Professional Documents
Culture Documents
Assignment 4 IPL
Assignment 4 IPL
ALHAMBRA
CIGAR & CIGARETTE MANUFACTURING COMPANY
FACTS:
Compañia General filed an action against Alhambra for the violation
of the tradename “Isabela” and for unfair competition wherein the trial court
found that Compana General was entitled to the exclusive use of “Isabela”
as a trademark with cigarettes. On appeal, said motion was denied and
likewise received the same decision with the SC.
Inspite the injunction, the defendant continued to use the said name.
Thereafter, they placed on their cigarettes the words “Alhambra Isabela,"
simply changing the word "Isabelas" to "Isabela." It also placed on the back
of the packages the words "Blue Ribbon Cigarillos" as a distinctive name or
brand for its cigarettes.
ISSUE:
WON the plaintiff has the exclusive right over the said name
RULING:
Yes. It clearly prohibits the defendant from the use of the word
"Isabelas" or any word or name confusingly similar thereto as a
distinguishing brand or name of its cigarettes. It would be difficult to make
language clearer. That it is not so indefinite and vague that the defendant
was misled with respect to the acts with it prohibited is demonstrated by
defendant itself. It made no effort to change the word "Isabelas" which had
been the whole subject matter of the litigation and which was the word
expressly set out in the injunction; but, rather, it continued to use the same
word, reducing it from the plural to the singular as the only change. It did
not relocate the word on its cigarettes or change its form or size. It left it in
precisely the form, shape and style and in precisely the place as before.
With all these, the defendant will not be permitted to say that it sought
to use a different word or phrase and that by reason of the indefiniteness of
the injunction it fell into error, although in good faith it attempted to obey its
terms. It continued to use the prohibited word in precisely the manner prior
to the injunction; and it cannot be said that it was misled by the vagueness
of the injunction, for, however vague the injunction may have been, the
defendant could not have been ignorant of the fact that it had been
prohibited from using the word "Isabelas" the word that had been the very
center of the controversy in which the injunction was issued.
G.R. No. 114508 November 19, 1999
PRIBHDAS J. MIRPURI, vs. COURT OF APPEALS, DIRECTOR OF
PATENTS and the BARBIZON CORPORATION
PUNO, J.:
FACTS:
Escobar, the predecessor-in-interest of petitioner Mirpuri, filed an
application with the Bureau of Patents for the registration of the trademark
"Barbizon" for use in brassieres and ladies undergarments.
Escobar alleged that she had been manufacturing and selling these
products under the firm name "L & BM Commercial" since March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and
doing business under the laws of New York, U.S.A., opposed the
application, claiming among others, that the trademark applied for is too
similar and confusing to the one that petitioner has and is still using.
(docketed as IPC No. 686). The Director of Patents rendered
judgment giving due course to Escobar’s application.
Escobar later assigned all her rights and interest over the trademark to
petitioner Mirpuri who, under his firm name then, the "Bonito Enterprises,"
was the sole and exclusive distributor of Escobar's "Barbizon" products.
In 1979, however, Escobar failed to file with the Bureau of Patents the
Affidavit of Use of the trademark required under Section 12 of R.A. 166.
Due to this failure, the Bureau of Patents cancelled Escobar's certificate of
registration.
Escobar reapplied for registration of the cancelled trademark. Mirpuri filed
his own application for registration of Escobar's trademark. Escobar later
assigned her application to herein petitioner and this application was
opposed by private respondent. (docketed as IPC No. 2049) Petitioner
raised the defense of res judicata.
Escobar assigned to petitioner the use of the business name "Barbizon
International." Petitioner registered the name with the Department of Trade
and Industry (DTI) for which a certificate of registration was issued in 1987.
Private respondent filed before the Office of Legal Affairs of the DTI a
petition for cancellation of petitioner's business name. DTI, Office of Legal
Affairs, cancelled petitioner's certificate of registration, and declared private
respondent the owner and prior user of the business name "Barbizon
International."
Director rendered a decision declaring private respondent's opposition
barred by res judicata and giving due course to petitioner's application for
registration. CA reversed the Director’s decision that case was barred and
ordered that the case be remanded to the Bureau of Patents for further
proceedings.
ISSUE :
Whether or not the Paris Convention affords protection to a foreign
corporation against a Philippine applicant for the registration of a similar
trademark.
RULING :
The Court held in the AFFIRMATIVE.
RA 8293 defines trademark as any visible sign capable of distinguishing
goods. The Paris Convention is a multilateral treaty that seeks to protect
industrial property consisting of patents, utility models, industrial designs,
trademarks, service marks, trade names and indications of source or
appellations of origin, and at the same time aims to repress unfair
competition.
It is essentially a compact among various countries which, as members of
the Union, have pledged to accord to citizens of the other member
countries trademark and other rights comparable to those accorded their
own citizens by their domestic laws for an effective protection against unfair
competition. Both the Philippines and the United States of America, are
signatories to the Convention. In short, foreign nationals are to be given the
same treatment in each of the member countries as that country makes
available to its own citizens. Nationals of the various member nations are
thus assured of a certain minimum of international protection of their
industrial property.
Private respondent anchors its cause of action on the first paragraph of
Article 6 of the Paris Convention, said Article governing protection of well-
known trademarks.
Art. 6 is a self-executing provision and does not require legislative
enactment to give it effect in the member country. It may be applied directly
by the tribunals and officials of each member country by the mere
publication or proclamation of the Convention, after its ratification according
to the public law of each state and the order for its execution.
The essential requirement under Article 6 is that the trademark to be
protected must be "well-known" in the country where protection is sought.
The power to determine whether a trademark is well-known lies in the
"competent authority of the country of registration or use." This competent
authority would be either the registering authority if it has the power to
decide this, or the courts of the country in question if the issue comes
before a court.
Pursuant to Article 6, then Minister Villafuerte of the Ministry of Trade
issued a Memorandum instructing Director of Patents to reject all pending
applications for Philippine registration of signature and other world-famous
trademarks by applicants other than their original owners or users,
enumerating several internationally-known trademarks and ordered the
Director of Patents to require Philippine registrants of such marks to
surrender their certificates of registration.
After, Minister Ongpin issued Memorandum which did not enumerate well-
known trademarks but laid down guidelines for the Director of Patents to
observe in determining whether a trademark is entitled to protection as a
well-known mark in the Philippines under Article 6 of the Paris Convention.
All pending applications for registration of world-famous trademarks by
persons other than their original owners were to be rejected forthwith.
The Supreme Court in the 1984 landmark case of La Chemise Lacoste,
S.A. v. Fernandez ruled therein that under the provisions of Article 6bis of
the Paris Convention, the Minister of Trade and Industry was the
"competent authority" to determine whether a trademark is well-known in
this country.
The Villafuerte Memorandum was issued in 1980. In the case at bar, the
first inter partes case, was filed in 1970, before the Villafuerte
Memorandum but 5 years after the effectivity of the Paris Convention.
Private respondent, however, did not cite the protection of Article 6bis,
neither did it mention the Paris Convention at all. It was only in 1981 when
second case was instituted that the Paris Convention and the Villafuerte
Memorandum, and, during the pendency of the case, the 1983 Ongpin
Memorandum were invoked by private respondent.
G.R. No. L-28499 September 30, 1977
Facts:
1. Petitioner Victorias Milling is the registered owner of the trademark
“VICTORIAS” with diamond design and is engaged in the
manufacture and sale of refined granulated sugar.
2. Respondent Ong Su is engaged in the repacking and sale of refine
sugar and is the registered owner of the trademark "VALENTINE".
3. Petitioner filed a petition to cancel respondent’s registration of
“VALENTINE”.
4. The Director of Patents denied the petition to cancel registration
because common geometric shapes such as diamonds ordinarily
are not regarded as indicia of origin for goods to which the
remarks are applied unless they have acquired a secondary
meaning.
5. Hence, this petition
Issue:
WON the diamond design in petitioner’s trademark has acquired
secondary meaning as to entitle the latter to exclusive use thereof.
Held:
No. The contention of petitioner that the diamond design in its
trademark is an index of origin has no merit.
The petitioner has not shown that the design portion of the mark has
been so used that purchasers recognize the design, standing alone, as
indicating goods coming from the registrant.
As correctly stated by the Director of Patents, common geometric
shapes such as diamonds ordinarily are not regarded as indicia of origin for
goods to which the marks are applied unless they have acquired a
secondary meaning. And there is no evidence that the diamond design in
the trademark of the petitioner has acquired a secondary meaning with
respect to its sugar business. The word “Victorias” is what identifies the
sugar contained in the bag as the product of the petitioner. Indeed, the
petitioner has advertised its sugar in bags marked “Victorias” with oval,
hexagon and other designs.
In addition, the evidence is that respondent Ong Su has been using
his trademark since prior to the last World War and he obtained the
registration thereof on June 20, 1961. Vijandre declared that the petitioner
started to use its trademark only in 1947. Said trademark was registered on
November 9, 1961. It cannot be said, therefore, that the respondent ONG
Su imitated the trademark of the petitioner.
It seems clear that the words “Valentine” and “Victorias” and the
names and places of business of Victorias Milling Company, Inc. and ONG
Su are the dominant features of the trademarks in question but the
petitioner has not established such a substantial similarity between the two
trademarks in question as to warrant the cancellation of the trademark
‘Valentine’ of the respondent ONG Su.
Ana L. Ang, petitioner, vs. Toribio Teodoro, respondent.
FACTS:
Toribio Teodoro has continuously used "Ang Tibay," both as a trademark
and as a tradename, in the manufacture and sale of slippers, shoes, and
indoor baseballs since 1910. He formally registered it as a trademark on
September 29, 1915, and as a tradename on January 3, 1933.
Teodoro, then an unknown young man making slippers with his own hands
with only P210 as capital but now a prominent business magnate and
manufacturer with a large factory operated with modern machinery by a
great number of employees, has steadily grown his business. His gross
sales from 1918 to 1938 aggregated P8M. His expenses for advertisement
from 1919 to 1938 aggregated P200k.
Ana L. Ang registered the same trademark "Ang Tibay" for pants and shirts
on April 11, 1932 and established a factory for the manufacture of said
articles in the year 1937. In the following year, her gross sales amounted to
P400k. Her advertising expenses were not shown.
Teodoro alleges that Ang had not spent a single centavo for advertising
“Ang Tibay”. It was only when she advertised her newly built factory that it
came to his attention, thus prompting Teodoro to file this same suit.
The trial court absolved Ang of any wrong-doing, on the ground that: that
the two trade-marks are dissimilar and are used on different and non-
competing goods; that there had been no exclusive use of the trademark 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 CA reversed the trial court, holding that by uninterrupted and exclusive
use since 1910 in the manufacture of slippers and shoes, respondent's
trademark has acquired a secondary meaning; and that the goods or
articles on which the two trademarks are used are similar or belong to the
same class.
ISSUE:
Whether or not the mark “Ang Tibay”had acquired secondary meaning
HELD:
AFFIRMATIVE. The function of a trademark is to point distinctively, either
by its own meaning or by association, to the origin or ownership of the
wares to which it is applied. "Ang Tibay," as used by the Teodoro to
designate his wares, had exactly performed that function for twenty-two
years before Ang adopted it as a trademark in her own business. "Ang
Tibay" shoes and slippers are, by association, known throughout the
Philippines as products of the "Ang Tibay" factory owned and operated by
the Teodoro. Even if "Ang Tibay," therefore, were not capable of exclusive
appropriation as a trademark, the application of the doctrine of secondary
meaning could nevertheless be fully sustained because, in any event, by
Teodoro's long and exclusive use of said phrase with reference to his
products and his business, it has acquired a proprietary connotation.
This doctrine is to the effect that 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.
ONG AI GUI, vs. the Director of the Philippines Patent Office, E. I.
DUPONT DE NEMOURS AND COMPANY
FACTS:
Ong Ai Gui filed an application with the Director of Patents for the
registration of the trade-name: "20th Century Nylon Shirts Factory." The
business is described as "General merchandise dealing principally in
textiles, haberdasheries; also operating as manufacturer of shirts, pants
and other men's and woman's wears." The examiner in a report held that
the words "shirts factory" are not registrable; so the applicant made a
disclaimer of said words (shirts factory) inserting a statement to that effect
in his original application. The Director ordered the publication of the trade-
name in the official Gazette.
But while he dismissed the opposition, the Director ruled that the
application must be disapproved unless the word "nylon" is also disclaimed.
"Nylon" is merely descriptive of the business of shirt-making if the shirts are
made of nylon. "Nylon" can never become distinctive, can never acquire
secondary meaning, because it is a generic term, like cotton, silk, linen, or
ramie. Just as no length of use and no amount of advertising will make
"cotton," "silk," "linen," or "ramie," distinctive of shirts or of the business of
making them, so no length of use and no amount of advertising will make
"nylon" distinctive of shirts or of the business of manufacturing them."
Whether or not the word ‘nylon’ being generic or descriptive can acquire a
secondary meaning to be registrable.
RULING:
xxx Although a word may be descriptive and not subject to exclusive use as
a trademark, it may properly become the subject of a trademark by
combination with another word or term which is nondescriptive, although no
exclusive right to then descriptive word or term is created . . . (52 Am. Jur.
553.)
LYCEUM OF THE PHILIPPINES, INC. 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.,
FELICIANO, J.:
FACTS:
Petitioner is an educational institution registered with the SEC. When it
registered on the 21st of September 1950, it used the name Lyceum of the
Philippines, Inc.
On 24th of February 1984, petitioner instituted proceedings before the
SEC to compel the private respondents, also educational institutions, to
delete the word “Lyceum” from their corporate names and to permanently
enjoin them from using the term “Lyceum” as part of their name. This case
stems from when petitioner commenced before the SEC a proceeding
against the Lyceum of Baguio. The Associate Commissioner Julio Sulit
held that the corporate names of the petitioner and the Lyceum of Baguio
to be substantially identical and that petitioner had already registered as a
corporation before the Lyceum of Baguio. The Supreme Court denied the
Petition for Review for lack of merit.
Petitioner wrote all the educational institutions it could find using the
term “Lyceum” as part of their corporate names. Petitioner then instituted
with the SEC to enforce petitioner’s claim as to its proprietary right to the
word “Lyceum”. The SEC hearing officer rendered a decision which
sustained petitioner’s claim.
On appeal, the SEC En Banc reversed and set aside the decision of
the hearing officer. On appeal to the CA, the appellate court affirmed the
questioned decisions. A motion for reconsideration was denied.
ISSUE: Whether the CA erred in holding that the word “Lyceum” has not
acquired a secondary meaning in favor of petitioner?
HELD: No, it did not. In Philippine Nut Industry, Inc. v. Standard Brands,
Inc., the doctrine of secondary meaning was elaborated in the following
terms:
"x x x 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."
As written by the Court of Appeals, and agreed to by the Supreme
Court: “No evidence was ever presented in the hearing before the
Commission which suf iciently 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.
xxx
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.”
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."
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 and 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.
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.
Bata Industries, Ltd. vs. Court of Appeals
FACTS
Olympian Rubber Products Co. Inc sought registration of the mark BATA
for casual rubber shoes alleging that it has used said mark since July 1970.
The registration was opposed by petitioner, a Canadian corporation who
alleged that it owns the mark.
Olympian argued that petitioner does not have liscense to do business in
the Philippines and that it is not selling any footwear under the trademark
BATA in the Philippines. However evidence showed that that Bata shoes
made by Gerbec and Hrdina of Czechoslovakia were sold inthe Philippines
prior to World War II. Some shoes made by Bata ofCanada were perhaps
also sold in the Philip-pines until 1948.However, the trademark BATA was
never registered in the Philippines by any foreign entity.
The Philippine Patent Office ruled in favor of Olympian to use and register
in its favor the disputed trademark. It also ruled that it is Olympian who
created enormous goodwill of BATA in the Philippines through
advertisements. Thus, PPO ordered for the registration of the mark in favor
of Olympian.
ISSUE:
WHETHER OR NOT BATA TRADEMARK CANNOT BE REGISTERED
DUE TO GOODWILL GENERATED BY HRDINA PRIOR WWII.
RULING
NO.
The court ruled that any slight goodwill generated by the Czechoslovakian
product during the Commonwealth years was completely abandoned and
lost in the more than 35 years that have passed since the liberation of
Manila from the Japanese troops. Petitioner was never a user of the
trademark BATA either before or after the war, that it is not the successor-
in-interest of Gerbec and Hrdina who were not its representatives or
agents, and could not have passed any rights to the petitioner, that there
was no privity of interest between the Czechoslovakian owner and the
petitioner and that the Czechoslovakian trademark has been abandoned in
Czechoslovakia.
Additionally, even if petitioner is selling shoes abroad it has no goodwill that
would be damaged by the registration of the same trademark in the
Philippines.
PRIBHDAS J. MIRPURI, petitioner, vs. COURT OF APPEALS, DIRECTOR
OF PATENTS and the BARBIZON CORPORATION, respondents.
Facts:
one Lolita Escobar, the predecessor-in-interest of petitioner Mirpuri,
filed an application with the Bureau of Patents for the registration of the
trademark “Barbizon” for use in brassieres and ladies undergarments.
Escobar alleged that she had been manufacturing and selling these
products under the firm name “L & BM Commercial” since March 3, 1970.
Private respondent Barbizon Corporation, a corporation organized and
doing business under the laws of New York, U.S.A., however, opposed the
application. It claims that:
6. The mark BARBIZON of respondent-applicant is confusingly
similar to the trademark BARBIZON
7. its business reputation and goodwill will suffer great and
irreparable injury.
8. respondent-applicant’s use of the said mark BARBIZON which
resembles the trademark used and owned by opposer, constitutes
an unlawful appropriation of a mark previously used in the
Philippines
Director of Patents rendered judgment dismissing the opposition
and giving due course to Escobar’s(predecessor-in-interest of
petitioner) application who later assigned all her rights and interest over
the trademark to petitioner Mirpuri but the Bureau of Patents cancelled
Escobar’s certificate of registration because Escobar failed to file with the
Bureau of Patents the Affidavit of Use of the trademark under the Philippine
trademark law.
Upon reapplication, Private respondent again opposed the attempt.
Alleging that:
9. he Opposer has adopted the trademark BARBIZON (word),
sometime in June 1933 and has then used it on various kinds of
wearing apparel.
10. On March 15, 1977, Opposer secured from the United States
Patent Office a registration of the said mark
11. Opposer has not abandoned the use of the said trademarks. In
fact, Opposer, through a wholly-owned Philippine subsidiary, the
Philippine Lingerie Corporation, has been manufacturing the
goods covered by said registrations and selling them to various
countries, thereby earning valuable foreign exchange for the
country
12. The Opposer’s goods bearing the trademark BARBIZON have
been used in many countries, including the Philippines
13. The trademark BARBIZON was fraudulently registered in the
Philippines by one Lolita R. Escobar
14. Opposer’s BARBIZON as well as its BARBIZON and Bee
Design and BARBIZON and Representation of a Woman
trademarks qualify as well-known trademarks entitled to
protection under Article 6bis of the Convention of Paris for
the Protection of Industrial Property
15. The trademark applied for by respondent applicant is identical
to Opposer’s BARBIZON trademark
Respondent raised the defense of res judicata. In IPC No. 2049, the
evidence of both parties were received by the Director of Patents.
On June 18, 1992, the Director rendered a decision declaring
private respondent’s opposition barred by res judicata and giving
due course to petitioner’s application for registration.
The CA Remanded the case back to the bureau of patents
Issue:
principal issue in this case is whether or not the treaty in question
affords protection to a foreign corporation against a Philippine applicant
for the registration of a similar trademark
Ruling:
The Convention of Paris for the Protection of Industrial
Property, otherwise known as the Paris Convention, is a multilateral
treaty that seeks to protect industrial property consisting of patents,
utility models, industrial designs, trademarks, service marks, trade
names and indications of source or appellations of origin, and at the
same time aims to repress unfair competition. The Convention is
essentially a compact among various countries which, as members of
the Union, have pledged to accord to citizens of the other member
countries trademark and other rights comparable to those accorded their
own citizens by their domestic laws for an effective protection against
unfair competition. In short, foreign nationals are to be given the same
treatment in each of the member countries as that country makes
available to its own citizens. Nationals of the various member nations
are thus assured of a certain minimum of international protection of their
industrial property.
This Article governs protection of well-known trademarks. Under the
first paragraph, each country of the Union bound itself to undertake to
refuse or cancel the registration, and prohibit the use of a trademark
which is a reproduction, imitation or translation, or any essential part of
which trademark constitutes a reproduction, liable to create confusion, of
a mark considered by the competent authority of the country where
protection is sought, to be wellknown in the country as being already the
mark of a person entitled to the benefits of the Convention, and used for
identical or similar goods.
The essential requirement under Article 6bis is that the
trademark to be protected must be “well-known” in the country
where protection is sought. The power to determine whether a
trademark is well-known lies in the “competent authority of the
country of registration or use.” This competent authority would be
either the registering authority if it has the power to decide this, or
the courts of the country in question if the issue comes before a
court.
The Philippines and the United States of America have ceded to the
WTO Agreement. This Agreement has revolutionized international
business and economic relations among states, and has propelled the
world towards trade liberalization and economic globalization.
Protectionism and isolationism belong to the past. Trade is no longer
confined to a bilateral system. There is now “a new era of global
economic cooperation, reflecting the widespread desire to operate in a
fairer and more open multilateral trading system.” Conformably, the
State must reaffirm its commitment to the global community and take
part in evolving a new international economic order at the dawn of the
new millennium
A major proportion of international trade depends on the protection of
intellectual property rights. Since the late 1970’s, the unauthorized
counterfeiting of industrial property and trademarked products has had a
considerable adverse impact on domestic and international trade
revenues. The TRIPs Agreement seeks to grant adequate protection of
intellectual property rights by creating a favorable economic environment
to encourage the inflow of foreign investments, and strengthening the
multilateral trading system to bring about economic, cultural and
technological independence.
G.R. No. L-48226 December 14, 1942
FACTS:
ISSUE:
RULING:
FACTS:
On January 15, 1985, private respondent NSR Rubber Corporation filed an
application for registration of the mark CANON for sandals in the Bureau of
Patents, Trademarks, and Technology Transfer (BPTTT). A Verified Notice
of Opposition was filed by petitioner, a foreign corporation duly organized
and existing under the laws of Japan, alleging that it will be damaged by
the registration of the trademark CANON in the name of private
respondent.
Petitioner moved to declare private respondent in default for its failure to
file its answer. The BPTTT then declared private respondent in default and
allowed petitioner to present its evidence ex-parte.
Petitioner presented its certificates of registration for the mark CANON in
various countries covering goods belonging to class 2 (paints, chemical
products, toner, and dye stuff). Petitioner also submitted in evidence its
Philippine Trademark Registration No. 39398, showing its ownership over
the trademark CANON also under class 2.
The BPTTT issued its decision dismissing the opposition of petitioner and
giving due course to private respondent's application for the registration.
Petitioner appealed the decision of the BPTTT with public respondent Court
of Appeals that eventually affirmed the decision of BPTTT.
The BPTTT and the CA share the opinion that the trademark "CANON" as
used by CANON for its paints, chemical products, toner, and dyestuff, can
be used by NSR for its sandals because the products of these two parties
are dissimilar.
CANON protests the appropriation of the mark CANON by NSR on the
ground that : a) they used and continues to use the trademark CANON on
its wide range of goods worldwide; b) The corporate name of CANON is
also used as its trademark on diverse goods including footwear and other
related products like shoe polisher and polishing agents; c) it has branched
out in its business including footwear which covers sandals; d) CANON
would be precluded from using the mark CANON for various kinds of
footwear, when in fact it has earlier used said mark for said goods; e) the
public could presume that CANON would also produce a wide variety of
footwear
considering the diversity of its products marketed worldwide; and f) the
public might be misled into thinking that there is some supposed
connection between private respondent's goods and petitioner.
ISSUE:
Whether or not CANON KABUSHIKI’s rights can validly preclude the
registration of trademark of CANON for NSR’s sandals.
HELD:
NEGATIVE. 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.
Facts:
Ruling:
AFFIRMATIVE.
In the case at bar, other than the fact that both Nestle’s and
CFC’s products are inexpensive and common household items,
the similarity ends there. What is being questioned here is the use
by CFC of the trademark MASTER. In view of the difficulty of applying
jurisprudential precedents to trademark cases due to the peculiarity of
each case, judicial fora should not readily apply a certain test or
standard just because of seeming similarities. As this Court has
pointed above, there could be more telling differences than
similarities as to make a jurisprudential precedent inapplicable.
The Court of Appeals held that the test to be applied should be the
totality or holistic test reasoning, since what is of paramount
consideration is the ordinary purchaser who is, in general,
undiscerningly rash in buying the more common and less expensive
household products like coffee, and is therefore less inclined to
closely examine specific details of similarities and dissimilarities
between competing products.
This Court cannot agree with the above reasoning. If the ordinary
purchaser is "undiscerningly rash" in buying such common and
inexpensive household products as instant coffee, and would
therefore be "less inclined to closely examine specific details of
similarities and dissimilarities" between the two competing products,
then it would be less likely for the ordinary purchaser to notice that
CFC’s trademark FLAVOR MASTER carries the colors orange and
mocha while that of Nestle’s uses red and brown. The application of
the totality or holistic test is improper since the ordinary purchaser
would not be inclined to notice the specific features, similarities or
dissimilarities, considering that the product is an inexpensive and
common household item.