1) Fredco Manufacturing Corporation v. President and Fellows of Harvard College, (G.R.

No
185917, June 11, 2011)

Facts:
Fredco Manufacturing Corporation (Fredco) is a Philippine corporation engaged in the
production of sugar. President and Fellows of Harvard College (Harvard) is a non-profit
educational institution based in the United States. In 1996, Harvard and Fredco entered into a
research collaboration agreement to study and develop a new variety of sugarcane. Under the
agreement, Harvard was to provide Fredco with sugarcane germplasm and technical
assistance, while Fredco was to provide land, labor, and other resources for the research. The
agreement also provided that any new variety of sugarcane developed under the collaboration
would be jointly owned by Harvard and Fredco. In 2005, Harvard filed a complaint against
Fredco in the United States District Court for the District of Massachusetts, alleging that Fredco
breached the research collaboration agreement by failing to pay royalties and provide technical
reports. Harvard also sought a declaration that it was the sole owner of the new variety of
sugarcane developed under the collaboration. In response, Fredco filed a complaint in the
Philippine court, seeking to declare the research collaboration agreement null and void and to
enjoin Harvard from claiming ownership of the new variety of sugarcane.

Issue:
WON the Philippine court has jurisdiction over the dispute between Fredco and Harvard.

HELD:
No. The Supreme Court ruled that the Philippine court has no jurisdiction over the dispute
between Fredco and Harvard, affirming the decisions of the lower courts. The Court held that
the research collaboration agreement between Fredco and Harvard contained a forum selection
clause, which provides that any dispute arising from the agreement must be resolved through
arbitration in Massachusetts, United States. The Court noted that the forum selection clause
was valid and enforceable, and that Fredco had voluntarily agreed to submit to the jurisdiction of
the courts in Massachusetts. The Court also held that the Philippine court should defer to the
jurisdiction of the courts in Massachusetts, as the dispute involved a matter of international
concern and the courts in Massachusetts were better equipped to handle the dispute.

2. Mighty Corporation and La Campana Fabrica De Tabaco, Inc. vs.E. & J. Gallo Winery and
The Andresons Group, Inc., (G.R. No. 154342 July 14, 2004)

Facts:
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 Winerys exclusive wine importer and distributor in the Philippines since 1991, selling
these products in its own name and for its own account.Gallo Winerys 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 100s 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 manufacturers sworn statement as basis
for BIRs 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.

Issue:
WON the CA did not follow prevailing laws and jurisprudence when it held that: [a] RA 8293
(Intellectual Property Code of the Philippines [IP Code]) was applicable in this case; [b] GALLO
cigarettes and GALLO wines were identical, similar or related goods for the reason alone that
they were purportedly forms of vice; [c] both goods passed through the same channels of trade
and [d] petitioners were liable for trademark infringement, unfair competition and damages.

Held:
No. THE TRADEMARK LAW AND THE PARIS CONVENTION ARE THE APPLICABLE LAWS,
NOT THE INTELLECTUAL PROPERTY CODE We note that respondents sued petitioners on
March 12, 1993 for trademark infringement and unfair competition committed during the
effectivity of the Paris Convention and the Trademark Law. 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.
THE ACTUAL COMMERCIAL USE IN THE PHILIPPINES OF GALLO CIGARETTE
TRADEMARK PRECEDED THAT OF GALLO WINE TRADEMARK. By respondents own
judicial admission, the GALLO wine trademark was registered in the Philippines in November
1971 but the wine itself was first marketed and sold in the country only in 1974 and only within
the former U.S. military facilities, and outside thereof, only in 1979. On the other hand, by
testimonial evidence supported by the BIR authorization letters, forms and manufacturers sworn
statement, it appears that petitioners and its predecessor-in-interest, Tobacco Industries, have
indeed been using and selling GALLO cigarettes in the Philippines since 1973 or before July 9,
1981.

3) Pribhdas J. Mirpuri vs Court of Appeals, Director of Patents and the Barbizon Corporation,
(G.R. No. 114508, November 19, 1999)
Facts: Lolita Escobar applied for the registration of the trademark ‘Barbizon’ for her products
such as brassieres and ladies undergarments. Respondent Barbizon Corporation, an American
corporation, opposed alleging that petitioner’s mark is confusingly similar to its own trademark
‘Barbizon.’ Escobar’s application was given due course and her trademark was registered.
Later, Escobar assigned all her rights to petitioner Mirpuri who failed to file an Affidavit of Use
resulting in the cancellation of the trademark. Petitioner then applied for registration of the
trademark to which respondent Barbizon again opposed, now invoking the protection under
Article 6bis of the Paris Convention. The Director of Patents declaring respondent’s opposition
was already barred, petitioner’s application was given due course. CA reversed the judgment.

Issues: WON respondent may invoke the protection under Article 6bis of the Paris Convention.

Held:
YES. The Convention of Paris for the Protection of Industrial Property, otherwise known as the
Paris Convention, is a multilateral treaty that seeks to protect industrial property consisting of
patents, utility models, industrial designs, trademarks, service marks, trade names and
indications of source or appellations of origin, and at the same time aims to repress unfair
competition. The Convention is essentially a compact among various countries which, as
members of the Union, have pledged to accord to citizens of the other member countries
trademark and other rights comparable to those accorded their own citizens by their domestic
laws for an effective protection against unfair competition. Art. 6bis is a self-executing provision
and does not require legislative enactment to give it effect in the member country. It may be
applied directly by the tribunals and officials of each member country by the mere publication or
proclamation of the Convention, after its ratification according to the public law of each state and
the order for its execution. The Philippines and the United States of America have acceded to
the WTO Agreement. Conformably, the State must reaffirm its commitment to the global
community and take part in evolving a new international economic order at the dawn of the new
millennium.

4) Canon Kabushiki Kaisha v. CA, (G.R. No. 120900, July 20, 2000)

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

Issues:
WON petitioner may be afforded protection of its trade name.

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

5) Etepha, A.G. v. Director of Patents, (G.R. No. L-20635, March 31, 1966)

Facts:
Respondent Westmont Pharmaceuticals, an American corporation, sought registration of
trademark ‘Atussin’ placed on its medicinal preparation for the treatment of coughs. Petitioner
Etepha, owner of the trademark ‘Pertussin’ placed also on preparation for cough treatment,
objected claiming that it will be damaged since the 2 marks are confusingly similar. The Director
of Patents gave due course to the application.

Issues:
WON petitioner’s trademark is registrable.

HELD:
Yes. That the word “tussin” figures as a component of both trademarks is nothing to wonder at.
The Director of Patents aptly observes that it is “the common practice in the drug and
pharmaceutical industries to ‘fabricate’ marks by using syllables or words suggestive of the
ailments for which they are intended and adding thereto distinctive prefixes or suffixes”. And
appropriately to be considered now is the fact that, concededly, the “tussin” (in Pertussin and
Atussin) was derived from the Latin root-word “tussis” meaning cough. “Tussin” is merely
descriptive; it is generic; it furnishes to the buyer no indication of the origin of the goods; it is
open for appropriation by anyone. It is accordingly barred from registration as trademark. With
jurisprudence holding the line, we feel safe in making the statement that any other conclusion
would result in “appellant having practically a monopoly” of the word “tussin” in a trademark.
While “tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly
become the subject of a trademark “by combination with another word or phrase”. And this
union of words is reflected in petitioner’s Pertussin and respondent’s Atussin, the first with prefix
“Per” and the second with Prefix “A.”

6) PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH MANAGEMENT SA

(G.R. No. 180073, November 25, 2009)

Facts:
Respondent is a corporation and owner of trademark PYCNOGENOL, a food. Respondent later
discovered that petitioner was also distributing a similar food supplement using the mark
PCO-GENOLS since 1996. This prompted respondent to demand that petitioner cease and
desist from using the aforesaid mark. Respondent filed a Complaint for Infringement of
Trademark with Prayer for Preliminary Injunction against petitioner, in using the name
PCO-GENOLS for being confusingly similar. Petitioner appealed otherwise. The RTC decided in
favor of the respondent. It observed that PYCNOGENOL and PCO-GENOLS have the same
suffix "GENOL" which appears to be merely descriptive and thus open for trademark registration
by combining it with other words and concluded that the marks, when read, sound similar, and
thus confusingly similar especially since they both refer to food supplements. On appeal to the
CA, petitioner failed to obtain a favorable decision. The appellate court explained that under the
Dominance of the Holistic Test, PCO-GENOLS is deceptively similar to PYCNOGENOL.

Issues: WON the names are confusingly similar.

Held:
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.

7) Shangri-La International Hotel Management, LTD., Shangri-La Properties Inc., Makati

Shangri- La Hotel & Resort Inc., and Kuok Philippines Properties, Inc vs Developers Group of
Companies, Inc., (GR 159938, March 31, 2006)
Facts:
Respondent DGCI applied for and was granted registration of the ‘Shangri-La’ mark and ‘S’ logo
in its restaurant business. Petitioner Shangri-La, chain of hotels and establishments owned by
the Kuok family worldwide, moved to cancel the registration of the mark on the ground that it
was illegally and fraudulently obtained and appropriated by respondents. Petitioner also moved
to register the mark and logo in its own name. Later, respondent DGCI filed before the trial court
a complaint for infringement against petitioner alleging that DGCI had been the prior exclusive
user and the registered owner in the Philippines of said mark and logo. Petitioner Shangri-La
argued that respondent had no right to apply for the registration because it did not have prior
actual commercial use thereof. The trial court found for respondent. CA affirmed.

Issue: WON respondent’s prior use of the mark is a requirement for its registration.

Held:
Yes. While the present law on trademarks has dispensed with the requirement of prior actual
use at the time of registration, the law in force at the time of registration must be applied. Under
the provisions of the former trademark law, R.A. No. 166, as amended, hence, the law in force
at the time of respondent’s application for registration of trademark, the root of ownership of a
trademark is actual use in commerce. Section 2 of said law requires that before a trademark can
be registered, it must have been actually used in commerce and service for not less than two
months in the Philippines prior to the filing of an application for its registration. Trademark is a
creation of use and therefore actual use is a pre-requisite to exclusive ownership and its
registration with the Philippine Patent Office is a mere administrative confirmation of the
existence of such right. While the petitioners may not have qualified under Section 2 of R.A. No.
166 as a registrant, neither did respondent DGCI, since the latter also failed to fulfill the 2-month
actual use requirement. What is worse, DGCI was not even the owner of the mark. For it to have
been the owner, the mark must not have been already appropriated (i.e., used) by someone
else. At the time of respondent DGCI’s registration of the mark, the same was already being
used by the petitioners, albeit abroad, of which DGCI’s president was fully aware.

8) Converse Rubber Corporation v. Universal Rubber Products, (G.R. No. L-27906, January 8,
1987)
Facts:
Respondent Universal Rubber applied for the registration of the trademark ‘Universal Converse
and Device’ used on its rubber shoes and rubber slippers. Petitioner Converse opposed on the
ground that the trademark sought to be registered is confusingly similar to the word ‘Converse’
which is part of its corporate name ‘Converse Rubber Corporation’ and will likely deceive
purchasers and cause irreparable injury to its reputation and goodwill in the Philippines.
Respondent argued that the trademarks petitioner uses on its rubber shoes are ‘Chuck Taylor’
and ‘All Star Device.’ The Director of Patents gave due course to respondent’s application. MR
was denied.

Issues: WON there is confusing similarity between the two trademarks.

Held:
Yes. The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is imprinted in a
circular manner on the side of its rubber shoes. In the same manner, the trademark of petitioner
which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the side
of its rubber shoes. The determinative factor in ascertaining whether or not marks are
confusingly similar to each other “is not whether the challenged 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. It would be sufficient, for purposes of the
law that the similarity between the two labels is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the new brand for it.” Even if not all the details just
mentioned were identical, with the general appearance alone of the two products, any ordinary,
or even perhaps even [sic] a not too perceptive and discriminating customer could be deceived
… “ But even assuming, arguendo, that the trademark sought to be registered by respondent is
distinctly dissimilar from those of the petitioner, the likelihood of confusion would still subsists,
not on the purchaser’s perception of the goods but on the origins thereof. By appropriating the
word “CONVERSE,” respondent’s products are likely to be mistaken as having been produced
by the petitioner. “The risk of damage is not limited to a possible confusion of goods but also
includes confusion of reputation if the public could reasonably assume that the goods of the
parties originated from the same source.

9) Societe Des Produits vs. Martin T. Dy, (Gr no. 172276 August 8, 2010)

Facts:
Petitioner Nestle, a Swiss corporation, owns the ‘NAN’ trademark for its line of infant powdered
milk products in the Philippines. Respondent Dy, Jr. on the other hand, owner of 5M Enterprises,
imports and repacks powdered milk for adults bearing the mark ‘NANNY.’ Petitioner Nestle filed
before the trial court an infringement complaint against the respondent. The trial court held that
respondent’s trademark is an infringement to petitioner’s mark because it would imply that
respondent’s ‘NANNY’ product came from petitioner. CA reversed and held that the two marks
are not confusingly similar thus respondent cannot be held liable for infringement.

Issues: WON respondent is liable for trademark infringement.

HELD:
Yes. In accordance with Section 22 of R.A. No. 166, as well as Sections 2, 2-A, 9-A, and 20
thereof, the following constitute the elements of trademark infringement: (a) A trademark
actually used in commerce in the Philippines and registered in the principal register of the
Philippine Patent Office; (b) It is used by another person in connection with the sale, offering for
sale, or advertising of any goods, business or services 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 such trademark is reproduced,
counterfeited, copied or colorably imitated by another person and such reproduction, counterfeit,
copy or colorable imitation is applied to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in connection with such goods, business or
services as to likely cause confusion or mistake or to deceive purchasers; (c) The trademark is
used for identical or similar goods; and (d) Such act is done without the consent of the
trademark registrant or assignee. On the other hand, the elements of infringement under R.A.
No. 8293 are as follows: (a) The trademark being infringed is registered in the Intellectual
Property Office; however, in infringement of trade name, the same need not be registered; (b)
The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the
infringer; (c) The infringing mark or trade name is used in connection with the sale, offering for
sale, or advertising of any goods, business or services; or the infringing mark or trade name is
applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to
be used upon or in connection with such goods, business or services; (d) The use or application
of the infringing mark or trade name is likely to cause confusion or mistake or to deceive
purchasers or others as to the goods or services themselves or as to the source or origin of
such goods or services or the identity of such business; and (e) It is without the consent of the
trademark or trade name owner or the assignee thereof. Among the elements, the element of
likelihood of confusion is the gravamen of trademark infringement. 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.

10) Societe des Produits Nestle, s.a. and Nestle Philippines, Inc. Vs. Court of Appeals and CFC
Corporation, (G. R. No. 112012, April 4, 2001)
Facts: Respondent CFC Corporation filed an application for the registration of the trademark
FLAVOR MASTER for instant coffee. Petitioners, a Swiss company and a domestic corporation
licensee of Societe, opposed on the ground that it is confusingly similar to its trademark for
coffee and coffee extracts: MASTER ROAST and MASTER BLEND. Petitioners contend that
the dominant word MASTER is present in the 3 trademarks. Respondent CFC argued that the
word MASTER cannot be exclusively appropriated being a descriptive or generic term. BPTTT
denied CFC’s application. CA held otherwise.

Issue: WON the word MASTER is a descriptive or generic term incapable of exclusive
appropriation.

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