TOPIC 4

Rights Conferred Section 147-150,Sec. 231

Compare Sec. 20,RA No. 166 with Sec. 138 as to infringement between non-competing goods

CASES

ANG TIBAY V. TEODORO, 74 Phil. 50

https://lawphil.net/judjuris/juri1942/dec1942/gr_l-48226_1942.html

TEST OF WHETHER NONCOMPETING GOODS ARE OR ARE NOT OF THE SAME CLASS; In the present stage of the development
on trade-marks, unfair competition and unfair trading, the test employed by the courts to determine whether noncompeting
goods are or are not of the same class is confusion as to the origin of the goods of the second user. . Although two
noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to
possess the same descriptive properties, they would, nevertheless, be held by the courts to belong to the same class if the
simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or
personal source, of the second user's goods. They would be considered as not falling under the same class only if they are so
dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second
user's goods.

Facts:

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

Issue:
Whether or not there is trademark infringement and/or unfair competition between unrelated goods.
Ruling:      
YES. In the present state of development of the law on Trade-Marks, Unfair Competition, and Unfair Trading, the test employed
by the courts to determine whether noncompeting goods are or are not of the same class is confusion as to the origin of the
goods of the second user. Although two noncompeting articles may be classified under two different classes by the Patent
Office because they are deemed not to possess the same descriptive properties, they would, nevertheless, be held by the courts
to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause
confusion as to the origin, or personal source, of the second user’s goods. They would be considered as not falling under the
same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the
first user made the second user’s goods. The Court of Appeals found in this case that by uninterrupted and exclusive use since
1910 of respondent’s registered trade-mark on slippers and shoes manufactured by him, it has come to indicate the origin and
ownership of said goods. It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for
pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of
the respondent.

/////

The question raised by petitioner involve the scope and application of sections 3,7, 11, 13, and 20 of the Trade-Mark Law (Act
No. 666.) (Gin api ko la an provisions for your reference since waray pa nat ginlecture. Feel free to cut it Haha ) Section 3
provides that "any person entitled to the exclusive use of a trade-mark to designate the origin or ownership of goods he has
made or deals in, may recover damages in a civil actions from any person who has sold goods of a similar kind, bearing such
trade-mark . . . The complaining party . . . may have a preliminary injunction, . . . and such injunction upon final hearing, if the
complainant's property in the trade-mark and the defendant's violation thereof shall be fully established, shall be made
perpetual, and this injunction shall be part of the judgment for damages to be rendered in the same cause." Section 7 provides
that any person who, in selling his goods, shall give them the general appearance of the goods of another either in the
wrapping of the packages, or in 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 the complainant, shall be guilty of unfair
competition, and shall be liable to an action for damages and to an injunction, as in the cases of trade-mark infringement under
section 3. Section 11 requires the applicant for registration of a trade-mark to state, among others, "the general class of
merchandise to which the trade-mark claimed has been appropriated." Section 13 provides that no alleged trade-mark or
trade name shall be registered which is identical with a registered or known trade-mark owned by another and appropriate to
the same class of merchandise, or which to nearly resembles another person's lawful trade-mark or trade-name as to be likely
to cause confusion or mistake in the mind of the public, or to deceive purchasers.

And section 2 authorizes the Director of Commerce to establish classes of merchandise for the purpose of the registration of
trade-marks and to determine the particular description of articles included in each class; it also provides that "an application
for registration of a trade-mark shall be registered only for one class of articles and only for the particular description of
articles mentioned in said application." In the present state of development of the law on Trade-Marks, Unfair Competition,
and Unfair Trading, the test employed by the courts to determine whether noncompeting goods are or are not of the same
class is confusion as to the origin of the goods of the second user. Although two noncompeting articles may be classified under
two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would,
nevertheless, be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar
trade-marks would be likely to cause confusion as to the origin, or personal source, of the second user's goods. They would be
considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely
that the purchaser would think the first user made the second user's goods. Such construction of the law is induced by cogent
reasons of equity and fair dealing. The courts have come to realize that there can be unfair competition or unfair trading even
if the goods are non-competing, and that such unfair trading can cause injury or damage to the first user of a given trade-mark,
first, by prevention of the natural expansion of his business and, second, by having his business reputation confused with and
put at the mercy of the second user. The original owner is entitled to the preservation of the valuable link between him and the
public that has been created by his ingenuity and the merit of his wares or services. The owner of a trade-mark or trade-name
has a property right in which he is entitled to protection, since there is damage to him from confusion of reputation or
goodwill in the mind of the public as well as from confusion of goods. The modern trend is to give emphasis to the unfairness
of the acts and to classify and treat the issue as a fraud.

3. CHUA CHE V. PHILIPPINE PATENT OFFICE, 13 SCRA 67 (1965)

https://lawphil.net/judjuris/juri1965/jan1965/gr_l-18337_1965.html

FACTS 1. Chua Che is a Chinese citizen residing at Tondo, Manila. He is engaged in selling laundry soap, Class 51. 2. On October
30, 1958, Chua Che filed a petition with Philippine Patent Office to register the trade name “X-7” for his soap. 3. In the petition,
Chua Che alleged that the trademark was used by him since June 10, 1957 and that he continuously used it in trade. 4. On July
6, 1959, the application of Chua Che was approved by the Department of Commerce and Industry. However, after the
publication of “Notice of Allowance”, Sy Tuo presented a notice of opposition. 5. Sy Tuo alleged: o that trademark “X-7” was
registered to him, covered by Certificate of Registration no. 5,000, issued on April 21, 1951. o That he has prior use of the
trademark "X-7" as he has been using it extensively and continuously since July 31, 1952. o that the registration of the
trademark "X-7" in the name of CHUA CHE will be in violation of, and will run counter to, Section 4 (d) of RA 166, because it is
confusingly similar to the trademark "X-7" 6. Chua Che, while he admitted that "X-7" is registered in the name of Sy Tuo, he
claimed that said trademark is not being used on soap, but purely toilet articles. 7. Director of Patents ruled in favor of Sy Tuo.
o Sy Tuo’s first use of the trademark X-7 on July 31, 1953, is prior to applicant's first use of the mark on June 10, 1957. o
Record shows that Sy Tuo has been using the trademark X-7 on perfume, lipstick and nail polish since July 1953. o Sy Tuo
spent substantial amounts of money in building upon the goodwill of this trademark through advertisements in all kinds of
media. Thus, he enjoys a valuable goodwill in the trademark X-7. o The products of the parties, while specifically different, are
products intended for use in the home and usually have common purchasers. o The use of X-7 for laundry soap is but a natural
expansion of business of the Sy Tuo.

ISSUE/S 1. W/N Sy Tuo can oppose the registration of “X-7” for laundry soap even though his registered trademark was for
perfume, lipstick and nail polish.

RULING & RATIO

1. YES 2. The circumstance of non-actual use of the mark on granulated soap by Sy Tuo, does not detract from the fact that he
has already a right to such a trademark and should, therefore, be protected. 3. The average purchasers are likely to associate X-
7 laundry soap with X-7 perfume, lipstick and nail polish or to think that the products have common origin or sponsorship. 4.
While it is no longer necessary to establish that the goods of the parties possess the same descriptive properties, as previously
required under the Trade Mark Act of 1905, registration of a trademark should be refused in cases where there is a likelihood
of confusion, mistake, or deception, even though the goods fall into different categories. 5. The products of Sy Tuo are common
household items nowadays, in the same manner as laundry soap. The likelihood of purchasers to associate those products to a
common origin is not far-fetched. DISPOSITION PREMISES CONSIDERED, the decision sought to be reviewed should be, as it is
hereby affirmed in all respects, with costs against appellant CHUA CHE in both instances.

Hence, this petition.

3. Sta. Ana v. Maliwat, 24 SCRA 108

https://lawphil.net/judjuris/juri1968/aug1968/gr_l-23023_1968.html

Facts of the Case: 

In 1962, Florentino Maliwat sought to register the trademark "FLORMANN" used on shirts, pants, jackets and shoes for ladies
men and children. He claimed its first use in commerce in 1955. Also in the same year (1962), Jose P. Sta. Ana (Petitioner) filed
an application for the registration of the trademark "FLORMEN" (used in ladies and children shoes). he claimed its first use in
commerce in 1959. Due to the confusing similarity , the Director of the Patent Office ordered an interference. Maliwat's
application was then granted due to his prior adoption and use while that of Sta. Ana was denied. It was stipulated by the
parties that 'Flormann' was used as a trademark in 1953 and Maliwat used it on shoes in 1962.

Issue: Was there any trademark infringement committed?

Ruling: YES. Both products of the parties have the same descriptive properties, thus its trademark must be protected.
The law does not require that the goods of the previous user and the late user of the same mark should possess the same
descriptive properties or should fall into the same categories in order to bar the latter from registering his amrk. The meat of
the matter is the likelyhood of confusion, mistake or deception upon the purchase of the goods of the parties. Herein, the
similarity of the mark 'FLORMANN' and the name 'FLORMEN', as well as the likelihood of confusion is admitted. As such,
Maliwat as prior adopter has a better right to use the mark.

4. Philippine Refining Company v. Ng Sam, G.R. No L-26676, July 30, 1982

https://lawphil.net/judjuris/juri1982/jul1982/gr_l_26676_1982.html

Facts: The trademark "CAMIA" was first used in the Philippines by petitioner Philippine REFINING Co. on its products in 1922.
In 1949, petitioner caused the registration of said trademark with the Philippine Patent Office. Its Certificate of Registration
No. 1352-S covers vegetable and animal fats, particularly lard, butter and cooking oil, all classified under Class 47 (Foods and
Ingredients of Food) of the Rules of Practice of the Patent Office. In 1960, respondent Ng Sam, a Chinese citizen residing in
Iloilo City, filed an application for registration of the identical trademark "CAMIA" for his product, ham, which likewise falls
under Class 47. Alleged date of first use of the trademark by respondent was on February 10, 1959. Petitioner opposed the
application alleging “confusing similarity” between the two marks. The Director of Patents rendered a decision allowing
registration of the trademark "CAMIA" in favor of Ng Sam. Held: Trademark Protection Does Not Extend to Unrelated or Non-
Competing Goods 1. A rudimentary precept in trademark protection is that "the right to a trademark is a limited one, in the
sense that others may use the same mark on unrelated goods." Thus, as pronounced by the United States Supreme Court, "the
mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same
trademark by others on articles of a different description." 2. Such restricted right over a trademark is reflected in our
Trademark Law. Under Section 4(d) of the law, registration of a trademark which so resembles another already REGISTERED
or in use should be denied, where to allow such registration could likely result in confusion, mistake or deception to the
consumers. Conversely, where no confusion is likely to arise, as in this case, registration of a similar or even identical mark
may be allowed. 3. While ham and some of the products of petitioner are classified under Class 47 (Foods and Ingredients of

Food), this alone cannot serve as the decisive factor in the resolution of whether or not they are related goods. Emphasis
should be on the similarity of the products involved and not on the arbitrary classification or general description of their
properties or characteristics. 4. The particular goods of the parties are so unrelated that consumers would not in any
probability mistake one as the source or origin of the product of the other. Petitioner’s products are ordinary day-to-day
household items whereas ham is not necessarily so. The goods of petitioners are basically derived from vegetable oil and
animal fats, while the product of respondent is processed from pig's legs. A consumer would not reasonably assume that
petitioner has so diversified its business as to include the product of respondent. The business of the parties are
noncompetitive and their products so unrelated that the use of identical trademarks is not likely to give rise to confusion,
much less cause damage to petitioner Generic or Descriptive Terms used in Fanciful Manner 5. The term "CAMIA" is
descriptive of a whole genus of garden plants with fragrant white flowers. Being a generic and common term, its appropriation
as a trademark, albeit in a fanciful manner in that it bears no relation to the product it identifies, is valid. Scope and Purpose of
Trademark Protection 6. A trademark is designed to identify the user. But it should be so distinctive and sufficiently original as
to enable those who come into contact with it to recognize instantly the identity of the user. It must be affirmative and definite,
significant and distinctive, capable to indicate origin. 7. "CAMIA" as a trademark is far from being distinctive. By itself, it does
not identify petitioner as the manufacturer or producer of the goods upon which said mark is used, as contra-distinguished to
trademarks derived from coined words such as "Rolex"or "Kodak." It has been held that "if a mark is so commonplace that it
cannot be readily distinguished from others, then it is apparent that it cannot identify a particular business; and he who first
adopted it cannot be injured by any subsequent appropriation or imitation by others, and the public will not be deceived."

///

FACTS:

The sole issue raised in this petition for review of the decision of the Director of patents is whether or not the product of
respondent, Ng Sam, which is ham, and those of petitioner consisting of lard, butter, cooking oil and soap are so related that
the use of the same trademark "CAMIA" on said goods would likely result in confusion as to their source or origin.

RULING:

The Court held that the businesses of the parties are non-competitive and their products so unrelated that the identical use of
the mark ‘Camia” was not likely to give rise to confusion, much less cause damage to petitioner. The particular goods of the
parties are so unrelated that consumers would not in any probability mistake one as the source or origin of the product of the
other. Petitioner’s goods are basically derived from vegetable oil and animal fats, while the product of respondent is processed
from pig's legs.Furthermore, respondent had on his product the business name "SAM'S HAM AND BACON FACTORY" which
would place no question on the origin of the product.

The Court also held that the term subject to the case is not uncommon in view of the fact that there were two others distinct
businesses bearing the same name. A trademark must be affirmative and definite, significant and distinctive, capable to
indicate origin. It was held that if a mark is so commonplace that it cannot be readily distinguished from others, then he who
first adopted it cannot be injured by any subsequent appropriation or imitation by others, and the public will not be deceived.
What then is to be reckoned with is the similarity of the products under the mark. The similarity is not on the classification of
the property or character of the product but on the sameness of the actual product sold or manufactured. Such similarity is
wanting in this case.

5. Esso Standard Eastern, Inc. v. CA, 116 SCRA 336

https://lawphil.net/judjuris/juri1982/aug1982/gr_l_29971_1982.html

FACTS: Esso Standard Eastern, Inc., then a foreign corporation duly licensed to do business in the Philippines, is engaged in
the sale of petroleum products which are Identified with its trademark ESSO United Cigarette Corporation is a domestic
corporation then engaged in the manufacture and sale of cigarettes, after it acquired in November, 1963 the business, factory
and patent rights of its predecessor La Oriental Tobacco Corporation, one of the rights thus acquired having been the use of
the trademark ESSO on its cigarettes, for which a permit had been duly granted by the Bureau of Internal Revenue.
The complaint of ESSO alleged that it had been for many years engaged in the sale of petroleum products and its trademark
ESSO had acquired a considerable goodwill to such an extent that the buying public had always taken the trademark ESSO as
equivalent to high quality petroleum products. It asserted that the continued use by United Cigarettes Corporation of the same
trademark ESSO on its cigarettes was being carried out for the purpose of deceiving the public as to its quality and origin to
the detriment and disadvantage of its own products.
Unite Cigarettes Corporation admitted that it used the trademark ESSO on its own product of cigarettes, which was not
Identical to those produced and sold by the petitioner and therefore did not in any way infringe on or imitate petitioner's
trademark. It further argues that in order that there may be trademark infringement, it is indispensable that the mark must be
used by one person in connection or competition with goods of the same kind as the complainant's.

ISSUE/S: Is there trademark infringment? 

RULING: None. 

It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum products, and the product of
respondent, cigarettes, are non-competing. But as to whether trademark infringement exists depends for the most part upon
whether or not the goods are so related that the public may be, or is actually, deceived and misled that they came from the
same maker or manufacturer. For non-competing goods may be those which, though they are not in actual competition, are so
related to each other that it might reasonably be assumed that they originate from one manufacturer.  Non-competing goods
may also be those which, being entirely unrelated, could not reasonably be assumed to have a common source. in the former
case of related goods, confusion of business could arise out of the use of similar marks; in the latter case of non-related goods,
it could not. The vast majority of courts today follow the modern theory or concept of "related goods" which the Court has
likewise adopted and uniformly recognized and applied.
Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same
physical attributes or essential characteristics with reference to their form, composition, texture or quality. 

In the present case, the goods are obviously different from each other with "absolutely no iota of similitude"  as stressed in
respondent court's judgment. They are so foreign to each other as to make it unlikely that purchasers would think that
petitioner is the manufacturer of respondent's goods.ºThe mere fact that one person has adopted and used a trademark on his
goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind.
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. 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."

6. Hickoc Manufacturing Co. v. CA, 116 SCRA 387

https://lawphil.net/judjuris/juri1982/aug1982/gr_l_44707_1982.html

Facts:
Petitioner is a foreign corporation and all its products are manufactures by Quality House Inc. The latter pays royalty to the
petitioner. Hickok registered the trademark 'Hickok' earlier and used it in the sale of leather wallets, key cases, money folds,
belts, men’s underwear, neckties, hankies, and men's socks. While Sam Bun Liong used the same trademark in the sale of
Marikina shoes. Both products have different channels of trade. The Patent Office did not grant the registration, but the Court
of Appeals reversed the PPO decision.

Issue: Is there infringement in this case?

NONE. Emphasis should be on the similarity of the products involves and not on the arbitrary classification or the general
description of their properties or characteristics. Also, the mere fact that one person has adopted and used a trademark on his
goods does not prevent the adoption and use of the same by others on unrelated articles of different kind.
There is a different design and coloring of the trademark itself. The 'Hickok' trademark is in red with white background in the
middle of 2 branches of laurel (in light gold) while the one used by Sam Bun Liong is the word 'Hickok ' in white with gold
background between 2 branches of laurel in red with the word 'shoes' also in red placed below the word 'Hickok'.

7. Faberge v. IAC, 215 SCRA 316

https://lawphil.net/judjuris/juri1992/nov1992/gr_71189_1992.html

FACTS: 

Petitioner Faberge manufactures and sells after-shave lotion, shaving cream, deodorant, toilet soap, etc. under its registered
trademark ‘BRUT’. On the other hand, respondent Co Beng Kay manufactures and sells briefs under the trademark ‘BRUTE.’
Petitioner tried to oppose the registration by respondent of the trademark ‘BRUTE’ for being confusingly similar with
petitioner’s ‘BRUT’ but Director of Patents denied such opposition observing that considering the overall appearance of both
trademarks, there are glaring differences which would unlikely cause a confusion among customers.

On appeal, the CA initially ruled in favor of petitioner stating that the products of the petitioner and the respondent have the
same outlet (e,g, ‘Men’s accessories’ in a department store). Thus, even if the trademark ‘BRUTE’ was only applied for briefs,
the similarity of the same with ‘BRUT’ would likely cause confusion to the buying public.

On respondent’s motion for reconsideration, the CA reversed itself in favor of respondent relying on the ESSO and PRC cases
wherein the SC ruled that identical trademark can be used by different manufacturers for products that are non-competing
and unrelated. Hence, this appeal.

Petitioner argues that the ruling in Teodoro which was reiterated in Sta. Ana where the SC ruled that a registration may be
opposed if the junior user’s goods (Co Beng Kay’s in this case) are not remote from any product that the senior user (Faberge)
would be likely to make or sell. To bolster this argument, petitioner presented an alleged application of the trademark ‘BRUT
33 Device’ for briefs.

ISSUE: WON the respondent is permitted to use the trademark ‘BRUTE’ for briefs.

RULING: YES. The provisions applicable to this case are the following:

            Sec. 4. Registration of trade-marks, trade-names and service-marks on the principal register. —

. . . The owner of trademark, trade-name or service-mark used to distinguish his goods, business or services from the goods,
business or services of others shall have right to register the same on the principal register, unless it:
                                                            xxx xxx xxx
4(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or
a mark or trade-name previously used in the Philippines by another and not abandoned, as to be likely, when applied to or
used in connection with the goods, business or services of the applicant, to cause confusion or mistake or to deceive
purchasers.
                                                            xxx xxx xxx
Sec. 20. Certificate of registration prima facie evidence of validity. — A certificate of registration of a mark or trade-name shall
be prima facie evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of
the registrant's exclusive right to use the same in connection with the goods, business or services specified in the
certificate, subject to any conditions and limitations stated therein.

It is not difficult to discern from the foregoing statutory enactments that private respondent may be permitted to register the
trademark "BRUTE" for briefs produced by it notwithstanding petitioner's vehement protestations of unfair dealings in
marketing its own set of items which are limited to: after-shave lotion, shaving cream, deodorant, talcum powder and toilet
soap. In as much as petitioner has not ventured in the production of briefs, an item which is not listed in its certificate of
registration, petitioner cannot and should not be allowed to feign that private respondent had invaded petitioner's exclusive
domain. To be sure, it is significant that petitioner failed to annex in its Brief the so-called "eloquent proof that petitioner
indeed intended to expand its mark "BRUT" to other goods. Even then, a mere application by petitioner in this aspect does not
suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. In short,
paraphrasing Section 20 of the Trademark Law as applied to the documentary evidence adduced by petitioner, the certificate
of registration issued by the Director of Patents can confer upon petitioner the exclusive right to use its own symbol only to
those goods specified in the certificate, subject to any conditions and limitations stated therein.

8. Canon Kabushiki v. CA, G.R. No. 120900 (2000)

https://lawphil.net/judjuris/juri2000/jul2000/gr_120900_2000.html

Facts: Respondent NSR Rubber filed an application for registration of the mark CANON for sandals. Petitioner Canon, a
Japanese corporation, opposed alleging it will be damaged by the registration. Petitioner presented evidence that it was
the owner of the mark CANON in various countries and in the Philippines for goods such as paints, chemical products,
toner and dye stuff. BPTTT dismissed the opposition and gave due course to respondent’s application. CA affirmed.
 Petitioner invokes Article 8 of the Paris Convention which affords protection to a tradename whether or not it forms part
of a trademark.

Issue: Whether or not petitioner may be afforded protection of its trade name.

Ruling: NO. The term "trademark" is defined by RA 166, the Trademark Law, as including "any word, name, symbol, emblem,
sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and
distinguish them for those manufactured, sold or dealt in by others." Tradename is defined by the same law as including
"individual names and surnames, firm names, tradenames, devices or words used by manufacturers, industrialists, merchants,
agriculturists, and others to identify their business, vocations, or occupations; the names or titles lawfully adopted and used by
natural or juridical persons, unions, and any manufacturing, industrial, commercial, agricultural or other organizations
engaged in trade or commerce." Simply put, a trade name refers to the business and its goodwill; a trademark refers to the
goods. The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, of which
both the Philippines and Japan, the country of petitioner, are signatories, is a multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of
source or appellations of origin, and at the same time aims to repress unfair competition. We agree with public respondents
that the controlling doctrine with respect to the applicability of Article 8 of the Paris Convention is that established in Kabushi
Kaisha Isetan vs. IAC. As pointed out by the BPTTT: "Regarding the applicability of Article 8 of the Paris Convention, this Office
believes that there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through
the use of that name as a trademark by a local entity. To illustrate – if a taxicab or bus company in a town in the United
Kingdom or India happens to use the tradename "Rapid Transportation", it does not necessarily follow that "Rapid" can no
longer be registered in Uganda, Fiji, or the Philippines.”

..////

FACTS: NSR Rubber Corp., filed an application for registration of the mark CANON for sandals (Class 25) in the Bureau of
Patents, Trademarks, and Technology Transfer (BPTTT). The application was opposed by Canon Kabushiki Kaisha (CKK), a
foreign corp. under the laws of Japan. 

NSR was declared in default upon motion of CKK. CKK presented as its evidence certificates of registration for the mark
CANON in various countries and in the Philippines covering goods belonging to Class 2 (paints, chemical products, toner and
dyestuff). 

Ruling of the BPTTT: denied the opposition of CKK and granted the application of NSR Rubber Corp.

CA: affirmed

Both lower courts ruled that there is a dissimilarity between the products of CKK and NSR, i.e. CKK: paints, chemical products,
toner and dyestuff; while NSR: sandals

ISSUE/S:
1. WON CKK trademark is violated. NO. 
2. WON CKK can exclusively use ‘CANON’ as protected by the Paris Convention. NO.

RULING:
Ordinarily, the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by
the Trademark Law. However, when a trademark is used by a party for a product in which the other party does not deal, the
use of the same trademark on the latter’s product cannot be validly objected to.

The certificates of registration for the trademark CANON in other countries and in the Philippines clearly showed that said
certificates cover goods belonging to class 2 (paints, chemical products, toner, dyestuff). As such, NSR t can use the trademark
CANON for its goods classified as class 25 (sandals). Clearly, there is a world of difference between the paints, chemical
products, toner, and dyestuff and sandals.

The 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. Thus, the exclusive right of CKK to use the
trademark CANON is limited to the products covered by its certificate of registration.
The likelihood of confusion of goods or business is a relative concept, to be determined only according to the particular, and
sometimes peculiar, circumstances of each case. Indeed, in trademark law cases, even more than in other litigation, precedent
must be studied in the light of the facts of the particular case.

Here, the products involved are so unrelated that the public will not be misled that there is the slightest nexus between
petitioner and the goods of private respondent.

Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same
physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be
related because they serve the same purpose or are sold in grocery stores.

Here, the paints, chemical products, toner and dyestuff of CKK that carry the trademark CANON are unrelated to sandals, the
product of NSR. The two classes of products in this case flow through different trade channels. The products of CKK are sold
through special chemical stores or distributors while the products of NSR are sold in grocery stores, sari-sari stores and
department stores. 

 A tradename refers to the business and its goodwill while a trademark refers to the goods.

Regarding the applicability of Article 8 of the Paris Convention (“A tradename shall be protected in all the countries of the Union
without the obligation of filing or registration, whether or not it forms part of a trademark .), there is no automatic protection
afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local
entity. However, the then Minister of Trade and Industry, the Hon. Roberto V. Ongpin, issued a memorandum dated 25 October
1983 to the Director of Patents, a set of guidelines in the implementation of Article 6bis (sic) of the Treaty of Paris. 

These conditions are: 

1.) the mark must be internationally known; 
2.) the subject of the right must be a trademark, not a patent or copyright or anything else; 
3.) the mark must be for use in the same or similar kinds of goods; and 
4.) the person claiming must be the owner of the mark 

CKK failed to comply with the third requirement of the said memorandum. CKK is using the mark  “CANON” for products
belonging to class 2 (paints, chemical products) while NSR is using the same mark for sandals (class 25).

9. Pearl & Dean v. Shoemart, 409 SCRA 231 (2003)

https://lawphil.net/judjuris/juri2003/aug2003/gr_148222_2003.html

FACTS:

Pearl and Dean is a corporation in the manufacture of advertising display units also known as light boxes, which were
manufactured by Metro Industrial Services. A copyright Registration was obtained in 1981. These were marketed in the name
of "Poster Ads". They also applied for a registration of trademark with the Bureau of Patents in 1983, but was only approved in
19988. In 1985, petitioner had  n agreement with respondent Shoemart Inc (SMI) to install these light boxes in their Makati
and Cubao branch, Only the Makati branch was able to sigh the agreement. In 1986, the contract was rescinded unilaterally by
SMI, and instead contracted with Metro Industrial Services. They installed these lightboxes in different SM city branches,
including Cubao and Makati, with association with North Edsa Marketing Inc (NEMI), SMI's sister company. Petitioner
requested SMI and NEMI to put down their installations of the light boxes, and payment of compensatory damages worth
 P20M. Claiming that respondents failed to comply, they filed a case for infringement of trademark and copyright, unfair
competition and damages. RTC ruled in favor of petitioner, but CA reversed.

ISSUES:

(1) Whether there was a copyright infringement

(2) Whether there was a patent infringement
(3) Whether there was a trademark infringement
(4) Whether there was unfair competition

RULING: No to all.

(1) Copyright is a statutory right, subject to the terms and conditions specified in the statute. Therefore, it can only cover the
works falling within the statutory enumeration or description. Since the copyright was classified under class "O" works, which
includes "prints, pictorial illustrations, advertising copies, labels, tags and box wraps," and does not include the light box itself.
A lightbox, even admitted by the president of petitioner company, was neither a literary nor an artistic work but an
engineering or marketing invention, thus not included under a copyright.

(2) Petitioner was not able to secure a patent for its lightboxes, and cannot legally prevent anyone from manufacturing or
commercially using the same. Patent has a three-fold purpose: a) to foster and reward invention; b) promotes disclosures of
invention and permit public to use the same upon expiration; c) stringent requirements for patent protection to ensure in the
public domain remain there for free use of the public. Since petitioner was not able to go through such examination, it cannot
exclude others from manufacturing, or selling such lightboxes. No patent, no protection. 

(3) The certificate of registration issued by the Director of Patents gives exclusive right to use its own symbol only to the
description specified in the certificate. It cannot prevent others to use the same trademark with a different description.

(4) "Poster Ads" is a general term that cannot be associated specifically to Pearl and Dean, thus it cannot be considered to use
such term to be unfair competition against the petitioner.

///

ISSUES: 

1. Whether the the light box depicted in such engineering drawings ipso facto also protected by such copyright.
2. Whether there was a patent infringement.
3. Whether the owner of a registered trademark legally prevent others from using such trademark if it is a mere abbreviation of a
term descriptive of his goods, services or business?
RULING:

ON THE ISSUE OF COPYRIGHT INFRINGEMENT

The Court of Appeals correctly held that the copyright was limited to the drawings alone and not to the light box itself.

Although petitioner’s copyright certificate was entitled “Advertising Display Units” (which depicted the box-type electrical
devices), its claim of copyright infringement cannot be sustained.

Copyright, in the strict sense of the term, is purely a statutory right. Accordingly, it can cover only the works falling within the
statutory enumeration or description.

Even as we find that P & D indeed owned a valid copyright, the same could have referred only to the technical drawings within
the category of “pictorial illustrations.” It could not have possibly stretched out to include the underlying light box. The light
box was not a literary or artistic piece which could be copyrighted under the copyright law.

The Court reiterated the ruling in the case of Kho vs. Court of Appeals, differentiating patents, copyrights and trademarks,
namely:

A trademark is any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and
shall include a stamped or marked container of goods. In relation thereto, a trade name means the name or designation
identifying or distinguishing an enterprise. Meanwhile, the scope of a copyright is confined to literary and artistic works which
are original intellectual creations in the literary and artistic domain protected from the moment of their creation. Patentable
inventions, on the other hand, refer to any technical solution of a problem in any field of human activity which is new, involves
an inventive step and is industrially applicable.

ON THE ISSUE OF PATENT INFRINGEMENT

Petitioner never secured a patent for the light boxes. It therefore acquired no patent rights which and could not legally prevent
anyone from manufacturing or commercially using the contraption. To be able to effectively and legally preclude others from
copying and profiting from the invention, a patent is a primordial requirement. No patent, no protection.

ON THE ISSUE OF TRADEMARK INFRINGEMENT

On the issue of trademark infringement, the petitioner’s president said “Poster Ads” was a contraction of “poster advertising.”
P & D was able to secure a trademark certificate for it, but one where the goods specified were “stationeries such as
letterheads, envelopes, calling cards and newsletters.”Petitioner admitted it did not commercially engage in or market these
goods. On the contrary, it dealt in electrically operated backlit advertising units which, however, were not at all specified in the
trademark certificate.

Assuming arguendo that “Poster Ads” could validly qualify as a trademark, the failure of P & D to secure a trademark
registration for specific use on the light boxes meant that there could not have been any trademark infringement since
registration was an essential element thereof.

ON THE ISSUE OF UNFAIR COMPETITION

There was no evidence that P & D’s use of “Poster Ads” was distinctive or well-known. As noted by the Court of Appeals,
petitioner’s expert witnesses himself had testified that ” ‘Poster Ads’ was too generic a name. So it was difficult to identify it
with any company, honestly speaking.”This crucial admission that “Poster Ads” could not be associated with P & D showed
that, in the mind of the public, the goods and services carrying the trademark “Poster Ads” could not be distinguished from the
goods and services of other entities.

“Poster Ads” was generic and incapable of being used as a trademark because it was used in the field of poster advertising, the
very business engaged in by petitioner. “Secondary meaning” means that a word or phrase originally incapable of exclusive
appropriation with reference to an article in the market might nevertheless have been used for so long and so exclusively by
one producer with reference to his article that, in the trade and to that branch of the purchasing public, the word or phrase has
come to mean that the article was his property.

The petition is DENIED

10. 246 Corporation v. Daway, 416 SCRA 315 (2003)

https://lawphil.net/judjuris/juri2003/nov2003/gr_157216_2003.html

Facts: Respondents Montres Rolex and Rolex Centre Phil., owners/proprietors of Rolex and Crown Device, filed a complaint for
trademark infringement alleging petitioner adopted and used without authority the mark ‘Rolex’ in its business name ‘Rolex
Music Lounge.’ Petitioner argued that there is no trademark infringement since no confusion would arise by the use of ‘Rolex’
considering that its entertainment business is totally unrelated to respondent’s business or products such as watches, clocks,
etc.

Issue: Whether or not likelihood of confusion would arise from the use of identical marks over unrelated goods/business.

Ruling: YES. Under the old Trademark Law where the goods for which the identical marks are used are unrelated, there can be
no likelihood of confusion and there is therefore no infringement in the use by the junior user of the registered mark on the
entirely different goods. This ruling, however, has been to some extent, modified by Section 123.1(f) of the Intellectual
Property Code. A junior user of a well-known mark on goods or services which are not similar to the goods or services, and are
therefore unrelated, to those specified in the certificate of registration of the well-known mark is precluded from using the
same on the entirely unrelated goods or services, subject to the following requisites, to wit:

1 The mark is well-known internationally and in the Philippines. 2. The use of the well-known mark on the entirely unrelated
goods or services would indicate a connection between such unrelated goods or services and those goods or services specified
in the certificate of registration in the well known mark. This requirement refers to the likelihood of confusion of origin or
business or some business connection or relationship between the registrant and the user of the mark. 3. The interests of the
owner of the well-known mark are likely to be damaged. For instance, if the registrant will be precluded from expanding its
business to those unrelated good or services, or if the interests of the registrant of the well-known mark will be damaged
because of the inferior quality of the good or services of the user. Section 123.1(f) is clearly in point because the Music Lounge
of petitioner is entirely unrelated to respondents’ business involving watches, clocks, bracelets, etc. However, the Court cannot
yet resolve the merits of the present controversy considering that the requisites for the application of Section 123.1(f), which
constitute the kernel issue at bar, clearly require determination facts of which need to be resolved at the trial court.

///////
 Facts:

Respondents Montres Rolex and Rolex Centre Phil., owners/proprietors of Rolex and Crown Device, filed a complaint for
trademark infringement alleging petitioner adopted and used without authority the mark ‘Rolex’ in its business name ‘Rolex
Music Lounge.’ Petitioner argued that there is no trademark infringement since no confusion would arise by the use of ‘Rolex’
considering that its entertainment business is totally unrelated to respondent’s business or products such as watches, clocks,
etc.

Issue:

Whether or not likelihood of confusion would arise from the use of identical marks over unrelated goods/business.

Ruling: YES.

Under the old Trademark Law where the goods for which the identical marks are used are unrelated, there can be no
likelihood of confusion and there is therefore no infringement in the use by the junior user of the registered mark on the
entirely different goods. This ruling, however, has been to some extent, modified by Section 123.1(f) of the Intellectual
Property Code.

A junior user of a well-known mark on goods or services which are not similar to the goods or services, and are therefore
unrelated, to those specified in the certificate of registration of the well-known mark is precluded from using the same on the
entirely unrelated goods or services, subject to the following requisites, to wit:

1. The mark is well-known internationally and in the Philippines.

2. The use of the well-known mark on the entirely unrelated goods or services would indicate a connection between such
unrelated goods or services and those goods or services specified in the certificate of registration in the well known mark. This
requirement refers to the likelihood of confusion of origin or business or some business connection or relationship between
the registrant and the user of the mark.
3. The interests of the owner of the well-known mark are likely to be damaged. For instance, if the registrant will be precluded
from expanding its business to those unrelated good or services, or if the interests of the registrant of the well-known mark
will be damaged because of the inferior quality of the good or services of the user.

*Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to respondents’ business
involving watches, clocks, bracelets, etc. However, the Court cannot yet resolve the merits of the present controversy
considering that the requisites for the application of Section 123.1(f), which constitute the kernel issue at bar, clearly
require determination facts of which need to be resolved at the trial court.

11. Societe Des Produits Nestle v. CA, 356 SCRA 207 (2001)

https://lawphil.net/judjuris/juri2001/apr2001/gr_112012_2001.html

Facts:

Respondent CFC Corporation filed an application for the registration of the trademark FLAVOR MASTER for instant coffee.
Petitioners, a Swiss company and a domestic corporation licensee of Societe, opposed on the ground that it is confusingly
similar to its trademark for coffee and coffee extracts: MASTER ROAST and MASTER BLEND. Petitioners contend that the
dominant word MASTER is present in the 3 trademarks. Respondent CFC argued that the word MASTER cannot be exclusively
appropriated being a descriptive or generic term. BPTTT denied CFC’s application. CA held otherwise.
Issue:

Whether or not the word MASTER is descriptive or generic term incapable of exclusive appropriation.

Ruling: NO.

The word “MASTER” is neither a generic nor a descriptive term. As such, said term cannot be invalidated as a trademark and,
therefore, may be legally protected. Generic terms are those which constitute “the common descriptive name of an article or
substance,” or comprise the “genus of which the particular product is a species,” or are “commonly used as the name or
description of a kind of goods,” or “imply reference to every member of a genus and the exclusion of individuating characters,”
or “refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a
particular product,” and are not legally protectable. On the other hand, a term is descriptive and therefore invalid as a
trademark if, as understood in its normal and natural sense, it “forthwith conveys the characteristics, functions, qualities or
ingredients of a product to one who has never seen it and does not know what it is,” or “if it forthwith conveys an immediate
idea of the ingredients, qualities or characteristics of the goods,” or if it clearly denotes what goods or services are provided in
such a way that the consumer does not have to exercise powers of perception or imagination.

Rather, the term “MASTER” is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those
which, in the phraseology of one court, require “imagination, thought and perception to reach a conclusion as to the nature of
the goods.” Such terms, “which subtly connote something about the product,” are eligible for protection in the absence of
secondary meaning. While suggestive marks are capable of shedding “some light” upon certain characteristics of the goods or
services in dispute, they nevertheless involve “an element of incongruity,” “figurativeness,” or ” imaginative effort on the part
of the observer.” The term “MASTER”, therefore, has acquired a certain connotation to mean the coffee products MASTER
ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term “MASTER” in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.

////

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

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

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

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

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

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

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

The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks; the holistic test
mandates the entirety of the marks in question must be considered in determining confusing similarity
 The Dominancy test should be applied as it relies not only on the visual but also on the aural and connotative comparisons and
overall impressions between the two TMs. 
·         The word MASTER is the dominant feature which is neither a generic nor a descriptive term. As such said term cannot be
invalidated as a trademark and therefore, may be protected.
·         Generic terms are those which constitute the common descriptive name of an article or substance and are not legally
protectable.
·         The term MASTER is a suggestive which require imagination, thought, and perception to reach a conclusion as to the nature
of the goods.

The term MASTER has acquired a certain connotation to mean the coffee products MASTER ROAST and Master Blend
produced by NESTLE. AS SUCH the use of CFC of the term “MASTER”is likely to cause confusion or mistake.

///

 Facts: Respondent CFC Corporation filed an application for the registration of the trademark FLAVOR MASTER for instant
coffee. Petitioners, a Swiss company and a domestic corporation licensee of Societe, opposed on the ground that it is
confusingly similar to its trademark for coffee and coffee extracts: MASTER ROAST and MASTER BLEND. Petitioners contend
that the dominant word MASTER is present in the 3 trademarks. Respondent CFC argued that the word MASTER cannot be
exclusively appropriated being a descriptive or generic term. BPTTT denied CFC’s application. CA held otherwise.

Issue: Whether or not the word MASTER is descriptive or generic term incapable of exclusive appropriation.

Ruling: NO. The word "MASTER" is neither a generic nor a descriptive term. As such, said term cannot be invalidated as a
trademark and, therefore, may be legally protected. Generic terms are those which constitute "the common descriptive name
of an article or substance," or comprise the "genus of which the particular product is a species," or are "commonly used as the
name or description of a kind of goods," or "imply reference to every member of a genus and the exclusion of individuating
characters," or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic
characteristics of a particular product," and are not legally protectable. On the other hand, a term is descriptive and therefore
invalid as a trademark if, as understood in its normal and natural sense, it "forthwith conveys the characteristics, functions,
qualities or ingredients of a product to one who has never seen it and does not know what it is," or "if it forthwith conveys an
immediate idea of the ingredients, qualities or characteristics of the goods," or if it clearly denotes what goods or services are
provided in such a way that the consumer does not have to exercise powers of perception or imagination. Rather, the term
"MASTER" is a suggestive term brought about by the advertising scheme of Nestle. Suggestive terms are those which, in the
phraseology of one court, require "imagination, thought and perception to reach a conclusion as to the nature of the goods."
Such terms, "which subtly connote something about the product," are eligible for protection in the absence of secondary
meaning. While suggestive marks are capable of shedding "some light" upon certain characteristics of the goods or services in
dispute, they nevertheless involve "an element of incongruity," "figurativeness," or " imaginative effort on the part of the
observer." The term "MASTER", therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and
MASTER BLEND produced by Nestle. As such, the use by CFC of the term "MASTER" in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.

12. Levi Strauss v. Clinton Apparelle, G.R. No. 138900, September 20, 2005

https://lawphil.net/judjuris/juri2005/sep2005/gr_138900_2005.html

Levi Strauss & Co. v. Clinton Apparelle, GR No. 138900 September 20, 2005
FACTS:

The Complaint alleged that LS & Co., a foreign corporation duly organized and existing under the laws of the State of Delaware,
USA and engaged in the apparel business, is the owner by prior adoption and use since 1986 of the internationally famous
“Dockers and Design” trademark. This ownership is evidenced by its valid and existing registrations in various member
countries if Paris Convention. In the Philippines, it has a Certificate of Registration No. 46619 in the Principal Register for use
of said trademark on pants, shirts, blouses, skirts, shorts, sweatshirts and jackets under Class 25.

The “Dockers and Design” trademark was first used in the Philippines in or about May 1988, by LSPI, a domestic corporation
engaged in the manufacture, sale and distribution of various products bearing trademarks owned by LS & Co. To date, LSPI
continues to manufacture and sell Dockers Pants with the “Dockers and Design” Trademark. LS& Co and LSPI alleged that they
discovered the presence in the local market of jeans under the brand name “Paddocks” using a device which is substantially, if
not exactly, similar to the “Dockers and Design” trademark owned and registered in their name, without their consent. Based
on their belied, they added Clinton Apparelle manufactured and continues to manufacture such “Paddocks” jeans and other
apparel. However, since LS & Co. and LSPI are unsure if both or just one of impleaded defendants is behind the manufacture
and sale of the “Paddocks” jeans complained of, they brought this suit under Sec. 13 Rule 3 of the 1997 Rules of Court. The
evidence considered by the trial court in granting injunctive relief were as follows: (1) a certified true copy of the certificate of
trademark registration for “Dockers and Design” (2) a pair of DOCKERS pants bearing the trademark (3) a pair of “Paddocks”
pants bearing the respondents assailed logo; (4) the trends MBL Survey Report purportedly proving that there was confusing
similarity between two marks; (5) the affidavit of one Bernabe Alajar which recounted petitioners’ prior adoption, use and
registration of the “Dockers and Design” Trademark and (6) the affidavit of Mercedes Abad of Trends MBL Inc which detailed
the methodology and procedure used in their survey and results thereof. The trial court issued a writ of preliminary
injunction, which prompted Clinton Apparelle to file a petition for certiorari, prohibition and mandamus with the Court of
Appeals. Whereby the Appellate Court granted the petition of Clinton Apparelle’s petition; holding that the trial court did not
follow the procedure required by law. Thus, holding the issuance of the writ of preliminary injunction is questionable after
petitioner’s failure to sufficiently establish its material and substantial right to have the writ issued. Moreover, the Court of
Appeals strongly believes that the implementation of the questions writ would effectively shut down respondent’s shut down.
Hence this petition.

ISSUE:

whether or not the single registration of the trademark “Dockers and Design” confers on the owner the right to prevent the use
of a fraction thereof.

HELD:

Given the single registration of the trademark “Dockers and Design” and considering that respondent only uses the assailed
device but a different word mark, the right to prevent the latter from using the challenged “Paddocks” device is far from clear.
Stated otherwise, it is not evident whether the single registration of the trademark “Dockers and Design” confers on the owner
the right to prevent the use of a fraction thereof in the course of trade. It is also unclear whether the use without the owner’s
consent of a portion of a trademark registered in its entirety constitutes material or substantial invasion of the owner’s right. It
is likewise not settled whether the wing-shaped logo, as opposed to the word mark, is the dominant or central feature of
petitioners’ trademark—the feature that prevails or is retained in the minds of the public an imitation of which creates the
likelihood of deceiving the public and constitutes trademark infringement. In sum, there are vital matters which have yet and
may only be established through a full-blown trial. From the above discussion, we find that petitioners’ right to injunctive
relief has not been clearly and unmistakably demonstrated. The right has yet to be determined. Petitioners also failed to show
proof that there is material and