy’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 MacJoy would want to ride high on the established
reputation and goodwill of the McDonald’s marks, which, as applied to its restaurant business and food
products, is undoubtedly beyond question.

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.

ASIA BREWERY, INC. vs. THE HON. COURT OF APPEALS and SAN MIGUEL CORPORATION
G.R. No. 103543
July 5, 1993
GRIÑO-AQUINO, J.

FACTS:

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for infringement of
trademark and unfair competition on account of the latter's BEER PALE PILSEN or BEER NA BEER
product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the local beer
market.

The trial court dismissed SMC's complaint because ABI "has not committed trademark infringement or
unfair competition against" SMC

On appeal by SMC, the Court of Appeals reversed the decision rendered by the trial court, finding the
defendant Asia Brewery Incorporated GUILTY of infringement of trademark and unfair competition. ABI
then filed a petition for certiorari.

ISSUE: Whether or not Asia Brewery Inc. committed infringement of trademark and unfair competition
against San Miguel Corporation.

RULING:

No infringement. Infringement is determined by the "test of dominancy" rather than by differences or

variations in the details of one trademark and of another. If the competing trademark 1) contains the main
or essential or dominant features of another, and 2) confusion and deception is likely to result,
infringement takes place.

In the instant case, the dominant feature of SMC is the words “SAN MIGUEL PALE PILSEN” with
elaborate serifs at the beginning and end of the letters "S" and "M." While the dominant feature of ABI's
trademark is the name: “BEER PALE PILSEN” with the word "Beer" written in large amber letters.
Besides the dissimilarity in their dominant feature, the following other dissimilarities in the appearance of
the competing products abound:

         San Miguel’s bottle has a slender tapered neck, while Beer na Beer’s bottle has a fat, bulging neck.
         San Miguel’s bottle cap is stamped with a coat of arms and the words "San Miguel Brewery Philippines"
encircling the same, while Beer na Beer’s bottle cap is stamped with the name "BEER" in the center,
surrounded by the words "Asia Brewery Incorporated Philippines.”
         San Miguel is "Bottled by the San Miguel Brewery, Philippines," while Beer na Beer is "Especially brewed
and bottled by Asia Brewery Incorporated, Philippines."
         San Miguel is with SMC logo, while Beer na Beer has no logo
         San Miguel’s price is P7.00 per bottle, while Beer na Beer’s price is P4.25 per bottle

Based on the dissimilarity in their dominant features as well as in sound, spelling & appearance, Beer na
Beer cannot be said to be similarly confusing with San Miguel Pale Pilsen.
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.

No unfair competition.  Sec 29, Republic Act No. 166 as amended describes unfair competition as the
employment of deception or any other means contrary  to good faith by which a person shall pass off the
goods manufactured by him or in which he deals, or his business, or services, for those of another who
has already established goodwill for his similar goods, business or services, or any acts calculated to
produce the same result. Therefore, the universal test question is whether the public is likely to be
deceived.

In this case, the use of similar but unidentical bottle size, shape & color is not unlawful as aptly explained.
The 320 ml capacity is the standard prescribed by the Dept of Trade. The amber color is a functional
feature for it prevents transmission of light and provides the maximum protection to beer. Being of
functional or common use, SMC’s being the first to use does not give SMC exclusive right to such use.
The bottle shape is usually standardized just as a ketchup or vinegar bottle with its
familiar elongated neck, thereby dismissing the attendance of bad faith or the intention to deceive the
public by ABI.

Moreover, buyers generally order their beer by brand in the supermarket, sari-sari stores, restaurants;
thus dismissing the idea that Beer na Beer can be passed off as San Miguel Beer. There can be no
confusion or the likelihood of deception among the consumers.

PROSOURCE VS HORPHAG

FACTS:

Respondent is a corporation and owner of trademark PYCNOGENOL, a food. Respondent later

discovered that petitioner was also distributing a similar food supplement using the mark PCO-
GENOLS since 1996. This prompted respondent to demand that petitioner cease and desist from
using the aforesaid mark.

Respondent filed a Complaint for Infringement of Trademark with Prayer for Preliminary
Injunction against petitioner, in using the name PCO-GENOLS for being confusingly similar.
Petitioner appealed otherwise.

The RTC decided in favor of respondent. It observed that PYCNOGENOL and PCO-GENOLS have the
same suffix "GENOL" which appears to be merely descriptive and thus open for trademark
registration by combining it with other words and concluded that the marks, when read, sound
similar, and thus confusingly similar especially since they both refer to food supplements.
On appeal to the CA, petitioner failed to obtain a favorable decision. The appellate court
explained that under the Dominancy or the Holistic Test, PCO-GENOLS is deceptively similar to
PYCNOGENOL.

ISSUE: Whether the names are  confusingly similar.

RULING:

Yes. There is confusing similarity and the petition is denied. Jurisprudence developed two test to
prove such.

The Dominancy Test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion and deception, thus constituting infringement. If the
competing trademark contains the main, essential and dominant features of another, and
confusion or deception is likely to result, infringement takes place. Duplication or imitation is not
necessary; nor is it necessary that the infringing label should suggest an effort to imitate. The
question is whether the use of the marks involved is likely to cause confusion or mistake in the
mind of the public or to deceive purchasers. Courts will consider more the aural and visual
impressions created by the marks in the public mind, giving little weight to factors like prices,
quality, sales outlets, and market segments.

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. Not only on the
predominant words should be the focus but also on the other features appearing on both labels in
order that the observer may draw his conclusion whether one is confusingly similar to the other.

SC applied the Dominancy Test.Both the words have the same suffix "GENOL" which on evidence,
appears to be merely descriptive and furnish no indication of the origin of the article and hence,
open for trademark registration by the plaintiff through combination with another word or phrase.
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.

DEL MONTE VS. CA

G.R. No. 78325, January 25, 1990

Facts:

Petitioner Del Monte Corporation is a foreign company organized under the laws of the United States and not

engaged in business in the Philippines. Both the Philippines and the United States are signatories to the
Convention of Paris, a treaty which grants to the nationals of the parties rights and advantages which their own

nationals enjoy for the repression of acts of infringement and unfair competition. On the other hand, petitioner

Philippine Packing Corporation (Philpack) is a domestic corporation duly organized under the laws of the

Philippines.

Sometime in 1965, 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 by the Philippine

Patent Office under the Supplemental Register.  In 1969, 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. In 1972, Del Monte also obtained two registration certificates for its trademark “DEL

MONTE” and its logo.

Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by the Bureau of

Domestic Trade in 1980 to engage in the manufacture, packing, distribution and sale of various kinds of sauce,

identified by the logo Sunshine Fruit Catsup. The logo was registered in the Supplemental Register in 1983.

Sunshine Sauce’s product itself was contained in various kinds of bottles, including the Del Monte bottle,

which it bought from the junk shops for recycling.

Philpack received reports that Sunshine Sauce was using its exclusively designed bottles and a logo

confusingly similar to Del Monte’s. Philpack warned Sunshine Sauce to desist from doing so on pain of legal

action. Thereafter, claiming that the demand had been ignored, Philpack and Del Monte filed a complaint

against the Sunshine Sauce for infringement of trademark and unfair competition.

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.

The RTC dismissed the complaint on the following grounds:

 there were substantial differences between the logos or trademarks of the parties

 Sunshine Sauce became the owner of the said bottles upon its purchase thereof from the junk yards

 Del Monte and Philpack had failed to establish the its malice or bad faith, which is an essential

element of infringement of trademark or unfair competition

The CA affirmed RTC’s decision in toto. Hence, the appeal.

Issue(s):

 Whether or not Sunshine Sauce is guilty of unfair competition.

 Whether or not Sunshine Sauce is guilty of infringement for having used the Del Monte bottle.

Held:

 Yes, it is guilty of unfair competition.

The SC compared the Del Monte and Sunshine Sauce’s packaging. While it recognized several distinctions, it

does not agree with the conclusion that there was no infringement or unfair competition.

According to the SC, 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. The

average shopper is usually in a hurry and does not inspect every product on the shelf as if he were browsing in

a library.

The question is not whether the two articles are distinguishable by their label when set side by side but whether

the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his

guard, is such as to likely result in his confounding it with the original.

A number of courts have held that 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. The court therefore should be guided by its first impression, for a buyer acts quickly

and is governed by a casual glance, the value of which may be dissipated as soon as the court assumes to

analyze carefully the respective features of the mark.

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. A confusing similarity will justify the intervention of equity.  The judge must also

be aware of the fact that usually a defendant in cases of infringement does not normally copy but makes only

colorable changes. Well has it been said that the most successful form of copying is to employ enough points

of similarity to confuse the public with enough points of difference to confuse the courts.

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. Although the logo of Sunshine is not a tomato, the

figure nevertheless approximates that of a tomato.

 No, it is not guilty of infringement.

Sunshine Sauce is not guilty of infringement for having used the Del Monte bottle. The reason is that the

configuration of the said bottle was merely registered in the Supplemental Register. Registration only in the

Supplemental Register means absence of the following presumptions: validity of the trademark, the registrant’s

ownership of the mark and his right to its exclusive use

Fruit of the Loom v. CA (G.R. No. L-32747)

Facts:
Petitioner Fruit of the Loom, an American corporation, is the registrant of the trademark
‘Fruit of the Loom’ covering goods such as underwear and other textile fabrics.
Respondent General Garments on the other hand, is a domestic corporation and a
registrant of the trademark ‘Fruit for Eve’ covering garments similar to petitioner.
Alleging respondent’s mark and hang tag is confusingly similar with its own, petitioner
filed a complaint for trademark infringement and unfair competition. The trial court found
for petitioner. CA reversed the judgment.

Issue:

Whether or not respondent’s mark and hang tag is confusingly similar with that of
petitioner.

Ruling: NO.

WE agree with the respondent court that by mere pronouncing the two marks, it could
hardly be said that it will provoke a 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, 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. The designs differ. Petitioner’s trademark is written in almost semi-
circle while that of private respondent is written in straight line in bigger letters than
petitioner’s. Private respondent’s tag has only an apple in its center but that of petitioner
has also clusters of grapes that surround the apple in the center. The colors of the hang
tag are also very distinct from each other. WE hold that the trademarks FRUIT OF THE
LOOM and FRUIT FOR EVE do not resemble each other as to confuse or deceive an
ordinary purchaser. WE hold that the trademarks FRUIT OF THE LOOM and FRUIT
FOR EVE do not resemble each other as to confuse or deceive an ordinary purchaser.

Berris Agricultural Inc. vs. Norvy Abyadang

Facts: On January 16, 2004, respondent Norvy A. Abyadang (Abyadang), proprietor of NS

Northern Organic Fertilizer, filed with the Intellectual Property Office (IPO) a trademark
application for the mark NS D-10 PLUS for use in connection with Fungicide with active
ingredient 80% Mancozeb. It was given due course and was published in the IPO e-Gazette for
opposition on July 28, 2005. On August 17, 2005, petitioner Berris Agricultural Co., Inc. filed
with the IPO Bureau of Legal Affairs (IPO-BLA) Notice of Opposition against the mark under
application allegedly because NS D-10 PLUS is similar and/or confusingly similar to its
registered trademark D-10 80 WP, also used for Fungicide (Class 5) with the same active
ingredient 80% Mancozeb. The Director of the IPO-BLA issued a Decision sustaining the
opposition holding that Respondent-Applicants mark NS D-10 PLUS is confusingly similar to the
Opposers mark, thus consequently rejected Norvy Abyadang’s application. Upon motion for
reconsideration and subsequent appeal to the Intellectual Property Philippines (IPPDG), the
ruling is in favor of petitioner Berris. But upon appeal to the CA, it ruled in favor of Abyadang.

Issue/s: 1. Whether or not Abyadang has prior ownership of the mark based on its prior
registration. (NO) 2. Whether or not the trademark is confusingly similar with the Oppositor.
(YES) Ruling: 1. R.A. No. 8293 defines a mark as any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container of goods.(Sec. 121.1) It also defines a collective mark as any visible sign
designated as such in the application for registration and capable of distinguishing the origin or
any other common characteristic, including the quality of goods or services of different
enterprises which use the sign under the control of the registered owner of the collective mark.
(Sec. 121.2) On the other hand, R.A. No. 166 defines a trademark as any distinctive word,
name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a
manufacturer or merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by another. A trademark, being a special property, is afforded
protection by law. But for one to enjoy this legal protection, legal protection ownership of the
trademark should rightly be established. **The ownership of a trademark is acquired by its
registration and its actual use by the manufacturer or distributor of the goods made available to
the purchasing public. Section 122 of R.A. No. 8293 provides that the rights in a mark shall be
acquired by means of its valid registration with the IPO. A certificate of registration of a mark,
once issued, constitutes prima facie evidence of the validity of the registration, of the registrants
ownership of the mark, and of the registrants exclusive right to use the same in connection with
the goods or services and those that are related thereto specified in the certificate. R.A. No.
8293, however, requires the applicant for registration or the registrant to file a declaration of
actual use (DAU) of the mark, with evidence to that effect, within three (3) years from the filing
of the application for registration; otherwise, the application shall be refused or the mark shall be
removed from the register. In other words, the prima facie presumption brought about by the
registration of a mark may be challenged and overcome, in an appropriate action, by proof of
the nullity of the registration or of non-use of the mark, except when excused. Moreover, the
presumption may likewise be defeated by evidence of prior use by

another person, i.e., it will controvert a claim of legal appropriation or of ownership based on
registration by a subsequent user. This is because a trademark is a creation of use and belongs
to one who first used it in trade or commerce. In the instant case, both parties have submitted
proof to support their claim of ownership of their respective trademarks. For Berris, (1) its
trademark application; (2) its IPO certificate of registration dated; (3) a photocopy of its
packaging bearing the mark D-10 80 WP; (4) photocopies of its sales invoices and official
receipts. For Abyadang, (1) a photocopy of the packaging bearing mark NS D-10 PLUS; (2)
Affidavit stating among others that the mark NS D-10 PLUS was his own creation derived from:
N for Norvy, his name; S for Soledad, his wifes name; D the first letter for December, his birth
month; 10 for October, the month of his business name registration; and PLUS to connote
superior quality; that when he applied for registration, there was nobody applying for a mark
similar to NS D-10 PLUS; that he did not know of the existence of Berris or any of its products;
and that he could not have copied Berris mark because he registered his packaging with the
Fertilizer and Pesticide Authority (FPA) ahead of Berris; The Court ruled in favor of Berris as it
was able to establish that it was using its mark D-10 80 WP since June 20, 2002, even before it
filed for its registration with the IPO on November 29, 2002, as shown by its DAU which was
under oath and notarized, bearing the stamp of the Bureau of Trademarks of the IPO on April
25, 2003. And which stated that it had an attachment as sales invoices and official receipts of
goods bearing the mark. Therefore, Berris, as prior user and prior registrant, is the owner of the
mark D-10 80 WP. 2. Abyadangs mark NS D-10 PLUS is confusingly similar to that of Berris D-
10 80 WP In determining similarity and likelihood of confusion, jurisprudence has developed
tests: the Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the
similarity of the prevalent or dominant features of the competing trademarks that might cause
confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation
is not necessary; neither is it required that the mark sought to be registered suggests an effort to
imitate. Given more consideration are the aural and visual impressions created by the marks on
the buyers of goods. 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. Comparing Berris mark D-10 80
WP with Abyadangs 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. Admittedly, the D-10 is
the dominant feature of the mark. In applying Dominancy Test. Undeniably, both marks pertain
to the same type of goods, fungicide with same 80% Mancozeb as an active ingredient and
used for the same group of fruits, crops, vegetables etc. While in applying the Holistic Test,
taking into consideration the packaging both use the same type of material (foil type) and have
identical color schemes (red, green, and white); Consequently, 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.

FACTS: On 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 of the Philippines which states that a mark cannot be registered if it Is
identical with a registered mark belonging to a different proprietor or a mark with an earlier filing
or priority date xxx is identical with, or confusingly similar to, or constitutes a translation of a
mark which is considered by the competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is registered here, as being already the
mark of a person other than the applicant for registration, and used for identical or similar goods
or services: Provided, That in determining whether a mark is well known, account shall be taken
of the knowledge of the relevant sector of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a result of the promotion of the mark.
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. On appeal to the Court of
Appeals, the appellate court reversed the decision finding the trademark applied by the
petitioner is confusingly similar with that of respondent’s registered trademark and packaging.
Also, the appellate court 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.
ISSUE/S: WoN the mark applied for by petitioner is identical or confusingly similar with that of
respondent?
RULING: AFFIRMATIVE. 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. 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. 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.
DENIED.