I.

Registrability of Marks
Distinctive marks

a. Inherently distinctive
-A fanciful / inherently distinctive trademark is prima facie registrable, and
comprises an entirely invented or "fanciful" sign. For example, "Kodak" had no
meaning before it was adopted and used as a trademark in relation to goods,
whether photographic goods or otherwise.

Illustrative Cases:

ANDRES ROMERO vs. MAIDEN FORM BRASSIERE CO., INC., and THE DIRECTOR OF
PATENTS
FACTS
Respondent company, a foreign corporation, filed with Director of Patents an application for
registration of the trademark "Adagio" for the brassieres manufactured by it. In its application,
respondent company alleged that said trademark was first used by it in US in 1937, and in the
Philippines on 1946; that it had been continuously used by it in Philippines for over 10 years.
Director issued certificate of registration.
Petitioner filed a petition for cancellation of said trademark. Director dismissed petition. Hence,
this appeal.
DECISION
Appellant claims that the trademark "Adagio" has become a common descriptive name of a
particular style of brassiere and is, therefore, unregistrable. It is urged that said trademark
had been used by local brassiere manufacturers since 1948, without objection on the part of
respondent company.
This claim is without basis in fact. The evidence shows that the trademark "Adagio" is a
musical term, which means slowly or in an easy manner, and was used as a trademark by the
owners thereof (the Rosenthals of Maiden Form Co., New York) because they are musically
inclined. Being a musical term, it is used in an arbitrary (fanciful) sense as a trademark for
brassieres manufactured by respondent company. It also appears that respondent company
has, likewise, adopted other musical terms to identify, as a trademark, the different styles or
types of its brassieres.
It is not true that respondent company did not object to the use of said trademark by
petitioner and other local brassiere manufacturers. The records show that respondent
company's agent, Mr. Schwartz, warned the Valleson Department Store to desist from the sale
of the "Adagio" Royal Form brassieres manufactured by petitioner, and even placed an
advertisement in the local newspapers warning the public against unlawful use of said
trademark. The advertisement prompted petitioner to file this present petition for cancellation.
On the other hand, respondent company's long and continuous use of the trademark "Adagio"
has not rendered it merely descriptive of the product. If this argument were sound, then every
time a plaintiff obtained the result of having the public purchase its article, that fact of itself
would destroy a trademark. Arbitrary trademarks cannot become generic in this way.
Appellant next contends that the trademark "Adagio at the time it was registered (in the
Philippines) on 1957, had long been used by respondent company, only to designate a
particular style or quality of brassiere and, therefore, is unregistrable as a trademark.
This contention is untenable.
Brassieres are usually of different types or styles, and appellee has used different trademarks
for every type. The mere fact that appellee uses "Adagio" for one type or style, does not affect
the validity of such word as a trademark.
Appellant also claims that respondent Director erred in registering the trademark in question,
despite appellee's non-compliance with Section 37, paragraphs 1 and 4 (a) of the Trademark
Law. This contention flows from a misconception of the application for registration of trademark of
respondent. As we see it, respondent's application was filed under the provisions of Section 2
of the Trademark Law as amended by Section 1 of Republic Act 865.
Section 37 can be availed of only where the Philippines is a party to an international
convention or treaty relating to trademarks, in which the trade-mark sought to be registered
need not be use in the Philippines.
Appellant, likewise, contends that the registration the trademark in question was fraudulent or
contrary Section 4 of the Trademark Law. There is no evidence to show that the registration of
the trademark "Adagio" was obtained fraudulently by appellee. The evidence record shows, on
the other hand, that the trademark "Adagio" was first exclusively in the Philippines by appellee
in the year 1932. There being no evidence of use of the mark by others before 1932, or that
appellee abandoned use thereof, the registration of the mark was made in accordance with the
Trademark Law. Granting that appellant used the mark when appellee stopped using it during
the period of time that the Government imposed restrictions on importation of respondent's
brassiere bearing the trademark, such temporary non-use did not affect the rights of appellee
because it was occasioned by government restrictions and was not permanent, intentional,
and voluntary.
Appellant next argues that respondent Director erred in declaring illegal the appropriation in
the Philippines of the trademark in question by appellant and, therefore, said appropriation did
not affect appellee's right thereto and the subsequent registration thereof. Appellant urges
that its appropriation of the trademark in question cannot be considered illegal under
Philippine laws, because of non-compliance by appellee of Section 37. But we have already
shown that Section 37 is not the provision invoked by respondent because the Philippines is
not as yet a party to any international convention or treaty relating to trademarks.
The decision appealed from is therefore hereby AFFIRMED.

Ang Vs Teodoro
G.R. No. L-48226

December 14, 1942

Facts:

Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and as a trade-
name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. On September
29, 1915, he formally registered it as trade-mark and as trade-name on January 3, 1933.

Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932,
and established a factory for the manufacture of said articles in the year 1937.

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

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

Thus, this case, a petition for certiorari.

Issue:

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

Ruling:

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

E. Spinner v. Neuss Hesslein

G.R. No. 31380 | January 13, 1930

SUMMARY

E. Spinner exports khaki to the Philippines, including the brand "Wigan." the different grades of
khaki are under a common trademark registered in the Bureau of Patents, Copyrights and
Trademark. In 1924, E. Spinner discovered that Neuss Hesslein (defendant) was selling khaki in the
Philippines with the word "Wigan." Neuss Hesslein is enjoined from using Wigan as it constitutes
unfair competition and trademark infringement.

Neuss' marking of the khaki with the word "Wigan" although not able to deceive the dealers are
ultimately able to deceive the consumers and constitutes unfair competition. If the defendant were
manufacturing the product from the town of Wigan, the name would have been indicative of the place
of manufacture of the goods and would have been allowed.

FACTS

o E. Spinner & Co. is a copartnership with head offices in Manchester, England, and Bombay,
India, being represented in the Philippine Islands by Wise & Co., a domestic corporation
with principal office in the City of Manila.
o Defendant is a corporation organized in December, 1922, under the laws of the Philippine
Islands, with its principal office in the City of Manila. The defendant is a subsidiary of Neuss
Hesslein & Co., Inc., of New York, U. S. A., for whom it acts as selling agent in the Philippine
Islands.
o E. Spinner & Co., has long been engaged in the manufacture and sale of textile fabrics,
including khaki cloth.
o About 1900, plaintiff began exporting khaki to the Philippine Islands. Among the brands of
khaki was the grade indicated by the manufacturer as "Wigan."
o All of the different grades of khaki were marketed by the plaintiff under a common trade-
mark, which was first registered in the Bureau of Patents, Copyrights, and Trade-Marks of
the Philippine Government in the year 1905.
 This trade-mark consists of a large label representing the profiles of two elephant
heads placed close to each other in the upper middle center of the label and looking
in opposite directions, with trunks extending respectively to the right and left. This
device has for its rectangular border a garland of leaves; while over the point of
union between the two heads appear several flags. Inside the space formed by the
trunks of the elephants and the garland of leaves appears a label consisting of the
following words:

LEEMANN & GATTY'S

ORIGINAL
PATENTED FAST
KHAKI DRILL

Agents: Messrs. E. SPINNER & CO.

MANCHESTER & BOMBAY
Quality:................................Yds.

REGISTERED
No. 50,275.

o Plaintiff learned in 1924 that the defendant, the Neuss Hesslein Corporation, was selling a
brand of khaki in the Philippine Islands with the word "Wigan".
o As thus employed by the defendant, the word "Wigan" purports to show the color of the
defendant's khaki.
o After discovering this fact, the plaintiff, in April, 1925, caused its trade-mark, consisting of
the two elephant heads, to be again registered in the Bureau of Commerce and Industry, as
per certificate No. 4807.
  In its essential features, this trade-mark is identical with the trade-mark registered
by the plaintiff in 1905, but in the latter trade-mark the word "Wigan" is inserted
after the word "Quality." The purpose of this registration was of course to
incorporate the word "Wigan" as an integral part of the registered trade-mark.

ISSUE

o Whether defendant corporation has a right to use the word "Wigan" on khaki sold by it in
the Philippine Islands. – NO (constitutes unfair competition and trademark infringement)

RULING

o It will be noted that the plaintiff uses the word "Wigan" to indicate quality, while the
defendant purports to use the term to indicate color, though the defendant's practice in this
usage is somewhat loose.
o There is some proof in the record tending to show that American dealers are accustomed to
use the word "Wigan" to indicate a color or certain shades of color of khaki cloth.
 It is evident that the plaintiff first adopted the word "Wigan" in connection with
khaki cloth, and this was done for the purpose of indicating quality.

Unfair Competition

o The law governing trade-mark rights as well as unfair competition in this jurisdiction is
found in Act No. 666 of the Philippine Commission, which is a reduction to statutory form of
the jurisprudence developed by the courts of England and the United States in connection
with the subjects mentioned; and to the summary of substantive law expressed in the
statute are added the provisions relative to the registration of trade-marks.
o As stated in section 7 of Act No. 666, a person is guilty of unfair competition who "in selling
his goods shall give them the general appearance of goods of another manufacturer or
dealer, either 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," etc.

 The representation that the khaki sold by the defendant is of the kind known to the
trade as "Wigan" directly tends to deceive the purchaser and, therefore, constitutes
unfair competition as against the plaintiff.

o It is no doubt true that the adoption of the word "Wigan" by the defendant does not deceive
merchants or tailors buying from the defendant. But the person most to be considered in
this connection is the consumer, and when the word "Wigan" is found upon a bolt of khaki,
the ultimate buyer, or consumer, would naturally be led to suppose that the goods sold
under this name is the goods sold by the plaintiff.

Trademark Infringement
o With respect to the question of infringement of trade-mark right, it is clear that the
appropriation by the defendant of the word "Wigan" for use in the sale of its khaki did not
constitute a violation of trade-mark prior to April, 1925, when the word "Wigan" was first
incorporated in the plaintiff's registered trade-mark; but after that date it was certainly
illegal for the defendant to use the word "Wigan" stamped upon the khaki sold by it; and this
act was an infringement of trade-mark right.
o In section 2 of Act No. 666 it is declared that a designation or part of a designation which
relates only to the name, quality, or description of the merchandise, or geographical place of
its production or origin, cannot be made the subject of a trade-mark; and it seems to be
supposed by the defendant that this provision disables the plaintiff from complaining of the
use made of the word "Wigan" by the defendant.
 Although "Wigan," being the name of a town, was an original geographical term, it is
not used upon the plaintiff's khaki to indicate the geographical place of production
of the product.
 If the defendant were manufacturing its khaki in the town of "Wigan," it would be
entitled to use that name to indicate the place of manufacture of its goods. But such
is not the case here.
 o The plaintiff is entitled to an injunction for the purpose of restraining the defendant from
using the word "Wigan" upon the bolts of khaki sold by it, whether the wrongful act of the
defendant be considered as an act of unfair competition or as an infringement of the trade-
mark registered by the plaintiff in April, 1925.

b. Combination Mark

ETEPHA, A.G., petitioner, vs. DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC.,
respondents .
(G.R. No. L-20635, March 31, 1966)

FACTS:

Respondent Westmont Pharmaceuticals, Inc., a New York corporation, sought registration of trademark
"Atussin" placed on its "medicinal preparation of expectorant antihistaminic, bronchodilator sedative,
ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is used exclusively in the
Philippines since January 21, 1959.

Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected claiming that it will be
damaged because Atussin is so confusedly similar to its Pertussin used on a preparation for the
treatment of coughs, that the buying public will be misled into believing that Westmont's product is that
of petitioner's which allegedly enjoys goodwill.

The Director of Patents ruled that the trademark ATUSSIN may be registered even though PERTUSSIN
had been previously registered from the same office, hence, this appeal.

ISSUE: Whether or not ATUSSIN may be registered?

HELD:

We are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable
imitation. The phrase "colorable imitation" denotes such a "close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the one
supposing it to be the other.

A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two
trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a
prospective buyer. Confusion is likely between trademarks, however, only if their over-all presentations
in any of the particulars of sound, appearance, or meaning are such as would lead the purchasing public
into believing that the products to which the marks are applied emanated from the same source.

We concede the possibility that buyers might be able to obtain Pertussin or Attusin without prescription.
When this happens, then the buyer must be one thoroughly familiar with what he intends to get, else he
would not have the temerity to ask for a medicine — specifically needed to cure a given ailment. In
which case, the more improbable it will be to palm off one for the other. For a person who purchases
with open eyes is hardly the man to be deceived.

For the reasons given, the appealed decision of the respondent Director of Patents — giving due course
to the application for the registration of trademark ATTUSIN is hereby affirmed. Cost against petitioner.
So ordered.

c. acquisition of distinctiveness thru use

Trade Marks Act [Cap. 332, 2005 Ed.] Absolute grounds for refusal of registration 7. —(1) The
following shall not be registered: (b) trade marks which are devoid of any distinctive
character; (c) trade marks which consist exclusively of signs or indications which may serve,
in trade, to designate the kind, quality, quantity, intended purpose, value, geographical
origin, the time of production of goods or of rendering of services, or other characteristics of
goods or services; and (d) trade marks which consist exclusively of signs or indications which
have become customary in the current language or in the bona fide and established
practices of the trade. (2) A trade mark shall not be refused registration by virtue of
 subsection (1)(b), (c) or (d) if, before the date of application for registration, it has in fact
acquired a distinctive character as a result of the use made of it.

ACQUIRED DISTINCTIVENESS
Section 7(2) provides that trade marks which have been refused registration under
Sections 7(1)(b), (c) or (d) may still be registered if the applicant proves to the
satisfaction of the Registrar that before the date of the application, the mark had in fact
acquired a distinctive character because of the use made of it.
Section 7(2) does not specifically mention Section 7(1)(a). This is because, if a sign is
shown to be distinctive in fact, the objection under Section 7(1)(a) will not apply to
exclude the sign from registration.
The evidence necessary to establish that a trade mark is factually distinctive will vary
depending upon the facts of the case. The burden of establishing factual distinctiveness
will generally be proportionate to the strength of the prima facie objection raised in the
trade mark application.
The purpose of the evidence is to demonstrate that, despite the objectionable nature of the
trade mark, it had in fact, prior to the application for registration, become identified, in
the minds of the public, with a particular trader’s goods or services. The ECJ in
Windsurfing Chiemsee v Boots (Case C-108/97) said that the test is that the mark must
be used in such a way that a sufficiently large part of the relevant class of persons
recognize the sign as a distinctive trade mark at the time when the application is filed.
The evidence submitted should answer the following questions in the affirmative:
(i) Has the trade mark been used as a trade mark i.e. as a means of identifying trade
origin of the goods?
(ii) Has the applicant promoted the trade mark as a trade mark?
(iii) Does the evidence show, as a matter of fact, that the trade mark is operating in the
market place as an indicator of origin?
(iv) Has the relevant public (or a significant proportion thereof) come to rely upon the
mark, in the course of trade, as a means of identifying the trade origin of the goods?
(v) (Although the applicant need not necessarily have used the mark as the only means of
identifying the trade origin of the product as there is no rule that two or more trade
marks cannot operate alongside each other), the trade mark applied for must, by itself,
come to foster a concrete expectation amongst the relevant public that the goods
bearing that mark originate from, or are under the control of, a single undertaking.

Illustrative Cases:

Arce Sons VS Selecta Biscuit

G.R. No. L-14761 January 28, 1961
ARCE SONS AND COMPANY, petitioner, vs.
SELECTA BISCUIT COMPANY, INC., ET AL., respondents.
BAUTISTA ANGELO, J.:

Facts:
Ramon Arce, predecessor-in-interest of herein petitioner, started a milk business in 1933 using the name
“SELECTA” as trade-name as well as trade-mark. He sold his milk products in bottles covered with caps
on which the words “SELECTA FRESH MILK” were inscribed. For the span of more than 20 years, his
business expanded and sold, in addition to his milk product, ice cream, sandwiches and other food
products. His products were packaged in a special containers with the word ”SELECTA” written in the
packaging. Several new products were eventually added to his line of products such as biscuits, bakery
items, and assorted cakes and pastries. The word “SELECTA” was even written on the signboards of his
business establishments and upon the vehicles that were used for the delivery of his products. Then his
business was acquired by petitioner Arce Sons and Co. which eventually put a first class restaurant aside
from the manufacture of the aforementioned food products.

Herein respondent on the other hand, was organized and registered as corporation under the
name and style of Selecta Biscuits Co., Inc. The name Selecta was chosen by the Chinese organizers of
the corporation as a translation of a Chinese word “Ching Suan.” Its business started as a biscuit factory
and its products such as biscuits and crackers were specially wrapped in cellophane pouches and place
inside a tin can. Such products of the respondent were sold throughout the Philippines. The respondent
filed a petition with the Philippine Patent Office for the registration of the word “SELECTA” as trade-mark
to be use in its bakery products. The petition was referred to an examiner for evaluation who found out
that the trademark sought to be registered resembles the word “SELECTA” used by the petitioner so that
its use by the respondent will cause confusion as to the origin of their respective goods. So the examiner
recommended for the disapproval of the application. However, Patent Office only ordered the
publication of the application.

In due time, petitioner filed an opposition to the registration on the ground that the mark
“SELECTA” has been continuously used by it from the time of its organization and even prior thereto by
Ramon Arce, thus the said mark has already become identified with its name and business. Petitioner
also contend that the use of SELECTA by the respondents as trademark constitutes as an unfair
competition with its products thus resulting in confusion in trade and that the product of the respondent
might be mistaken by the public as its products.

The Director of Patents rendered a decision dismissing petitioner’s opposition stating that the
registration of the trade-mark SELECTA in favour of the respondent will not cause confusion or mistake
nor will deceive the purchasers as to cause damage to petitioner. Hence, this present petition for review.

Issue:
Whether or not the use of the trade-mark “SELECTA” by the respondent will result confusion to the
prejudice of Arce Sons and Co.

Held:
Yes. Trademark is a distinctive mark of authenticity through which the merchandise of a particular
producer or manufacturer may be distinguished from that of others, and its sole function is to designate
distinctively the origin of the products to which it is attached. Verily, the word “SELECTA” has been
chosen by petitioner and has been inscribed on all its products to serve not only as a sign or symbol that
may indicate that they are manufactured and sold by it but as a mark of authenticity that may distinguish
them from the products sold and manufactured by other merchants or businessmen. The word
'SELECTA', it is true, may be an ordinary or common word in the sense that may be used or employed by
any one in promoting his business or enterprise, but once adopted or coined in connection with one's
business as an emblem, sign or device to characterize its products, or as a badge of authenticity, it may
acquire a secondary meaning as to be exclusively associated with its products and business. In this sense,
its used by another may lead to confusion in trade and cause damage to its business. And this is the
situation of petitioner when it used the word 'SELECTA' as a trade-mark. In this sense, the law gives its
protection and guarantees its used to the exclusion of all others. Thus, the Director of Patent committed
an error in dismissing the opposition of the petitioner and in holding that the registration of the
trademark “SELECTA” in favour of respondent will not cause damage to petitioner.

Decision of the Director of Patent office is reversed.

Phil. Nut Vs Standard Brands

PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS INCORPORATED and

TIBURCIO S. EVALLE as Director of Patents

G.R. No. L-23035 July 31, 1975

Facts:

Philippine Nut Industry Inc., a domestic corporation, obtained from the Patent Office on August
10, 1961, a certificate covering the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS,"
the label used on its product of salted peanuts.

On May 14, 1962, Standard Brands, a foreign corporation, filed a case with the Director of
Patent, asking for the cancellation of Philippine Nut's certificate of registration on the ground
that "the registrant was not entitled to register the mark at the time of its application for
registration thereof" for the reason that it (Standard Brands) is the owner of the trademark
"PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration No. SR-172, issued
by the Patent Office on July 28, 1958.

Thereafter, the Philippine Nut filed its answer invoking the special defense that its registered
label is not confusingly similar to that of Standard Brands as the latter alleges.

Respondent Director of Patents gave due course to Standard Brand's petition, ordering the
cancellation of Philippine Nut's Certificate of Registration.
Upon denial of the motion for reconsideration, the Philippine Nut petitioned for a review, seeking
the reversal of the Director of Patents’ decision.

Issue:

Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by

Philippine Nut on its label for salted peanuts with the same coloring scheme and the same lay-
out of words, confusingly similar to the trademark "PLANTERS COCKTAIL PEANUTS" used by
Standard Brands on its product.

Ruling:

Yes. As to appearance and general impression of the two trademarks, the Supreme Court said it
found a very confusing similarity.

The word PLANTERS printed across the upper portion of the label in bold letters easily attracts
and catches the eye of the ordinary consumer and it is that word and none other that sticks in
his mind when he thinks of salted peanuts.

The Supreme Court also held that although it is true that no producer or manufacturer may have
a monopoly of any color scheme or form of words in a label, but when a competitor adopts a
distinctive or dominant mark or feature of another's trademark and with it makes use of the
same color ensemble, employs similar words written in a style, type and size of lettering almost
identical with those found in the other trademark, the intent to pass to the public his product as
that of the other is quite obvious. It deceives the public.

Hence, the decision of respondent Director of Patents was affirmed.