G.R. No. 198889 January 20, 2016 4. [Certificate of] Registration No.

4. [Certificate of] Registration No. 32416 was subsequently assigned to the following in successive fashion:
UFC PHILIPPINES, INC. (now merged with NUTRI-ASIA, INC., with NUTRI-ASIA, INC. as the surviving
entity), Petitioner, vs. BARRIO FIESTA MANUFACTURING CORPORATION, Respondent.
LEONARDO-DE CASTRO, J.:
Acres & Acres Food, Inc., Southeast Asia Food, Inc., Heinz-UFC Philippines, Inc., and Opposer UFC
Philippines, Inc.;
5. Last October 28, 2005, Heinz-UFC Philippines, Inc. filed Application Serial No. 4-2005-010788 which, in
effect, is a re-registration of Registration No. 32416 which expired on August 11, 2003;

For our disposition is a petition for review on certiorari  under Rule 45 seeking to annul and set aside the June 6. Heman D. Reyes also filed on March 04, 1982 an application to register in the Supplemental Register the
23, 2011 Decision  and the October 4, 2011 Resolution  of the Court of Appeals in CA-G.R. SP No. 107570,
1 2 "PAPA BANANA CATSUP Label";
which reversed and set aside the March 26, 2008 Decision  of the Bureau of Legal Affairs of the Intellectual
3

Property Office (IPO-BLA) and the January 29, 2009 Decision  of the Director General of the IPO.
4
7. On August 11, 1983, Heman D. Reyes was issued Certificate of Registration No. SR-6282 which was
subsequently assigned to Acres & Acres Food, Inc., Southeast Asia Food, Inc., Heinz-UFC Philippines, Inc.;
Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing under Philippine laws.  It is
5

the emergent entity in a merger with UFC Philippines, Inc. that was completed on February 11, 8. After its expiration, Opposer filed on November 15, 2006 Trademark Application Serial No. 4-2006-012346
2009.  Respondent Barrio Fiesta Manufacturing Corporation (respondent) is likewise a corporation organized
6
for the re-registration of the "PAP A Label Design";
and existing under Philippine laws.
9. The mark "PAP A KETSARAP" for use on banana sauce falling under Class 30 was also registered in favor
On April 4, 2002, respondent filed Application No. 4-2002-002757 for the mark "PAPA BOY & DEVICE" for of Acres & Acres Food, Inc. under Registration No. 34681 issued on August 23, 1985 and renewed last
goods under Class 30, specifically for "lechon sauce."  The Intellectual Property Office (IPO) published said
7
August 23, 2005 by Heinz-UFC Philippines, Inc. for ten (10) years;
application for opposition in the IP Phil. e-Gazette released on September 8, 2006. The mark appears as
follows: 10. On November 07, 2006, Registration No. 34681 was assigned to Opposer;

11. Opposer has not abandoned the use of the mark "PAP A" and the variations thereof as Opposer has
continued their use up to the present;

12. The mark "PAPA BOY & DEVICE" is identical to the mark "PAPA" owned by Opposer and duly registered
in its favor, particularly the dominant feature thereof;

13. [With the] dominant feature of respondent-applicant's mark "PAPA BOY & DEVICE", which is Opposer's
"PAPA" and the variations thereof, confusion and deception is likely to result: The consuming public,
particularly the unwary customers, will be deceived, confused, and mistaken into believing that respondent-
applicant's goods come from Opposer or are authorized by Opposer to Opposer's prejudice, which is
particularly true considering that Opposer's sister company, Southeast Asia Food, Inc., and its predecessors-
in-interest have been major manufacturers and distributors of lechon sauce and other table sauces since 1965
On December 11, 2006, petitioner filed with the IPO-BLA a Verified Notice of Opposition to the above-
under its registered mark "Mang Tomas";
mentioned application and alleged that:

14. Respondent-applicant's mark "PAPA BOY & DEVICE" which nearly resembles Opposer's mark "PAPA"
1. The mark "PAPA" for use on banana catsup and other similar goods was first used [in] 1954 by Neri Papa,
and the variations thereof will impress upon the gullible or unsuspecting public that it is the same or related to
and thus, was taken from his surname;
Opposer as to source because its dominant part is the same as Opposer's mark and, thus, will likely be
mistaken to be the mark, or related to, or a derivative or variation of, Opposer's mark;
2. After using the mark "PAP A" for about twenty-seven (27) years, Neri Papa subsequently assigned the mark
"PAPA" to Heman D. Reyes who, on September 17, 1981, filed an application to register said mark "PAP A"
15. The goods covered by respondent-applicant's application fall under Class 30, the same Class under which
for use on banana catsup, chili sauce, achara, banana chips, and instant ube powder;
Opposer's goods enumerated in its earlier issued registrations;

3. On August 14, 1983, Heman D. Reyes was issued Certificate of Registration No. 32416;
16. The test of dominancy is now explicitly incorporated into law in Section 155 .1 of the IP Code which
defines infringement as the colorable imitation of a registered mark or a dominant feature thereof, and is
provided for by jurisprudence;
17. As a corporation also engaged in the food business, Respondent-applicant knew and/or ought to know
that Opposer and its predecessors-in-interest have been using the mark "PAPA" and the variations thereof for
the last fifty-two (52) years while its sister company is engaged in the business of manufacturing and
distributing "lechon sauce" and other table sauces for the last forty-one (41) years;
18. The approval of the subject application will violate Opposer's right to the exclusive use of its registered
mark "PAPA" and the variations thereof per Section 138 of the IP Code;
19. The approval of the subject application has caused and will continue to cause great and irreparable
damage and injury to Opposer;
20. Respondent-applicant filed the subject application fraudulently and in bad faith; and
21. Respondent-applicant is not entitled to register the subject mark in its favor. 8
In its verified opposition before the IPO, petitioner contended that "PAPA BOY & DEVICE" is confusingly
similar with its "PAPA" marks inasmuch as the former incorporates the term "PAP A," which is the dominant
feature of petitioner's "PAPA" marks. Petitioner averred that respondent's use of "PAPA BOY & DEVICE"
mark for its lechon sauce product, if allowed, would likely lead the consuming public to believe that said lechon
sauce product originates from or is authorized by petitioner, and that the "PAPA BOY & DEVICE" mark is a
variation or derivative of petitioner's "PAPA" marks. Petitioner argued that this was especially true considering
that petitioner's ketchup product and respondent's lechon sauce product are related articles that fall under the
same Class 30. 9
Petitioner alleged that the registration of respondent's challenged mark was also likely to damage the
petitioner, considering that its former sister company, Southeast Asia Food, Inc., and the latter's
predecessors-in-interest, had been major manufacturers and distributors of lechon and other table sauces
since 1965, such as products employing the registered "Mang Tomas" mark.
In its Verified Answer, respondent argued that there is no likelihood of confusion between petitioner's family of
"PAPA" trademarks and respondent's "PAPA BOY & DEVICE" trademark. Respondent raised affirmative
defenses and we quote the relevant ones below:
3. Opposer cites several of its following marks in support of its opposition to the application but an examination
of said marks [reveals] that these have already expired and/or that no confusing similarity exists x xx;
4. Assuming that the mark "PAPA KETSARAP" had been timely renewed on August 23, 2005 for "banana
sauce" under Class 30, the same is not a hindrance to the successful registration of the mark "PAPA BOY &
DEVICE": Jurisprudence provides that a certificate of registration confers upon the trademark owner the
exclusive right to use its own symbol only to those goods specified in the certificate subject to the conditions
and limitations stated therein;
5. As a result, Opposer's right to use the mark "PAPAKETSARAP" is limited to the products covered by its
certificate of registration which is Class 30 for banana sauce;
6. Contrary to Opposer's belief, the dominant features of Respondent-applicant's mark "PAPA BOY &
DEVICE" are the words "PAPA BOY" and the representation of a smiling hog-like character gesturing the
thumbs-up sign and wearing a traditional Filipino hat and scarf while the dominant feature of Opposer's mark
"PAPA KETSARAP" are the words "Papa" and "Ketsarap", not the word "Papa"; and the word "Ketsarap " is
more prominently printed and displayed in the foreground than the word "Papa" for which reasons opposer's
reference to the Dominancy Test fails;
7. Opposer's allegation that the registration of Respondent-applicant's mark "PAPA BOY & DEVICE" will
damage and prejudice the mark "MANG TOMAS" is irrelevant considering that Opposer's basis for filing this
opposition is the alleged confusing similarity between Respondent-applicant's mark and Opposer's mark
"PAPA KETSARAP", not the mark "MANG TOMAS";
8. Respondent-applicant's mark "PAPA BOY & DEVICE" is neither identical nor confusingly similar to
Opposer's mark "PAPA KETSARAP": Respondent-applicant's mark "PAPABOY & DEVICE" is an arbitrary
mark which differs in overall sound, spelling, meaning, style, configuration, presentation, and appearance from
Opposer's mark "PAPA KETSARAP";
9. The dissimilarities between the marks are so distinct, thus, confusion is very unlikely: While Opposer's mark
is a plain word mark, Respondent-applicant's mark "PAPA BOY & DEVICE" is much more intricate and
distinctive such as Opposer's mark not having the words "Lechon Sauce" printed inside a blue ribbon-like
device which is illustrated below the words "PAPA BOY", Opposer's mark not having a prominent smiling hog-
like character gesturing a thumbs-up sign and wearing a Filipino hat and scarf stands beside the words "PAPA
BOY", and Opposer's mark not having the words "Barrio Fiesta" albeit conspicuously displayed above the
mark, all which leave no doubt in the consumer's mind on the product that he is purchasing;
10. Aside from the fact that Respondent-applicant's mark "PAPA BOY & DEVICE" is distinct and different in
appearance, spelling, sound, meaning, and style from Opposer's mark "PAPA KETSARAP", the difference in
the goods covered by both marks is obvious: Since the goods covered by Respondent-applicant's mark is
unrelated and non-competing to those covered by Opposer's mark, the doctrine allowing the registrations of
marks covering unrelated and non-competing goods as enunciated by the Supreme Court is therefore
applicable in this case;
11. Respondent-applicant's mark cannot be confusingly similar to Opposer's mark considering that the
products covered by these marks are different: While Respondent-applicant's mark "PAPA BOY & DEVICE"
covers lechon sauce under Class 30, Opposer's mark "PAPA KETSARAP" covers banana sauce;
12. If a consumer is in the market for banana sauce, he will not buy lechon sauce and vice-versa and as a
result, the margin of error in the acquisition of one from the other is simply remote;
13. Respondent-applicant is the exclusive owner of the mark "PAPA BOY & DEVICE" for lechon sauce under
Class 30: The words "PAPA BOY" is a combination of the nickname of Bonifacio Ongpauco who is one of
Respondent-applicant's incorporators and founders" BOY"- and the word "PAPA" as Bonifacio Ongpauco's
mother, Sixta P. Evangelista, had been fondly known as "Mama Chit", making Respondent-applicant the prior
adopter, user, and applicant of the mark "PAPA BOY & DEVICE" in the Philippines;

14. To protect its ownership over the mark "PAPA BOY & DEVICE" considering that it is the first to adopt and
use said mark, Respondent-applicant applied for its registration under Application Serial No. 4-2002-002757
for Class 30, and said application was found registrable by the Examiner as. a consequence of which the
same was recommended for allowance after undergoing a thorough process of examination, which
recommendation was then approved by the Director of the Bureau of Trademarks (BOT);

2. The mark "PAPA" as it appeared upon re-registration of Certificate No. 32416, under Application No. 4-
15. Respondent-applicant's mark "PAPA BOY & DEVICE" has been commercially used in the Philippines;
2005-010788 for Classes 29 and 30 goods; 12

16. Respondent-applicant's mark "PAPA BOY & DEVICE" has been promoted and advertised for a
considerable duration of time and over wide geographical areas: Respondent-applicant has invested
tremendous amount of resources in the promotion of its mark "PAPA BOY & DEVICE" through various media
including print publications and promotional materials;

17. The widespread local commercial use of the subject mark by Respondent-applicant to distinguish and
identify its various high-quality consumer products has earned Respondent-applicant a well-deserved
business reputation and goodwill;

18. Respondent-applicant's mark is distinctive and capable of identifying its goods and distinguishing them 3. "PAPA LABEL DESIGN" under Registration No. 4-2006-012364·  and
13

from those offered for sale by others in the market including Opposer's goods for which reason no confusion
will result because Respondent-applicant's mark is for lechon sauce while Opposer's mark is for banana
sauce; and

19. The presence of a common prefix "PAPA" in the marks of both parties does not render said marks
identical or confusingly similar: Opposer cannot exclusively appropriate said prefix considering that other
marks such as "Papa Heinz Pizza", "Papa Heinz Sausage", "Papa Beaver", "Papa Pop", "Pizza Papa John's &
Design", "Papadoods", and "Papa in Wine and Device" are valid and active.10

Petitioner's mark and its variations appear as follows:

1. "PAPA" under Registration No. 32416 for Class 29 goods; 11 4. "PAPA KETSARAP" under Certificate of Registration No. 34681, for banana sauce (Class 30). 14
PROCEEDINGS BEFORE THE INTELLECTUAL PROPERTY OFFICE
The case was referred to mediation but the parties failed to arrive at an amicable settlement. The case was
thus set for preliminary conference. Subsequently, the IPO-BLA directed the parties to file their respective
position papers and draft decisions.
The IPO-BLA rendered a Decision on March 26, 2008 sustaining petitioner's Opposition and rejecting
respondent's application for "PAPA BOY & DEVICE." The fallo  of said decision reads as follows:
WHEREFORE, the VERIFIED NOTICE OF OPPOSITION filed by UFC Philippines, Inc. is, as it is hereby,
SUSTAINED. Consequently, Application Serial No. 4-2002-002757 for the mark "PAPA BOY & DEVICE" for
lechon sauce under Class 30 filed on April 04, 2002 by Barrio Fiesta Manufacturing Corporation, is, as it is
hereby, REJECTED.
Let the file wrapper of PAPA BOY & Device subject matter of this case be forwarded to the Bureau of
Trademarks (BOT) for appropriate action in accordance with this Decision. 15
Respondent filed an appeal before the IPO Director General, who found it unmeritorious, and disposed of the
case in the following manner:
WHEREFORE, the instant appeal is hereby DISMISSED. Let a copy of this Decision as well as the trademark
application and records be furnished and returned to the Director of the Bureau of Legal Affairs for appropriate
action. Further, let also the Director of the Bureau of Trademarks and the library of the Documentation,
Information and Technology Transfer Bureau be furnished a copy of this Decision for information, guidance,
and records purposes." 16
DECISION OF THE COURT OF APPEALS
Respondent then filed a petition with the Court of Appeals, questioning the above decision of the IPO Director
General that affirmed the decision of the IPO Bureau of Legal Affairs Director, which disallowed respondent's
application for trademark registration. Respondent's arguments before the Court of Appeals are quoted below:
A.
REGISTRATION NOS. 32416 AND 42005010788 ISSUED FOR THE "PAPA" MARK AND REGISTRATION
NOS. SR-6282 AND 42006012364 ISSUED FOR THE TRADEMARK "PAPA BANANA CATSUP
LABEL/PAPA LABEL DESIGN" SHOULD NOT BE USED AS BASIS IN DETERMINING THE EXISTENCE OF
CONFUSING SIMILARITY.
B.
THERE IS NO CONFUSING SIMILARITY BETWEEN PETITIONER-APPLICANT'S "PAPA BOY & DEVICE"
AND RESPONDENT'S "PAPA KETSARAP" MARK.
C.
PETITIONER-APPLICANT IS ENTITLED TO THE REGISTRATION OF THE MARK "PAPA BOY & DEVICE."
D.
THE OPPOSITION STATES NO CAUSE OF ACTION, AND HENCE, SHOULD BE DENIED OUTRIGHT. 17
As regards the first ground, the Court of Appeals held:
Records show that respondent UFC has Certificates of Registration for the trademarks PAPA, PAPA BANANA
CATSUP label and PAPA KETSARAP. A closer look at the respective Certificate[ s] of Registration of the
aforementioned marks, however, reveals that at the time the trademark application of petitioner was published
in the IPO e-Gazette on September 8, 2006, the duration of the trademark registration of respondent over the
marks PAPA and PAPA BANANA CATSUP have already expired. On the other hand, the mark PAPA
KETSARAP was timely renewed by respondent as shown by the Certificate of Renewal of Registration
issued on September 1, 2006 by the Director of the Bureau of Trademarks.
Under R.A. No. 8293, as amended by R.A. No. 9150, the duration of a trademark registration is 10 years,
renewable for periods of 10 years each renewal. The request for renewal must be made within 6 months
before or after the expiration of the registration. Respondent's PAPA mark was not renewed within the period
provided for under RA No. 8293. Its registered term ended on August 11, 2003 but was reapplied for
registration only on April 4, 2005. Meanwhile, the mark PAPA BANANA CATSUP was registered by
respondent only in the Supplemental Register, hence, was not provided any protection. x x x. It is noted that
the PAPA BANANA CATSUP label was applied for registration on November 15, 2006, over three years after
the expiration of its registration in the Supplemental Register of the Philippine Patent Office on August 11,
2003. Thus, while petitioner has a point that the marks PAPA and PAPA BANANA CATSUP have
already expired and the latter having been afforded no protection at all and should not be juxtaposed
with petitioner's trademark, respondent can still use the marks PAPA KETSARAP and PAPA BANANA
CATSUP, it appearing that the Intellectual Property Office issued a Certificate of Registration No. 4-
2006-012364 for the latter on April 30, 2007, to bar the registration of petitioner's "PAPA BOY &
DEVICE" mark.  (Emphases supplied, citations omitted.)
18
Anent the second ground, the Court of Appeals ruled in the following manner:
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 petitioner's
trademark "PAP A BOY & DEVICE" is not confusingly similar to respondent's "PAPA KETSARAP" and
"PAPA BANANA CATSUP" trademark. Petitioner's trademark is "PAPA BOY" as a whole as opposed to
respondent'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 are conspicuous and noticeable. While
respondent's products are both labeled as banana sauces, that of petitioner Barrio Fiesta is labeled as lechon
sauce.
Moreover, it appears on the label of petitioner's product that the said lechon sauce is manufactured by Barrio
Fiesta thus, clearly informing the public [of] the identity of _the manufacturer of the lechon sauce. As claimed
by respondent, its products have been in commercial use for decades. It is safe to assume then that the
consumers are already aware that "PAPA KETSARAP" and "PAPA BANANA CATSUP" are products of UFC
and not of petitioner or the other way around. In addition, as correctly pointed out by petitioner, if a consumer
is in the market for banana sauce, he will not buy lechon sauce and vice-versa because aside from the fact
that the labels of both parties' products contain the kind of sauce they are marketing, the color of the products
is visibly different. An ordinary consumer is familiar with the fact that the color of a banana sauce is red while a
lechon sauce is dark brown. There can be no deception as both products are marketed in bottles making the
distinction visible to the eye of the consumer and the likelihood of acquiring a wrong sauce, remote. Even if
the products are placed side by side, the dissimilarities between the two marks are conspicuous, noticeable
and substantial enough to matter especially in the light of the following variables that must be factored in.
Lastly, respondent 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. Respondent cannot, therefore, claim exclusive ownership over and singular use
of [the] term. Petitioner was able to explain that it adopted the word "PAPA" in parallel to the nickname of the
founder of Barrio fiesta which is "MAMA CHIT". "PAPA BOY" was derived from the nickname of one of the
incorporators of herein petitioner, a certain Bonifacio Ongpauco, son of Mama Chit.  (Emphasis ours, citation
19
omitted.)
THEORY OF PETITIONER
Thus, petitioner came to this Court, seeking the reversal of the questioned decision and resolution of the Court
of Appeals, and the reinstatement of the decision of the IPO Director General affirming the decision of the
IPO-BLA. Petitioner raises the following grounds:
I.
The court a quo erred in applying the "holistic test" to determine whether there is confusing similarity between
the contending marks, and in reversing the IPO-BLA and the Director General's application of the "dominancy
test."
II.
The court a quo erred in holding that there is no likelihood of confusion between the contending marks given
that the "PAPA BOY & DEVICE" mark is used on lechon sauce, as opposed to ketchup products.
III.
The court a quo erred in holding that Petitioner cannot claim exclusive ownership and use of the "PAP A"
mark for its sauce products because "PAPA" is supposedly a common term of endearment for one's father. 20
Under the first ground, petitioner submitted the following arguments:
1. The findings of administrative agencies, if supported by substantial evidence, are binding upon the courts. 21
Petitioner alleges that the Court of Appeals should have respected the ruling of the IPO Director General,
which was consistent with the ruling of the IPO-BLA and supported by substantial evidence, instead of
substituting its findings of fact for those of the Director General and the IPO-BLA.
2. The dominancy test should have been applied to determine if there is confusing similarity between the
competing marks. 22
Petitioner points out that the Director General and the IPO-BLA found that the dominant feature of the
competing marks is the word "PAP A" and the minor additions to respondent's "PAPA BOY & DEVICE" mark
do not negate likelihood of confusion caused by the latter's use of the dominant word "PAPA." Petitioner
claims that even compared solely to petitioner's "PAPA KETSARAP" mark (Registration No. 34681), which is
conceded to have been timely renewed and to have never expired, respondent's "PAPA BOY & DEVICE"
would still create the likelihood of confusion.
23
According to petitioner, the Court of Appeals based its decision on Mead Johnson & Co. v. N.V.J. Van Dorp,
Ltd.,  a case decided almost five decades ago, long before Republic Act No. 8293 or the 1998 Intellectual
24
Property Code was enforced. Thus, the Court of Appeals erroneously applied the holistic test since given the
nature of the products bearing the competing marks, the dominancy test should have been applied.
Petitioner claims that "[k]etchup and lechon sauce are common and inexpensive household products that are
sold in groceries and regularly encountered by the ordinary or common purchaser who is not expected to
examine, scrutinize, and compare the details of the competing marks." 25
Petitioner distinguishes this case from Mead Johnson  and claims that the ordinary purchaser of ketchup or
lechon sauce is not likely to closely scrutinize each mark as a whole, for the latter is "undiscemingly rash" and
usually in a hurry, and cannot be expected to take note of the smiling hog-like character or the blue ribbon-like
device with the words "Lechon Sauce." Petitioner argues that under the Intellectual Property Code, it is not
necessary for one to colorably imitate the competing trademark as a whole. It is sufficient that one imitates a
"dominant feature" of the mark to constitute trademark infringement.
Petitioner asserts that as the IPO-BLA and the Director General observed that the ordinary purchaser is most
likely to notice the words "PAPA BOY," which, in turn, may lead him to believe that there is a connection
between respondent's lechon sauce and petitioner's ketchup products.
Under the second ground, petitioner argues that the Court of Appeals seemed to be unmindful that two kinds
of confusion may arise from the use of similar or colorable imitation marks, i.e., confusion of goods (product
confusion) and confusion of business (source or origin confusion). Petitioner claims that it is reasonable to
assume that it may expand its business to producing lechon sauce, inasmuch as it already produces food
sauce products and its Articles of Incorporation authorizes it to do so.
Petitioner alleges that the IPO-BLA recognized that confusion of business may arise from respondent's use of
its "PAPA BOY & DEVICE" mark for lechon sauce products, and that the Director-General agreed with the
IPO-BLA's findings on this issue.
Petitioner asserts that ketchup and lechon sauce are undeniably related goods; that they belong to the same
class, i.e., Class 30 of the Nice Classifications; that they serve practically the same purpose, i.e., to spice up
dishes; and that they are sold in similar bottles in the same shelves in grocery stores. Petitioner argues that
the Court of Appeals had absolutely no basis for stating that a person who is out to buy ketchup is not likely to
buy lechon sauce by mistake, as this analysis allegedly only applies to "product confusion" and does not
consider confusion of business. Petitioner alleges that "[t]here equally is actionable confusion when a buyer
purchases Respondent's 'PAPA BOY' lechon sauce believing that the said product is related to or associated
with the famous 'PAPA KETSUP' makers." Petitioner further alleges that "it is reasonable and likely for a
consumer to believe that Respondent's 'PAPA BOY' lechon sauce originated from or is otherwise connected
with Petitioner's line of sauces" and that this is "the precise evil that recognition of confusion of business seeks
to prevent."26
Petitioner avers that "PAPA" is a well-known mark and that it has been in commercial use as early as 1954 on
banana ketchup and similar goods. The "PAPA" mark is also registered as a trademark and in commercial use
in other parts of the world such as the United States of America and the Middle East. Petitioner claims that
"[b ]eing a trademark that is registered and well-known both locally and internationally, Petitioner's 'PAPA'
marks cannot be appropriated by another person or entity not only with respect to goods similar to those with
respect to which it is registered, but also with respect to goods which are not similar to those for which the
'PAPA' marks are registered." 27
Under the third ground, petitioner claims that the fact that the word "PAPA" is a known term of endearment for
fathers does not preclude it from being used as a mark to identify goods. Petitioner claims that their mark falls
under a type of mark known as "arbitrary or fanciful marks," which are "marks that bear no logical relation to
the actual characteristics of the products they represent," are "highly distinctive and valid," and "are entitled to
the greatest protection."28
Petitioner claims that the mark "PAPA" falls under this class of arbitrary marks, even if "PAPA" is also a
common term of endearment for one's father. Petitioner states that there is no logical connection between
one's father and food sauces, such as ketchup; thus, with respect to ketchup, food sauces, and their related
products, and for the purpose of identifying its products, petitioner claims exclusive ownership of the term
"PAPA" as an arbitrary mark.
Petitioner alleges that if respondent "has a good faith and proud desire to unmistakably and distinctly identify
its lechon sauce product out in the market, it should have coined a mark that departs from and is distinguished
from those of its competitors." Petitioner claims that respondent, with full knowledge of the fame and the
decades-long commercial use of petitioner's "PAPA" marks, opted for "PAPA BOY & DEVICE," which
obviously is just a "colorable imitation."
29
THEORY OF RESPONDENT
In its Comment,  respondent claims that petitioner's marks have either expired and/or "that no confusing
30
similarity exists between them and respondent's "PAPA BOY & DEVICE' mark." Respondent alleges that
under Section 15 of Republic Act No. 166, a renewal application should be filed within six months before the
expiration of the period or within three months after such expiration. Respondent avers that the expiration of
the 20-year term for the "PAPA" mark under Registration No. 32416 issued on August 11, 1983 was August
11, 2003. The sixth month before August 11, 2003 was February 11, 2003 and the third month after August
11, 2003 was November 11, 2003. Respondent claims that the application that petitioner filed on October 28,
2005 was almost two years late. Thus, it was not a renewal application, but could only be considered a new
application under the new Trademark Law, with the filing date reckoned on October 28, 2005. The
registrability of the mark under the new application was examined again, and any certificate issued for the
registration of "PAPA" could not have been a renewal certificate.
As for petitioner's other mark "PAPA BANANA CATSUP LABEL," respondent claims that its 20-year term also
expired on August 11, 2003 and that petitioner only filed its application for the new "PAPA LABEL DESIGN"
on November 15, 2006. Having been filed three years beyond the renewal application deadline, petitioner was
not able to renew its application on time, and cannot claim a "continuous existence of its rights over the 'PAPA
BANANA CATSUP LABEL."' Respondent claims that the two marks are different from each other and that the
registration of one is independent of the other. Respondent concludes that the certificate of registration issued
for "PAPA LABEL DESIGN" is "not and will never be a renewal certificate." 31
Respondent also avers as follows:
1.3. With regard to the two new registrations of petitioner namely: "PAPA" (Reg. No. 4-2005-010788) and
"PAPA LABEL DESIGN" (Reg. No. 4-2006-012364), these were filed on October 28, 2005 and November 15,
2006, respectively, under the Intellectual Property Code (RA 8293), which follows the "first to file" rule, and
were obviously filed later than respondent's "PAPA BOY & DEVICE" mark filed on April 4, 2002. These new
marks filed much later than the opposed "PAPA BOY & DEVICE" mark cannot, therefore, be used as basis for
the opposition and should in fact, be denied outrightly.
xxxx
A search of the Online Trademark Database of Intellectual Property Office (IPO) will show that only
Registration No. 34681 issued for "PAPA KETSARAP" was properly renewed on August 23, 2005. xx x
Clearly, the registrations of "PAPA" and "PAPA BANANA CATSUP LABEL" marks under registration nos.
32416 and SR-6282 respectively, have already expired when Petitioner filed its opposition proceeding against
Respondent's trademark on December 11, 2006. Having expired, and therefore, no longer legally existing, the
"PAPA" and "PAPA BANANA CATSUP LABEL" marks CANNOT BAR the registration of respondent's mark.
To allow petitioner's expired marks to prevent respondent's distinct "PAPA BOY & DEVICE" mark from being
registered would be the ultimate absurdity. 32
Respondent posits that the Court of Appeals did not err in reversing the decisions of the administrative
agencies, alleging that "[while] it is true that the general rule is that the factual findings of administrative bodies
deserve utmost respect when supported by evidence, the same is subject to exceptions,"  and that the Court
33
of Appeals had justifiable reasons to disregard the factual finding of the IPO. Here, the Court of Appeals wisely
identified certain material facts that were overlooked by the IPO-BLA and the IPO Director General which it
opined, when correctly appreciated, would alter the result of the case.
Respondent alleges that the IPO-BLA erroneously considered petitioner's marks "PAPA" and "PAPA BANANA
CATSUP LABEL" when it applied the dominancy test in determining whether petitioner's marks are
confusingly similar to those of respondent's mark "PAPA BOY & DEVICE."
Respondent avers that the IPO-BLA absurdly took emphasis on the mark "PAPA" to arrive at its decision and
did not take into consideration that petitioner's mark was already expired when respondent applied for the
registration of its "PAPA BOY & DEVICE" mark. Respondent compares its "PAPA BOY & DEVICE" with the
only mark that respondent allegedly has, "PAPA KETSARAP," and found no confusing similarity between the
two.
We quote below respondent's discussion of its application of the dominancy test to the marks in question:
Applying the Dominancy test, as correctly emphasized by the Court of Appeals, the dominant feature in
respondent's mark is "PAPA BOY" and not "PAPA". It can be gleaned from respondent's mark that the word
"PAPA" was written in the same font, style and color as the word "BOY". There is also the presence of a
"smiling hog-like character" which is positioned very prominently, both in size and location in said mark, at
glance (sic)  even more dominant than the word "PAPA BOY".
xxxx
On the other hand, the dominant feature in petitioner's mark is "KETSARAP", not "PAPA". Even an ordinary
examiner could observe that the word "KETSARAP" in petitioner's mark is more prominently printed than the
word "PAPA".
xxxx
In a dominancy test, the prominent feature of the competing trademarks must be similar to cause confusion or
deception. x x x.
34
Verily, respondent's dominant feature "PAPA BOY" and the smiling hog-like character and petitioner's
dominant feature "KETSARAP", being the word written in a larger font, are neither confusing nor deceiving to
the public. In fact, the differences between their dominant marks are very noticeable and conspicuous to every
purchaser.
Furthermore, the Supreme Court in Societe des Produits Nestle, SA. v. Dy [ 641 Phil. 345], applied the
dominancy test by taking into account the aural effects of the words and letters contained in the marks in
determining the issue of confusing similarity. Obviously, petitioners' "PAPA KETSARAP" mark does not in any
way sounds (sic) like respondent's "PAPA BOY" mark. The common prefix "PAPA" does not render the marks
aurally the same. As discussed above, the dominant feature in petitioner's mark is "KETSARAP" and the
dominant feature in respondent's mark is "PAPA BOY". Thus, the words "KETSARAP" and "PAP A BOY" in
petitioner's and respondent's respective marks are obviously different in sound, making "PAPA BOY &
DEVICE" even more distinct from petitioner's "PAPA KETSARAP" mark. 35
Using the holistic test, respondent further discusses the differences in the marks in this wise:
Even the use of the holistic test x x x takes into consideration the entirety of the marks in question [to] be
considered in resolving confusing similarity. The differences are again very obvious. Respondent's mark has
(1) the word "lechon sauce" printed inside a blue ribbon-like device which is illustrated below the word "PAPA
BOY"; (2) a prominent smiling hog-like character gesturing a thumbs-up sign and wearing a Filipino hat and
scarf stands beside the word "PAPA BOY"; and the word "BARRIO FIESTA" conspicuously displayed above
the said trademark which leaves no doubt in the consumer's mind on the product that he or she is purchasing.
On the other hand, petitioner's mark is the word "PAPA" enclosed by a cloud on top of the word "KETSARAP'
enclosed by a geometrical figure.
xxxx
In the instant case, the respective marks are obviously different in color scheme, logo, spelling, sound,
meaning and connotation. Thus, yet again, under the holistic test there can be no confusion or deception
between these marks.
It also bears stressing that petitioner's "PAPA KETSARAP" mark covers "banana catsup" while respondent's
"PAPA BOY & DEVICE" covers "lechon sauce'', thereby obliterating any confusion of products of both marks
as they travel different channels of trade. If a consumer is in the market for banana catsup, he or she will not
buy lechon sauce and vice-versa. As a result, the margin of error in the acquisition of one for the other is
simply remote. Lechon sauce which is liver sauce is distinct from catsup extracted/ made from banana fruit.
The flavor and taste of a lechon sauce are far from those of a banana catsup. Lechon sauce is sauce for
"lechon" while banana catsup is apparently catsup made from banana. 36
Respondent also contends that "PAPA BOY & DEVICE" mark is not confusingly similar to petitioner's
trademark "PAPA KETSARAP" in terms of appearance, sound, spelling and meaning. The difference in
nature, usage, taste and appearance of products decreases the possibility of deception among buyers. 37
Respondent alleges that since petitioner merely included banana catsup as its product in its certificate, it
cannot claim any further right to the mark "PAPA KETSARAP" on products other than banana catsup.
Respondent also alleges that petitioner cannot raise "international notoriety of the mark" for the first time on
appeal and that there is no proof that petitioner's mark is internationally well-known.
38
Furthermore, respondent argues that petitioner cannot claim exclusive ownership over the use of the word
"PAPA," a term of endearment for one's father. Respondent points out that there are several other valid and
active marks owned by third parties which use the word "PAPA," even in classes of goods similar to those of
petitioner's. Respondent avers that petitioner's claim that its "PAPA" mark is an arbitrary mark is belatedly
raised in the instant petition, and cannot be allowed because the "PAPA KETSARAP" mark would immediately
bring the consuming public to thinking that the product involved is catsup and the description of said catsup
is "masarap" (delicious) and due to the logical relation of the petitioner's mark to the actual product, it being
descriptive or generic, it is far from being arbitrary or fanciful.
39
Lastly, respondent claims that the Court of Appeals correctly ruled that respondent's product cannot be
confused as originating from the petitioner. Since it clearly appears in the product label of the respondent that
it is manufactured by Barrio Fiesta, the public is dutifully informed of the identity of the lechon sauce
manufacturer. The Court of Appeals further took into account the fact that petitioner's products have been in
commercial use for decades. 40
Petitioner, in its Reply  to respondent's Comment, contends that respondent cannot invoke a prior filing date
41
for the "PAPA BOY" mark as against Petitioner's "PAPA" and "PAPA BANANA CATSUP LABEL" marks,
because the latter marks were still registered when respondent applied for registration of its "PAPA BOY" SECTION 1. Certificate of Registration.  - A certificate of registration of a mark shall be prima facie evidence
mark. Thus, the IPO-BLA and Director General correctly considered them in deciding whether the "PAPA of:
BOY" mark should be registered, using the "first to file" rule under Section 123.l(d) of Republic Act No. 8293,
or the Intellectual Property Code (IP Code). a) the validity of the registration;

Petitioner reiterates its argument that the Court of Appeals erred in applying the holistic test and that the b) the registrant's ownership of the mark; and
proper test under the circumstances is the dominancy test, which was correctly applied by the IPO-BLA and
the Director General.42

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.

xxxx
THIS COURT'S RULING
SECTION 3. Presumption of Likelihood of Confusion. - Likelihood of confusion shall be presumed in case an
The petition has merit. identical sign or mark is used for identical goods or services.

We find that the Court of Appeals erred in applying the holistic test and in reversing and setting aside the
decision of the IPO-BLA and that of the IPO Director General, both of which rejected respondent's application
for the mark "PAPA BOY & DEVICE."
In Dermaline, Inc. v. Myra Pharmaceuticals, Inc.,  we defined a trademark as "any distinctive word, name,
43
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 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:

Section 147. Rights Conferred. - 147.1. The owner of a registered mark shall have the exclusive right to a) the strength of plaintiffs mark;
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 b) the degree of similarity between the plaintiffs and the defendant's marks;
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.
c) the proximity of the products or services;
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, d) the likelihood that the plaintiff will bridge the gap;
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. e) evidence of actual confusion;

The guideline for courts in determining likelihood of confusion is found in A.M. No. 10-3-10-SC, or the Rules of f) the defendant's good faith in adopting the mark;
Procedure for Intellectual Property Rights Cases, Rule 18, which provides:
g) the quality of defendant's product or service; and/or
RULE 18
Evidence in Trademark Infringement and Unfair Competition Cases 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. As we held in Berris
Agricultural Co., Inc. v. Abyadang :
44
R.A. No. 8293 defines a "mark" as any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of goods. It also defines a
"collective mark" as any visible sign designated as such in the application for registration and capable of
distinguishing the origin or any other common characteristic, including the quality of goods or services of
different enterprises which use the sign under the control of the registered owner of the collective mark.
On the other hand, R.A. No. 166 defines a "trademark" as any distinctive word, name, symbol, emblem, sign,
or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to
identify and distinguish them from those manufactured, sold, or dealt by another. A trademark, being a special
property, is afforded protection by law. But for one to enjoy this legal protection, legal protection ownership of
the trademark should rightly be established.
The ownership of a trademark is acquired by its registration and its actual use by the manufacturer. or
distributor of the goods made available to the purchasing public. Section 122 of R.A.. No. 8293 provides that
the rights in a mark shall be acquired by means of its valid registration with the IPO. A certificate of registration
of a mark, once issued, constitutes prima facie evidence of the validity of the registration, of the registrant's
ownership of the mark, and of 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. R.A. No. 8293, however, requires the
applicant for registration or the registrant to file a declaration of actual use (DAU) of the mark, with evidence to
that effect, within three (3) years from the filing of the application for registration; otherwise, the application
shall be refused or the mark shall be removed from the register. In other words, the prima facie presumption
brought about by the registration of a mark may be challenged and overcome, in an appropriate action, by
proof of the nullity of the registration or of non-use of the mark, except when excused. Moreover, the
presumption may likewise be defeated by evidence of prior use by another person, i.e.,  it will controvert a
claim of legal appropriation or of ownership based on registration by a subsequent user. This is because a
trademark is a creation of use and belongs to one who first used it in trade or commerce.
The determination of priority of use of a mark is a question of fact. Adoption of the mark alone does not
suffice. One may make advertisements, issue circulars, distribute price lists on certain goods, but these alone
will not inure to the claim of ownership of the mark until the goods bearing the mark are sold to the public in
the market. Accordingly, receipts, sales invoices, and testimonies of witnesses as customers, or orders of
buyers, best prove the actual use of a mark in trade and commerce during a certain period of time.
xxxx
Verily, the protection of trademarks as intellectual property is intended not only to preserve the goodwill and
reputation of the business established on the goods bearing the mark through actual use over a period of
time, but also to safeguard the public as consumers against confusion on these goods. On this matter of
particular concern, administrative agencies, such as the IPO, by reason of their special knowledge and
expertise over matters falling under their jurisdiction, are in a better position to pass judgment
thereon. Thus, their findings of fact in that regard are generally accorded great respect, if not finality
by the courts, as long as they are supported by substantial evidence, even if such evidence might not
be overwhelming or even preponderant. It is not the task of the appellate court to weigh once more the
evidence submitted before the administrative body and to substitute its own judgment for that of the
administrative agency in respect to sufficiency of evidence. (Emphasis added, citations omitted.)
In trademark controversies, each case must be scrutinized according to its peculiar circumstances, such that
jurisprudential precedents should only be made to apply if they are specifically in point.  The cases discussed
45
below are mentioned only for purposes of lifting the applicable doctrines, laws, and concepts, but not for their
factual circumstances, because of the uniqueness of each case in controversies such as this one.
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 Court of Appeals. In Skechers, U.S.A., Inc. v. Inter
Pacific Industrial Trading Corp.,  we held:
46
The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause
confusion. In determining similarity and likelihood of confusion, jurisprudence has developed tests - the
Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the
prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required
that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and
visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices,
quality, sales outlets, and market segments.
xxxx
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.
Applying the Dominancy Test to the case at bar, this Court finds that the use of the stylized "S" by respondent
in its Strong rubber shoes infringes on the mark already registered by petitioner with the IPO. While it is
undisputed that petitioner's stylized "S" is within an oval design, to this Court's mind, the dominant feature of
the trademark is the stylized "S," as it is precisely the stylized "S" which catches the eye of the purchaser.
Thus, even if respondent did not use an oval design, the mere fact that it used the same stylized "S", the same
being the dominant feature of petitioner's trademark, already constitutes infringement under the Dominancy
Test.
This Court cannot agree with the observation of the CA that the use of the letter "S" could hardly be
considered as highly identifiable to the products of petitioner alone. The CA even supported its conclusion by
stating that the letter "S" has been used in so many existing trademarks, the most popular of which is the
trademark "S" enclosed by an inverted triangle, which the CA says is identifiable to Superman. Such
reasoning, however, misses the entire point, which is that respondent had used a stylized "S," which is the
same stylized "S" which petitioner has a registered trademark for. The letter "S" used in the Superman logo,
on the other hand, has a block-like tip on the upper portion and a round elongated tip on the lower portion.
Accordingly, the comparison made by the CA of the letter "S" used in the Superman trademark with
petitioner's stylized "S" is not appropriate to the case at bar.
Furthermore, respondent did not simply use the letter "S," but it appears to this Court that based on the font
and the size of the lettering, the stylized "S" utilized by respondent is the very same stylized "S" used by
petitioner; a stylized "S" which is unique and distinguishes petitioner's trademark. Indubitably, the likelihood of
confusion is present as purchasers will associate the respondent's use of the stylized "S" as having been
authorized by petitioner or that respondent's product is connected with petitioner's business.
xxxx
While there may be dissimilarities between the appearances of the shoes, to this Court's mind such
dissimilarities do not outweigh the stark and blatant similarities in their general features.xx x.
Based on the foregoing, this Court is at a loss as to how the RTC and the CA, in applying the holistic test,
ruled that there was no colorable imitation, when it cannot be any more clear and apparent to this Court that
there is colorable imitation. The dissimilarities between the shoes are too trifling and frivolous that it is
indubitable that respondent's products will cause confusion and mistake in the eyes of the public.
Respondent's shoes may not be an exact replica of petitioner's shoes, but the features and overall design are
so similar and alike that confusion is highly likely.
xxxx
Neither can the difference in price be a complete defense in trademark infringement. In McDonald's
Corporation v. L.C Big Mak Burger, Inc., this Court held:
Modem law recognizes that the protection to which the owner of a trademark is entitled is not limited to
guarding his goods or business from actual market competition with identical or similar products of the parties,
but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to
lead to a confusion of source, as where prospective purchasers would be misled into thinking that the
complaining party has extended his business into the field (see 148 ALR 56 et seq;  53 Am. Jur. 576) or is in
any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his
business (v. 148 ALR 77, 84; 52 Am. Jur. 576, 577). xx x.
Indeed, the registered trademark owner may use its mark on the same or similar products, in different
segments of the market, and at different price levels depending on variations of the products for specific
segments of the market. The purchasing public might be mistaken in thinking that petitioner had ventured into
a lower market segment such that it is not inconceivable for the public to think that Strong or Strong Sport Trail
might be associated or connected with petitioner's brand, which scenario is plausible especially since both
petitioner and respondent manufacture rubber shoes.
Withal, the protection of trademarks as intellectual property is intended not only to preserve the goodwill and
reputation of the business established on the goods bearing the mark through actual use over a period of
time, but also to safeguard the public as consumers against confusion on these goods. While respondent's
shoes contain some dissimilarities with petitioner's shoes, this Court cannot close its eye to the fact that for all
intents and purpose, respondent had deliberately attempted to copy petitioner's mark and overall design and
features of the shoes. Let it be remembered, that defendants in cases of infringement do not normally copy
but only make colorable changes. 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. (Citations omitted.)
The Court discussed the concept of confusion of business in the case of Societe Des Produits Nestle, S.A. v.
Dy, Jr.,  as quoted below:
47
Among the elements, the element of likelihood of confusion is the gravamen of trademark infringement. There
are two types of confusion in trademark infringement: confusion of goods and confusion of business.
In Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft,  the Court distinguished the
two types of confusion:
Callman notes two types of confusion. The first is the confusion of goods  "in which event the ordinarily
prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other."
In which case, "defendant's goods are then bought as the plaintiff's, and the poorer quality of the former
reflects adversely on the plaintiff's reputation." The other is the 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."
There are two tests to determine likelihood of confusion: the dominancy test and holistic test. The dominancy
test focuses on the similarity of the main, prevalent or essential features of the competing trademarks that
might cause confusion. Infringement takes place when the competing trademark contains the essential
features of another. Imitation or an effort to imitate is unnecessary. The question is whether the use of the
marks is likely to cause confusion or deceive purchasers.
xxxx
In cases involving trademark infringement, no set of rules can be deduced. Each case must be decided on its
own merits. Jurisprudential precedents must be studied in the light of the facts of each particular case.
In McDonald's Corporation v. MacJoy Fastfood Corporation, the Court held:
In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to another, no set
rules can be deduced because each case must be decided on its merits. In such cases, even more than in
any other litigation, precedent must be studied in the light of the facts of the 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.
In the light of the facts of the present case, the Court holds that the dominancy test is applicable. In recent
cases with similar factual milieus, the Court has consistently applied the dominancy test. x x x.
xxxx
In McDonald's Corporation v. MacJoy Fastfood Corporation,  the Court applied the dominancy test in holding
that "MACJOY" is confusingly similar to "MCDONALD'S." The Court held:
While we agree with the CA's detailed enumeration of differences between the two (2) competing trademarks
herein involved, we believe that the holistic test is not the one applicable in this case, the dominancy test
being the one more suitable. In recent cases with a similar factual milieu as here, the Court has consistently
used and applied the dominancy test in determining confusing similarity or likelihood of confusion between
competing trademarks.
xxxx
Applying the dominancy test to the instant case, the Court finds that herein petitioner's "MCDONALD'S" and
respondent's "MACJOY" marks are confusingly similar with each other that an ordinary purchaser can
conclude an association or relation between the marks.
To begin with, both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant
features. x x x.
For sure, it is the prefix "Mc," and 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," "Mac
Fries," "Mc Spaghetti," "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.
In McDonald's Corporation v. L. C. Big Mak Burger, Inc., the Court applied the dominancy test in holding that
"BIG MAK" is confusingly similar to "BIG MAC." The Court held:
This Court x x x 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.
Thus, in the 1954 case of Co Tiong Sa v. Director of Patents, the Court ruled:
x x x It has been consistently held that the question of infringement of a trademark is to be determined by the
test of dominancy. Similarity in size, form and color, while relevant, is not conclusive. If the competing
trademark contains the main or essential or dominant features of another, and confusion and deception is
likely to result, infringement takes place. Duplication or imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate. (G. Heilman Brewing Co. vs. Independent Brewing Co., 191
F., 489, 495, citing Eagle White Lead Co. vs. Pflugh (CC)  180 Fed. 579). 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. (Auburn Rubber Corporation vs. Hanover Rubber
Co., 107 F. 2d 588; xx x)
xxxx
The test of dominancy is now explicitly incorporated into law in Section 155.l of the Intellectual Property Code
which defines infringement as the "colorable imitation of a registered mark x x x or a dominant
feature  thereof."
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 "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 Societe Des Produits Nestle, SA. v. Court of Appeals, the Court applied the dominancy test in holding that
"FLAVOR MASTER" is confusingly similar to "MASTER ROAST" and "MASTER BLEND." The Court held:
While this Court agrees with the Court of Appeals' detailed enumeration of differences between the respective
trademarks of the two coffee products, this Court cannot agree that totality test is the one applicable in this
case. Rather, this Court believes that the dominancy test is more suitable to this case in light of its peculiar
factual milieu.
Moreover, the totality or holistic test is contrary to the elementary postulate of the law on trademarks and
unfair competition that confusing similarity is to be determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by the marks in controversy as they are encountered in the
realities of the marketplace. 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.
For this reason, this Court agrees with the BPTTT when it applied the test of dominancy and held that:
xxxx
The scope of protection afforded to registered trademark owners is not limited to protection from.
infringers with identical goods.  The scope of protection extends to protection from infringers with
1âwphi1
related goods, and to market areas that are the normal expansion of business of the registered
trademark owners. Section 138 of R.A. No. 8293 states:
Certificates of Registration.  - A certificate of registration of a mark shall be prima facie  evidence of 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 or services and those that are related thereto specified in the certificate. x x x.
In Mighty Corporation v. E. & J Gallo Winery, the Court held that, "Non-competing goods may be those which,
though they are not in actual competition, are so related to each other that it can reasonably be assumed that
they originate from one manufacturer, in which case, confusion of business can arise out of the use of similar
marks." In that case, the Court enumerated factors in determining whether goods are related: (1) classification
of the goods; (2) nature of the goods; (3) descriptive properties, physical attributes or essential characteristics
of the goods, with reference to their form, composition, texture or quality; and (4) style of distribution and
marketing of the goods, including how the goods are displayed and sold.
xxxx
x x x. 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. In McDonald's
Corporation v. L.C. Big Mak Burger, Inc., the Court held that the scope of protection afforded to registered
trademark owners extends to market areas that are the normal expansion of business:
xxxx
Even respondent's use of the "Big Mak" mark on non-hamburger food products cannot excuse their
infringement of petitioners' registered mark, otherwise registered marks will lose their protection under the law.
The registered trademark owner may use his mark on the same or similar products, in different
segments of the market, and at different price levels depending on variations of the products for
specific segments of the market. The Court has recognized that the registered trademark owner
enjoys protection in product and market areas that are the normal potential expansion of his
business.  Thus, the Court has declared:
Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to
guarding his goods or business from actual market competition with identical or similar products of the parties,
but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to
lead to a confusion of source, as where prospective purchasers would be misled into thinking that the
complaining party has extended his business into the field (see 148 ALR 56 et sq; 53 Am. Jur. 576) or is in
any way connected with the activities of the infringer; or when it forestalls the normal potential expansion of his
business (v. 148 ALR, 77, 84; 52 Arn. Jur. 576, 577). (Emphases supplied, citations omitted.)
Again, this Court discussed the dominancy test and confusion of business in Dermaline, Inc. v. Myra
Pharmaceuticals, Inc.,  and we quote:
48
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that
might cause confusion or deception. It is applied when the trademark sought to be registered contains the
main, essential and dominant features of the earlier registered trademark, and confusion or deception is likely
to result. Duplication or imitation is not even required; neither is it necessary that the label of the applied mark
for registration should suggest an effort to imitate. The important issue is whether the use of the marks
involved would likely cause confusion or mistake in the mind of or deceive the ordinary purchaser, or one who
is accustomed to buy, and therefore to some extent familiar with, the goods in question. Given greater
consideration are the aural and visual impressions created by the marks in the public mind, giving little weight
to factors like prices, quality, sales outlets, and market segments. The test of dominancy is now explicitly
incorporated into law in Section 155.l of R.A. No. 8293 which provides-
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered
mark or the same container or a dominant feature thereof in connection with the sale, offering for
sale, distribution, advertising of any goods or services including other preparatory steps necessary to
carry out the sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive xx x.
xxxx
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.
xxxx
We agree with the findings of the IPO. As correctly applied by the IPO in this case, while there are no set rules
that can be deduced as what constitutes a dominant feature with respect to trademarks applied for
registration; usually, what are taken into account are signs, color, design, peculiar shape or name, or some
special, easily remembered earmarks of the brand that readily attracts and catches the attention of the
ordinary consumer.
xxxx
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.
Indeed, the registered trademark owner may use its mark on the same or similar products, in different
segments of the market, and at different price levels depending on variations of the products for specific
segments of the market. The Court is cognizant that the registered trademark owner enjoys protection in
product and market areas that are the normal potential expansion of his business. Thus, we have held-
Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited
to guarding his goods or business from actual market competition with identical or similar products of
the parties, but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-
name is likely to lead to a confusion of source, as where prospective purchasers would be
misled into thinking that the complaining party has extended his business into the field  (see
148 ALR 56 et seq; 53 Am Jur. 576) or is in any  way connected with the activities of the infringer; or
when it forestalls the normal potential expansion of his business (v. 148 ALR 77, 84; 52 Am.
Jur. 576, 577).
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.
Verily, when one applies for the registration of a trademark or label which is almost the same or that very
closely resembles one already used and registered by another, the application should be rejected and
dismissed outright, even without any opposition on the part of the owner and user of a previously registered
label or trademark. This is intended not only to avoid confusion on the part of the public, but also to protect an
already used and registered trademark and an established goodwill. (Citations omitted.)
Section 123.l(d) of the IP Code provides:
A mark cannot be registered if it:
xxxx
(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
49
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.
We quote the relevant portion of the IPO-BLA decision on this point below:
A careful examination of Opposer's and Respondent-applicant's respective marks shows that the word
"PAPA" is the dominant feature: In Opposer's marks, the word "PAPA" is either the mark by itself or the
predominant word considering its stylized font and the conspicuous placement of the word "PAPA" before the
other words. In Respondent-applicant's mark, the word "PAPA" is written on top of and before the other words
such that it is the first word figure that catches the eyes. The visual and aural impressions created by such
dominant word "PAPA" at the least is that the respective goods of the parties originated from the other, or that
one party has permitted or has been given license to the other to use the word "PAPA" for the other party's
product, or that there is a relation/connection between the two parties when, in fact, there is none. This is
especially true considering that the products of both parties belong to the same class and are closely related:
Catsup and lechon sauce or liver sauce are both gravy-like condiments used to spice up dishes. Thus,
confusion of goods and of business may likely result.
Under the Dominancy Test, the dominant features of the competing marks are considered in determining
whether these competing marks are confusingly similar. Greater weight is given to the similarity of the
appearance of the products arising from the adoption of the dominant features of the registered mark,
disregarding minor differences. The visual, aural, connotative, and overall comparisons and impressions
engendered by the marks in controversy as they are encountered in the realities of the marketplace are the
main considerations (McDonald's Corporation, et al., v. L. C. Big Mak Burger, Inc., et al., G. R. No.143993,
August 18, 2004; Societe Des Produits Nestle, S. A." et al. v. Court of Appeals, et al., G. R. No. 112012, April
4, 2001). 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, 100 Phil.
214 [1956]); Co Tiong Sa v. Director of Patents, et al., G. R. No. L-5378, May 24, 1954). 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 Liang 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,  137 Phil. 838 [1969]).
As to the first issue of whether PAPA BOY is confusingly similar to Opposer's PAPA mark, this Bureau rules in
the affirmative.
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 (Exhibit "A" attached to the VERIFIED NOTICE OF OPPOSITION). 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. Opposer 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 Respondent-applicant was first to file the subject application on April 04, 2002 vis-a-vis the mark "PAP
A" 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, Opposer 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.
xxxx
eliminate this possibility and deprive petitioner of its rights as an owner of a valid mark included in the
Intellectual Property Code.
The Court of Appeals 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.
51

Pursuant to [Section 123 .1 (d) of the IP Code], the application for registration of the subject mark cannot be
allowed considering that Opposer was earlier registrant of the marks PAPA and PAPA KETSARAP which WHEREFORE, we hereby GRANT the petition. We SET ASIDE the June 23, 2011 Decision and the October
registrations were timely renewed upon its expiration. Respondent-applicant's mark "PAPA BOY & DEVICE" is 4, 2011 Resolution of the Court of Appeals in CA-G.R. SP No. 107570, and REINSTATE the March 26,
confusingly similar to Opposer's mark "PAPA KETSARAP" and is applied to goods that are related to 2008 Decision of the Bureau of Legal Affairs of the Intellectual Property Office (IPO-BLA) and the January 29,
Opposer's goods, but Opposer's mark "PAPA KETSARAP" was registered on August 23, 1985 per Certificate 2009 Decision of the Director General of the IPO.
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, Opposer SO ORDERED.
has already registered a mark which Respondent-applicant'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.1âwphi1

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. 50

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
G.R. No. 221717 June 19, 2017

MANG INASAL PHILIPPINES, INC., Petitioner vs. IFP MANUFACTURING CORPORATION, Respondent

VELASCO, JR., J.:

Before us is a Petition for Review on Certiorari under Rule 45 of the Rules of Court of the Resolutions dated
June 10, 2015   and December 2, 2015   of the Court of Appeals (CA) in CA-G.R. SP No. 139020.
1 2

The application of respondent was opposed   by petitioner Mang Inasal Philippines, Inc.
5

The Facts
Petitioner is a domestic fast food company and the owner of the mark "Mang Inasal, Home of Real Pinoy
The Trademark Application and the Opposition Respondent IFP Manufacturing Corporation is a local Style Barbeque and Device" (Mang Inasal mark) for services under Class 43 of the Nice Classification.   The
6

manufacturer of snacks and beverages. said mark, which was registered with the IPO in 2006   and had been used by petitioner for its chain of
7

restaurants since 2003,   consists of the following Insignia:

8

On May 26, 2011, respondent filed with the Intellectual Property Office (IPO) an application   for the
3

registration of the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark" (OK Hotdog Inasal mark) in
connection with goods under Class 30 of the Nice Classification.4 The said mark, which respondent intends to
use on one of its curl snack products, appears as follows:

Petitioner, in its opposition, contended that the registration of respondent's OK Hotdog Inasal mark is
prohibited under Section 123.l (d)(iii) of Republic Act No. (RA) 8293.   Petitioner averred that the OK Hotdog
9

Inasal mark and the Mang Inasal mark share similarities-both as to their appearance and as to the goods or
services that they represent which tend to suggest a false connection or association between the said marks
and, in that regard, would likely cause confusion on the part of the public.   As petitioner explained:
10
1. The OK Hotdog Inasal mark is similar to the Mang Inasal mark. Both marks feature the same dominant
element-i.e., the word "INASAL"-printed and stylized in the exact same manner, viz:
a. In both marks, the word "INASAL" is spelled using the same font style and red color;
b. In both marks, the word "INASAL" is placed inside the same black outline and yellow
background; and
c. In both marks, the word "INASAL" is arranged in the same staggered format.
2. The goods that the OK Hotdog Inasal mark is intended to identify (i.e., curl snack products) are also closely
related to the services represented by the Mang Inasal mark (i.e., fast food restaurants). Both marks
cover inasal  or inasal-flavored food products.
Petitioner's opposition was referred to the Bureau of Legal Affairs (BLA) of the IPO for hearing and disposition.
Decisions of the IPO-BLA and the IPO-DG
On September 19, 2013, after due proceedings, the IPO-BLA issued a Decision   dismissing petitioner's
11
opposition. The dispositive portion of the Decision reads:
WHEREFORE, premises considered, the instant opposition is hereby DISMISSED. Let the filewrapper [sic] of
Trademark Application Serial No. 4-2011-006098 be returned, together with a copy of this Decision, to the
Bureau of Trademarks for further information and appropriate action.
SO ORDERED.
Aggrieved, petitioner appealed the Decision of IPO-BLA to the Director General (DG) of the IPO.  12
On December 15, 2014, the IPO-DG rendered a Decision   dismissing the appeal of petitioner. The fallo of the
13
Decision accordingly reads:
Wherefore, premises considered, the appeal is hereby dismissed. Let a copy of this Decision be furnished to
the Director of Bureau of Legal Affairs and the Director of Bureau of Trademarks for their appropriate action
and information. Further, let a copy of this Decision be furnished to the library of the Documentation,
Information and Technology Transfer Bureau for records purposes.
SO ORDERED.
Both the IPO-BLA and the IPO-DG were not convinced that the OK Hotdog Inasal mark is confusingly similar
to the Mang Inasal mark. They rebuffed petitioner's contention, thusly:
1. The OK Hotdog Inasal mark is not similar to the Mang !nasal mark. In terms of appearance, the only
similarity between the two marks is the word "INASAL." However, there are other words like "OK,"
"HOTDOG," and "CHEESE' and images like that of curls and cheese that are found in the OK Hotdog Inasal
mark but are not present in the Mang Inasal mark.  14
In addition, petitioner cannot prevent the application of the word "INASAL"  in the OK Hotdog Inasal mark. No
person or entity can claim exclusive right to use the word "INASAL" because it is merely a generic or
descriptive word that means barbeque or barbeque products.  15
Neither can the underlying goods and services of the two marks be considered as closely related. The
products represented by the two marks are not competitive and are sold in different channels of trade. The
curl snack products of the OK Hotdog Inasal mark are sold in sari-sari stores, grocery stores and other small
distributor outlets, whereas the food products associated with the Mang Inasal mark are sold in petitioner's
restaurants. 16
Undeterred, petitioner appealed to the CA.
Resolutions of the CA and the Instant Appeal
On June 10, 2015, the CA issued a Resolution   denying the appeal of petitioner. Petitioner filed a motion for
17
reconsideration, but this too was denied by the CA through its Resolution18 dated December 2, 2015. The
CA, in its Resolutions, simply agreed with the ratiocinations of the IPOBLA and IPO-DG.
Hence, the instant appeal.
Here, petitioner prays for the reversal of the CA Resolutions. Petitioner maintains that the OK Hotdog Inasal
mark is confusingly similar to the Mang Inasal mark and insists that the trademark application of respondent
ought to be denied for that reason.
Our Ruling
We have examined the OK Hotdog Inasal and Mang Inasal marks under the lens of pertinent law and
jurisprudence. And, through it, we have determined the justness of petitioner's claim. By our legal and
jurisprudential standards, the respondent's OK Hotdog Inasal mark is, indeed, likely to cause deception or
confusion on the part of the public. Hence, contrary to what the IPO-BLA, IPO-DG, and the CA had ruled, the
respondent's application should have been denied.
We, therefore, grant the appeal.
I
The Proscription: Sec. 123.l(d)(iii) of RA 8293
A mark that is similar to a registered mark or a mark with an earlier filing or priority date (earlier mark) and
which is likely to cause confusion on the part of the public cannot be registered with the IPO. Such is the
import of Sec. 123.l(d)(iii) of RA 8293:
SECTION 123. Registrability. –
123. 1. A mark cannot be registered if it:
xxxx
d. xxx:
1. x x x
11. x x x
iii. ... nearly resembles [a registered mark belonging to a different proprietor or a mark with an earlier filing or
priority date] as to be likely to deceive or cause confusion.
The concept of confusion, which is at the heart of the proscription, could either refer to confusion of
goods  or confusion of business.  In Skechers U.S.A., Inc. v. Trendworks International Corporation,   we 19
discussed and differentiated both types of confusion, as follows:
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.
Confusion, in either of its forms, is, thus, only possible when the goods or services covered by allegedly
similar marks are identical, similar or related in some manner.  20
Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be regarded as likely to deceive or cause confusion upon
the purchasing public, a prospective mark must be shown to meet two (2) minimum conditions:
1. The prospective mark must nearly resemble or be similar to an earlier mark; and
2. The prospective mark must pertain to goods or services that are either identical, similar or related
to the goods or services represented by the earlier mark.
The rulings of the IPO-BLA, IPO-DG, and the CA all rest on the notion that the OK Hotdog Inasal mark
does not  fulfill both conditions and so may be granted registration.
We disagree.
II
The OK Hotdog Inasal Mark Is Similar to the Mang Inasal Mark
The first condition of the proscription requires resemblance or similarity between a prospective mark and an
earlier mark. Similarity does not mean absolute identity of marks.   To be regarded as similar to an earlier
21
mark, it is enough that a prospective mark be a colorable imitation of the former.   Colorable imitation denotes
22
such likeness in form, content, words, sound, meaning, special arrangement or general appearance of one
mark with respect to another as would likely mislead an average buyer in the ordinary course of purchase.  23
In determining whether there is similarity or colorable imitation between two marks, authorities employ either
the dominancy test  or the holistic test.  In Mighty Corporation v. E. & J. Gallo Winery,   we distinguished
24 25
between the two tests as follows:
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. (citations omitted and emphasis supplied)
There are currently no fixed rules as to which of the two tests can be applied in any given case.   However,
26
recent case law on trademark seems to indicate an overwhelming judicial preference towards applying the
dominancy test.   We conform.
27
Our examination of the marks in controversy yielded the following findings:
1. The petitioner's Mang Inasal mark has a single dominant feature-the word "INASAL" written in a bold red
typeface against a black outline and yellow background with staggered design. The other perceptible
elements of the mark-such as the word "MANG"  written in black colored font at the upper left side of the mark
and the phrase "HOME OF REAL PINOY STYLE BARBEQUF'  written in a black colored stylized font at the
lower portion of the mark-are not as visually outstanding as the mentioned feature.
2. Being the sole dominant element, the word "INASAL,"  as stylized in the Mang Inasal mark, is also the most
distinctive and recognizable feature of the said mark.
3. The dominant element "INASAL," as stylized in the Mang Inasal mark, is different from the term "inasal' per
se. The term "inasal" per se is a descriptive term that cannot be appropriated. However, the dominant
element "INASAL,"  as stylized in the Mang Inasal mark, is not. Petitioner, as the registered owner of the Mang
Inasal mark, can claim exclusive use of such element.
4. The respondent's OK Hotdog Inasal mark, on the other hand, has three (3) dominant features: (a) the
word "INASAL" written in a bold red typeface against a black and yellow outline with staggered design; (b) the
word "HOTDOG" written in green colored font; and (c) a picture of three pieces of curls. Though there are
other observable elements in the mark-such as the word "OK''  written in red colored font at the upper left side
of the mark, the small red banner overlaying the picture of the curls with the words "CHEESE HOTDOG
FLAVOR" written on it, and the image of a block of cheese beside the picture of the curls-none of those are as
prevalent as the two features aforementioned.
5. The dominant element "INASAL"  in the OK Hotdog Inasal mark is exactly the same as the dominant
element "INASAL"  in the Mang Inasal mark. Both elements in both marks are printed using the exact same
red colored font, against the exact same black outline and yellow background and is arranged in the exact
same staggered format.
6. Apart from the element "INASAL," there appear no other perceivable similarities between the two marks.
Given the foregoing premises, and applying the dominancy test, we hold that the OK Hotdog Inasal mark is a
colorable imitation of the Mang Inasal mark.
First. The fact that the conflicting marks have exactly the same dominant element is key. It is undisputed that
the OK Hotdog Inasal mark copied and adopted as one of its dominant features the "INASAL" element of the
Mang Inasal mark. Given that the "INASAL" element is, at the same time, the dominant and most distinctive
feature of the Mang Inasal mark, the said element's incorporation in the OK Hotdog Inasal mark, thus, has
the potential  to project the deceptive and false impression that the latter mark is somehow linked or
associated with the former mark.
Second.  The differences between the two marks are I trumped by the overall impression created by their
similarity. The mere fact that there are other elements in the OK Hotdog Inasal mark that are not present in the
Mang Inasal mark actually does little to change the probable public perception that both marks are linked or
associated.  It is worth reiterating that the OK Hotdog Inasal mark actually brandishes a literal copy  of the
1âwphi1
most recognizable feature of the Mang Inasal mark. We doubt that an average buyer catching a casual
glimpse of the OK Hotdog Inasal mark would pay more attention to the peripheral details of the said mark than
it would to the mark's more prominent feature, especially when the same invokes the distinctive feature of
another more popular brand.
All in all, we find that the OK Hotdog Inasal mark is similar to the Mang Inasal mark.
III
The Goods for which the Registration of the OK Hotdog Inasal Mark Is Sought Are Related to the Services
Being Represented by the Mang Inasal Mark
The second condition of the proscription requires that the prospective mark pertain to goods or services that
are either identical, similar or related to the goods or services represented by the earlier mark. While there can
be no quibble that the curl snack product for which the registration of the OK Hotdog Inasal mark is sought
cannot be considered as identical or similar to the restaurant services represented by the Mang Inasal mark,
there is ample reason to conclude that the said product and services may nonetheless be regarded
as related  to each other.
Related goods and services are those that, though non-identical or non-similar, are so logically connected to
each other that they may reasonably be assumed to originate from one manufacturer or from economically-
linked manufacturers.   In determining whether goods or services are related, several factors may be
28
considered. Some of those factors recognized in our jurisprudence are:  29
1. the business (and its location) to which the goods belong;
2. the class of product to which the goods belong;
3. the product's quality, quantity, or size, including the nature of the package, wrapper or container;
4. the nature and cost of the articles;
5. the descriptive properties, physical attributes or essential characteristics with reference to their form,
composition, texture or quality;
6. the purpose of the goods;
7. whether the article is bought for immediate consumption, that is, day-to-day household items;
8. the fields of manufacture;
9. the conditions under which the article is usually purchased, and
10. the channels of trade through which the goods flow, how they are distributed, marketed, displayed and
sold.
Relative to the consideration of the foregoing factors, however, Mighty Corporation    significantly imparted:
30
The wisdom of this approach is its recognition that each trademark infringement case presents its own unique
set of facts. No single factor is preeminent, nor can the presence or absence of one determine, without
analysis of the others, the outcome of an infringement suit. Rather, the court is required to sift the evidence
relevant to each of the criteria. This requires that the entire panoply of elements constituting the relevant
factual landscape be comprehensively examined. It is a weighing and balancing process. With reference to All in all, we find that the goods for which the registration of the OK Hotdog Inasal mark is sought are related
this ultimate question, and from a balancing of the determinations reached on all of the factors, a conclusion is to the services being represented by the Mang Inasal mark. 1âwphi1

reached whether the parties have a right to the relief sought.

A very important circumstance though is whether there exists a likelihood that an appreciable number of
ordinarily prudent purchasers will be misled, or simply confused, as to the source of the goods in question.
The "purchaser" is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering
the type of product involved he is accustomed to buy, and therefore to some extent familiar with, the goods in
question. The test of fraudulent simulation is to be found in 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 test is not found in the deception, or the possibility of deception, of the
person who knows nothing about the design which has been counterfeited, and who must be indifferent
between that and the other. The simulation, in order to be objectionable, must be such 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. (citations omitted and emphasis supplied)
Mindful of the foregoing precepts, we hold that the curl snack product for which the registration of the OK
Hotdog Inasal mark is sought is related to the restaurant services represented by the Mang !nasal mark, in
such a way that may lead to a confusion of business. In holding so, we took into account the specific kind of
restaurant business that petitioner is engaged in, the reputation of the petitioner's mark, and the particular type
of curls sought to be marketed by the respondent, thus:
First. Petitioner uses the Mang Inasal mark in connection with its restaurant services that is particularly known
for its chicken inasal, i.e., grilled chicken doused in a special inasal  marinade.   The inasal marinade is
31
different from the typical barbeque marinade and it is what gives the chicken inasal its unique taste and
distinct orange color.   Inasal  refers to the manner of grilling meat products using an inasal  marinade.
32
IV
Conclusion
The OK Hotdog Inasal mark meets the two conditions of the proscription under Sec. 123.l(d)(iii) of RA
8293. First,  it is similar to the Mang Inasal mark, an earlier mark. Second, it pertains to goods that are related
to the services represented by such earlier mark. Petitioner was, therefore, correct; and the IPO-BLA, IPO-
DG, and the CA's rulings must be reversed. The OK Hotdog Inasal mark is not entitled to be registered as its
use will likely deceive or cause confusion on the part of the public and, thus, also likely to infringe the Mang
Inasal mark. The law, in instances such as this, must come to the succor of the owner of the earlier mark.
WHEREFORE, premises considered, the petition is hereby GRANTED. We hereby render a decision as
follows:
1. REVERSING and SETTING ASIDE the Resolutions dated June 10, 2015 and December 2, 2015 of the
Court of Appeals in CA-G.R. SP No. 139020;
2. SETTING ASIDE the Decision dated December 15, 2014 of the Director General of the Intellectual Property
Office in Appeal No. 14-2013-0052;
3. SETTING ASIDE the Decision dated September 19, 2013 of the Director of the Bureau of Legal Affairs of
the Intellectual Property Office in IPC No. 14-2012-00369; and

4. DIRECTING the incumbent Director General and Director of the Bureau of Legal Affairs of the Intellectual
  Property Office to DENY respondent's Application No. 4-2011-006098 for the registration of the mark "OK
Hotdog Inasal Cheese Hotdog Flavor Mark"
Second.  The Mang Inasal mark has been used for petitioner's restaurant business since 2003. The restaurant
started in Iloilo but has since expanded its business throughout the country. Currently, the Mang Inasal chain SO ORDERED.
of restaurants has a total of 464 branches scattered throughout the nation's three major islands.   It is, thus,
33

fair to say that a sizeable portion of the population is knowledgeable of the Mang Inasal mark.

Third. Respondent, on the other hand, seeks to market under the OK Hotdog Inasal mark curl snack products
which it publicizes as having a cheese hotdog inasal  flavor. 34

Accordingly, it is the fact that the underlying goods and services of both marks deal with inasal and inasal-
flavored  products which ultimately fixes the relations between such goods and services. Given the foregoing
circumstances and the aforesaid similarity between the marks in controversy, we are convinced that an
average buyer who comes across the curls marketed under the OK Hotdog Inasal mark is likely to be
confused as to the true source of such curls. To our mind, it is not unlikely that such buyer would be led into
the assumption that the curls are of petitioner and that the latter has ventured into snack manufacturing or, if
not, that the petitioner has supplied the flavorings for respondent's product. Either way, the reputation of
petitioner would be taken advantage of and placed at the mercy of respondent.

G.R. No. 209843 March 25, 2015
TAIWAN KOLIN CORPORATION, LTD., Petitioner, vs. KOLIN ELECTRONICS CO., INC., Respondent.
VELASCO, JR., J.:
Nature of the Case
Before the Court is a petition for review under Rule 45 of the Rules of Court interposed by petitioner Taiwan
Kolin Corporation, Ltd. (Taiwan Kolin), assailing the April 30, 2013 Decision  of the Court of Appeals (CA) in
1 By Decision  dated August 16, 2007, the BLA-IPO denied petitioner’s application disposing as follows:
CA-G.R. SP No. 122565 and its subsequent November 6, 2013 Resolution.  The assailed issuances
2
effectively denied petitioner's trademark application for the use of "KOLIN" on its television and DVD players.
The Facts
On February 29, 1996, Taiwan Kolin filed with the Intellectual Property Office (IPO), then Bureau of Patents,
Trademarks, and Technology Transfer, a trademark application, docketed as Application No. 4-1996-106310,
for the use of "KOLIN" on a combination of goods, including colored televisions, refrigerators, window-type
and split-type air conditioners, electric fans and water dispensers. Said goods allegedly fall under Classes 9,
11, and 21 of the Nice Classification (NCL).
Application No. 4-1996-106310 would eventually be considered abandoned for Taiwan Kolin’s failure to
respond to IPO’s Paper No. 5 requiring it to elect one class of good for its coverage. However, the same
application was subsequently revived through Application Serial No. 4-2002-011002,  with petitioner electing
3
Class 9 as the subject of its application, particularly: television sets, cassette recorder, VCD Amplifiers,
camcorders and other audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets,
videophones, facsimile machines, teleprinters, cellular phones and automatic goods vending machine. The
application would in time be duly published. 4
On July 13, 2006, respondent Kolin Electronics Co., Inc. (Kolin Electronics) opposed petitioner’s revived
application, docketed as Inter Partes Case No. 14-2006-00096. As argued, the mark Taiwan Kolin seeks to
register is identical, if not confusingly similar, with its "KOLIN" mark registered on November 23, 2003,
covering the following products under Class 9 of the NCL: automatic voltage regulator, converter, recharger,
stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC. 5
To digress a bit, Kolin Electronics’ "KOLIN" registration was, as it turns out, the subject of a prior legal dispute
between the parties in Inter Partes Case No. 14-1998-00050 beforethe IPO. In the said case, Kolin
Electronics’ own application was opposed by Taiwan Kolin, being, as Taiwan Kolin claimed, the prior registrant
and user of the "KOLIN" trademark, having registered the same in Taipei, Taiwan on December 1, 1988. The
Bureau of Legal Affairs of the IPO (BLA-IPO), however, did not accord priority right to Taiwan Kolin’s Taipei
registration absent evidence to prove that it has already used the said mark in the Philippines as early as
1988. On appeal, the IPO Director General affirmed the BLA-IPO’s Decision. Taiwan Kolin elevated the case
to the CA, but without injunctive relief, Kolin Electronics was able to register the "KOLIN" trademark on
November 23, 2003for its products.  Subsequently, the CA, on July 31, 2006, affirmed  the Decision of the
6 7
Director General.
In answer to respondent’s opposition in Inter Partes Case No. 14-2006-00096, petitioner 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
8
the "KOLIN" mark in the People’s Republic of China, Malaysia and Vietnam, 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. 9
Ruling of the BLA-IPO
10
In view of all the foregoing, the instant Opposition is as, it is hereby SUSTAINED. Accordingly, application
bearing Serial No. 4-1996-106310 for the mark "KOLIN" filed in the name of TAIWAN KOLIN., LTD. on
February 29, 1996 for goods falling under Class 09 of the International Classification of Goods such as
cassette recorder, VCD, woofer, amplifiers, camcorders and other audio/video electronic equipment, flat iron,
vacuum cleaners, cordless handsets, videophones, facsimile machines, teleprinters, cellular phones,
automatic goods vending machines and other electronic equipment is hereby REJECTED.
Let the file wrapper of "KOLIN", subject of this case be forwarded to the Bureau of Trademarks (BOT) for
appropriate action in accordance with this Decision.
SO ORDERED. WHEREFORE, the appeal is GRANTED. The November 23, 2011 Decision of the Director General of the
Intellectual Property Office in Inter Partes Case No. 14-2006-0096 is REVERSED and SET ASIDE. The
Citing Sec. 123(d) of the IP Code,  the BLA-IPO held that a mark cannot be registered if it is identical with a
11 September 17, 2007 Decision of the Bureau of Legal Affairs of the same office is REINSTATED.
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 SO ORDERED.
NCL, should then be protected against anyone who impinges on its right, including petitioner who seeks to
register an identical mark to be used on goods also belonging to Class 9 of the NCL.  The BLA-IPO also noted
12
Petitioner moved for reconsideration only to be denied by the CA through its equally assailed November 6,
that there was proof of actual confusion in the form of consumers writing numerous e-mails to respondent 2013 Resolution. Hence, the instant recourse.
asking for information, service, and complaints about petitioner’s products. 13

The Issue
Petitioner moved for reconsideration but the same was denied on January 26, 2009 for lack of merit.  Thus,
14

petitioner appealed the above Decision to the Office of the Director General of the IPO.
The primordial issue to be resolved boils down to whether or not petitioner is entitled to its trademark
registration of "KOLIN" over its specific goods of television sets and DVD players. Petitioner postulates, in the
Ruling of the IPO Director General main, that its goods are not closely related to those of Kolin Electronics. On the other hand, respondent hinges
its case on the CA’s findings that its and petitioner’s products are closely-related. Thus, granting petitioner’s
On November 23, 2011, the IPO Director General rendered a Decision  reversing that of the BLA-IPO in the
15
application for trademark registration, according to respondent, would cause confusion as to the public.
following wise:
The Court's Ruling
Wherefore, premises considered, the appeal is hereby GRANTED. The Appellant’s Trademark Application No.
4-1996-106310 is hereby GIVEN DUE COURSE subject to the use limitation or restriction for the goods The petition is impressed with merit.
"television and DVD player". Let a copy of this Decision as well as the trademark application and records be
furnished and returned to the Director of the Bureau of Legal Affairs for appropriate action. Further, let the
Director of the Bureau of Trademarks and the library of the Documentation, Information and Technology Identical marks may be registered for products from the same classification
Transfer Bureau be furnished a copy of this Decision for information, guidance, and records purposes.
To bolster its opposition against petitioner’s application to register trademark "KOLIN," respondent maintains
SO ORDERED. that the element of mark identity argues against approval of such application, quoting the BLA IPO’s ruling in
this regard: 21

In so ruling, the IPO Director General ratiocinated that product classification alone cannot serve as the
decisive factor in the resolution of whether or not the goods are related and that emphasis should be on the Indubitably, Respondent-Applicant’s [herein petitioner] mark is identical to the registered mark of herein
similarity of the products involved and not on the arbitrary classification or general description of their Opposer [herein respondent] and the identical mark is used on goods belonging to Class 9 to which Opposer’s
properties or characteristics. As held, the mere fact that one person has adopted and used a particular goods are also classified. On this point alone, Respondent-Applicant’s application should already be denied.
trademark for his goods does not prevent the adoption and use of the same trademark by others on articles of
a different description.
16
The argument is specious.

Aggrieved, respondent elevated the case to the CA. The parties admit that their respective sets of goods belong to Class 9 of the NCL, which includes the
following:22

Ruling of the Court of Appeals

Class 9
In its assailed Decision, the CA 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 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling,
Kolin Electronics; (b) there are no other designs, special shape or easily identifiable earmarks that would checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for
differentiate the products of both competing companies;  and (c) the intertwined use of television sets with
17
conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording,
amplifier, booster and voltage regulator bolstered the fact that televisions can be considered as within the transmission or reproduction of sound or images; magneticdata carriers, recording discs; compact discs,
normal expansion of Kolin Electronics,  and is thereby deemed covered by its trademark as explicitly
18
DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating
protected under Sec. 138  of the IP Code.  Resultantly, the CA granted respondent’s appeal thusly:
19 20
machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
But mere uniformity in categorization, by itself, does not automatically preclude the registration of what
appears to be an identical mark, if that be the case. In fact, this Court, in a long line of cases, has held that
such circumstance does not necessarily result in any trademark infringement. The survey of jurisprudence
cited in Mighty Corporation v. E. & J Gallo Winery  is enlightening on this point:
23
(a) in Acoje Mining Co., Inc. vs. Director of Patents,  we ordered the approval of Acoje Mining’s
24
application for registration of the trademark LOTUS for its soy sauce even though Philippine Refining
Company had prior registration and use of such identical mark for its edible oil which, like soy sauce,
also belonged to Class 47;
(b) in Philippine Refining Co., Inc. vs. Ng Sam and Director of Patents,  we upheld the Patent
25
Director’s registration of the same trademark CAMIA for Ng Sam’s ham under Class 47, despite
Philippine Refining Company’s prior trademark registration and actual use of such mark on its lard,
butter, cooking oil (all of which belonged to Class 47), abrasive detergents, polishing materials and
soaps;
(c) in Hickok Manufacturing Co., Inc. vs. Court of Appeals and Santos Lim Bun Liong,  we dismissed
26
Hickok’s petition to cancel private respondent’s HICKOK trademark registration for its Marikina shoes
as against petitioner’s earlier registration of the same trademark for handkerchiefs, briefs, belts and
wallets.
Verily, whether or not the products covered by the trademark sought to be registered by Taiwan Kolin, on the
one hand, and those covered by the prior issued certificate of registration in favor of Kolin Electronics, on the
other, fall under the same categories in the NCL is not the sole and decisive factor in determining a possible
violation of Kolin Electronics’ intellectual property right should petitioner’s application be granted. It is
hornbook doctrine, as held in the above-cited cases, that emphasis should be on the similarity of the products
involved and not on the arbitrary classification or general description of their properties or characteristics. The
mere fact that one person has adopted and used a trademark on his goods would not, without more, prevent
the adoption and use of the same trademark by others on unrelated articles of a different kind.  The CA erred
27
in denying petitioner’s registration application
Respondent next parlays the idea of relation between products as a factor militating against petitioner’s
application. Citing Esso Standard Eastern, Inc. v. Court of Appeals,  respondent argues that the goods
28
covered by petitioner’s application and those covered by its registration are actually related belonging as they
do to the same class or have the same physical characteristics with reference to their form, composition,
texture, or quality, or if they serve the same purpose. Respondent likewise draws parallelisms between the
present controversy and the following cases: 29
(a) In Arce & Sons, Inc. vs. Selecta Biscuit Company,  biscuits were held related to milk because
30
they were both food products;
(b) In Chua Che vs. Phil. Patents Office,  soap and perfume, lipstick and nail polish are held to be
31
similarly related because they are common household items;
(c) In Ang vs. Teodoro,  the trademark "Ang Tibay" for shoes and slippers was disallowed to be used
32
for shirts and pants because they belong to the same general class of goods; and
(d) In Khe vs. Lever Bros. Co.,  soap and pomade, although noncompetitive, were held to be similar
33
or belong to the same class, since both are toilet articles.
Respondent avers that Kolin Electronics’ and Taiwan Kolin’s products are closely-related not only because
both fall under Class 9 of the NCL, but mainly because they both relate to electronic products, instruments,
apparatus, or appliances.  Pushing the point, respondent would argue that Taiwan Kolin and Kolin Electronics’
34
goods are inherently similar in that they are all plugged into electric sockets and perform a useful
function.  Furthermore, respondent echoes the appellate court’s ratiocination in denying petitioner’s
35
application, viz:
36
Significantly, Kolin Electronics’ goods (automatic voltage regulator; converter; recharger; stereo booster; AC-
DC regulated power supply; step-down transformer; and PA amplified AC-DC) and Taiwan Kolin’s television
sets and DVD players are both classified under class 9 of the NICE agreement. At first glance, it is also
evident that all these goods are generally described as electrical devices. x x x [T]he goods of both Kolin
Electronics and Taiwan Kolin will inevitably be introduced to the public as "KOLIN" products and will be offered
for sale in the same channels of trade. Contrary to Taiwan Kolin’s claim, power supply as well as audio and
stereo equipment like booster and amplifier are not only sold in hardware and electrical shops. These
products are commonly found in appliance stores alongside television sets and DVD players. With the present
trend in today’s entertainment of having a home theater system, it is not unlikely to see a stereo booster,
amplifier and automatic voltage regulator displayed together with the television sets and DVD players. With
the intertwined use of these products bearing the identical "KOLIN" mark, the ordinary intelligent consumer
would likely assume that they are produced by the same manufacturer.
In sum, the intertwined use, the same classification of the products as class 9 under the NICE Agreement, and
the fact that they generally flow through the same channel of trade clearly establish that Taiwan Kolin’s
television sets and DVD players are closely related to Kolin Electronics’ goods. As correctly pointed out by the
BLA-IPO, allowing Taiwan Kolin’s registration would only confuse consumers as to the origin of the products
they intend to purchase. Accordingly, protection should be afforded to Kolin Electronics, as the registered
owner of the "KOLIN" trademark.  (emphasis added)
37
The CA’s approach and reasoning to arrive at the assailed holding that the approval of petitioner’s application
is likely to cause confusion or deceive fail to persuade.
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.
38
In resolving one of the pivotal issues in this case––whether or not the products of the parties involved are
related––the doctrine in Mighty Corporation is authoritative. There, the Court held that the goods should be
tested against several factors before arriving at a sound conclusion on the question of relatedness. Among
these are:
(a) the business (and its location) to which the goods belong;
(b) the class of product to which the goods belong;
(c) the product’s quality, quantity, or size, including the nature of the package, wrapper or container;
(d) the nature and cost of the articles;
(e) the descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality;
(f) the purpose of the goods;
(g) whether the article is bought for immediate consumption, that is, day-to-day household items;
(h) the fields of manufacture;
(i) the conditions under which the article is usually purchased; and
(j) the channels of trade through which the goods flow, how they are distributed, marketed, displayed
and sold.39
As mentioned, the classification of the products under the NCL is merely part and parcel of the factors to be
considered in ascertaining whether the goods are related. It is not sufficient to state that the goods involved
herein are electronic products under Class 9 in order to establish relatedness between the goods, for this only
accounts for one of many considerations enumerated in Mighty Corporation. In this case, credence is
accorded to petitioner’s assertions that: 40
a. Taiwan Kolin’s goods are classified as home appliances as opposed to Kolin Electronics’ goods
which are power supply and audio equipment accessories;
b. Taiwan Kolin’s television sets and DVD players perform distinct function and purpose from Kolin
Electronics’ power supply and audio equipment; and
c. Taiwan Kolin sells and distributes its various home appliance products on wholesale and to
accredited dealers, whereas Kolin Electronics’ goods are sold and flow through electrical and
hardware stores.
Clearly then, it was erroneous for respondent to assume over the CA to conclude that all electronic products
are related and that the coverage of one electronic product necessarily precludes the registration of a similar
mark over another. In this digital age wherein electronic products have not only diversified by leaps and
bounds, and are geared towards interoperability, it is difficult to assert readily, as respondent simplistically did,
that all devices that require plugging into sockets are necessarily related goods.
It bears to stress at this point that the list of products included in Class 9  can be sub-categorized into five (5)
41
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.  For a clearer perspective and as matter of record, the following image on the left  is the
43 44
trademark applied for by petitioner, while the image juxtaposed to its right  is the trademark registered by
45
respondent:
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.
It cannot be stressed enough that the products involved in the case at bar are, 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
46
considered affordable. Accordingly, 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.  As further 47
elucidated in Del Monte Corporation v. Court of Appeals: 48
x x x Among these, what essentially determines the attitudes of the purchaser, specifically his inclination to be
cautious, is the cost of the goods. To be sure, a person who buys a box of candies will not exercise as much
care as one who buys an expensive watch. As a general rule, an ordinary buyer does not exercise as much
prudence in buying an article for which he pays a few centavos as he does in purchasing a more valuable
thing. Expensive and valuable items are normally bought only after deliberate, comparative and analytical
investigation. But mass products, low priced articles in wide use, and matters of everyday purchase requiring
frequent replacement are bought by the casual consumer without great care x x x. (emphasis added)
Respondent has made much reliance on Arce & Sons, Chua Che, Ang, and Khe, oblivious that they involved
common household items––i.e., biscuits and milk, cosmetics, clothes, and toilet articles, respectively––
whereas the extant case involves luxury items not regularly and inexpensively purchased by the consuming
public. In accord with common empirical experience, the useful lives of televisions and DVD players last for
about five (5) years, minimum, making replacement purchases very infrequent. The same goes true with
converters and regulators that are seldom replaced despite the acquisition of new equipment to be plugged
onto it. In addition, the amount the buyer would be parting with cannot be deemed minimal considering that
the price of televisions or DVD players can exceed today’s monthly minimum wage. In light of these
circumstances, it is then expected that the ordinary intelligent buyer would be more discerning when it comes
to deciding which electronic product they are going to purchase, and it is this standard which this Court applies
herein in determining the likelihood of confusion should petitioner’s application be granted.
To be sure, the extant case is reminiscent of Emerald Garment Manufacturing Corporation v. Court of
Respondent court correctly ruled that considering the general appearances of each mark as a whole, the
possibility of any confusion is unlikely. A comparison of the labels of the samples of the goods submitted by
the parties shows a great many differences on the trademarks used. As pointed out by respondent court in its
appealed decision, "(A) witness for the plaintiff, Mr. Buhay, admitted that the color of the ‘ESSO’ used by the
plaintiff for the oval design where the blue word ESSO is contained is the distinct and unique kind of blue. In
his answer to the trial court’s question, Mr. Buhay informed the court that the plaintiff never used its trademark
on any product where the combination of colors is similar to the label of the Esso cigarettes," and "Another
witness for the plaintiff, Mr. Tengco, testified that generally, the plaintiff’s trademark comes all in either red,
white, blue or any combination of the three colors. It is to be pointed out that not even a shade of these colors
appears on the trademark of the appellant’s cigarette. The only color that the appellant uses in its trademark is
green."
Even the lower court, which ruled initially for petitioner, found that a "noticeable difference between the brand
ESSO being used by the defendants and the trademark ESSO of the plaintiff is that the former has a
rectangular background, while in that of the plaintiff the word ESSO is enclosed in an oval background."
All told, We are convinced that petitioner's trademark registration not only covers unrelated good, but is also
incapable of deceiving the ordinary intelligent buyer. The ordinary purchaser must be thought of as having,
and credited with, at least a modicum of intelligence to be able to see the differences between the two
trademarks in question. 53

Appeals,  wherein the opposing trademarks are that of Emerald Garment Manufacturing Corporation’s
49

"Stylistic Mr. Lee" and H.D. Lee’s "LEE." In the said case, the appellate court affirmed the decision of the
Director of Patents denying Emerald Garment’s application for registration due to confusing similarity with H.D.
Lee’s trademark. This Court, however, was of a different beat and ruled that there is no confusing similarity
between the marks, given that the products covered by the trademark, i.e., jeans, were, at that time,
considered pricey, typically purchased by intelligent buyers familiar with the products and are more
circumspect, and, therefore, would not easily be deceived. As held:
Questions of fact may still be entertained
On a final note, the policy according factual findings of courts a quo great respect, if not finality, is not binding
where they have overlooked, misapprehended, or misapplied any fact or circumstance of weight and
substances.  So it must be here; the nature of the products involved materially affects the outcome of the
54

instant case. A reversal of the appellate Court's Decision is then in order.

Finally, in line with the foregoing discussions, 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 WHEREFORE, in view of the foregoing, the petition is hereby GRANTED. The Decision and the Resolution of
"ordinarily intelligent buyer" considering the type of product involved. the Court of Appeals in CA-G.R. SP No. 122565, dated April 30, 2013 and November 6, 2013, respectively,
are hereby REVERSED and SET ASIDE. Accordingly, the Decision of the Intellectual Property Office Director
The definition laid down in Dy Buncio v. Tan Tiao Bok  is better suited to the present case. There, the
50 General in Inter Partes Case No. 14-2006-00096, dated November 23, 2011, is hereby REINSTATED.
"ordinary purchaser" was defined as one "accustomed to buy, and therefore to some extent familiar with, the
goods in question. The test of fraudulent simulation is to be found in the likelihood of the deception of some SO ORDERED.
persons in some measure acquainted with an established design and desirous of purchasing the commodity
with which that design has been associated. The test is not found in the deception, or the possibility of
deception, of the person who knows nothing about the design which has been counterfeited, and who must be
indifferent between that and the other. The simulation, in order to be objectionable, must be such 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."  (emphasis added)
51

Consistent with the above ruling, this Court finds that the differences between the two marks, subtle as they
may be, are sufficient to prevent any confusion that may ensue should petitioner’s trademark application be
granted. As held in Esso Standard Eastern, Inc.: 52

G.R. No. 190706               July 21, 2014
SHANG PROPERTIES REALTY CORPORATION (formerly THE SHANG GRAND TOWER
CORPORATION) and SHANG PROPERTIES, INC. (formerly EDSA PROPERTIES HOLDINGS,
INC.), Petitioners, vs. ST. FRANCIS DEVELOPMENT CORPORATION, Respondent.
DECISION
PERLAS-BERNABE, J.:
Assailed in this petition for review on certiorari  is the Decision  dated December 18, 2009 of the Court of
1 2
Appeals (CA) in CA-G.R. SP No. 105425 which affirmed with modification the Decision  dated September 3,
3
2008 of the Intellectual Property Office (IPO) Director-General. The CA: (a) affirmed the denial of the
application for registration of the mark "ST. FRANCIS TOWERS" filed by petitioners Shang Properties Realty
Corporation and Shang Properties, Inc. (petitioners); ( b) found petitioners to have committed unfair
competition for using the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA
PLACE"; (c) ordered petitioners to cease and desist from using "ST. FRANCIS" singly or as part of a
composite mark; and (d) ordered petitioners to jointly and severally pay respondent St. Francis Square
Development Corporation (respondent) a fine in the amount of ₱200,000.00.
The Facts
Respondent – a domestic corporation engaged in the real estate business and the developer of the St.
Francis Square Commercial Center, built sometime in 1992, located at Ortigas Center, Mandaluyong City,
Metro Manila (Ortigas Center)  – filed separate complaints against petitioners before the IPO - Bureau of Legal
4
Affairs (BLA), namely: (a) an intellectual property violation case for unfair competition, false or fraudulent
declaration, and damages arising from petitioners’ use and filing of applications for the registration of the
marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE," docketed as IPV Case
No. 10-2005-00030 (IPV Case); and (b) an inter partes case opposing the petitioners’ application for
registration of the mark "THE ST. FRANCIS TOWERS" for use relative to the latter’s business, particularly the
construction of permanent buildings or structures for residential and office purposes, docketed as Inter
PartesCase No. 14-2006-00098 (St. Francis Towers IP Case); and (c) an inter partes case opposing the
petitioners’ application for registration of the mark "THE ST. FRANCIS SHANGRI-LA PLACE," docketed as
IPC No. 14-2007-00218 (St. Francis Shangri-La IP Case). 5
In its complaints, respondent alleged that it has used the mark "ST. FRANCIS" to identify its numerous
property development projects located at Ortigas Center, such as the aforementioned St. Francis Square
Commercial Center, a shopping mall called the "St. Francis Square," and a mixed-use realty project plan
thatincludes the St. Francis Towers. Respondent added that as a result of its continuous use of the mark "ST.
FRANCIS" in its real estate business,it has gained substantial goodwill with the public that consumers and
traders closely identify the said mark with its property development projects. Accordingly, respondent claimed
that petitioners could not have the mark "THE ST. FRANCIS TOWERS" registered in their names, and that
petitioners’ use of the marks "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE"
in their own real estate development projects constitutes unfair competition as well as false or fraudulent
declaration.6
Petitioners denied committing unfair competition and false or fraudulent declaration, maintaining that they
could register the mark "THE ST. FRANCIS TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE" under
their names. They contended that respondent is barred from claiming ownership and exclusive use ofthe mark
"ST. FRANCIS" because the same is geographically descriptive ofthe goods or services for which it is
intended to be used.  This is because respondent’s as well as petitioners’ real estate development projects are
7
locatedalong the streets bearing the name "St. Francis," particularly, St. FrancisAvenue and St. Francis Street
(now known as Bank Drive),  both within the vicinity of the Ortigas Center.
8
The BLA Rulings
On December 19, 2006, the BLA rendered a Decision  in the IPV Case, and found that petitioners committed
9
acts of unfair competition against respondent by its use of the mark "THE ST. FRANCIS TOWERS" but not
with its use of the mark "THE ST. FRANCIS SHANGRI-LA PLACE." It, however, refused to award damages in
the latter’s favor, considering that there was no evidence presented to substantiate the amount of damages it
suffered due to the former’s acts. The BLA found that "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, opiningthat 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 Avenueand St. Francis Street (now known as Bank Drive), Ortigas Center. In this light, the BLA found
that while respondent’s use of the mark "ST. FRANCIS" has not attained exclusivity considering that there are
other real estate development projects bearing the name "St. Francis" in other areas,  it must nevertheless be
10
pointed out that respondent has been known to be the only real estate firm to transact business using such
name within the Ortigas Center vicinity. Accordingly, the BLA considered respondent to have gained goodwill
and reputation for its mark, which therefore entitles it to protection against the use by other persons, at least,
to those doing business within the Ortigas Center. 11
Meanwhile, on March 28, 2007, the BLA rendered a Decision  in the St. Francis Towers IP Case, denying
12
petitioners’ application for registration of the mark "THE ST. FRANCIS TOWERS." Excluding the word
"TOWERS" in view of petitioners’ disclaimer thereof, the BLA ruled that petitioners cannot register the mark
"THE ST. FRANCIS" since it is confusingly similar to respondent’s"ST. FRANCIS" marks which are registered
with the Department of Trade and Industry(DTI). It held that respondent had a better right over the use of the
mark "ST. FRANCIS" because of the latter’s appropriation and continuous usage thereof for a long period of
time.  A little over a year after, or on March 31, 2008, the BLA then rendered a Decision  in the St. Francis
13 14
Shangri-La IP Case, allowing petitioners’ application for registration of the mark "THE ST. FRANCIS
SHANGRI-LA PLACE." It found that respondent cannot preclude petitioners from using the mark "ST.
FRANCIS" as the records show that the former’s use thereof had not been attended with exclusivity. More
importantly, it found that petitioners had adequately appended the word "Shangri-La" to its composite mark to
distinguish it from that of respondent, in which case, the former had removed any likelihood of confusion that
may arise from the contemporaneous use by both parties of the mark "ST. FRANCIS."
Both parties appealed the decision in the IPV Case, while petitioners appealed the decision in the St. Francis
Towers IP Case. Due to the identity of the parties and issues involved, the IPO Director-General ordered the
consolidation of the separate appeals.  Records are, however, bereft of any showing that the decision in the
15
St. Francis Shangri-La IP Casewas appealed by either party and, thus, is deemed to have lapsed into finality.
The IPO Director-General Ruling
In a Decision  dated September 3, 2008, then IPO Director-General Adrian S. Cristobal, Jr. affirmedthe rulings
16
of the BLA that: (a) petitioners cannot register the mark "THEST. FRANCIS TOWERS"; and (b) petitioners are
not guilty of unfair competition in its use of the mark "THE ST. FRANCIS SHANGRI-LA PLACE." However, the
IPO DirectorGeneral reversed the BLA’s findingthat petitioners committed unfair competition through their use
of the mark "THE ST. FRANCIS TOWERS," thus dismissing such charge. He foundthat respondent could not
be entitled to the exclusive use of the mark "ST. FRANCIS," even at least to the locality where it conducts its
business, because it is a geographically descriptive mark, considering that it was petitioners’ as well as
respondent’s intention to use the mark "ST. FRANCIS"in order to identify, or at least associate, their real
estate development projects/businesses with the place or location where they are situated/conducted,
particularly, St. Francis Avenue and St. Francis Street (now known as Bank Drive), Ortigas Center. He further
opined that respondent’s registration of the name "ST. FRANCIS" with the DTI is irrelevant since what should
be controlling are the trademark registrations with the IPO itself.  Also, the IPO Director-General held that
17
since the parties are both engaged in the real estate business, it would be "hard to imagine that a prospective
buyer will be enticed to buy, rent or purchase [petitioners’] goods or servicesbelieving that this is owned by
[respondent] simply because of the name ‘ST. FRANCIS.’ The prospective buyer would necessarily discuss
things with the representatives of [petitioners] and would readily know that this does not belong to
[respondent]." 18
Disagreeing solely with the IPO Director-General’s ruling on the issue of unfair competition (the bone of
contention in the IPV Case), respondent elevated the sameto the CA.
In contrast, records do not show that either party appealed the IPO Director-General’s ruling on the issue ofthe
registrability of the mark "THE ST. FRANCIS TOWERS" (the bone of contention in the St. Francis Towers IP
Case). As such, said pronouncement isalso deemed to have lapsed into finality.
The CA Ruling
In a Decision  dated December 18, 2009, the CA found petitioners guilty of unfair competition not only
19
withrespect to their use of the mark "THE ST. FRANCIS TOWERS" but alsoof the mark "THE ST. FRANCIS
SHANGRI-LA PLACE." Accordingly, itordered petitioners to cease and desist from using "ST. FRANCIS"
singly or as part of a composite mark, as well as to jointly and severally pay respondent a fine in the amount of
₱200,000.00.
The CA did not adhere to the IPO Director-General’s finding that the mark "ST. FRANCIS" is geographically
descriptive, and ruled that respondent – which has exclusively and continuously used the mark "ST.
FRANCIS" for more than a decade, and,hence, gained substantial goodwill and reputation thereby – is very
muchentitled to be protected against the indiscriminate usage by other companies of the trademark/name it
has so painstakingly tried to establish and maintain. Further, the CA stated that even on the assumption that
"ST. FRANCIS" was indeed a geographically descriptive mark, adequateprotection must still begiven to
respondent pursuant to the Doctrine of Secondary Meaning. 20
Dissatisfied, petitioners filed the present petition.
The Issue Before the Court
With the decisions in both Inter PartesCases having lapsed into finality, the sole issue thus left for the Court’s
resolution is whether or not petitioners are guilty of unfair competition in using the marks "THE ST. FRANCIS
TOWERS" and "THE ST. FRANCIS SHANGRI-LA PLACE."
The Court’s Ruling
The petition is meritorious.
Section 168 of Republic Act No. 8293,  otherwise known as the "Intellectual Property Code of the Philippines"
21
(IP Code), provides for the rules and regulations on unfair competition.
To begin, Section 168.1 qualifies who is entitled to protection against unfair competition. It states that
"[a]person who has identified in the mind of the public the goods he manufacturesor 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 inthe same manner as
other property rights."
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 – that is, "[a]ny person who shall employ deception or any other
means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals,
or his business, or services for those of the one having established such goodwill, or who shall commit any
acts calculated to produce said result x x x."
Without limiting its generality, Section 168.3goes on to specify examples of acts which are considered as
constitutive of unfair competition, viz.:
168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the
following shall be deemed guilty of unfair competition:
(a) Any person who is selling his goods and gives them the general appearance of goods of another
manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in
which they are contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers to believe that the goods offered are
those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise
clothes the goods with such appearance as shall deceive the public and defraud another of his
legitimate trade, or any subsequent vendor ofsuch goods or any agent of any vendor engaged in
selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs any other means calculated to induce
the false belief that such person is offering the service of another who has identified such services in
the mind of the public; or
(c) Any person who shall make any false statement in the course of trade or who shall commit any
other act contrary to good faith of a nature calculated to discredit the goods, business or services of
another.
Finally, Section 168.4 dwells on a matter of procedure by stating that the "[t]he remedies provided by Sections
156,  157,  and 161  shall apply mutatis mutandis."
22 23 24
The statutory attribution of the unfair competition concept is wellsupplemented by jurisprudential
pronouncements. In the recent case of Republic Gas Corporation v. Petron Corporation,  the Court has
25
echoed the classic definition of the term which is "‘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. [In other words], the defendant
gives his goods the general appearance of the goods of his competitor with the intention of deceiving the
publicthat the goods are those of his competitor."  The "true test" of unfair competition has thus been "whether
26
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 theparticular 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.
27 28
Here, the Court finds the element of fraud to be wanting; hence, there can be no unfair competition. The
CA’scontrary conclusion was faultily premised on its impression that respondenthad 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
geographicallydescriptive nature of the mark "ST. FRANCIS" which thus bars its exclusive appropriability,
unless a secondary meaning is acquired. As deftly explained in the U.S. case of Great Southern Bank v. First
Southern Bank:  "[d]escriptive geographical terms are inthe ‘public domain’ in the sense that every seller
29
should have the right to inform customers of the geographical origin of his goods. A ‘geographically descriptive
term’ is any noun or adjective that designates geographical location and would tend to be regarded by buyers
as descriptive of the geographic location of origin of the goods or services. A geographically descriptive term
can indicate any geographic location on earth, such as continents, nations, regions, states, cities, streets and
addresses, areas of cities, rivers, and any other location referred to by a recognized name. In order to
determine whether or not the geographic term in question is descriptively used, the following question is
relevant: (1) Is the mark the name of the place or region from which the goods actually come? If the answer is
yes, then the geographic term is probably used in a descriptive sense, and secondary meaning is required for
protection."
30
In Burke-Parsons-Bowlby Corporation v. Appalachian Log Homes, Inc.,  it was held that secondary meaningis
31
established when a descriptive mark no longer causes the public to associate the goods with a particular
place, but to associate the goods with a particular source.In other words, it is not enough that a
geographically-descriptive mark partakes of the name of a place known generally to the public to be denied
registration as it is also necessary to show that the public would make a goods/place association – that is, to
believe that the goods for which the mark is sought to be registered originatein that place.  To hold sucha
1âwphi1
belief, it is necessary, of course, that the purchasers perceive the mark as a place name, from which the
question of obscurity or remoteness then comes to the fore.  The more a geographical area is obscure and
32
remote, it becomes less likely that the public shall have a goods/place association with such area and thus,
the mark may not be deemed as geographically descriptive. However, where there is no genuine issue that
the geographical significance of a term is its primary significanceand where the geographical place is neither
obscure nor remote, a public association of the goods with the place may ordinarily be presumed from the fact
that the applicant’s own goods come from the geographical place named in the mark. 33
Under Section 123.2  of the IP Code, specific requirements have to be met in order to conclude that a
34
geographically-descriptive mark has acquired secondary meaning, to wit: (a) the secondary meaning must
have arisen as a result of substantial commercial use of a mark in the Philippines; (b) such use must result in
the distinctiveness of the mark insofar as the goods or theproducts are concerned; and (c) proof of
substantially exclusive and continuous commercial use in the Philippines for five (5) years beforethe date on
which the claim of distinctiveness is made. Unless secondary meaning has been established, a
geographically-descriptive mark, dueto its general public domain classification, is perceptibly disqualified from
trademark registration. Section 123.1(j) of the IP Code states this rule as follows:
SEC. 123. Registrability. –
123.1 A mark cannot be registered if it:
xxxx
(j) Consists exclusively of signs orof indications that may serve in trade to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or
other characteristics of the goods or services; (Emphasis supplied) x x x x
Cognizant of the foregoing, the Court disagrees with the CA that petitioners committed unfair competition due
to the mistaken notion that petitioner had established goodwill for the mark "ST. FRANCIS" precisely because
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 thatpetitioners 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. Accordingly, the element of fraud which is the core of unfair
competition had not been established.
Hence, for all the reasons above-discussed, the Court hereby grants the instant petition, and, thus,
exonerates petitioners from the charge of unfair competition in the IPV Case. As the decisions in the Inter
Partes Cases were not appealed, the registrability issues resolved therein are hereby deemed to have
attained finality and, therefore, are now executory.
WHEREFORE, the petition is GRANTED. The Decision dated December 18, 2009 of the Court of Appeals in
CA-G.R. SP No. 105425 is hereby REVERSED and SET ASIDE. Accordingly, the Decision dated September
3, 2008 of the Intellectual Property Office-Director General is REINSTATED.
SO ORDERED.

Besides, respondent was not able toprove its compliance with the requirements stated in Section 123.2 of the
IP Code to be able to conclude that it acquired a secondary meaning – and, thereby, an exclusive right – to
the "ST. FRANCIS" mark, which is, as the IPO Director-General correctly pointed out, geographically-
descriptive of the location in which its realty developments have been built, i.e., St. Francis Avenue and St.
Francis Street (now known as "Bank Drive"). Verily, records would reveal that while it is true that respondent
had been using the mark "ST. FRANCIS" since 1992, its use thereof has been merely confined to its realty
projects within the Ortigas Center, as specifically mentioned.As its use of the mark is clearly limited to a
certain locality, it cannot be said thatthere was substantial commercial use of the same recognizedall
throughout the country. Neither is there any showing of a mental recognition in buyers’ and potential buyers’
minds that products connected with the mark "ST. FRANCIS" are associated with the same source  – that is,35

the enterprise of respondent. Thus, absent any showing that there exists a clear goods/service-association
between the realty projects located in the aforesaid area and herein respondent as the developer thereof, the
latter cannot besaid to have acquired a secondary meaning as to its use of the "ST. FRANCIS" mark.

In fact, even on the assumption that secondary meaning had been acquired, said finding only accords
respondents protectional qualification under Section 168.1 of the IP Code as above quoted. Again, this does
not automatically trigger the concurrence of the fraud element required under Section 168.2 of the IP Code, as
exemplified by the acts mentioned in Section 168.3 of the same. Ultimately, as earlier stated, there can be no
unfair competition without this element. In this respect, considering too the notoriety of the Shangri-La brand in
the real estate industry which dilutes petitioners' propensity to merely ride on respondent's goodwill, the more
reasonable conclusion is that the former's use of the marks "THE ST. FRANCIS TOWERS" and "THE ST.
FRANCIS SHANGRI-LA PLACE" was meant only to identify, or at least associate, their real estate project/s
with its geographical location. As aptly observed by the IPO DirectorGeneral: 36

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. (Emphasis and underscoring supplied)
 THE ANTECEDENT FACTS

On 12 April 2000, petitioner PHILITES filed a trademark application (Application Serial Number 4-2000-
002937) covering its fluorescent bulb, incandescent light, starter and ballast. After publication, respondent
Koninklijke Philips Electronics, N .V. ("PHILIPS") filed a Verified Notice of Opposition on 17 March 2006,
alleging the following:

(a) The approval of Application Serial No. 4-2000-002937 is contrary to the following provisions of Republic
Act No. [RAJ 8293 or the Intellectual Property Code of the Philippines (IP Code): Sections 123.l(d), (i) and (iii),
123.l(e), 147, and 168.

(b) The approval of Application Serial No. 4-2000-002937 will cause grave and irreparable damage and injury
to oppose.

(c) The use and registration of the applied for mark by [petitioner] will mislead the public as to the origin,
nature, quality, and characteristic of the goods on which it is affixed;

(d) [Petitioner's] application for registration is tantamount to fraud as it seeks to register and obtain legal
protection for an identical or confusingly similar mark that clearly infringes upon the established rights of the
[respondent] over its registered and internationally well-known mark.

(e) The registration of the trademark PHILITES & LETTER P DEVICE in the name of the [petitioner] will violate
the proprietary rights and interests, business reputation and goodwill of the [respondent] over its trademark,
considering that the distinctiveness of the trademark PHILIPS will be diluted.

(t) The registration of the applied for mark will not only prejudice the Opposer, but will also cause [petitioner] to
unfairly profit commercially from the goodwill, fame and notoriety of Opposer's trademark and reputation.

(g) [Petitioner's] registration and use of the applied for mark in connection with goods under Class 11 will
weaken the unique and distinctive significance of mark PHILIPS and will tarnish, degrade or dilute the
distinctive quality of Opposer's trademark and will result in the gradual attenuation or whittling away of the
value of Opposer's trademark, in violation of Opposer's proprietary rights. 6

G.R. No. 186088 March 22, 2017

WILTON DY and/or PHILITES ELECTRONIC & LIGHTING PRODUCTS, Petitioner vs KONINKLIJKE

PHILIPS ELECTRONICS, N.V., Respondent

SERENO, CJ.:
On 8 August 2006, petitioner filed a Verified Answer, stating that its PHILITES & LETTER P DEVICE
This Petition for Review on Certiorari  filed by petitioner Wilton Dy and/or Philites Electronic & Lighting
1 trademark and respondent's PHILIPS have vast dissimilarities in terms of spelling, sound and meaning. 7

Products ("PHILITES") assails the Decision  and Resolution  of the Court of Appeals (CA) in CA-G.R. SP No.
2 3

103350. The appellate court reversed and set aside the Decision  of the IPP Office of the Director General
4
At the conclusion of the hearing, on 9 November 2006, IPP-BLA Director Estrellita Beltran-Abelardo rendered
(IPP-DG), which affirmed the Decision  of the Intellectual Property Philippines Bureau of Legal Affairs (IPP-
5
a Decision  denying the Opposition filed by respondent PHILIPS. The dispositive portion of the Decision reads:
8

BLA) upholding petitioner's trademark application.

WHEREFORE, premises considered the OPPOSITION filed by Koninklijke Philips Electronics, N.V. is
hereby DENIED. Accordingly, Application Serial no. 4-2000-002937 filed by Respondent-Applicant, Wilton Dy
and/or Philites Electronic & Lighting Products on 12 April 2000 for the mark "PHILITES & LETTER P DEVICE"
used on fluorescent bulb, incandescent light starter, ballast under class 11, is as it is, hereby GRANTED.
Let the filewrapper of "PHILITES & LETTER P DEVICE," subject matter of this case together with this
Decision be forwarded to the Bureau of Trademarks (BOT) for appropriate action.
SO ORDERED.
In upholding petitioner's trademark application, the IPP-BLA stated that assuming respondent's mark was well-
known in the Philippines, there should have been prior determination of whether or not the mark under
application for registration was "identical with, or confusingly similar to, or constitutes a translation of such
well-known mark in order that the owner of the well-known mark can prevent its registration."  From the9
evidence presented, the IPP-BLA concluded that the PHILIPS and PHILITES marks were so unlike, both
visually and aurally. It held that no confusion was likely to occur, despite their contemporaneous use, based
on the following observations:
The Philips shield mark has four stars in different sizes located at the north east and south west portions
inside a circle within the shield. There are three wavy lines dissecting the middle of the circle. None of these
appear in the respondent's mark.
[Respondent] declares that the word Philips is the surname of the brothers who founded the Philips company
engaged in manufacturing and selling lighting products. [Petitioner] on the other hand has testified that the
word Philites is coined from the word 'Philippines' and 'lights,' hence 'Philites.' This Bureau finds that there is
no dictionary meaning to the [petitioner's] mark. It is a coined and arbitrary word capable of appropriation as a
trademark. x x x
Moreover, by mere pronouncing the two marks, the phonetic sounds produced when each mark is uttered are
not the same. The last syllable of respondent's mark is uttered in a long vowel sound, while the last vowel of
the opposer's mark is not.
x x x. This Bureau believes that opposer has no monopoly over the color or diameter or shape of a light bulb
or packaging shape unless registrations were secured to protect the same. The images of the packages are
reproduced below for reference.
x x x. For one, respondent adopts a yellow to light yellow dominant color while the oppose uses an orange
yellow hue. The mark "Philites" is printed in yellow with light blue background as compared to the "Philips"
mark typed in white against a black background.
It is fundamental in trademark jurisprudence that color alone, unless displayed in an arbitrary design docs not
function as a trademark.
Secondly, there appears to be other advertising slogans that appear in respondent's package such as the
words, "new", "prolong lite life", "E-coat finished" and "with additional 35% more than ordinary". These phrases
are absent in opposer's package. These phrases can be considered in the nature of descriptive terms that can
be appropriated by anyone. 10
Upon appeal, the IPP-DG rendered a Decision  on 16 April 2008, affirming the ruling of the IPP-BLA as
11
follows:
WHEREFORE, premises considered, that instant appeal is hereby DISMISSED for lack of merit. Accordingly,
Decision No. 2006-125 of the Director of the Bureau of Legal Affairs dated 09 November 2006, is hereby
AFFIRMED.
Let a copy of this Decision as well as the trademark application and records be furnished and returned to the
Director of Bureau of Legal Affairs for appropriate action. Further, let also the Directors of the Bureau of
Trademarks, the Administrative, Pinancial and Human Resources Development Services Bureau, and the
library of the Documentation, Information and Technology Transfer Bureau be furnished a copy of this
Decision for information, guidance and records purposes.
SO ORDERED.
In so ruling, the IPP-DG noted that "[t]he dominant feature of the [respondent's] trademark is 'PHILIPS' while
that of the [petitioner's] trademark is 'PHILITES.' While the first syllables of the marks are identical - 'PHI' - the
second syllables are not. The differences in the last syllable accounted for the variance of the trademarks
visually and aurally."  Moreover, there were "glaring differences and dissimilarities in the design and general
12
appearance of the Philips shield emblem mark and the letter 'P' of Philites mark."  Thus, "even if the
13
[petitioner's] products bearing the trademark PHILIPS are placed side by side with other brands, the purchaser
would not be confused to pick up the [petitioner's] product if this is his choice or preference, unless the
resemblance in the appearance of the trademarks is so glaring which [it] is not in this case." 14
As regards the issue of petitioner submitting a trademark drawing different from that used in the packaging,
the IPP-DG noted that this case involved an opposition to the registration of a mark, while labels and
packaging were technically not a part thereof.  At best, respondent supposedly had the remedy of filing a case
15
for trademark infringement and/or unfair competition. 16
Upon intermediate appellate review, the CA rendered a Decision   on 7 October 2008. The dispositive portion
17
herein reads:
WHEREFORE, premises considered, the Petition for Review is GRANTED. The Decision dated 16 April 2008
of the Director General of the Intellectual Property Office in Appeal No. 14-06-28; IPC No. 14-2006- 00034  is
REVERSED and SET ASIDE. The application for trademark registration (Application Serial Number 4-2000-
002937) of respondent Wilton Dy and/or Philites Electronic & Lighting Products is DISMISSED. Costs against
respondent.
SO ORDERED.
In so ruling, the CA reasoned that the "drawing of the trademark submitted by [petitioner] has a different
appearance from that of [petitioner's] actual wrapper or packaging that contain the light bulbs, which We find
confusingly similar with that of [respondent's] registered trademark and packaging."  Moreover, it found to be
18
"self-serving [petitioner's] asseveration that the mark 'PHILITES' is a coined or arbitrary mark from the words
'Philippines' and 'lights.' Of all the marks that [petitioner] could possibly think of for his light bulbs, it is odd that
[petitioner] chose a mark with the letters 'PHILI,' which are the same prevalent or dominant five letters found in
[respondent's] trademark 'PHILIPS' for the same products, light bulbs."  Hence, the appellate court concluded
19
that petitioner had intended to ride on the long-established reputation and goodwill of respondent's
trademark. 20
On 25 October 2008, petitioner filed a Motion for Reconsideration, which was denied in a Resolution  issued 21
by the CA on 18 December 2008.
Hence, this petition.
Respondent filed its Comment  on 23 June 2009, and petitioner filed its Reply  on 10 November 2009.
22 23
THE ISSUES
From the foregoing, we reduce the issues to the following:
1. Whether or not respondent's mark is a registered and well-known mark in the Philippines; and
2. Whether or not the mark applied for by petitioner is identical or confusingly similar with that of respondent.
OUR RULING
The Petition is bereft of merit.
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 othcrs."  It is "intellectual property deserving protection by law,"  and
24
"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." 26
Section 122 of the Intellectual Property Code of the Philippines (IPC) provides that rights to a mark shall be
acquired through registration validly done in accordance with the provisions of this law.  Corollary to that rule,
27
Section 123 provides which marks cannot be registered.
Respondent opposes petitioner's application on the ground that PHILITES' registration will mislead the public
over an identical or confusingly similar mark of PHILIPS, which is registered and internationally well-known
mark. Specifically, respondent invokes the following provisions of Section 123:
Section 123. Registrability. - 123 .1. A mark cannot be registered if it:
xxx
(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;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark whid1 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 Philipines which has been obtained as a result of the promotion of the mark. 28
Respondent's mark is a registered and well-known mark in the Philippines
There is no question that respondent's mark PHILIPS is already a registered and well-known mark in the
Philippines.
As we have said in Fredco Manufacturing Corporation v. Harvard University,   "[i]ndeed, Section 123.l(e) of
29
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 Phiippines. " 30
Rule l00(a) of the Rules and Regulations on Trademarks, Service Marks, Tradenames and Marked or
25
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.
We thus affirm the following findings of the CA, inasmuch as the trademark of PHILIPS is a registered and
well-known mark, as held in the Supreme Court Decision in Philips Export B. V, v. CA: 31
Petitioner (PHILIPS) is the registered owner in the Philippines of the "PHILIPS" and "PHILIPS SHIELD
EMBLEM" trademarks, as shown by Certificates of Registration Nos. 42271 and 42270. The Philippine
such that an ordinary purchaser can conclude an association or relation between the marks. The consuming
public does not have the luxury of time to ruminate the phonetic sounds of the trademarks, to find out which
one has a short or long vowel sound. At bottom, the letters "PHILI'' visually catch the attention of the
consuming public and the use of respondent's trademark will likely deceive or cause confusion. Most
importantly, both trademarks are used in the sale of the same goods, which are light bulbs. 37

trademark registrations of petitioner's "PHILIPS" and "PHILIPS SHIELD EMBLEM" are also evidenced by
Certificates of Registration Nos. R- 1651, R-29134, R-1674, and R-28981. The said registered trademarks
"PHILIPS" and "PHILIPS SHIELD EMBLEM" cover classes 7, 8, 9, 10, 11, 14, and 16. The assailed Decision
itself states that "(T)he Appellant's trademark is already registered and in use in the Philippines". It also
appears that worldwide, petitioner has thousands of trademark registrations x x x in various countries. As
found by the High Court in Philips Export B.V. vs Court of Appeals, PHILIPS is a trademark or trade name
which was registered as far back as 1922, and has acquired the status of a well-known mark in the Philippines
and internationally as well.
32
Petitioner seeks to register a mark nearly resembling that of  respondent, which may likely to deceive or cause
confusion among consumers.
Despite respondent's diversification to numerous and varied industries,  the records show that both parties are
33
engaged in the same line of business: selling identical or similar goods such as fluorescent bulbs,
incandescent lights, starters and ballasts.
The confusing similarity becomes even more prominent when we examine the entirety of the marks used by
petitioner and respondent, including the way the products are packaged. In using the holistic test, we find that
there is a confusing similarity between the registered marks PHILIPS and PHILITES, and note that the mark
petitioner seeks to register is vastly different from that which it actually uses in the packaging of its products.
We quote with approval the findings of the CA as follows:
Applying 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. A comparison between petitioner's
registered trademark "PHILIPS'' as used in the wrapper or packaging of its light bulbs and that of respondent's
applied for trademark "PHILITES" as depicted in the container or actual wrapper/packaging of the latter's light
bulbs will readily show that there is a strong similitude and likeness between the two trademarks that will likely
cause deception or confusion to the purchasing public. The fact that the parties' wrapper or packaging reflects
negligible differences considering the use of a slightly different font and hue of the yellow is of no moment
because taken in their entirety, respondent's trademark "PHILITES" will likely cause confusion or deception to
the ordinary purchaser with a modicum of intelligence. 38

In determining similarity and likelihood of confusion, jurisprudence has developed two tests: the dominancy
test, and the holistic or totality test.
34 WHEREFORE, in view of the foregoing, the Petition for Review on Certiorari is hereby DENIED. The 7
October 2008 Decision and 18 December 2008 Resolution of the Court of Appeals in CA-G.R. SP No. 103350
are hereby AFFIRMED.
On one hand, the dominancy test focuses on "the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing
public. Duplication or imitation is not necessary; neither is it required that the mark sought to be registered SO ORDERED.
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. " 35

On the other hand, the holistic or totality test necessitates a "consideration of the entirety of the marks as
applied to the products, including the labels and packaging, in determining confusing similarity. The discerning
eye of the observer must focus not only on the predominant words, but also on the other features appearing
on both labels so that the observer may draw conclusion on whether one is confusingly similar to the other." 36
1âwphi1

Applying the dominancy test to this case requires us to look only at the mark submitted by petitioner in its
application, while we give importance to the aural and visual impressions the mark is likely to create in the
minds of the buyers. We agree with the findings of the CA that the mark "PHILITES" bears an uncanny
resemblance or confusing similarity with respondent's mark "PHILIPS," to wit:

Applying the dominancy test in the instant case, it shows the uncanny resemblance or confusing similarity
between the trademark applied for by respondent with that of petitioner's registered trademark. An
examination of the trademarks shows that their dominant or prevalent feature is the five-letter "PHILI",
"PHILIPS" for petitioner, and "PHILITES" for respondent. The marks are confusingly similar with each other

G.R. No. 101897 March 5, 1993.
LYCEUM OF THE PHILIPPINES, INC., petitioner, vs. COURT OF APPEALS, LYCEUM OF APARRI,
LYCEUM OF CABAGAN, LYCEUM OF CAMALANIUGAN, INC., LYCEUM OF LALLO, INC., LYCEUM OF
TUAO, INC., BUHI LYCEUM, CENTRAL LYCEUM OF CATANDUANES, LYCEUM OF SOUTHERN
PHILIPPINES, LYCEUM OF EASTERN MINDANAO, INC. and WESTERN PANGASINAN LYCEUM, INC.,
respondents.
Quisumbing, Torres & Evangelista Law Offices and Ambrosio Padilla for petitioner. Antonio M. Nuyles and
Purungan, Chato, Chato, Tarriela & Tan Law Offices for respondents. Froilan Siobal for Western Pangasinan
Lyceum.
SYLLABUS
1. CORPORATION LAW; CORPORATE NAMES; REGISTRATION OF PROPOSED NAME WHICH IS
IDENTICAL OR CONFUSINGLY SIMILAR TO THAT OF ANY EXISTING CORPORATION, PROHIBITED;
CONFUSION AND DECEPTION EFFECTIVELY PRECLUDED BY THE APPENDING OF GEOGRAPHIC
NAMES TO THE WORD "LYCEUM". — The Articles of Incorporation of a corporation must, among other
things, set out the name of the corporation. Section 18 of the Corporation Code establishes a restrictive rule
insofar as corporate names are concerned: "Section 18. Corporate name. — No corporate name may be
allowed by the Securities an Exchange Commission if the proposed name is identical or deceptively or
confusingly similar to that of any existing corporation or to any other name already protected by law or is
patently deceptive, confusing or contrary to existing laws. When a change in the corporate name is approved,
the Commission shall issue an amended certificate of incorporation under the amended name." The policy
underlying the prohibition in Section 18 against the registration of a corporate name which is "identical or
deceptively or confusingly similar" to that of any existing corporation or which is "patently deceptive" or
"patently confusing" or "contrary to existing laws," is the avoidance of fraud upon the public which would have
occasion to deal with the entity concerned, the evasion of legal obligations and duties, and the reduction of
difficulties of administration and supervision over corporations. We do not consider that the corporate names
of private respondent institutions are "identical with, or deceptively or confusingly similar" to that of the
petitioner institution. True enough, the corporate names of private respondent entities all carry the word
"Lyceum" but confusion and deception are effectively precluded by the appending of geographic names to the
word "Lyceum." Thus, we do not believe that the "Lyceum of Aparri" can be mistaken by the general public for
the Lyceum of the Philippines, or that the "Lyceum of Camalaniugan" would be confused with the Lyceum of
the Philippines.
2. ID.; ID.; DOCTRINE OF SECONDARY MEANING; USE OF WORD "LYCEUM," NOT ATTENDED WITH
EXCLUSIVITY. — It is claimed, however, by petitioner that the word "Lyceum" has acquired a secondary
meaning in relation to petitioner with the result that word, although originally a generic, has become
appropriable by petitioner to the exclusion of other institutions like private respondents herein. The doctrine of
secondary meaning originated in the field of trademark law. Its application has, however, been extended to
corporate names sine the right to use a corporate name to the exclusion of others is based upon the same
principle which underlies the right to use a particular trademark or tradename. In Philippine Nut Industry, Inc.
v. Standard Brands, Inc., the doctrine of secondary meaning was elaborated in the following terms: " . . . a
word or phrase originally incapable of exclusive appropriation with reference to an article on the market,
because geographically or otherwise descriptive, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product." The question which arises,
therefore, is whether or not the use by petitioner of "Lyceum" in its corporate name has been for such length of
time and with such exclusivity as to have become associated or identified with the petitioner institution in the
mind of the general public (or at least that portion of the general public which has to do with schools). The
Court of Appeals recognized this issue and answered it in the negative: "Under the doctrine of secondary
meaning, a word or phrase originally incapable of exclusive appropriation with reference to an article in the
market, because geographical or otherwise descriptive might nevertheless have been used so long and so
exclusively by one producer with reference to this article that, in that trade and to that group of the purchasing
public, the word or phrase has come to mean that the article was his produce (Ana Ang vs. Toribio Teodoro,
74 Phil. 56). This circumstance has been referred to as the distinctiveness into which the name or phrase has
evolved through the substantial and exclusive use of the same for a considerable period of time. . . . No
evidence was ever presented in the hearing before the Commission which sufficiently proved that the word
'Lyceum' has indeed acquired secondary meaning in favor of the appellant. If there was any of this kind, the
same tend to prove only that the appellant had been using the disputed word for a long period of time. . . . In Lyceum of Tuao, Inc. — 28 March 1972
other words, while the appellant may have proved that it had been using the word 'Lyceum' for a long period of
time, this fact alone did not amount to mean that the said word had acquired secondary meaning in its favor Lyceum of Camalaniugan — 28 March 1972
because the appellant failed to prove that it had been using the same word all by itself to the exclusion of
others. More so, there was no evidence presented to prove that confusion will surely arise if the same word
were to be used by other educational institutions. Consequently, the allegations of the appellant in its first two The following private respondents were declared in default for failure to file an answer despite service of
assigned errors must necessarily fail." We agree with the Court of Appeals. The number alone of the private summons:
respondents in the case at bar suggests strongly that petitioner's use of the word "Lyceum" has not been
attended with the exclusivity essential for applicability of the doctrine of secondary meaning. Petitioner's use of Buhi Lyceum;
the word "Lyceum" was not exclusive but was in truth shared with the Western Pangasinan Lyceum and a little
later with other private respondent institutions which registered with the SEC using "Lyceum" as part of their Central Lyceum of Catanduanes;
corporation names. There may well be other schools using Lyceum or Liceo in their names, but not registered
with the SEC because they have not adopted the corporate form of organization.
Lyceum of Eastern Mindanao, Inc.; and
3. ID.; ID.; MUST BE EVALUATED IN THEIR ENTIRETY TO DETERMINE WHETHER THEY ARE
CONFUSINGLY OR DECEPTIVELY SIMILAR TO ANOTHER CORPORATE ENTITY'S NAME. — petitioner Lyceum of Southern Philippines
institution is not entitled to a legally enforceable exclusive right to use the word "Lyceum" in its corporate name
and that other institutions may use "Lyceum" as part of their corporate names. To determine whether a given Petitioner's original complaint before the SEC had included three (3) other entities:
corporate name is "identical" or "confusingly or deceptively similar" with another entity's corporate name, it is
not enough to ascertain the presence of "Lyceum" or "Liceo" in both names. One must evaluate corporate
1. The Lyceum of Malacanay;
names in their entirety and when the name of petitioner is juxtaposed with the names of private respondents,
they are not reasonably regarded as "identical" or "confusingly or deceptively similar" with each other.
2. The Lyceum of Marbel; and
DECISION
3. The Lyceum of Araullo
FELICIANO, J p:
The complaint was later withdrawn insofar as concerned the Lyceum of Malacanay and the Lyceum of Marbel,
for failure to serve summons upon these two (2) entities. The case against the Liceum of Araullo was
Petitioner is an educational institution duly registered with the Securities and Exchange Commission ("SEC").
dismissed when that school motu proprio change its corporate name to "Pamantasan ng Araullo."
When it first registered with the SEC on 21 September 1950, it used the corporate name Lyceum of the
Philippines, Inc. and has used that name ever since.
The background of the case at bar needs some recounting. Petitioner had sometime before commenced in
the SEC a proceeding (SEC-Case No. 1241) against the Lyceum of Baguio, Inc. to require it to change its
On 24 February 1984, petitioner instituted proceedings before the SEC to compel the private respondents,
corporate name and to adopt another name not "similar [to] or identical" with that of petitioner. In an Order
which are also educational institutions, to delete the word "Lyceum" from their corporate names and
dated 20 April 1977, Associate Commissioner Julio Sulit held that the corporate name of petitioner and that of
permanently to enjoin them from using "Lyceum" as part of their respective names.
the Lyceum of Baguio, Inc. were substantially identical because of the presence of a "dominant" word, i.e.,
"Lyceum," the name of the geographical location of the campus being the only word which distinguished one
Some of the private respondents actively participated in the proceedings before the SEC. These are the from the other corporate name. The SEC also noted that petitioner had registered as a corporation ahead of
following, the dates of their original SEC registration being set out below opposite their respective names: the Lyceum of Baguio, Inc. in point of time, 1 and ordered the latter to change its name to another name "not
similar or identical [with]" the names of previously registered entities.
Western Pangasinan Lyceum — 27 October 1950
The Lyceum of Baguio, Inc. assailed the Order of the SEC before the Supreme Court in a case docketed as
Lyceum of Cabagan — 31 October 1962 G.R. No. L-46595. In a Minute Resolution dated 14 September 1977, the Court denied the Petition for Review
for lack of merit. Entry of judgment in that case was made on 21 October 1977. 2
Lyceum of Lallo, Inc. — 26 March 1972
Armed with the Resolution of this Court in G.R. No. L-46595, petitioner then wrote all the educational
institutions it could find using the word "Lyceum" as part of their corporate name, and advised them to
Lyceum of Aparri — 28 March 1972
discontinue such use of "Lyceum." When, with the passage of time, it became clear that this recourse had
failed, petitioner instituted before the SEC SEC-Case No. 2579 to enforce what petitioner claims as its
proprietary right to the word "Lyceum." The SEC hearing officer rendered a decision sustaining petitioner's
claim to an exclusive right to use the word "Lyceum." The hearing officer relied upon the SEC ruling in the
Lyceum of Baguio, Inc. case (SEC-Case No. 1241) and held that the word "Lyceum" was capable of
appropriation and that petitioner had acquired an enforceable exclusive right to the use of that word.
On appeal, however, by private respondents to the SEC En Banc, the decision of the hearing officer was
reversed and set aside. The SEC En Banc did not consider the word "Lyceum" to have become so identified
with petitioner as to render use thereof by other institutions as productive of confusion about the identity of the
schools concerned in the mind of the general public. Unlike its hearing officer, the SEC En Banc held that the
attaching of geographical names to the word "Lyceum" served sufficiently to distinguish the schools from one
another, especially in view of the fact that the campuses of petitioner and those of the private respondents
were physically quite remote from each other. 3
Petitioner then went on appeal to the Court of Appeals. In its Decision dated 28 June 1991, however, the
Court of Appeals affirmed the questioned Orders of the SEC En Banc. 4 Petitioner filed a motion for
reconsideration, without success.
Before this Court, petitioner asserts that the Court of Appeals committed the following errors:
1. The Court of Appeals erred in holding that the Resolution of the Supreme Court in G.R. No. L-46595 did not
constitute stare decisis as to apply to this case and in not holding that said Resolution bound subsequent
determinations on the right to exclusive use of the word Lyceum.
2. The Court of Appeals erred in holding that respondent Western Pangasinan Lyceum, Inc. was incorporated
earlier than petitioner.
3. The Court of Appeals erred in holding that the word Lyceum has not acquired a secondary meaning in favor
of petitioner.
4. The Court of Appeals erred in holding that Lyceum as a generic word cannot be appropriated by the
petitioner to the exclusion of others. 5
We will consider all the foregoing ascribed errors, though not necessarily seriatim. We begin by noting that the
Resolution of the Court in G.R. No. L-46595 does not, of course, constitute res adjudicata in respect of the
case at bar, since there is no identity of parties. Neither is stare decisis pertinent, if only because the SEC En
Banc itself has re-examined Associate Commissioner Sulit's ruling in the Lyceum of Baguio case. The Minute
Resolution of the Court in G.R. No. L-46595 was not a reasoned adoption of the Sulit ruling.
The Articles of Incorporation of a corporation must, among other things, set out the name of the corporation. 6
Section 18 of the Corporation Code establishes a restrictive rule insofar as corporate names are concerned:
"SECTION 18. Corporate name. — No corporate name may be allowed by the Securities an Exchange
Commission if the proposed name is identical or deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law or is patently deceptive, confusing or contrary to
existing laws. When a change in the corporate name is approved, the Commission shall issue an amended
certificate of incorporation under the amended name." (Emphasis supplied)
The policy underlying the prohibition in Section 18 against the registration of a corporate name which is
"identical or deceptively or confusingly similar" to that of any existing corporation or which is "patently
deceptive" or "patently confusing" or "contrary to existing laws," is the avoidance of fraud upon the public
which would have occasion to deal with the entity concerned, the evasion of legal obligations and duties, and
the reduction of difficulties of administration and supervision over corporations. 7
We do not consider that the corporate names of private respondent institutions are "identical with, or
deceptively or confusingly similar" to that of the petitioner institution. True enough, the corporate names of
private respondent entities all carry the word "Lyceum" but confusion and deception are effectively precluded
by the appending of geographic names to the word "Lyceum." Thus, we do not believe that the "Lyceum of
Aparri" can be mistaken by the general public for the Lyceum of the Philippines, or that the "Lyceum of
Camalaniugan" would be confused with the Lyceum of the Philippines.
Etymologically, the word "Lyceum" is the Latin word for the Greek lykeion which in turn referred to a locality on
the river Ilissius in ancient Athens "comprising an enclosure dedicated to Apollo and adorned with fountains
and buildings erected by Pisistratus, Pericles and Lycurgus frequented by the youth for exercise and by the
philosopher Aristotle and his followers for teaching." 8 In time, the word "Lyceum" became associated with
schools and other institutions providing public lectures and concerts and public discussions. Thus today, the
word "Lyceum" generally refers to a school or an institution of learning. While the Latin word "lyceum" has
been incorporated into the English language, the word is also found in Spanish (liceo) and in French (lycee).
As the Court of Appeals noted in its Decision, Roman Catholic schools frequently use the term; e.g., "Liceo de
Manila," "Liceo de Baleno" (in Baleno, Masbate), "Liceo de Masbate," "Liceo de Albay." 9 "Lyceum" is in fact
as generic in character as the word "university." In the name of the petitioner, "Lyceum" appears to be a
substitute for "university;" in other places, however, "Lyceum," or "Liceo" or "Lycee" frequently denotes a
secondary school or a college. It may be (though this is a question of fact which we need not resolve) that the
use of the word "Lyceum" may not yet be as widespread as the use of "university," but it is clear that a not
inconsiderable number of educational institutions have adopted "Lyceum" or "Liceo" as part of their corporate
names. Since "Lyceum" or "Liceo" denotes a school or institution of learning, it is not unnatural to use this
word to designate an entity which is organized and operating as an educational institution.
It is claimed, however, by petitioner that the word "Lyceum" has acquired a secondary meaning in relation to
petitioner with the result that that word, although originally a generic, has become appropriable by petitioner to
the exclusion of other institutions like private respondents herein.
The doctrine of secondary meaning originated in the field of trademark law. Its application has, however, been
extended to corporate names sine the right to use a corporate name to the exclusion of others is based upon
the same principle which underlies the right to use a particular trademark or tradename. 10 In Philippine Nut
Industry, Inc. v. Standard Brands, Inc., 11 the doctrine of secondary meaning was elaborated in the following
terms:
" . . . a word or phrase originally incapable of exclusive appropriation with reference to an article on the
market, because geographically or otherwise descriptive, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing
public, the word or phrase has come to mean that the article was his product." 12
The question which arises, therefore, is whether or not the use by petitioner of "Lyceum" in its corporate name
has been for such length of time and with such exclusivity as to have become associated or identified with the
petitioner institution in the mind of the general public (or at least that portion of the general public which has to
do with schools). The Court of Appeals recognized this issue and answered it in the negative:
"Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation
with reference to an article in the market, because geographical or otherwise descriptive might nevertheless
have been used so long and so exclusively by one producer with reference to this article that, in that trade and
to that group of the purchasing public, the word or phrase has come to mean that the article was his produce
(Ana Ang vs. Toribio Teodoro, 74 Phil. 56). This circumstance has been referred to as the distinctiveness into
which the name or phrase has evolved through the substantial and exclusive use of the same for a
considerable period of time. Consequently, the same doctrine or principle cannot be made to apply where the
evidence did not prove that the business (of the plaintiff) has continued for so long a time that it has become
of consequence and acquired a good will of considerable value such that its articles and produce have
acquired a well-known reputation, and confusion will result by the use of the disputed name (by the defendant)
(Ang Si Heng vs. Wellington Department Store, Inc., 92 Phil. 448).
With the foregoing as a yardstick, [we] believe the appellant failed to satisfy the aforementioned requisites. No
evidence was ever presented in the hearing before the Commission which sufficiently proved that the word
'Lyceum' has indeed acquired secondary meaning in favor of the appellant. If there was any of this kind, the
same tend to prove only that the appellant had been using the disputed word for a long period of time.
Nevertheless, its (appellant) exclusive use of the word (Lyceum) was never established or proven as in fact
the evidence tend to convey that the cross-claimant was already using the word 'Lyceum' seventeen (17)
years prior to the date the appellant started using the same word in its corporate name. Furthermore,
educational institutions of the Roman Catholic Church had been using the same or similar word like 'Liceo de
Manila,' 'Liceo de Baleno' (in Baleno, Masbate), 'Liceo de Masbate,' 'Liceo de Albay' long before appellant
started using the word 'Lyceum'. The appellant also failed to prove that the word 'Lyceum' has become so
identified with its educational institution that confusion will surely arise in the minds of the public if the same
word were to be used by other educational institutions.
In other words, while the appellant may have proved that it had been using the word 'Lyceum' for a long period
of time, this fact alone did not amount to mean that the said word had acquired secondary meaning in its favor
because the appellant failed to prove that it had been using the same word all by itself to the exclusion of
others. More so, there was no evidence presented to prove that confusion will surely arise if the same word
were to be used by other educational institutions. Consequently, the allegations of the appellant in its first two
assigned errors must necessarily fail." 13 (Underscoring partly in the original and partly supplied)
We agree with the Court of Appeals. The number alone of the private respondents in the case at bar suggests
strongly that petitioner's use of the word "Lyceum" has not been attended with the exclusivity essential for
applicability of the doctrine of secondary meaning. It may be noted also that at least one of the private
respondents, i.e., the Western Pangasinan Lyceum, Inc., used the term "Lyceum" seventeen (17) years before
the petitioner registered its own corporate name with the SEC and began using the word "Lyceum." It follows
that if any institution had acquired an exclusive right to the word "Lyceum," that institution would have been
the Western Pangasinan Lyceum, Inc. rather than the petitioner institution.
In this connection, petitioner argues that because the Western Pangasinan Lyceum, Inc. failed to reconstruct
its records before the SEC in accordance with the provisions of R.A. No. 62, which records had been
destroyed during World War II, Western Pangasinan Lyceum should be deemed to have lost all rights it may
have acquired by virtue of its past registration. It might be noted that the Western Pangasinan Lyceum, Inc.
registered with the SEC soon after petitioner had filed its own registration on 21 September 1950. Whether or
not Western Pangasinan Lyceum, Inc. must be deemed to have lost its rights under its original 1933
registration, appears to us to be quite secondary in importance; we refer to this earlier registration simply to
underscore the fact that petitioner's use of the word "Lyceum" was neither the first use of that term in the
Philippines nor an exclusive use thereof. Petitioner's use of the word "Lyceum" was not exclusive but was in
truth shared with the Western Pangasinan Lyceum and a little later with other private respondent institutions
which registered with the SEC using "Lyceum" as part of their corporation names. There may well be other
schools using Lyceum or Liceo in their names, but not registered with the SEC because they have not
adopted the corporate form of organization.
We conclude and so hold that petitioner institution is not entitled to a legally enforceable exclusive right to use
the word "Lyceum" in its corporate name and that other institutions may use "Lyceum" as part of their
corporate names. To determine whether a given corporate name is "identical" or "confusingly or deceptively
similar" with another entity's corporate name, it is not enough to ascertain the presence of "Lyceum" or "Liceo"
in both names. One must evaluate corporate names in their entirety and when the name of petitioner is
juxtaposed with the names of private respondents, they are not reasonably regarded as "identical" or
"confusingly or deceptively similar" with each other.
WHEREFORE, the petitioner having failed to show any reversible error on the part of the public respondent
Court of Appeals, the Petition for Review is DENIED for lack of merit, and the Decision of the Court of Appeals
dated 28 June 1991 is hereby AFFIRMED. No pronouncement as to costs.
SO ORDERED.