KHO v.

CA 379 SCRA 410

I. Facts
Kho, a company doing business under the name of KEC cLaboratory, is the registered
owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case as shown by Certificates
of Copyright Registration. Kho also has patent rights on Chin Chun Su & Device and Chin Chun Su for
medicated cream after purchasing it from Quintin Cheng. Petitioner Kho alleges that respondent
Summerville advertised and sold Kho’s cream products under the brand name Chin Chun Su in
similar containers which mislead the public and resulted to the decline of Kho’s business sales and
income.

In its defense, Summerville alleges that it is the exclusive and authorized importer,
repacker, and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan. The
said Taiwanese factory authorized Summerville to register its trade name Chin Chun Su Medicated
Cream with the Philippine Patent Office and the other governmental agencies. It also argues that
KEC Cosmetics Laboratory of Kho obtained copyrights through misrepresentation and falsification
and the authority of Quintin Cheng to distribute and market Chin Chun Su products in the Philippines
had already been terminated by the said Taiwanese Manufacturing Company.

Kho filed a complaint for injunction and damages with prayer for the issuance of a
writ of preliminary injunction. The trial court granted Kho’s prayers and subsequently denied the
motion for reconsideration of the respondent. The appellate court, however, granted the appeal of
respondent.

II. Issue/s
W/N petitioner Kho’s copyright and patent over the name and container of a beauty
cream product would entitle Kho to the use and ownership over the same to the exclusion of others

III. Ruling – NO

IV. Ratio

Trademark, copyright and patents are different intellectual property rights. A trademark is 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. A trade name means the name
or designation identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is
confined to literary and artistic works which are original intellectual creations in the literary and
artistic domain protected from the moment of their creation. Patentable inventions, on the other
hand, refer to any technical solution of a problem in any field of human activity which is new,
involves an inventive step and is industrially applicable.

Petitioner has no right to support her claim for the exclusive use of the subject trade name and
its container. The name and container of a beauty cream product are proper subjects of a trademark
inasmuch as the same falls squarely within its definition. In order to be entitled to exclusively use the
same in the sale of the beauty cream product, the user must sufficiently prove that she registered
or used it before anybody else did. The petitioner’s copyright and patent registration of the name
 and container would not guarantee her the right to the exclusive use of the same for the reason
that they are not appropriate subjects of the said intellectual rights.

Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner
has not proven that she has a clear right over the said name and container to the exclusion of
others, not having proven that she has registered a trademark thereto or used the same before
anyone did.

COFFEE PARTNERS, INC.,Petitioner, vs.

SAN FRANCISCO COFFEE & ROASTERY, INC., Respondent.
G.R. No. 169504
March 3, 2010
CARPIO, J.:

FACTS:

Petitioner Coffee Partners, Inc. is a local corporation engaged in the business of establishing and
maintaining coffee shops in the country. It registered with the Securities and Exchange Commission
(SEC) in January 2001. It has a franchise agreement with Coffee Partners Ltd. (CPL) for a non-exclusive
right to operate coffee shops in the Philippines using trademarks designed by CPL such as “SAN
FRANCISCO COFFEE.”

Respondent is a local corporation engaged in the wholesale and retail sale of coffee. It registered
with the SEC in May 1995. It registered the business name “SAN FRANCISCO COFFEE &
ROASTERY, INC.” with the Department of Trade and Industry (DTI) in June 1995.Respondent had
since built a customer base that included Figaro Company, Tagaytay Highlands, Fat Willy’s, and other
coffee companies. They later formed a joint venture with Boyd Coffee USA under the company name
Boyd Coffee Philippines Inc. (BCCPI) and embarked on the study of setting up coffee carts in malls and
other establishments.

In June 2001, respondent discovered that petitioner was about to open a coffee shop under the
name “SAN FRANCISCO COFFEE”. According to respondent, the shop caused confusion in the minds
of the public as it bore a similar name and it also engaged in the business of selling coffee hence he filed
a complaint with the BLA-IPO for infringement and unfair competition. Petitioners contended that its
mark could not be confused with respondent’s trade name because of the notable distinction in
appearances. They further argued that petitioners abandoned their trade name when it formed a joint
venture with Boyd Coffee USA.

The BLA-IPO ruled in favor of respondent and held that there was trademark infringement. It
also ruled that there was no abandonment of trade name since respondent continuously used its trade
name in connection with the purpose for which it was organized. Respondent merely shifted from
roasting and distributing coffee to making plans and doing research on the retailing of coffee. They
however absolved petitioner from liability from unfair competition.

The Office of the Director General-IPO(ODG-IPO) Reversed the BLA-IPO, it held there was no
infringement and that respondent had stopped using its trade name after it entered into the joint venture.
Upon further appeal, the CA set aside the decision of the (ODG-IPO). Petitioner now raises the issue
before the SC contending whether or not there could be infringement when a trade name is not
registered.
ISSUES:

1. Whether or not respondent abandoned the use of his trade name?

2. Whether petitioner’s use of the trademark “SAN FRANCISCO COFFEE” constitutes
infringement of respondent’s trade name “SAN FRANCISCO COFFEE & ROASTERY, INC.,”
even if the trade name is not registered with the Intellectual Property Office (IPO)?

RULING:

1. The Supreme Court held in the negative. The Court held that there was no abandonment. BLA-
IPO and the CA found that respondent continued to make plans and do research on the retailing of coffee
and the establishment of coffee cart, which negates abandonment. Even though they had stopped in
selling coffee they continued to import and sell coffee machines, which is one of the services which the
use of the business name had been registered.

2. The Supreme Court held in the affirmative. In Prosource International, Inc. v. Horphag Research
Management SA, this Court laid down what constitutes infringement of an unregistered trade name,
thus:
(1) The trademark being infringed is registered in the Intellectual Property
Office;however, in infringement of trade name, the same need not be registered;(2)
The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated
by the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering
for sale, or advertising of any goods, business or services; or the infringing mark or
trade name is applied to labels, signs, prints, packages, wrappers, receptacles, or
advertisements intended to be used upon or in connection with such goods, business, or
services;
(4) The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the identity of such
business; and
(5) It is without the consent of the trademark or trade name owner or the assignee
thereof.

A trade name need not be registered with the IPO before an infringement suit may be filed by its
owner against the owner of an infringing trademark. All that is required is that the trade name is
previously used in trade or commerce in the Philippines.

Sec. 22 of RA 166 required registration of a trade name for the institution of an infringement
suit. However, RA 8293, which took effect on 1 January 1998, has dispensed with the registration
requirement. Section 165.2 of RA 8293 categorically states that trade names shall be protected, even
prior to or without registration with the IPO, against any unlawful act including any subsequent use of
the trade name by a third party, whether as a trade name or a trademark likely to mislead the public
which states that:

SEC. 165.2 (a) Notwithstanding any laws or regulations providing for any
obligation to register trade names, such names shall be protected, even prior to or
without registration, against any unlawful act committed by third parties.
 It is the likelihood of confusion that is the gravamen of infringement. And in order to determine
likelihood of confusion we can apply two tests which are:

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 occurs. Exact duplication or imitation is not required. 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 consumers.

In contrast, the holistic test entails a consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. The discerning eye of
the observer must focus not only on the predominant words but also on the other features appearing on
both marks in order that the observer may draw his conclusion whether one is confusingly similar to the
other.

In applying either test, petitioner’s “SAN FRANCISCO COFFEE” trademark is a clear

infringement of respondents “SAN FRANCISCO COFFEE & ROASTERY, INC.”Trade name. The
descriptive words "SAN FRANCISCO COFFEE" are precisely the dominant features of respondent’s
trade name. Petitioner and respondent are engaged in the same business of selling coffee, whether
wholesale or retail. The likelihood of confusion is higher in cases where the business of one corporation
is the same or substantially the same as that of another corporation. In this case, the consuming public
will likely be confused as to the source of the coffee being sold at petitioner’s coffee shops. Petitioner’s
argument that "San Francisco" is just a proper name referring to the famous city in California and that
"coffee" is simply a generic term, is untenable. Respondent has acquired an exclusive right to the use of
the trade name "SAN FRANCISCO COFFEE & ROASTERY, INC." since the registration of the
business name with the DTI in 1995. Thus, respondent’s use of its trade name from then on must be free
from any infringement by similarity. Of course, this does not mean that respondent has exclusive use of
the geographic word "San Francisco" or the generic word "coffee." Geographic or generic words are not,
per se, subject to exclusive appropriation. It is only the combination of the words "SAN FRANCISCO
COFFEE," which is respondent’s trade name in its coffee business, that is protected against infringement
on matters related to the coffee business to avoid confusing or deceiving the public.
G.R. No. 114508 November 19, 1999
PRIBHDAS J. MIRPURI, petitioner,
vs.
COURT OF APPEALS, DIRECTOR OF PATENTS and the BARBIZON
CORPORATION, respondents.
FACTS:
On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J.
Mirpuri, filed an application with the Bureau of Patents for the registration of the trademark
"Barbizon" for use in brassieres and ladies undergarments. Escobar alleged that she had been
manufacturing and selling these products under the firm name "L & BM Commercial" since
March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and doing business under
the laws of New York, U.S.A., opposed the application. It claimed that the mark BARBIZON of
respondent-applicant is confusingly similar to the trademark BARBIZON which opposer owns
and has not abandoned.
On June 18, 1974, the Director of Patents rendered judgment dismissing the opposition and
giving due course to Escobar's application. The decision became final and on September 11,
1974, Lolita Escobar was issued a certificate of registration for the trademark "Barbizon." The
trademark was "for use in "brassieres and lady's underwear garments like panties. Escobar
later assigned all her rights and interest over the trademark to petitioner Pribhdas J. Mirpuri.
In 1979, however, Escobar failed to file with the Bureau of Patents the Affidavit of Use of the
trademark required under Section 12 of Republic Act (R.A.) No. 166, the Philippine Trademark
Law. Due to this failure, the Bureau of Patents cancelled Escobar's certificate of registration.
On May 27, 1981, Escobar reapplied for registration of the cancelled trademark. Mirpuri filed
his own application for registration of Escobar's trademark. Escobar later assigned her
application to herein petitioner and this application was opposed by private respondent.
The private respondent alleged that it has adopted the trademark BARBIZON (word),
sometime in 1933 and has succeeding registrations thereof. It contends that the applicant’s
misappropriation of opposer’s BARBIZON trademark, its wholly-owned Philippine Subsidiary,
Philippine Lingerie Corporation is prevented from selling its goods in the local market, to the
damage and prejudice of the opposer and its subsidiary. It further alleged that its BARBIZON
as well as its BARBIZON and Bee Design and BARBIZON and Representation of a Woman
trademarks qualify as well-known trademarks entitled to protection under Article 6bis of the
Convention of Paris for the Protection of Industrial Property and further amplified by the
Memorandum of the Minister of Trade to the Honorable Director of Patents dated October 25,
1983, Executive Order No. 913 dated October 7, 1963 and the Memorandum of the Minister of
Trade and Industry to the Honorable Director of Patents dated October 25, 1983. Finally, it
contends that the trademark applied for by respondent applicant is identical to Opposer's
BARBIZON trademark and constitutes the dominant part of Opposer's two other marks
namely, BARBIZON and Bee design and BARBIZON and a Representation of a Woman. The
continued use by respondent-applicant of Opposer's trademark BARBIZON on goods
belonging to Class 25 constitutes a clear case of commercial and criminal piracy and if allowed
registration will violate not only the Trademark Law but also Article 189 of the Revised Penal
Code and the commitment of the Philippines to an international treaty.
The petitioner raised the defense of res judicata in reply to private petitioner’s opposition.
The private respondent filed before the Office of Legal Affairs of the DTI, a petition for
cancellation of petitioner’s business name. In 1991, DTI cancelled the petitioner’s certificate of
registration and declared private respondent the owner and prior user of the business name
“Barbizon International”.
Meanwhile, in IPC No. 2049, the evidence of both parties were received by the Director of
Patents. On June 18, 1992, the Director rendered a decision declaring private respondent's
opposition barred by res judicata and giving due course to petitioner's application for
registration.
Private respondent questioned the decision before the Court of Appeals. The CA reversed the
Director of Patents finding that IPC No. 686 was not barred by judgment in IPC No. 2049 and
ordered that the case be remanded to the Bureau of Patents for further proceedings. Hence,
this recourse.

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

HELD:
Yes.
The court, prior ruling on the case cited the functions of trademarks.
A "trademark" is defined under R.A. 166, the Trademark Law, as including "any word, name,
symbol, emblem, sign or device or any combination thereof adopted and used by a
manufacturer or merchant to identify his goods and distinguish them from those manufactured,
sold or dealt in by others. 11 This definition has been simplified in R.A. No. 8293, the
Intellectual Property Code of the Philippines, which defines a "trademark" as "any visible sign
capable of distinguishing goods." 12 In Philippine jurisprudence, the function of a trademark is
to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to
him, who has been instrumental in bringing into the market a superior article of merchandise,
the fruit of his industry and skill; to assure the public that they are procuring the genuine article;
to prevent fraud and imposition; and to protect the manufacturer against substitution and sale
of an inferior and different article as his product. 
Modern authorities on trademark law view trademarks as performing three distinct functions:
(1) they indicate origin or ownership of the articles to which they are attached; (2) they
guarantee that those articles come up to a certain standard of quality; and (3) they advertise
the articles they symbolize. 
Today, the trademark is not merely a symbol of origin and goodwill; it is often the most
effective agent for the actual creation and protection of goodwill. It imprints upon the public
mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further
satisfaction. In other words, the mark actually sells the goods. 28 The mark has become the
"silent salesman," the conduit through which direct contact between the trademark owner and
the consumer is assured.
Paris Convention affords protection to a foreign corporation against a Philippine applicant for
the registration of a similar trademark.
The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris
Convention, is a multilateral treaty that seeks to protect industrial property consisting of
patents, utility models, industrial designs, trademarks, service marks, trade names and
indications of source or appellations of origin, and at the same time aims to repress unfair
competition. 
The Convention is essentially a compact among various countries which, as members of the
Union, have pledged to accord to citizens of the other member countries trademark and other
rights comparable to those accorded their own citizens by their domestic laws for an effective
protection against unfair competition. 42 In short, foreign nationals are to be given the same
treatment in each of the member countries as that country makes available to its own
citizens. Nationals of the various member nations are thus assured of a certain minimum of
international protection of their industrial property. 
Both the Philippines and the United States of America, herein private respondent's country, are
signatories to the Convention. The United States acceded on May 30, 1887 while the
Philippines, through its Senate, concurred on May 10, 1965.  The Philippines' adhesion
became effective on September 27, 1965, and from this date, the country obligated itself to
honor and enforce the provisions of the Convention. 

Emzee Foods, Inc. Vs. Elarfoods, Inc.

G.R. No. 220558
February 17, 2021

FACTS:
Spouses Lontoc since 190 has been using the trademark “Elar Lechon” for roasted pigs. In 1989
they registered a corporation Elarfoods Inc and market their roasted pigs under the mark
“Elars Lechon”. Petitioner also used the mark “Elarz Lechon” In 2001, Elarfoods corporation
filed registration of their mark. However, without respondent's knowledge and permission,
petitioner Emzee Foods sold and distributed roasted pigs using the marks "ELARZ
LECHON", "ELAR LECHON", "PIG DEVICE" and "ON A BAMBOO TRAY", thereby making it
appear that petitioner was a branch or franchisee of the respondent.
On September 25, 2001, respondent filed with the IPO an application for registration of the
trademark “ELARS LECHON." Thereafter, on October 1, 2001, respondent filed two more
applications for the marks "ON A BAMBOO TRAY" and "ROASTED PIG DEVICE"
(collectively, subject marks). The mark "ROASTED PIG DEVICE" is a design or representation
of a roasted pig on a bamboo stick placed on top of a bamboo tray.

On October 2, 2001, respondent sent the petitioner a Cease and Desist Letter urging the latter
to stop using the subject marks or any variations thereof. However, petitioner ignored the
demand and continued selling its roasted pigs under the marks "ELARZLECHON," "ELAR
LECHON," "PIG DEVICE," and "ON A BAMBOO TRAY," thereby causing confusion as to the
source and origin of the products.

Thereafter, Elarfoods Inc sued petitioner Emzee Foods, Inc or unfair competition and violation
of intellectual property rights. Elarfood claimed that petitioner Emzee Food unfairly rode on
its fame, goodwill and reputation, causing its sales and profits to be diverted to petitioner.
The BLA Director dismissed the complaint on the ground that her office has no jurisdiction to
make a final determination on the matter considering that it is not a probate court.

Meanwhile, during the pendency of the proceedings before the BLA, particularly on February
10, 2005, April 28, 2006, and October 2, 2006, the IPO issued Certificates of Registration in
favour of the respondent for the marks "ON A BAMBOO TRAY", "ELARS LECHON" and
"ROASTED PIG DEVICE," respectively. Said Certificates are valid for a period of 10 years from
their respective dates of issuance.

On September 17, 2005, respondent sought reconsideration of BLA Director’s ruling, which
was denied in the latter's Resolution dated December 21, 2009. Hence, respondent filed an
appeal before the Office of the Director General.

The Director General reversed the Decision of the BLA, stating that there was no need for a
written assignment of the subject trademarks because the spouses Lontoc themselves, in their
desire to leave a legacy, incorporated and registered respondent with the SEC. As a result, all
rights and interests of the spouses Lontoc, Including the subject trademarks were transferred
to respondent. In fact, the spouses Lontoc actively managed respondent and represented to the
public that they were its owners. Even petitioner admitted that respondent is an alter ego of
the spouses Lontoc, implying that the rights and interests of respondent are identical and
inseparable from those of the spouses Lontoc.

Likewise, Director General explained that the requirement of a written of rights applies only if
the trademark is already registered, or has a pending application for registration.

Ultimately, IPO ruled against Petitioner Emzee Food. The Director General concluded that
petitioner's use of the trademarks constituted unfair competition during the time that the
marks were not yet registered, and trademark infringement, after their registration.
The CA affirmed the ruling of the IPO and noted that the IPO had already issued Certificate of
Registration for the subject trademarks and found petitioner liable for infringement

ISSUE:
Whether there is a need of a valid written assignment to transfer of trademark.

RULING:

NO, notably, this lacuna was filled by IPO Director General who explained that the fact of the
transfer may not be disproven by the absence of a written assignment. A trademark, like any
incorporeal right may be disposed of not only by way of formal assignment. More
importantly, the subject trademarks were not yet registered when respondent started doing
business under the Elar's Lechon brand. Neither was there a pending application for the said
trademarks. Besides, under Article 1624 of the Civil Code, in relation to Article 1475 of the
same Code, the assignment of incorporeal rights, like an unregistered mark, is perfected by
mere consent without need of a written contract. Thus, what matters is that from the time of
respondent's incorporation until present, respondent has used and exclusively appropriated
the subject trademarks as its own.

A mark pertains to "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."Particularly, 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." A
trademark is an intellectual property that deserves protection under the law.

Essentially, in the case of Zuneca clarified that, as the rule now stands, the lawful owner of the
mark shall be the person or entity who first registers it in good faith. It must be noted that
respondent Elarfoods filed applications for the registration of the subject trademarks "ON A
BAMBOO TRAY," "ELARS LECHON", and "ROASTED PIG DEVICE." Recognizing their
ownership of the said marks, the IPO granted the respondent Certificates of Registration. It
likewise bears stressing that even prior to the registration of the subject trademarks, the
respondent has been consistently using said marks since its incorporation in 1989. Hence, even
under the law applicable at that time, namely, Section 2-A of R.A. No.166, respondent's
consistent use of the subject trademarks confirms its ownership thereof.

It cannot be gainsaid that respondent corporation is a creation of the spouses Lontoc

themselves. In 1989, the spouses Lontoc wanted to leave their legacy, and thus incorporated
the respondent to ensure the continuation of their lechon and food business. From that
moment, the spouses Lontoc transferred to the respondent the ownership of ELARS Lechon
and the subject marks in connection with the sale of its roasted pigs and other products.
Moreover, all throughout their lives, the spouses Lontoc actively managed respondent and
consistently used the subject trademarks in promoting the latter's goods. Certainly, the
spouses Lontoc's overt acts of incorporating respondent, actively managing it, and consistently
representing to the public that ELARS Lechon is operating under the respondent, conclusively
prove that indeed the "ELARS LECHON" brand has been transferred to, and is owned by
respondent. As such, the respondent has the exclusive right to use the name ELARS LECHON
to the exclusion of all other parties, including the descendants of the spouses Lontoc.

Zuneca Pharmaceutical vs. Natrapharm

G.R. No. 211850
September 08, 2020

FACTS:

The case involves a dispute between the use and ownership of the confusingly similar marks “ZYNAPS” and
“ZYNAPSE”.
Zuneca Pharmaceutical (“Zuneca”) has been engaged in the sale of “ZYNAPS”, an anti-convulsant used to
control all types of seizure disorders like epilepsy [2] as early as 2004. Natrapharm, Inc. (“Natrapharm”), on
the other hand, has also been engaged in the sale of “ZYNAPSE” for the treatment of cerebrovascular
disease or stroke[3], and is the registrant of the “ZYNAPSE” mark which was registered with the Intellectual
Property Office of the Philippines (“IPO”) on 24 September 2007.
On 29 November 2007, Natrapharm filed a Trademark Infringement case against Zuneca, alleging that
“ZYNAPS” is confusingly similar to its registered trademark “ZYNAPSE”. While Zuneca argued that as the
first entity to use the mark in good faith, it was the rightful owner of the mark “ZYNAPS”.

ISSUE:

1. How is ownership over a trademark acquired?

2. Whether Zuneca should be held liable for trademark infringement (Whether the rights of the first-to-
file registrant Natrapharm defeat the rights of the prior user Zuneca, i.e., may Natrapharm prevent
Zuneca from using its mark?) (NO)

RULING:

No.

1. Ruling on How Trademark Ownership is Acquired

The Supreme Court held that the language of the Intellectual Property Code of the Philippines (“IP Code”)
clearly provides that ownership of a mark is acquired through registration. Furthermore, the Supreme
Court stated that the intention of the lawmakers was to abandon the rule that ownership of a mark is
acquired through prior use, and that the rule on ownership used in Berris Agricultural Co., Inc. v.
Abyadang (“Berris”) and E. Y. Industrial Sales, Inc. et al. v. Shen Dar Electricity and Machinery Co., Ltd. (“E. Y
Industrial Sales, Inc.”) is inconsistent with the IP Code regime of acquiring ownership through registration.

Section 122 of the IP Code provides how marks are acquired:

SECTION 122. How Marks are Acquired. -The rights in a mark shall be acquired  through registration made
validly in accordance with the provisions of this law. (Sec. 2-A, R.A. No. 166a) (Emphasis and underscoring
supplied)

The language of the IP Code as to the acquisition of ownership of a mark provides for a stark contrast with
that of the old Trademark Law, which provided that prior use and non-abandonment of a mark banned
future registration of an identical or confusingly similar mark by a different proprietor. Such a change
effectively connotes that prior use no longer determines acquisition.

While doubts have been expressed by Associate Justices Leonen and Lazaro-Javier over the supposed
abandonment of the requirement of actual use, the Supreme Court clarified that the filing of the Declaration
of Actual Use (“DAU”) is not a prerequisite for the acquisition of ownership of a mark as it is only necessary
to maintain ownership over the registered Trademark. On the other hand, the prima facie nature of the
Certificate of Registration (“COR”) is only meant to recognize the instances when the COR is no longer
reflective of the ownership of the holder thereof, such as, but not limited to, cases when the first registrant
subsequently lost its ownership due to non-use or abandonment.

Rule on Ownership – Berris and E. Y. Industrial Sales, Inc.

Zuneca erred in using the cases of Berris and E. Y Industrial Sales, Inc. as bases for its arguments.

The ruling in Berris was based on the fact that Berris, Inc. was the first to file the application and register the
mark under the IP Code. The fact of prior use was only mistakenly given undue weight.

On the other hand, the earliest dates of use by both parties in E. Y Industrial Sales, Inc.wereduring the
effectivity of the old Trademark Law, as amended. E.Y. Industrial Sales, Inc. had applied and registered the
mark under the IP Code, while Shen Dar Electricity and Machinery Co. Ltd. had applied for the mark under
the old Trademark Law.
Thus, both Berris and E. Y Industrial Sales, Inc. cannot be applied in cases where the marks of both parties are
used and/or registered under the IP Code.

Bad Faith in Trademark Registration and Use

Zuneca likewise claims that Natrapharm was in bad faith when they registered its mark with the IPO. In cases
of registration of a mark by means of fraud or bad faith, a party may pray for its cancellation at any time by
filing a petition for cancellation under Section 151 (b) of the IP Code,

“SECTION 151. Cancellation. – 151.1. A petition to cancel a registration of a mark under this Act may be filed
with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration
of a mark under this Act as follows:
xxx
(b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion
thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or
contrary to the provisions of this Act xxx

The presence of bad faith alone renders a trademark registration void because the marks should not have
been registered in the first place. Hence, even if the marks are registered subsequently, the registration will
not confer the registrant any of the rights under Section 147.1 of the IP Code.

As a rule, good faith is always presumed, and upon him who alleges bad faith on the part of a possessor rests
the burden of proof. In this case, not only was Natrapharm able to explain the origin of the name, it was also
able to show that it had checked the IMS-PPI, IPO, and Bureau of Food and Drug Administration Philippines
(“BFAD”) databases and found that there was no brand name which was confusingly similar to “ZYNAPSE”.

Since Natrapharm was not proven to have been in bad faith, it was thus considered to have acquired all the
rights of a trademark owner under the IP Code upon the registration of the “ZYNAPSE” mark.

2. Prior User in Good Faith

While Natrapharm is the owner of the “ZYNAPSE” mark, this does not, however, automatically mean that its
complaint against Zuneca is with merit. Prior users in good faith are also protected in the sense that they
will not be made liable for trademark infringement even if they are using a mark that was subsequently
registered by another person. Section 159.1 of the IP Code provides:
“Notwithstanding the provisions of Section 155 hereof, a registered mark shall have no effect against
any person who, in good faith, before the filing date or the priority date, was using the mark for the
purposes of his business or enterprise: Provided, That his right may only be transferred or assigned
together with his enterprise or business or with that part of his enterprise or business in which the
mark is used.

The application of Section 159.1 of the IP Code in the case at bar results in Zuneca’s exemption from liability
for trademark infringement.

Section 159.1 of the IP Code clearly contemplates that a prior user in good faith may continue to use its mark
even after the registration of the mark by the first-to-file registrant in good faith. In any event, the
application of Section 159.1 necessarily results in the co-existence of at least two entities – the unregistered
prior user in good faith, on one hand; and the first-to-file registrant in good faith on the other – using
identical or confusingly similar marks in the market at the same point in time, even if there exists the
likelihood of confusion.

Essentially, the decision indisputably pronounced that, under the IP Code, the ownership of a trademark is
acquired by its registration, with the exception created by Section 159.1 of the IP Code.

Co-Existence of Confusingly Similar Marks

The pronouncement of the Supreme Court allows clients and individuals interested in the registration of a
mark an assurance that, in the absence of bad faith, the approval of the registration of their proposed mark
will surely give rise to rights under the IP Code. Even if there may exist another individual or entity who make
use of the same or similar mark, the rights resulting from the registered mark will not be affected.

Nonetheless, the same ruling creates a scenario where a mark, which was successfully registered with the
IPO, may have the risk of being in co-existence with a confusingly similar mark, in the case where a prior user
in good faith exists.

In the case of Zuneca and Natrapharm, both parties engage in the sale of medicine – one an anti-convulsant,
while the other, a treatment for cerebrovascular disease. In such cases, the customers and patients go to the
pharmacy with the specific medicine and its purpose in mind. Likewise, the personnel handling the medicine
are professionals who have expertise over the matter, which may reduce the confusion that may arise from
the similarity of the marks.

However, should the same condition happen in a different market where customers and clients are not as
particular, the confusion created by the co-existence of the confusingly similar marks may defeat the very
purpose of the trademark, and may negatively affect the goodwill of the owner of the mark.

Awareness of IP rights
The Decision highlights the importance and necessity of trademark owners to be aware of their rights and to
register their marks as early as possible. While failure to register a mark may not deprive a prior user in good
faith of their trademark, the non-registration of such mark may create the absurdity of co-existence for the
same or confusingly similar mark owned by a later registrant. Granting co-existence may be better than
deprivation of rights over the mark, it is still best and prudent for the first user to take advantage of the
system of registration in the IP Code and register the mark avoiding the absurd situation of co-existence.

E.Y. INDUSTRIAL SALES, INC. and ENGRACIO YAP, PETITIONERS, -versus-

SHEN DAR ELECTRICITY AND MACHINERY CO., LTD., RESPONDENT. G.R.
No. 184850, FIRST DIVISION, October 20, 2010VELASCO, JR., J.

SUMMARY: EYIS is a domestic corporation engaged in the production, distribution

and sale of air compressors and other industrial tools and equipment. Petitioner
Engracio Yap is the Chairman of the Board of Directors of EYIS. Respondent Shen
Dar is a Taiwan-based foreign corporation engaged in the manufacture of air
compressors. Both companies claimed to have the right to register the trademark
"VESPA" for air compressors.
Under the law, the registration of a mark is prevented with the filing of an earlier
application for registration. This must not, however, be interpreted to mean that
ownership should be based upon an earlier filing date. While RA 8293 removed the
previous requirement of proof of actual use prior to the filing of an application for
registration of a mark, proof of prior and continuous use is necessary to establish
ownership of a mark. Such ownership constitutes sufficient evidence to oppose the
registration of a mark. Here, the incontrovertible truth, as established by the
evidence submitted by the parties, is that EYIS is the prior user of the mark. As
such, EYIS must be considered as the prior and continuous user of the mark
"VESPA" and its true owner. Hence, EYIS is entitled to the registration of the mark
in its name.
FACTS: EYIS is a domestic corporation engaged in the production, distribution and
sale of air compressors and other industrial tools and equipment. Petitioner
Engracio Yap is the Chairman of the Board of Directors of EYIS.
Respondent Shen Dar is a Taiwan-based foreign corporation engaged in the
manufacture of air compressors. Both companies claimed to have the right to
register the trademark "VESPA" for air compressors. From 1997 to 2004, EYIS
imported air compressors from Shen Dar through sales contracts.
There is no documentary evidence to show that such air compressors were marked
"VESPA." On June 9, 1997, Shen Dar filed a Trademark Application S with the IPO
for the mark "VESPA, Chinese Characters and Device" for use on air compressors
and welding machines.
On July 28, 1999, EYIS filed a Trademark Application also for the mark "VESPA,"
for use on air compressors.
On January 18, 2004, the IPO issued a Certificate of Registration (COR) in favor of
EYIS.
Thereafter, on February 8, 2007, Shen Dar was also issued a Certificate of
Registration (COR).
In the meantime, Shen Dar filed a Petition for Cancellation of EYIS COR with the
BLA. In the Petition, Shen Dar primarily argued that the issuance of the COR in
favor of EYIS violated Section 123.1 paragraphs (d), (e) and (f) of the Intellectual
Property Code (IP Code), having first filed an application for the mark.
Shen Dar further alleged that EYIS was a mere distributor of air compressors
bearing the mark "VESPA" which it imported from Shen Dar. Shen Dar also argued
that it had prior and exclusive right to the use and registration of the mark
"VESPA" in the Philippines under the provisions of the Paris Convention.
In its Answer, EYIS and Yap denied the claim of Shen Dar. They further alleged
that the air compressors that Shen Dar allegedly supplied them bore the mark
"SD" for Shen Dar and not "VESPA."
Moreover, EYIS argued that Shen Dar, not being the owner of the mark, could not
seek protection from the provisions of the Paris Convention or the IP Code. The
Director of the BLA issued its Decision in favor of EYIS and against Shen Dar.
Shen Dar appealed the decision of the BLA Director to the Director General of the
IPO. The IPO Director General issued a Decision upholding the COR issued in favor
of EYIS while cancelling the COR of Shen Dar Shen Dar appealed the above
decision of the IPO Director General to the CA.
In the assailed decision, the CA reversed the IPO Director General and ruled in
favor of Shen Dar. In ruling for Shen Dar, the CA ruled that, despite the fact that
Shen Dar did not formally offer its evidence before the BLA, such evidence was
properly attached to the Petition for Cancellation. As such, Shen Dar’s evidence
may be properly considered.
The CA also enunciated that the IPO failed to properly apply the provisions of Sec.
123.1 (d) of RA 8293, which prohibits the registration of a trademark in favor of a
party when there is an earlier filed application for the same mark.
The CA further ruled that Shen Dar should be considered to have prior use of the
mark based on the statements made by the parties in their respective Declarations
of Actual Use.
The CA added that EYIS is a mere importer of the air compressors with the mark
"VESPA" as may be gleaned from its receipts which indicated that EYIS is an
importer, wholesaler and retailer, and therefore, cannot be considered an owner of
the mark. EYIS filed a motion for reconsideration of the assailed decision which the
CA denied in the assailed resolution. Hence, the instant appeal

ISSUE: Whether the CA erred in denying the petitioner’s rights over the
trademark “VESPA”?
RULING: No, RA 8293 espouses the "first-to-file" rule as stated under Sec.
123.1(d) which states:
“Section 123. Registrability. - 123.1. A mark cannot be registered if it: x x x
x
(d) Is identical with a registered mark belonging to a different proprietor or
a mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or
cause confusion.”
Under this provision, the registration of a mark is prevented with the filing of an
earlier application for registration.
This must not, however, be interpreted to mean that ownership should be based
upon an earlier filing date. While RA 8293 removed the previous requirement of
proof of actual use prior to the filing of an application for registration of a mark,
proof of prior and continuous use is necessary to establish ownership of a mark.
Such ownership constitutes sufficient evidence to oppose the registration of a
mark. Sec. 134 of the IP Code provides that "any person who believes that he
would be damaged by the registration of a mark" may file an opposition to the
application. The term "any person" encompasses the true owner of the mark and
the prior and continuous user.
Notably, the Court has ruled that the prior and continuous use of a mark may even
overcome the presumptive ownership of the registrant and be held as the owner of
the mark. As aptly stated by the Court in Shangri-la International Hotel
Management, Ltd. v. Developers Group of Companies, Inc.:
“Registration, without more, does not confer upon the registrant an absolute
right to the registered mark. The certificate of registration is merely a prima
facie proof that the registrant is the owner of the registered mark or trade
name. Evidence of prior and continuous use of the mark or trade name by
another can overcome the presumptive ownership of the registrant and may
very well entitle the former to be declared owner in an appropriate case.
xxx”
Here, the incontrovertible truth, as established by the evidence submitted by the
parties, is that EYIS is the prior user of the mark. The exhaustive discussion on
the matter made by the BLA sufficiently addresses the issue: “Based on the
evidence, Respondent E.Y. Industrial is a legitimate corporation engaged in
buying, importing, selling, industrial machineries and tools, manufacturing, among
others since its incorporation in 1988. Indeed private respondents have submitted
photographs showing an assembly line of its manufacturing or assembly process.
More importantly, the private respondent’s prior adoption and continuous use of
the mark "VESPA" on air compressors is bolstered by numerous documentary
evidence consisting of sales invoices issued in the name of respondent EY
Industrial and Bills of Lading. Sales Invoice No. 12075 dated March 27, 1995
antedates petitioner’s date of first use in January 1, 1997 indicated in its
trademark application filed in June 9, 1997 as well as the date of first use in June
of 1996 as indicated in the Declaration of Actual Use submitted on December 3,
2001.
The use by respondent-registrant in the concept of owner is shown by commercial
documents, sales invoices unambiguously describing the goods as "VESPA" air
compressors. Private respondents have sold the air compressors bearing the
"VESPA" to various locations in the Philippines, as far as Mindanao and the Visayas
since the early 1990s.
We carefully inspected the evidence consisting of three hundred seventy one (371)
invoices and shipment documents which show that "VESPA" air compressors were
sold not only in Manila, but to locations such as Iloilo City, Cebu City, Dumaguete
City, Zamboanga City, Cagayan de Oro City, Davao City to name a few.
There is no doubt that it is through private respondents efforts that the mark
"VESPA" used on air compressors has gained business goodwill and reputation in
the Philippines for which it has validly acquired trademark rights. Respondent EY
Industrials right has been preserved until the passage of RA 8293 which entitles it
to register the same.
On the other hand, Shen Dar failed to refute the evidence cited by the BLA in its
decision. More importantly, Shen Dar failed to present sufficient evidence to prove
its own prior use of the mark "VESPA." As such, EYIS must be considered as the
prior and continuous user of the mark "VESPA" and its true owner. Hence, EYIS is
entitled to the registration of the mark in its name.

ZUNECA PHARMACEUTICAL, AKRAM ARAIN AND/OR VENUS ARAIN, M.D.,

AND STYLE OF ZUNECA PHARMACEUTICAL v. NATRAPHARM, INC.
G.R. No. 211850, 08 September 2020, EN BANC (Caguioa, J.)

DOCTRINE OF THE CASE

While Natrapharm is the owner of the “ZYNAPSE” mark, this does not,
however, automatically mean that its complaint against Zuneca should be
granted. This is because Sec. 159.1 of the IP Code clearly contemplates that a
prior user in good faith may continue to use its mark even after the registration of
the mark by the first-to-file registrant in good faith, subject to the condition that
any transfer or assignment of the mark by the prior user in good faith should be
made together with the enterprise or business or with that part of his enterprise
or business in which the mark is used. The mark cannot be transferred
independently of the enterprise and business using it.
From the provision itself, it can be gleaned that while the law recognizes the
right of the prior user in good faith to the continuous use of its mark for its
enterprise or business, it also respects the rights of the registered owner of the
mark by preventing any future use by the transferee or assignee that is not in
conformity with Section 159.1 of the IP Code.

FACTS
Natrapharm, an all-Filipino pharmaceutical company, manufactures and sells a
medicine with generic name “CITICOLINE” for heart and stroke patients, and
marketed under the trademark “ZYNAPSE” obtained from the Intellectual
Property Office under Certificate of Trademark Registration No. 4-2007-005596
granted on November 24, 2007. On the other hand, as early as 2001, and
unknown to Natrapharm, Zuneca Pharmaceutical, Arram Anain and/or Venus
Arain, had been selling a medicine imported from Pakistan, an anticonvulsant
under the generic name “CARBAMAZEPINE” under an unregistered trademark,
“ZYNAPS”, pronounced the same as “ZYNAPSE”.

Natrapharm, Inc. (Natrapharm) filed with the Regional Trial Court (RTC) a
Complaint against Zuneca Pharmaceutical, Akram Arain and/or Venus Arain,
M.D., and Style of Zuneca Pharmaceutical (Zuneca) for Injunction, Trademark
Infringement, Damages, and Destruction, alleging that Zuneca's "ZYNAPS" is
confusingly similar to its registered trademark "ZYNAPSE" and the resulting
likelihood of confusion is dangerous because the marks cover medical drugs
intended for different types of illnesses.

In its Answer, Zuneca claims that as the prior user, it had already owned the
“ZYNAPS” mark prior to Natrapharm’s registration of its confusingly similar mark,
thus, its rights prevail over the rights of Natrapharm.

The RTC ruled that the first filer in good faith defeats a first user in good
faith who did not file any application for registration. Hence, Natrapharm, as the
first registrant, had trademark rights over "ZYNAPSE" and it may prevent others,
including Zuneca, from registering an identical or confusingly similar mark.
Moreover, the RTC ruled that there was insufficient evidence that
Natrapharm had registered the mark "ZYNAPSE" in bad faith. Further, following
the use of the dominancy test, the RTC likewise observed that "ZYNAPS" was
confusingly similar to "ZYNAPSE." To protect the public from the disastrous
effects of erroneous prescription and mistaken dispensation, the confusion
between the two drugs must be eliminated.

On appeal, the Court of Appeals (CA) affirmed the Decision of the RTC.
Hence, the instant petition for review on Certiorari.
ISSUES
(1) How is ownership over a trademark acquired?
(2) Assuming that both parties owned their respective marks, do the rights of
the first-to-file registrant Natrapharm defeat the rights of the prior user
Zuneca?
(3) If so, should Zuneca be held liable for trademark infringement?

RULING

(1) Upon the effectivity of the IP Code on 01 January 1998, the manner of
acquiring ownership of trademarks is acquired through registration, as expressed
in Section 122 of the IP Code. To clarify, while it is the fact of registration which
confers ownership of the mark and enables the owner thereof to exercise the
rights expressed in Section 147 of the IP Code, the first-to-file rule nevertheless
prioritizes the first filer of the trademark application and operates to prevent any
subsequent applicants from registering marks described under Section 123.1 (d)
of the IP Code.

Reading together Sections 122 and 123.1 (d) of the IP Code, a registered
mark or a mark with an earlier filing or priority date generally bars the future
registration of — and the future acquisition of rights in — an identical or a
confusingly similar mark, in respect of the same or closely-related goods or
services, if the resemblance will likely deceive or cause confusion.

At present, prior use no longer determines the acquisition of ownership of a

mark. To emphasize, for marks that are first used and/or registered after the
effectivity of the IP Code, ownership is no longer dependent on the fact of prior
use in light of the adoption of the first-to-file rule and the rule that ownership is
acquired through registration.
 (2) NO. The presence of bad faith alone renders void the trademark
registrations. Accordingly, it follows as a matter of consequence that a mark
registered in bad faith shall be cancelled by the IPO or the courts, as the case
may be, after the appropriate proceedings.

This concept of bad faith, however, does not only exist in registrations. To
the mind of the Court, the definition of bad faith as knowledge of prior creation,
use, and/or registration by another of an identical or similar trademark is also
applicable in the use of trademarks without the benefit of registration.
Accordingly, such bad faith use is also appropriately punished in the IP Code as
can be seen in its unfair competition provisions. It is apparent, therefore, that the
law intends to deter registrations and use of trademarks in bad faith.

Concurrent with these aims, the law also protects prior registration and prior
use of trademarks in good faith. Being the first-to-file registrant in good faith
allows the registrant to acquire all the rights in a mark. This can be seen in
Section 122 vis-à-vis the cancellation provision in Section 155.1 of the IP Code.
Reading these two provisions together, it is clear that when there are no grounds
for cancellation — especially the registration being obtained in bad faith or
contrary to the provisions of the IP Code, which render the registration void —
the firstto-file registrant acquires all the rights in a mark. In the same vein, prior
users in good faith are also protected in the sense that they will not be made
liable for trademark infringement even if they are using a mark that was
subsequently registered by another person. This is expressed in Section 159.1 of
the IP Code.

At this point, it is important to highlight that the following facts were no

longer questioned by both parties:

(a) Natrapharm is the registrant of the "ZYNAPSE" mark which was

registered with the IPO on September 24, 2007;

(b) Zuneca has been using the "ZYNAPS" brand as early as 2004; and

(c) “ZYNAPSE" and "ZYNAPS" are confusingly similar and both are used for
medicines.
 In light of these settled facts, it is clear that Natrapharm is the first-to-file
registrant of "ZYNAPSE." Zuneca, on the other hand, is a prior user in good faith
of a confusingly similar mark, "ZYNAPS." What remains contentious is
Natrapharm's good or bad faith as Zuneca contends that the mark was
registered in bad faith by Natrapharm.

The rule is that when the registration was not obtained in bad faith or
contrary to the provisions of the IP Code, the first-to-file registrant in good faith
acquires all the rights in a mark. Here, Natrapharm was not shown to have been
in bad faith. Thus, it is considered to have acquired all the rights of a trademark
owner under the IP Code upon the registration of the "ZYNAPSE" mark.

(3) NO. While Natrapharm is the owner of the “ZYNAPSE” mark, this does
not, however, automatically mean that its complaint against Zuneca should be
granted. This is because Sec. 159.1 of the IP Code clearly contemplates that a
prior user in good faith may continue to use its mark even after the registration of
the mark by the first-to-file registrant in good faith, subject to the condition that
any transfer or assignment of the mark by the prior user in good faith should be
made together with the enterprise or business or with that part of his enterprise
or business in which the mark is used. The mark cannot be transferred
independently of the enterprise and business using it.

In any event, the application of Section 159.1 of the IP Code necessarily

results in at least two entities — the unregistered prior user in good faith or their
assignee or transferee, on one hand; and the first-to-file registrant in good faith
on the other — concurrently using identical or confusingly similar marks in the
market, even if there is likelihood of confusion. While this situation may not be
ideal, the Court is constrained to apply Section 159.1 of the IP Code as written.

To further reduce therefore, if not totally eliminate, the likelihood of switching

in this case, the Court hereby orders the parties to prominently state on the
packaging of their respective products, in plain language understandable by
people with no medical background or training, the medical conditions that their
respective drugs are supposed to treat or alleviate and a warning indicating what
"ZYNAPS" is not supposed to treat and what "ZYNAPSE" is not supposed to
treat, given the likelihood of confusion between the two.
WHEREFORE, premises considered, the petition is PARTLY GRANTED and the
Court hereby declares petitioners ZUNECA PHARMACEUTICAL AND/OR
AKRAM ARAIN AND/OR VENUS ARAIN, M.D., AND STYLE OF ZUNECA
PHARMACEUTICAL as the prior users in good faith of the "ZYNAPS" mark and
accordingly protected under Section 159.1 of the Intellectual Property Code of
the Philippines.

The assailed Decision and Resolution of the Court of Appeals in CA-G.R. CV No.
99787, which affirmed the Decision of the Regional Trial Court of Quezon City,
Branch 93 dated December 2, 2011, are AFFIRMED insofar as they declared
respondent NATRAPHARM, INC. as the lawful registrant of the "ZYNAPSE"
mark under the Intellectual Property Code of the Philippines, and are SET ASIDE
insofar as they hold petitioners liable for trademark infringement and damages,
directed the destruction of petitioners' goods, and enjoined petitioners from using
"ZYNAPS". Petitioners' application for the issuance of a Temporary Restraining
Order and/or Preliminary Injunction is DENIED.

ZUNECA PHARMACEUTICAL AND/OR AKRAM ARAIN AND/OR VENUS

ARAIN, M.D., AND STYLE OF ZUNECA PHARMACEUTICAL and
NATRAPHARM, INC. are likewise ORDERED to: (1) indicate on their respective
packaging, in plain language understandable by people with no medical
background or training, the medical conditions that their respective drugs are
supposed to treat or alleviate and a warning indicating what "ZYNAPS" is not
supposed to treat and what "ZYNAPSE" is not supposed to treat; and (2) submit
to the Court a written report showing compliance with this directive within thirty
(30) days from receipt of this Decision.

SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT vs. DEVELOPERS GROUP OF

COMPANIES, INC., G.R No. 159938, March 31, 2006.

FACTS At the core of the controversy are the "Shangri-La" mark and "S" logo. Respondent DGCI
claims ownership of said mark and logo in the Philippines on the strength of its prior use thereof within
the country. As DGCI stresses at every turn, it filed on October 1982 with the Bureau of Patents,
Trademarks and Technology Transfer (BPTTT) an application for registration covering the subject mark
and logo. On May 1983, the BPTTT issued in favor of DGCI. Since then, DGCI started using the
"Shangri-La" mark and "S" logo in its restaurant business. On the other hand, the Kuok family owns and
operates a chain of hotels with interest in hotels and hotel-related transactions since 1969. As far back as
1962, it adopted the name "Shangri-La" as part of the corporate names of all companies organized under
the aegis of the Kuok Group of Companies (the Kuok Group). The Kuok Group has used the name
"Shangri-La" in all Shangri-La hotels and hotelrelated establishments around the world which the Kuok
Family owned. To centralize the operations of all Shangri-la hotels and the ownership of the "Shangri-
La" mark and "S" logo, the Kuok Group had incorporated in Hong Kong and Singapore, among other
places, several companies that form part of the Shangri-La International Hotel Management Ltd. Group
of Companies. EDSA Shangri-La Hotel and Resort, Inc., and Makati Shangri-La Hotel and Resort, Inc.
were incorporated in the Philippines beginning 1987 to own and operate the two (2) hotels put up by the
Kuok Group in Mandaluyong and Makati, Metro Manila. All hotels owned, operated and managed by
the aforesaid SLIHM Group of Companies adopted and used the distinctive lettering of the name
"Shangri-La" as part of their trade names. Since 1975 and up to the present, the "Shangri-La" mark and
"S" logo have been used consistently and continuously by all Shangri-La hotels and companies in their
paraphernalia, such as stationeries, envelopes, business forms, menus, displays and receipts. The Kuok
Group and/or petitioner SLIHM caused the registration of, and in fact registered, the "Shangri-La" mark
and "S" logo in the patent offices in different countries around the world. On June 1988, the petitioners
filed with the BPTTT a petition praying for the cancellation of the registration of the "Shangri-La" mark
and "S" logo issued to respondent DGCI on the ground that the same were illegally and fraudulently
obtained and appropriated for the latter's restaurant business. They also filed in the same office praying
for the registration of the same mark and logo in their own names. Until 1987 or 1988, the petitioners
did not operate any establishment in the Philippines, albeit they advertised their hotels abroad since
1972 in numerous business, news, and/or travel magazines widely circulated around the world, all
readily available in Philippine magazines and newsstands. They, too, maintained reservations and
booking agents in airline companies, hotel organizations, tour operators, tour promotion organizations,
and in other allied fields in the Philippines. It is principally upon the foregoing factual backdrop that
respondent DGCI filed a complaint for Infringement and Damages with the RTC of Quezon City against
the herein petitioners SLIHM, Shangri-La Properties, Inc., Makati Shangri-La Hotel & Resort, Inc., and
Kuok Philippine Properties, Inc. Accordingly, DGCI sought to prohibit the petitioners, as defendants a
quo, from using the "ShangriLa" mark and "S" logo in their hotels in the Philippines. In their Answer
with Counterclaim, the petitioners accused DGCI of appropriating and illegally using the "Shangri-La"
mark and "S" logo, adding that the legal and beneficial ownership thereof pertained to SLIHM and that
the Kuok Group and its related companies had been using this mark and logo since March 1962 for all
their corporate names and affairs. In this regard, they point to the Paris Convention for the Protection of
Industrial Property as affording security and protection to SLIHM's exclusive right to said mark and
logo. They further claimed having used, since late 1975, the internationally-known and specially
designed "Shangri-La" mark and "S" logo for all the hotels in their hotel chain. While trial was in
progress, the petitioners filed with the court a motion to suspend proceedings on account of the
pendency before the BPTTT for the cancellation of DGCI's certificate of registration. For its part,
respondent DGCI filed a similar motion in that case, invoking in this respect the pendency of its
infringement case before the trial court. In a consolidated decision dated June 21, 2001, the Court,
limiting itself to the core issue of whether, despite the petitioners' institution of Inter Parties Case No.
3145 before the BPTTT, herein respondent DGCI "can file a subsequent action for infringement with the
regular courts of justice in connection with the same registered mark," ruled in the affirmative, but
nonetheless ordered the BPTTT to suspend further proceedings in said inter parties case and to await the
final outcome of the main case. Eventually, the trial court, on the postulate that petitioners', more
particularly petitioner SLIHM's, use of the mark and logo in dispute constitutes an infringement of
DGCI's right. Therefrom, the petitioners went on appeal to the CA. As stated at the threshold hereof, the
CA, in its assailed Decision of May 15, 2003, 7 affirmed that of the lower court with the modification of
deleting the award of attorney's fees. Petitioners then moved for a reconsideration, which motion was
denied by the CA.

ISSUE:
Whether the CA erred in refusing to consider that petitioners are entitled to protection under both R.A.
No. 166, the old trademark law, and the Paris Convention for the Protection of Industrial Property;
RULING:
One who has imitated the trademark of another cannot bring an action for infringement, particularly
against the true owner of the mark, because he would be coming to court with unclean hands. Priority is
of no avail to the bad faith plaintiff. Good faith is required in order to ensure that a second user may not
merely take advantage of the goodwill established by the true owner. This point is further bolstered by
the fact that under either Section 17 of R.A. No. 166, or Section 151 of R.A. No. 8293, or Article 6bis(3)
of the Paris Convention, no time limit is fixed for the cancellation of marks registered or used in bad
faith. This is precisely why petitioners had filed an inter partes case before the BPTTT for the
cancellation of respondent's registration, the proceedings on which were suspended pending resolution
of the instant case. Under Section 2, 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. Since "ownership" of the trademark is required for registration, Section 2-A of the same
law sets out to define how one goes about acquiring ownership thereof. Under Section 2-A, it is clear
that actual use in commerce is also the test of ownership but the provision went further by saying that
the mark must not have been so appropriated by another. Additionally, it is significant to note that
Section 2-A does not require that the actual use of a trademark must be within the Philippines. Hence,
under R.A. No. 166, as amended, one may be an owner of a mark due to actual use thereof but not yet
have the right to register such ownership here due to failure to use it within the Philippines for two
months. While the Philippines was already a signatory to the Paris Convention, the IPC only took effect
on January 1, 1988, and in the absence of a retroactivity clause, R.A. No. 166 still applies
G.R. No. 194307               November 20, 2013
BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG (formerly BIRKENSTOCK
ORTHOPAEDIE GMBH), Petitioner,
vs.
PHILIPPINE SHOE EXPO MARKETING CORPORATION, Respondent.
DECISION
PERLAS-BERNABE, J.:
FACTS:
Petitioner Birkenstock, a corporation duly organized and existing under the laws of Germany
applied for various trademark registrations before the Intellectual Property Office (IPO).
However, the applications were suspended in view of the existing registration of the mark
“BIRKENSTOCK AND DEVICE” under Registration No. 56334 dated October 21, 1993 in the
name of Shoe Town International and Industrial Corporation, the predecessor-in-interest of
respondent Philippine Shoe Expo Marketing Corporation.
On May 27, 1997, Birkenstock filed a petition (Cancellation Case) for cancellation of
Registration No. 564334 on the ground that it is the lawful and rightful owner of the Birkenstock
marks. During its pendency, however, respondent Philippine Shoe Expo or it predecessor-in-
interest failed to file the required 10th  Year Declaration of Actual Use (10th Year DAU) for
Registration No. 56334 on or before October21, 2004, thereby resulting the cancellation of
such mark. Accordingly, the cancellation case was dismissed for being moot and academic
thereby paving the way for the publication of the subject applications.
In response, respondent Philippine Shoe Expo filed with the Bureau of Legal Affairs (BLA) of
the IPO three separate verified notices of opposition to the subject applications docketed as
Inter Partes Cases claiming, among others, it, together with its predecessor-in-interest, has
been using the Birkenstock marks in the Philippines for more than 16 years through the mark
“BIRKENSTOCK AND DEVICE”.
In its Decision, the BLA of the IPO sustained respondent’s opposition, thus ordering the
rejection of the subject applications  of Petitioner. Aggrieved, petitioner Birkinstock appealed to
the IPO Director General whereby in its decision, the latter reversed and set aside the ruling of
the BLA thus allowing the registration of the subject applications.
Finding the IPO Director General’s reversal of the BLA unacceptable, respondent  Philippine
Shoe Expo filed a petition for review with the Court of Appeals. In its decision dated June 25,
2010, the CA reversed and set aside the ruling of the IPO Director General and reinstated that
of the BLA. The petitioner Birkenstock filed a Motion for Reconsideration but was denied by
the CA.
Hence, this petition to the Supreme Court.
ISSUE:
 Whether or not the subject marks should be allowed registration in the name of the petitioner?
RULING: 
The court ruled in favour of the petitioner. Under Section 12 of Republic Act 166, it provides
that, “Each certificate of registration shall remain in force for twenty years: Provided, that the
registration under the provisions of this Act shall be cancelled by the Director, unless within
one year following the fifth, tenth and fifteenth anniversaries of the date of issue of the
certificate of registration, the registrant shall file in the Patent Office an affidavit showing that
the mark or trade-name is still in use or showing that its non-use is due to special circumstance
which excuse such non-use and is not due to any intention to abandon the same, and pay the
required fee.”
In the case at bar, respondent admitted that it failed to file the 10 th Year DAU for Registration
No. 56334 within the requisite period, or on or before October 21, 2004. As a consequence, it
was deemed to have abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK”. It must be emphasized that registration of a trademark, by itself, 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 the
validity of the registration. Such presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must give way to evidence to the contrary.
Besides, petitioner has duly established its true and lawful ownership of the mark
“BIRKENSTOCK”. It submitted evidence relating to the origin and history of “BIRKENSTOCK”
and it use in commerce long before respondent was able to register the same here in the
Philippines. Petitioner also submitted various certificates of registration of the mark
“BIRKENSTOCK” in various countries and that it has used such mark in different countries
worldwide, including the Philippines.
GREAT WHITE SHARK ENTERPRISES, INC
vs.
DANILO M. CARALDE, JR.

GR No. 192294

November 21, 2012

FACTS:
In 2002, Caralde filed before the BLA-IPO a trademark application seeking to register the mark "SHARK
& LOGO" for his manufactured goods under Class 25, such as slippers, shoes and sandals.
Petitioner Great White Shark, a foreign corporation registered under the law of Florida, USA, opposed the
application claiming to be the owner of the mark consisting of a representation of a shark, known as “GREG
NORMAN LOGO.”
Petitioner alleged that its world famous mark is confusingly similar, and is likely to deceive or confuse
the purchasing public into believing that Caralde’s goods are produced or originated from it, or are under its
sponsorship, to its damage and prejudice. Caralde countered that the subject marks are distinctively different from
each other and the only similarity was the word “shark” alone.
The BLA-IPO granted Caralde’s trademark application. On appeal, the BLA Director reversed the ruling
and rejected the same stating that the dominant feature in respondent’s mark is a depiction of shark shaded darkly,
with its body designed in a way to contain the letters “A” and “R” with the tail suggestive of the letter “K.”
The BLA Director noted that the marks’ dominant features have the overall impression that they are
strikingly similar to one another and the likelihood of confusion exists. The IPO Director General affirmed the
final rejection of Caralde’s application.
 On appeal, the CA reversed and set aside the foregoing decision ruling that Caralde’s mark is more
fanciful and colorful, and contains several elements, which are easily distinguishable from that of Great White
Shark. Their price disparity also forecloses confusion, said the appellate court.
ISSUE:
Whether or not Caralde’s mark is confusingly similar to that of Great White Sharks, and should
thus be denied registration (NO).
RULING:
In determining similarity and likelihood of confusion, case law has developed the Dominancy Test and
the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of the ordinary purchaser,
and gives more consideration to 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.
In contrast, the Holistic or Totality Test considers the entirety of the marks as applied to the products,
including the labels and packaging, and focuses not only on the predominant words but also on the other features
appearing on both labels to determine whether one is confusingly similar to the other as to mislead the ordinary
purchaser. The "ordinary purchaser" refers to one "accustomed to buy, and therefore to some extent familiar with,
the goods in question."
Irrespective of both tests, the Court finds no confusing similarity between the subject marks. While both
marks use the shape of a shark, the Court noted distinct visual and aural differences between them. In Great White
Shark's "GREG NORMAN LOGO," there is an outline of a shark formed with the use of green, yellow, blue and
red lines/strokes.
In contrast, the shark in Caralde's "SHARK & LOGO" mark is illustrated in letters outlined in the form of
a shark with the letter "S" forming the head, the letter "H" forming the fins, the letters "A" and "R" forming the
body, and the letter "K" forming the tail. In addition, the latter mark includes several more elements such as the
word "SHARK" in a different font underneath the shark outline, layers of waves, and a tree on the right side, and
liberally used the color blue with some parts in red, yellow, green and white. The whole design is enclosed in an
elliptical shape with two linings.
As may be gleaned from the foregoing, the visual dissimilarities between the two (2) marks are evident
and significant, negating the possibility of confusion in the minds of the ordinary purchaser, especially
considering the distinct aural difference between the marks.
Finally, there being no confusing similarity between the subject marks, the matter of whether Great White
Shark’s mark has gained recognition and acquired becomes unnecessary. Besides, both the BLA Director and the
IPO Director General have ruled that Great White Shark failed to meet the criteria under Rule 102 of the Rules
and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers to establish
that its mark is well-known, and the latter failed to show otherwise.
A trademark device is 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. Apart from its
commercial utility, the benchmark of trademark registrability is distinctiveness. Thus, a generic figure, as that of a
shark in this case, if employed and designed in a distinctive manner, can be a registrable trademark device,
subject to the provisions of the IP Code.
Corollarily, Section 123.1(d) of the IP Code provides that a mark cannot be registered if it is identical
with a registered mark belonging to a different proprietor with an earlier filing or priority date, with respect to the
same or closely related goods or services, or has a near resemblance to such mark as to likely deceive or cause
confusion.
_____________________________________________________________________________________
 Taiwan Kolin Corp. vs. Kolin Electronics

GR 209843

March 25, 2015

TOPIC: Marks that cannot be registered (Sec. 123.1, IPC) ; Confusingly similar marks

FACTS:

● On February 29, 1996, 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
which fall in Classification 9 of Nice Classification (NCL).

● On July 13, 2006, respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner’s
application and argued that the mark Taiwan Kolin seeks to register is identical, if not
confusingly similar, with its "KOLIN" mark registered on November 23, 2003.

● Respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner’s application and
argued:
- that it should be accorded the benefits of a foreign-registered mark under Secs. 3 and 131.1
of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines (IP Code) ;
- that it has already registered the "KOLIN" mark in the other countries, all of which are
parties to the Paris Convention for the Protection of Industrial Property (Paris Convention)
and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); and
- that benefits accorded to a well-known mark should be accorded to petitioner

BLA-IPO : denied the petitioner’s application.

- Citing Sec. 123(d) of the IP Code,11 the BLA-IPO 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.12

IPO DIRECTOR GENERAL: reversed the decision of BLA-IPO

- Held that the product classification alone cannot serve as the decisive factor in the resolution of
whether or not the goods are related.

CA: reversed the decision of IPO DIRECTOR

 - 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
-
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.

a. The products covered by petitioner’s application and respondent’s registration are unrelated

- A certificate of trademark registration confers upon the trademark owner the exclusive right to sue those
who have adopted a similar mark not only in connection with the goods or services specified in the
certificate, but also with those that are related thereto
-
- The court stressed at this point that the list of products included in Class 9  can be sub-categorized into five
41

(5) classifications, namely: (1) apparatus and instruments for scientific or research purposes, (2) information
technology and audiovisual equipment, (3) apparatus and devices for controlling the distribution and use of
electricity, (4) optical apparatus and instruments, and (5) safety equipment.  From this sub-classification, it
42

becomes apparent that petitioner’s products, i.e., televisions and DVD players, belong to audio visiual
equipment, while that of respondent, consisting of automatic voltage regulator, converter, recharger, stereo
booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC, generally fall under
devices for controlling the distribution and use of electricity.

b. The ordinarily intelligent buyer is not likely to be confused

In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to another, no rigid set
rules can plausible be formulated.

Each case must be decided on its merits, with due regard to the goods or services involved, the usual
purchaser’s character and attitude, among others. In such cases, even more than in any other litigation, precedent
must be studied in the light of the facts of a particular case. That is the reason why in trademark cases, jurisprudential
precedents should be applied only to a case if they are specifically in point.  
43

For a clearer perspective and as matter of record, the following image on the left  is the trademark applied
44

for by petitioner, while the image juxtaposed to its right  is the trademark registered by respondent:
45
 While both competing marks refer to the word "KOLIN" written in upper case letters and in bold font, the
Court at once notes the distinct visual and aural differences between them: Kolin Electronics’ mark is italicized and
colored black while that of Taiwan Kolin is white in pantone red color background. The differing features between the
two, though they may appear minimal, are sufficient to distinguish one brand from the other.

In the case at bar , generally speaking, various kinds of electronic products.

These are not ordinary consumable household items, like catsup, soy sauce or soap which are of minimal
cost.  The products of the contending parties are relatively luxury items not easily considered affordable. Accordingly,
46

the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase.
Confusion and deception, then, is less likely.

WHEREFORE, in view of the foregoing, the petition is hereby GRANTED.

OTHERS:

In the case of Mighty corporation, 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.
 Levi Strauss & Co. v. Antonio Sevilla and Antonio Guevarra
GR No. 219744; March 1, 2021
Perlas-Bernabe, J.

Topic: Marks that cannot be registered: Confusingly similar marks

FACTS
Petitioner Levi Strauss & Co. is a foreign corporation which owns the foreign brand “Levi’s”. It has
extensively and continuously used the mark since 1946 on goods covered by Class 25, namely, men's,
women's, and children's overalls, jackets, outer skirts, coats, slacks, and pants; women's and children's blouses, outer shorts,
pedal pushers, vests, skirts and culottes; and women's bras.

It granted Levi Strauss Phils. Inc. (LSPI), a non-exclusive license to use its foreign brand here in the
Philippines.

Meanwhile, Antonio Sevilla (Sevilla) and Antonio L. Guevarra (together, the “respondents”) are the
registered owners of the trademark LIVE’S. They are doing business under the name and style Vogue
Traders Clothing Company. Co-respondent Antonio Sevilla appeared to be the original recipient of
Certificate of Registration of trademark “LIVE'S” also covering goods under Class 25.

LSPI then commissioned a consumer survey codenamed “Project Cherokee 5” to determine if the
general public had mistaken marks used by other entities (such as LIVE’s mark) for that of petitioner’s
marks.

The Final Report on Project Cherokee 5 confirmed that the public indeed strongly identified the
“LEVI’S” mark with that of respondents’ mark, further revealing that 86% of the survey participants
associated the “LIVE’S” mark with “LEVI’S;” and 90% of said survey participants read the stylized
“LIVE’S” mark, i.e., as “LEVI’S.”

Consequently, Petitioner filed before the then-Bureau of Patents, Trademarks and Technology Transfer
(BPTTT, now the Intellectual Property Office) a Petition for Cancellation of the trademark LIVE’S
essentially on the ground that it is confusingly similar with petitioner’s “LEVI’S” mark.

Respondents countered that

● there are sufficient differences between the subject marks (differences in spelling and
pronunciation) ; and
● the purchasers of goods give due attention when they are purchasing (the target market of the
products are educated purchasers who closely scrutinize the products).

The IPO-BLA and IPO-DG denied the petition for cancellation finding no confusing similarity
between the two marks.
i. they are pronounced and spelled differently, and have different meanings; and
ii. LIVE'S jeans are priced much lower than LEVI'S jeans and are sold in different places.

Aggrieved, the petitioner appealed to the IPO-DG, which upheld the IPO-BLA ruling.
Hence, the petition for review before the CA, which dismissed the petition for being moot and academic
because the respondents have assigned their rights over the LIVE’S mark to a third person. MR was
likewise denied.

ISSUE: Whether the “LIVE’s” mark is confusingly similar with the petitioner “LEVI’s” mark and
hence must be cancelled (Yes)

RULING

The Rules of Procedure for Intellectual Property Rights Cases instructs that "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 determine
which predominates."

In this regard, Jurisprudence has developed 2 tests to aid the Court in ascertaining the existence of
similarity and likelihood of confusion, namely, the Dominancy Test, and the Holistic or Totality Test.

In Dy v. CA, the Court differentiated these tests as follows:

● 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.
● 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.”

In Kolin Electronics Co., Inc. v. Kolin Philippines International, lnc., the Court made it "crystal clear
that the Holistic Test in determining trademark resemblance has been abandoned.”

Applying the Dominancy Test in the case at bar, the Supreme Court reversed the ruling of the CA and
granted the petition for cancellation of the trademark LIVE’S, where it ratiocinated, that seeing the
dominant features of the two marks which both comprise of word marks and stylized marks, there is
likelihood of confusion between petitioner’s “LEVI’S” marks and respondents’ mark.
As may be seen in the above figures, the dominant feature of petitionei''s "LEVI'S" marks is the word
"levi's" composed of (5) letters, namely "L", "E", "V", ''I", and "S" with an apostrophe separating the
fourth and fifth letters. Notably, for petitioner' s stylized marks, the letter "E" is in lowercase format
with the rest in uppercase format.
On the other hand, the dominant feature of respondents' “LIVE’S” stylized mark is the word "live's" also
composed of the same (5) letters; and its only difference with petitioner's marks is that the positioning of
the letters "E" and "I" are interchanged. Furthermore, respondents' mark also depicts the letter "E" in
lowercase format with the rest in uppercase format.

From the foregoing, it is thus readily apparent that although petitioner’s and respondents’ marks are
neither spelled identically nor pronounced in the same way, nor possess the same meaning, they both
begin with the same letter and are in the possessive form as denoted by the apostrophe before the letter
“S” at the end, with only the second and fourth letters rearranged.
Simply put, respondents’ mark is but a mere anagram of petitioner’s “LEVI’S” marks.

It would not be far-fetched to imagine that a buyer, when confronted with such striking similarity would
be led to confuse one over the other. Thus, by simply applying the Dominancy Test, it can already be
concluded that there is a likelihood of confusion between petitioner's "LEVI' S" marks and respondents'
“LIVE’S” mark.
 ● As per the product labels, the two marks have “the same look and feel… from the color scheme, border used, fringe
banners, to even some of the textual additives surrounding the mark.” It added that the use of the number design
“105” with the LIVE’S mark is an imitation of LEVI’S “501” mark. The high court further stated that the LIVE’S
mark is a “mere colorable imitation” of the LEVI’S mark, which the law defines as “such a close or ingenious
imitation as to be calculated to deceive ordinary purchasers.”

---
Dominancy Test- relies not only on the visual but also on the aural and connotative comparisons and
overall impressions between the two trademarks.
G.R. No. 248021, September 30, 2020

PROSEL PHARMACEUTICALS & DISTRIBUTORS, INC., PETITIONER, VS. TYNOR DRUG

HOUSE, INC. RESPONDENT.

FACTS

Petitioner alleged that CEEGEEFER was an improved version of its previous product, Selvon C - a
product that was granted a Bureau of Food and Drugs (BFAD) Certificate of Product Registration on
December 3, 1999.

Although petitioner denied any confusing similarity between the two products in a Letter-Reply dated
April 13, 2007, petitioner still undertook to withdraw all of CEEGEEFER's promotional materials that
bore any resemblance to the trade box of CHERIFER.

Respondent claimed that it formulated CHERIFER in 1993 and incorporated its mark to its packages
since March 10, 1993.

In 2007, respondent received reports that petitioner is promoting and selling CEEGEEFER, whose logo
and packaging is similar, if not identical, to respondent's registered trademark and copyrighted
packaging. Thus, it sent petitioner a demand letter directing petitioner to stop distributing its products
using respondent's trademark and design.
The RTC dismissed respondent's complaint and lifted the Writ of Preliminary Injunction.

The RTC rejected respondent's claim that CEEGEEFER and CHERIFER are confusingly similar,
following the principle of idem sonans which is applicable when "the attentive ear finds difficulty in
distinguishing [two names] when pronounced," the RTC held that the parties' consumers are attentive
enough to distinguish between CEEGEEFER and CHERIFER.

The RTC ruled that there was no copyright infringement as the overall appearances of the subject
products do not substantially look alike. The RTC noted that the colors orange and yellow (which
CEEGEEFER and CHERIFER use, respectively) are easily associated with citrus, a source of vitamin C.
Citing Alhambra Cigar v. Mojica, the trial court ruled that respondent failed to prove that petitioner
tried to pass off CEEGEEFER as CHERIFER especially since CEEGEEFER was designed from its
predecessor product, Selvon C - a product that has been used since 1999.

The CA reversed the RTC and found petitioner liable for trademark infringement but was not found
liable for copyright infringement. Petitioner was also enjoined from using CEEGEEFER as a brand
name and from using the CHERIFER + Logo trademark in any of petitioner's goods.

The CA ruled that there was no unfair competition because petitioner indicated itself as the
manufacturer of CEEGEEFER. Hence, there was no attempt to deceive the public that the goods
originated from respondent.

ISSUE

Whether there is a confusing similarity between CHERIFER and CEEGEEFER's sound and spelling and
its logos.

Ruling of the Court

YES. Both names are confusingly similar in sound and spelling.

Petitioner's CEEGEEFER mark and packaging is a colorable imitation of respondent's CHERIFER +

Logo.

The logos used by the parties are the same strikingly similar. A side by side comparison of the pictures
in CHERIFER and CEEGEEFER show the right profile/side of a boy wearing a basketball jersey and a
baseball cap shooting a basketball on a hoop with their knees slightly bent and with the words that
start with the letters "H" and "M" on top in an arc that both have a different colored line in the middle.
Note, too, that both packages use orange and yellow.

Petitioner insists on minor differences (such as how the characters in both products are of different
body types or that the baseball caps were worn differently) to prove that there is no trademark
infringement.

This Court does not agree.

In the case of ABS-CBN Publishing, Inc. v. Director of Bureau of Trademarks, this Court acknowledged
how "in committing the infringing act, the infringer merely introduces negligible changes in an already
registered mark, and then banks on these slight differences to state that there was no identity or
confusing similarity, which would result in no infringement." Given the respective packages of
CHERIFER and CEEGEEFER shown above, it is indubitable that the two products are strikingly
similar.

Note that petitioner admitted a resemblance between CEEGEEFER and CHERIFER. In its letter-reply,
petitioner stated that "effective April 12, 2007, Prosel will immediately withdraw all promotional
materials of CEEGEEFER that bears any resemblance to the trade box of CHERIFER. Prosel will stop
using the logo in our Physician's Samples by immediately instructing Prosel people in field to remove
the boxes before giving them to doctors." Petitioner is thus estopped from taking a different stance.

The determining point in trademark infringement is a likelihood of confusion.

The fact that CEEGEEFER is idem sonans for CHERIFER is enough to violate respondent's right to
protect its trademark, CHERIFER.

Petitioner never showed proof of CEEGEEFER's trademark registration.

The only Certificate of Registration petitioner had over CEEGEEFER was one issued by BFAD which
has no authority over trademark infringement. Meanwhile, respondent secured a trademark
registration on CHERIFER as early as July 8, 2004. At that time, even petitioner's trademark registration
for Selvon-C (CEEGEEFER's alleged predecessor product) was not yet obtained - with Selvon-C's
trademark only registered on May 21, 2005.

The ponencia adopts the observations of Justice Leonen in Asia Pacific Resources International
Holdings, Ltd. v. Paperone, Inc. that there should be "objective, scientific, and economic standards
to determine whether goods or services offered by two parties are so related that there is a
likelihood of confusion."

CEEGEEFER's use of its brand name and packaging undeniably creates a likelihood of confusion with
CHERIFER.

The similarities are apparent:

(1) CHERIFER and CEEGEEFER are phonetically alike;

(2) the pictures on CHERIFER and CEEGEEFER's packages are practically indistinguishable - both
depicting the right profile or side of a boy wearing a basketball jersey and a baseball cap shooting a
basketball on a hoop with their knees slightly bent;
(3) both phrases on top of CHERIFER and CEEGEEFER's picture start with the letters "H" and "M" in an
arc that both have a different colored line in the middle;

(4) the packages have a drawing of a ribbon; and

(5) the packages use the colors orange and yellow.

More importantly, CHERIFER and CEEGEEFER are both over-the-counter vitamin supplements
promoting growth for children by including the CGF component. The addition of its star ingredient,
CGF, is what separates CEEGEEFER and CHERIFER from other children's vitamin supplements sold in
the market. The reason for CHERIFER's and CEEGEEFER's focus on a child's growth is simple: it
addresses one of a parent's main concerns for their early childhood and pre-adolescent children.

With CHERIFER and CEEGEEFER targeting the same relevant market (i.e., over-the-counter children's
growth vitamin supplement) and given their glaring similarities, CHERIFER and CEEGEEFER are
reasonably interchangeable and are almost perfect substitutes of each other.

Note, too, that since CHERIFER and CEEGEEFER are over-the-counter products (and were, in fact even
sold side-by-side in some establishments), the propensity to mistakenly purchase one for the other is
high.

WHEREFORE, the instant petition is DENIED. The Court of Appeals decisions are AFFIRMED with
MODIFICATION in that the award of nominal damages is REDUCED to P100,000.00. The awards of
P100,000.00 nominal damages and P100,000.00 attorney's fees shall earn a six percent (6%) annual
interest from the finality of this Decision until fully paid.

ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC., vs.

RENAUD COINTREAU & CIE and LE CORDON BLEU INT'L., B.V.,

G.R. No. 185830, June 5, 2013

FACTS:
On June 21, 1990, Cointreau, a partnership registered under the laws of France, filed before the (now
defunct) Bureau of Patents, Trademarks, and Technology Transfer (BPTTT) of the Department of Trade and
Industry a trademark application for the mark "LE CORDON BLEU & DEVICE". Such application was
published for opposition in the Gazette and released for circulation. On July 23, 1993, petitioner Ecole De
Cuisine Manille, Inc. (Ecole) filed an opposition to the subject application, averring that: (a) it is the owner of
the mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE," which it has been using since 1948 in
cooking and other culinary activities, including in its restaurant business; and (b) it has earned immense and
invaluable goodwill such that Cointreau’s use of the subject mark will actually create confusion, mistake, and
deception to the buying public as to the origin and sponsorship of the goods, and cause great and
irreparable injury and damage to Ecole’s business reputation and goodwill as a senior user of the same.

On October 7, 1993, Cointreau filed its answer claiming to be the true and lawful owner of the subject mark.
It averred that: (a) it has filed applications for the subject mark’s registration in various jurisdictions, including
the Philippines; (b) Le Cordon Bleu is a culinary school of worldwide acclaim which was established in Paris,
France in 1895; (c) Le Cordon Bleu was the first cooking school to have set the standard for the teaching of
classical French cuisine and pastry making; and (d) it has trained students from more than eighty (80)
nationalities, including Ecole’s directress, Ms. Lourdes L. Dayrit. Thus, Cointreau concluded that Ecole’s
claim of being the exclusive owner of the subject mark is a fraudulent misrepresentation.
During the pendency of the proceedings, Cointreau was issued Certificates of Registration. Bureau of Legal
Affairs (BLA) of the IPO sustained Ecole’s opposition to the subject mark, necessarily resulting in the
rejection of Cointreau’s application. The BLA did not find such evidence sufficient to establish Cointreau’s
claim of prior use of the same in the Philippines. It emphasized that the adoption and use of trademark must
be in commerce in the Philippines and not abroad. It then concluded that Cointreau has not established any
proprietary right entitled to protection in the Philippine jurisdiction because the law on trademarks rests upon
the doctrine of nationality or territoriality.

IPO Director General reversed and set aside the BLA’s decision. He held that a requirement for an actual
use of the subject mark in commerce in the Philippines for at least two (2) months before the filing date of
the application, only the owner thereof has the right to register the same, explaining that the user of a mark
in the Philippines is not ipso facto its owner.

The CA affirmed the IPO Director General’s Decision in toto. The CA likewise held that Cointreau’s right to
register the subject mark cannot be barred by Ecole’s prior use thereof as early as 1948 for its culinary
school "LE CORDON BLEU MANILLE" in the Philippines because its appropriation of the mark was done in
bad faith. Further, Ecole had no certificate of registration that would put Cointreau on notice that the former
had appropriated or has been using the subject mark.

ISSUE:
Whether the CA was correct in upholding the IPO Director General’s ruling that Cointreau is the true and
lawful owner of the subject mark and thus, entitled to have the same registered under its name?

HELD: NO
Under Section 2 of R.A. No. 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 two (2) months prior to the
application for registration. It is clear that actual use in commerce is also the test of ownership but the
provision went further by saying that the mark must not have been so appropriated by another. Additionally,
it is significant to note that Section 2-A does not require that the actual use of a trademark must be within
the Philippines. Thus, as correctly mentioned by the CA, under R.A. No. 166, one may be an owner of a
mark due to its actual use but may not yet have the right to register such ownership here due to the owner’s
failure to use the same in the Philippines for two (2) months prior to registration.

In view of the foregoing obligations under the Paris Convention, the Philippines is obligated to assure
nationals of the signatory-countries that they are afforded an effective protection against violation of their
intellectual property rights in the Philippines in the same way that their own countries are obligated to accord
similar protection to Philippine nationals. "Thus, under Philippine law, a trade name of a national of a
State that is a party to the Paris Convention, whether or not the trade name forms part of a
trademark, is protected "without the obligation of filing or registration.’"

In the instant case, it is undisputed that Cointreau has been using the subject mark in France since
1895, prior to Ecole’s averred first use of the same in the Philippines in 1948, of which the latter was
fully aware thereof.
G.R. No. 185917 June 1, 2011 FREDCO MANUFACTURING CORPORATION Petitioner,
vs. PRESIDENT AND FELLOWS OF HARVARD COLLEGE (HARVARD UNIVERSITY),
Respondents.
FACTS:
Petitioner Fredco Manufacturing Corporation (Fredco), a corporation organized and existing under the
laws of the Philippines, filed a Petition for Cancellation of Registration against respondents President
and Fellows of Harvard College (Harvard University), a corporation organized and existing under the
laws of Massachusetts, United States of America.
Fredco alleged that the mark "Harvard" for t-shirts, polo shirts, sandos, briefs, jackets and slacks was
first used in the Philippines on 2 January 1982 by New York Garments Manufacturing & Export Co.,
Inc. (New York Garments), a domestic corporation and Fredco’s predecessor-in-interest. On 24 January
1985, New York Garments filed for trademark registration of the mark "Harvard" for goods under Class
25. The application matured into a registration and a Certificate of Registration was issued on 12
December 1988.
Fredco alleged that the registration was cancelled on 30 July 1998 when New York Garments
inadvertently failed to file an affidavit of use/non-use on the fifth anniversary of the registration but the
right to the mark "Harvard" remained with its predecessor New York Garments and now with Fredco.
Harvard University, on the other hand, alleged that it is the lawful owner of the name and mark
"Harvard" in numerous countries worldwide, including the Philippines
The name and mark "Harvard" was adopted in 1639 as the name of Harvard College6 of Cambridge,
Massachusetts, U.S.A. The name and mark "Harvard" was allegedly used in commerce as early as 1872.
On 20 April 2004, Harvard University filed an administrative complaint against Fredco before the IPO
for trademark infringement and/or unfair competition with damages. Harvard University also filed a
Trademark Application.
Unfortunately, Bureau of Legal Affairs, IPO cancelled Harvard University’s registration. Thus, Harvard
University filed an appeal before the Office of the Director General of the IPO.
Director General, IPO reversed the decision of the Bureau of Legal Affairs.The Director General ruled
that more than the use of the trademark in the Philippines, the applicant must be the owner of the mark
sought to be registered. The Director General ruled that the right to register a trademark is based on
ownership and when the applicant is not the owner, he has no right to register the mark.
The Director General ruled that Fredco failed to explain how its predecessor New York Garments came
up with the mark "Harvard." In addition, there was no evidence that Fredco or New York Garments was
licensed or authorized by Harvard University to use its name in commerce or for any other use.
Fredco filed a petition for review before the Court of Appeals. The CA affirmed the decision of the
Office of the Director General of the IPO.
The appellate court ruled that Harvard University was able to substantiate that it appropriated and used
the marks "Harvard" and "Harvard Veritas Shield Symbol" in Class 25 way ahead of Fredco and its
predecessor New York Garments.
Fredco filed a motion for reconsideration but was denied for lack of merit.

ISSUE:
Whether Harvard’s alleged right over the “Harvard” trade name, even though not registered in the
Philippines, is protected under its IP laws.

RULING:
YES.
Article 6 and 8 of the Paris Convention states:
ARTICLE 6bis (i). The countries of the Union undertake either administratively if their legislation so
permits, or at the request of an interested party, to refuse or to cancel the registration and to prohibit the
use of a trademark which constitutes a reproduction, imitation or translation, liable to create confusion
or a mark considered by the competent authority of the country as being already the mark of a person
entitled to the benefits of the present Convention and used for identical or similar goods. These
provisions shall also apply when the essential part of the mark constitutes a reproduction of any such
well-known mark or an imitation liable to create confusion therewith.
ARTICLE 8 A trade name shall be protected in all the countries of the Union without the obligation
of filing or registration, whether or not it forms part of a trademark.
To be protected, an internationally well-known mark need not be registered or used in the Philippines.32
All that is required is that the mark is well-known internationally and in the Philippines for identical or
similar goods, whether or not the mark is registered or used in the Philippines.
Moreover, Section 123.1(e) of R.A. No. 8293 now categorically states that "a mark which is considered
by the competent authority of the Philippines to be well-known internationally and in the Philippines,
whether or not it is registered here," cannot be registered by another in the Philippines.
Here, Philippines and the United States of America are both signatories to the Paris Convention for the
Protection of Industrial Property (Paris Convention).
The fact that respondent’s marks are neither registered nor used in the Philippines is of no moment. The
scope of protection initially afforded by Article 6bis of the Paris Convention has been expanded in the
1999 Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, wherein
the World Intellectual Property Organization (WIPO) General Assembly and the Paris Union agreed to a
nonbinding recommendation that a well-known mark should be protected in a country even if the mark
is neither registered nor used in that country.

WILTON DY and/or PHILITES ELECTRONIC & LIGHTING PRODUCTS

VS KONINKLIJKE PHILIPS ELECTRONICS, N.V.
G.R. No. 186088, March 22, 2017
First Division, J. Sereno
Topic: Whether Mark is Well-Known

FACTS:

Petitioner Philites filed an application for a trademark over its fluorescent bulb, incandescent light,
starter and ballast. Respondent opposed the application on the ground that the mark sought to be
registered was identical to its registered and internationally well-known mark. It alleged that it will
mislead the public, and will violate its proprietary rights and interests, business reputation, and goodwill
over the trademark “PHILIPS”. Significantly, it argued that approval of the application was contrary to
Sections 123.l(d), (i) and (iii), 123.l(e), 147, and 168 of the IP Code.
The respondent argued that the word “PHILIPS” is the surname of the brothers who founded the
company. On the other hand, the petitioner maintained that “Philites” was coined from the word
‘Philippines’ and ‘lights.’

The IPP-BLA Director ruled in favor of the petitioner. In granting the trademark application, the BLA
reasoned that the subject marks were visually and aurally different. It pointed out the difference between
the marks of the parties. The respondent's shield mark has 4 stars and 3 wavy lines in the middle of the
circle. While none of these appeared in the petitioner’s mark.

This was affirmed by the IPP-DG. It was held that while the dominant features of the first syllables were
identical, the second syllables were not.

However, the Court of Appeals reversed the decision of the IPP-DG. It held that the marks were
confusingly similar, especially that both were for the same products.

ISSUE:

Whether the respondent’s mark was a registered and well-known mark in the Philippines.

RULING:

Yes, the Court held that it was.

Section 123 of the IP Code provides for marks that cannot be registered.

(e) of the said section provides: 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.

The court reiterated its ruling in Fredco Manufacturing Corporation v. Harvard University, the said
provision now categorically states that a mark considered by the competent authority of the Philippines
to be well-known internationally and in the Philippines, whether registered here or not, cannot be
registered by another in the country.

Further, Rule l00(a) of the Rules and Regulations on Trademarks, Service Marks, Tradenames and
Marked or Stamped Containers defines "competent authority" in the following manner:
(c) "Competent authority" for purposes of determining whether a mark is well-known, means the Court,
the Director General, the Director of the Bureau of Legal Affairs, or any administrative agency or office
vested with quasi-judicial or judicial jurisdiction to hear and adjudicate any action to enforce the rights
to a mark..

In connection therewith, the court has already held in the case of Philips Export B. V, v. CA, that
“PHILIPS” was a trademark or tradename which was registered as early as 1922 and has acquired the
status of a well-known mark in the Philippines and internationally.

Topic: Trademark

SEHWANI, INCORPORATED and/or BENITA'S FRITES, INC., Petitioner, vs.

IN-N-OUT BURGER, INC., Respondent.
G.R. No. 171053, October 15, 2007

FACTS:

Respondent IN-N-OUT Burger, Inc., a foreign corporation (California, U.S.A.) and not doing business in the
Philippines, filed before the Bureau of Legal Affairs of the IPO (BLA-IPO), an administrative complaint
against petitioners Sehwani, Inc. and Benita’s Frites, Inc. for violation of intellectual property rights,
attorney’s fees and damages with prayer for the issuance of a restraining order or writ of preliminary
injunction.

Respondent alleged that it is the owner of the tradename "IN-N-OUT" and trademarks "IN-N-OUT," "IN-N-
OUT Burger & Arrow Design" and "IN-N-OUT Burger Logo," which are used in its business since 1948 up to
the present. These tradename and trademarks were registered in the United States as well as in other parts
of the world.

When respondent applied with the IPO for the registration of its trademark "IN-N-OUT Burger & Arrow
Design" and servicemark "IN-N-OUT." It discovered that petitioner Sehwani, Inc. had obtained Trademark
Registration for the mark "IN N OUT" (THE INSIDE OF THE LETTER "O" FORMED LIKE A STAR) without
its authority. Respondent thus demanded that petitioner Sehwani, Inc. desist from claiming ownership of the
mark "IN-N-OUT" and to voluntarily cancel its Trademark Registration.
Petitioner Sehwani, Inc. however refused to accede to the demand and even entered into a Licensing
Agreement granting its co-petitioner Benita’s Frites, Inc. license to use for a period of five years the
trademark "IN-N-OUT BURGER" in its restaurant in Pasig City. Hence, respondent filed a complaint for
violation of intellectual property rights.

Petitioner answered with counterclaim:

- alleged that respondent lack the legal capacity to sue because it was not doing business in the
Philippines and that it has no cause of action because its mark is not registered or used in the
Philippines. Petitioner Sehwani, Inc. also claimed that as the registered owner of the "IN-N-OUT"
mark, it enjoys the presumption that the same was validly acquired and that it has the exclusive right
to use the mark. Moreover, petitioners argued that other than the bare allegation of fraud in the
registration of the mark, respondent failed to show the existence of any of the grounds for
cancellation thereof under Section 151 of Republic Act (R.A.) No. 8293, otherwise known as The
Intellectual Property Code of the Philippines.

- Bureau Director Estrellita ruled in favor of Respondent that it has the legal capacity to sue and that it
is the owner of the internationally well-known trademarks; however, she held that petitioners are not
guilty of unfair competition, thus the Bureau cancelled the registration of Sehwani.
The CA then proceeded to resolved the case on jurisdictional grounds not raised by the parties. The
appellate court declared that Section 163 of the IPO specifically confers upon the regular courts and not the
BLA-IPO, sole jurisdiction to hear and decide cases involving provisions of the IPO, particularly trademarks.
Consequently, the IPO Director General had no jurisdiction to rule in its decision dated Dec. 23, 2005 on
supposed violation of these provisions of the IPO.

ISSUES:

1. WON the respondent has the legal capacity to sue for the protection of its trademarks albeit it is not doing
business in the Philippines.

2. WON a ground exists for the cancellation of the Petitioner’s registration.

RULING:

1. Yes. Section 160 in relation to Section 3 of R.A. No. 8293, provides for the right of foreign corporations to
sue in trademark or services mark enforcement action, provided that it meets the requirement under Sec. 3
thereof, which are a) Any convention, treaty or agreement relation to intellectual property right or the
repression of unfair competition wherein Philippines is also a party; b) An extension therein of reciprocal
rights.

SECTION 3. International Conventions and Reciprocity. — Any person who is a national or who is domiciled
or has a real and effective industrial establishment in a country which is a party to any convention, treaty or
agreement relating to intellectual property rights or the repression of unfair competition, to which the
Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled
to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal
law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this
Act.

Moreover, Article 6 of the Paris Convention, which governs the protection of well-known trademarks, is a
self-executing provision and does not require legislative enactment to give effect in the member country.
The essential requirement therein is that the trademark must be well-known in the country where protection
is sought. The power to determine whether a trademark is well-known lies in the "competent authority of the
country of registration or use." This competent authority would be either the registering authority if it has the
power to decide this, or the courts of the country in question if the issue comes before a court.

The question of whether or not respondent’s trademarks are considered "well-known" is factual in nature,
involving as it does the appreciation of evidence adduced before the BLA-IPO. The settled rule is that the
factual findings of quasi-judicial agencies, like the IPO, which have acquired expertise because their
jurisdiction is confined to specific matters, are generally accorded not only respect, but, at times, even
finality if such findings are supported by substantial evidence.

In this case, Director Beltran-Abelardo found that In-n-out Burger and Arrow Design is an internationally
well-known mark as evidenced by its trademark registrations around the world and its comprehensive
advertisements therein.

2. Yes. Section 151(b) of RA 8293 provides that a petition to cancel a registration mark may be filed with the
Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a
mark at any time, if the registered mark becomes the generic name for the goods or services, or a portion
thereof, for which it is registered, or has been abandoned, or its registration was fraudulently or contrary to
the provisions of this Act, or if the registered mark is being used by or with the permission of the registrant
as to misrepresent the source of goods or service on or in connection with which the mark is used.
The evidence showed that not only did the petitioners use the IN-N-OUT Burger trademark for the name of
their restaurant, but they also used identical or confusingly similar mark for their hamburger wrappers and
french-fries receptacles, thereby effectively misrepresenting the source of the goods and services.

50. SOCIETE DES PRODUITS NESTLE, S.A. v CA and CFC CORP

FACTS:
CFC corporation filed with Bureau of Patents a registration of the Trademark “FLAVOR MASTER” for instant
coffee. Petitioner Societe Des Produits Nestle, a Swiss company registered under Swiss laws and
domiciled in Switzerland, filed an unverified Notice of Opposition, claiming that the trademark of respondent’s
product is confusingly similar to its Trademarks for coffee: “MASTER ROAST AND MASTER BLEND”. Nestle
Philippines also filed notice of opposition against the registration Petitioners argued that it would cause
confusion in trade, or deceive purchasers and would falsely suggest to the public a connection between the two
marks.

ISSUE:
Is the TM, FLAVOR MASTER, a colorable imitation of the TMs MASTER ROAST and MASTER BLEND?

RULING:
YES. The TM sought to be registered is likely to cause confusion.

A trademark has been generally defined as any word, name, symbol, or device adopted and used by a merchant
to identify his goods and distinguish them from those sold by others. Such is entitled to protection

Under the Philippine Trademark Law, the owner of a TM cannot register if it resembles a mark or trade-name
registered in the Philippines or a mark previously used and not abandoned WHICH IS LIKELY TO CAUSE
CONFUSION OR MISTAKE OR TO DECEIVE PURCHASERS.

The law prescribes a stringent standard proscribes registration if it causes confusing similarity, and if it is likely to
cause confusion or mistake or deceive purchasers. Colorable imitation denotes a close imitation as to be
calculated to deceive ordinary persons as to cause him to purchase the one supposing it to be the other.

In determining colorable imitation there are two tests: Dominancy Test and Holistic Test.

The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks; the
holistic test mandates the entirety of the marks in question must be considered in determining confusing
similarity.

The Dominancy test should be applied as it relies not only on the visual but also on the aural and connotative
comparisons and overall impressions between the two TMs.
 The word MASTER is the dominant feature which is neither a generic nor a descriptive term. As such said
term cannot be invalidated as a trademark and therefore, may be protected.
 Generic terms are those which constitute the common descriptive name of an article or substance and
are not legally protectable.
 The term MASTER is a suggestive which require imagination, thought, and perception to reach a
conclusion as to the nature of the goods.
  The term MASTER has acquired a certain connotation to mean the coffee products MASTER ROAST and
Master Blend produced by NESTLE. AS SUCH the use of CFC of the term “MASTER” is likely to cause
confusion or mistake.
UFC VS. FIESTA BARRIO MANUFACTURING
G.R. No. 198889
January 20, 2016
Topic: Generic Marks
FACTS:
Petitioner Nutri-Asia, Inc. and Respondent Fiesta Barrio Manufacturing Corporation are
corporations duly organized and existing under Philippine laws. Nutri-Asia is the emergent entity in a
merger with UFC Philippines, Inc. that was completed in February 2009.
On April 4, 2002, Fiesta filed an application 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.
On December 11, 2006, UFC filed with the IPO-BLA a Verified Notice of Opposition to the
above-mentioned application. UFC 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. UFC averred that Fiesta's use of "PAPA BOY & DEVICE" mark
for its lechon sauce product, if allowed, would likely lead the consuming public to believe that said
lechon sauce product originates from or is authorized by UFC, and that the "PAPA BOY & DEVICE"
mark is a variation or derivative of UFC's "PAPA" marks. UFC argued that this was especially true
considering that UFC's ketchup product and Fiesta's lechon sauce product are related articles that fall
under the same Class 30.

UFC alleged that the registration of Fiesta's challenged mark was also likely to damage the UFC,
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.

In its Verified Answer, Fiesta argued that there is no likelihood of confusion between UFC's
family of "PAPA" trademarks and Fiesta's "PAPA BOY & DEVICE" trademark.

Ruling of the IPO

After failure of amicable settlement between the parties, the IPO-BLA rendered a Decision
sustaining UFC's Opposition and rejecting Fiesta's application for "PAPA BOY & DEVICE."
Fiesta filed an appeal before the IPO Director General, who found it unmeritorious, and disposed
of the case.

Decision of the CA
As regards the first ground, the Court of Appeals held:
 Records show that UFC has Certificates of Registration for the trademarks PAPA, PAPA
BANANA CATSUP label and PAPA KETSARAP. A closer look at the respective Certificates of
Registration of the aforementioned marks, however, reveals that at the time the trademark application of
Fiesta was published in the IPO e-Gazette on September 8, 2006, the duration of the trademark
registration of UFC over the marks PAPA and PAPA BANANA CATSUP have already expired. On the
other hand, the mark PAPA KETSARAP was timely renewed by UFC as shown by the Certificate
of Renewal of Registration issued on September 1, 2006 by the Director of the Bureau of
Trademarks…Thus, UFC can still use the marks PAPA KETSARAP and PAPA BANANA
CATSUP.
Anent the second ground, the CA ruled:
After taking into account the aforementioned doctrines and the factual circumstances of
the case at bar, this Court, after considering the trademarks involved as a whole, is of the view
that Fiesta's trademark "PAPA BOY & DEVICE" is not confusingly similar to UFC's "PAPA
KETSARAP" and "PAPA BANANA CATSUP" trademark. Fiesta's trademark is "PAPA BOY" as a
whole as opposed to UFC's "PAPA". Although on its label the word "PAPA" is prominent, the
trademark should be taken as a whole and not piecemeal. The difference between the two marks is
conspicuous and noticeable. While UFC's products are both labeled as banana sauces, that of Fiesta is
labeled as lechon sauce.
Lastly, UFC avers that the word "PAPA" was coined after the surname of the person who first
created and made use of the mark. Admittedly, while "PAPA" is a surname, it is more widely known as
a term of endearment for one's father. UFC cannot, therefore, claim exclusive ownership over and
singular use of the term. Fiesta was able to explain that it adopted the word "PAPA" in parallel to the
nickname of the founder of Fiesta which is "MAMA CHIT". "PAPA BOY" was derived from the
nickname of one of the incorporators of Fiesta, a certain Bonifacio Ongpauco, son of Mama Chit.

ISSUE:
1. Whether the CA erred in applying the holistic test – YES
2. Whether PAPA BOY is confusingly similar to petitioner's PAPA mark – YES

RULING:
I.
In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., we defined 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 others." We held that a trademark is "an intellectual property deserving protection by law."
The rights of the trademark owner are found in the Intellectual Property Code, which provides:
Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to
prevent all third parties not having the owner's consent from using in the course of trade identical or
similar signs or containers for goods or services which are identical or similar to those in respect of
which the trademark is registered where such use would result in a likelihood of confusion. In case of
the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
Section 168. Unfair Competition, Rights, Regulation and Remedies. - 168.1. A person who has
identified in the mind of the public the goods he manufactures or deals in, his business or services from
those of others, whether or not a registered mark is employed, has a property right in the goodwill of the
said goods, business or services so identified, which will be protected in the same manner as other
property rights.
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:
RULE 18
Evidence in Trademark Infringement and Unfair Competition Cases
SECTION 1. Certificate of Registration. — A certificate of registration of a mark shall be prima
facie evidence of:
a) the validity of the registration;
b) the registrant's ownership of the mark; and
c) the registrant's exclusive right to use the same in connection with the goods or services and
those that are related thereto specified in the certificate.
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.
 "Colorable imitation" denotes such a close or ingenious imitation as to be calculated to deceive
ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other.
SECTION 5. Determination of Similar and Dissimilar Goods or Services. — Goods or services may not
be considered as being similar or dissimilar to each other on the ground that, in any registration or
publication by the Office, they appear in different classes of the Nice Classification.
In this case, the findings of fact of the highly technical agency, the Intellectual Property Office,
which has the expertise in this field, should have been given great weight by the Court of Appeals.
There are two tests used in jurisprudence to determine likelihood of confusion, namely the
dominancy test used by the IPO, and the holistic test adopted by the CA. In Skechers, U.S.A., Inc. v.
Inter Pacific Industrial Trading Corp., we held:
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.
Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2)
types of confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily
prudent purchaser would be induced to purchase one product in the belief that he was purchasing
the other; and (2) confusion of business (source or origin confusion), where, although the goods
of the parties are different, the product, the mark of which registration is applied for by one
party, is such as might reasonably be assumed to originate with the registrant of an earlier
product, and the public would then be deceived either into that belief or into the belief that there
is some connection between the two parties, though inexistent.
In Societe Des Produits Nestle, S.A. v. Court of Appeals, the Court held:
The totality or holistic test only relies on visual comparison between two trademarks whereas
the dominancy test relies not only on the visual but also on the aural and connotative
comparisons and overall impressions between the two trademarks.

Section 123. l(d) of the IP Code provides:

A mark cannot be registered if it:
(d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing
or priority date, in respect of:
i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion.
A scrutiny of petitioner's and respondent's respective marks would show that the IPO-BLA and
the IPO Director General correctly found the word "PAPA" as the dominant feature of petitioner's mark
"PAPA KETSARAP." Contrary to respondent's contention, "KETSARAP" cannot be the dominant
feature of the mark as it is merely descriptive of the product. Furthermore, it is the "PAPA" mark that
has been in commercial use for decades and has established awareness and goodwill among consumers.
We 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.
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 (McDonald's Corporation, et al., v. L. C. Big Mak Burger, Inc.,
et al.; Societe Des Produits Nestle, S. A." et al. v. Court of Appeals, et al.). If the competing trademark
contains the main or essential or dominant features of another, and confusion and deception is likely to
result, infringement takes place. (Lim Hoa v. Director of Patents; Co Tiong Sa v. Director of Patents, et
al.). Duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest
an effort to imitate (Lim Hoa v. Director of Patents, supra, and Co Liong Sa v. Director of Patents,
supra). Actual confusion is not required: Only likelihood of confusion on the part of the buying public is
necessary so as to render two marks confusingly similar so as to deny the registration of the junior mark
(Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft).
II.
The records bear the following:
1. Registration No. 32416 issued for the mark "PAPA" under Class 29 goods was deemed expired as of
February 11, 2004. Application Serial No. 4- 2005-010788 was filed on October 28, 2005 for the same
mark "PAPA" for Class 30 goods and Registration No. 42005010788 was issued on March 19,2007;
2. UFC was issued for the mark "PAPA BANANA CATSUP LABEL" on August 11, 1983
Registration No. SR-6282 for Class 30 goods in the Supplemental Register, which registration expired
in 2003. Application Serial No. 4-2006-012364 was filed for the mark "PAPA LABEL DESIGN" for
Class 30 goods on November 15, 2006, and Registration No. 42006012364 was issued on April 30,
2007; and
3. Lastly, Registration No. 34681 for the mark "PAPA KETSARAP" for Class 30 goods was issued on
August 23, 1985 and was renewed on August 23, 2005.

Though Fiesta was first to file the subject application on April 04, 2002 vis-a-vis the mark
"PAPA" the filing date of which is reckoned on October 28, 2005, and the mark "PAPA LABEL
DESIGN" the filing date of which is reckoned on November 15, 2006, UFC was able to secure a
registration for the mark "PAPA KETSARAP" on August 23, 1985 considering that Opposer was the
prior registrant and that its renewal application timely filed on August 23, 2005.

Pursuant to Section 123.l (d) of the IP Code, the application for registration of the subject mark
cannot be allowed considering that UFC was earlier registrant of the marks PAPA and PAPA
KETSARAP which registrations were timely renewed upon its expiration Fiesta’s mark "PAPA BOY
& DEVICE" is confusingly similar to UFC's mark "PAPA KETSARAP" and is applied to goods that
are related to UFC's goods, but UFC's mark "PAPA KETSARAP" was registered on August 23, 1985
per Certificate of Registration No. 34681, which registration was renewed for a period of 10 years
counted from August 23, 2005 per Certificate of Renewal of Registration No. 34681 issued on August
23, 2005. To repeat, UFC has already registered a mark which Fiesta's mark nearly resembles as to
likely deceive or cause confusion as to origin and which is applied to goods to which respondent-
applicant's goods under Class 30 are closely related.
Section 138 of the IP Code provides that a certificate of registration of a mark is prima
facie evidence of the validity of the registration, the registrant's ownership of the mark, and of the
registrant's exclusive right to use the same in connection with the goods and those that are related
thereto specified in the certificate.
We agree that respondent's mark cannot be registered. Respondent's mark is related to a product,
lechon sauce, an everyday all-purpose condiment and sauce, that is not subjected to great scrutiny and
care by the casual purchaser, who knows from regular visits to the grocery store under what aisle to find
it, in which bottle it is contained, and approximately how much it costs. Since petitioner's product,
catsup, is also a household product found on the same grocery aisle, in similar packaging, the public
could think that petitioner had expanded its product mix to include lechon sauce, and that the "PAPA
BOY" lechon sauce is now part of the "PAPA" family of sauces, which is not unlikely considering the
nature of business that petitioner is in. Thus, if allowed registration, confusion of business may set in,
and petitioner's hard-earned goodwill may be associated to the newer product introduced by respondent,
all because of the use of the dominant feature of petitioner's mark on respondent's mark, which is the
word "PAPA." The words "Barrio Fiesta" are not included in the mark, and although printed on the label
of respondent's lechon sauce packaging, still do not remove the impression that "PAPA BOY" is a
product owned by the manufacturer of "PAPA" catsup, by virtue of the use of the dominant feature. It is
possible that petitioner could expand its business to include lechon sauce, and that would be well within
petitioner's rights, but the existence of a "PAPA BOY" lechon sauce would already eliminate this
possibility and deprive petitioner of its rights as an owner of a valid mark included in the Intellectual
Property Code.

The CA likewise erred in finding that "PAPA," being a common term of endearment for one's
father, is a word over which petitioner could not claim exclusive use and ownership. The Merriam-
Webster dictionary defines "Papa" simply as "a person's father." True, a person's father has no logical
connection with catsup products, and that precisely makes "PAPA" as an arbitrary mark capable of
being registered, as it is distinctive, coming from a family name that started the brand several decades
ago. What was registered was not the word "Papa" as defined in the dictionary, but the word "Papa" as
the last name of the original owner of the brand. In fact, being part of several of petitioner's marks, there
is no question that the IPO has found "PAPA" to be a registrable mark.
Respondent had an infinite field of words and combinations of words to choose from to coin a
mark for its lechon sauce. While its claim as to the origin of the term "PAPA BOY" is plausible, it is not
a strong enough claim to overrule the rights of the owner of an existing and valid mark. Furthermore,
this Court cannot equitably allow respondent to profit by the name and reputation carefully built by
petitioner without running afoul of the basic demands of fair play.
 Wherefore, petition granted.
Title: Kensonic vs. Uniline

Topic:  

A mark cannot be registered if it: Consists exclusively of signs that are generic for the goods or services that they
seek to identify

Facts:

On June 15, 1999, Uni-Line filed an application for the registration of the mark "SAKURA" for amplifier, speaker,
cassette, cassette disk, video cassette disk, car stereo, television, digital video disk, VHS, and tape rewinder
falling under Class 9 of the Nice International Classification of Goods. Kensonic opposed Uni-Line's application
which was docketed as IPC No. 14-2004-00160 (IPC 1). The Director of the Bureau of Legal Affairs (BLA) rendered
Decision finding that Kensonic was the first to adopt and use the mark SAKURA since 1994 and thus rejecting
Uni-Line's application. The Decision became final and executory.

On June 6, 2002, Uni-Line filed an application for the registration of the trademark SAKURA for use on the
following:

Goods Nice Classification

Washing machines, high pressure washers, Class 07

vacuum cleaners, floor polishers, blender, electric
mixer, electrical juicer

Television sets, stereo components, DVD/VCD Class 09 

players, voltage regulators, portable generators,
switch breakers, fuse
Refrigerators, air conditioners, oven toaster, turbo Class 11
broiler, rice cooker, microwave oven, coffee maker,
sandwich/waffle maker, electric stove, electric fan, hot
& cold water dispenser, airpot, electric griller and
electric hot pot

Uni-Line's application was thereafter published, and there being no opposition thereto, Certificate of
Registration for the mark SAKURA effective March 18, 2006 was issued.

On September 7, 2006, Kensonic filed with the BLA a Petition for Cancellation of Uni-Line's Certificate of
Registration alleging that in October 1994, it introduced the marketing of SAKURA products in the Philippines
and that it owned said SAKURA products and was the first to use, introduce and distribute said products.
Kensonic also alleged that in IPC 1, it opposed Uni-Line's application to register SAKURA and was already
sustained by the Director General, which Decision is now final and executory. Kensonic further alleged that it is
the owner of a copyright for SAKURA and that since 1994, has maintained and established a good name and
goodwill over the SAKURA products.

BLA Decision:

BLA issued Decision, whereby it ruled in favor of Kensonic and against Uni-Line, and directed the cancellation
of Registration of the latter's SAKURA mark.

An examination of the SAKURA mark of Kensonic and that of Uni-Line revealed that the marks were
confusingly similar with each other; the goods sought to be covered by the SAKURA registration of Uni-Line
were related to the goods of Kensonic

IPO - Director General: (class 9 d pwede; class 7 and 11 pwede)

The Director General clarified that the marks of Uni-Line and Kensonic were similar if not identical; that
considering that IPC 1 already effectively ruled that the products registered by Uni-Line were goods related to
those covered by the registration of Kensonic, the registration of Uni-Line insofar as those products sought to
be registered under Class 09 were concerned was correctly cancelled;

that the registration of products of Uni-Line falling under Class 07 and Class 11 should not be cancelled because
the products were different from the goods registered under Class 09 in the name of Kensonic;

CA decision:

Court of Appeals (CA) affirmed the decision by the Director General of the Intellectual Property Office (IPO).

UNILINE Main Argument:

Uni-Line contends that the SAKURA mark could not be appropriated because it simply referred to cherry
blossom in Japanese and was thus a generic name that was not copyrightable; that it was grave error for the
IPO and the CA to rule that Kensonic owned the mark; and that voltage regulators, portable generators, switch
breakers and fuse were unrelated to Kensonic's products because Uni-Line's products were not electronic.

Issue:

Whether the sakura mark is registrable under Intellectual Property Code?

Ruling: Yes.

An examination of the pertinent laws also reveals that Uni-Line mistakenly argues that the SAKURA mark was
not capable of registration for being generic.

Section 123(h) of the Intellectual Property Code prohibits the registration of a trademark that consists
exclusively of signs that are generic for the goods or services that they seek to identify. It is clear from the law
itself, therefore, that what is prohibited is not having a generic mark but having such generic mark being
identifiable to the good or service.

Although SAKURA refers to the Japanese flowering cherry[16] and is, therefore, of a generic nature, such mark
did not identify Kensonic's goods unlike the mark in Asia Brewery, Inc., v. Court of Appeals. Kensonic's DVD or
VCD players and other products could not be identified with cherry blossoms. Hence, the mark can be
appropriated.

Kensonic's prior use of the mark since 1994 made it the owner of the mark, and its ownership cannot anymore
be challenged at this stage of the proceedings. Seeking the review of Kensonic's ownership would entail the
examination of facts already settled by the lower tribunals.

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 the case ruling that there was no trademark infringement or unfair competition.

The CA reversed the ruling on appeal by SMC, finding ABI guilty of infringement of trademark and
unfair competition. Ca restrained and enjoined ABI from manufacturing, putting up, selling, advertising,
offering or announcing for sale, or supplying Beer Pale Pilsen, or any similar preparation, manufacture
or beer in bottles and under labels substantially identical with or like the said bottles and labels of SMC.

The registered trademark of SMC for its pale pilsen beer is:
San Miguel Pale Pilsen With Rectangular Hops and Malt Design.

And as described by the trial court as “….a rectangular design [is] bordered by what appears to
be minute grains arranged in rows of three in which there appear in each corner hop designs. At the top
is a phrase written in small print "Reg. Phil. Pat. Off." and at the bottom "Net Contents: 320 Ml." The
dominant feature is the phrase "San Miguel" written horizontally at the upper portion. Below are the
words "Pale Pilsen" written diagonally across the middle of the rectangular design. In between is a coat
of arms and the phrase "Expertly Brewed." The "S" in "San" and the "M" of "Miguel," "P" of "Pale" and
"Pilsen" are written in Gothic letters with fine strokes of serifs, the kind that first appeared in the 1780s
in England and used for printing German as distinguished from Roman and Italic. Below "Pale Pilsen" is
the statement "And Bottled by" (first line, "San Miguel Brewery" (second line), and "Philippines" (third
line). 

ABI’s trademark is a rectangular design bordered by what appear to be buds of flowers with leaves. The
dominant feature is "Beer" written across the upper portion of the rectangular design. The phrase "Pale
Pilsen" appears immediately below in smaller block letters. To the left is a hop design and to the right,
written in small prints, is the phrase "Net Contents 320 ml." Immediately below "Pale Pilsen" is the
statement written in three lines "Especially brewed and bottled by" (first line), "Asia Brewery
Incorporated" (second line), and "Philippines" (third line).

Issue:
Whether the San Miguel Pale Pilsen with Rectangular Hops and Malt Design of ABI infringes SMC’s
trademark and commits unfair competition. NO

Ruling:

Infringement of trademark is a form of unfair competition. Section 22 of Trademark Law provides that: 

Sec. 22. Infringement, what constitutes. — Any person who 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 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 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, shall be
liable to a civil action by the registrant for any or all of the remedies herein provided.

This definition implies that only registered trade marks, trade names and service marks are protected
against infringement or unauthorized use by another or others. The use of someone else's registered
trademark, trade name or service mark is unauthorized, hence, actionable, if it is done "without the
consent of the registrant."

Infringement is determined by the "test of dominancy" rather than by differences or variations in the
details of one trademark and of another.

Similarity in size, form and color, while relevant, is not conclusive. If the competing trademark contains
the main or essential or dominant features of another, and confusion and deception is likely to result,
infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing
label should suggest an effort to imitate. The question at issue in cases of infringement of trademarks is
whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the
public or deceive purchasers. 

The dominant feature of SMC's trademark is the name of the product: SAN MIGUEL PALE PILSEN,
written in white Gothic letters with elaborate serifs at the beginning and end of the letters "S" and "M"
on an amber background across the upper portion of the rectangular design.

On the other hand, the dominant feature of ABI's trademark is the name: BEER PALE PILSEN, with the
word "Beer" written in large amber letters, larger than any of the letters found in the SMC label.

The trial court perceptively observed that the word "BEER" does not appear in SMC's trademark, just as
the words "SAN MIGUEL" do not appear in ABI's trademark. Hence, there is absolutely no similarity in
the dominant features of both trademarks.

Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be confusingly similar to
SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE PILSEN can possibly be deceived
that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC proving
otherwise.

The following other dissimilarities in the trade dress or appearance of the competing products abound:

(1) The SAN MIGUEL PALE PILSEN bottle has a slender tapered neck.
The BEER PALE PILSEN bottle has a fat, bulging neck.

(2) The words "pale pilsen" on SMC's label are printed in bold and laced letters along a diagonal band,
whereas the words "pale pilsen" on ABI's bottle are half the size and printed in slender block letters on a
straight horizontal band. (See Exhibit "8-a".).

(3) The names of the manufacturers are prominently printed on their respective bottles.
SAN MIGUEL PALE PILSEN is "Bottled by the San Miguel Brewery, Philippines," whereas BEER
PALE PILSEN is "Especially brewed and bottled by Asia Brewery Incorporated, Philippines."

(4) On the back of ABI's bottle is printed in big, bold letters, under a row of flower buds and leaves, its
copyrighted slogan:
"BEER NA BEER!"

Whereas SMC's bottle carries no slogan.

(5) The back of the SAN MIGUEL PALE PILSEN bottle carries the SMC logo, whereas the BEER
PALE PILSEN bottle has no logo.

(6) The SAN MIGUEL PALE PILSEN bottle cap is stamped with a coat of arms and the words "San
Miguel Brewery Philippines" encircling the same.

The BEER PALE PILSEN bottle cap is stamped with the name "BEER" in the center, surrounded by the
words "Asia Brewery Incorporated Philippines."

(7) Finally, there is a substantial price difference between BEER PALE PILSEN (currently at P4.25 per
bottle) and SAN MIGUEL PALE PILSEN (currently at P7.00 per bottle). One who pays only P4.25 for
a bottle of beer cannot expect to receive San Miguel Pale Pilsen from the storekeeper or bartender.

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.

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

The fact that BEER PALE PILSEN like SAN MIGUEL PALE PILSEN is bottled in amber-colored
steinie bottles of 320 ml. capacity and is also advertised in print, broadcast, and television media, does
not necessarily constitute unfair competition.

Unfair competition is 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.

The use of ABI of the steinie bottle, similar but not identical to the SAN MIGUEL PALE PILSEN
bottle, is not unlawful. MC did not invent but merely borrowed the steinie bottle from abroad and it
claims neither patent nor trademark protection for that bottle shape and design.

SMC's being the first to use the steinie bottle does not give SMC a vested right to use it to the exclusion
of everyone else. Being of functional or common use, and not the exclusive invention of any one, it is
available to all who might need to use it within the industry. Nobody can acquire any exclusive right to
market articles supplying simple human needs in containers or wrappers of the general form, size and
character commonly and immediately used in marketing such articles
That the ABI bottle has a 320 ml. capacity is not due to a desire to imitate SMC's bottle because that
bottle capacity is the standard prescribed under Metrication Circular No. 778, dated 4 December 1979,
of the Department of Trade, Metric System Board.

With regard to the white label of both beer bottles, ABI explained that it used the color white for its
label because white presents the strongest contrast to the amber color of ABI's bottle; it is also the most
economical to use on labels, and the easiest to "bake" in the furnace. No one can have a monopoly of the
color amber for bottles, nor of white for labels, nor of the rectangular shape which is the usual
configuration of labels. Needless to say, the shape of the bottle and of the label is unimportant. What is
all important is the name of the product written on the label of the bottle for that is how one beer may be
distinguished from the others.

SHANG PROPERTIES REALTY CORPORATION (formerly THE SHANG GRAND TOWER

CORPORATION) and SHANG PROPERTIES, INC. (formerly EDSA PROPERTIES
HOLDINGS, INC.), Petitioners,n vs. ST. FRANCIS DEVELOPMENT
CORPORATION, Respondent.
G.R. No. 190706
July 21, 2014
PERLAS-BERNABE, J.:

DOCTRINE
Unless secondary meaning has been established, a geographically-descriptive mark, due to its
general public domain classification, is perceptibly disqualified from trademark registration. 

FACTS
Respondents filed a complaint against petitioners for violation case for unfair competition and
opposition of the application for registration of the ST. FRANCIS SHANGRI-LA and SHANGRI-LA
PLACE. Respondent alleged that it has used the mark “ST. FRANCIS” to identify its numerous property
development projects that it has gained substantial goodwill with the public that consumers and traders
closely identify the said mark with its property development projects.

The use of the mark by petitioner constitutes unfair competition and fraudulent declaration.
Petitioners denied committing unfair competition. Respondent is barred from claiming ownership and
exclusive use because the same is geographically descriptive of the goods or services for which it is
intended to be used as both parties are located within St. Francis St. in Ortigas.

The BLA found petitioner to have committed an unfair competition towards the use of the ST
FRANCIS TOWERS but not THE ST. FRANCIS SHANGRI-LA PLACE. Further, "ST. FRANCIS,"
being a name of a Catholic saint, may be considered as an arbitrary mark capable of registration when
used in real estate development projects as the name has no direct connection or significance when used
in association with real estate.

The BLA neither deemed "ST. FRANCIS" as a geographically descriptive mark, opining that
there is no specific lifestyle, aura, quality or characteristic that the real estate projects possess except for
the fact that they are located along St. Francis St.
 On appeal before the Director-General of the Intellectual Property Office, the Director-General
affirmed the BLA ruling though it disagreed that there is no unfair competition on the use of the mark
ST. FRANCIS TOWERS. On appeal, the CA reversed the IPO Director-General ruling.

Further, the CA stated that even on the assumption that "ST. FRANCIS" was indeed a
geographically descriptive mark, adequate protection must still be given to respondent pursuant to the
Doctrine of Secondary Meaning

ISSUE
Whether or not petitioners are guilty of unfair competition in using the marks “THE ST.
FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE.”
RULING:

No. Section 168.1 qualifies who is entitled to protection against unfair competition. Section
168.2proceeds to the core of the provision, describing forthwith who may be found guilty of and subject
to an action of unfair competition. Section 168.3 goes on to specify examples of acts which are
considered as constitutive of unfair competition. Finally, Section 168.4 dwells on a matter of procedure
by stating that the "[t]he remedies provided by Sections 156,22 157,23 and 16124 shall apply mutatis
mutandis."

The concept of unfair competition, the passing off (or palming off) or attempting to pass off
upon the public of the goods or business of one person as the goods or business of another with the end
and probable effect of deceiving the public.’ Passing off (or palming off) takes place where the
defendant, by imitative devices on the general appearance of the goods, misleads prospective purchasers
into buying his merchandise under the impression that they are buying that of his competitors.

Here, the Court finds the element of fraud to be wanting; hence, there can be no unfair
competition. The CA’s contrary conclusion was faultily premised on its impression that respondent had
the right to the exclusive use of the mark "ST. FRANCIS," for which the latter had purportedly
established considerable goodwill. What the CA appears to have disregarded or been mistaken in its
disquisition, however, is the geographically descriptive nature of the mark "ST. FRANCIS" which thus
bars its exclusive appropriability, unless a secondary meaning is acquired.

The "true test" of unfair competition has thus been "whether the acts of the defendant have the
intent of deceiving or are calculated to deceive the ordinary buyer making his purchases under the
ordinary conditions of the particular trade to which the controversy relates."

Based on the foregoing, it is therefore essential to prove the existence of fraud, or the intent to
deceive, actual or probable, determined through a judicious scrutiny of the factual circumstances
attendant to a particular case.

Here, the Court finds the element of fraud to be wanting; hence, there can be no unfair
competition.

The CA’s contrary conclusion was faultily premised on its impression that respondent had the
right to the exclusive use of the mark "ST. FRANCIS," for which the latter had purportedly established
considerable goodwill.
 What the CA appears to have disregarded or been mistaken in its disquisition, however, is the
geographically descriptive nature of the mark "ST. FRANCIS" which thus bars its exclusive
appropriability, unless a secondary meaning is acquired XXX …said circumstance, by and of itself, does
not equateto fraud under the parameters of Section 168 of the IP Code as above-cited.

In fact, the records are bereft of any showing that petitioners gave their goods/services the
general appearance that it was respondent which was offering the same to the public. Neither did
petitioners employ any means to induce the public towards a false belief that it was offering
respondent’s goods/services. Nor did petitioners make any false statement or commit acts tending to
discredit the goods/services offered by respondent. In the case at hand, the parties are business
competitors engaged in real estate or property development, providing goods and services directly
connected thereto.

The "goods" or "products" or "services" are real estate and the goods and the services attached to
it or directly related to it, like sale or lease of condominium units, offices, and commercial spaces, such
as restaurants, and other businesses. For these kinds of goods or services there can be no description of
its geographical origin as precise and accurate as that of the name of the place where they are situated.

G.R. No. L-14761             January 28, 1961

ARCE SONS AND COMPANY, petitioner,

vs.
SELECTA BISCUIT COMPANY, INC., ET AL., respondents.

x---------------------------------------------------------x

G.R. No. L-17981             January 28, 1961

ARCE SONS AND COMPANY, plaintiff-appellee,

vs.
SELECTA BISCUIT COMPANY, INC., defendant-appellant.

Facts:

Respondent Selecta Biscuit Company applied for the registration of the word ‘SELECTA’ to be
used in its bakery products. Petitioner Arce Sons opposed on the ground it had continuously
used the mark ‘SELECTA’ and that it has already become identified with petitioner’s name and
business. Petitioner further contends that the marks are confusingly similar. Petitioner then
filed before the court a complaint of unfair competition against respondent which ruled in its
favor. On the other hand, the Director of Patents dismissed petitioner’s opposition.

Issue:

Whether or not petitioner’s mark has acquired secondary meaning in its favor.

Ruling: 
YES.

The word ‘SELECTA’, it is true, may be an ordinary or common word in the sense that may be
used or employed by any one in promoting his business or enterprise, but once adopted or
coined in connection with one’s business as an emblem, sign or device to characterize its
products, or as a badge of authenticity, it may acquire a secondary meaning as to be
exclusively associated with its products and business.  In this sense, its use by another may
lead to confusion in trade and cause damage to its business. And this is the situation of
petitioner when it used the word ‘SELECTA’ as a trade-mark. In this sense, the law gives its
protection and guarantees its use to the exclusion of all others.

The term ‘SELECTA’ may be placed at par with the words “Ang Tibay” which this Court has
considered not merely as a descriptive term within the meaning of the Trade-mark Law but as
a fanciful or coined phrase, or a trade-mark. And holding that respondent was entitled to
protection in the use of that trade-mark, this Court made the following comment:

Even if ‘Ang Tibay’, therefore, were not capable of exclusive appropriation as a trade-mark, the
application of the doctrine of secondary meaning could nevertheless be fully sustained
because, in any event, by respondent’s long and exclusive appropriation with reference to an
article on the market, because geographically or otherwise descriptive, might nevertheless
have been used so long and exclusively by one producer with reference to his article that, in
that trade and to that branch of the purchasing public, the word or phrase has come to mean
that article was his product.” (Ang v. Teodoro, supra.)

The rationale in the Ang Tibay case applies on all fours to the case of petitioner.

G.R. No. L-48226         December 14, 1942

ANA L. ANG, petitioner,
vs.
TORIBIO TEODORO, respondent.

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.

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.  the test employed by the
courts to determine whether noncompeting goods are or are not of the same class is confusion
as to the origin of the goods of the second user. Although two noncompeting articles may be
classified under two different classes by the Patent Office because they are deemed not to
possess the same descriptive properties, they would, nevertheless, be held by the courts to
belong to the same class if their simultaneous use on them of identical or closely similar trade-
marks would be likely to cause confusion as to the origin, or personal source, of the second
user's goods. They would be considered as not falling under the same class only if they are so
dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the
first user made the second user's goods.

Supreme court added that there can be unfair competition or unfair trading even if the goods
are non-competing, and that such unfair trading can cause injury or damage to the first user of
a given trade-mark, first, by prevention of the natural expansion of his business and, second,
by having his business reputation confused with and put at the mercy of the second user. Then
noncompetitive products are sold under the same mark, the gradual whittling away or
dispersion of the identity and hold upon the public mind of the mark created by its first user,
inevitably results. The original owner is entitled to the preservation of the valuable link
between him and the public that has been created by his ingenuity and the merit of his wares
or services. Experience has demonstrated that when a well-known trade-mark is adopted by
another even for a totally different class of goods, it is done to get the benefit of the reputation
and advertisements of the originator of said mark, to convey to the public a false impression of
some supposed connection between the manufacturer of the article sold under the original
mark and the new articles being tendered to the public under the same or similar mark. As
trade has developed and commercial changes have come about, the law of unfair competition
has expanded to keep pace with the times and the element of strict competition in itself has
ceased to be the determining factor. The owner of a trade-mark or trade-name has a property
right in which he is entitled to protection, since there is damage to him from confusion of
reputation or goodwill in the mind of the public as well as from confusion of goods. The
modern trend is to give emphasis to the unfairness of the acts and to classify and treat the
issue as a fraud.
Kensonic vs. Uni-line
G.R. No. 211820-21
June 6, 2018
FACTS:

Uni-Line filed an application for the registration of the mark “SAKURA” for amplifier, speaker, cassette,
cassette disk, video cassette disk, car stereo, television, digital video disk, mini component, tape deck,
compact disk charger, VHS, and tape rewinder falling under Class 9 of the Nice International Classification of
Goods. Kensonic opposed Uni-Line’s application.

BLA rendered a decision finding that Kensonic was the first to adopt and use the mark SAKURA since 1994
and thus rejecting Uni-Line’s application.

Uni-Line, however, contends that the SAKURA mark could not be appropriated because it simply referred to
cherry blossom in Japanese and was thus a generic name that was not copyrightable; that it was grave error
for to rule that Kensonic owned the mark.

ISSUE:

Whether “SAKURA” mark is capable of appropriation.

RULING:

YES.

Section 123(h) of the Intellectual Property Code prohibits the registration of a trademark that consists
exclusively of signs that are generic for the goods or services that they seek to identify. It is clear from the
law itself, therefore, that what is prohibited is not having a generic mark but having such generic mark being
identifiable to the good or service.

This, however, is not the situation herein. Although SAKURA refers to the Japanese flowering cherry and is,
therefore, of a generic nature, such mark dud not identify Kensonic’s goods unlike the mark in Asia Brewery
Case. Kensonic’s DVD or VCD players and other products could not be identified with cherry blossoms.
Hence, the mark can be appropriated.

MARVEZ COMMERCIAL CO. V. PETRA HAWPIA

18 SCRA 1178, 1966
FACTS:
1. On October 14, 1958, Petra Hawpia & Co., filed a petition for the
registration of the trademark "LIONPAS" used on medicated plaster,
with the Philippine Patent Office, asserting its continuous use in
the Philippines since June 9, 1958.

2. On July 24, 1959, Marvex Commercial Co., Inc., filed an opposition

alleging that the registration of such a trademark would:
a. violate its right to and interest in the trademark "SALONPAS"
which is registered under Certificate of Registration 5486,
issued on September 29, 1956, and
 b. That both trademarks when used on medicated plaster would
mislead the public as they are confusingly similar.

3. After due hearing, the Director of Patents dismissed the opposition

and gave due course to the petition, stating in part that "confusion,
mistake, or deception among the purchasers will not likely and
reasonably occur" when both trademarks are applied to medicated
plaster.
4. The oppositor moved to have the decision reconsidered but was
denied. The oppositor then interposed the present appeal.

ISSUES:
1. Is the applicant the owner of the trademark "LIONPAS"? NO
2. Is the trademark "LIONPAS" confusingly similar to the trademark
"SALONPAS"? YES

RULING:
1. Under sections 2 and 2-A of the Trade Mark Law, as amended, the
right to register trademarks, trade names, and service marks
by any person, corporation, partnership, or association
domiciled in the Philippines or in any foreign country, is based
on ownership, and the burden is upon the applicant to prove
such ownership (Operators, Inc. vs. The Director of Patents, et al.,
L-17901, Oct. 29, 1965).

There are two primary exhibits that were presented and examined
by the court:
a. Exhibit 5- letter sent by "OSAKA BOEKI KAISHA, LTD." to the
applicant which shows that OSAKA for a $1 consideration, has
assigned, ceded, and conveyed all its "rights, interests, and
goodwill in the trade name LIONPAS Medicated Plaster . . ." in
favor of the latter.
b. Exhibit 6- joint "SWORN STATEMENT" which appears to have
been executed by the presidents of "OSAKA BOEKI KAISHA,
LTD." and "ASUNARO PHARMACEUTICAL INDUSTRY CO.",
and tends to confirm the contents of exhibit 5.

Court’s Examination and Analysis:

a. Exh. 5 reveals that "OSAKA BOEKI KAISHA LTD.", the seller, is

merely a representative of the manufacturer "ASUNARO
 PHARMACEUTICAL INDUSTRY CO." There is no proof that as such
representative, the former has been authorized by the latter to sell
the trademark in question.
b. Exh. 5 on its face appears to have been signed only by someone
whose position in the company's "Sundries Dept." is not described;
the signature is not legible.
c. It is even contradicted by exh. 6 because exh. 5 shows that "OSAKA
BOEKI KAISHA, LTD." is a representative of "ASUNARO
PHARMACEUTICAL INDUSTRY CO." while exh. 6 asserts that it is
the owner of the trademark "LIONPAS".
d. Neither averment can be accorded the weight of an assignment of
ownership of the trademark in question under the Trade Mark Law.
Exh. 5 is not acknowledged. Exh. 6 does not bear the
acknowledgment contemplated by the aforesaid law, particularly by
the last paragraph of section 37 and paragraph 2 of section 31 of
R.A. 166, as amended, which provide as follows:

The registration of a mark under the provisions of this section

shall be independent of the registration in the country of origin
and the duration, validity or transfer in the Philippines of such
registration shall be governed by the provisions of this Act. (Sec.
37, last par.) (Emphasis ours)

The assignment must be in writing, acknowledged before a notary

public or other officer authorized to administer oaths or perform
other notarial acts and certified under the hand and official seal of
the notary or other officer. (Sec. 31, par. 2)

e. Although a sheet of paper is attached to exh. 6, on which is

typewritten a certification that the signatures of the presidents of
the two named companies (referring to the signatures in exh. 6)
"have been duly written by themselves", this sheet is unmarked,
unpaged, unsigned, undated and unsealed.
f. The SC thumbed the record in quest of any definitive evidence that
it is a correct translation of the Japanese characters found on
another unmarked and unpaged sheet, and have found none.

Conclusion:
Therefore, exhs. 5 and 6 are legally insufficient to prove that the
applicant is the owner of the trademark in question.
 The other evidence on record is just the same as exh. 6. Thus exh.
A states that the applicant is merely the "exclusive distributor" in
the Philippines of the "LIONPAS" penetrative plaster; exh. A-1
describes the applicant as the "Philippine sole distributor" of
"LIONPAS"; exh. B simply states that "LIONPAS" is "manufactured
exclusively for Petra Hawpia & Co. for distribution in the
Philippines."

Not being the owner of the trademark "LIONPAS" but being

merely an importer and/or distributor of the said penetrative
plaster, the applicant is not entitled under the law to register it
in its name (Operators, Inc. vs. Director of Patents, supra).

2. "SALONPAS" and "LIONPAS" are confusingly similar in sound.

Both these words have the same suffix, "PAS", which is used to
denote a plaster that adheres to the body with curative powers.
"Pas, being merely descriptive, furnishes no indication of the origin
of the article and therefore is open for appropriation by anyone
(Ethepa vs. Director of Patents, L-20635, March 31, 1966) and may
properly become the subject of a trademark by combination with
another word or phrase.

Two letters of "SALONPAS" are missing in "LIONPAS"; the first letter

a and the letter s. Be that as it may, when the two words are
pronounced, the sound effects are confusingly similar.

And where goods are advertised over the radio, similarity in sound
is of especial significance (Co Tiong Sa vs. Director of Patents, 95
Phil. 1 citing Nims, The Law of Unfair Competition and Trademarks,
4th ed., vol. 2, pp. 678-679). "The importance of this rule is
emphasized by the increase of radio advertising in which we are
deprived of help of our eyes and must depend entirely on the ear"
(Operators, Inc. vs. Director of Patents, supra).

The following random list of confusingly similar sounds in the

matter of trademarks, culled from Nims, Unfair Competition and
Trade Marks, 1947, vol. 1, will reinforce our view that "SALONPAS"
and "LIONPAS" are confusingly similar in sound: "Gold Dust" and
"Gold Drop"; "Jantzen" and "Jazz-Sea"; "Silver Flash" and "Supper-
Flash"; "Cascarete" and "Celborite"; "Celluloid" and "Cellonite";
 "Chartreuse" and "Charseurs"; "Cutex" and "Cuticlean"; "Hebe" and
"Meje"; "Kotex" and "Femetex"; "Zuso" and "Hoo Hoo". Leon Amdur,
in his book "TradeMark Law and Practice", pp. 419-421, cites, as
coming within the purview of the idem sonans rule, "Yusea" and "U-
C-A", "Steinway Pianos" and "Steinberg Pianos", and "Seven-Up"
and "Lemon-Up". In Co Tiong vs. Director of Patents, this Court
unequivocally said that "Celdura" and "Cordura" are confusingly
similar in sound; the SC held in Sapolin Co. vs. Balmaceda, 67 Phil.
795 that the name "Lusolin" is an infringement of the trademark
"Sapolin", as the sound of the two names is almost the same.

In the case at bar, "SALONPAS" and "LIONPAS", when spoken,

sound very much alike. The similarity of sound is sufficient
ground to rule that the two marks are confusingly similar when
applied to merchandise of the same descriptive properties (see
Celanese Corporation of America vs. E. I. Du Pont, 154 F. 2d. 146,
148).

The registration of "LIONPAS" cannot, therefore, be given due

course.

OTHERS:

3. Whether the applicant is correct to say that there is no justification

for the Supreme Court to disturb any finding made by the Director
of Patents on appeal.

No, although the Director of Patents is the official vested by

law with the power to administer the registration of
trademarks and trade names, his opinion on the matter of
similarity or dissimilarity of trademarks and tradenames is not
conclusive upon the Supreme Court which may pass upon such
determination.

G.R. No. 185917               June 1, 2011

FREDCO MANUFACTURING CORPORATION Petitioner,

vs.
PRESIDENT AND FELLOWS OF HARVARD COLLEGE (HARVARD
UNIVERSITY), Respondents.

CARPIO, J.:

Facts:

Petitioner Fredco Manufacturing filed a petition to cancel the registration of

respondent’s mark ‘Harvard Veritas Shield Symbol’ used in products such as
bags and t-shirts. Fredco alleges that the mark ‘Harvard’ was first used and
registered by New York Garments, a domestic corporation and its predecessor-
in-interest, used in its clothing articles. Respondent Harvard University on the
other hand, alleges that it is the lawful owner of the name and mark in numerous
countries worldwide including in the Philippines which was used in commerce as
early as 1872. Respondent further contend that it never authorized any person to
use its name or mark in connection with any goods in the Philippines. The IPO
Bureau of Legal Affairs cancelled respondent’s registration of the mark but only
over the goods which are confusingly similar with that of petitioner. IPO reversed
the decision. CA affirmed.

Issue:

Whether the respondent’s trade name is infringed.

Ruling: YES.

Fredco’s registration of the mark "Harvard" should not have been allowed
because Section 4(a) of R.A. No. 166 prohibits the registration of a mark "which
may disparage or falsely suggest a connection with persons, living or dead,
institutions, beliefs x x x." Section 4(a) of R.A. No. 166 provides:

Section 4. Registration of trade-marks, trade-names and service- marks on the

principal register. ‒ There is hereby established a register of trade-mark, trade-
names and service-marks which shall be known as the principal register. The
owner of a trade-mark, a trade-name or service-mark used to distinguish his
goods, business or services from the goods, business or services of others shall
have the right to register the same on the principal register, unless it:

(a) Consists of or comprises immoral, deceptive or scandalous manner, or matter

which may disparage or falsely suggest a connection with persons, living or
dead, institutions, beliefs, or national symbols, or bring them into contempt or
disrepute…
Fredco’s use of the mark “Harvard,” coupled with its claimed origin in
Cambridge, Massachusetts, obviously suggests a false connection with Harvard
University. On this ground alone, Fredco’s registration of the mark “Harvard”
should have been disallowed. Indisputably, Fredco does not have any affiliation
or connection with Harvard University, or even with Cambridge, Massachusetts.
Fredco or its predecessor New York Garments was not established in 1936, or in
the U.S.A. as indicated by Fredco in its oblong logo.
Under Philippine law, a trade name of a national of a State that is a party to
the Paris Convention, whether or not the trade name forms part of a trademark,
is protected “without the obligation of filing or registration.” “Harvard” is the trade
name of the world famous Harvard University, and it is also a trademark of
Harvard University. Under Article 8 of the Paris Convention, as well as Section
37 of R.A. No. 166, Harvard University is entitled to protection in the Philippines
of its trade name “Harvard” even without registration of such trade name in the
Philippines. This means that no educational entity in the Philippines can use the
trade name “Harvard” without the consent of Harvard University. Likewise, no
entity in the Philippines can claim, expressly or impliedly through the use of the
name and mark “Harvard,” that its products or services are authorized, approved,
or licensed by, or sourced from, Harvard University without the latter’s consent.

WHEREFORE, we DENY the petition. We AFFIRM the 24 October 2008

Decision and 8 January 2009 Resolution of the Court of Appeals in CA-G.R. SP
No. 103394.
SOCIETE DES PRODUITS NESTLE, S.A., Petitioner, vs. MARTIN T. DY, JR., Respondent.
G.R. No. 172276 - August 8, 2010

Facts:
• Martin Dy Jr., imports and repackages Sunny Powdered Milk from Australia and sells them under the
name “NANNY”. NANNY retails primarily in parts of Visayas and Mindanao.
• Nestle, is a foreign corporation organized under the laws of Switzerland and owns the trademark
“NAN” for its line of infant formula. Nestle allocates a substantial amount of resources for the
production and promotion of the NAN product line.
• Nestle wrote a letter to Dy Jr. asking him to stop using the name “NANNY”, they allege that it
infringes upon the trademark ownership of Nestle over the trademark “NAN”. He refused to recognize
Nestle’s request and continued using the name “NANNY”.
• Nestle filed a case with the RTC of Dumaguete City. The case was dismissed and elevated to the CA,
the appellate court remanded the case to the trial court for adjudication. It was assigned to the RTC-
Cebu Special Commercial Court.
• The Commercial Court found Dy Jr., liable for trademark infringement on the grounds that even
though it is not apparent in the packaging of NANNY, the name itself relates to a child’s nurse, which is
closely related to the product line of NAN catering to infants.
• The case was then raised to the CA, which reversed the RTC’s ruling. It stated that even though there
is similarity in the products, the lower price range of NANNY cautions and reminds the purchaser that it
is different from NAN, which is more expensive. This does not create confusion as to the consumers
because the apparent difference in price shows that they are two different products.
Issue:
W/N the product name NANNY infringes upon the trademark of Nestle’s NAN.
Held:
Yes, the decision of the RTC is reinstated. There is no question that the product will cause confusion
within the consuming public. The primary test that should be used in determining trademark
infringement in this case is the dominancy test. It is apparent that upon first glance or even at close
inspection that there is confusing similarity between NAN and NANNY.
This is sufficient to establish trademark infringement. The dominancy test states:
This Court has relied on the dominancy test rather than the holistic test. The dominancy test considers
the dominant features in the competing marks in determining whether they are confusingly similar.
Under the dominancy test, courts give greater weight to the similarity of the appearance of the product
arising from the adoption of the dominant features of the registered mark, disregarding minor
differences. 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.
It has been consistently held that the question of infringement of a trademark is to be determined by the
test of dominancy. Similarity in size, form and color, while relevant, is not conclusive. If the competing
trade mark contains the main or essential or dominant features of another, and confusion and deception
is likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary
that the infringing label should suggest an effort to imitate.
It is incorrect to consider the prices, which the CA utilized in its determination. It is enough that if both
products were placed in front of the consumer, confusion will most likely arise. From this either
similarities or differences in the logo or design are immaterial to the fact that co-relation and
subsequently confusion, has been created in the minds of the consumer.
The Court agrees with the lower courts that there are differences between NAN and NANNY: (1) NAN
is intended for infants while NANNY is intended for children past their infancy and for adults; and (2)
NAN is more expensive than NANNY. However, as the registered owner of the "NAN" mark, Nestle
should be free to use its mark on similar products, in different segments of the market, and at different
price levels.
G.R. No. 190065               August 16, 2010
DERMALINE, INC., Petitioner,
vs.
MYRA PHARMACEUTICALS, INC. Respondent.
DECISION
NACHURA, J.:

FACTS:
On October 21, 2006, petitioner Dermaline, Inc. (Dermaline) filed before the Intellectual Property Office
(IPO) an application for registration of the trademark "DERMALINE DERMALINE, INC." (Application
No. 4-2006011536). On May 8, 2007, respondent Myra Pharmaceuticals, Inc. (Myra) filed a Verified
Opposition4 alleging that the trademark sought to be registered by Dermaline so resembles its
trademark "DERMALIN" and will likely cause confusion, mistake and deception to the purchasing
public.

Resoondent alleged that the registration of Dermaline’s trademark will violate Section 123 5 of Republic
Act (R.A.) No. 8293 (Intellectual Property Code of the Philippines). It further alleged that Dermaline’s
use and registration of its applied trademark will diminish the distinctiveness and dilute the goodwill of
Myra’s "DERMALIN," registered with the IPO way back July 8, 1986, renewed for ten (10) years on July
8, 2006. Moreover, it has been extensively using "DERMALIN" commercially since October 31, 1977,
and said mark is still valid and subsisting. Further, it claimed that despite Dermaline’s attempt to
differentiate its applied mark, the dominant feature is the term "DERMALINE," which is practically
identical with its own "DERMALIN," more particularly that the first eight (8) letters of the marks are
identical, and that notwithstanding the additional letter "E" by Dermaline, the pronunciation for both
marks are identical. Respondent also alleged both marks have three (3) syllables each, with each
syllable identical in sound and appearance, even if the last syllable of "DERMALINE" consisted of four
(4) letters while "DERMALIN" consisted only of three (3).
Myra also pointed out that Dermaline applied for the same mark "DERMALINE" on June 3, 2003 and
was already refused registration by the IPO. By filing this new application for registration, Dermaline
appears to have engaged in a fishing expedition for the approval of its mark. Myra argued that its
intellectual property right over its trademark is protected under Section 1476 of R.A. No. 8293.

Dermaline countered that a simple comparison of the trademark "DERMALINE DERMALINE, INC." vis-
à-vis Myra’s "DERMALIN" trademark would show that they have entirely different features and
distinctive presentation, thus it cannot result in confusion, mistake or deception on the part of the
purchasing public. It contended that, in determining if the subject trademarks are confusingly similar, a
comparison of the words is not the only determinant, but their entirety must be considered in relation to
the goods to which they are attached, including the other features appearing in both labels. It claimed
that there were glaring and striking dissimilarities between the two trademarks, such that its trademark
"DERMALINE DERMALINE, INC." speaks for itself (Res ipsa loquitur). Dermaline further argued that
there could not be any relation between its trademark for health and beauty services from Myra’s
trademark classified under medicinal goods against skin disorders. However, application for the mark
‘DERMALINE, DERMALINE, INC. was rejected.

Aggrieved, Dermaline filed a motion for reconsideration, but it was denied the it appealed to the Office
of the Director General of the IPO but the same was dismissed for being filed out of time. Undaunted,
Dermaline appealed to the CA, but CA likewise denied Dermaline’s motion for reconsideration.

Hence, this petition raising the issue of whether the CA erred in upholding the IPO’s rejection of
Dermaline’s application for registration of trademark.

ISSUE:
Whether application for application of Dermaline be allowed.

HELD:
No. In rejecting the application of Dermaline for the registration of its mark "DERMALINE DERMALINE,
INC.," the IPO applied the Dominancy Test. It declared that both confusion of goods and service and
confusion of business or of origin were apparent in both trademarks. Dermaline’s insistence that its
applied trademark "DERMALINE DERMALINE, INC." had differences "too striking to be mistaken" from
Myra’s "DERMALIN" cannot, therefore, be sustained. While it is true that the two marks are presented
differently – Dermaline’s mark is written with the first "DERMALINE" in script going diagonally upwards
from left to right, with an upper case "D" followed by the rest of the letters in lower case, and the portion
"DERMALINE, INC." is written in upper case letters, below and smaller than the long-hand portion;
while Myra’s mark "DERMALIN" is written in an upright font, with a capital "D" and followed by lower
case letters – the likelihood of confusion is still apparent. This is because they are almost spelled in the
same way, except for Dermaline’s mark which ends with the letter "E," and they are pronounced
practically in the same manner in three (3) syllables, with the ending letter "E" in Dermaline’s mark
pronounced silently. Thus, when an ordinary purchaser, for example, hears an advertisement of
Dermaline’s applied trademark over the radio, chances are he will associate it with Myra’s registered
mark.

Further, Dermaline’s stance that its product belongs to a separate and different classification from
Myra’s products with the registered trademark does not eradicate the possibility of mistake on the part
of the purchasing public to associate the former with the latter, especially considering that both
classifications pertain to treatments for the skin.

Thus, the public may mistakenly think that Dermaline is connected to or associated with Myra, such
that, considering the current proliferation of health and beauty products in the market, the purchasers
would likely be misled that Myra has already expanded its business through Dermaline from merely
carrying pharmaceutical topical applications for the skin to health and beauty services.
Societe Des Produits Nestle v. Dy, Jr.
G.R. No. 172276
August 8, 2010

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 respondent is liable for trademark infringement. (YES)

RULING: 

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.

Etepha vs. Director of Patents

16 SCRA 495 (1966)

Petitioner: Etepha, A. G.

Respondents: DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC.

TOPIC: Colorable Imitation of a Mark

FACTS:

Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of trademark "Atussin"
placed on its "medicinal preparation for treatment of cough". The trademark has been used exclusively in the
Philippines since January 21, 1959.

Etepha, A. G., a Liechtenstin corporation, objected claiming that:

- It will be damaged because Atussin is so confusedly similar to its Pertussin which was issued on
September 25, 1957 and used on a preparation for the treatment of coughs, that the buying
public will be misled into believing that Westmont's product is that of petitioner's which
allegedly enjoys goodwill.
ISSUE: Whether Atussin may be registered as a trademark

RULING: YES.

The validity of a cause for infringement is predicated upon colorable imitation.

The phrase “colorable imitation” denotes such a “close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such
attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.”

            While “tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly become
the subject of a trademark “by combination with another word or phrase.”

The court looked at the two labels:

Etepha’s label

- underscores the trademark Atussin in bold, block letters horizontally

written.

Westmont’s label:

- Pertussin is printed diagonally upwards and across in semiscript style with flourishes and with
only the first letter "P" capitalized.

Pronunciation:

Pertussin:

- pronunciation of the prefix "Per", includes a combination of three letters

P, e and r;

Atussin :

- the whole thing starts with the single letter A added to the suffix "tussin".

            The two labels are entirely different in colors, contents, arrangement of words thereon, sizes, shapes and
general appearance. The contrasts in pictorial effects and appeals to the eye is so pronounced that the label of
one cannot be mistaken for that of the other, not even by persons unfamiliar with the two trademarks.
 It is the common practice in the drug and pharmaceutical industries to 'fabricate' marks by using
syllables or words suggestive of the ailments for which they are intended and adding thereto distinctive prefixes
or suffixes.

Wherefore, giving due course to the application for the registration of trademark ATTUSIN is hereby
affirmed.

OTHERS:

That the word “tussin” figures as a component of both trademarks is nothing to wonder at. The Director
of Patents aptly observes that it is “the common practice in the drug and pharmaceutical industries to ‘fabricate’
marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto
distinctive prefixes or suffixes”. And appropriately to be considered now is the fact that, concededly, the “tussin”
(in Pertussin and Atussin) was derived from the Latin root-word “tussis” meaning cough.

“Tussin” is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the
goods; it is open for appropriation by anyone. It is accordingly barred from registration as trademark. With
jurisprudence holding the line, we feel safe in making the statement that any other conclusion would result in
“appellant having practically a monopoly” of the word “tussin” in a trademark. While “tussin” by itself cannot
thus be used exclusively to identify one’s goods, it may properly become the subject of a trademark “by
combination with another word or phrase”. And this union of words is reflected in petitioner’s  Pertussin  and
respondent’s Atussin, the first with prefix “Per” and the second with Prefix “A.”

Emerald Garment Manufacturing Corporation v. CA, Bureau of Patents, Trademarks and Technology
Transfer, and H.D. Lee Company, Inc.
GR No. 100098; Dec. 29, 1995
Kapunan, J.

Topic: Surnames as Trademarks

FACTS:
H.D. Lee Co. is a foreign corporation organized under the laws of Delaware, U.S.A. It owns the
trademark “LEE” registered in the supplemental register.

Emerald Garment is a domestic corporation which owns the trademark “Stylistic Mr. Lee” used on
skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class
25.

Private respondent H.D. Lee Co., Inc., filed with the Bureau of Patents, Trademarks & Technology
Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 (Supplemental Register) for
the trademark "STYLISTI
C MR. LEE", issued in the name of petitioner Emerald Garment Manufacturing Corporation.

Private respondent, invoking Sec. 37 of R.A. No. 166 (Trademark Law) and Art. VIII of the Paris
Convention for the Protection of Industrial Property, averred that petitioner's trademark "so closely
resembled its own trademark, 'LEE' as previously registered and used in the Philippines, and not
abandoned.

In its answer, petitioner contended that its trademark was entirely and unmistakably different from that
of private respondent and that its certificate of registration was legally and validly granted.

Director of Patents- granted private respondent's petition for cancellation

● It found the private respondent to be the prior registrant of the trademark "LEE" in the
Philippines and that it had been using said mark in the Philippines.
● Using the test of dominancy, declared that petitioner's trademark was confusingly similar to
private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer
and leads him to conclude that the goods originated from the same manufacturer. It is undeniably
the dominant feature of the mark.

Petitioner appealed to CA, which affirmed the Director of Patents’ decision.

CA expounded in its decision:

● By applying the "test of dominancy", meaning, if the competing trademark contains the main or essential or
dominant features of another by reason of which confusion and deception are likely to result, then infringement
takes place; that duplication or imitation is not necessary, a similarity in the dominant features of the trademark
would be sufficient.
● While it is true that there are other words such as "STYLISTIC", printed in the appellant's label, such word is
printed in such small letters over the word "LEE" that it is not conspicuous enough to draw the attention of ordinary
buyers whereas the word "LEE" is printed across the label in big, bold letters and of the same color, style, type and
size of lettering as that of the trademark of the appellee. The alleged difference is too insubstantial to be noticeable.
● Even granting arguendo that the word "STYLISTIC" is conspicuous enough to draw attention, the goods may easily
be mistaken for just another variation or line of garments under the apappelle's "LEE" trademarks because it has
registered trademarks which use other words in addition to the principal mark "LEE" such as "LEE RIDERS",
"LEESURES" and "LEE LEENS".
● The likelihood of confusion is further made more probable by the fact that both parties are engaged in the same line
of business.

ISSUE: Whether “LEE” is a registrable tradename (No)

RULING:
One way of resolving this conflict is to consider the marks involved from the point of view of what
marks are registrable pursuant to Sec. 4 of R.A. No. 166
S4. Registration of trade-marks, trade-names and service-marks on the principal register.
— There is hereby established a register of trade-marks, trade-names and service-marks which
shall be known as the principal register. The owner of a trade-mark, trade-name or service-mark
used to distinguish his goods, business or services from the goods, business or services of others
shall have the right to register the same on the principal register, unless it:

(e) Consists of a mark or trade-name which, when applied to or used in connection with the
goods, business or services of the applicant is merely descriptive or deceptively misdescriptive
of them, or when applied to or used in connection with the goods, business or services of the
 applicant is primarily geographically descriptive or deceptively misdescriptive of them, or is
primarily merely a surname;

"LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership over
and singular use of said term.

WHEREFORE, premises considered, the questioned decision and resolution are hereby REVERSED
and SET ASIDE.

OTHERS:
● Whether the trademark “Stylistic Mr. Lee” tends to mislead or confuse the public and constitutes
an infringement of the trademark “Lee.” (NO)

The pertinent provision of R.A. No. 166 (Trademark Law) states thus:
Sec. 22. Infringement, what constitutes. — Any person who 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 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
reproduce, counterfeit, copy or colorably imitable 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; shall be liable to a civil action by the registrant for any or all of
the remedies herein provided.

The essential element of infringement is colorable imitation.

● It is defined as “such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such
resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, and to cause him to purchase the one supposing it to be the other.”
● It refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of
the trademark or tradename with that of the other mark or tradename in their over-all presentation or in their
essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of
purchasing the genuine article.

In determining whether colorable imitation exists, jurisprudence has developed two kinds of tests — the Dominancy Test and
the Holistic Test.

The Court considered the trademarks involved as a whole and rule that petitioner's "STYLISTIC MR.
LEE" is not confusingly similar to private respondent's "LEE" trademark.

Petitioner’s trademark is the whole “STYLISTIC MR. LEE.” Although on its label the word
“LEE” is prominent, the trademark should be considered as a whole and not piecemeal.
The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to
matter especially in the light of the following variables that must be factored in, among others:
1. The products involved in the case at bar are, in the main, various kinds of jeans. Maong pants
or jeans are not inexpensive. Expensive and valuable items are normally bought only after
deliberate, comparative and analytical investigation;
2. The average Filipino consumer generally buys his jeans by brand. He is, therefore, more or
less knowledgeable and familiar with his preference and will not easily be distracted; and
3. More credit should be given to the "ordinary purchaser” which is not a"completely unwary
consumer" but an "ordinarily intelligent buyer", considering the type of product involved.
There is no cause for the Court of Appeal's apprehension that petitioner's products might be mistaken as
"another variation or line of garments under private respondent's 'LEE' trademark". As one would
readily observe, private respondent's variation follows a standard format "LEERIDERS," "LEESURES"
and "LEELEENS."
It is, therefore, improbable that the public would immediately and naturally conclude that petitioner's
"STYLISTIC MR. LEE" is but another variation under private respondent's "LEE" mark.
The issue of confusing similarity between trademarks is resolved by considering the distinct
characteristics of each case. In the present controversy, taking into account these unique factors, we
conclude that the similarities in the trademarks in question are not sufficient as to likely cause deception
and confusion tantamount to infringement.

● After a meticulous study of the records, The Court observed that the Director of Patents and the
Court of Appeals relied mainly on the registration certificates as proof of use by private
respondent of the trademark "LEE", which is not sufficient.

Here, the Court agreed with petitioner's contention that private respondent failed to prove prior actual
commercial use of its "LEE" trademark in the Philippines before filing its application for registration
with the BPTTT and hence, has not acquired ownership over said mark.

Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of
ownership over a trademark pursuant to Sec. 2 and 2-A of the Philippine Trademark Law (R.A. No.
166).
A foreign corporation may have the capacity to sue for infringement irrespective of lack of business activity in the
Philippines on account of Section 21-A of the Trademark Law but the question of whether they have an exclusive right over
their symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in
line with Sections 2 and 2-A of the same law.
Consequently, when a foreign corporation not licensed to do business in the Philippines files a complaint for
infringement, the entity need not be actually using its trademark in commerce in the Philippines. Such a foreign
corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to
protection due to absence of actual use of the emblem in the local market.

Here, Private respondent is the senior registrant, having obtained several registration certificates for its
various trademarks "LEE," "LEERIDERS," and "LEESURES" in both the supplemental and principal
registers, as early as 1969 to 1973. However, registration alone will not suffice.

The Court did not give credence to private respondent's claim that its "LEE" mark first reached the
Philippines in the 1960's through local sales by the Post Exchanges of the U.S. Military Bases in the
Philippines46 based as it was solely on the self-serving statements of the General Manager of HD Lee’s
wholly owned subsidiary. Similarly, it gave little weight to the vouchers HD Lee presented as
advertising expenses in the Philippines for “LEE” Products because those were only incurred in 1981
and 1982.

On the other hand, petitioner has sufficiently shown that it has been in the business of selling jeans and
other garments adopting its "STYLISTIC MR. LEE" trademark since 1975 as evidenced by appropriate
sales invoices to various stores and retailers.

The sales invoices provide the best proof that there were actual sales of petitioner's product in the
country and that there was actual use for a protracted period of petitioner's trademark or part thereof
through these sales.
For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's use of its
own mark and for failure to establish confusing similarity between said trademarks, private respondent's
action for infringement must necessarily fail.
Intellectual Property Association of the Philippines (IPAPH) v. Hon. Paquito Ochoa, in his
capacity as Executive Secretary, et. al.
GR No. 204605; July 19, 2016
Bersamin, J.
FACTS:
The Madrid System for the International Registration of Marks (Madrid System)
● is the centralized system providing a one-stop solution for registering and managing marks
worldwide;it allows the trademark owner to file one application in one language, and to pay one
set of fees to protect his mark in the territories of up to 97 member-states.
● Governed by Madrid Agreement (concluded in 1981) and Madrid Protocol (concluded in 1989)

The Madrid Protocol- adopted in order to remove the challenges deterring some countries from acceding to the Madrid
Agreement; 2 objectives:
1. to facilitate securing protection for marks; and
2. to make the management of the registered marks easier in different countries

2004- the Intellectual Property Office of the Philippines (IPOPHL), the government agency mandated to
administer the intellectual property system of the country and to implement the state policies on intellectual property; began
considering the country's accession to the Madrid Protocol.

Thus, it implemented reforms to eliminate trademark backlogs and to reduce the turnaround time for the registration of
marks; It mounted a campaign for information dissemination to raise awareness of the Madrid Protocol and ultimately
arrived at the conclusion that accession would benefit the country and help raise the level of
competitiveness for Filipino brands.

In September 2011- IPOPHL recommended to DFA that PH should accede to the Madrid Protocol.
DFA, after its own review, endorsed to the President the country's accession to the Madrid Protocol.
DST and DTI concurred DFA’s recommendation.

DFA- determined that the Madrid Protocol was an executive agreement.

May 2012- President Benigno Aquino III ratified the Madrid Protocol through an instrument of
accession.
July 25, 2012- The Madrid Protocol entered into force in the Philippines.

Petitioner IP AP, an association of more than 100 law firms and individual practitioners in Intellectual Property Law
whose main objective is to promote and protect intellectual property rights in the Philippines through constant assistance and
involvement in the legislation of intellectual property law, has commenced this special civil action for certiorari
and prohibition to challenge the validity of the President's accession to the Madrid Protocol without the
concurrence of the Senate.

It argued that the implementation of the Madrid Protocol in the Philippines; specifically, the processing
of foreign trademark applications, conflicts with the IP Code, because
● Article 2 of the Madrid Protocol means that foreign trademark applicants may file their
applications through the International Bureau or the WIPO, and their applications will be
automatically granted trademark protection without the need for designating their resident
 agents in the country- the Madrid Protocol does away with the requirement of a resident
agent under Section 125 of the IP Code; and
● So, it is unconstitutional for being in conflict with the local law, which it cannot modify.

Sec. 125, IP Code:

Representation; Address for Service. -
If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines; he shall
designate by a written document filed in the office, the name and address of a Philippine resident who may be
served notices or process in proceedings affecting the mark.
Such notices or services may be served upon the person so designated by leaving a copy thereof at the address
specified in the last designation filed. If the person so designated cannot be found at the address given in the last
designation, such notice or process may be served upon the Director. (Sec. 3; R.A. No. 166 a)

Art. 2, the Madrid Protocol:

Securing Protection through International Registration
(1) Where an application for the registration of a mark has been filed with the Office of a Contracting
Party, or where a mark has been registered in the register of the Office of a Contracting Party, the person in whose
name that application (hereinafter referred to as "the basic application;') or that registration (hereinafter referred to
as "the basic registration") stands may, subject to the provisions of this Protocol secure protection for his mark in the
territory of the Contracting Parties, by obtaining the registration of that mark in the register of the International
Bureau of the World Intellectual Property Organization (hereinafter referred to as "the international registration,"
"the International Register," "the International Bureau" and "the Organization'', respectively), provided that,
(i) where the basic application has been filed with the Office of a Contracting State or where the
basic registration has been made by such an Office, the person in whose name that application or registration stands
is a national of that Contracting State, or is domiciled, or has a real and effective industrial or commercial
establishment, in the said Contracting State,
(ii) where the basic application has been filed with the Office of a Contracting Organization or
where the basic registration has been made by such an Office, the person in whose name that application or
registration stands is a national of a State member of that Contracting Organization, or is domiciled, or has a real
and effective industrial or commercial establishment, in the territory of the said Contracting Organization.
(2) The application for international registration (hereinafter referred to as "the international application")
shall be filed with the International Bureau through the intermediary of the Office with which the basic application
was filed or by which the basic registration was made (hereinafter referred to as "the Office of origin"), as the case
may be.
(3) Any reference in this Protocol to an "Office" or an "Office of a Contracting Party" shall be construed as
a reference to the office that is in charge, on behalf of a Contracting Party, of the registration of marks, and any
reference in this Protocol to "marks" shall be construed as a reference to trademarks and service marks.
(4) For the purposes of this Protocol, "territory of a Contracting Party" means, where the Contracting Party
is a State, the territory of that State and, where the Contracting Party is an intergovernmental organization, the
territory in which the constituting treaty of that intergovernmental organization applied.

The IPAP prayed that the implementation of the Madrid Protocol in the Philippines be restrained in
order to prevent future wrongs considering that the IP AP and its constituency have a clear and
unmistakable right not to be deprived of the rights granted them by the IP Code and existing local laws.

OSG, in its comment in behalf of respondents stated that:

● that the President's ratification of the Madrid Protocol as an executive agreement is valid because
the Madrid Protocol is only procedural, does not create substantive rights, and does not require
the amendment of the IP Code;

ISSUE: Whether the Madrid Protocol is in conflict with the IP Code (No.)

RULING:

The IPAP's contentions stand on a faulty premise.

The method of registration through the IPOPHL, as laid down by the IP Code, is distinct and separate from the method of
registration through the WIPO, as set in the Madrid Protocol. Comparing the two methods of registration despite their being
governed by two separate systems of registration is thus misplaced.

The Madrid Protocol accords with the intent and spirit of the IP Code, particularly on the subject of the registration
of trademarks. It does not amend or modify the IP Code on the acquisition of trademark rights considering that the
applications under the Madrid Protocol are still examined according to the relevant national law, In that regard, the IPOPHL
will only grant protection to a mark that meets the local registration requirements.

Therefore, the Court dismissed the petition for certiorari and prohibition for lack of merit.

OTHERS:
S125, IP Code highlights the importance of the requirement for the designation of a resident agent.
● the requirement is intended to ensure that non-resident entities seeking protection or privileges under Philippine
Intellectual Property Laws will be subjected to the country's jurisdiction.
● without such resident agent, there will be a need to resort to costly, time consuming and cumbersome extraterritorial
service of writs and processes.

The IPOPHL requires the designation of the resident agent when it refuses the registration of a mark. Local representation
is further required in the submission of the Declaration of Actual Use, as well as in the submission of the license contract.

MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC.,

petitioner, vs. E. & J. GALLO WINERY and THE ANDRESONS GROUP, INC.,
respondents.
G.R. No. 154342 July 14, 2004
PONENTE: CORONA, J.

FACTS:

Respondent Gallo Winery is a foreign corporation not doing business in the Philippines
that 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 Winery’s exclusive wine
importer and distributor in the Philippines selling these products in its own name and for
its own account.

Petitioners Mighty Corporation and La Campana are engaged in the cultivation,

manufacture, distribution and sale of tobacco products for which they have been using
the GALLO cigarette trademark. Bureau of Internal Revenue (BIR) approved Tobacco
Industries’ use of GALLO 100’s cigarette mark.

Tobacco Industries assigned the GALLO cigarette trademark to La Campana which, on

July 16, 1985, applied for trademark registration in the Philippine Patent Office
National Library issued Certificate of Copyright Registration No. 5834 for La Campana’s
lifetime copyright claim over GALLO cigarette labels.
Respondents sued petitioners in the Makati RTC for trademark and tradename
infringement and unfair competition and prayed for issuance of a writ of preliminary
injunction.

In their answer, petitioners alleged, among other affirmative defenses, that: petitioner’s
GALLO cigarettes and Gallo Winery’s wines were totally unrelated products.

Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of a writ of
preliminary injunction, holding that respondent’s 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. It also denied, for lack of merit, respondents’ motion for reconsideration.

CA likewise dismissed respondents’ petition for review on certiorari affirming the Makati
RTC’s denial of the application for issuance of a writ of preliminary injunction against
petitioners

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.

CA affirmed the Makati RTC decision and subsequently denied petitioner’s motion for
reconsideration.

ISSUE:

Was there confusion of goods in this case that leads to a trademark infringement.

RULING:

NONE.

A crucial issue in any trademark infringement case is the likelihood of confusion, mistake
or deceit as to the identity, source or origin of the goods or identity of the business as a
consequence of using a certain mark. Likelihood of confusion is admittedly a relative
term, to be determined rigidly according to the particular (and sometimes peculiar)
circumstances of each case. Thus, in trademark cases, more than in other kinds of
litigation, precedents must be studied in the light of each particular case.

There are two types of confusion in trademark infringement. The first is "confusion of
goods" when an otherwise prudent purchaser is induced to purchase one product in
the belief that he is purchasing another, in which case defendant’s goods are then
bought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s
reputation. The other is "confusion of business" wherein the goods of the parties are
different but the defendant’s product can reasonably (though mistakenly) be assumed to
originate from the plaintiff, thus deceiving the public into believing that there is some
connection between the plaintiff and defendant which, in fact, does not exist.

In determining the likelihood of confusion, the Court must consider: [a] the
resemblance between the trademarks; [b] the similarity of the goods to which the
trademarks are attached; [c] the likely effect on the purchaser and [d] the
registrant’s express or implied consent and other fair and equitable considerations.

Whether a trademark causes confusion and is likely to deceive the public hinges on
"colorable imitation" which has been defined as "such similarity in form, content, words,
sound, meaning, special arrangement or general appearance of the trademark or
tradename in their overall presentation or in their essential and substantive and distinctive
parts as would likely mislead or confuse persons in the ordinary course of purchasing the
genuine article."

Jurisprudence has developed two tests in determining similarity and likelihood of

confusion in trademark resemblance: (a) the Dominancy Test applied in Asia Brewery,
Inc. vs. Court of Appeals and other cases, and (b) the Holistic or Totality Test used in Del
Monte Corporation vs. Court of Appeals and its preceding cases.

The Dominancy Test focuses on the similarity of the prevalent features of the competing
trademarks which might cause confusion or deception, and thus infringement. If the
competing trademark contains the main, essential or 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 deceive purchasers.

On the other hand, the Holistic Test requires that the entirety of the marks in question be
considered in resolving confusing similarity. Comparison of words is not the only
determining factor. The trademarks in their entirety as they appear in their respective
labels or hang tags must also be considered in relation to the goods to which they are
attached. The discerning eye of the observer must focus not only on the predominant
words but also on the other features appearing in both labels in order that he may draw
his conclusion whether one is confusingly similar to the other

In comparing the resemblance or colorable imitation of marks, various factors have been
considered, such as the dominant color, style, size, form, meaning of letters, words,
designs and emblems used, the likelihood of deception of the mark or name's tendency to
confuse and the commercial impression likely to be conveyed by the trademarks if used
in conjunction with the respective goods of the parties.
Applying the Dominancy and Holistic Tests, we find that the dominant feature of the
GALLO cigarette trademark is the device of a large rooster facing left, outlined in black
against a gold background. The rooster’s color is either green or red – green for GALLO
menthols and red for GALLO filters. Directly below the large rooster device is the word
GALLO. The rooster device is given prominence in the GALLO cigarette packs in terms
of size and location on the labels.

The GALLO mark appears to be a fanciful and arbitrary mark for the cigarettes as it has
no relation at all to the product but was chosen merely as a trademark due to the fondness
for fighting cocks of the son of petitioners’ president. Furthermore, petitioners adopted
GALLO, the Spanish word for rooster, as a cigarette trademark to appeal to one of their
target markets, the sabungeros (cockfight aficionados). Also, as admitted by respondents
themselves, on the side of the GALLO cigarette packs are the words "MADE BY
MIGHTY CORPORATION," thus clearly informing the public as to the identity of the
manufacturer of the cigarettes.

On the other hand, GALLO Winery’s wine and brandy labels are diverse. In many of
them, the labels are embellished with sketches of buildings and trees, vineyards or a
bunch of grapes while in a few, one or two small roosters facing right or facing each
other (atop the EJG crest, surrounded by leaves or ribbons), with additional designs in
green, red and yellow colors, appear as minor features thereof. Directly below or above
these sketches is the entire printed name of the founder-owners, "ERNEST & JULIO
GALLO" or just their surname "GALLO," which appears in different fonts, sizes, styles
and labels, unlike petitioners’ uniform casque-font bold-lettered GALLO mark.
Moreover, on the labels of Gallo Winery’s wines are printed the words "VINTED AND
BOTTLED BY ERNEST & JULIO GALLO, MODESTO, CALIFORNIA." The many
different features like color schemes, art works and other markings of both products
drown out the similarity between them – the use of the word “GALLO” ― a family
surname for the Gallo Winery’s wines and a Spanish word for rooster for petitioners’
cigarettes.

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.

Applying these legal precepts to the present case, petitioner’s use of the GALLO
cigarette trademark is not likely to cause confusion or mistake, or to deceive the
"ordinarily intelligent buyer" of either wines or cigarettes or both as to the identity of the
goods, their source and origin, or identity of the business of petitioners and respondents.
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.

In Philippine Refining Co., Inc. vs. Ng Sam and the Director of Patents:

In his decision, the Director of Patents enumerated the factors that set respondent’s
products apart from the goods of petitioner. He opined and we quote: "I have taken into
account such factors as probable purchaser attitude and habits, marketing activities, retail
outlets, and commercial impression likely to be conveyed by the trademarks if used in
conjunction with the respective goods of the parties, I believe that ham on one hand,
and lard, butter, oil, and soap on the other are products that would not move in the
same manner through the same channels of trade. They pertain to unrelated fields
of manufacture, might be distributed and marketed under dissimilar conditions,
and are displayed separately even though they frequently may be sold through the
same retail food establishments. Opposer’s products are ordinary day-to-day household
items whereas ham is not necessarily so. Thus, the goods of the parties are not of a
character which purchasers would likely attribute to a common origin.

The observations and conclusion of the Director of Patents are correct. The
particular goods of the parties are so unrelated that consumers, would not, in any
probability mistake one as the source of origin of the product of the other. (Emphasis
supplied).

The same is true in the present case. Wines and cigarettes are non-competing and are
totally unrelated products not likely to cause confusion vis-à-vis the goods or the business
of the petitioners and respondents. 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.
UFC PHILIPPINES, INC., (now NUTRI-ASIA, INC.,) vs. BARRIO FIESTA
MANUFACTURING CORPORATION
G.R. No. 198889, January 20, 2016
First Division, J. Leonardo-De Castro
Topic: Confusion of Business

FACTS:

In 2002, respondent Barrio Fiesta filed an application for the mark “PAPA BOY & DEVICE” for goods
under Class 30, specifically for lechon sauce. On the other hand, the petitioner filed a Verified Notice of
Opposition to the application. It argued that the mark “PAPA” was first used by Neri Papa in 1954. It
also argued that the mark of the respondent was confusingly identical to its own mark, and deception
was likely to result because the consuming public will be confused and mistaken into believing that the
respondent’s goods originate from or was authorized by the petitioner.
In response, the respondent answered that there was no likelihood of confusion because its mark was
distinctive and capable of identifying its goods and distinguishing them from those offered for sale by
others in the market. Further, no confusion will result because its mark was for lechon sauce while the
petitioner’s mark was for banana sauce.

The IPO-BLA rendered a Decision in favor of the petitioner. It rejected the application of the
respondent.

On the other hand, the Court of Appeals found that the marks involved were not confusingly similar. It
ruled that the label of the respondent indicate that the lechon sauce was manufactured by Barrio Fiesta,
as such the public is informed of the identity of the manufacturer of the product. Also the consuming
public would not be confused because even if the products were placed side by side, the dissimilarities
between them were conspicuous, noticeable, and substantial.

The petitioner argued that the IPO-BLA recognized that confusion of business may arise from the
respondent’s use of its mark. It maintained that both ketchup and lechon sauce were undeniably related
goods, they belong to the same class (Class 30).

ISSUE:

Whether confusion of business may arise from the use of the two marks. (YES)

RULING:

Jurisprudence has noted two (2) types of confusion:

1) Confusion of goods (product confusion), where the ordinarily prudent purchaser would be
induced to purchase one product in the belief that he was purchasing the other; and

2) Confusion of business (source or origin confusion), where, although the goods of" the parties
are different, the product, the mark of which registration is applied for by one party, is such as
might reasonably be assumed to originate with the registrant of an earlier product, and the public
would then be deceived either into that belief or into the belief that there is some connection
between the two parties, though inexistent.

In the case of Societe Des Produits Nestle, S.A. v. Dy, Jr., the Court discussed the concept of
confusion of business, “Here though the goods of the parties are different, the defendant's product is
such as might reasonably be assumed to originate with the plaintiff, and the public would then be
deceived either into that belief or into the belief that there is some connection between the plaintiff and
defendant which, in fact, does not exist."

According to the court, modern law recognizes that the trademark owner’s protection is not limited to
guarding his goods or business from actual market competition with identical or similar products, but it
extends to all cases in which the use by a junior appropriator of a trademark or tradename is likely to
lead to a confusion of source where prospective buyers would be misled into thinking that the
complaining party has extended his business into the field, or is any way connected to the activities of
the infringer.
Here, the court gave credence to the findings of the IPO. The product of the respondent, lechon sauce,
is related to the product of the petitioner. It is an everyday all-purpose condiment that is not usually
subjected to great scrutiny by the casual purchaser. The petitioner’s product, “catsup” is also a
household product. Both are found on the same grocery aisle, in similar packaging. As such, the public
may be misled into thinking that the “PAPA BOY” lechon sauce was part of the “PAPA” family of
sauces. If allowed registration, confusion of business may set in.

Title: CONVERSE RUBBER CORPORATION vs. UNIVERSAL RUBBER PRODUCTS,

INC. and TIBURCIO S. EVALLE, DIRECTOR OF PATENT G.R. No. L-27906 January 8, 1987

Topic: Confusion of Business

Facts:

Respondent Universal Rubber Products, Inc. filed an application with the Philippine Patent office for
registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and
rubber slippers.

Petitioner Converse Rubber Corporation filed its opposition to the application for registration on
grounds that:

a] The trademark sought to be registered is confusingly similar to the word "CONVERSE" which
is part of petitioner's corporate name "CONVERSE RUBBER CORPORATION" as to likely
deceive purchasers of products on which it is to be used to an extent that said products may be
mistaken by the unwary public to be manufactured by the petitioner; and,

b] The registration of respondent's trademark will cause great and irreparable injury to the
business reputation and goodwill of petitioner in the Philippines and would cause damage to
said petitioner

The petitioner's corporate name is "CONVERSE RUBBER CORPORATION" and has been in existence
since July 31, 1946; it is duly organized under the laws of Massachusetts, USA.

Petitioner is not licensed to do business in the Philippines and it is not doing business on its own in the
Philippines; and manufactures rubber shoes and uses thereon the trademarks "CHUCK TAYLOR "and
"ALL STAR AND DEVICE".

The Director of Patents dismissed the opposition of the petitioner and gave due course to respondent's
application. It stated that:

The Petitioner failed to present proof that the single word "CONVERSE' in its corporate name has become so
identified with the corporation that whenever used, it designates to the mind of the public that particular
corporation

Petitioner’s proof of its corporate personality cannot establish the use of the word "CONVERSE" in any
sense, as it is already stipulated that it is not licensed to do business in the Philippines, and is not doing
business of its own in the Philippines. If so, it will be futile for it to establish that "CONVERSE" as part of
its corporate name Identifies its rubber shoes.
Since the petitioner is not licensed to do business in the country and is actually not doing business on its own
in the Philippines, it has no name to protect in the forum and thus, it is futile for it to establish that
"CONVERSE" as part of its corporate name identifies its rubber shoes.

Petitioner filed an MR which was denied. Hence, this petition for Review to the SC.

Issue:

Whether the applicant's partial appropriation of the Opposer's corporate name is of such character that
in this particular case, it is calculated to deceive or confuse the public to the injury of the corporation to
which the name belongs.

Ruling: YES

The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular manner on the
side of its rubber shoes. In the same manner, the trademark of petitioner which reads “CONVERSE CHUCK
TAYLOR” is imprinted on a circular base attached to the side of its rubber shoes.

The determinative factor in ascertaining whether or not marks are confusingly similar to each other “is not
whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use
of such mark would likely cause confusion or mistake on the part of the buying public. It would be
sufficient, for purposes of the law that the similarity between the two labels is such that there is a possibility or
likelihood of the purchaser of the older brand mistaking the new brand for it.” Even if not all the details just
mentioned were identical, with the general appearance alone of the two products, any ordinary, or even
perhaps even a not too perceptive and discriminating customer could be deceived.“

But even assuming, arguendo, that the trademark sought to be registered by respondent is distinctively dissimilar
from those of the petitioner, the likelihood of confusion would still subsists, not on the purchaser’s perception of
the goods but on the origins thereof. By appropriating the word “CONVERSE,” respondent’s products are
likely to be mistaken as having been produced by petitioner. “The risk of damage is not limited to a possible
confusion of goods but also includes confusion of reputation if the public could reasonably assume that the goods
of the parties originated from the same source.

Note Only:

Lacoste vs Fernandez. It stated that:

A foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do
business here, but is widely and favorably known in the Philippines through the use of its products bearing its corporate
and trade-name, has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants from
organizing a corporation bearing the same name as the foreign corporation. Especially, when it appears that the domestic
corporation has personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of
the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation.

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. Whether respondent is guilty of trademark infringement and unfair competition. YES

RULING:
To establish trademark infringement, the following elements must be shown: (1) the validity of
plaintiff's mark; (2) the plaintiff's ownership of the mark; and (3) the use of the mark or its colorable
imitation by the alleged infringer results in "likelihood of confusion."34 Of these, it is the element of
likelihood of confusion that is the gravamen of trademark infringement.

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

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.

"Big Mac" falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual
characteristics of the product it represents. As such, it is highly distinctive and thus valid.

The Court also finds that petitioners have duly established McDonald's exclusive ownership of the "Big
Mac" mark. Although Topacio and the Isaiyas Group registered the "Big Mac" mark ahead of
McDonald's, Topacio, as petitioners disclosed, had already assigned his rights to McDonald's. The
Isaiyas Group, on the other hand, registered its trademark only in the Supplemental Register. A mark
which is not registered in the Principal Register, and thus not distinctive, has no real protection. Indeed,
we have held that registration in the Supplemental Register is not even a prima facie evidence of the
validity of the registrant's exclusive right to use the mark on the goods specified in the certificate.

Since respondents used the "Big Mak" mark on the same goods, i.e. hamburger sandwiches, that
petitioners' "Big Mac" mark is used, trademark infringement through confusion of goods is a proper
issue in this case.

In determining likelihood of confusion, jurisprudence has developed two tests, the dominancy test and
the holistic test.
This Court, however, has relied on the dominancy test rather than the holistic test. The dominancy test
considers the dominant features in the competing marks in determining whether they are confusingly
similar.

Under the dominancy test, courts give greater weight to the similarity of the appearance of the product
arising from the adoption of the dominant features of the registered mark, disregarding minor
differences.

Applying the dominancy test, the Court finds that respondents' use of the "Big Mak" mark results in
likelihood of confusion. First, "Big Mak" sounds exactly the same as "Big Mac." Second, the first word
in "Big Mak" is exactly the same as the first word in "Big Mac." Third, the first two letters in "Mak" are
the same as the first two letters in "Mac." Fourth, the last letter in "Mak" while a "k" sounds the same as
"c" when the word "Mak" is pronounced. Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus
"Caloocan" is spelled "Kalookan."

In short, aurally the two marks are the same, with the first word of both marks phonetically the same,
and the second word of both marks also phonetically the same. Visually, the two marks have both two
words and six letters, with the first word of both marks having the same letters and the second word
having the same first two letters. In spelling, considering the Filipino language, even the last letters of
both marks are the same.

Clearly, respondents have adopted in "Big Mak" not only the dominant but also almost all the features of
"Big Mac." Applied to the same food product of hamburgers, the two marks will likely result in
confusion in the public mind.

Indeed, a person cannot distinguish "Big Mac" from "Big Mak" by their sound. When one hears a "Big
Mac" or "Big Mak" hamburger advertisement over the radio, one would not know whether the "Mac" or
"Mak" ends with a "c" or a "k."

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

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.

Section 29(a) also provides that the defendant gives "his goods the general appearance of goods of
another manufacturer." Respondents' goods are hamburgers which are also the goods of petitioners. If
respondents sold egg sandwiches only instead of hamburger sandwiches, their use of the "Big Mak"
mark would not give their goods the general appearance of petitioners' "Big Mac" hamburgers. In such
case, there is only trademark infringement but no unfair competition. However, since respondents chose
to apply the "Big Mak" mark on hamburgers, just like petitioner's use of the "Big Mac" mark on
hamburgers, respondents have obviously clothed their goods with the general appearance of petitioners'
goods.

Moreover, there is no notice to the public that the "Big Mak" hamburgers are products of "L.C. Big Mak
Burger, Inc." Respondents introduced during the trial plastic wrappers and bags with the words "L.C.
Big Mak Burger, Inc." to inform the public of the name of the seller of the hamburgers. However,
petitioners introduced during the injunctive hearings plastic wrappers and bags with the "Big Mak" mark
without the name "L.C. Big Mak Burger, Inc." Respondents' belated presentation of plastic wrappers
and bags bearing the name of "L.C. Big Mak Burger, Inc." as the seller of the hamburgers is an after-
thought designed to exculpate them from their unfair business conduct. As earlier stated, we cannot
consider respondents' evidence since petitioners' complaint was based on facts existing before and
during the injunctive hearings.

Thus, there is actually no notice to the public that the "Big Mak" hamburgers are products of "L.C. Big
Mak Burger, Inc." and not those of petitioners who have the exclusive right to the "Big Mac" mark. This
clearly shows respondents' intent to deceive the public. Had respondents' placed a notice on their plastic
wrappers and bags that the hamburgers are sold by "L.C. Big Mak Burger, Inc.", then they could validly
claim that they did not intend to deceive the public. In such case, there is only trademark infringement
but no unfair competition.82 Respondents, however, did not give such notice. We hold that as found by
the RTC, respondent corporation is liable for unfair competition.

L.C. BIG MAK BURGER, INC., Petitioner vs. McDONALD'S CORPORATION,

Respondent G.R. No. 233073
FACTS: McDonald's Corporation filed against L.C. Big Mak Burger, Inc. for
trademark infringement and unfair competition.
Tthe Infringement Court, acting on the prayer for the issuance of a writ
preliminary injunction, issued an Order directing petitioner to refrain from using
for its fast food restaurant business the name "Big Mak" which by colorable
imitation is likely to confuse, mislead or deceive the public into believing that the
petitioner's goods and services originate from respondent's
However, respondent filed a Petition for Contempt against petitioner. Respondent
averred that despite service upon the petitioner of the Writ of Execution, the latter
continues to disobey and ignore their judgment obligation by continuously using,
as part of their food and restaurant business, the words "Big Mak."
ISSUE:
Whether or not petitioner is guilty of indirect contempt.
HELD:
No. Contempt of court has been defined as a willful disregard or disobedience of a
public authority.
In this case, testimonial and documentary evidence shows that petitioner had
been using "Super Mak" and/or its corporate name "L.C. Big Mak Burger Inc." in
its business operations instead of the proscribed mark "Big Mak" pursuant to the
ruling of the Infringement Court.
In fact, in as early as during the trial of the said case, certain changes had already
been made by the petitioner to rule out the charge of infringement and unfair
competition. During the trial of the infringement and unfair competition case, the
wrappers and bags for petitioner's burger sandwiches already reflected its
corporate name instead of the words "Big Mak."
Therefore, the use of petitioner's corporate name instead of the words "Big Mak"
solely was evidently pursuant to the directive of the court in the injunction order.
Clearly, petitioner had indeed desisted from the use of "Big Mak" to comply with
the injunction order.
ABS-CBN PUBLISHING, INC., Petitioner, v. DIRECTOR OF THE BUREAU OF
TRADEMARKS, Respondent.
G.R. No. 217916
June 20, 2018
REYES, JR., J.:

DOCTRINE OF THE CASE

ABS-CBN Publishing itself admitted in its petition that its application/registration with the IPO
under Application No. 4-1994-096162 was already "deemed abandoned." ABS-CBN Publishing, in
allowing this abandonment, cannot now come before the Court to cry foul if another entity has, in the
time that it has abandoned its trademark and in full cognizance of the IPC and the IPO rules, registered
its own.

Also, as correctly pointed out by the ODG, this abandonment is the very reason why ABS- CBN
Publishing lost its rights over its trademark, and that it is also the reason why, after twenty years from
the initial application and after actual use of the applicant mark, the petitioner once again came before
the IPO to apply for registration.

FACTS

In 2004, ABS-CBN Publishing filed with the Intellectual Property Office of the Philippines
(IPO) its application for the registration of its trademark "METRO" (applicant mark). The intellectual
property office denied the application as the mark is identical to three others. ABS-CBN Publishing
appealed to the Office of the Director General (ODG) of the IPO. The OFG upheld the denial.

ABS-CBN Publishing filed before the Court of Appeals its "Motion for Extension of Time (To
File Petition for Review)" In the second motion, the petitioner asked the appellate court for another
extension of the deadline. Meanwhile, CA granted ABS-CBN Publishing first motion praying for an
extension of time to file its petition for review, subject to the "warning against further extension." Thus,
the Court of Appeals extended the deadline only once.

Relying on the appellate court's favorable response to its second motion for extension (which
was not acted upon by the Court of Appeals), ABS-CBN Publishing failed to file its petition for review
on the deadline. Hence, the CA denied the petition.

ISSUE:
Whether or not the ODG was correct in refusing to register the applicant mark for being identical
and confusingly similar with the cited marks already registered with the IPO?

RULING:
YES. According to Section 123.1(d) of the Intellectual Property Code of the Philippines (IPC), 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," in respect of the following: (i) the same goods or services,
or (ii) closely related goods or services, or (iii) if it nearly resembles such a mark as to be likely to
deceive or cause confusion.

To determine whether a mark is to be considered as "identical" or that which is confusingly

similar with that of another, the Court has developed two (2) tests: the dominancy and holistic tests.
While the Court has time and again ruled that the application of the tests is on a case-to-case basis, upon
the passage of the IPC, the trend has been to veer away from the usage of the holistic test and to focus
more on the usage of the dominancy test. As stated by the Court in the case of McDonald's Corporation
vs. L.C. Big Mak Burger, Inc., the "test of dominancy is now explicitly incorporated into law in Section
155.1 of the Intellectual Property Code which defines infringement as the 'colorable imitation of a
registered mark x x x or a dominant feature thereof.'"

In using this test, focus is to be given to the dominant features of the marks in question. In the
1954 case of Co Tiong Sa vs. Director of Patents, the Court, in using the dominancy test, taught that:
But differences of variations in the details of one trademark and of another are not
the legally accepted tests of similarity in trademarks. It has been consistently held that the
question of infringement of a trademark is to be determined by the test of dominancy.
Similarity in size, form, and color, while relevant, is not conclusive. If the competing
trademark contains the main or essential or dominant features of another, and confusion
and deception is likely to result, infringement takes place.

The Court, in Skechers, U.S.A., Inc. vs. Inter Pacific Industrial Trading Corp., and in once again
using the dominancy test, reiterated Del Monte Corporation vs. Court of Appeals in saying that "the
defendants in cases of infringement do not normally copy but only make colorable changes." The Court
emphasized 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."

In other words, in committing the infringing act, the infringer merely introduces negligible
changes in an already registered mark, and then banks on these slight differences to state that there was
no identity or confusing similarity, which would result in no infringement. This kind of act, which leads
to confusion in the eyes of the public, is exactly the evil that the dominancy test refuses to accept. The
small deviations from a registered mark are insufficient to remove the applicant mark from the ambit of
infringement.
 In the present case, the dominant feature of the applicant mark is the word "METRO" which is
identical, both visually and aurally, to the cited marks already registered with the IPO. As held by the
ODG-and correctly at that –

There is no dispute that the subject and cited marks share the same dominant
word, "Metro". Even if, as the Appellant (petitioner herein) points out, the second cited
mark owned by Metro International contains an accompanying device, and the third cited
mark contains the terms "Philippine Daily Inquirer", the dominant feature of the subject
and cited marks is still clearly the word "Metro", spelled and pronounced in exactly the
same way. The identity between the marks would indubitably result in confusion of
origin as well as goods.

Also, greater relevance is to be accorded to the finding of Examiner Icban on the confusing
similarity between, if not the total identity of, the applicant and cited marks. Examiner Icban, in
reiterating with finality her earlier findings, said that the applicant and cited marks are "the same in
sound, spelling, meaning, overall commercial impression, covers substantially the same goods and flows
through the same channel of trade," which leads to no other conclusion than that "confusion as to the
source of origin is likely to occur."

The findings of Examiner Icban, reviewed first by the Director of the Bureau of Trademarks, and
again by the Director General of the IPO, are the result of a judicious study of the case by no less than
the government agency duly empowered to examine applications for the registration of marks. These
findings deserve great respect from the Court. Absent any strong justification for the reversal thereof-as
in this case-the Court shall not reverse and set aside the same. As such, the prior findings remain: the
applicant mark, "METRO," is identical to and confusingly similar with the other cited marks already
registered. By authority of the Sec. 123.l(d) of the IPC, the applicant mark cannot be registered. The
ODG is correct in upholding the Decision of both the Director of the Bureau of Trademarks and
Examiner Icban.

This ruling stands despite the specious arguments presented by the petitioner in the current
petition. ABS-CBN Publishing asserts that it has a vested right over the applicant mark because Metro
Media Publishers, Inc. (Metro Media), the corporation from which the petitioner acquired the applicant
mark, first applied for the registration of the same under the old Trademark Law, and since then,
actually used the applicant mark in commerce. The petitioner belabors the point that under the old
Trademark law, actual use in commerce is a prerequisite to the acquisition of ownership over a
trademark and a trade name. ABS-CBN Publishing even went on further in asserting that its actual use
of the applicant mark enabled it to automatically acquire trademark rights, which should have extended
even upon the promulgation of the IPC in 1998.

Two things must be said of this argument. First, there is no question that ABS-CBN Publishing’s
predecessor already applied for the registration of the applicant mark "METRO" on November 3, 1994
under Class 16 of the Nice classification. It was docketed as Application No. 4-1994-096162. There is
likewise no question that as early as 1989, Metro Media has already used the applicant mark "METRO"
in its magazine publication. At that point, Metro Media exercised all the rights conferred by law to a
trademark applicant.

Second, however, ABS-CBN Publishing itself admitted in its petition that its
application/registration with the IPO was already "deemed abandoned." ABS-CBN Publishing, in
allowing this abandonment, cannot now come before the Court to cry foul if another entity has, in the
time that it has abandoned its trademark and in full cognizance of the IPC and the IPO rules, registered
its own.

Also, as correctly pointed out by the ODG, this abandonment is the very reason why ABS- CBN
Publishing lost its rights over its trademark, and that it is also the reason why, after twenty years from
the initial application and after actual use of the applicant mark, the petitioner once again came before
the IPO to apply for registration. The ODG said:
Even then, it must be emphasized that absolute certainty of confusion or even actual confusion is
not required to refuse registration. Indeed, it is the mere likelihood of confusion that provides the
impetus to accord protection to trademarks already registered with the IPO. The Court cannot emphasize
enough that the cited marks "METRO" (word) and "METRO" (logo) are identical with the registrant
mark "METRO" both in spelling and in sound. In fact, it is the same exact word. Considering that both
marks are used in goods which are classified as magazines, it requires no stretch of imagination that a
likelihood of confusion may occur. Again, the Court points to the finding of Examiner Icban which was
reviewed and upheld twice: one by the Director of the Bureau of Trademarks and another by the
Director General of the IPO.

G.R. No. 205409, June 13, 2018

CITIGROUP, INC., Petitioner, 
versus 
CITYSTATE SAVINGS BANK, INC. Respondent.

FACTS:

Petitioner Citigroup, Inc. is a corporation duly organized under the

laws of the State of Delaware engaged in banking and financial
services. Citigroup’s wholly-owned subsidiary, Citibank N.A.,
installed its first automated teller machines over a hundred New York
City branches in the late 1970s. Citibank N.A., Philippine Branch,
began the development of its domestic Automated Teller Machine (ATM)
network, and started operating ATMs and issuing ATM cards in the
Philippines.

The ATM cards issued by Citibank N.A., Philippine Branch and Citibank
Savings, Inc. are labelled "CITICARD". The trademark CITICARD is
owned by Citibank N.A. and is registered in the [Intellectual
Property Office] of the Philippines on 27 September 1995 under
Registration Number 34731.

In addition, petitioner or Citibank N.A., a wholly-owned subsidiary

of petitioner, owns the following other trademarks currently
registered with the Philippine [Intellectual Property Office], to
wit: "CITI and arc design", "CITIBANK", "CITIBANK PAYLINK", "CITIBANK
SPEEDCOLLECT", "CITIBANKING", "CITICARD", "CITICORP",
"CITIFINANCIAL", "CITIGOLD", "CITIGROUP", "CITIPHONE BANKING'', and
"CITISERVICE".
Sometime in the mid-nineties, a group of Filipinos and Singaporean
companies formed a consortium to establish respondent Citystate
Savings Bank, Inc. The consortium included established Singaporean
companies, specifically Citystate Insurance Group and Citystate
Management Group Holdings Pte, Ltd.

Respondent's registered mark has in its name affixed a lion's head,

which is likened to the national symbol of Singapore, the Merlion.
The respondent filed an application for registration with the
[Intellectual Property Office] on 21 June 2005 of the trademark "CITY
CASH WITH GOLDEN LION'S HEAD" for its ATM service, under Application
Serial No. 42005005673. Citigroup, Inc. (Citigroup) filed an
opposition to Citystate's application. Citigroup claimed that the
"CITY CASH WITH GOLDEN LION'S HEAD" mark is confusingly similar to
its own "CITI" marks. 

The Director of the Bureau of Legal Affairs of the Intellectual

Property Office ruled in favor of the petitioner.

The dominant features of the marks were the words "CITI" and
"CITY," which were almost the same in all aspects. Approving
Citystate’s application would be contrary to Section 138 of the
Intellectual Property Code and Citigroup's exclusive right to
use its marks.

The Director General of the Intellectual Property Office reversed the

decision of the Director of BLA and gave due course to Citystate’s
trademark application.

The golden lion head device is the prominent or dominant feature

of Citystate's mark, and not the word "CITY." Thus, Citystate's
mark did not resemble Citigroup's mark such that deception or
confusion was likely.

The Court of Appeals, which dismissed the petition.

The Director General Cristobal did not act with grave abuse of
discretion. It found that Citystate's mark was not confusingly
or deceptively similar to Citigroup's marks because Citystate's
trademark is the entire "CITY CASH WITH GOLDEN LION'S HEAD".
Although the words "CITY CASH" are prominent, the entirety of
the trademark must be considered, and focus should not be made
solely on the phonetic similarity of the words "CITY" and
"CITI".

The dissimilarities between the two marks are noticeable and

substantial. The variations in the appearance of the "CITI"
 marks by [Citigroup], when conjoined with other words, would
dissolve the alleged similarity between them and the trademark
of [Citystate]. These dissimilarities, and the insignia of a
golden lion's head before the words "CITY CASH" in the mark of
[Citystate] would sufficiently acquaint and apprise the public
that [Citystate's] trademark "CITY CASH WITH GOLDEN LION'S HEAD"
is not connected with the "CITI" marks of [Citigroup].

Moreover, more credit should be given to the "ordinary

purchaser." Cast in this particular controversy, the ordinary
purchaser is not the "completely unwary consumer" but is the
"ordinarily intelligent buyer" considering the type of product
involved.

Thus, Citigroup filed a Petition for Review.

ISSUE:

Whether the Court of Appeals erred in finding that there exists no

confusing similarity between the parties’ marks.

HELD:

The court ruled in the negative.

There is no objective test for determining whether the confusion is

likely. Likelihood of confusion must be determined according to the
particular circumstances of each case.38 To aid in determining the
similarity and likelihood of confusion between marks, our
jurisprudence has developed two (2) tests: the dominancy test and the
holistic test. This Court explained these tests in Coffee Partners,
Inc. v. San Francisco Coffee & Roastery, Inc.39:

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 occurs.
Exact duplication or imitation is not required. 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 consumers.

In contrast, the holistic test entails a consideration of the

entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity. The
discerning eye of the observer must focus not only on the predominant
words but also on the other features appearing on both marks in order
that the observer may draw his conclusion whether one is confusingly
similar to the other.

With these guidelines in mind, this Court considered "the main,

essential, and dominant features" of the marks in this case, as well
as the contexts in which the marks are to be used. This Court finds
that the use of the "CITY CASH WITH GOLDEN LION'S HEAD" mark will not
result in the likelihood of confusion in the minds of customers.

Applying the dominancy test, this Court sees that the prevalent
feature of respondent's mark, the golden lion's head device, is not
present at all in any of petitioner's marks. The only similar feature
between respondent's mark and petitioner's collection of marks is the
word "CITY" in the former, and the "CITI" prefix found in the latter.
This Court agrees with the findings of the Court of Appeals that this
similarity alone is not enough to create a likelihood of confusion.
This Court also agrees with the Court of Appeals that the context
where respondent's mark is to be used, namely, for its ATM services,
which could only be secured at respondent's premises and not in an
open market of ATM services, further diminishes the possibility of
confusion on the part of prospective customers.

McDONALD’S CORPORATION, Petitioner, vs., MACJOY FASTFOOD CORPORATION,

Respondent
G.R. NO. 166115
February 2, 2007

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 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.

HELD:
YES, there is confusing similarity between the trademarks Mc Donald’s marks and "MACJOY
AND DEVICE" especially considering the fact that both marks are being used on almost the
same products falling under Classes 29 and 30 of the International Classification of Goods i.e.
Food and ingredients of food. Applying the Dominancy test to the present case, McDonalds
and Macjoy marks are confusingly similar with each other such that an ordinary purchaser can
conclude an association or relation between parties.

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.
Indisputably, the respondent’s trademark application for the "MACJOY & DEVICE" trademark
covers goods under Classes 29 and 30 of the International Classification of Goods, namely,
fried chicken, chicken barbeque, burgers, fries, spaghetti, etc. Likewise, the petitioner’s
trademark registration for the MCDONALD’S marks in the Philippines covers goods which
are similar if not identical to those covered by the respondent’s application.

The differences and variations in styles as the device depicting a head of chicken with cap and
bowtie and wings sprouting on both sides of the chicken head, the heart-shaped "M," and the
stylistic letters in "MACJOY & DEVICE;" in contrast to the arch-like "M" and the one-styled
gothic letters in McDonald’s marks are of no moment. These minuscule variations are
overshadowed by the appearance of the predominant features mentioned hereinabove.
Thus, with the predominance of the letter "M," and prefixes "Mac/Mc" found in both marks,
the inevitable conclusion is there is confusing similarity between the trademarks Mc Donald’s
marks and "MACJOY AND DEVICE" especially considering the fact that both marks are being
used on almost the same products falling under Classes 29 and 30 of the International
Classification of Goods i.e. Food and ingredients of food.

ABS-CBN Broadcasting Corporation vs. Philippine Multi-Media System, Inc.

G.R. No. 103543
July 5, 1993

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 the case ruling that there was no trademark infringement or unfair competition.

The CA reversed the ruling on appeal by SMC, finding ABI guilty of infringement of trademark and unfair
competition. CA restrained and enjoined ABI from manufacturing, putting up, selling, advertising, offering or
announcing for sale, or supplying Beer Pale Pilsen, or any similar preparation, manufacture or beer in bottles
and under labels substantially identical with or like the said bottles and labels of SMC.

The registered trademark of SMC for its pale pilsen beer is:
San Miguel Pale Pilsen With Rectangular Hops and Malt Design.

And as described by the trial court as “a rectangular design is bordered by what appears to be minute grains
arranged in rows of three in which there appear in each corner hop designs. At the top is a phrase written in
small print "Reg. Phil. Pat. Off." and at the bottom "Net Contents: 320 Ml." The dominant feature is the
phrase "San Miguel" written horizontally at the upper portion. Below are the words "Pale Pilsen" written
diagonally across the middle of the rectangular design. In between is a coat of arms and the phrase "Expertly
Brewed." The "S" in "San" and the "M" of "Miguel," "P" of "Pale" and "Pilsen" are written in Gothic letters
with fine strokes of serifs, the kind that first appeared in the 1780s in England and used for printing German
as distinguished from Roman and Italic. Below "Pale Pilsen" is the statement "And Bottled by" (first line,
"San Miguel Brewery" (second line), and "Philippines" (third line). 

ABI’s trademark is a rectangular design bordered by what appear to be buds of flowers with leaves. The
dominant feature is "Beer" written across the upper portion of the rectangular design. The phrase "Pale
Pilsen" appears immediately below in smaller block letters. To the left is a hop design and to the right,
written in small prints, is the phrase "Net Contents 320 ml." Immediately below "Pale Pilsen" is the
statement written in three lines "Especially brewed and bottled by" (first line), "Asia Brewery Incorporated"
(second line), and "Philippines" (third line).

ISSUE:

Whether Asia Brewery Inc. committed infringement of trademark against San Miguel Corporation.

RULING:
No.

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.
Levi Strauss & Co. v. Antonio Sevilla and Antonio Guevarra
GR No. 219744; March 1, 2021
FACTS:

1. Levi Strauss & Co. is a foreign corporation that owns the foreign brand
“Levi’s”. It has extensively and continually used the mark since 1946 on items
covered by Class 25, namely, men's, women's, and children's overalls, jackets,
outer skirts, coats, slacks, and pants; women's and children's blouses, outer
shorts, pedal pushers, vests, skirts and culottes; and women's bras.
2. Levi Strauss Phils. Inc. (LSPI), is granted a non-exclusive license to use its
foreign brand here in the Philippines.
 3. Meanwhile, Antonio Sevilla and Antonio L. Guevarra are the registered owners
of the trademark LIVE’S. They are doing business under the name and style
Vogue Traders Clothing Company.
4. Antonio Sevilla appeared to be the original recipient of the Certificate of
Registration of trademark “LIVE'S” also covering goods under Class 25.
5. LSPI then commissioned a consumer survey codenamed “Project Cherokee 5”
to determine if the general public had mistaken marks used by other entities
(such as LIVE’s mark) for that petitioner’s marks. The survey confirmed that
the public indeed strongly identified the “LEVI’S” mark with that of
respondents’ mark, further revealing that 86% of the survey participants
associated the “LIVE’S” mark with “LEVI’S;” and 90% of said survey
participants read the stylized “LIVE’S” mark, i.e., as “LEVI’S.”
6. Consequently, Levi Strauss filed before the then-Bureau of Patents,
Trademarks and Technology Transfer (BPTTT, now the Intellectual Property
Office) a Petition for Cancellation of the trademark LIVE’S essentially on the
ground that it is confusingly similar to petitioner’s “LEVI’S” mark.
7. Sevilla and Guevarra alleged that :
a. there are sufficient differences between the subject marks (differences
in spelling and pronunciation); and
b. the purchasers of goods give due attention when they are purchasing
(the target market of the products are educated purchasers who closely
scrutinize the products).

ISSUE: Whether the “LIVE’s” mark is confusingly similar to the petitioner “LEVI’s”
mark and hence must be canceled.

RULING:

Yes, In Dy v. CA, the Court differentiated these tests as follows:

● 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.
 ● 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 a conclusion on
whether one is confusingly similar to the other.”

In Kolin Electronics Co., Inc. v. Kolin Philippines International, lnc., the Court made it
"crystal clear that the Holistic Test in determining trademark resemblance has been
abandoned.”

Thus, the Court applied the Dominancy Test in this case.

As may be seen in the above figures, the dominant feature of petitioner's "LEVI'S"
marks is the word "Levi's" composed of (5) letters, namely "L", "E", "V", ''I", and "S"
with an apostrophe separating the fourth and fifth letters. Notably, for the
petitioner's stylized marks, the letter "E" is in lowercase format with the rest in
uppercase format.

On the other hand, the dominant feature of respondents' “LIVE’S” stylized mark is
the word "live's" also composed of the same (5) letters; and its only difference with
petitioner's marks is that the positioning of the letters "E" and "I" are interchanged.
Furthermore, respondents' mark also depicts the letter "E" in lowercase format with
the rest in uppercase format.

From the foregoing, it is thus readily apparent that although the petitioner’s and
respondents’ marks are neither spelled identically nor pronounced in the same way
nor possess the same meaning, they both begin with the same letter and are in the
possessive form as denoted by the apostrophe before the letter “S” at the end, with
only the second and fourth letters rearranged. Simply put, the respondents’ mark is
but a mere anagram of petitioners’ “LEVI’S” marks.

It would not be far-fetched to imagine that a buyer, when confronted with such
striking similarity would be led to confuse one over the other. Thus, by simply
applying the Dominancy Test, it can already be concluded that there is a likelihood
of confusion between the petitioner's "LEVI' S" marks and the respondents' “LIVE’S”
marks.

As per the product labels, the two marks have “the same look and feel from the color
scheme, border used, fringe banners, to even some of the textual additives
surrounding the mark.”

It added that the use of the number design “105” with the LIVE’S mark is an
imitation of LEVI’S “501” mark. The high court further stated that the LIVE’S mark is
a “mere colorable imitation” of the LEVI’S mark, which the law defines as “such a
close or ingenious imitation as to be calculated to deceive ordinary purchasers.”

Others (not included in this case):

The dominancy test considers the dominant features in the competing marks in
determining whether they are confusingly similar. Under the dominancy test:
● Greater weight is given to the similarity of the appearance of the product
arising from the adoption of the dominant features of the registered mark.
● Minor differences between the registered mark and the mark in question are
disregarded.
 ● The aural and visual impressions created by the marks in the public mind are
considered.
● Little weight is given to factors like prices, quality, sales outlets, and market
segments. [McDonald’s Corporation v. L.C. Big Mak Burger, Inc., et al., G.R. No.
143993 (2004)]
The dominancy test is now embodied in Sec. 155 of the IPC and is therefore the
controlling test. [Ibid.]
MIGHTY CORP. vs. E&J GALLO
G.R. NO. 154342
July 14, 2004
PONENTE CORONA; J.
FACTS:
On March 12, 1993, E. & J. GALLO WINERY and THE ANDRESONS GROUP,
INC (respondents) sued MIGHTY CORPORATION and LA CAMPANA FABRICA
DE TABACO, INC. (petitioners) in the RTC-Makati for trademark and trade name
infringement and unfair competition, with a prayer for damages and preliminary
injunction.
They claimed that petitioners adopted the Gallo trademark to ride on Gallo
Winery’s and Gallo and Ernest & Julio Gallo trademark’s established reputation
and popularity, thus causing confusion, deception and mistake on the part of the
purchasing public who had always associated Gallo and Ernest and Julio & Gallo
trademarks with Gallo Winery’s wines.
In their answer, petitioners alleged, among other affirmative defenses that:
petitioners Gallo cigarettes and Gallo Winery’s wine were totally unrelated
products. To wit:
1. Gallo Winery’s GALLO trademark registration certificates covered wines only,
and not cigarettes;
2. GALLO cigarettes and GALLO wines were sold through different channels of
trade;
3. the target market of Gallo Winery’s wines was the middle or high-income
bracket while Gallo cigarette buyers were farmers, fishermen, laborers and other
low-income workers;
4. that the dominant feature of the Gallo cigarette was the rooster device with the
manufacturer’s name clearly indicated as MIGHTY CORPORATION, while in the
case of Gallo Winery’s wines, it was the full names of the founders-owners
ERNEST & JULIO GALLO or just their surname GALLO;

The Makati RTC denied, for lack of merit, respondent’s prayer for the issuance of
a writ of preliminary injunction. CA likewise dismissed respondent’s petition for
review on certiorari.

After the trial on the merits, however, the Makati RTC held petitioners liable for
committing trademark infringement and unfair competition with respect to the
GALLO trademark.
On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied
petitioner’s motion for reconsideration.

ISSUE/S: Whether GALLO cigarettes and GALLO wines were identical, similar or
related goods for the reason alone that they were purportedly forms of vice.
RULING: NO.
Wines and cigarettes are not identical, similar, competing or related goods.
In resolving whether goods are related, several factors come into play:
· the business (and its location) to which the goods belong
· the class of product to which the good belong
· the product’s quality, quantity, or size, including the nature of the package,
wrapper or container
· the nature and cost of the articles
· the descriptive properties, physical attributes or essential characteristics
with reference to their form, composition, texture or quality
· the purpose of the goods
· whether the article is bought for immediate consumption, that is, day-to-
day household items
· the field of manufacture
· the conditions under which the article is usually purchased and
· the articles of the trade through which the goods flow, how they are
distributed, marketed, displayed and sold.

Jurisprudence has developed two tests in determining similarity and likelihood of

confusion in trademark resemblance:
(a) the Dominancy Test applied in Asia Brewery, Inc. vs. Court of Appeals76 and
other cases, and
(b) the Holistic or Totality Test used in Del Monte Corporation vs. Court of
Appeals and its preceding cases.

The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks which might cause confusion or deception, and thus
infringement. If the competing trademark contains the main, essential or
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 deceive purchasers.

On the other hand, the Holistic Test requires that the entirety of the marks
in question be considered in resolving confusing similarity. Comparison of
words is not the only determining factor. The trademarks in their entirety as
they appear in their respective labels or hang tags must also be considered
in relation to the goods to which they are attached. The discerning eye of
the observer must focus not only on the predominant words but also on
the other features appearing in both labels in order that he may draw his
conclusion whether one is confusingly similar to the other.

In comparing the resemblance or colorable imitation of marks, various factors

have been considered, such as the dominant color, style, size, form, meaning of
letters, words, designs and emblems used, the likelihood of deception of the
mark or name's tendency to confuse82 and the commercial impression likely to
be conveyed by the trademarks if used in conjunction with the respective goods
of the parties.
Applying the Dominancy and Holistic Tests, we find that the dominant feature of
the GALLO cigarette trademark is the device of a large rooster facing left,
outlined in black against a gold background. The rooster’s color is either green or
red – green for GALLO menthols and red for GALLO filters. Directly below the
large rooster device is the word GALLO. The rooster device is given prominence
in the GALLO cigarette packs in terms of size and location on the labels.84
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).
The test of fraudulent simulation is to the likelihood of the deception of some
persons in some measure acquainted with an established design and desirous of
purchasing the commodity with which that design has been associated. The
simulation, in order to be objectionable, must be as appears likely to mislead the
ordinary intelligent buyer who has a need to supply and is familiar with the article
that he seeks to purchase.
The petitioners are not liable for trademark infringement, unfair competition or
damages.
WHEREFORE, finding the petition for review meritorious, the same is hereby
GRANTED. The questioned decision and resolution of the Court of Appeals in
CA-G.R. CV No. 65175 and the November 26, 1998 decision and the June 24,
1999 order of the Regional Trial Court of Makati, Branch 57 in Civil Case No. 93-
850 are hereby REVERSED and SET ASIDE and the complaint against
petitioners DISMISSED.
1

Philip Morris, Inc. vs. Fortune Tobacco Corporation

G.R. No. 158589. June 27, 2006

Facts: Petitioner Philip Morris, Inc. a corporation organized under the laws of the state of
Virginia, USA, is the registered owner of the trademark MARK VII for cigarettes. Benson and
Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc., is the registered owner of the
trademark MARK TEN for cigarettes. Another subsidiary of Philip Morris, Inc. the Swiss
Company Fabriques de Tabac Reunies, S.A., is the assignee of the trademark LARK. All are
evidenced by Trademark Certificate of Registration. On the other hand, Fortune Tobacco
Corporation, a company organized in the Philippines, manufactures and sells cigarettes using
the trademark MARK.
Philip Morris, Inc. filed a complaint for trademark infringement and damages against
Fortune Tobacco Corporation. The complaint was dismissed by the RTC Pasig City in its
decision dated January 21, 2003.

Maintaining to have the standing to sue in the local forum and that respondent has
committed trademark infringement, petitioners went on appeal to the CA but CA affirmed the
trial court’s decision. The CA found that MARK VII, MARK TEN and LARK do not qualify as
well-known marks entitled to protection even without the benefit of actual use in the local
market and that the similarities in the trademarks in question are insufficient as to cause
deception or confusion tantamount to infringement.

With the motion for reconsideration denied in the CA, the petitioners filed a petition for
review with the Supreme Court.

Issues:

1.) Whether or not petitioners, as Philippine registrants of trademarks, are entitled to

enforce trademark rights in the country.

2.) Whether or not respondent has committed trademark infringement against petitioners
by its use of the mark MARK for its cigarettes, hence liable for damages.

Ruling:
INTRO TO LAW CASE DIGEST CASE # 20
 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 in by
others. Inarguably, trademark deserves protection. It is for this reason that the
petitioner’s recourse for their entitlement to enforce trademark rights in this country
and also the right to sue for trademark infringement in Philippine courts and be
accorded protection against unauthorized use of the Philippine-registered trademarks
is understandable. Their standing to sue in Philippine courts had been recognized by
the CA but such right to sue does not necessarily mean protection of their trademarks
in the absence of actual use in the Philippines.

But the petitioners are still foreign corporations. They may not sue on that basis
alone of their respective certificates of registration of trademarks unless their country
grants similar rights and privileges to Filipino citizens pursuant to Section 21-A of R.A.
No. 166. This reciprocity requirement is a condition to file a suit by a foreign
corporation as ruled in Leviton Industries v. Salvador.

The respective home country of the petitioner, namely, the United States,
Switzerland and Canada, together with the Philippines are members of the Paris
Union. Philippines adherence to the Paris Convention obligates the country to honor
and enforce its provisions, however, this does not automatically entitle petitioners to
the protection of their trademark in our country without actual use of the marks in local
commerce and trade because any protection accorded has to be made subject to the
limitations of Philippine laws.

Significantly, registration in the Philippines of trademarks does not convey an

absolute right or exclusive ownership thereof. In Shangri-la v. Development Group of
Companies, the Court emphasized that trademark is a creation of use and, therefore,
actual use is a prerequisite to exclusive ownership; registration is only an
administrative confirmation of the existence of the right of ownership of the mark, but
does not perfect such right.

With the foregoing perspective, it may be stated right off that the registration of
a trademark unaccompanied by actual use in the country accords the registrants only
the standing to sue for infringements in Philippine Courts but entitlement to protection
of such trademark in the country is entirely different matter.
 On the main issue of infringement, the court, relying on the holistic test ruled
against the likelihood of confusion resulting in infringement arising from the

3
INTRO TO LAW CASE DIGEST
CASE # 20

respondent’s use of the trademark MARK for its particular cigarette product. The
striking dissimilarities are significant enough to warn any purchaser that one is
different from the other. This is upon considering the entire marking as a whole

For lack of convincing proof on the part of the petitioners of actual use of their
registered trademark prior to respondents use of its mark and for petitioners failure to
demonstrate confusing similarity between said trademarks, the dismissal of their basic
complaint of infringement and the plea for damages are affirmed.

The petition is denied. The assailed decision and resolution of the Court of
Appeals are affirmed.

G.R. No. 228165, February 09, 2021 ]

KOLIN ELECTRONICS CO., INC., PETITIONER, VS. KOLIN PHILIPPINES INTERNATIONAL,
INC., RESPONDENT.

FACTS:
KECI filed an opposition against KPII's Trademark based on, among others, the fact that
it is the registered owner of the KOLIN mark and that the registration of KPII's kolin mark will
cause confusion among consumers.
In its defense, KPII claimed that its application for kolin cannot be denied on the basis of
the ruling in the KECI ownership case because it was not a party to said case and the KECI
ownership case is not res judicata to the instant case. KPII asserted that the KECI ownership
case clarified that KECI's ownership over the mark is limited only in connection with goods
specified in KECI's certificate of registration and those related thereto. KPII insisted that
"Televisions and DVD players" are not related to the goods covered by KECI's registered mark.
IPO-BLA sustained KECI's opposition. Accordingly, KPII's Trademark Application
for kolin was rejected because buyers would be confused as to the origin of the products being
offered by KECI and KPII.  Further, the IPO-BLA found that KPII is an instrumentality of TKC.
Aggrieved, KPII appealed the case to the IPO-DG. But IPO-DG dismissed KPII's appeal. KPII
then filed an appeal to the CA. CA granted KPII’s appeal. CA ruled that KPII may register its
mark for television sets and DVD players and the doctrine of res judicata forbids it from arriving
at a contrary conclusion. Hence, this petition.

ISSUE:
Whether holistic test can be used in determining resemblance of mark.

RULING:
 The marks involved in this dispute are KECI's KOLIN and KPII's kolin. In assessing the
resemblance of marks to determine the existence of likelihood of confusion, there are two tests
prescribed by jurisprudence, viz.:
Jurisprudence has developed two tests in determining similarity and likelihood of confusion in
trademark resemblance:
(a) the Dominancy Test applied in Asia Brewery, Inc. vs. Court of Appeals and other cases, and
(b) the Holistic or Totality Test used in Del Monte Corporation vs. Court of Appeals and its
preceding cases.
The Dominancy Test focuses on the similarity of the prevalent features of the competing
trademarks which might cause confusion or deception, and thus infringement. If the competing
trademark contains the main, essential or 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 deceive purchasers.
On the other hand, the Holistic Test requires that the entirety of the marks in question be
considered in resolving confusing similarity. Comparison of words is not the only determining
factor. The trademarks in their entirety as they appear in their respective labels or hang tags
must also be considered in relation to the goods to which they are attached. The discerning eye
of the observer must focus not only on the predominant words but also on the other features
appearing in both labels in order that he may draw his conclusion whether one is confusingly
similar to the other. Out of the two tests, however, only the Dominancy Test has been
incorporated in the IP Code. Considering the adoption of the Dominancy Test and the
abandonment of the Holistic Test, as confirmed by the provisions of the IP Code and the
legislative deliberations, the Court hereby makes it crystal clear that the use of the Holistic Test
in determining the resemblance of marks has been abandoned.
Using the Dominancy Test, the Court should now determine the resemblance
between KOLIN and kolin in terms of the similarity of the dominant features used. This is
consistent with the basic rule in determining resemblance of marks, which requires that the
appearance, sound, meaning, and overall impressions generated by the marks shall be
considered.
In Societe Des Produits Nestle, S.A. v. Dy, Jr., the Court stated that the marks are
confusingly similar based on the Dominancy Test because the mark "NANNY" "contains the
prevalent feature 'NAN'" and because the marks are aurally similar, thus: 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, NANH.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.
Applying the Dominancy Test here, KPII's kolin mark resembles KECI's KOLIN mark
because the word "KOLIN" is the prevalent feature of both marks. Phonetically or aurally, the
marks are exactly the same. Surely, the manner of pronouncing the word "KOLIN" does not
change just because KPII's mark is in lowercase and contains an italicized orange letter "i". In
terms of connotation and overall impression, there seems to be no difference between the two
marks.
 Another consideration is the type of marks used. Logically, this may affect the
determination of resemblance of the marks in terms of their visual, aural, or connotative
aspects, which are key areas to consider in using the Dominancy Test.