Name: Samantha Marie Detoya

CIPL Case Digests

PART III: THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES
(SECS. 121-170)

Maripuri vs. CA, G.R. No.114508, 19 November 1999

Facts:

In 1970, Escobar filed an application with the Bureau of Patents for the registration
of the trademark “Barbizon” for use in horsiers and ladies undergarments (IPC No. 686).
Private respondent reported Barbizon Corporation, a corporation organized and doing
business under the laws of New York, USA, opposed the application. It was alleged that
its trademark is confusingly similar with that of Escobar and that the registration of the
said trademark will cause damage to its business reputation and goodwill. In 1974, the
Director of Patents gave due course to the application. Escobar later assigned all his
rights and interest over the trademark to petitioner. In 1979, Escobar failed to file with the
Bureau the affidavit of use of the trademark required under the Philippine Trademark Law.
Due to this failure, the Bureau cancelled Escobar’s certificate of registration. In 1981,
Escobar and petitioner separately filed this application for registration of the same
trademark. (IPC 2049). Private respondent opposed again. This time it alleged (1) that
the said trademark was registered with the US Patent Office; (2) that it is entitled to
protection as well-known mark under Article 6 bis of the Paris Convention, EO 913 and
the two Memoranda of the Minister of Trade and Industry and (3) that its use on the same
class of goods amounts to a violation of the Trademark Law and Art. 189 of the RPC.
Petitioner raised the defense of Res Judicata.

Issue:
Whether or not the treaty (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. 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.

Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, 8 September

2020

Facts:

Natrapharm, Inc, filed with the RTC a Complaint against Zuneca Phrmcutical, Inc.
for Injuction, Trademark Infringement, Damages, and Destruction, alleging that ZUneca’s
“ZYNAPS” is confusingly similar to its registered “ZYNAPSE” and the resulting likelihood
of confusion is dangerous because the marks cover medical drugs intended for different
types of illnesses.

In its answer, Zuneca claims that as the prior user, following Berris Agricultural Co
v Abdayang (Berris) and EY Industrial Sales, Inc v ShenDar (EY), it had already owned
“Zynaps” mark prior to NAtrapharm’s registration of its confusingly similar mark, thus, its
rights prevail over the rights of Natrapharm.

Issue:
Whether or not Zuneca is liable for trademark infringement.

Ruling:

NO. While Natrapharm s the owner of the “ZYNAPSE” mark, this does not however
automatically mean that its complaint against Zuneca should be granted. This is because
Sec 159.1 of the IP Code clearly contemplates that a prior user in good faith may continue
to use its mark even after the registration of the mark even after the registration of the
mark by the first-to-file registrant in good faith, subject to the condition that any transfer
or assignment of the mark by the prior user in good faith should be made together with
the enterprise or business or with that part of his enterprise or business in which the mark
is used. In any event, the application of Sec 159.1 of the IP Code necessarily results in
at least two entities -- the unregistered prior user in good faith or their assignee or
transferee, on one hand,; and the first-to-file registrant in good faith on the other --
concurrently using identical or confusingly similar marks in the marker, even if there is a
likelihood of confusion. While this situation may not be ideal, the Court is constrained to
apply Section 159.1 in the IP Code as written.

Fredco Manufacturing Corporation vs. Harvard University, G.R. No. 185917, 1

June 2011

Facts:

On 10 August 2005, petitioner Fredco Manufacturing Corporation (Fredco), a

corporation organized and existing under the laws of the Philippines, filed a Petition for
Cancellation of Registration No. 56561 before the Bureau of Legal Affairs of the
Intellectual Property Office (IPO) against respondents President and Fellows of Harvard
College (Harvard University), a corporation organized and existing under the laws of
Massachusetts, United States of America.

Fredco's Contention: That Registration No. 56561 was issued to Harvard

University on 25 November 1993 for the mark Harvard Veritas Shield Symbol for decals,
tote bags, serving trays, sweatshirts, t-shirts, hats and flying discs and that the mark
Harvard for t-shirts, polo shirts, sandos, briefs, jackets and slacks was first used in the
Philippines on 2 January 1982 by New York Garments Manufacturing & Export Co.,
Inc.,Fredco's predecessor-in-interest.

Harvard's Contention: That it is the lawful owner of the name and mark Harvard
in numerous countries worldwide, including the Philippines. The name and mark Harvard
was adopted in 1639 as the name of Harvard College of Cambridge, Massachusetts,
U.S.A. The name and mark Harvard was allegedly used in commerce as early as 1872.
Harvard University is over 350 years old and is a highly regarded institution of higher
learning in the United States and throughout the world. Harvard University promotes,
uses, and advertises its name Harvard through various publications, services, and
products in foreign countries, including the Philippines.

Issue:

Whether or not there's an infringement on HArvard's trademark by FREDCO.

Ruling:

Yes. Under Section 2 of Republic Act No. 166,14 as amended (R.A. No. 166),
before a trademark can be registered, it must have been actually used in commerce for
not less than two months in the Philippines prior to the filing of an application for its
registration. However, where the trademark sought to be registered has already been
registered in a foreign country that is a member of the Paris Convention, the requirement
of proof of use in the commerce in the Philippines for the said period is not necessary. An
applicant for registration based on home certificate of registration need not even have
used the mark or trade name in this country.

While Harvard University had actual prior use of its marks abroad for a long time,
it did not have actual prior use in the Philippines of the mark Harvard Veritas Shield
Symbol before its application for registration of the mark Harvard with the then Philippine
Patents Office, it's registration of the name Harvard is based on home registration which
is allowed under Section 37 of R.A. No. 166.

The Philippines and the United States of America are both signatories to the Paris
Convention for the Protection of Industrial Property (Paris Convention).. Articles 6bis and
8 of the Paris Convention state:

ARTICLE 6bis, states that the countries of the Union xxx, to refuse or to cancel the
registration and to prohibit the use of a trademark which constitutes a reproduction,
imitation or translation, xxx, which being already the mark of a person entitled to the
benefits of the present Convention.xxx

ARTICLE 8 states that A trade name shall be protected in all the countries of the
Union without the obligation of filing or registration, whether or not it forms part of a
trademark. (Emphasis supplied)

Thus, this Court has ruled that the Philippines is obligated to assure nationals of
countries of the Paris Convention that they are afforded an effective protection against
violation of their intellectual property rights in the Philippines in the same way that their
own countries are obligated to accord similar protection to Philippine nationals. Under
Article 8 of the Paris Convention, as well as Section 37 of R.A. No. 166, Harvard
University is entitled to protection in the Philippines of its trade name Harvard even without
registration of such trade name in the Philippines.

Kabushi Kaisha Isetan vs. The Intermediate Appellate Court, G.R. No. L-75420, 15
November 1991

Facts:

Kabushi Kaisha Isetan is a foreign corporation organized and existing under the
laws of Japan and the owner of the trademark "Isetan" and the "Young Leaves Design".
Private respondent Isetann Department Store, on the other hand, is a domestic
corporation organized and existing under the laws of the Philippines. Petitioner alleges
that it has been using its trademark ISETAN since November 5, 1936 and claims to have
expanded its line of business internationally until 1974. It was only in May 1980 did private
respondent registered “Isetann Department Store, Inc.”

Petitioner filed with the Philippine Patent Office two petitions for the cancellation of
the private respondents’ certificates, stating among others that, except for the additional
letter “N”, the mark registered by the registrant is exactly the same as the trademark
ISETAN owned by the petitioner and that the young leaves registered by the registrant is
exactly the same as the young leaves design owned by the petitioner.

The petitioner further alleged that private respondent's act of registering a

trademark which is exactly the same as its trademark and adopting a corporate name
similar to that of the petitioner were with the illegal and immoral intention of cashing in on
the long established goodwill and popularity of the petitioner's reputation, thereby causing
great and irreparable injury and damage to it. It argued that both the petitioner's and
respondent's goods move in the same channels of trade, and ordinary people will be
misled to believe that the products of the private respondent originated or emanated from,
are associated with, or are manufactured or sold, or sponsored by the petitioner by reason
of the use of the challenged trademark.

Petitioner likewise filed with the SEC a petition to cancel the mark ISETAN in the
registered corporate name, however this petition was denied. On appeal, the Commission
reversed the decision of the Hearing Officer. It directed the private respondent to amend
its Articles of Incorporation within 30 days from finality of the decision. However,
respondent Isetann Department Store filed a motion for reconsideration which led to the
reversal by the Commission of its decision, stating that the petitioner's trademark and
tradename have never been used in commerce on the petitioner's products marketed in
the Philippines, the trademark or tradename have not acquired a reputation and goodwill
deserving of protection from usurpation by local competitors.

Issue: Whether or not Kabushi Kaisha Isetan has a claim under Trademark Laws

Ruling:

No. The SC declined to disturb the rulings of the Patent Office and the Court of
Appeals. A fundamental principle of Philippine Trademark Law is that actual use in
commerce in the Philippines is a pre-requisite to the acquisition of ownership over a
trademark or a tradename. In fact, a prior registrant cannot claim exclusive use of the
trademark unless it uses it in commerce.The records show that the petitioner has never
conducted any business in the Philippines. It has never promoted its tradename or
trademark in the Philippines. It has absolutely no business goodwill in the Philippines. It
is unknown to Filipinos except the very few who may have noticed it while travelling
abroad. It has never paid a single centavo of tax to the Philippine government. Under the
law, it has no right to the remedy it seeks. Any goodwill, reputation, or knowledge
regarding the name Isetann is purely the work of the private respondent.
 It might be pertinent at this point to stress that what is involved in this case is not
so much a trademark as a tradename. Isetann Department Store, Inc. is the name of a
store and not of product sold in various parts of the country. This case must be
differentiated from cases involving products bearing such familiar names as "Colgate",
"Singer". "Toyota", or "Sony" where the products are marketed widely in the Philippines.
There is no product with the name "Isetann" popularized with that brand name in the
Philippines. Unless one goes to the store called Isetann in Manila, he would never know
what the name means. Similarly, until a Filipino buyer steps inside a store called "Isetan"
in Tokyo or Hongkong, that name would be completely alien to him. The records show
that among Filipinos, the name cannot claim to be internationally well-known.

The mere origination or adoption of a particular tradename without actual use

thereof in the market is insufficient to give any exclusive right to its use, even though such
adoption is publicly declared, such as by use of the name in advertisements, circulars,
price lists, and on signs and stationery.

The respondent registered its trademark in 1979. It has continuously used that
name in commerce. It has established a goodwill through extensive advertising. The
people who buy at Isetann Store do so because of Isetann's efforts. There is no showing
that the Japanese firm's registration in Japan or Hongkong has any influence whatsoever
on the Filipino buying public.

APPLIED PROVISIONS:

The trademark Law, Republic Act No. 166, as amended, under which this case heard and
decided provides:

SEC. 2. What are registrable.- Trademark, tradenames and service marks owned
by persons, corporation, partnerships or associations domiciled in the Philippines
and by persons, corporations, partnerships or associations domicided in any
foreign country may be registered in accordance with the provisions of this Act:
Provided, That said trademarks, tradenames, or service marks are actually in use
in commerce and services not less than two months in the Philippines before the
time the applications for registration are filed: And provided, further, That the
country of which the applicant for registration is a citizen grants by law substantially
similar privileges to citizens of the Philippines, and such fact is officially certified,
with a certified true copy of the foreign law translated into the English language, by
the government of the foreign country to the Government of the Republic of the
Philippines. (As amended by R.A. No. 865).

SEC. 2-A. Ownership of trademarks, tradenames and service marks; how

acquired. - Anyone who lawfully produces or deals in merchandise of any kind or
who engages in any lawful business, or who renders any lawful service in
 commerce, by actual use thereof in manufacture or trade, in business, and in the
service rendered, may appropriate to his exclusive use a trademark, a tradename,
or a service mark not so appropriated by another, to distinguish his merchandise,
business or service from the merchandise, business or service of others. The
ownership or possession of a trademark, tradename, service mark, heretofore or
hereafter appropriated, as in this section provided, shall be recognized and
protected in the same manner and to the same extent as are other property rights
known to the law. (As amended by R.A. No. 638)"

Levi Strauss & Co. vs. Clinton Apprelle, G.R. No. 138900, 20 September 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 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.

Ruling:
No. 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 substantial invasion of their
right to warrant the issuance of an injunctive writ. Neither were petitioners able to show
any urgent and permanent necessity for the writ to prevent serious damage.

Petitioners wish to impress upon the Court the urgent necessity for injunctive relief,
urging that the erosion or dilution of their trademark is protectable. They assert that a
trademark owner does not have to wait until the mark loses its distinctiveness to obtain
injunctive relief, and that the mere use by an infringer of a registered mark is already
actionable even if he has not yet profited thereby or has damaged the trademark owner.

Trademark dilution is the lessening of the capacity of a famous mark to identify

and distinguish goods or services, regardless of the presence or absence of: (1)
competition between the owner of the famous mark and other parties; or (2) likelihood of
confusion, mistake or deception. Subject to the principles of equity, the owner of a famous
mark is entitled to an injunction “against another person’s commercial use in commerce
of a mark or trade name, if such use begins after the mark has become famous and
causes dilution of the distinctive quality of the mark.” This is intended to protect famous
marks from subsequent uses that blur distinctiveness of the mark or tarnish or disparage
it.

Based on the foregoing, to be eligible for protection from dilution, there has to be a
finding that: (1) the trademark sought to be protected is famous and distinctive; (2) the
use by respondent of “Paddocks and Design” began after the petitioners’ mark became
famous; and (3) such subsequent use defames petitioners’ mark. In the case at bar,
petitioners have yet to establish whether “Dockers and Design” has acquired a strong
degree of distinctiveness and whether the other two elements are present for their cause
to fall within the ambit of the invoked protection. The Trends MBL Survey Report which
petitioners presented in a bid to establish that there was confusing similarity between two
marks is not sufficient proof of any dilution that the trial court must enjoin.

246 Corporation vs. Hon. Daway, et al, G.R. No. 157216, 20 November 2003

Facts:

Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex
and Crown Device, filed against petitioner 246 Corporation the instant suit for
trademark infringement and damages with prayer for the issuance of a restraining order
or writ of preliminary injunction. Respondents alleged that sometime in July 1996, the
petitioner adopted and, since then, has been using without authority the mark "Rolex" in
its business name "Rolex Music Lounge" as well as in its newspaper advertisements as
– "Rolex Music Lounge, KTV, Disco & Party Club." Petitioner argued that respondents
have no cause of action because no trademark infringement exists; and that no confusion
would arise from the use by the petitioner of the mark "Rolex" considering that
its entertainment business is totally unrelated to the items catered by respondents such
as watches, clocks, bracelets and parts thereof. It also contended that the complaint was
not properly verified and certified against forum shopping considering that Atty. Alonzo
Ancheta, the counsel of record of respondents who signed the verification and
certification, was not authorized to represent respondents. In 2000, 246 Corp. filed a
motion for a preliminary hearing on its affirmative defense; which the court thereafter
issued a subpoena ad testificandum to Atty. Atienza. Montres Rolex opposed, and the
trial court quashed the subpoena. 246 corp. filed a petition for certiorari before the Court
of Appeals, which was dismissed. Hence, the petition for review on certiorari.

Issue:

Whether or not the junior use of a registered mark on entirely different goods
subsists.

Ruling:

Yes. The rule, that there is no infringement in the use of a ‘junior user of the
registered mark on the entirely different goods, has been modified by Section 123.1 (f) of
Republic Act No. 8293 (Intellectual Property code). His use is precluded when that the
mark is well known internationally and in the Philippines, the use of the mark would
indicate a connection or relationship between the user and the registrant, and that the
interests of the well-known mark are likely to be damaged. The court however cannot
resolve the merits considering the facts as to the existence/absence of the requisites
should be addressed in a full- blown hearing and not on a mere preliminary hearing.

Considering that the trial court correctly denied petitioner’s motion for preliminary
hearing on its affirmative defenses with motion to dismiss, there exists no reason to
compel Atty. Ancheta to testify. Hence, no abuse of discretion was committed by the trial
court in quashing the subpoena ad testificandum issued against Atty. Ancheta. Grave
abuse of discretion implies such capricious and whimsical exercise of judgment as
equivalent to lack of jurisdiction, or, in other words, where the power is exercised in an
arbitrary or despotic manner by reason of passion or personal hostility, and it must be so
patent and gross as to amount to an evasion of positive duty or to a virtual refusal to
perform the duty enjoined or to act at all in contemplation of law. None of these was
committed by the trial court; hence, the Court of Appeals correctly dismissed the petition.
 Esso Standard Eastern, Inc. vs. CA, G.R. No. L-29971, 31 August 1982, 116
SCRA 336

Facts:

Esso Standard Eastern is foreign corporation duly licensed to do business in the

Philippines, engaged in the sale of petroleum products identified with its trademark ESSO.
Private respondent is a domestic corporation engaged in the manufacture and sale of
cigarettes using the trademark ESSO on its cigarettes.

Esso Standard Eastern filed a complaint for trademark infringement in the CFI of
manila against respondent corporation. It alleged petitioner 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. Petitioner asserted
that the continued use by private respondent 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.

United Cigarette Corp., respondent, admitted the use of ESSO on its products and
contended not identical to those produced and sold by petitioner and therefore did not in
any way infringe on or imitate petitioner's trademark.

The lower court ruled in favor of petitioner declaring respondent guilty of

infringement of trademark. The CA, however, reversed the ruling. Petitioner now turns to
the SC for the reversal of the appellate court’s ruling.

Issue:

Whether or not there was trademark infringement?

Ruling:

No. The law defines infringement as the use without consent of the trademark
owner of any "reproduction, counterfeit, copy or colorable imitation of any registered mark
or tradename in connection with the sale, offering for sale, or advertising of any goods,
business or services on or in connection with which such use is likely to cause confusion
or mistake or to deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business; or reproduce, counterfeit, copy or colorably imitate
any such mark or tradename and apply such reproduction, counterfeit, copy or colorable
imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods, business or services."

In the present case, the goods are obviously different from each other. 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. 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 unrelated articles of a different kind.

Petitioner uses the trademark ESSO and holds certificate of registration of the
trademark for petroleum products, including aviation gasoline, grease, cigarette lighter
fluid and other various products such as plastics, chemicals, synthetics, gasoline
solvents, kerosene, automotive and industrial fuel, bunker fuel, lubricating oil, fertilizers,
gas, alcohol, insecticides and the "ESSO Gasul" burner, while respondent's business is
solely for the manufacture and sale of the unrelated product of cigarettes.

Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., G.R. No. 190065, 16 August
2010

Facts:

Petitioner Dermaline filed before the Intellectual Property Office (IPO) an application
for registration of the trademark “DERMALINE DERMALINE, INC.”Respondent Myra filed
a Verified Opposition alleging that the trademark sought to be registered by Dermaline so
resembles its trademark “DERMALIN” and will likely cause confusion, mistake and
deception to the purchasing public. It further alleged that Dermaline’s use and registration
of its applied trademark will diminish the distinctiveness and dilute the goodwill of Myra’s
“DERMALIN,” which Myra has been extensively commercially since October 31, 1977,
and said mark is still valid and subsisting.

Myra contends that despite Dermaline’s attempt to differentiate its applied mark, the
dominant feature is the term “DERMALINE,” which is practically identical with its own
“DERMALIN,” more particularly that the first eight (8) letters of the marks are identical,
and that notwithstanding the additional letter “E” by Dermaline, the pronunciation for both
marks are identical. Further, both marks have three (3) syllables each, with each syllable
identical in sound and appearance, even if the last syllable of “DERMALINE” consisted of
four (4) letters while “DERMALIN” consisted only of three (3). Myra asserted that the mark
“DERMALINE DERMALINE, INC.” is aurally similar to its own mark such that the
registration and use of Dermaline’s applied mark will enable it to obtain benefit from
Myra’s reputation, goodwill and advertising and will lead the public into believing that
Dermaline is, in any way, connected to Myra. Myra added that even if the subject
application was under Classification 44 for various skin treatments, it could still be
connected to the “DERMALIN” mark under Classification 5 for pharmaceutical products,
since ultimately these goods are very closely related. The IPO Bureau of Legal Affairs
ruled in favor of respondent; said decision was sustained by the IPO Director General
and the Court of Appeals.

Issue:
Whether or not petitioner’s use of“Dermaline Dermaline Inc”can result in confusion,
mistake or deception on the part of the purchasing public

Ruling:

Yes. A trademark is any distinctive word, name, symbol, emblem, sign, or device,
or any combination thereof, adopted and used by a manufacturer or merchant on his
goods to identify and distinguish them from those manufactured, sold, or dealt by others.
As a registered trademark owner, Myra has the right under Section 147 of R.A. No. 8293
to prevent third parties from using a trademark, or similar signs or containers for goods or
services, without its consent, identical or similar to its registered trademark, where such
use would result in a likelihood of confusion. In determining likelihood of confusion, case
law has developed two (2) tests, the Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the prevalent features of the competing
trademarks that might cause confusion or deception. It is applied when the trademark
sought to be registered contains the main, essential and dominant features of the earlier
registered trademark, and confusion or deception is likely to result. Duplication or imitation
is not even required; neither is it necessary that the label of the applied mark for
registration should suggest an effort to imitate. The important issue is whether the use of
the marks involved would likely cause confusion or mistake in the mind of or deceive the
ordinary purchaser, or one who is accustomed to buy, and therefore to some extent
familiar with, the goods in question. Given greater consideration are the aural and visual
impressions created by the marks in the public mind, giving little weight to factors like
prices, quality, sales outlets, and market segments. The test of dominancy is now
explicitly incorporated into law in Section 155.1 of R.A. No. 8293 which provides—

155.1. Use in commerce any reproduction, counterfeit, copy, or

colorable imitation of a registered mark or the same container or a
dominant feature thereof in connection with the sale, offering for sale,
distribution, advertising of any goods or services including other preparatory
steps necessary to carry out the sale of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive; (emphasis supplied)
 While it is true that the two marks are presented differently – Dermaline’s mark is
written with the first “DERMALINE” in script going diagonally upwards from left to right,
with an upper case “D” followed by the rest of the letters in lower case, and the portion
“DERMALINE, INC.” is written in upper case letters, below and smaller than the long-
hand portion; while Myra’s mark “DERMALIN” is written in an upright font, with a capital
“D” and followed by lower case letters – the likelihood of confusion is still apparent. This
is because they are almost spelled in the same way, except for Dermaline’s mark which
ends with the letter “E,” and they are pronounced practically in the same manner in three
(3) syllables, with the ending letter “E” in Dermaline’s mark pronounced silently. Thus,
when an ordinary purchaser, for example, hears an advertisement of Dermaline’s applied
trademark over the radio, chances are he will associate it with Myra’s registered mark.

Dermaline’s stance that its product belongs to a separate and different

classification from Myra’s products with the registered trademark does not eradicate the
possibility of mistake on the part of the purchasing public to associate the former with the
latter, especially considering that both classifications pertain to treatments for the skin.

Thus, the public may mistakenly think that Dermaline is connected to or associated
with Myra, such that, considering the current proliferation of health and beauty products
in the market, the purchasers would likely be misled that Myra has already expanded its
business through Dermaline from merely carrying pharmaceutical topical applications for
the skin to health and beauty services.

Verily, when one applies for the registration of a trademark or label which is almost
the same or that very closely resembles one already used and registered by another, the
application should be rejected and dismissed outright, even without any opposition on the
part of the owner and user of a previously registered label or trademark. This is intended
not only to avoid confusion on the part of the public, but also to protect an already used
and registered trademark and an established goodwill.
 Birkenstock Orthopaedie Gmbh et al vs. Philippine Shoe Expo Marketing Corpo.,
G.R. No. 194307, 20 November 2013

Facts:

Petitioner, a corporation duly organized and existing under the laws of Germany,
applied for various trademark registrations before the IPO, namely: (a)
"BIRKENSTOCK" falling under Class 25 of the Nice Classification; (b) "BIRKENSTOCK
BAD HONNEF -RHEIN & DEVICE COMPRISING OF ROUND COMPANY SEAL AND
REPRESENTATION OF A FOOT, CROSS AND SUNBEA M" under Class 25 of the
Nice Classification; and (c) "BIRKENSTOCK BAD HONNEF-RHEIN & DEVICE
COMPRISING OF ROUND COMPANY SEAL AND REPRESENTATION OF A FOOT,
CROSS AND SUNBEAM" falling under Class 10 of the Nice Classification.

However, registration proceedings of the subject applications were suspended in

view of an existing registration of the mark "BIRKENSTOCK AND DEVICE" under
Registration No. 56334 in the name of Shoe Town International and Industrial
Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo Marketing
Corporation.

In this regard, petitioner filed a petition for cancellation of Registration No. 56334
on the ground that it is the lawful and rightful owner of the Birkenstock marks
(Cancellation Case). During its pendency, however, respondent failed to file the
required 10th Year Declaration of Actual Use (10th Year DAU) for Registration No.
56334 on or before October 21, 2004, thereby resulting in the cancellation of such mark.
Accordingly, the cancellation case was dismissed for being moot and academic.

The BLA, in its Decision sustained respondent’s opposition, thus, ordering the
rejection of the subject applications. It ruled that the competing marks of the parties are
confusingly similar. It found respondent and its predecessor-in-interest as the prior user
and adopter of "BIRKENSTOCK" in the Philippines, while on the other hand, petitioner
failed to present evidence of actual use in the trade and business in this country.

Respondent filed a petition for review with the CA. The CA reversed and set aside
the ruling of the IPO Director General and reinstated that of the BLA.

The petitioner filed a MR, which was denied. Hence, this petition.

Issue:
Whether or not the subject marks should be allowed registration in the name of
petitioner.
Ruling:
Yes. Republic Act No. (RA) 166, the governing law for Registration No. 56334,
requires the filing of a DAU on specified periods, to wit:

Section 12. Duration. – Each certificate of registration shall remain in force for
twenty years: Provided, That registrations under the provisions of this Act shall be
cancelled by the Director, unless within one year following the fifth, tenth and fifteenth
anniversaries of the date of issue of the certificate of registration, the registrant shall file
in the Patent Office an affidavit showing that the mark or trade-name is still in use or
showing that its non-use is due to special circumstance which excuse such non-use and
is not due to any intention to abandon the same, and pay the required fee.

In this case, respondent admitted that it failed to file the 10th Year DAU for
Registration No. 56334 within the requisite period. As a consequence, it was deemed to
have abandoned or withdrawn any right or interest over the mark "BIRKENSTOCK."
Neither can it invoke Section 236 of the IP Code which pertains to intellectual property
rights obtained under previous intellectual property laws, e.g., RA 166, precisely because
it already lost any right or interest over the said mark.

Besides, petitioner has duly established its true and lawful ownership of the mark
"BIRKENSTOCK."
Under Section 2 of RA 166, which is also the law governing the subject applications, in
order to register a trademark, one must be the owner thereof and must have actually used
the mark in commerce in the Philippines for two (2) months prior to the application for
registration.

Under RA 166, one may be an owner of a mark due to its actual use but may not
yet have the right to register such ownership here due to the owner’s failure to use the
same in the Philippines for two (2) months prior to registration.

It must be emphasized that registration of a trademark, by itself, is not a mode of

acquiring ownership. If the applicant is not the owner of the trademark, he has no right to
apply for its registration. Registration merely creates a prima facie presumption of the
validity of the registration, of the registrant’s ownership of the trademark, and of the
exclusive right to the use thereof.

In the instant case, petitioner was able to establish that it is the owner of the mark
"BIRKENSTOCK." It submitted evidence relating to the origin and history of
"BIRKENSTOCK" and its use in commerce long before respondent was able to register
the same here in the Philippines. It has sufficiently proven that "BIRKENSTOCK" was first
adopted in Europe in 1774 by its inventor, Johann Birkenstock, a shoemaker, on his line
of quality footwear and thereafter, numerous generations of his kin continuously engaged
in the manufacture and sale of shoes and sandals bearing the mark "BIRKENSTOCK"
until it became the entity now known as the petitioner. Petitioner also submitted various
certificates of registration of the mark "BIRKENSTOCK" in various countries and that it
has used such mark in different countries worldwide, including the Philippines.

On the other hand, aside from Registration No. 56334 which had been cancelled,
respondent only presented copies of sales invoices and advertisements, which are not
conclusive evidence of its claim of ownership of the mark "BIRKENSTOCK" as these
merely show the transactions made by respondent involving the same.

In view of the foregoing circumstances, the Court finds the petitioner to be the true
and lawful owner of the mark "BIRKENSTOCK" and entitled to its registration, and that
respondent was in bad faith in having it registered in its name.

W Land Holding, Inc. v. Starwood Hotels and Resorts Worldwide, Inc., G.R. No.
222366, 4 December 2017

Facts:
On December 2, 2005, Starwood filed before the IPO an application for
registration of the trademark "W". On February 26, 2007, Starwood's application was
granted and thus, the "W" mark was registered in its name. However, on April 20, 2006,
W Land applied for the registration of its own "W" mark which thereby prompted Starwood
to oppose the same. In a Decision, the BLA ruled that W Land's "W" mark is confusingly
similar with Starwood's mark, which had an earlier filing date.

W Land filed a Petition for Cancellation of Starwood's mark for non-use under
Section 151.1 of the IP Code, claiming that Starwood has failed to use its mark in the
Philippines because it has no hotel or establishment in the Philippines rendering the
services covered by its registration; and that Starwood's "W" mark application and
registration barred its own "'W" mark application and registration for use on real estate.

Issue: WON Starwood has abandoned its use of the mark.

Ruling:

No. Under Section 152.3 of the IP Code, "the use of a mark in connection with one
or more of the goods or services belonging to the class in respect of which the mark is
registered shall prevent its cancellation or removal in respect of all other goods or services
of the same class."

Thus, Starwood's use of the "W" mark for reservation services through its website
constitutes use of the mark which is already sufficient to protect its registration under the
entire subject classification from non-use cancellation. Starwood's "W" mark is
prominently displayed in the website through which consumers in the Philippines can
instantaneously book and pay for their accommodations, with immediate confirmation, in
any of its W Hotels. This, notwithstanding the absence of a Starwood hotel or
establishment in the Philippines. The facts and circumstances show that Starwood's use
of its "W" mark through its interactive website is intended to produce a discernable
commercial effect or activity within the Philippines, or at the very least, seeks to establish
commercial interaction with local consumers. Accordingly, Starwood's use of the "W"
mark in its reservation services through its website constitutes use of the mark sufficient
to keep its registration in force.

East Pacific Merchandising Corp. vs. Director of Patents, G.R. No. L-14377, 29
December 1960

Facts:

Marcelo Pua filed with the Office of the Director of Commerce an application for the
registration of a trademark that he allegedly has been continuously using in commerce
since August 15, 1947 on lotion, face powder, hair pomade, brillantine and other products,
with the word “Verbena” on it and a representation of a Spanish lady described as:

“Against a blue background is the bust figure of a Spanish Señorita dressed

in a typically pink dancer's attire with her upper arms partly covered with a
Spanish shawl of green and white. The figure appears with black well-groomed
hair adorned by red roses. The figure also appears to be wearing two green
earrings. At the left of this figure is shown a balcony decked with plants and
flowers characteristics of Spanish houses.”

Pua assigned his rights on the trademark and the pending application thereof to
petitioner. Petitioner renewed the application under a new trademark law RA 166.
The examiner submitted a report to the Director, recommending its approval and the
latter approved it for publication in the Official Gazette.

Luis Pellicer filed an opposition. That the picture of a lady is common in trade and
“Verbena” is generic name of a flower; that he would be damaged by the registration
of the trademark in question seeing as “Lupel Verbena” was a trademark registered
in his favor which he uses in commerce to identify his hair pomade. Petitioner moved
to dismiss the opposition. The Director of Patents denied petitioner’s registration.
Issue:

WON Director of Patents erred in denying petitioner’s trademark registration.

Ruling:

The result would not change even if the Director erred in ruling that the figure of a
lady, as previously described, is likewise is not registerable as a trademark. The figure, it
may be granted, was drawn on arbitrary on whimsical lines and styled in a peculiarly
distinctive manner; but the fact will not qualify the word "Verbena" for registration, since
the combination of the two marks would still be inadequate to guard against the
misleading effects that flow from the use of the term by petitioner.

The claim that the petitioner is entitled to registration because the term "Verbena"
has already acquired a secondary significance is without merit.

The provisions of law (Rep. Act No. 166, sec. 4) require that the trademark applied
for must have "become distinctive of the applicant's goods", and that a prima facie proof
of this fact exists when the applicant has been in the "substantially exclusive and
continuous use thereof as a mark or trade-name for five years next preceding the date of
the filing of the application for its registration". Here it appears not only that applicant and
his assignor (Pua) only began use of the alleged mark in the year 1947, the same year
when the application was filed; but that such trademarks as "Verbena Povil" and "Lupel
Verbena" had long been in use by respondent Pellicer on his own cosmetic products, and
that, as a matter of fact, he is the holder of the certificate of registration from the Patents
Office for the trademark "Lupel Verbena". Said facts preclude us from concluding that the
trademark in question has become distinctive of applicant's goods within the meaning of
the law.

Conformably to the foregoing, unless the petitioner makes a disclaimer of the word
"Verbena", the application should be held as properly denied by the Director of Patents.
The orders reinstating respondent Pellicer's opposition are affirmed.
 GSIS Family Bank vs. BPI Family Bank, G.R. No. 175278, 23 September 2015

Facts:

Petitioner was originall organized as Royal Savings Bank it was placed under
receivership and later temporarily closed. Petitioner reopened and was renamed
Comsavings Bank. Government Service Insurance System (GSIS) acquired petitioner
from the Commercial Bank of Manila. Petitioner sought Securities and Exchange
Commission (SEC) approval to change its corporate name to "GSIS Family Bank, a Thrift
Bank.

Petitioner likewise applied with the Department of Trade and Industry (DTI) and
Bangko Sentral ng Pilpinas (BSP) for authority to use "GSIS Family Bank, a Thrift Bank"
as its business name. The DTI and the BSP approved the applications.

Respondent BPI Family Bank Since its incorporation, the bank has been commonly
known as "Family Bank." In 1985, Family Bank merged with BPI. BPI Family Savings
Bank was registered with the SEC Eventually, it reached respondent's attention that
petitioner is using or attempting to use the name "Family Bank."

Thus, on March 8, 2002, respondent petitioned the SEC Company Registration

and Monitoring Department (SEC CRMD) to disallow or prevent the registration of the
name "GSIS Family Bank" or any other corporate name with the words "Family Bank" in
it.

Issue: Whether or not the business name used is identical, deceptively or confusingly
similar?

Ruling:

Yes. The Court ruled that to fall within the prohibition of the law on the right to the
exclusive use of a corporate name, two requisites must be proven:

(1) the complainant corporation must have acquired a prior right over the use of
such corporate name and

(2) the proposed name is either identical or deceptively or confusingly similar to

that of any existing corporation or to any other name already protected by law or patently
deceptive, confusing or contrary to existing law.

Both these requisites are present in the case.

 a. Respondent was incorporated in 1969 as Family Savings Bank and in 1985 as
BPI Family Bank. Petitioner, on the other hand, was incorporated as GSIS Family - Thrift
Bank only in 2002, or at least seventeen (17) years after respondent started using its
name. The respondent has the prior right over use of the corporate name.

b. The words "Family Bank" present in both petitioner and respondent's corporate
name satisfy the requirement that there be identical names. Petitioner's corporate name
is "GSIS Family Bank—A Thrift Bank" and respondent's corporate name is "BPI Family
Bank." The only words that distinguish the two are "BPI," "GSIS," and "Thrift." The first
two words are merely the acronyms of the proper names by which the two corporations
identify themselves; and the third word simply describes the classification of the bank.
The overriding consideration in determining whether a person, using ordinary care and
discrimination, might be misled is the circumstance that both petitioner and respondent
are engaged in the same business of banking. "The likelihood of confusion is accentuated
in cases where the goods or business of one corporation are the same or substantially
the same to that of another corporation." Judicial notice may also be taken of the action
of the IPO in approving respondent’s registration of the trademark "BPI Family Bank" and
its logo on October 17, 2008. The certificate of registration of a mark shall be prima facie
evidence of the validity of the registration, the registrant’s ownership of the mark, and of
the registrant’s exclusive right to use the same in connection with the goods or services
and those that are related thereto specified in the certificate.
 Societe Des Produits Nestle SA vs. Puregold Priceclub Inc., G.R. No. 217194,
6 September 2017

Facts:

Puregold filed an application for trademark “COFFEE MATCH” with Intellectual

Property Office (IPO). Nestle oppossed on the ground that it has already registered the
mark “coffee-mate”. Nestle alleged that it is the exclusive owner of the “COFFEE-MATE”
trademark and that there is confusing similarity between the “COFFEE-MATE” trademark
and puregold’s “COFFEE MATCH” trademark. Furthermore, it alleged that “COFFEE-
MATE” has been declared an internationally well-known mark and puregold’s use of
“COFFEE MATCH” would indicate a connection with the goods covered in nestle’s
“COFFEE-MATE” mark because of its distinct similarity. Nestle claimed that it would
suffer damages if the application were granted since Puregold’s “coffee match” would
likely mislead the public that the mark originated from nestle.

IPO dismissed the opposition of Nestle on the ground that the certification of non-
forum shopping was not supported by board resolution. Further, that the marks are
different and not confusing. It ruled that Nestle’s opposition was defective because the
verification and certification against forum shopping attached to Nestle’s opposition did
not include a board of directors’ resolution or secretary’s certificate stating Mr. Dennis
Jose R. Barot’s (Barot) authority to act on behalf of nestle.

The CA affirmed that decision of the IPO. It ruled that there is no board resolution
and/or secretary’s certificate to prove the authority of Dennis Jose R. Barot to file the
petition and to sign the Verification/Certification of Non-Forum Shopping on behalf of
petitioner-corporation;

Issue:

Whether or not there is confusion both marks.

Ruling:

No. We agree with the findings of the BLA-IPO and ODG-IPO. The distinctive
features of both marks are sufficient to warn the purchasing public which are Nestle's
products and which are Puregold's products. While both "-MATE" and "MATCH" contain
the same first three letters, the last two letters in Puregold's mark, "C" and "H," rendered
a visual and aural character that made it easily distinguishable from Nestle's mark. Also,
the distinctiveness of Puregold's mark with two separate words with capital letters "C" and
"M" made it distinguishable from Nestle's mark which is one word with a hyphenated small
letter "-m" in its mark. In addition, there is a phonetic difference in pronunciation between
Nestle's "-MATE" and Puregold's "MATCH." As a result, the eyes and ears of the
consumer would not mistake Nestle's product for Puregold's product. Accordingly, this
Court sustains the findings of the BLA-IPO and ODG-IPO that the likelihood of confusion
between Nestle's product and Puregold's product does not exist and upholds the
registration of Puregold's mark.

Ang vs. Teodoro, G.R. No. L-48226, 14 December 1942

Facts:

Respondent Toribio Teodoro, at first in partnership with Juan Katindig and later as
sole proprietor, has continuously used "ANG TIBAY," both as a trade-mark and as a trade-
name, in the manufacture and sale of slippers, shoes, and indoor baseballs since
1910.He formally registered it as trade-mark and as trade-name. The growth of his
business is a thrilling epic of Filipino industry and business capacity. Starting in an
obscure shop in 1910 with a modest capital of P210 but with tireless industry and
unlimited perseverance it grew into one of the early 100% Filipino owned firms.

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

ANG was sued by TEODORO for trademark infringement.

Issue:
1. Whether or not the words “Ang Tibay” is a descriptive term.
2. Whether or not the words “Ang Tibay” had acquired a secondary meaning?
3. Whether or not the pants and shirts are goods similar to shoes and slippers within the
meaning of Sections 3 and 7 of Act # 666?

Ruling:

1. The words “Ang Tibay” is an exclamation denoting admiration of strength or

durability. It is never used adjectively to define or describe an object. Hence, the term is
NOT a descriptive word within the meaning of the Trade-Mark Law but rather a fanciful or
coined phrase which may properly and legally be appropriated as a trademark or trade
name.
 2. It is unnecessary to apply the Doctrine of Secondary Meaning in the trademark
parlance. Furthermore, this doctrine is to 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. The phrase “Ang Tibay” being
neither geographic nor descriptive was originally capable of exclusive appropriation as a
trademark.

In any event, the CA’s ruling that the Doctrine of Secondary Meaning be fully
sustained is affirmed, because Teodoro’s long and exclusive use of said phrase with
relative to its products and his business, has acquired a propriety connotation.

3. The test employed by the courts to determine whether non-competing goods

are or are not of the same class is confusion as to the origin of the goods of the second
user. Although two non-competing goods 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 to belong to the same class if the
simultaneous use on them of identical or closely similar trademarks would be likely to
cause confusion as to the origin, or personal source of the second user’s goods.

The judgment of the Court of Appeals is affirmed, with costs against the petitioner
in the three instances.

15. Lyceum of the Philippines vs. CA et al, G.R. No. 101897, 5 March 1993

Facts:

Petitioner is an educational institution duly registered with the SEC on September

21, 1950. It used the corporate name Lyceum of the Philippines, Inc. and has used that
name ever since. Petitioner instituted proceedings before the SEC to compel the private
respondents, which are also educational institutions, to delete the word "Lyceum" from
their corporate names and permanently to enjoin them from using "Lyceum" as part of
their respective names1. Petitioner also had, sometime before, commenced in the SEC
a proceeding against the Lyceum of Baguio, Inc. to require it to change its corporate. In
an order, Associate Commissioner Sulit held that the corporate name of petitioner and
that of the Lyceum of Baguio, Inc. were substantially identical because of the presence
of a "dominant" word, i.e., "Lyceum," the name of the geographical location of the campus
being the only word which distinguished one from the other corporate name, therefore the
latter is ordered to change its name to another name "not similar or identical [with]" the
names of previously registered entities. The SEC also noted that petitioner had registered
as a corporation ahead of the Lyceum of Baguio, Inc. Lyceum of Baguio, Inc., assailed
the said order before the SC in a case as docketed G.R. No. L-46595.

The court denied the petition for lack of merit. Entry of judgment for this case was
also made. Armed with the Resolution of the SC, the petitioner filed a SEC case to enforce
what it claims as its proprietary right to the word "Lyceum." Relying on the decision of the
SC, the hearing officer of SEC rendered a decision sustaining petitioner's claim to an
exclusive right to use the word "Lyceum." On appeal before the SEC En banc, the
previous decision was reversed. The SEC En Banc did not consider the word "Lyceum"
to have become so identified with petitioner as to render use thereof by other institutions
as productive of confusion about the identity of the schools concerned in the mind of the
general public. Unlike its hearing officer, the SEC En Banc held that the attaching of
geographical names to the word "Lyceum" served sufficiently to distinguish the schools
from one another, especially in view of the fact that the campuses of petitioner and those
of the private respondents were physically quite remote from each other. On appeal, the
decision of SEC En banc was affirmed. Hence, this petition.

Issue:

1. Has the word Lyceum acquired a secondary meaning in favor of petitioner?

2. Is the word Lyceum considered as a generic word which cannot be appropriated by the
petitioner to the exclusion of others?

Ruling:

1. NO. The Articles of Incorporation of a corporation must, among other things, set
out the name of the corporation. The policy underlying the prohibition in Section
18 against the registration of a corporate name which is "identical or deceptively
or confusingly similar" to that of any existing corporation or which is "patently
deceptive" or "patently confusing" or "contrary to existing laws," is the avoidance
of fraud upon the public which would have occasion to deal with the entity
concerned, the evasion of legal obligations and duties, and the reduction of
difficulties of administration and supervision over corporations.

We do not consider that the corporate names of private respondent institutions are
"identical with, or deceptively or confusingly similar" to that of the petitioner institution.
True enough, the corporate names of private respondent entities all carry the word
"Lyceum" but confusion and deception are effectively precluded by the appending of
geographic names to the word "Lyceum." Etymologically, the word "Lyceum" is the Latin
word for the Greek lykeion which in turn referred to a locality on the river Ilissius. In time,
the word "Lyceum" became associated with schools and other institutions providing public
lectures and concerts and public discussions. Thus today, the word "Lyceum" generally
refers to a school or an institution of learning. The word is also found in Spanish (liceo)
and in French (lycee). "Lyceum" is in fact as generic in character as the word "university."
In the name of the petitioner, "Lyceum" appears to be a substitute for "university;" in other
places, however, "Lyceum," or "Liceo" or "Lycee" frequently denotes a secondary school
or a college.

2. NO. We conclude and so hold that petitioner institution is not entitled to a legally
enforceable exclusive right to use the word "Lyceum" in its corporate name and
that other institutions may use "Lyceum" as part of their own corporate names. To
determine whether a given corporate name is "identical" or "confusingly or
deceptively similar" with another entity's corporate name, it is not enough to
ascertain the presence of "Lyceum" or "Liceo" in both names. One must evaluate
corporate names in their entirety and when the name of petitioner is juxtaposed
with the names of private respondents, they are not reasonably regarded as
"identical" or "confusingly or deceptively similar" with each other.

De La Salle Montessori International of Malolos, Inc. vs. De La Salle Brothers

Inc., et al, G.R. No. 205548, 7 February 2018

Facts:

De La Salle Montessori International of Malolos, Inc. (petitioner) reserved its

corporate name with the Securities and Exchange Commission (SEC) and subsequently
obtained a certificate of incorporation. The Department of Education (DepEd) granted
petitioner government recognition for its educational courses.

Respondents, including De La Salle Brothers, Inc. and De La Salle University, Inc.,

filed a petition with the SEC to compel petitioner to change its corporate name. They
argued that petitioner's name was misleading and confusingly similar to their names. The
SEC Office of the General Counsel (OGC) issued an order directing petitioner to change
its corporate name. The OGC ruled that respondents had acquired prior rights to use the
name "La Salle," and petitioner's use of it was likely to cause confusion.
 The SEC En Banc affirmed the OGC's order. Petitioner appealed to the Court of
Appeals (CA), which upheld the SEC's decision.

Issue:

Whether or not there exists a confusing similarity in the names of the petitioners
and the respondents.

Ruling:

YES. The Supreme Court held that a corporation's right to use its corporate and
trade name is a property right, a right in rem, which it may assert and protect against the
world in the same manner as it may protect its tangible property, real or personal, against
trespass or conversion.24 It is regarded, to a certain extent, as a property right and one
which cannot be impaired or defeated by subsequent appropriation by another
corporation in the same field. Petitioner's assertion that the words "Montessori
International of Malolos, Inc." are four distinctive words that are not found in respondents'
corporate names so that their corporate name is not identical, confusingly similar, patently
deceptive or contrary to existing laws,38 does not avail. As correctly held by the SEC
OGC, all these words, when used with the name "De La Salle," can reasonably mislead
a person using ordinary care and discretion into thinking that petitioner is an affiliate or a
branch of, or is likewise founded by, any or all of the respondents, thereby causing
confusion. 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 "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.

In that case, the Lyceum of the Philippines, Inc., an educational institution

registered with the SEC, commenced proceedings before the SEC to compel therein
private respondents who were all educational institutions, to delete the word "Lyceum"
from their corporate names and permanently enjoin them from using the word as part of
their respective names. The Court there held that the word "Lyceum" today generally
refers to a school or institution of learning. It is as generic in character as the word
"university." Since "Lyceum" denotes a school or institution of learning, it is not unnatural
to use this word to designate an entity which is organized and operating as an educational
institution. Here, the phrase "De La Salle" is not generic in relation to respondents. It is
not descriptive of respondent's business as institutes of learning, unlike the meaning
ascribed to "Lyceum." There is thus no similarity between the Lyceum of the Philippines
case and this case that would call for a similar ruling.

Asia Brewery Inc. vs. CA, G.R. No. 103543, 5 July 1993

Facts:

San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI)
for trademark infringement and unfair competition. The dispute arose due to ABI's "Beer
Pale Pilsen" product, which was in competition with SMC's "San Miguel Pale Pilsen."

SMC alleged that ABI's product infringed upon its trademark, trade dress, and
constituted unfair competition.

Trial Court Decision (August 27, 1990): The trial court, presided over by Judge Jesus O.
Bersamira, ruled in favor of ABI, dismissing SMC's complaint. The court found that ABI
had not committed trademark infringement or unfair competition.

Court of Appeals Decision (September 30, 1991): SMC appealed to the Court of Appeals,
which reversed the trial court's decision. The Court of Appeals found ABI guilty of
trademark infringement and unfair competition.

It issued an injunction against ABI, ordered an accounting of profits, and awarded

moral and exemplary damages and attorney's fees to SMC.

Issue:

WON ABI infringes SMC’s trademark and thereby committing unfair competition against
the latter.
Ruling:

NO. Infringement is determined by the "test of dominancy" rather than by

differences or variations in the details of one trademark and of another. The trial court
perceptively observed that the word "BEER" does not appear in SMC's trademark, just
as the words "SAN MIGUEL" do not appear in ABI's trademark. Hence, there is absolutely
no similarity in the dominant features of both trademarks. Neither in sound, spelling or
appearance can BEER PALE PILSEN be said to be confusingly similar to SAN MIGUEL
PALE PILSEN. No one who purchases BEER PALE PILSEN can possibly be deceived
that it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was presented by SMC
proving otherwise. The words "pale pilsen" may not be appropriated by SMC for its
exclusive use even if they are part of its registered trademark. No one may appropriate
generic or descriptive words. They belong to the public domain. Besides the dissimilarity
in their names, there were also other dissimilarities in the trade dress or appearance of
the competing products. The fact that BEER PALE PILSEN like SAN MIGUEL PALE
PILSEN is bottled in amber-colored steinie bottles of 320 ml. capacity and is also
advertised in print, broadcast, and television media, does not necessarily constitute unfair
competition. The use of ABI of the steinie bottle, similar but not identical to the SAN
MIGUEL PALE PILSEN bottle, is not unlawful. As pointed out by ABI's counsel, SMC did
not invent but merely borrowed the steinie bottle from abroad and it claims neither patent
nor trademark protection for that bottle shape and design. MC's being the first to use the
steinie bottle does not give SMC a vested right to use it to the exclusion of everyone else.
Being of functional or common use, and not the exclusive invention of any one, it is
available to all who might need to use it within the industry. Nobody can acquire any
exclusive right to market articles supplying simple human needs in containers or wrappers
of the general form, size and character commonly and immediately used in marketing
such articles.

ABI does not use SMC's steinie bottle. Neither did ABI copy it. ABI makes its own
steinie bottle which has a fat bulging neck to differentiate it from SMC's bottle. The amber
color is a functional feature of the beer bottle. As pointed out by ABI, all bottled beer
produced in the Philippines is contained and sold in amber-colored bottles because
amber is the most effective color in preventing transmission of light and provides the
maximum protection to beer. That the ABI bottle has a 320 ml. capacity is not due to a
desire to imitate SMC's bottle because that bottle capacity is the standard prescribed
under Metrication Circular No. 778. Considering further that SAN MIGUEL PALE PILSEN
has virtually monopolized the domestic beer market for the past hundred years, those
who have been drinking no other beer but SAN MIGUEL PALE PILSEN these many years
certainly know their beer too well to be deceived by a newcomer in the market. Beer is
not usually picked from a store shelf but ordered by brand by the beer drinker himself
from the storekeeper or waiter in a pub or restaurant.

Petitioner ABI has neither infringed SMC's trademark nor committed unfair
competition with the latter's SAN MIGUEL PALE PILSEN product. While BEER PALE
PILSEN admittedly competes with the latter in the open market, that competition is neither
unfair nor fraudulent. Hence, we must deny SMC's prayer to suppress it.

Mighty Corporation et al vs. E. & J. Gallo Winery et al, G.R. No. 154342, 14
July 2004

Facts:

Respondent Gallo Winery is a foreign corporation not doing business in the

Philippines but organized and existing under the laws of the State of California, United
States of America (U.S.), where all its wineries are located. Gallo Winery produces
different kinds of wines and brandy products and sells them in many countries under
different registered trademarks, including the GALLO and ERNEST & JULIO GALLO wine
trademarks. Respondent domestic corporation, Andresons, has been Gallo Winery’s
exclusive wine importer and distributor in the Philippines since 1991, selling these
products in its own name and for its own account.

Gallo Winery’s GALLO wine trademark was registered in the principal register of
the Philippine Patent Office (now Intellectual Property Office) on November 16, 1971
under Certificate of Registration No. 17021 which was renewed on November 16, 1991
for another 20 years. Gallo Winery also applied for registration of its ERNEST & JULIO
GALLO wine trademark on October 11, 1990 under Application Serial No. 901011-
00073599-PN but the records do not disclose if it was ever approved by the Director of
Patents.

On the other hand, petitioners Mighty Corporation and La Campana and their sister
company, Tobacco Industries of the Philippines (Tobacco Industries), are engaged in the
cultivation, manufacture, distribution and sale of tobacco products for which they have
been using the GALLO cigarette trademark since 1973.

The Bureau of Internal Revenue (BIR) approved Tobacco Industries’ use of

GALLO 100’s cigarette mark on September 14, 1973 and GALLO filter cigarette mark on
March 26, 1976, both for the manufacture and sale of its cigarette products. In 1976,
Tobacco Industries filed its manufacturer’s sworn statement as basis for BIR’s collection
of specific tax on GALLO cigarettes.

On February 5, 1974, Tobacco Industries applied for, but eventually did not pursue,
the registration of the GALLO cigarette trademark in the principal register of the then
Philippine Patent Office.

In May 1984, Tobacco Industries assigned the GALLO cigarette trademark to La

Campana which, on July 16, 1985, applied for trademark registration in the Philippine
Patent Office. On July 17, 1985, the National Library issued Certificate of Copyright
Registration No. 5834 for La Campana’s lifetime copyright claim over GALLO cigarette
labels.

Subsequently, La Campana authorized Mighty Corporation to manufacture and

sell cigarettes bearing the GALLO trademark. BIR approved Mighty Corporation’s use of
GALLO 100’s cigarette brand, under licensing agreement with Tobacco Industries, on
May 18, 1988, and GALLO SPECIAL MENTHOL 100’s cigarette brand on April 3, 1989.

Petitioners claim that GALLO cigarettes have been sold in the Philippines since
1973, initially by Tobacco Industries, then by La Campana and finally by Mighty
Corporation.

On the other hand, although the GALLO wine trademark was registered in the
Philippines in 1971, respondents claim that they first introduced and sold the GALLO and
ERNEST & JULIO GALLO wines in the Philippines circa 1974 within the then U.S. military
facilities only. By 1979, they had expanded their Philippine market through authorized
distributors and independent outlets.

Respondents claim that they first learned about the existence of GALLO cigarettes
in the latter part of 1992 when an Andresons employee saw such cigarettes on display
with GALLO wines in a Davao supermarket wine cellar section. Forthwith, respondents
sent a demand letter to petitioners asking them to stop using the GALLO trademark, to
no avail.

Issue: WON Mighty is guilty of trademark infringement?

Ruling:

No. The IP Code, repealing the Trademark Law was approved on June 6,
1997. Section 241 thereof expressly decreed that it was to take effect only on January 1,
1998, without any provision for retroactive application. Thus, the Makati RTC and the CA
should have limited the consideration of the present case within the parameters of the
Trademark Law and the Paris Convention, the laws in force at the time of the filing of the
complaint.

Obviously, wines and cigarettes are not identical or competing products. Neither
do they belong to the same class of goods. Respondents GALLO wines belong to Class
33 under Rule 84[a] Chapter III, Part II of the Rules of Practice in Trademark Cases while
petitioners GALLO cigarettes fall under Class 34.

The lowers courts erred when it ruled that wines and cigarettes are related
products because they are related forms of vices and are grouped in the same section in
groceries.

The GALLO wine trademark is NOT a well-known mark in the context of the Paris
Convention in this case since wines and cigarettes are not identical or similar goods.
GALLO wines and GALLO cigarettes are neither the same, identical, similar nor related
goods, a requisite element under both the Trademark Law and the Paris Convention.
Second, the GALLO trademark cannot be considered a strong and distinct mark in the
Philippines.

Sterling Products International, Incorporated vs. Farbenfabriken Bayer

Aktiengesellschaft et al, G.R. No. L-19906, 30 April 1969

Facts:

The “Bayer Cross in circle” trademark was registered in Germany in 1904 to

Farbenfabriken vorm. Friedr. Bayer (FFB), successor to the original Friedr. Bauyer et.
Comp., and predecessor to Farbenfabriken Bayer aktiengessel craft (FB2). The “Bayer,
and “Bayer Cross in circle” trademarks were acquired by sterling Drug Inc. when it
acquired FFB’s subsidiary Bayer Co. of New York as a result of the sequestration of its
assets by the US Alien Property Custodian during World War I. Bayer products have been
known in Philippines by the close of the 19th century. Sterling Drugs, Inc., however, owns
the trademarks “Bayer” in relation to medicine. FBA attempted to register its chemical
products with the “Bayer Cross in circle” trademarks. Sterling Products International and
FBA seek to exclude each other from use of the trademarks in the Philippines. The trial
court sustained SPI’s right to use the Bayer trademark for medicines and directed FBA to
add distinctive words in their mark to indicate their products come from Germany.” Both
appealed.

Issue:

Whether or not SPI’s ownership of the trademarks extends to products not related to
medicine.

Ruling:

No. SPI’s certificates of registration as to the Bayer trademarks registered in the

Philippines cover medicines only. Nothing in the certificates include chemicals or
insecticides. SPI thus may not claim “first use” of the trademarks prior to the registrations
thereof on any product other than medicines. For if otherwise held, a situation may arise
whereby an applicant may be tempted to register a trademark on any and all goods which
his mind may conceive even if he had never intended to use the trademark for the said
goods. Omnibus registration is not contemplated by the Trademark Law. The net result
of the decision is that SPI may hold on to its Bayer trademark for medicines and FBA may
continue using the same trademarks for insecticide and other chemicals, not medicine.
The formula fashioned by the lower court avoids the mischief of confusion of origin, and
does not visit FBA with reprobation and condemnation. A statement that its product came
from Germany anyhow is but a statement of fact.
 TAIWAN KOLIN CORPORATION, LTD. vs. KOLIN ELECTRONICS CO., INC.,
March 25, 2015 G.R. No. 209843

Facts:
Taiwan Kolin Corp sought to register the trademark “KOLIN” in Class 9 on the
following combination of goods: television sets, cassette recorder, VCD Amplifiers,
camcorders and other audio/video electronic equipment, flat iron, vacuum cleaners,
cordless handsets, videophones, facsimile machines, teleprinters, cellular phones and
automatic goods vending machine.

Kolin Electronics opposed the application on the ground that the trademark
“KOLIN” is identical, if not confusingly similar, with its registered trademark “KOLIN” which
covers the following products under Class 9 of the Nice Classification (NCL): automatic
voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply,
step-down transformer, and PA amplified AC-DC. Kolin Electronics argued that the
products are not only closely-related because they fall under the same classification, but
also because they are inherently similar for being electronic products and are plugged
into electric sockets and perform a useful function.

Issue:
W/N the products are closely-related

Ruling:

No, the products are not related and the use of the trademark KOLIN on them
would not likely cause confusion. To confer exclusive use of a trademark, emphasis
should be on the similarity or relatedness of the goods and/or services involved and not
on the arbitrary classification or general description of their properties or characteristics.
First, products classified under Class 9 can be further classified into five categories.
Accordingly, the goods covered by the competing marks between Taiwan Kolin and Kolin
Electronics fall under different categories. Taiwan Kolin’s goods are categorized as audio
visual equipments, while Kolin Electronics’ goods fall under devices for controlling the
distribution and use of electricity. Thus, it is erroneous to assume that all electronic
products are closely related and that the coverage of one electronic product necessarily
precludes the registration of a similar mark over another.

Second, the ordinarily intelligent buyer is not likely to be confused. The distinct
visual and aural differences between the two trademarks “KOLIN”, although appear to be
minimal, are sufficient to distinguish between one brand or another. The casual buyer is
predisposed to be more cautious, discriminating, and would prefer to mull over his
purchase because the products involved are various kind of electronic products which are
relatively luxury items and not considered affordable. They are not ordinarily consumable
items such as soy sauce, ketsup or soap which are of minimal cost. Hence, confusion is
less likely.
 ACOJE MINING CO., INC. vs. THE DIRECTOR OF PATENTS, G.R. No. L-
28744, April 29, 1971

Facts:
On September 14, 1965, Acoje Mining Co., Inc. a domestic corporation, filed an
application for registration of the trademark LOTUS, used on Soy Sauce, Class 47. Use
in commerce in the Philippines since June 1, 1965 is asserted. The Chief Trademark
Examiner finally rejected the application by reason of confusing similarity with the
trademark LOTUS registered and issued in favor of Philippine Refining Co., Inc., another
domestic corporation. The cited mark is being used on edible oil, Class 47."

The matter was then elevated to respondent Director of Patents who upheld the
view of the Chief Trademark Examiner and rejected the application of petitioner on the
ground that while there is a difference between soy sauce and edible oil and there were
dissimilarities in the trademarks due to type of letters used as well as in the size, color
and design employed, still the close relationship of the products, soy sauce and edible
oil, is such "that purchasers would be misled into believing that they have a common
source."

Issue:

May petitioner register for the purpose of advertising its product, soy sauce, the
trademark LOTUS, there being already in existence one such registered in favor of
respondent for its product, edible oil, it being further shown that the trademark applied
for is in smaller type, colored differently, set on a background which is dissimilar as to
yield a distinct appearance?

Ruling:

Yes. The determinative factor in a contest involving registration of trade mark is

not whether the challenging mark would actually cause confusion or deception of the
purchasers but whether the use of such mark would likely cause confusion or mistake on
the part of the buying public.
In this case, there is quite a difference between soy sauce and edible oil. If one is in the
market for the former, he is not likely to purchase the latter just because of the trademark.
LOTUS. Even on the rare occasions that a mistake does occur, it can easily be rectified,
Moreover, there is no denying that the possibility of confusion is remote considering the
difference in the type used, the coloring, the petitioner's trademark being in yellow and
red while that of the Philippine Refining Company being in green and yellow, and the
much smaller size of petitioner's trademark. Decision of respondent Director of Patents is
reversed and petitioner's application for registration of its trademark LOTUS granted.
Cigarettes are usually being sold in groceries or supermarket while petroleum products
are sold in gasoline stations however, there are some instances wherein the court said
that these goods are not confusingly similar.

PHILIPPINE REFINING CO., INC. vs. NG SAM and THE DIRECTOR OF

PATENTS, G.R. No. L-26676, July 30, 1982

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.

Issue:
Is the product of Ng Sam (Ham) and those of the petitioner so related that the use
of the trademark 'Camia' on said goods would result to confusion as to their origin?

Ruling:
No. 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.
 HICKOK MANUFACTURING CO., INC. vs. COURT OF APPEALS and SANTOS
LIM BUN LIONG,
G.R. No. L-44707 August 31, 1982

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?

Ruling:
NO. 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'.

Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., G.R. No.
228165, 9 February 2021

Facts:
Taiwan Kolin filed with the Intellectual Property Office (IPO), for the use of "KOLIN"
on a combination of goods, including colored televisions, refrigerators, window-type and
split-type air conditioners, electric fans and water dispensers. Said goods allegedly fall
under Classes 9, 11, and 21 of the Nice Classification (NCL). Application No. 4-1996-
106310 would eventually be considered abandoned for Taiwan Kolin’s failure to respond
to IPO’s Paper No. 5 requiring it to elect one class of good for its coverage. However, the
same application was subsequently revived throughApplication Serial No. 4-2002-
011002, with petitioner electing Class 9 as the subject of its application, particularly:
television sets, cassette recorder, VCD Amplifiers, etc. The application would in time be
duly published.
Respondent Kolin Electronics opposed petitioner’s revived application. As argued,
the mark Taiwan Kolin seeks to register is identical, if not confusingly similar, with its
"KOLIN" mark registered on November 23, 2003, covering the following products under
Class 9 of the NCL: automatic voltage regulator, converter, etc.

Issue:
Whether or not petitioner is entitled to its trademark registration of "KOLIN" over
its specific goods of television sets and DVD players.

RULING:
Yes. Identical marks may be registered for products from the same classification.
Class 9 Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life-saving and teaching
apparatus and instruments; apparatus etc.
But mere uniformity in categorization, by itself, does not automatically preclude the
registration of what appears to be an identical mark, if that be the case.
Verily, whether or not the products covered by the trademark sought to be
registered by Taiwan Kolin, on the one hand, and those covered by the prior issued
certificate of registration in favor of Kolin Electronics, on the other, fall under the same
categories in the NCL is not the sole and decisive factor in determining a possible violation
of Kolin Electronics’ intellectual property right should petitioner’s application be granted.
While both competing marks refer to the word "KOLIN" written in upper case letters
and in bold font, the Court at once notes the distinct visual and aural differences between
them: Kolin Electronics’ mark is italicized and colored black while that of Taiwan Kolin is
white in pantone red color background. The differing features between the two, though
they may appear minimal, are sufficient to distinguish one brand from the other.
It cannot be stressed enough that the products involved in the case at bar are,
generally speaking, various kinds of electronic products. These are not ordinary
consumable household items, like catsup, soy sauce or soap which are of minimal cost.
The products of the contending parties are relatively luxury items not easily considered
affordable.
 Finally, in line with the foregoing discussions, more credit should be given to the
"ordinary purchaser." Cast in this particular controversy, the ordinary purchaser is not the
"completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type
of product involved.
Consistent with the above ruling, this Court finds that the differences between the
two marks, subtle as they may be, are sufficient to prevent any confusion that may ensue
should petitioner’s trademark application be granted. All told, We are convinced that
petitioner's trademark registration not only covers unrelated good, but is also incapable
of deceiving the ordinary intelligent buyer. The ordinary purchaser must be thought of as
having, and credited with, at least a modicum of intelligence to be able to see the
differences between the two trademarks in question.

Mang Inasal Phils., Inc. vs. IFP Manufacturing Corp., G.R. No. 221717, 19 January
2017

FACTS:

IFP Manufacturing Corp. filed an application for the registration of the mark, “OK
Hotdog Inasal Cheese Hotdog Flavor Mark”, in connection with goods under Class 30
of the Nice Classification. It was intended to be used on one of its curl snack products.
However, the said application was opposed by Mang Inasal, that owned the mark, “Mang
Inasal, Home of Real Pinoy Style Barbecue and Device”, for services under Class 43.
It has been registered with the IPO in 2006 and has been used by petitioner since 2003.
Petitioner contended that the registration of OK Hotdog is prohibited under Sec.
123.1d. The OK Hotdog and Mang Inasal marks share similarities, as to their appearance
and to the goods or services they represent, thus suggesting a false connection or
association between the said marks, and would likely cause confusion to the public.

a. The dominant element – the word “Inasal”, is printed and stylized in an exact
manner.
b. The goods that the OK Hotdog Inasal mark is intended to identify are closely
related to the services represented by the Mang Inasal mark.

CA denied the appeal of the petitioner. MR was also denied.

Issue:
W/N the trademark may be registered?

Ruling:
No. Sec.123.1d provides that a mark that is similar to a registered mark or a mark
with an earlier filing, and which is likely to cause confusion on the part of the public cannot
be registered with the IPO. The concept of the confusion could refer to the confusion of
goods or confusion of business. Confusion, in both forms, is only possible when the goods
or services covered by allegedly similar marks are identical, similar, or related in some
manner.
To fall under the ambit of Sec. 123.1d and be regarded as likely to deceive or cause
confusion, a prospective mark must meet two minimum conditions:

1. The prospective mark must nearly resemble or be similar to an earlier

mark; and

a. The OK Hotdog Inasal Mark is Similar to the Mang Inasal Mark.

Similarity does not mean absolute identity of marks. It is enough that a
prospective mark be a colorable imitation of the former. Colorable
imitation denotes such likeness in form, content, words, sound,
meaning, special arrangement or general appearance of one mark with
respect to another as would likely mislead an average buyer in the
ordinary course of purchase.
b. In determining whether there is similarity or colorable imitation,
authorities may use two tests:

i. Dominancy Test focuses

on the similarity of the prevalent features of the competing
trademark which might cause confusion or deception. If the
competing trademark contains the main, essential or dominant
features of another, and confusion or deception is likely to result,
infringement takes place. The question is whether the use of the
marks involved is likely to cause confusion or mistake in the mind
of the public or deceive purchasers.
ii. Holistic Test requires that
the entirety of the marks in question be considered in resolving
confusing similarity. The trademarks in their entirety as they
appear in their respective labels or hang tags must also be
considered in relation to the goods to which they are attached.
iii. Recent case law seems to
indicate an overwhelming judicial preference to applying the
dominancy test.
iv. In the mark, the word
“INASAL” is dominant and the way it is stylized is similar to Mang
Inasal’s. It is a descriptive term that cannot be appropriated, but
the way it is stylized is not. Thus, Mang Inasal can claim exclusive
use of such element. Even if there are differences, the average
buyer would pay more attention to the prominent feature
compared to the peripheral details.
2. The prospective mark must pertain to goods or services that are either
identical, similar or related to the goods or services represented by the earlier
mark.

a. Related goods and services are those that, though non-identical

or non-similar, are so logically connected to each other that they may
reasonably be assumed to originate from one manufacturer or from
economically-linked manufacturers. In determining whether goods or
services are related, several factors may be recognized:

i. The business (and its

location) to which the goods belong;
ii. The class of product to
which the goods belong;
iii. The product’s quality,
quantity, or size, including the nature of the package, wrapper or
container;
iv. The nature and cost of the
articles;
v. The descriptive properties,
physical attributes or essential characteristics with reference to
their form, composition, texture or quality;
vi. The purpose of the goods;
vii. Whether the article is
bought for immediate consumption, that is, day-to-day household
items;
viii. The fields of manufacture;
ix. The conditions under which
the article is usually purchased; and
x. The channels of trade
through which the goods flow, how they are distributed,
marketed, displayed, and sold.

A very important circumstance is whether there exists a likelihood that

an appreciable number of ordinarily prudent purchasers will be misled,
or simply confused, as to the source of the goods in question. The
simulation, in order to be objectionable, must be such as appears likely
to mislead the ordinary intelligent buyer who has a need to supply and
is familiar with the article that he seeks to purchase.
b. The two are related as it may lead to a confusion of business.

i. Petitioner uses the Mang

Inasal mark in connection with its restaurant services that is
particularly known for its chicken inasal.
 ii. The mark has been used
for petitioner’s business since 2003.
iii. Respondent seeks to
market under the OK Hotdog Inasal mark curl snack products
which it publicizes as having a cheese hotdog inasal flavor.

It is the fact that the underlying goods and services that involve inasal and inasal-
flavored products ultimately fixes the relations between such goods and
services. Thus, an average buyer is likely to be confused as to the true source
of such curls.

Skechers USA, Inc. vs. Inter Pacific Industrial Trading Corp., G.R. No. 164321, 23
March 2011

Facts:

Skechers, USA Inc. is the owner of the registered trademarks “Skechers” and “S
within an oval logo”. Skechers filed a criminal case for trademark infringement against
several store-owners that were selling shoes branded as “Strong” and bearing a similar
“S” logo. The Regional Trial Court (RTC) issued search warrants, allowing the National
Bureau of Investigation (NBI) to raid the stores and confiscate 6,000 pairs of shoes.
The accused moved to quash the warrants, saying that there was no confusing similarity
between the “Skechers” and the “Strong” brands.
The RTC granted the motion to quash and ordered the NBI to return the seized goods.
The court said that the two brands had glaring differences and that an ordinary prudent
consumer would not mistake one for the other.
On certiorari, the Court of Appeals (CA) affirmed the RTC ruling.
The matter was elevated to the Supreme Court (SC).

Issue:
Did the accused commit trademark infringement?
Ruling:
Yes, the accused is guilty of trademark infringement.
Under the IP Code (RA No. 8293).

There is trademark infringement when the second mark used is likely to cause
confusion. There are two tests to determine this:
1. Dominancy Test – the court focuses on the similarity of the dominant features of
the marks that might cause confusion in the mind of the consumer. Duplication or
imitation is not necessary. Even accidental confusion may be cause for trademark
infringement. More consideration is given to the aural and visual impressions
created by the marks on the buyers and less weight is given to factors like price,
quality, sales outlets and market segments.
Applied to this case:
The SC found that the use of the “S” symbol by Strong rubber shoes infringes on the
registered Skechers trademark. It is the most dominant feature of the mark -- one that
catches the buyer’s eye first. Even if the accused claims that there was a difference
because the “S” used by Skechers is found inside an oval, the fact that the accused used
the dominant “S” symbol already constitutes trademark infringement.
The SC disagreed with the CA reasoning that the “S” symbol is already used for many
things, including the Superman symbol. Even if this is true, the fact that Strong used same
stylized “S” symbol as that of the Skechers brand makes this a case of trademark
infringement. The same font and style was used in this case. The Superman “S” symbol
is clearly different from the “S” in this case.
2. Holistic or Totality Test – the court looks at the entirety of the marks as applied to the
products, including the labels and packaging. You must not only look at the dominant
features but all other features appearing on both marks.
Applied to this case: Both RTC and CA used the Holistic Test to rule that there was no
infringement. Both courts argued the following differences:

v The mark “S” found in Strong Shoes is not enclosed in an “oval design.”
v The word “Strong” is conspicuously placed at the backside and insoles.
v The hang tags and labels attached to the shoes bears the word “Strong” for
respondent and “Skechers U.S.A.” for private complainant;
v Strong shoes are modestly priced compared to the costs of Skechers Shoes. Also
using the Holistic Test, the SC corrected the lower courts and ruled that the striking
similarities between the products outweigh the differences argued by the respondents:
v Same color scheme of blue, white and gray;
v Same wave-like pattern on the midsole and the outer sole;
v Same elongated designs at the side of the midsole near the heel;
v Same number of ridges on the outer soles (five at the back and six in front);
v Same location of the stylized “S” symbol;
v The words "Skechers Sport Trail" at the back of the Skechers shoes and "Strong
Sport Trail" at the back of the Strong shoes, using the same font, color, size, direction
and orientation;
v Same two grayish-white semi-transparent circles on top of the heel collars.
The features and overall design of the two products are so similar that there is a high
likelihood of confusion.
Two products do not need to be identical, they just need to be similar enough to
confuse the ordinary buyer in order to constitute trademark infringement (Converse
Rubber Corporation v. Jacinto Rubber & Plastic Co., 186 Phil. 85 [1980]). Also, the
difference in price cannot be a defense in a case for trademark infringement
(McDonald’s Corporation v. L.C. Big Mak Burger, Inc., 480 Phil. 402,434 [2004]).

In this case, it is clear that there was an attempt to copy the trademark owner’s mark
and product design. In trademark infringement cases, you do not need to copy
another's mark or product exactly. Colorable imitation is enough.
 27. Philippine Nut Industry, Inc. vs. Standard Brands Incorporated et al, G.R. No.
L- 2305, 31 July 1975

Facts:

This case revolves around a dispute over trademark rights between two
companies: Philippine Nut Industry, Inc. (referred to as Philippine Nut) and
Standard Brands Incorporated (referred to as Standard Brands). Philippine Nut
had obtained a Certificate of Registration for the trademark "PHILIPPINE
PLANTERS CORDIAL PEANUTS" for its salted peanuts. Standard Brands filed a
complaint with the Director of Patents, seeking the cancellation of Philippine Nut's
trademark registration, arguing that it owned the trademark "PLANTERS
COCKTAIL PEANUTS" and that the two trademarks were confusingly similar.

Issue:

Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS"

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

Ruling:

Yes. As to appearance and general impression of the two trademarks, the

Supreme Court said it found a very confusing similarity. The word PLANTERS printed
across the upper portion of the label in bold letters easily attracts and catches the eye of
the ordinary consumer and it is that word and none other that sticks in his mind when he
thinks of salted peanuts. The Supreme Court also held that although it is true that no
producer or manufacturer may have a monopoly of any color scheme or form of words in
a label, but when a competitor adopts a distinctive or dominant mark or feature of
another's trademark and with it makes use of the same color ensemble, employs similar
words written in a style, type and size of lettering almost identical with those found in the
other trademark, the intent to pass to the public his product as that of the other is quite
obvious. It deceives the public.
 Hence, the decision of respondent Director of Patents was affirmed.

McDonalds Corporation vs. Macjoy Fastfood Corporation, G.R. No. 166115,

2 February 2007

Facts:

This case revolves around a trademark dispute between McDonald’s Corporation

(petitioner) and MacJoy Fastfood Corporation (respondent). MacJoy sought to register
the trademark "MACJOY & DEVICE" for various food products, while McDonald’s
opposed this registration, claiming that it would cause confusion with its own
"McDonald's" marks.

The Intellectual Property Office (IPO) initially ruled in favor of McDonald's, rejecting
MacJoy's application. However, the Court of Appeals (CA) reversed this decision, finding
no confusing similarity between the two trademarks. McDonald's then filed a petition for
review before the Supreme Court.

Issue:
W/N there is a confusing similarity between MACJOY and MCDONALDS
trademarks as to justify the IPO’s rejection of Macjoy’s trademark application.

Ruling:

YES. Both marks use the corporate "M" design logo and the prefixes "Mc" and/or
"Mac" as dominant features. The first letter "M" in both marks puts emphasis on the
prefixes "Mc" and/or "Mac" by the similar way in which they are depicted. It is the prefix
"Mc," an abbreviation of "Mac," which visually and aurally catches the attention of the
consuming public.

Both trademarks are used in the sale of fast food products. Indisputably, the
respondent’s trademark application for the "MACJOY & DEVICE" trademark covers
goods under Classes 29 and 30 of the International Classification of Goods, namely, fried
chicken, chicken barbecue, burgers, fries, spaghetti, etc. McDonald’s registered
trademark covers goods similar if not identical to those covered by the respondent’s
application.
 By reason of the respondent’s implausible and insufficient explanation as to how
and why out of the many choices of words it could have used for its trade-name and/or
trademark, it chose the word "MACJOY," the only logical conclusion deducible therefrom
is that the respondent would want to ride high on the established reputation and goodwill
of the MCDONALD’s marks, which, as applied to petitioner’s restaurant business and
food products, is undoubtedly beyond question.
WHEREFORE, the instant petition is GRANTED. Accordingly, the assailed
Decision and Resolution of the Court of Appeals are REVERSED and SET ASIDE and
the Decision of the Intellectual Property Office in Inter Parties is REINSTATED.

Del Monte Corporation et al vs. CA et al, G.R. No. L- 78325, 25 January 1990

Facts:

Del Monte Corporation is a foreign company, and Philippine Packing Corporation

(Philpack) is a domestic corporation with the right to use Del Monte's trademark. Sunshine
Sauce Manufacturing Industries obtained a Certificate of Registration to engage in the
manufacture and sale of various kinds of sauce under the logo "Sunshine Fruit Catsup,"
which was registered in the Supplemental Register.

Both Del Monte and Sunshine produced catsup in bottles that had similarities in
appearance. Del Monte and Philpack filed a complaint against Sunshine for infringement
of trademark and unfair competition.

Issue:

Whether or not there is confusing similarity between the two trademarks.

Ruling:
Yes. At that, even if the labels were analyzed together it is not difficult to see that
the Sunshine label is a colorable imitation of the Del Monte trademark. The predominant
colors used in the Del Monte label are green and red-orange, the same with Sunshine.
The word “catsup” in both bottles is printed in white and the style of the print/letter is the
same. Although the logo of Sunshine is not a tomato, the figure nevertheless
approximates that of a tomato.

As previously stated, the person who infringes a trade mark does not normally
copy out but only makes colorable changes, employing enough points of similarity to
confuse the public with enough points of differences to confuse the courts. What is
undeniable is the fact that when a manufacturer prepares to package his product, he has
before him a boundless choice of words, phrases, colors and symbols sufficient to
distinguish his product from the others. When as in this case, Sunshine chose, without a
reasonable explanation, to use the same colors and letters as those used by Del Monte
though the field of its selection was so broad, the inevitable conclusion is that it was done
deliberately to deceive.

Emerald Garment Manufacturing Corp. vs. CA et al, G.R. No. 100098, 29

December 1995

Facts:

This case revolves around a trademark dispute between Emerald Garment

Manufacturing Corporation (Emerald), a domestic corporation, and H.D. Lee Company,
Inc. (H.D. Lee), a foreign corporation. H.D. Lee filed a petition for the cancellation of
Emerald's trademark registration for "STYLISTIC MR. LEE" under Class 25, alleging that
it was confusingly similar to H.D. Lee's "LEE" trademark, which it had previously
registered and used in the Philippines.

Emerald argued that its trademark was distinct from H.D. Lee's and that its
certificate of registration was valid. However, the Director of Patents found in favor of
H.D. Lee, stating that the two trademarks were confusingly similar, with "LEE" being the
dominant feature.

Emerald appealed the decision to the Court of Appeals, which affirmed the
Director's decision. The Court of Appeals applied the "test of dominancy" to determine
trademark similarity and concluded that the use of "LEE" in both trademarks would likely
cause confusion among consumers, especially considering that both parties operated in
the same business.

Emerald then filed a motion for reconsideration with new arguments and defenses,
including laches and claims that H.D. Lee had altered its trademark to resemble
Emerald's. The Court of Appeals rejected these arguments, stating that they were raised
for the first time on appeal and were outside the issues originally raised in the lower court.

Issue:

Whether the trademark “STYLISTIC MR. LEE” is confusingly similar to the

trademark “LEE”.

Ruling:
 NO. Emerald's trademark is the whole "STYLISTIC MR. LEE." Although on its label
the word "LEE" is prominent, the trademark should be considered as a whole and not
piecemeal. The dissimilarities between the two marks become conspicuous, noticeable
and substantial enough to matter especially in the light of the following variables that must
be factored in.

Bristol Myers Company vs. Director of Patents, G.R. No. L-21587, 19 May
1966

Facts:

United American Pharmaceuticals, Inc. (UAPI) applied for the registration of the
trademark "BIOFERIN" with the Philippine Patent Office. The trademark was intended for
a medicinal preparation used in treating common colds, influenza, and other febrile
diseases with capillary hemorrhagic tendencies. Bristol Myers Company (Bristol Myers),
the owner of the trademark "BUFFERIN" in the Philippines, opposed the application,
alleging that "BIOFERIN" was confusingly similar to their registered mark "BUFFERIN."
Both products fell under Class 6, Medicines and Pharmaceutical Preparations.

The issue revolved around whether the trademarks "BIOFERIN" and "BUFFERIN"
were confusingly similar, potentially leading to consumer confusion in the marketplace.
Bristol Myers argued that the similarities in the spelling, pronunciation, and use of both
products for pain relief created confusion.

Issue:

WON petitioner application for registration of a mark is infringing on respondent

mark.

Ruling:
No. In determining whether two trademarks are confusingly similar, the court
implies in this case that the phonetic test is not the only determining factor. The test is not
simply to take their words and compare the spelling and pronunciation of said words.
Rather, it is consider the two marks in their entirety, as they appear in the respective
consider labels, in relation to the goods to which they are attached. Said rule was
enunciated by this Court through Justice Felix Bautista Angelo in Mead Johnson & Co.,
vs. N.V.J. Van Dorp, Ltd.
 Prosource International, Inc. vs. Horphag Research Management, SA., G.R.
No. 180073, 25 November 2009

Facts:

Prosource International, Inc. (Prosource) filed an application with the Bureau of

Patents seeking to register the trademark "Pycnogenol" for its food supplements.
Horphag Research Management, SA. (Horphag), a Swiss company, opposed the
registration, asserting that it was the prior user and registrant of the "Pycnogenol"
trademark, particularly for a dietary supplement derived from pine bark extract. Horphag
argued that Prosource's use of the same trademark for a similar product would create
confusion among consumers.

The Bureau of Legal Affairs (BLA) of the Intellectual Property Office (IPO) initially
dismissed Horphag's opposition and granted Prosource's application. However, the
Director of the IPO reversed the BLA's decision and denied Prosource's application,
agreeing with Horphag that there was a likelihood of confusion. Prosource then filed a
petition with the Court of Appeals (CA) to review the Director's decision. The CA affirmed
the Director's ruling, prompting Prosource to elevate the case to the Supreme Court.

Issue:

Whether the names are confusingly similar.

Ruling:

Yes. There is confusing similarity and the petition is denied. Jurisprudence

developed two test to prove such.

The Dominancy Test focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion and deception, thus constituting
infringement. If the competing trademark contains the main, essential and dominant
features of another, and confusion or deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the infringing label
should suggest an effort to imitate. The question is whether the use of the marks involved
is likely to cause confusion or mistake in the mind of the public or to deceive purchasers.
Courts will consider more the aural and visual impressions created by the marks in the
public mind, giving little weight to factors like prices, quality, sales outlets, and market
segments.

The Holistic Test entails a consideration of the entirety of the marks as applied to
the products, including the labels and packaging, in determining confusing similarity. Not
only on the predominant words should be the focus but also on the other features
appearing on both labels in order that the observer may draw his conclusion whether one
is confusingly similar to the other.

SC applied the Dominancy Test. Both the words have the same suffix "GENOL"
which on evidence, appears to be merely descriptive and furnish no indication of the origin
of the article and hence, open for trademark registration by the plaintiff through
combination with another word or phrase. When the two words are pronounced, the
sound effects are confusingly similar not to mention that they are both described by their
manufacturers as a food supplement and thus, identified as such by their public
consumers. And although there were dissimilarities in the trademark due to the type of
letters used as well as the size, color and design employed on their individual
packages/bottles, still the close relationship of the competing products’ name in sounds
as they were pronounced, clearly indicates that purchasers could be misled into believing
that they are the same and/or originates from a common source and manufacturer.

Fruit of the Loom, Inc. vs. CA et al, G.R. No. L-32747, 29 November 1984

Facts:

Fruit of the Loom, Inc. (Fruit of the Loom) filed a complaint for trademark
infringement and damages against Court of Appeals (CA) Justice Ramon Gaviola, Enrico
Tansingco, Lourdes Tansingco, and La Estrella, Inc. Fruit of the Loom claimed that the
defendants were importing, selling, and distributing counterfeit Fruit of the Loom
underwear products bearing the same trademark. The trial court found in favor of Fruit of
the Loom and ordered the defendants to pay damages.

On appeal to the CA, the court reversed the trial court's decision, ruling that there
was no trademark infringement and that the defendants were not liable for damages. Fruit
of the Loom then appealed to the Supreme Court to challenge the CA's decision.

Issue: Whether there was an infringement of the trademark of Fruit of the Loom.
Ruling:

No. The trademarks “Fruit of the Loom” and “Fruit for Eve” do not resemble each
other as to confuse or deceive an ordinary purchaser. No confusion would arise in the
pronunciation of the two marks. Further, the similarities of the competing trademarks are
completely lost in the substantial difference in the design and general appearance of their
respective hang tags. For one to be confusingly similar to another, the discerning eye of
the observer must focus not only on the predominant words but also on the other features
appearing in the labels.

McDonalds Corporation et al vs. L.C. Big Mak Burger, Inc., G.R. No. 143993,
18 August 2004

Facts:
LC BigMak engaged in fast food and used the wordb“BigMak” and in all its products
(spaghetti and etc.) McDonalds uses BigMac but only for its burgers. Contention of LC
BigMaK: They offer it to a different class. Contention of McDonalds: It would result in
confusion of goods

Issue: Can McDonalds prevent LC BigMak from using the word BigMac?

Ruling:

LC BigMak uses it not only for sandwiches but for other types of food items. They
have different types of markets. McDonalds catering to upper class consumers and
BigMak to lower class consumers. They are sold differently as BigMaK is usually sold in
mobile stores. But, even if BigMak can say that there can be no tendency of confusion
but what it is referring to is the confusion of goods.

They now adopt a different type of confusion which is the confusion of business.
Although they cater to a different type of class of consumers, it is not far-fetched that the
consuming public will be misled in thinking that McDonalds has already extended its
business to the type of business that LC BigMak is engaged in or is any way connected
to the activities of the infringer and more importantly, the business of LC BigMak while it
is allowed to use the word, would forestall the normal potential expansion of the business
of McDonalds. We now have confusion of business. You cannot discount the possibility
that the consumers will be led to believe that it has already expanded its business. It is a
possible conclusion because both deals with food, the food players in the food industry.
The complaint filed by McDonalds is but an act of guarding his goods or businesses
considering that it is a well-known International Brand just like what happened with
MacJoy. Now, they have changed to MyJoy.

The Court said that owners of LC BigMak can no longer use the word BigMak. And
even if McDonalds have no immediate plans of expanding its business to that type of food
distribution, still it would prove injurious on the part of McDonalds brand because the type
of food that LC BigMak is selling is way inferior to that of McDonalds, so it has created
confusion on the part of consumers thinking that McDonalds already deteriorated its
quality of food. It will affect their main business. Protecting, guarding their goods and
business from actual market competition with identical or similar products of the parties.
With respect to whether or not goods are related or not. The Court has ruled in favor of
goods that are considered as not confusingly similar in the case of Faberge Incorporated
v. IAC.

Etepha, A.G. vs. Director of Patents, et. al.

G.R. No. L- 20635, 31 March 1966

Facts: Respondent Westmont Pharmaceuticals, Inc. sought to register Atussin trademark

for preparation of medicines treating cough. Petitioner Etepha opposed alleging that said
trademark is confusingly similar to its Pertussin and that the public would be misled into
believing that respondent’s product is of petitioner’s.

Issue: Whether or not Atussin trademark be registered regardless of the registered mark
Pertussin

Ruling: Yes. Application for the registration of trademark Atussin should be given due
course.

The Court ruled that Tussin is generic. It furnishes to the buyer no indication of the origin
of the goods and is open for appropriation by anyone. It is accordingly barred from
registration as trademark. However, the same may become the subject of a trademark by
combination with another word or phrase.

A decision of the United States Court of Customs and Patent Appeals, as cited in this
case, provides that confusion is likely between trademarks, however, only if their overall
presentations in any of the particulars of sound, appearance, or meaning are such as
would lead the purchasing public into believing that the products to which the marks are
applied emanated from the same source.

In this case, trademark Atussin is in bold, block letters horizontally written, while Pertussin
is printed diagonally upwards and across in semiscript style with flourishes and with only
the first letter P capitalized. Thus, the two labels differ from each other.
 Marvex Commercial Co., Inc. vs. Petra Hawpia and Co. et al
G.R. No. L-19297, 22 December 1966

Facts: An application for registration of LIONPAS trademark on medicated plaster was

filed by the respondent. Allegedly, the trademark was used in the Philippines since 1958.

An opposition was filed by the petitioner. It averred that the registration of respondent’s
trademark would mislead the public as both trademarks are used on medicated plaster.

The opposition was dismissed. The Director of Patents held that confusion will not unlikely
occur.

Issue: Whether or not LIONPAS trademark is confusingly similar to SALONPAS

trademark

Ruling: Yes. LIONPAS and SALONPAS are confusingly similar in sound.

Pas, being merely descriptive, furnishes no indication of the origin of the article and
therefore is open for appropriation by anyone and may properly become the subject of a
trademark by combination with another word or phrase. However, when the two words
are pronounced, the sound effects are confusingly similar.
Similarity of sound is sufficient ground to rule that the two marks are confusingly similar
when applied to merchandise of the same descriptive properties.

Meanwhile, under sections 2 and 2-A of the Trade Mark Law, as amended, the right to
register trademarks, tradenames and service marks by any person, corporation,
partnership or association domiciled in the Philippines or in any foreign country, is based
on ownership, and the burden is upon the applicant to prove such ownership.

In this case, it was discovered that letter sender OSAKA BOEKI KAISHA LTD to
respondent assigning its rights over the tradename LIONPAS Medicated Plaster, was
merely a representative of the manufacturer ASUNARO PHARMACEUTICAL INDUSTRY
CO. and that the signature thereon was not legible.

The Court ruled that the assignment must be in writing, acknowledged before a notary
public or other officer authorized to administer oaths.

Societe Des Produits Nestlé S.A. vs. Dy

G.R. No. 172276, 8 August 2010

Facts: Petitioner Societe Des Produits Nestlé S.A (Nestlé for brevity) owns the NAN
trademark for infant powdered milk products consisting of PRE-HAN, NAN-H.A., NAN-1
and NAN-2.

On the other hand, respondent Dy. Jr. imports Sunny Boy powdered milk from Australia
and repacks the powdered milk bearing the name NANNY.
A complaint was filed against Dy, nevertheless, dismissed. Nestlé appealed. CA
remanded the case to the trial court for further proceedings. The trial court held Dy Jr.
liable for infringement. On appeal, CA reversed the trial court.

Issue: Whether or not NAN trademark and NANNY trademarks are confusingly similar

Ruling: Yes. Both marks are confusingly similar.

Section 22 of Republic Act (R.A.) No. 166, as amended, states:

Infringement, what constitutes. — Any person who shall use, without the consent of the
registrant, any reproduction, counterfeit, copy or colorable imitation of any registered
mark or trade-name in connection with the sale, offering for sale, or advertising of any
goods, business or services on or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the source or origin of such
goods or services, or identity of such business; or reproduce, counterfeit, copy or
colorably imitate any such mark or trade-name and apply such reproduction, counterfeit,
copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods, business or
services, shall be liable to a civil action by the registrant for any or all of the remedies
herein provided.

Applying the dominancy test in the present case, the Court finds that "NANNY" is
confusingly similar to "NAN." "NAN" is the prevalent feature of Nestle’s line of infant
powdered milk products. It is written in bold letters and used in all products. The line
consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly, "NANNY" contains the
prevalent feature "NAN." The first three letters of "NANNY" are exactly the same as the
letters of "NAN." When "NAN" and "NANNY" are pronounced, the aural effect is
confusingly similar.

The Court agrees with the lower courts that there are differences between NAN and
NANNY: (1) NAN is intended for infants while NANNY is intended for children past their
infancy and for adults; and (2) NAN is more expensive than NANNY. However, as the
registered owner of the "NAN" mark, Nestlé should be free to use its mark on similar
products, in different segments of the market, and at different price levels.
 The Alhambra Cigar and Cigarette Manufacturing Co. vs.
Compania General de Tabacos Filipinas
G.R. No. L-11490, 14 October 1916

Facts: Plaintiff is manufacturing cigars named Especiales Alhambra since the year 1906.
Each of its cigar is encircled with a band of a brown color.

Defendant’s cigar was named Especiales and is encircled with a brown collared band,
with the words Especiales Isabela.

A complaint for unfair competition was filed against defendant for imitating plaintiff’s
cigars and with the intent to deceive the public and defraud the plaintiff.

The lower court ruled that there is insufficient similarity to justify the inference of actual
intent on defendant’s part to deceive the public and defraud a competitor.

Issue: Whether or not the resemblance between the two packages and labels would
mislead the public

Ruling: No. They are so essentially different that no one of ordinary intelligence desiring
to buy the one kind of tobacco would mislead into buying a package of the other.

The allegation of unfair competition cannot be based upon the fact that by a close
examination a similarity may be found. The similarity or simulation must be use as to
defraud and deceive the purchaser into the belief that he is purchasing the goods of one
person believing them to be the goods of another. The question is whether, taking the
defendant's package and label as a whole, it so far copies or resembles the plaintiff's
package and label, that a person of ordinary intelligence would be misled into buying the
one supposing he was buying the other.

Under Section 7 of Act 666, anyone who sells goods packed, or labeled, or otherwise
prepared in such a manner to induce intending purchasers to believe that the goods are
of a make or origin other than the true, or who clothes his goods with a certain appearance
for the purpose of deceiving the public, is deemed guilty of unfair competition. The true
test of unfair competition is whether certain goods have been intentionally clothed with an
appearance which is likely to deceive the ordinary purchaser, exercising ordinary care,
and not whether a certain limited class of purchasers, with special knowledge not
possessed by the ordinary purchaser, could avoid a mistake by the exercise of this special
knowledge.
In the present case there is no proof in the record that any persons had been deceived
into purchasing the cigars of the defendant, believing that he was purchasing the cigars
of the plaintiff. There is no proof that any person or persons were actually deceived.

The Court ruled that no similarity in the shape of the two. The color is not exactly the
same. The lettering is different; the names are different. The shape of the band is very
different from the shape of the ring. There is also a marked difference in the color of the
two. One contains fifty cigars while the other contains twenty-five. One is thick and blunt,
while the other is much thinner, pointed and shorter. While both are of a brownish color
they are not of the same brown color. One is generally called a band while the other is a
ring.

There is no attempt on the part of the defendant to simulate the box or the label used by
the plaintiff. Hence, a person with reasonable or ordinary care could never be deceived
into purchasing the cigar of the defendant.

Taiwan Kolin Corporation Ltd. vs. Kolin Electronics Co., Inc.

G.R. No. 209843, 25 March 2015

Facts: Herein petitioner filed an application for registration of KOLIN trademark for
televisions, refrigerators, air conditioners, electric fans and water dispensers, etc. under
Class 9.

Respondent opposed considering that plaintiff’s trademark is identical with their KOLIN
mark also under Class 9.

The BLA-IPO ruled in favor of the respondents as both trademarks are identical and under
the same classification. However, on appeal, the IPO Director General reversed the
decision stating that emphasis should be on the similarity of the products involved and
not on the arbitrary classification or general description of their properties or
characteristics. The mere fact that one person has adopted and used a trademark on his
goods would not, without more, prevent the adoption and use of the same trademark by
others on unrelated articles of a different kind.

On appeal filed by respondents with CA, the assailed decision was reversed.

Issue: Whether or not petitioner is entitled to its KOLIN trademark registration

Ruling: Yes. Petitioner’s trademark registration should be given due course. The
products covered by both parties are unrelated.

In resolving the issues on relatedness on the goods, the following factors must be
observed: (a) the business (and its location) to which the goods belong; (b) the class of
product to which the goods belong; (c) the product’s quality, quantity, or size, including
the nature of the package, wrapper or container; (d) the nature and cost of the articles;
(e) the descriptive properties, physical attributes or essential characteristics with
reference to their form, composition, texture or quality; (f) the purpose of the goods; (g)
whether the article is bought for immediate consumption, that is, day-to-day household
items; (h) the fields of manufacture; (i) the conditions under which the article is usually
purchased; and (j) the channels of trade through which the goods flow, how they are
distributed, marketed, displayed and sold

The Court found that there are differences between the two marks. It noted the distinct
visual and aural differences. Respondent’s mark is italicized and colored black while
petitioner’s mark is white in pantone red color background. Thus, incapable of deceiving
the ordinary intelligent buyer. Moreover, petitioner’s products belong to audio visual
equipment while respondent’s consists devices for controlling the distribution and use of
electricity.

Del Monte Corporation, et. al. vs. CA, et. al.

G.R. No. L- 78325, 25 January 1990

Facts: Petitioner granted Philpack the right to manufacture and sell agricultural products
including catsup in the Philippines under the Del Monte trademark and logo.

Respondent Sunshine Sauce Manufacturing Industries (Sunshine for brevity) is engaged

in the manufacture of various kinds of sauce using Sunshine Fruit Catsup logo.

Petitioner filed a complaint for trademark infringement and unfair competition against
Sunshine on the ground that both parties’ designed bottles and logos are confusingly
similar.

The trial court dismissed the complaint, and the same was affirmed by CA.

Issue: Whether or not there exists confusing similarity between parties’ trademarks

Ruling: Yes. Both trademarks are confusingly similar.

The person who infringes a trademark does not normally copy out but only makes
colorable changes, employing enough points of similarity to confuse the public with
enough points of differences to confuse the courts. When a manufacturer prepares to
package his product, he has before him a boundless choice of words, phrases, colors
and symbols sufficient to distinguish his product from the others.
The Court held that Sunshine label is a colorable imitation of the Del Monte trademark.
The predominant color used by the petitioners are green and orange, same with
Sunshine. Also, the same styled “catsup” was printed in both bottles. Although the logo
of Sunshine is not a tomato, the figure nevertheless approximates that of a tomato.
Moreover, Sunshine chose, without reasonable explanations, to use the same colors and
letters as those used by Del Monte though the field of its selection was so broad, the
inevitable conclusion is that was done deliberately to deceive.

Coca Cola Bottlers, Phils., Inc. vs. Gomez, et. al.

G.R. No. 154491, 14 November 2008

Facts: A search warrant was issued against herein respondent upon petitioner Coca
Cola’s application for the same. The latter averred that the former allegedly hoarding
empty Coke bottles, an act penalized as unfair competition under the IP Code.

However, the both MTC and RTC dismissed the petition. Hence, petitioner filed a petition
for review on certiorari.

Issue: Whether or not the possession of empty coke bottles is an act of hoarding as
defined in IP Code

Ruling: No. It is not an act of hoarding within the contemplation of IP code.

Section 168. Unfair Competition, Rights, Regulation and Remedies. –

168.1. A person who has identified in the mind of the public the goods he manufactures
or deals in, his business or services from those of others, whether or not a registered
mark is employed, has a property right in the goodwill of the said goods, business or
services so identified, which will be protected in the same manner as other property rights.

168.2. Any person who shall employ deception or any other means contrary to good faith
by which he shall pass off the goods manufactured by him or in which he deals, or his
business, or services for those of the one having established such goodwill, or who shall
commit any acts calculated to produce said result, shall be guilty of unfair competition,
and shall be subject to an action therefor.

168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:

(a) Any person, who is selling his goods and gives them the general appearance of goods
of another manufacturer or dealer, either as to the goods themselves or in the wrapping
of the packages in which they are contained, or the devices or words thereon, or in any
other feature of their appearance, which would be likely to influence purchasers to believe
that the goods offered are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such appearance as
shall deceive the public and defraud another of his legitimate trade, or any subsequent
vendor of such goods or any agent of any vendor engaged in selling such goods with a
like purpose;

(b) Any person who by any artifice, or device, or who employs any other means calculated
to induce the false belief that such person is offering the services of another who has
identified such services in the mind of the public; or

(c) Any person who shall make any false statement in the course of trade or who shall
commit any other act contrary to good faith of a nature calculated to discredit the goods,
business or services of another.

Unfair competition has been defined as the passing off (or palming off) or attempting to
pass off upon the public the goods or business of one person as the goods or business
of another with the end and probable effect of deceiving the public. It formulated the "true
test" of unfair competition: whether the acts of defendant are such as are calculated to
deceive the ordinary buyer making his purchases under the ordinary conditions which
prevail in the particular trade to which the controversy relates. One of the essential
requisites in an action to restrain unfair competition is proof of fraud; the intent to deceive
must be shown before the right to recover can exist.

The Court concluded that the "hoarding", as defined and charged by the petitioner, does
not fall within the coverage of the IP Code and of Section 168 in particular. It does not
relate to any patent, trademark, trade name or service mark that the respondents have
invaded, intruded into or used without proper authority from the petitioner.
 Superior Commercial Enterprises, Inc. vs. Kunan Enterprises Ltd et al
G.R. No. 169974, 20 April 2010

Facts: A complaint for trademark infringement and unfair competition was filed by
Superior Commercial Enterprises, Inc. (Superior) against Kunnan and Sports Concept.
The complaint alleged that Superior claimed to be the owner of the trademarks, trading
styles, company names and business names KENNEX, KENNEX & DEVICE, PRO
KENNEX, and PRO-KENNEX, and asserted its prior use of the same.

On the other hand, Kunnan intends to acquire the ownership of KENNEX trademark
registered by Superior in the Philippines. It averred that Superior was merely its distributor
and could not be the owner of the marks.

The trial court held Kunnan liable for trademark infringement and unfair competition.

The IPO and CA set aside the trial court’s ruling. It held that Superior failed to establish
by preponderance of evidence its claim of ownership over the KENNEX and PRO
KENNEX trademarks. It was proven that actual use by Superior is not in the concept of
an owner but as a mere distributor. As an exclusive distributor, Superior did not acquire
any proprietary interest in the principal’s trademark.

Issue: Whether or not Superior, a distributor, has the exclusive right to use the subject
trademarks

Ruling: No. A mere distributor of a product bearing a trademark even if permitted to use
said trademark has no right to and cannot register the said trademark.

R.A. 166, Section 22. Infringement, what constitutes. — Any person who shall use,
without the consent of the registrant, any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name in connection with the sale, offering for
sale, or advertising of any goods, business or services on or in connection with which
such use is likely to cause confusion or mistake or to deceive purchasers or others as to
the source or origin of such goods or services, or identity of such business; or reproduce,
counterfeit, copy, or colorably imitate any such mark or trade-name and apply such
reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with
such goods, business or services, shall be liable to a civil action by the registrant for any
or all of the remedies herein provided.

The right to register a trademark should be based on ownership. When the applicant is
not the owner of the trademark being applied for, he has no right to apply for the
registration of the same. Under the Trademark Law, only the owner of the trademark,
trade name or service mark used to distinguish his goods, business or service from the
goods, business or service of others is entitled to register the same. An exclusive
distributor does not acquire any proprietary interest in the principal’s trademark and
cannot register it in his own name unless it has been validly assigned to him.

To establish trademark infringement, the following elements must be proven: (1) the
validity of plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the
mark or its colorable imitation by the alleged infringer results in "likelihood of confusion."

As a mere distributor, Superior had no right to register the mark in its name.

Shell Company, Ltd. vs. Insular Petroleum Refining Co. et al

G.R. No. L-19441, 30 June 1964

Facts: Petitioner is engaged in the sale of petroleum products and lubricating oil. On the
other hand, respondent is collecting used lubricating oil and marked the same to the public
at a lower price.

A complaint for unfair competition was filed by petitioner against the respondent. It alleged
that respondent was selling the used oil in Shell containers without erasing Shell
markings, thus misleading the public.

The CFI favored the petitioner. Nevertheless, the CA reversed the judgment.

Issue: Whether or not respondent is guilty of unfair competition

Ruling: No. Respondent is not liable for unfair competition.

As held by the Court, there was no evidence that respondent has passed off or attempted
to pass off his own goods as those of another and that the customer was deceived with
respect to the origin of the goods. Respondent's practices in marketing its low-grade oil
did not cause actual or probable deception and confusion on the part of the general public.

The CA found that in all transactions of the low-grade Insoil, except one, all the marks
and brands on the containers used were erased. The drum in question did not reach the
buying public. Hence, the single transaction will not render respondent liable for unfair
competition.
REPUBLIC GAS CORPORATION, et. al. vs. PETRON CORPORATION, et.al.
G.R. No. 194062, June 17, 2013

Facts: Pilipinas Shell is the authorized user in the Philippines of the marks SHELLANE
and SHELL device in regard to the sale of SHELLANE LPGs, while Republic Gas
Corporation is licensed to engage in buying and selling LPG.

Reports were received that some entities were engaged in the unauthorized refilling and
selling LPG cylinders bearing the trademarks of the respondents. Hence, the application
for the issuance of search warrants.

A complaint for trademark infringement was filed by the NBI against the petitioners. The
DOJ dismissed the same, however, reversed by CA.

Issue: Whether or not petitioners are guilty of trademark infringement and unfair
competition

Ruling: Yes. Petitioners are liable for trademark infringement and unfair competition.

The mere unauthorized use of a container bearing a registered trademark in connection

with the sale, distribution or advertising of goods or services which is likely to cause
confusion, mistake or deception among the buyers or consumers can be considered as
trademark infringement.

Unfair competition has been defined as the passing off (or palming off) or attempting to
pass off upon the public of the goods or business of one person as the goods or business
of another with the end and probable effect of deceiving the public.

Passing off (or palming off) takes place where the defendant, by imitative devices on the
general appearance of the goods, misleads prospective purchasers into buying his
merchandise under the impression that they are buying that of his competitors. Thus, the
defendant gives his goods the general appearance of the goods of his competitor with the
intention of deceiving the public that the goods are those of his competitor.

In the case at bar, without respondents’ consent, petitioners refilled LPG containers
bearing the former’s marks causing confusion to the public since they have no way of
knowing that the gas contained in the LPG tanks bearing respondents’ marks is in reality
not the latter’s LPG product after the same had been illegally refilled. The public will then
be led to believe that petitioners are authorized refillers and distributors of respondents’
LPG products, considering that they are accepting empty containers of respondents and
refilling them for resale.
 COFFEE PARTNERS, INC. vs. SAN FRANCISCO COFFEE & ROASTERY, INC.,
G.R. No. 169504, March 3, 2010

Facts:

Coffee Partners, Inc., a local corporation, is involved in establishing and

maintaining coffee shops in the Philippines. It registered with the SEC in January 2001
and has a franchise agreement with Coffee Partners Ltd. (CPL), a British Virgin Island
company, for a non-exclusive right to operate coffee shops in the Philippines using
CPL's trademarks, such as "SAN FRANCISCO COFFEE." The respondent, a local
corporation, has a customer base including Figaro Company, Tagaytay Highlands, and
Fat Willy's. In 1998, the respondent formed a joint venture with Boyd Coffee USA, Boyd
Coffee Company Philippines, Inc. (BCCPI), which engaged in processing, roasting, and
wholesale selling of coffee.

In June 2001, the respondent discovered that the petitioner was about to open a
coffee shop under the name "SAN FRANCISCO COFFEE" in Libis, Quezon City. The
respondent demanded that the petitioner stop using the name and filed a complaint with
the Bureau of Legal Affairs-Intellectual Property Office (BLA-IPO) for infringement
and/or unfair competition with claims for damages. The petitioner denied the allegations
and maintained that its mark could not be confused with the respondent's trade name
due to notable distinctions in their appearances.

Petitioner claims no confusion is likely to occur between its trademark and

respondent’s trade name because of a wide divergence in the channels of trade,
petitioner serving ready-made coffee while respondent is in wholesale blending,
roasting, and distribution of coffee. Lastly, petitioner avers the proper noun "San
Francisco" and the generic word "coffee" are not capable of exclusive appropriation.

The petitioner also argued that the respondent did not cite any specific acts that
would lead one to believe that the petitioner had fraudulently passed off its mark or
diverted business away from it.
Issue:
The sole issue is whether Coffee Partners’s use of the trademark "SAN
FRANCISCO COFFEE" constitutes infringement of respondent’s trade name "SAN
FRANCISCO COFFEE & ROASTERY, INC.," even if the trade name is not registered
with the Intellectual Property Office (IPO).

Ruling:
Yes. The petition has no merit. Petitioner contends that when a trade name is not
registered, a suit for infringement is not available. Petitioner alleges respondent has
abandoned its trade name. Petitioner points out that respondent’s registration of its
business name with the DTI expired on 16 June 2000 and it was only in 2001 when
petitioner opened a coffee shop in Libis, Quezon City that respondent made a belated
effort to seek the renewal of its business name registration. Petitioner stresses
respondent’s failure to continue the use of its trade name to designate its goods
negates any allegation of infringement. Petitioner claims no confusion is likely to occur
between its trademark and respondent’s trade name because of a wide divergence in
the channels of trade, petitioner serving ready-made coffee while respondent is in
wholesale blending, roasting, and distribution of coffee. Lastly, petitioner avers the
proper noun "San Francisco" and the generic word "coffee" are not capable of exclusive
appropriation.

A trade name need not be registered with the IPO before an infringement suit
may be filed by its owner against the owner of an infringing trademark. All that is
required is that the trade name is previously used in trade or commerce in the
Philippines.11

Section 22 of Republic Act No. 166,12 as amended, required registration of a

trade name as a condition for the institution of an infringement suit, to wit:

Sec. 22. Infringement, what constitutes. – Any person who shall use, without the
consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of
any registered mark or trade name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection with which such use
is likely to cause confusion or mistake or to deceive purchasers or others as to the
source or origin of such goods or services, or identity of such business; or reproduce,
counterfeit, copy, or colorably imitate any such mark or trade name and apply such
reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages,
wrappers, receptacles, or advertisements intended to be used upon or in connection
with such goods, business, or services, shall be liable to a civil action by the registrant
for any or all of the remedies herein provided. (Emphasis supplied)
 Applying either the dominancy test or the holistic test, petitioner’s "SAN
FRANCISCO COFFEE" trademark is a clear infringement of respondent’s "SAN
FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SAN
FRANCISCO COFFEE" are precisely the dominant features of respondent’s trade
name. Petitioner and respondent are engaged in the same business of selling coffee,
whether wholesale or retail. The likelihood of confusion is higher in cases where the
business of one corporation is the same or substantially the same as that of another
corporation. In this case, the consuming public will likely be confused as to the source of
the coffee being sold at petitioner’s coffee shops. Petitioner’s argument that "San
Francisco" is just a proper name referring to the famous city in California and that
"coffee" is simply a generic term, is untenable. Respondent has acquired an exclusive
right to the use of the trade name "SAN FRANCISCO COFFEE & ROASTERY, INC."
since the registration of the business name with the DTI in 1995. Thus, respondent’s
use of its trade name from then on must be free from any infringement by similarity. Of
course, this does not mean that respondent has exclusive use of the geographic word
"San Francisco" or the generic word "coffee." Geographic or generic words are not, per
se, subject to exclusive appropriation. It is only the combination of the words "SAN
FRANCISCO COFFEE," which is respondent’s trade name in its coffee business, that is
protected against infringement on matters related to the coffee business to avoid
confusing or deceiving the public.

WHEREFORE, we DENY the petition for review. We AFFIRM the 15 June 2005
Decision and 1 September 2005 Resolution of the Court of Appeals in CA-G.R. SP No.
80396.
 Canon Kabushiki Kaisha v. CA and NSR Rubber Corporation, 336 SCRA 266
[2000]

Facts:
On January 15, 1985, private respondent NSR Rubber Corporation (private
respondent) 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. The case was docketed as Inter
Partes Case No. 3043.

Petitioner moved to declare private respondent in default for its failure to file its
answer within the prescribed period. The BPTTT then declared private respondent in
default and allowed petitioner to present its evidence ex-parte. Based on the records,
the evidence presented by petitioner consisted of 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.

On November 10, 1992, the BPTTT issued its decision dismissing the opposition
of petitioner and giving due course to private respondent's application for the
registration of the trademark CANON. On February 16, 1993, petitioner appealed the
decision of the BPTTT with public respondent Court of Appeals that eventually affirmed
the decision of BPTTT. Hence, this petition for review.

CANON KABUSHIKI KAISHA, Petitioner, anchors this instant petition on these grounds:

A) PETITIONER IS ENTITLED TO EXCLUSIVE USE OF THE MARK CANON

BECAUSE IT IS ITS TRADEMARK AND IS USED ALSO FOR FOOTWEAR.

B) TO ALLOW PRIVATE RESPONDENT TO REGISTER CANON FOR

FOOTWEAR IS TO PREVENT PETITIONER FROM USING CANON FOR
VARIOUS KINDS OF FOOTWEAR, WHEN IN FACT, PETITIONER HAS
EARLIER USED SAID MARK FOR SAID GOODS.
 C) PETITIONER IS ALSO ENTITLED TO THE RIGHT TO EXCLUSIVELY USE
CANON TO PREVENT CONFUSION OF BUSINESS.

D) PETITIONER IS ALSO ENTITLED TO THE EXCLUSIVE USE OF CANON

BECAUSE IT FORMS PART OF ITS CORPORATE NAME, PROTECTED BY
THE PARIS CONVENTION.

Issue:

Whether or Not Canon Kabushiki Kaisha is entitled to exclusive use of the mark
canon because it is its trademark and is used also for footwear.

Ruling:

No. 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.

A review of the records shows that with the order of the BPTTT declaring private
respondent in default for failure to file its answer, petitioner had every opportunity to
present ex-parte all of its evidence to prove that its certificates of registration for the
trademark CANON cover footwear. The certificates of registration for the trademark
CANON in other countries and in the Philippines as presented by petitioner, clearly
showed that said certificates of registration cover goods belonging to class 2 (paints,
chemical products, toner, dyestuff). On this basis, the BPTTT correctly ruled that since
the certificate of registration of petitioner for the trademark CANON covers class 2
(paints, chemical products, toner, dyestuff), private respondent 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 of petitioner and
the sandals of private respondent.

The petitioner failed to attach evidence that would convince this Court that petitioner
has also embarked in the production of footwear products. We quote with approval the
observation of the Court of Appeals that:

"The herein petitioner has not made known that it intends to venture into the
business of producing sandals. This is clearly shown in its Trademark Principal
Register (Exhibit "U") where the products of the said petitioner had been clearly
 and specifically described as "Chemical products, dyestuffs, pigments, toner
developing preparation, shoe polisher, polishing agent". It would be taxing one's
credibility to aver at this point that the production of sandals could be considered
as a possible "natural or normal expansion" of its business operation".

Undoubtedly, the paints, chemical products, toner and dyestuff of petitioner that
carry the trademark CANON are unrelated to sandals, the product of private
respondent. We agree with the BPTTT, following the Esso doctrine, when it noted that
the two classes of products in this case flow through different trade channels. The
products of petitioner are sold through special chemical stores or distributors while the
products of private respondent are sold in grocery stores, sari-sari stores and
department stores. Thus, the evident disparity of the products of the parties in the case
at bar renders unfounded the apprehension of petitioner that confusion of business or
origin might occur if private respondent is allowed to use the mark CANON.

WHEREFORE, in view of the foregoing, the instant petition for review on

certiorari is DENIED for lack of merit.

SO ORDERED.

Pro Line Sports Center, Inc. et al vs. CA et al, G.R. No. 118192, 23 October 1997

Facts:

Petitioner QUESTOR, a US-based corporation, became the owner of the

trademark "Spalding" appearing in sporting goods, implements and apparatuses by virtue
of its merger with A.G. Spalding Bros., Inc., on 31 December 1971. Co-petitioner PRO
LINE, a domestic corporation, is the exclusive distributor of "Spalding" sports products in
the Philippines.

Respondent UNIVERSAL, on the other had, is a domestic corporation engaged in

the sale and manufacture of sporting goods while co-respondent Monico Sehwani is
impleaded in his capacity as president of the corporation.

On 11 February 1981 Manager of PRO LINE, sent a letter-complaint to the NBI

regarding the alleged manufacture of fake "Spalding" balls by UNIVERSAL.

On 23 February 1981 the NBI applied for a search warrant with the then Court of
First Instance. On that same day Judge of CFI issued Search Warrant authorizing the
search of the premises of UNIVERSAL.
 In the course of the search, some 1,200 basketballs and volleyballs marked
"Spalding" were seized and confiscated by the NBI.

On 26 February 1981, PRO LINE and QUESTOR filed a criminal complaint for
unfair competition against respondent Monico Sehwani before the Provincial Fiscal. The
complaint was dropped for the reason that it was doubtful whether QUESTOR had indeed
acquired the registration rights over the mark "Spalding" from A.G. Spalding Bros., Inc.,
and complainants failed to adduce an actual receipt for the sale of "Spalding" balls by
UNIVERSAL.

On 9 July 1981 a petition for review seeking reversal of the dismissal of the
complaint was filed with the Ministry of Justice. The Minister of Justice issued on 10
September 1981 a Resolution overturning the earlier dismissal of the complaint and
ordered the Provincial Fiscal of Rizal to file an Information for unfair competition against
Monico Sehwani. The Information was accordingly filed with then Court of First Instance.

Sehwani pleaded not guilty to the charge. But, while he admitted to having
manufactured "Spalding" basketballs and volleyballs, he nevertheless stressed that this
was only for the purpose of complying with the requirement of trademark registration with
the Philippine Patent Office. He cited Chapter 1, Rule 43 of the Rules of Practice on
Trademark Cases, which requires that the mark applied for be used on applicant's goods
for at least sixty (60) days prior to the filing of the trademark application and that the
applicant must show substantial investment in the use of the mark. He also disclosed that
UNIVERSAL applied for registration with the Patent Office on 20 February 1981.

After the prosecution rested its case, Sehwani filed a demurrer to evidence arguing
that the act of selling the manufactured goods was an essential and constitutive element
of the crime of unfair competition under Art. 189 of the Revised Penal Code, and the
prosecution was not able to prove that he sold the products. In its Order of 12 January
1981 the trial court granted the demurrer and dismissed the charge against Sehwani.

Thereafter, UNIVERSAL and Sehwani filed a civil case for damages with the
Regional Trial Court charging that PRO LINE and QUESTOR maliciously and without
legal basis in initiating the criminal prosecution of Monico Sehwani for unfair competition
under Art. 189 of the Penal Code to their damage and prejudice with no other purpose
than to prolong the wrongful invasion of UNIVERSAL's rights and interests.
Defendants PRO LINE and QUESTOR denied all the allegations in the complaint and
filed a counterclaim for damages based mainly on the unauthorized and illegal
manufacture by UNIVERSAL of athletic balls bearing the trademark "Spalding.
Issue:

Whether private respondents Sehwani and UNIVERSAL are entitled to recover

damages for the alleged wrongful recourse to court proceedings by petitioners PRO LINE
and QUESTOR

Ruling:

NO. PRO LINE and QUESTOR cannot be adjudged liable for damages for the
alleged unfounded suit. The complainants were unable to prove two (2) essential element
of the crime of malicious prosecution, namely, absence of probable cause and legal
malice on the part of petitioners.

UNIVERSAL failed to show that the filing of Crim. Case was bereft of probable
cause. Probable cause is the existence of such facts and circumstances as would excite
the belief in a reasonable mind, acting on the facts within the knowledge of the prosecutor,
that the person charged was guilty of the crime for which he was prosecuted.

In the case before us, then Minister of Justice found probable cause wen he
reversed the Provincial Fiscal who initially dismissed the complaint to wit., The intent on
the part of Universal Sports to deceive the public and to defraud a competitor by the use
of the trademark "Spalding" on basketballs and volleyballs seems apparent. As President
of Universal and as Vice President of the Association of Sporting Goods Manufacturers,
Monico Sehwani should have known of the prior registration of the trademark "Spalding"
on basketballs and volleyballs when he filed the application for registration of the same
trademark on February 20, 1981, in behalf of Universal, with the Philippine Patent Office.
He was even notified by the Patent Office through counsel on March 9, 1981, that
"Spalding" was duly registered with said office in connection with sporting goods,
implements and apparatus by A.G. Spalding & Bros., Inc. of the U.S.A

There is sufficient proof that Universal manufactured balls with the trademark
"Spalding".

Jurisprudence abounds to the effect that either a seller or a manufacturer of

imitation goods may be liable for violation of Section 29 of Rep. Act No. 166 .

The existence of probable cause for unfair competition by UNIVERSAL is derivable

from the facts and circumstances of the case. The affidavit of Graciano Lacanaria, a
former employee of UNIVERSAL, attesting to the illegal sale and manufacture of
"Spalding " balls and seized "Spalding" products and instruments from UNIVERSAL's
factory was sufficient prima facie evidence to warrant the prosecution of private
respondents. That a corporation other than the certified owner of the trademark is
engaged in the unauthorized manufacture of products bearing the same trademark
engenders a reasonable belief that a criminal offense for unfair competition is being
committed.

Petitioners PRO LINE and QUESTOR could not have been moved by legal malice
in instituting the criminal complaint for unfair competition which led to the filing of the
Information against Sehwani. Malice is an inexcusable intent to injure, oppress, vex,
annoy or humiliate. PRO LINE as the authorized agent of QUESTOR exercised sound
judgment in taking the necessary legal steps to safeguard the interest of its principal with
respect to the trademark in question. If the process resulted in the closure and padlocking
of UNIVERSAL's factory and the cessation of its business operations, these were
unavoidable consequences of petitioners' valid and lawful exercise of their right.

The criminal complaint for unfair competition, including all other legal remedies
incidental thereto, was initiated by petitioners in their honest belief that the charge was
meritorious. For indeed it was. The law brands business practices which are unfair, unjust
or deceitful not only as contrary to public policy but also as inimical to private interests. In
the instant case, we find quite aberrant Sehwani's reason for the manufacture of 1,200
"Spalding" balls, i.e., the pending application for trademark registration UNIVERSAL with
the Patent Office, when viewed in the light of his admission that the application for
registration with the Patent Office was filed on 20 February 1981, a good nine (9)
days after the goods were confiscated by the NBI. This apparently was an afterthought
but nonetheless too late a remedy. Be that as it may, what is essential for registrability is
proof of actual use in commerce for at least sixty (60) days and not the capability to
manufacture and distribute samples of the product to clients.
Arguably, respondents' act may constitute unfair competition even if the element of selling
has not been proved. To hold that the act of selling is an indispensable element of the
crime of unfair competition is illogical because if the law punishes the seller of imitation
goods, then with more reason should the law penalize the manufacturer.

The test of unfair competition is whether certain goods have been intentionally clothed
with an appearance which is likely to deceive the ordinary purchasers exercising ordinary
care. In this case, it was observed by the Minister of Justice that the manufacture of the
"Spalding" balls was obviously done to deceive would-be buyers. The projected sale
would have pushed through were it not for the timely seizure of the goods made by the
NBI. That there was intent to sell or distribute the product to the public cannot also be
disputed given the number of goods manufactured and the nature of the machinery and
other equipment installed in the factory.

EMZEE FOODS, INC. VS. ELARFOODS, INC., G.R. No. 220558, February 17, 2021

Facts:

1970, (spouses Lontoc) established a business of selling Filipino food and roasted pigs
marketed under the name of "ELARS Lechon."
1989, Desiring to leave a legacy, the spouses Lontoc incorporated their food business.
May 19, 1989, Elarfoods, Inc. (respondent) was granted a Certificate of Registration by
(SEC). Thereafter, spouses Lontoc actively managed the respondent corporation. Over the
years, respondent used Elarfoods, Inc. as its business name and marketed its products,
particularly, its roasted pigs as "ELAR'S LECHON ON A BAMBOO TRAY." Eventually, it rose to
notoriety as the "ELAR'S LECHON'' brand.
But, without respondent's knowledge and permission, petitioner (EMZEE) sold and distributed
roasted pigs using the marks "ELARZ LECHON," "ELAR LECHON," "PIG DEVICE" and "ON A
BAMBOO TRAY," thereby making it appear that petitioner was a branch or franchisee of the
respondent.

ELARFOODS filed with the IPO an application for registration of the trademark "ELARS
LECHON”, "ON A BAMBOO TRAY" and "ROASTED PIG DEVICE" (collectively, subject
marks). The mark "ROASTED PIG DEVICE" is a design or representation of a roasted pig on a
bamboo stick placed on top of a bamboo tray.
Respondent sent the petitioner a Cease and Desist Letter to stop using the subject marks or any
variations thereof, but it was ignored by petitioner and continued selling its roasted pigs under
the marks "ELARZLECHON," "ELAR LECHON," "PIG DEVICE," and "ON A BAMBOO TRAY,"
thereby causing confusion as to the source and origin of the products.

ELARFOODS filed 3 separate complaints for unfair competition and violation of

intellectual property rights against petitioner for the latter's use of the former's trademarks
"ELARS LECHON," "ROASTED PIG DEVICE," and "ON A BAMBOO TRAY." Respondent
claimed that petitioner unfairly rode on its fame, goodwill and reputation, causing its sales and
profits to be diverted to petitioner.
EMZEE countered that the respondent is not the owner of the subject marks. Rather, respondent
is a mere alter ego or business conduit of the spouses Lontoc who have proprietary rights over
the marks.

BLA BUREAU OF LEGAL AFFAIRS: dismissed the complaint.

Pending proceedings before the BLA, the IPO issued Certificates of Registration in favor of the
respondent for the marks "ON A BAMBOO TRAY," "ELARS LECHON" and "ROASTED PIG
DEVICE," respectively. Said Certificates are valid for a period of 10 years from their respective
dates of issuance.

ELARFOODS MR= denied > APPEAL to IPO DIRECTOR GENERAL

IPO Director General: reversed the BLA.

CA affirmed the ruling of IPO Director General.

Issue: whether or not petitioner is liable for damages for violating the respondent's intellectual
property rights.

Ruling:
Yes. Petitioner's use of the marks "ELARZ LECHON" "ELAR LECHON," "PIG DEVICE,"
and "ON A BAMBOO TRAY," which are substantially identical to the respondents' marks,
constitute unfair competition.

The IP Code defines unfair competition as:

Section 168. Unfair Competition, Rights, Regulation and Remedies. —
168.2. Any person who shall employ deception or any other means contrary to good faith by
which he shall pass off the goods manufactured by him or in which he deals, or his business, or
services for those of the 1 having established such goodwill, or who shall commit any acts
calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an
action therefor.
168.3. In particular, and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:
(a) Any person, who is selling his goods and gives them the general appearance of goods of
another manufacturer or dealer, either as to the goods themselves or in the wrapping of the
packages in which they are contained, or the devices or words thereon, or in any other feature
of their appearance, which would be likely to influence purchasers to believe that the goods
offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or
who otherwise clothes the goods with such appearance as shall deceive the public and defraud
another of his legitimate trade, or any subsequent vendor of such goods or any agent of any
vendor engaged in selling such goods with a like purpose;
(b) Any person who by any artifice, or device, or who employs any other means calculated to
induce the false belief that such person is offering the services of another who has identified
such services in the mind of the public; or
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. (Sec.
29, R.A. No. 166a)

Here, petitioner's product is lechon which is also the product of respondent. Since
petitioner uses "ELARZ LECHON," "ELAR LECHON," "PIG DEVICE," and "ON A
BAMBOO TRAY" on their packaging materials and signages in the same manner like
respondent uses "ELAR'S LECHON" mark on its lechon products, petitioner has
obviously clothed its product the general appearance of respondent's product itself.

More that no notice to the buying public that "ELARZ LECHON" is not respondent's product,
albeit it is the latter that has the exclusive right to the trademark "ELAR'S LECHON." There is
indeed a clear intent to deceive the public on petitioner's part.

HERE: Applying the dominancy test, it is obvious that the petitioner's marks "ELARZ
LECHON'' and "ELAR LECHON'' bear an indubitable likeness with respondent's "ELARS
LECHON." As can easily be seen, both marks use the essential and dominant word "ELAR."
The only difference between the petitioner's mark from that of respondent's are the last letters Z
and S, respectively. But, the letters Z and S sound similar when pronounced. Thus, both marks
are not only visually similar, but are phonetically and aurally similar as well. To top it all off, both
marks are used in selling lechon products. Verily, there exists a high likelihood that the
consumers may conclude an association or relation between the products. Likewise, the
uncanny resemblance between the marks may even lead purchasers to believe that the
petitioner and respondent are the same entity.

Petitioner's use of marks similar to those of the respondent's constitutes a violation of the
latter's intellectual property rights. It is high time for petitioner to desist from conveniently latching
on to the good will and reputation built by the respondent over the years.
To fully protect the respondent's rights, it is imperative to order the petitioner to cease and desist
from using the former's marks. This remedy under Section 156.4 of the IP Code, which grants
the complainant the right to demand an injunction, upon proper showing of its entitlement thereto.
Similarly to Asia Pacific Resources International Holdings, Ltd. v. Paperone, Inc., where it
affirmed the orders of the BLA and the IPO Director General commanding the party guilty of
unfair competition to cease and desist from using the complainant's marks.
 Unfortunately, despite the IPO Director General's finding that the petitioner is liable for
unfair competition, and thus, "should have been subject to injunction," it failed to categorically
order the latter to cease and desist from using the respondent's marks. Similarly, the CA affirmed
the petitioner's culpability for unfair competition, yet failed to issue an order directing the latter to
refrain from using the subject marks. Hence, to afford the respondent full relief, an injunction
must be issued against the petitioner.
Because of petitioner’s unfair acts, the Court affirms the award of damages granted by the IPO
Director General and the CA in favor of the respondent.

SUYEN CORPORATION VS. DANJAQ LLC, G.R. No. 250800. July 06, 2021

Facts:

Petitioner Suyen is a corporation operating in the Philippines using the

BENCH trademark. It filed an application for the registration of the mark AGENT BOND
– specifically for “hair refresher, hair gel, hair lotion, hair treatment, hair shampoo, and
hair conditioner.” On the other hand, respondent Danjaq is a foreign corporation based in
California, USA. It opposed Suyen’s application for registration for being confusingly
similar with its trademark, JAMESBOND. It claimed that Suyen’s use of the mark AGENT
BOND is an attempt to ride on the popularity of JAMES BOND and its associated
“Bond” marks. Because of the character’s popularity as James Bond/Agent 007,
Danjaq claimed to have prior use of the AGENT BOND mark.

In its Answer, Suyen claimed that there is no confusing similarity between the two
marks since JAMES BOND has never been referred to as AGENT BOND in any of its 22
films. It further contended that the supposed popularity of JAMES BOND mark is
insufficient to prove that it is a well-known mark in accordance with Sec. 123.1 of the
Intellectual Property Code.Suyen likewise explained that AGENT BOND is only “a
creative but non-descriptive way ofmaking reference to the function of the product.” The
word “agent” in AGENT BOND is used toconvey to purchasers that the product is a
device, while the word “bond” refers to the ability ofthe product's ingredients to hold or
bind the hairstyle.

To support its claim, Suyen applied the dominancy and holistic tests.
Under the dominancy test, the competing marks’ common word – BOND – is not the
dominant word for both marks. The words AGENT and JAMES were equally prominent
in AGENT BOND and JAMES BOND, respectively. Neither will the terms be easily
mistaken from one another. Suyen averred that the word BOND has been diluted –
having been used in several trademarks in the Philippines. Thus, Danjaq does not have
exclusive rights to the word “bond” and since Danjaq has not established any right to
the AGENT BOND mark, it cannot overextend the protection of its JAMES BOND
trademark to include AGENT BOND. In Danjaq’s position paper, it stated that it is not
actual confusion that is required to deny registration of a trademark but the possibility of
confusion. The use of AGENT BOND causes confusion as to the origin – making it
appear that Danjaq approved the use of AGENT BOND as a trademark. Because
JAMES BOND is a well-known mark, any product bearing the JAMES BOND
trademark or other related marks is highly marketable.

The Bureau of Legal Affairs (BLA) of the Intellectual Property Office sustained
Danjaq’s opposition and denied Suyen’s trademark application for AGENT BOND. It
ruled that since the word AGENT is placed before the word BOND, the said mark gave
an impression that it was connected to JAMES BOND – who is referred to as “Agent
007” or “Agent Bond.” A confusion of business occurs because AGENT BOND may be
assumed to originate from Danjaq, causing the public to believe that the subject good is
connected to that of Danjaq.

As a result, the BLA, sound Suyen’s AGENT BOND mark nonregistrable under
Section 123.l (d) of the Code. WhenSuyen appealed to the Office of the Director General
(ODG), the ODG denied Suyen’s appealafter ruling that since Danjaq was able to prove
prior use and registration of JAMES BOND,Suyen had the burden of evidence to show
that it was not riding on JAMES BOND’s goodwill.The ODG observed that Suyen never
explained the reason for adopting AGENT BOND. Thus,Suyen’s choice of using AGENT
BOND, when it is so closely associated with JAMES BOND,shows that it intended to
take advantage of JAMES BOND’s goodwill. It thus leads the public tobelieve that
AGENT BOND is Danjaq’s products.

Unfazed, Suyen elevated the matter to the CA. However, the CA denied Suyen’s
petition and affirmed the earlier rulings of the BLA and the ODG. It held that placing the
word “Agent” before the word “Bond” impresses upon the public a connection between
Suyen’s product and the fictional character of James Bond – a form of confusion of
business. Also, the CA did not find AGENT BOND to be a suggestive mark because
the combination of these words were not fancifully or arbitrarily crafted. It likewise
ruled on the popularity of the JAMES BOND trademark and declared it to be
well-known. Considering the commercial value of the James Bond movies, the James
Bond character transformed into a well-known trademark with goodwill of $5 billion in
sales of merchandise. Aggrieved, Suyen filed its Motion for Reconsideration challenging
the rulings of the CA, but it was later denied. Hence, this instant Petition for Review on
Certiorari.

Issue:

Whether or not the use of AGENT BOND suggests a connection with the well-
known mark, JAMES BOND, to the damage of respondent Danjaq.
Ruling:

YES. Section 123.1 (f) of the Intellectual Property Code states that a mark cannot
be registered if it is identical with, or confusingly similar to, or constitutes a translation of
a mark considered well-known in accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or services which are not similar to
those with respect to which registration is applied for: Provided, That use of the mark in
relation to those goods or services would indicate a connection between those goods or
services, and the owner of the registered mark: Provided, further, That the interests of the
owner of the registered mark are likely to be damaged by such use. In the case at bar,
the other elements of Section 123.1 (f) have also been sufficiently established: (1) there
is confusing similarity between the competing marks, (2) the use of AGENT BOND would
indicate a connection between it and JAMES BOND, and (3) the use of AGENT BOND
will likely damage Danjaq’s interest over JAMES BOND.

Damages under Section 123.1 (f) is present when there is Trademark Dilution. In
Levi Strauss & Co., this Court defined trademark dilution as the lessening of the capacity
of a famous mark to identify and distinguish goods or services, regardless of the presence
or absence of: (1)competition between the owner of the famous mark and other
parties; or (2) likelihood of confusion, mistake or deception. Between the two kinds of
trademark dilution (i.e. dilution by tarnishment and dilution by blurring), the elements of
dilution by blurring are present in this case: (i) the degree of similarity between the mark
or trade name and the famous mark; (ii) the degree of inherent or acquired distinctiveness
of the famous mark; (AGENT BOND and JAMESBOND resemble each other based on
the Dominancy Test and the fact that both are word marks;(iii) the use of the opposed
mark in relation to its goods or services would indicate a connection between the goods
or services of the opposed mark and the owner of the registered well-known mark (the
fame of the James Bond franchise is what is being suggested when one hears the words
AGENT BOND and NOT what Suyen claims as something to bind the hairstyle); (iv) the
degree of recognition of the famous mark (based on the CA’s pronouncement that
JAMES BOND is a well-known mark); and (v) whether the user of the mark or trade name
intended to create an association with the famous mark (based on Suyen’s admission
that there is a mental connection created between “AGENT BOND” and the well-known
“JAMES BOND” mark).
 Arce & Sons v. Selecta Biscuit Co., Inc., 110 Phil. 858 [1961]

Facts:

Respondent Selecta Biscuit Company, Inc. filed with the Philippine Patent Office
a petition for the registration of the word “SELECTA” as trademark to be used in its bakery
products, alleging that they have been using it for not less than 2 months and that "no
other persons, partnership, corporation or association... has the right to use said trade-
mark in the Philippines, either in the identical form or in any such near resemblance
thereto, as might be calculated to deceive."

An examiner found that the word sought to be registered resembles the word
“SELECTA” used by herein petitioner in its milk and ice cream products and respondent’s
use of the word would cause confusion as to the origin of their respective goods. The
examiner recommended the denial of respondent’s petition but upon reconsideration the
Patent Office ordered the publication of the application for purposes of opposition.

Petitioner files its opposition on several grounds, among which are:

(1) that the mark "SELECTA" had been continuously used by petitioner in the
manufacture and sale of its products, including cakes, bakery products, milk and ice
cream from the time of its organization and even prior thereto by its predecessor-in-
interest, Ramon Arce;

(2) that the mark "SELECTA" has already become identified with name of the
petitioner and its business;

(3) that petitioner had warned respondent not to use said mark because it was
already being used by the former, but that the latter ignored said warning;

(4) that respondent is using the word "SELECTA" as a trademark as bakery

products in unfair competition with the products of petitioner thus resulting in
confusion in trade;

(5) that the mark to which the application of respondent refers has striking
resemblance, both in appearance and meaning, to petitioner's mark as to be
mistaken therefor by the public and cause respondent's goods to be sold as
petitioner's; and

(6) that actually a complaint has been filed by the petitioner against respondent
for unfair competition in the Court of First Instance of Manila asking for damages and
for the issuance of a writ of injunction against respondent enjoining the latter for
continuing with the use of said mark.
 The CIF of Manila rendered its decision in the unfair competition case perpetually
enjoining respondent from using “SELECTA” as a trademark. The Director of
Patents, on the other hand, dismissed petitioner’s opposition, saying that
respondent’s registration of “SELECTA” as trademark will not cause confusion or
mistake nor will deceive purchasers as to the cause of damage to petitioner.

Issue: Whether or not respondent’s use of the word “SELECTA” as trademark would
cause confusion as to petitioner’s products.

Ruling:

YES. Ramon Arce, the predecessor-in-interest of petitioner, started his milk

business as early as 1933. He sold his milk products with “SELECTA FRESH MILK”
inscribed on them as well as the word “SELECTA” on special containers of his other
products. He expanded his business in Lepanto Street, Manila and placed in front of his
establishment a signboard with “SELECTA” inscribed thereon. Then his business was
acquired by petitioner, a co-partnership organized by his sons, the purposes of which are
"to conduct a first class restaurant business; to engage in the manufacture and sale of
ice cream, milk, cakes and other products; and to carry on such other legitimate business
as may produce profit.".

It is unmistakably shown that petitioner, through its predecessor-in-interest, had

made use of “SELECTA” not only as a trade-name indicative of the location of the
restaurant where it manufactures and sells its products, but as trademark used. This is
not only in accordance with its general acceptation but with our law on the matter. "

The word 'SELECTA' has been chosen by petitioner and has been inscribed on all
its products to serve not only as a sign or symbol that may indicate that they are
manufactured and sold by it but as a mark of authenticity that may distinguish them from
the products manufactured and sold by other merchants or businessmen. The Director of
Patents, therefore, erred in holding that petitioner made use of that word merely as a
trade-name and not as a trade-mark within the meaning of the law.

The term 'trade-mark' includes any word, name, symbol, emblem, sign or device
or any combination thereof adopted and used by a manufacturer or merchant to identify
his goods and distinguish them from those manufactured, sold or dealt in by others."
(Section 38, Republic Act No. 166).

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

The suggestion that the name 'SELECTA' was chosen by the organizers of
respondent merely as a translation from a Chinese word "Ching Suan" meaning "mapili"
in the dialect is betrayed by the very manner of its selection, for if the only purpose is to
make an English translation of that word and not to compete with the business of
petitioner, why choose the word 'SELECTA', a Spanish word, and not "Selected", the
English equivalent thereof, as was done by other well-known enterprises? In the words
of petitioner's counsel, "Why with all the words in the English dictionary and all the words
in the Spanish dictionary and all the phrases that could be coined, should respondent
choose 'SELECTA' if its purpose was not and is not to fool the people and to damage
petitioner?"

In view of the foregoing, we hold that the Director of Patents committed an error in
dismissing the opposition of petitioner and in holding that the registration of the trade-
mark 'SELECTA' in favor of respondent will not cause damage to petitioner, and
consequently, we hereby reverse his decision.

UFC Phils. V. Barrio Fiesta, Mfg., G.R. No. 198889, January 20, 2016

Facts:
Petitioner Nutri-Asia, Inc. (petitioner) is a corporation duly organized and existing
under Philippine laws. It is the emergent entity in a merger with UFC Philippines Inc. that
was completed on Feb. 11, 2009.

On April 4, 2002, respondent Barrio Fiesta Manufacturing Coroporation filed ofr

the mark “PAPA BOY & DEVICE” for goods under Class 30, specifically for “lechon
sauce.” The Intellectual Property Office (IPO) published said application for opposition in
the IP Phil e-Gazette on Sept. 8 2006.

Petitioner Nutri-asia filed with the IPO Bureau of Legal Affairs a Verified Notice of
Opposition to the application alleging that the mark “PAPA” is for use on banana catsup
and other similar goods first used in 1954 by Neri Papa.

After using “PAPA” for 27 years, Neri Papa subsequently assigned the mark to
Herman Reyes who filed an application to register the said “PAPA” mark for use on
banana catsup, chili sauce, achara, banana chips and instate ube powder.
 On November 7, 2006 the registration was assigned to Nutri-Asia. The company
has not abandoned the use of the mark “PAPA” and the variations (such as “PAPA
BANANA CATSUP label” and “PAPA KETSARAP”.) thereof as it continued the use of the
mark up to the present. Petitioner further allege that “PAPA BOY & DEVICE” is identical
to the mark “PAPA” owned by Nutri-Asia and duly registered in its favor. The petitioner
contends that the use of “PAPA” by the respondent-applicant would likely result in
confusion and deception. The consuming public, particularly the unwary customers, will
be deceived, confused, and mistaken into believing that respondent-applicant's goods
come from Nutri-Asia, which is particularly true since Southeast Asia Food Inc, sister
company of Nutri-Asia, have been major manufacturers and distributors of lechon sauce
since 1965 under the registered mark “Mang Tomas”.

The IPO-BLA rejected Barrio Fiesta’s application for “PAPA BOY & DEVICE”.
Respondent appealed before the IPO Director General, but the appeal was denied. The
CA, however, reversed the decision of the IPO-BLA and ruled to grant the application.

Petitioner brought the case before the Supreme Court, seeking the reversal of the
decision and resolution of the CA.

Issue:

Whether or not by using the “dominant feature” of Nutri-Asia’s “PAPA” mark for “PAPA
BOY & DEVICE” would constitute trademark infringement.

Ruling:

Yes.In Dermaline, Inc. v. Myra Pharmaceuticals, Inc., 43 we defined a trademark

as "any distinctive word, name, symbol, emblem, sign, or device, or any combination
thereof, adopted and used by a manufacturer or merchant on his goods to identify and
distinguish them from those manufactured, sold, or dealt by others." We held that a
trademark is "an intellectual property deserving protection by law."

The Intellectual Property Code provides:

Section 147. Rights Conferred. - 147.1. The owner of a registered
mark shall have the exclusive right to prevent all third parties not having
the owner's consent from using in the course of trade identical or similar
signs or containers for goods or services which are identical or similar to
those in respect of which the trademark is registered where such use would
result in a likelihood of confusion. In case of the use of an identical sign
 for identical goods or services, a likelihood of confusion shall be
presumed.

To determine the likelihood of confusion, the Rules of Procedure for Intellectual Property
Rights Cases, Rule 18, provides:
RULE 18
Evidence in Trademark Infringement and Unfair Competition Cases
SECTION 1. Certificate of Registration. - A certificate of
registration of a mark shall be prima facie evidence of:
a) the validity of the registration;
b) the registrant's ownership of the mark; and
c) the registrant's exclusive right to use the same in connection
with the goods or services and those that are related thereto
specified in the certificate.

SECTION 3. Presumption of Likelihood of Confusion. -

Likelihood of confusion shall be presumed in case an identical sign or
mark is used for identical goods or services.

SECTION 4. Likelihood of Confusion in Other Cases. - In

determining whether one trademark is confusingly similar to or is a
colorable imitation of another, the court must consider the general
impression of the ordinary purchaser, buying under the normally prevalent
conditions in trade and giving the attention such purchasers usually give in
buying that class of goods. Visual, aural, connotative comparisons and
overall impressions engendered by the marks in controversy as they are
encountered in the realities of the marketplace must be taken into account.
Where there are both similarities and differences in the marks, these must
be weighed against one another to see which predominates.

In determining likelihood of confusion between marks used on

non-identical goods or services, several factors may be taken into account,
such as, but not limited to:
a) the strength of plaintiffs mark;
b) the degree of similarity between the plaintiffs and the defendant's
marks;
c) the proximity of the products or services;
d) the likelihood that the plaintiff will bridge the gap;
e) evidence of actual confusion;
 f) the defendant's good faith in adopting the mark;
g) the quality of defendant's product or service; and/or
h) the sophistication of the buyers.

"Colorable imitation" denotes such a close or ingenious imitation

as to be calculated to deceive ordinary persons, or such a resemblance to
the original as to deceive an ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to purchase the one supposing it
to be the other.

SECTION 5. Determination of Similar and Dissimilar Goods or

Services. - Goods or services may not be considered as being similar or
dissimilar to each other on the ground that, in any registration or
publication by the Office, they appear in different classes of the Nice
Classification.

On the other hand, R.A. No. 166 defines a "trademark" as any distinctive word,
name, symbol, emblem, sign, or device, or any combination thereof, adopted and used
by a manufacturer or merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt by another. A trademark, being a special property, is afforded
protection by law. But for one to enjoy this legal protection, legal protection ownership of
the trademark should right be established.

The ownership of a trademark is acquired by its registration and its actual use by
the manufacturer or distributor of the goods made available to the purchasing public. The
prima facie presumption brought by the registration of a mark may be challenge in an
appropriate action. Moreover the protection may likewise be defeated by evidence of prior
use by another person. This is because the trademark is a creation of use and belongs
to one who first used it in trade or commerce.

The essential element of infringement under the law is that the infringing mark is
likely to cause confusion. There are two tests used to determine likelihood of confusion:
the dominancy test and the holistic test. The dominancy test applies to this case.

The Dominancy Test

focuses on the similarity of the prevalent or dominant features of the
competing trademarks that might cause confusion, mistake, and deception
in the mind of the purchasing public. Duplication or imitation is not
 necessary; neither is it required that the mark sought to be registered
suggests an effort to imitate. Given more consideration are the aural and
visual impressions created by the marks on the buyers of goods, giving
little weight to factors like prices, quality, sales outlets, and market
segments.
xx xx

The Totality Test

The totality or holistic test is contrary to
the elementary postulate of the law on trademarks and
unfair competition that confusing similarity is to be
determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by the
marks in controversy as they are encountered in the
realities of the marketplace. The totality or holistic test only
relies on visual comparison between two trademarks
whereas the dominancy test relies not only on the visual but
also on the aural and connotative comparisons and overall
impressions between the two trademarks.

There are two types of confusion in trademark infringement: confusion of goods

and confusion of business. In Sterling Products International, Inc. v. Farbenfabriken Bayer
Aktiengesellschaft, the Court distinguished the two types of confusion:

Callman notes two types of confusion. The first is the

confusion of goods "in which event the ordinarily prudent
purchaser would be induced to purchase one product in the
belief that he was purchasing the other." In which case,
"defendant's goods are then bought as the plaintiff's, and
the poorer quality of the former reflects adversely on the
plaintiff's reputation." The other is the confusion of
business: "Here though the goods of the parties are
different, the defendant's product is such as might
reasonably be assumed to originate with the plaintiff, and
the public would then be deceived either into that belief or
into the belief that there is some connection between the
plaintiff and defendant which, in fact, does not exist."
 In relation to this, the court has held that the registered trademark owner may use
hismark on the same or similar products, in different segments of the market, and at
different price levels depending on variations of the products for specific segments of the
market. The Court has recognized that the registered trademark owner enjoys protection
in product and market areas that are the normal potential expansion of his business. The
scope of protection thus extends to protection from infringers with related goods.

It cannot be denied that since petitioner’s product, catsup, and respondent’s

product, lechon sauce, are both household products in similar packaging the public could
think that petitioner Nutri-Asia has expanded its product mix to include lechon sauce,
which is not unlikely considering the nature of petitioner’s business.

Moreover, the CA erred in finding that “PAPA” is a common term of endearment

for “father” and therefore could not be claimed for exclusive use and ownership. What
was registered was not “Papa” as denied in dictionary, but “Papa” as the last name of the
owner of the brand, making it a registrable mark.

Petition granted.
 ECOLE DE CUISINE MANILLE (CORDON BLEU OF THE PHILIPPINES), INC. vs.
RENAUD COINTREAU & CIE and LE CORDON BLEU INT'L., B.V., G.R. No. 185830,
June 5, 2013

Facts:

Renaud Cointreau, a partnership registered under the laws of France, filed for a
trademark application for the mark “LE CORDON BLEAU & DEVICE”. Petitioner Ecole
de De Cuisine Manille, Inc. (Ecole) filed an opposition and averred that: (a) it is the owner
of the mark "LE CORDON BLEU, ECOLE DE CUISINE MANILLE, " which it has been
using since 1948 in cooking and other culinary activities, including in its restaurant
business; and (b) it has earned immense and invaluable goodwill such that Cointreau’s
use of the subject mark will actually create confusion, mistake, and deception to the
buying public and cause great and irreparable injury and damage to Ecole’s business
reputation and goodwill as a senior user of the same. Cointreau filed its answer claiming
to be the true and lawful owner of the subject mark and averred that: (a) it has filed
applications in various jurisdictions, including the Philippines; (b) Le Cordon Bleu is a
culinary school of worldwide acclaim which was established in Paris, France in 1895; (c)
Le Cordon Bleu was the first cooking school to have set the standard for the teaching of
classical French cuisine and pastry making; and (d) it has trained students from more
than eighty (80) nationalities, including Ecole’s directress, Ms. Lourdes L. Dayrit.

Thus, Cointreau concluded that Ecole’s claim of being the exclusive owner of the
subject mark is a fraudulent misrepresentation. Bureau of Legal Affairs’ Decision:
Sustained Ecole’s opposition to the mark. While noting the certificates of registration
obtained from other countries and other pertinent materials showing the use of the subject
mark outside the Philippines, the BLA did not find such evidence sufficient to establish
Cointreau’s claim of prior use of the same in the Philippines IPO Director General’s
Decision: Reversed and set aside the BLA’s Decision and granting Cointreau’s appeal
and allowing the registration of the subject mark.

He held that while Section 2 of R.A.No.166 requires actual use of the subject mark
in commerce in the Philippines for at least two (2) months before the filing date of the
application, only the owner thereof has the right to register the same, explaining that the
user of a mark in the Philippines is not ipso facto its owner. Ecole may have prior use of
the subject mark in the Philippines since 1948, but it failed to explain how it came up with
such name and mark. Therefore, Ecole has unjustly appropriated the subject mark,
rendering it beyond the mantle of protection of Section4(d)14 ofR.A.No.166. Ruling of the
CA: Affirmed the IPO Director General’s Decision in toto and declared Cointreau as the
true and actual owner of the subject mark with a right to register the same in the
Philippines, having registered in its country of origin.
Issue:

Whether or not Cointreau is the true and lawful owner of the subject mark and thus,
entitled to have the same registered under its name

Ruling:

Under Section 2 of R.A.No.166, in order to register a trademark, one must be the

owner thereof and must have actually used the mark in commerce in the Philippines for
two (2) months prior to the application for registration. Section 2-A of the same law sets
out to define how one goes about acquiring ownership thereof. Under Section 2-A, it is
clear that actual use in commerce is also the test of ownership but the provision went
further by saying that the mark must not have been so appropriated by another.
Additionally, it is significant to note that Section 2-A does not require that the actual use
of a trademark must be within the Philippines. Thus, as correctly mentioned by the CA,
under R.A. No. 166, one may be an owner of a mark due to its actual use but may not yet
have the right to register such ownership here due to the owner’s failure to use the same
in the Philippines for two (2) months prior to registration. Nevertheless, foreign marks
which are not registered are still accorded protection against infringement and/or unfair
competition. At this point, it is worthy to emphasize that the Philippines and France,
Cointreau’s country of origin, are both signatories to the Paris Convention for the
Protection of Industrial Property (Paris Convention).

The Philippines is obligated to assure nationals of the signatory-countries that they

are afforded an effective protection against violation of their intellectual property rights in
the Philippines in the same way that their own countries are obligated to accord similar
protection to Philippine nationals. "Thus, under Philippine law, a trade name of a national
of a State that is a party to the Paris Convention, whether or not the trade name forms
part of a trademark, is protected "without the obligation of filing or registration.’” It is thus
clear that at the time Ecole started using the subject mark, the same was already being
used by Cointreau, albeit abroad, of which Ecole’s directress was fully aware, being an
alumna of the latter’s culinary school in Paris, France.

Hence, Ecole cannot claim any tinge of ownership whatsoever over the subject mark
as Cointreau is the true and lawful owner thereof. As such, the IPO Director General and
the CA were correct in declaring Cointreau as the true and lawful owner of the subject
mark and as such, is entitled to have the same registered under its name.
 SERI SOMBOONSAKDIKUL vs. ORLANE S.A., February 1, 2017, G.R. No.
188996

Facts:

On September 23, 2003, petitioner Seri Somboonsakdikul (petitioner) filed an

application for registration of the mark “LOLANE” with the Intellectual Property Office
(IPO) for goods classified under Class 3 (personal care products) of the International
Classification of Goods and Services for the Purposes of the Registration of Marks
(International Classification of Goods). Orlane S.A. (respondent) filed an opposition to
petitioner’s application, on the ground that the mark “LOLANE” was similar to “ORLANE”
in presentation, general appearance and pronunciation, and thus would amount to an
infringement of its mark.

In his answer, petitioner denied that the “LOLANE” mark was confusingly similar
to the mark “ORLANE.” He averred that he was the lawful owner of the mark “LOLANE”
which he has used for various personal care products sold worldwide. He alleged that the
first worldwide use of the mark was in Vietnam on July 4, 1995. Petitioner also alleged
that he had continuously marketed and advertised Class 3 products bearing “LOLANE”
mark in the Philippines and in different parts of the world and that as a result, the public
had come to associate the mark with him as provider of quality personal care products.

Petitioner maintained that the marks were distinct and not confusingly similar either
under the dominancy test or the holistic test. The mark “ORLANE” was in plain block
upper case letters while the mark “LOLANE” was printed in stylized word with the second
letter ‘L’ and the letter ‘A’ co-joined. Furthermore, the similarity in one syllable would not
automatically result in confusion even if used in the same class of goods since his
products always appear with Thai characters while those of ORLANE always had the
name Paris on it. The two marks are also pronounced differently. Also, even if the two
marks contained the word ‘LANE’ it would not make them confusingly similar since the
IPO had previously allowed the coexistence of trademarks containing the syllable “joy” or
“book” and that he also had existing registrations and pending applications for registration
in other countries.

The Bureau of Legal Affairs (BLA) rejected petitioner’s application finding that
respondent’s application was filed, and its mark registered, much earlier. The BLA ruled
that there was likelihood of confusion: (1) “ORLANE” and “LOLANE” both consisted of six
letters with the same last four letters — ‘LANE;’ (2) both were used as label for similar
products; (3) both marks were in two syllables and that there was only a slight difference
in the first syllable; and (4) both marks had the same last syllable so that if these marks
were read aloud, a sound of strong similarity would be produced and such would likely
deceive or cause confusion to the public as to the two trademarks.

Petitioner filed a motion for reconsideration but it was denied by the Director of the
BLA. The BLA ruled that the law did not require the marks to be so identical as to produce
actual error or mistake as the likelihood of confusion was enough. The BLA also found
that the dominant feature in both marks was the word ‘LANE;’ and that the marks had a
strong visual and aural resemblance that could cause confusion to the buying public. This
resemblance was amplified by the relatedness of the goods.

On appeal, the Director General of the IPO affirmed the decision of the BLA
Director. Despite the difference in the first syllable, there was a strong visual and aural
resemblance since the marks had the same last four letters. Also, the mark “ORLANE” is
a fanciful mark invented by the owner for the sole purpose of functioning as a trademark
and is highly distinctive. Thus, the fact that two or more entities would accidentally adopt
an identical or similar fanciful mark was too good to be true especially when they dealt
with the same goods or services.

Thus, petitioner filed a petition for review before the Court of Appeals (CA) arguing
that there is no confusing similarity between the two marks however it was denied. The
CA ruled that there exists colorable imitation of respondent’s mark by “LOLANE.”

Issue:

Whether or not there is confusing similarity between “ORLANE” and “LOLANE”

which would bar the registration of “LOLANE” before the IPO.

Ruling:

No. There is no colorable imitation between the marks “LOLANE” and “ORLANE”
which would lead to any likelihood of confusion to the ordinary purchasers.

In determining colorable imitation, the Court has used either the dominancy test or
the holistic or totality test. The dominancy test considers the similarity of the prevalent or
dominant features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. More consideration is given on the aural
and visual impressions created by the marks on the buyers of goods, giving little weight
to factors like prices, quality, sales outlets, and market segments. On the other hand, the
holistic test considers the entirety of the marks as applied to the products, including the
labels and packaging, in determining confusing similarity. The focus is not only on the
predominant words but also on the other features appearing on the labels.

While there are no set rules as what constitutes a dominant feature with respect to
trademarks applied for registration, usually, what are taken into account are signs, color,
design, peculiar shape or name, or some special, easily remembered earmarks of the
brand that readily attracts and catches the attention of the ordinary consumer. However,
based on the distinct visual and aural differences between “LOLANE” and “ORLANE,” the
Court find that there is no confusing similarity between the two marks. The suffix ‘LANE’
is not the dominant feature of petitioner’s mark. Neither can it be considered as the
dominant feature of “ORLANE” which would make the two marks confusingly similar.

First, an examination of the appearance of the marks would show that there are
noticeable differences in the way they are written or printed. As correctly argued by
petitioner in his answer before the BLA, there are visual differences between “LOLANE”
and “ORLANE” since the mark “ORLANE” is in plain block upper case letters while the
mark “LOLANE” was rendered in stylized word with the second letter ‘L’ and the letter ‘A’
co­joined.

Second, as to the aural aspect of the marks, “LOLANE” and “ORLANE” do not
sound alike. The appeals to the ear in pronouncing “ORLANE” and “LOLANE” are
dissimilar. The first syllables of each mark, ‘OR’ and ‘LO’ do not sound alike, while the
proper pronunciation of the last syllable ‘LANE’ — “LEYN” for “LOLANE” and “LAN” for
“ORLANE,” being of French origin, also differ. The Court takes exception to the
generalizing statement of the Director General, which was affirmed by the CA, that
Filipinos would invariably pronounce “ORLANE” as “ORLEYN.” This is another finding of
fact which has no basis, and thus, justifies our reversal of the decisions of the IPO Director
General and the CA. While there is possible aural similarity when certain sectors of the
market would pronounce “ORLANE” as “ORLEYN,” it is not also impossible that some
would also be aware of the proper pronunciation — especially since, as respondent
claims, its trademark “ORLANE” has been sold in the market for more than 60 years and
in the Philippines, for more than 40 years.

Respondent failed to show proof that the suffix ‘LANE’ has registered in the mind
of consumers that such suffix is exclusively or even predominantly associated with
“ORLANE” products. Notably and as correctly argued by petitioner, the IPO previously
allowed the registration of the mark “GIN LANE” for goods also falling under Class 3, i.e.,
perfume, cologne, skin care preparations, hair care preparations and toiletries.

SKECHERS, U.S.A., INC., vs. INTER PACIFIC INDUSTRIAL TRADING CORP.,

G.R. No. 164321, March 23, 2011

Facts:
The present controversy arose when petitioner filed with Branch 24 of the
Regional Trial Court (RTC) of Manila an application for the issuance of search warrants
against an outlet and warehouse operated by respondents for infringement of trademark
under Section 155, in relation to Section 170 of Republic Act No. 8293, otherwise
known as the Intellectual Property Code of the Philippines. In the course of its business,
petitioner has registered the trademark "SKECHERS" and the trademark "S" (within an
oval design) with the Intellectual Property Office (IPO).

Two search warrants were issued by the RTC and were served on the premises
of respondents. As a result of the raid, more than 6,000 pairs of shoes bearing the "S"
logo were seized.

Later, respondents moved to quash the search warrants, arguing that there was
no confusing similarity between petitioner’s "Skechers" rubber shoes and its "Strong"
rubber shoes.

On November 7, 2002, the RTC issued an Order quashing the search warrants
and directing the NBI to return the seized goods. The RTC agreed with respondent’s
view that Skechers rubber shoes and Strong rubber shoes have glaring differences
such that an ordinary prudent purchaser would not likely be misled or confused in
purchasing the wrong article.

Aggrieved, petitioner filed a petition for certiorari with the Court of Appeals (CA)
assailing the RTC Order. On November 17, 2003, the CA issued a Decision affirming
the ruling of the RTC.

Subsequently, petitioner filed the present petition before this Court.

Issue: whether or not respondent INTER PACIFIC INDUSTRIAL TRADING CORP. is

guilty of trademark infringement
Ruling:
YES. The essential element of infringement under R.A. No. 8293 is that the
infringing mark is likely to cause confusion. In determining similarity and likelihood of
confusion, jurisprudence has developed tests; the Dominancy Test and the Holistic or
Totality Test. The Dominancy Test focuses on the similarity of the prevalent or dominant
features of the competing trademarks that might cause confusion, mistake, and
deception in the mind of the purchasing public. Duplication or imitation is not necessary;
neither is it required that the mark sought to be registered suggests an effort to imitate.
Given more consideration are the aural and visual impressions created by the marks on
the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and
market segments.

In contrast, the Holistic or Totality Test necessitates a consideration of the

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

Relative to the question on confusion of marks and trade names, jurisprudence

has noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion),
where the ordinarily prudent purchaser would be induced to purchase one product in the
belief that he was purchasing the other; and (2) confusion of business (source or origin
confusion), where, although the goods of the parties are different, the product, the mark
of which registration is applied for by one party, is such as might reasonably be
assumed to originate with the registrant of an earlier product, and the public would then
be deceived either into that belief or into the belief that there is some connection
between the two parties, though inexistent.

Applying the Dominancy Test to the case at bar, this Court finds that the use of
the stylized "S" by respondent in its Strong rubber shoes infringes on the mark already
registered by petitioner with the IPO. While it is undisputed that petitioner’s stylized "S"
is within an oval design, to this Court’s mind, the dominant feature of the trademark is
the stylized "S," as it is precisely the stylized "S" which catches the eye of the
purchaser. Thus, even if respondent did not use an oval design, the mere fact that it
used the same stylized "S", the same being the dominant feature of petitioner’s
trademark, already constitutes infringement under the Dominancy Test.
 As can be readily observed by simply comparing petitioner’s Energy model and
respondent’s Strong rubber shoes, respondent also used the color scheme of blue,
white and gray utilized by petitioner. Even the design and "wavelike" pattern of the
midsole and outer sole of respondent’s shoes are very similar to petitioner’s shoes, if
not exact patterns thereof. At the side of the midsole near the heel of both shoes are
two elongated designs in practically the same location. Even the outer soles of both
shoes have the same number of ridges, five at the back and six in front. On the side of
respondent’s shoes, near the upper part, appears the stylized "S," placed in the exact
location as that of the stylized "S" on petitioner’s shoes. On top of the "tongue" of both
shoes appears the stylized "S" in practically the same location and size. Moreover, at
the back of petitioner’s shoes, near the heel counter, appears "Skechers Sport Trail"
written in white lettering. However, on respondent’s shoes appears "Strong Sport Trail"
noticeably written in the same white lettering, font size, direction and orientation as that
of petitioner’s shoes. On top of the heel collar of petitioner’s shoes are two grayish-white
semi-transparent circles. Not surprisingly, respondent’s shoes also have two grayish-
white semi-transparent circles in the exact same location.

Based on the foregoing, this Court is at a loss as to how the RTC and the CA, in
applying the holistic test, ruled that there was no colorable imitation, when it cannot be
any more clear and apparent to this Court that there is colorable imitation. The
dissimilarities between the shoes are too trifling and frivolous that it is indubitable that
respondent’s products will cause confusion and mistake in the eyes of the public.
Respondent’s shoes may not be an exact replica of petitioner’s shoes, but the features
and overall design are so similar and alike that confusion is highly likely.

FORIETRANS MANUFACTURING CORP., AGERICO CALAQUIAN AND ALVIN

MONTERO, v. DAVIDOFF ET. CIE SA & JAPAN TOBACCO, INC., G.R. No. 197482,
March 29, 2017

Facts:

Davidoff Et. Cie SA (Davidoff) and Japan Tobacco, Inc. (JTI) [collectively,
respondents] are non-resident foreign corporations organized and existing under the laws
of Switzerland and Japan, respectively. They are represented in the Philippines by law
firm SyCip Salazar Hernandez & Gatmaitan (SyCip Law Firm). It is authorized under a
special power of attorney to maintain and prosecute legal actions against any
manufacturers, local importers and/or distributors, dealers or retailers of counterfeit
products bearing Davidoff s and JTI' s trademarks or any products infringing their
trademarks. Respondents also retained Business Profiles, Inc. (BPI) as their private
investigator in the Philippines.

Meanwhile, petitioner Forietrans Manufacturing Corporation (FMC) is a domestic

corporation with principal address at Lots 5 and 7, Angeles Industrial Park, Special
Economic Zone, Barangay Calibutbut, Bacolor, Pampanga. BPI reported to respondents
that "there were counterfeit Davidoff and JTI products, or products bearing colorable
imitation of Davidoff and JTI products, or which are confusingly or deceivingly similar to
Davidoff and JTI registered trademarks, being manufactured and stored" in FMC' s
warehouses. SyCip Law Firm then sought the assistance of the Criminal Investigation
and Detection Group (CIDG) of the Philippine National Police in securing warrants to
search the warehouses. The RTC granted the applications. In the same afternoon of
August 4, 2004, PSI Nathaniel Villegas (PSI Villegas) and PSI Eric Maniego (PSI
Maniego) implemented SW Nos. 044 and 046, while PSI De Mesa implemented SW Nos.
045 and 047. During their separate raids, the CIDG teams seized several boxes
containing raw tobacco, cigarettes, cigarette packs, and cigarette reams bearing the
name DAGETA and DAGETA International. They also secured machineries, receptacles,
other paraphernalia, sales invoices and official receipts. Petitioner Agerico Calaquian,
president of FMC, was allegedly apprehended at the premises along with four Chinese
nationals.

With the seized items as evidence, three separate Complaint-Affidavits

were filed before the Office of the Provincial Prosecutor of San Fernando,
Pampanga charging FMC and its employees· with violation of Republic Act No.
8293, or the Intellectual Property Code of the Philippines (IP Code). The charges
are as follows:

1. LS. No. OCPSF-04-H-2047 (Davidoff infringement case) -

Infringement under Section 155 in relation to Section 170 of the IP Code
for the illegal manufacture of cigarettes bearing the DA GET A label, with
packaging very similar to the packaging of Davidoff's products and the
script "DAGETA" on the packs being deceivingly or confusingly similar
to the registered mark "DAVIDOFF."
2. LS. No. OCPSF-04-H-2048 (False Designation of Origin) - False
Designation of Origin under Section 169 in relation to Section 170 of the
IP Code for the illegal manufacture and/or storage of cigarettes bearing
the "DA GET A" label with an indication that such cigarettes were "MADE
IN GERMANY" though they were actually processed, manufactured and
packaged in FMC's office in Bacolor, Pampanga.
 3. LS. No. OCPSF-04-H-2226 (JTI infringement case)- Infringement
under Section 155 in relation to Section 170 of the IP Code for illegally
manufacturing cigarettes which are deceivingly or confusingly similar to,
or almost the same as, the registered marks of JTI, which are the "MILD
SEVEN" and "MILD SEVEN LIGHTS" trademarks.

Calaquian denied the charges against him and FMC. He countered that during the
August 4, 2004 raid, the CIDG did not find counterfeit cigarettes within FMC's premises
as nobody was there at the time. He claimed that what the CIDG found were boxes of
genuine Dageta and Dageta International cigarettes imported from Germany for re-export
to Taiwan and China. Calaquian asserted that FMC is an eco-zone export enterprise
registered with the Philippine Economic Zone Authority (PEZA), and is duly authorized by
the National Tobacco Administration to purchase, import and export tobacco. FMC would
not have passed PEZA's strict rules and close monitoring if it had engaged in trademark
infringement. Calaquian also denies that the CIDG made arrests on the occasion of the
raid.

In a Joint Resolution dated September 12, 2005, Second Assistant Provincial

Prosecutor Otto B. Macabulos (Prosecutor Macabulos) dismissed the criminal
complaints. Prosecutor Macabulos found the affidavit of Jimmy Trocio (Trocio ), the
informant/witness presented by PSI De Mesa in his application for search warrants,
clearly insufficient to show probable cause to search FMC's premises for fake JTI or
Davidoff products. Prosecutor Macabulos also expressed disbelief over the allegation that
Mild Seven and Mild Seven Lights were seized at FMC' s premises. He averred that the
Joint Affidavit of Arrest/Seizure dated August 6, 2004 never mentioned those cigarettes
as among the items seized. Furthermore, there was no proof that FMC manufactured fake
Mild Seven cigarettes. Hence, he also dismissed the JTI infringement case.

Respondents thereafter filed a Petition for Review before then Secretary of Justice
Raul M. Gonzalez (Secretary Gonzalez).
In his Resolution dated February 10, 2006, Secretary Gonzalez affirmed the ruling of
Prosecutor Macabulos.

Respondents moved for reconsideration. This, however, was denied with finality by
Secretary Gonzalez in his Resolution dated March 27, 2006. Respondents elevated the
case to the CA via a petition for certiorari. The CA reversed the resolutions of Secretary
Gonzalez. It adjudged that Secretary Gonzalez acted with grave abuse of discretion in
affirming Prosecutor Macabulos' finding that no probable cause exists against FMC.
Issue: Whether the CA erred in ruling that Secretary Gonzalez committed grave abuse
of discretion in finding no probable cause to charge petitioners with trademark
infringement and false designation of origin.

Ruling: NO.
The records show that a prima facie case for trademark infringement and false
designation of origin exists against petitioners.1âwphi1 Section 155 of the IP Code
enumerates the instances when infringement is committed, viz.:

Sec. 155. Remedies; Infringement. - Any person who shall, without the
consent of the owner of the registered mark:

15 5 .1. Use in commerce any reproduction, counterfeit, copy, or colorable

imitation of a registered mark or the same container or a dominant feature
thereof in connection with the sale, offering for sale, distribution, advertising
of any goods or services including other preparatory steps necessary to
carry out the sale of any goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark

or a dominant feature thereof and apply such reproduction, counterfeit, copy
or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or advertising of
goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive, shall be liable in a civil action
for infringement by the registrant for the remedies hereinafter set forth:
Provided, That the infringement takes place at the moment any of the acts
stated in Subsection 155.1 or this subsection are committed regardless of
whether there is actual sale of goods or services using the infringing
material.

The essential element of infringement is that the infringing mark is likely to cause
confusion. In this case, the complaint-affidavit for the Davidoff infringement case alleged
confusing similarity between the cigarette packs of the authentic Davidoff cigarette and
the sample Dageta cigarette pack seized during the search of FMC's
premises. Respondents submitted samples of the Davidoff and Dageta cigarette packs
during the preliminary investigation. They noted the following similarities:
 Davidoff (Exhibit 1) Dageta (Exhibit 2)
Octagonal designed pack Octagonal designed pack ·

Black and red covering Black and red covering

Silver coloring of the tear tape and printing Silver coloring of the tear tape and printing

"Made in Germany by Reemtsman under "Made m Germany under license of

license of Davidoff & CIE SA, Geneva" DAGETA & Tobacco LT"
Manufacturing Code imprinted on the Manufacturing Code imprinted on the base
base of the pack of the pack
Writing at the back says: "These carefully Writing at the back says: "These specifically
selected tobaccos have been skillfully selected tobaccos have been professionally
blended to assure your pleasure" with the blended to ensure highest quality" with
signature of Zino Davidoff Chinese letters underneath the name
Dageta
Both Prosecutor Macabulos and Secretary Gonzalez disregarded the foregoing
evidence of respondents and confined their resolutions on the finding that there is an
obvious difference between the names "Davidoff' and "Dageta." Petitioners likewise rely
on this finding and did not bother to refute or explain the alleged similarities in the
packaging of Davidoff and Dageta cigarettes. While we agree that no confusion is created
insofar as the names "Davidoff' and "Dageta" are concerned, we cannot say the same
with respect to the cigarettes' packaging. Indeed there might be differences when the two
are compared. We have, in previous cases, noted that defendants in cases of
infringement do not normally copy but only make colorable changes. The most successful
form of copying is to employ enough points of similarity to confuse the public, with enough
points of difference to confuse the courts.

Similarly, in their Complaint-Affidavit in the JTI infringement case, respondents

aver that JTI is the registered owner of the Mild Seven and Mild Seven Lights trademarks;
and that FMC manufactures cigarettes deceivingly or confusingly similar to, or almost the
same as, the registered marks of JTJ. They asserted that FMC is not authorized to
manufacture, pack, distribute or otherwise deal in products using JTI' s trademarks.
Respondents also submitted authentic Mild Seven and Mild Seven Lights cigarettes and
samples of the cigarettes taken from FMC's premises.

When Secretary Gonzalez dismissed respondents' complaint, he made

a factual determination that no Mild Seven and Mild Seven Lights were actually seized
from FMC's premises. He cited Prosecutor Macabulos' observation that the Joint Affidavit
of Arrest/Seizure dated August 6, 2004 never mentioned the foregoing cigarettes as
among the items seized. The CA, on the other hand, reversed the dismissal of the
complaint and declared that the issue of whether or not there was an actual seizure of
Mild Seven and Mild Seven Lights during the raid is evidentiary in character.

We concur with the CA. The validity and merits of a party's defense or accusation,
as well as the admissibility of testimonies and evidence, are better ventilated during trial
proper than at the preliminary investigation level. Further, the presence or absence of the
elements of the crime is evidentiary in nature and a matter of defense that may be passed
upon only after a full-blown trial on the merits.

In this case, Secretary Gonzalez found no probable cause against petitioners for
infringement of the JTI trademarks based on his conclusion that no fake Mild Seven and
Mild Seven Lights were seized from FMC's premises during the raid. He already passed
upon as authentic and credible the Joint Affidavit of Arrest/Seizure presented by
petitioners which did not list Mild Seven and Mild Seven Lights cigarettes as among those
items seized during the raid. In so doing, Secretary Gonzalez assumed the function of a
trial judge, determining and weighing the evidence submitted by the parties.

Meanwhile, the Complaint-Affidavit in the JTI infringement case shows that, more
likely than not, petitioners have committed the offense charged. FMC, alleged to be
without authority to deal with JTI products, is claimed to have been manufacturing
cigarettes that have almost the same appearance as JTI' s Mild Seven and Mild Seven
Lights cigarettes.

As to the crime of False Designation of Origin, Section 169 of the IP Code provides:

Sec. 169. False Designations of Origin; False Description or

Representation. -
169 .1. Any person who, on or in connection with any goods or services, or
any container for goods, uses in commerce any word, term, name, symbol,
or device, or any combination thereof, or any false designation of origin,
false or misleading description of fact, or false or misleading representation
of fact, which:
(a) Is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or
as to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person; or
 (b) In commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities, shall be liable to a civil
action for damages and injunction provided in Sections 156 and 157 of this
Act by any person who believes that he or she is or is likely to be damaged
by such act.
xxx
Respondents alleged in their Complaint-Affidavit that petitioners illegally
manufactured and/or stored cigarettes bearing the "DAGETA" label with an indication that
these cigarettes were made in Germany even if they were actually processed,
manufactured and packed in the premises of FMC. To support their claim, respondents
submitted samples and attached a copy of the receipt/inventory of the items seized during
the August 4, 2004 raid. These included cigarettes bearing the infringing DAGETA
trademark and various machineries, receptacles, boxes and other paraphernalia used in
the manufacturing and packing of the infringing products.
Petitioners, for their part, disputed respondents' claim and maintained that the items
seized from their warehouse were genuine Dageta and Dageta International cigarettes
imported from Germany. In dismissing the charge,
Secretary Gonzalez ruled that respondents failed to establish the falsity of the claim
indicated in the cigarettes' labels that they were made in Germany without providing the
factual or legal basis for his conclusion. He also brushed aside the allegations that (1)
machines intended for manufacturing cigarettes and (2) cigarettes' bearing the label
"Made in Germany" were found and seized from FMC's warehouse in the Philippines. To
our mind, however, these circumstances are enough to excite the belief that indeed
petitioners were manufacturing cigarettes in their warehouse here in the Philippines but
misrepresenting the cigarettes' origin to be Germany. The CA, therefore, did not err in
reversing the Resolution of the Secretary of Justice.
In fine, we see no compelling reason to disturb the ruling of the CA finding probable cause
against petitioners for trademark infringement and false designation of origin.
 Medina v. Global Quest Ventures, Inc., G.R. No. 213815, February 8, 2021

Facts:

Respondent Global Quest Ventures, Inc. (Global) is a domestic corporation which

manufactures and sells gulaman jelly powder mix. The copyrighted name "Mr. Gulaman"
and its logo design are printed on the packaging box and sachet of its product.

On February 1, 2006, Global filed an application for trademark registration of its

copyrighted name "Mr. Gulaman" before the Intellectual Property Office. However, Global
discovered that Ma. Sharmaine R. Medina (Medina) had a pending application for
trademark registration of the name "'Mr. Gulaman' (Stylized)." Medina's application, filed
on May 9, 2005, was for goods under Class 29 of the International Classification of goods.

Claiming ownership of the mark, Global opposed Medina's application.

According to Global, in 2004, it learned that Bendum Trading (Bendum) imitated

its gulaman jelly powder mix product and used "Mr. Gulaman" and its logo design in the
product's packaging. Global had instituted legal actions against Bendum but the product
is still circulating in the market. Global suspected that Medina was working for Bendum
considering that she used its address as her business address.

Despite Global's opposition, Certificate of Registration No. 4-2005-004181 was

issued in Medina's name on June 25, 2006.

Global then filed a Petition for Cancellation of Medina's certificate of registration.

It alleged that "Mr. Gulaman" with its logo design is the copyrighted work of a
certain Benjamin Irao, Jr. (Irao)who Global commissioned to create and register "Mr.
Gulaman" with its logo design as a copyright. In 1996, a Certificate of Copyright
Registration for "Mr. Gulaman" with logo design was issued in Irao's name. Global
maintained that it had been using "Mr. Gulaman" as trademark for its gulaman jelly
products since the year 2000 and the rights over the name was assigned to it by Irao,
through a Deed of Assignment, on February 14, 2005.

BLA-IPO granted Global's Petition for Cancellation of Medina's Certificate of

Trademark Registration on August 8, 2008. It found that the registration was obtained
fraudulently or contrary to the provisions of the Intellectual Property Code.
Issue: whether or not the Court of Appeals erred in affirming the cancellation of
petitioner's Certificate of Registration No. 4-2005-00418.

Ruling:
No. The Court of Appeals did not err in affirming the cancellation of petitioner’s
Certificate of Registration.

At present, as expressed in the language of the provisions of the IP Code, prior

use no longer determines the acquisition of ownership of a mark in light of the adoption
of the rule that ownership of a mark is acquired through registration made validly in
accordance with the provisions of the IP Code.

In the same vein, the prima facie nature of the certificate of registration is not
indicative of the fact that prior use is still a recognized mode of acquiring ownership under
the IP Code. Rather, it is meant to recognize the instances when the certificate of
registration is not reflective of ownership of the holder thereof, such as when: the first
registrant has acquired ownership of the mark through registration but subsequently lost
the same due to non-use or abandonment (e.g., failure to file the Declaration of Actual
Use); the registration was done in bad faith; the mark itself becomes generic; the mark
was registered contrary to the IP Code (e.g., when a generic mark was successfully
registered for some reason); or the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the source of the goods or services on
or in connection with which the mark is used.

This Court continued that while registration vests ownership over a mark, bad faith
may still be a ground for the cancellation of trademark registrations.