as a trade-mark or trade-name.

The
phrase "ang tibay" is never used
adjectively to define or describe an object.

Ang vs. Teodoro

G.R. No. L-48226
December 14, 1942

Ang Tibay, being neither geographic nor

descriptive, was originally capable of
exclusive appropriation as a trade-mark,
acquired a proprietary connotation by
respondent's long and exclusive use of
said phrase with reference to his products
and his business.

Facts:
Respondent
Toribio
Teodoro,
has
continuously used "Ang Tibay," both as a
trade-mark and as a trade-name, in the
manufacture and sale of slippers, shoes,
and indoor baseballs since 1910.
Petitioner, Ana L. Ang, registered the same
trade-mark "Ang Tibay" for pants and shirts
on April 11, 1932, and established a
factory for the manufacture of said articles
in the year 1937. In the following year her
gross sales amounted to P422,682.09.

No, the mere relation or association of the

articles
is
not
controlling.
The
uninterrupted and exclusive use since
1910 of respondent's registered trademark on slippers and shoes manufactured
by him, , it has come to indicate the origin
and ownership of said goods.The court
held that the selection by petitioner of the
same trade-mark for pants and shirts was
motivated by a desire to get a free ride on
the reputation and selling power it has
acquired at the hands of the respondent.
Doctrine: the test employed by the courts
to determine whether noncompeting goods
are or are not of the same class if they are
so dissimilar or so foreign to each other as
to make it unlikely that the purchaser
would think the first user made the second
user's goods.
Lim Hoa vs. Directors of Patents
G.R. No. L-8072. October 31, 1956
Facts:
Petitioner, Lim Hoa, filed with the Patent
Office an application for the registration of
a trademark, consisting of a representation
of two midget roosters in an attitude of
combat with the word Bantam printed
above them, he claiming that he had used
said trademark on a food seasoning
product.
The Agricom Development Co., Inc., a
domestic
corporation,
opposed
the
application on several grounds, among
others, that the trademark sought to be
registered was confusingly similar to its

The Respondent filed a petition for the

cancellation of the trademark of the
petitioner on the grounds that the
respondents trade mark Ang Tibay" is not
a descriptive term, it acquired secondary
meaning since he was using it since 1910
and pants and shirt of the petitioner and
the respondents shoes slippers, shoes,
and indoor baseballs are related goods.
Respondent contends that the petitioner
never had spent a single centavo
advertising "Ang Tibay" shirts and pants
prior to 1938.
The Trial Court held that the products of
the parties in this case were not related
goods.
The Court of Appeals Reversed the
decision of the Trial Court.
Issue:
a) WON Ang Tibay is a Descriptive name?
b) WON Ang Tibay trade name acquired
secondary meaning?
c) WON Pants and shirt of the petitioner
and the shoes slippers, shoes, and
indoor baseballs are related goods?
Ruling:
"Ang Tibay" is not a descriptive term within
the meaning of the Trade-Mark Law but
rather a fanciful or coined phrase which
may properly and legally be appropriated

Cuanchow Soy and Canning Co., vs.

The Director of Patents and Villapania,
G.R. No. L-13947 June 30, 1960
Facts:
Both petitioner Chuanchow Soy & Canning
Co. and respondent Rosario Villapania are
engaged in the manufacture and sale of
soy sauce. Since 1950, petitioner had
been using as trade mark the words "Carp
Brand Soy", printed in a distinctive style of
lettering above the drawing of a fish to
distinguish its product, on labels affixed
directly to the bottles containing soy sauce,
and on tissue paper in which these bottles
were wrapped.
Respondent Villapania since 1956 had
been using as trademark of her soy sauce
the name of "Bangos Brand" written in the
same distinctive style of lettering as that of
the petitioner's "Carp Brand", above the
drawing of the fish similar to the fish
drawing on the trademark of petitioner, on
labels also attached to the bottles
containing her soy sauce, and the bottles
were wrapped also in tissue paper bearing
a similar design
Villapania applied for registration of her
trademark.
Petitioner company filed its opposition to
respondent's application. Respondent
Director of Patents rendered a decision
dismissing petitioner's opposition to the
application.
Issue:
WON the features of the respondents
trademark would cause confusion or
mistakes in the mind of the public or
deceive purchasers?
Ruling:
Yes, The court held that the trademarks of
the parties involves in this case were very
close resemblance between the two not
only in the style of lettering of the words
"Carp" and Brand" and the words "Bangos
Brand", but also in the size of the letters,

register mark, consisting of a pictorial

representation of a hen with the words
Hen Brand and Marca Manok, which
mark or brand was also used on a food
seasoning product, before the use of the
trademark by the applicant.
Director of Patents held that applicants
trademark would cause confusion or
mistake or deceive purchasers, and he
refused registration of said trademark.
Petitioner filed an appeal to reversed the
decision of the Director of Patents.
Issue:
WON the the use of two roosters would
cause confusion or mistakes in the mind of
the public or deceive purchasers?
Ruling:
Yes, the two roosters appearing in the
trademark of the applicant and the hen
appearing on the trademark of the
Oppositor, although of different sexes,
belong to the same family of chicken,
known as manok in all the principal
dialects of the Philippines, and when a
cook or a household help or even a
housewife buys a food seasoning product
for the kitchen the brand of Manok or
Marca Manok would most likely be upper
most in her mind and would influence her
in selecting the product, regardless of
whether the brand pictures a hen or a
rooster or two roosters.
Doctrine:
The test of dominancy
Similarity in size, form, and color, while
relevant, is not conclusive. If the
competing trademark contains the main or
essential or dominant features of another,
and confusion and deception is likely to
result,
infringement
takes
place.
Duplication or imitation is not necessary;
nor it is necessary that the infringing label
should suggest an effort to imitate.

Boc on the ground that the petitioner has

failed has failed to establish satisfactorily
its claim of 'prior' use" of the subject trade
mark in the Philippines before World War II
and Petitioner "will not be damaged by the
registration of the trade mark and design in
favor of applicant Kee Boc."
Issue:
WON petitioner-oppositor had actually
used this trade mark for Japanese goods
in the Philippines prior to that of the
applicant?
Ruling:
Yes, the trade mark sought to be
registered already belongs to Kojiro Asari.
Shirts and undershirts bearing said trade
mark appear to have been imported to the
Philippines as early as 1949. The
transcript of the trade mark filed by the
applicant before the director in connection
with his petition for registration, was taken
from a mark actually used on goods
imported from Japan to the Philippines,
except that the former does not contain the
inscriptions
"REGISTERED
TRADE
MARK" and "Made in Occupied Japan",
because the inscriptions are covered by a
thin piece of paper pasted on the
inscriptions.
The trade mark "RACE BRAND" applied
for is exactly the same as the trade mark
"RACE BRAND" registered in Tokyo.
Therefore, The petitioner-oppositor was
the first user of the trade mark in question
in the Philippines, it will be damaged by
the registration of the trade mark in the
name of applicant-respondent.
MEAD JOHNSON and COMPANY, vs. N.
V. J. VAN DORP, LTD., ET AL
G.R. No. L-17501 April 27, 1963
Facts:
Respondent N. V. J. Van Dorp, Ltd, a
corporation doing business in Netherlands,
filed an application for the registration of
the trademark ALASKA for the use of

as well as the word "Soy" and the Chinese

characters underneath the said three
words, including the letters beneath the
two fishes, all of which words are
correspondingly in the same color, to say
nothing of the similarity of the two fishes
not only in their size but even in the length
and position of their respective tails and
fin. This 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.
Doctrine:
To determine if that competing trade are
similar, placed them side by side, and
compared them.
Asari Yoko CO., LTD., petitioner, vs.
Kee Boc and Celedonio Agrava,
Director of Patents,
G.R. No. L-14086 January 20, 1961
Facts:
Kee Boc, a Chinese citizen, filed a petition
for the registration of the trade mark
"RACE" and design to be used in shirts
and undershirts manufactured by him. He
claims to have first used the trade mark in
commerce in year1952, basing the design
on a movie picture.
Asari Yoko Co., Ltd., a Japanese
corporation, opposed to the registration of
the trade mark of petitioner on the ground
that he is the owner of the trade mark
because the same is registered in Japan
and in the Philippines. It was registered on
August, 1929, under the provisions of Act
No. 666. that the trade mark as been in
continuous use in commerce in, and trade
with the Philippines since its registration
until the early art of 1942, and then again
after the liberation of the Philippines up to
the present; that the trade mark was ever
abandoned by the registrant and that it will
be damaged by the registration of the
same.
the Director of Patents dismissed the
opposition and adjudged applicant Kee

milk which is in red. Fourth, the

classification of their products were both
dissimilar. Petitioners product falls under
Class 6 of the official classification as
Medicines
and
Pharmaceutical
Preparations. On the other hand,
respondents products falls under Class 47
which refers to "Foods and Ingredients of
Foods.
Doctrine:
In determining if they are confusingly
similar a comparison of said words is not
the
only
determinant
factor. The
trademarks in their entirety as they appear
in the respective labels must also be
considered in relation to the goods to
which they are attached.
Chua Che, petitioner, vs. Philippine
Patent Office and Sy Tuo
G.R. No. L-18337 January 30, 1965
Facts:
Petitoner, Chua Che, filed an application
for the registration of the trademark X-7
for use on laundry soap. Petitioner alleged
that he first used the trade name X-7 in
commerce on June 10, 1957.
Respondent Sy Tuo, engaged in the
business of selling perfume, lipstick and
nail polish, presented a "Notice of
Opposition on the ground that the
registration of the trademark "X-7" in the
name of applicant CHUA CHE will likely
mislead the public so as to make them
believe that said goods are manufactured
or sponsored by or in some way in trade
associated with him. Respondents alleged
that he first used the trade name X-7 on
July 31, 1953 prior to applicant's first use
of the mark on June 10, 1957. Respondent
also alleged that he spent a big amount in
expanding
his
business
for
the
manufacture of toilet soap and crystal
laundry soap with his already popular "X-7"
brand.

their product which covers milk, milk

products, dairy products and infant's foods.
Petitioner Mead Johnson & Company,
owner of the trademark "ALACTA" used for
powdered half-skim milk, filed an
opposition on the ground that it will be
damaged by the said registration as the
trademark ALASKA" is confusingly similar
to its trademark ALACTA".
Respondent alleged that its trademark and
product "ALASKA" are entirely different
from oppositor's trademark and product
"ALACTA", since applicant's product
covers milk, milk products, dairy products
and infant's foods which fall under Class
47 Foods and Ingredients of Foods, while
oppositor's products cover pharmaceutical
preparations for nutritional needs which fall
under Class 6, which refers to Medicines
and Pharmaceutical Preparations.
The Director of the Patent Office dismissed
the opposition.
Issue:
WON the respondents trademark alaska
would cause confusion or mistakes in the
mind of the public or deceive purchasers?
Ruling:
No,The court held that the marks involved
were different to one another.
First, The sizes of the containers of the
goods of petitioner differ from those of
respondent. The goods of petitioner come
in one-pound container while those of
respondent come in three sizes.
Second, The colors too differ. One of
petitioner's containers has one single
background color, the other has two
background colors.
Third, Petitioner's mark "ALACTA" has only
the first letter capitalized and is written in
black. Respondent's mark "ALASKA" has
all the letters capitalized written in white
except that of the condensed full cream

has had the said trademark registered in

the Philippines since 1930.
Issue:
WON the petitioners trademark would
cause confusion or mistakes in the mind of
the public or deceive purchasers?
Ruling:
Yes, the court considered that the
similarities in appearance and sound
between the marks AMBISCO and
NABISCO, the nature and similarity of the
products of the parties together with the
fact that opposer's NABISCO has been
used in commerce in the Philippines for
more than fifty five (55) years before
AMBISCO was adopted by applicant,
confusion of purchasers is likely.
Doctrine: The question of infringement is
to be determined by the test of dominancy.
The dissimilarity in size, form and color of
the label and the place where applied are
not conclusive. If the competing label
contains the trademark of another, and
confusion or deception is likely to result,
infringement takes place, regardless of the
fact that the accessories are dissimilar.
Duplication or exact imitation is not
necessary; nor is it necessary that the
infringing label should suggest an effort to
imitate.
Bristol Myers Co vs. The Director of
Patents
and
United
American
Pharmaceuticals, Inc.
G.R. No. L-21587 May 19, 1966
Facts:
A petition for registration of the trademark
"BIOFERIN" was filed by the petitioner
United American Pharmaceuticals, Inc. It
covers medicine for simple headaches,
neuralgia, colds, menstrual pain and minor
muscular aches.
Petitioner Bristol Myers Co., filed an
opposition to the application. Said
oppositor is the owner in the Philippines of
the trademark BUFFERIN" The product

Petitioner contends that he is entitled to

the registration of the trademark X-7" on
the grounds that products of opposer was
not related to his product and opposer has
not yet used "X-7" mark on soap.
Issue: WON the petitioners tradename
would cause confusion or mistakes in the
mind of the public or deceive purchasers?
Ruling:
Yes, the court held that the products of the
parties, while specifically different, are
products intended for use in the home and
usually
have
common
purchasers.
Furthermore, the use of X-7 for laundry
soap is but a natural expansion of
business of the opposer. In fact, herein
opposer in 1956, prior to the alleged date
of first use by respondent-applicant of the
trademark X-7 for laundry soap on June
10, 1957, had made steps in expanding
the use of this trademark to granulated
soap.
Doctrine: Under the Trade Mark Act of
1905, registration of a trademark should be
refused in cases where there is a
likelihood of confusion, mistake, or
deception, even though the goods fall into
different categories.
Operators, Inc. vs. The Director of
Patents, et al
G.R. No. L-17901
October 29,
1965
Facts:
Petitioner, a domestic corporation, applied
to the Philippine Patent Office for
registration of AMBISCO as a trademark
for its locally manufactured candy
products. It has been using said trademark
since May 1956.
The National Biscuit Company opposed
the
application,
having
previously
registered NABISCO as trademark for its
own bakery goods, such as biscuits,
crackers, cakes and wafers. The oppositor,

Facts:
Petitioner filed his application on
November 25, 1958 for the registration of
the trademark Marca Pinya, alleging
therein that since January 8, 1951 he had
been using the trademark on undershirts
(de hilo), T-shirts, and baby dresses.
Because of the confusing similarity
between said trademark and that applied
for on July 16, 1957 by Respondent Ng
Kian Giab, an interference was declared
as existing between the two applications.
The respondent director of patents
adjudged the registration of Respondent
Ng Kian Giab by relying to the party who
first filed the application for registration of
the trademark Marca Pinya because
neither of them "satisfactorily adduced
definite and conclusive proof of their
asserted dates of first use of the trademark
"Marca Pia.
Issue:
WON the petitioner is the prior user of the
trade mark Marca Pinya?
Ruling:
Yes, Respondent Director disregarded all
the evidence submitted by both parties and
relied exclusively on the filing dates of the
applications in reaching his conclusion as
to the junior party applicant. petitioner
used the trademark in question as early as
February 1952. January 1951 he started
laying the groundwork for his own factory
and registered the factory's first books of
accounts with the Bureau of Internal
Revenue, and when the business was
officially launched in 1952. City of Manila
granted petitioner a permit to operate a
shirt factory on the same year.
The
petitioners customers and suppliers also
testified the he first operated his business
in year 1952. On the other hand, the
respondents evidence showed that th
business tax receipt in the name of Ng
Kian Kee is dated October 18, 1955.
Hence, respondents use began only in
1955.

covered by "BUFFERIN" also medicine for

simple headaches, neuralgia, colds,
menstrual pain and minor muscular aches.
Oppositor's contention was that the
registration of the applicant's trademark
"BIOFERIN would violate its rights and
interests in its registered trademark
"BUFFERIN" as well as mislead and
confuse the public as to the source and
origin of the goods covered by the
respective marks, in view of the allegedly
practically the same spelling, pronunciation
and letter-type design of the two
trademarks covering goods of the same
class.
Issue:
WON the respondents trademark would
cause confusion or mistakes in the mind of
the public or deceive purchasers?
Ruling:
No,
the
words
"BIOFERIN"
and
"BUFFERIN" have the same suffix and
similar sounding prefixes, they appear in
their respective labels with strikingly
different backgrounds and surroundings,
as to color , size and design.
The product of the applicant is expressly
stated as dispensable only upon doctor's
prescription, while that of oppositor does
not require the same. The chances of
being confused into purchasing one for the
other are therefore all the more rendered
negligible.
Doctrine:
The test is not simply to take their words
and
compare
the
spelling
and
pronunciation of said words. Rather, it is to
consider the two marks in their entirety, as
they appear in the respective labels, in
relation to the goods to which they are
attached.
Chung Te vs. Ng Kian Giab and The
Honarable Director of Patents
G.R. No. L-23791 November 23, 1966

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.
Two letters of "SALONPAS" are missing in
"LIONPAS"; the first letter a and the letter
s. Be that as it may, when the two words
are pronounced, the sound effects are
confusingly similar.
Doctrine: Similarity of sound is sufficient
ground for this Court to rule that the two
marks are confusingly similar when applied
to merchandise of the same descriptive
properties.
Jose P. Sta. Ana vs. Florentino Maliwat
and Tiburcio S. Evalle
G.R. No. L-23023 August 31, 1968
Facts:
Respondent Florentino Maliwat filed with
the Patent Office an application for
registration of the trademark FLORMANN,
which is used on shirts, pants, jackets and
shoes for ladies, men, and children.
Petitioner Jose P. Sta. Ana filed an
application for the registration of the
tradename
FLORMEN
SHOE
MANUFACTURERS.
Respondent Director gave due course to
Maliwat's application and denied that of
Sta. Ana.
Petitioner would confine the respondent to
the use of the mark FLORMANN to
tailoring and haberdashery only, but not on
shoes, on the ground that petitioner had
used the name FLORMEN on shoes since
1959, while the respondent used his mark
on shoes only in 1962.
Issue:
WON the use of mark of the respondent
should be limited to tailoring and
haberdashery only?

Doctrine:
In determining who was the junior party
applicant in the interference. the filing date
of said abandoned application may not
properly be considered. But in the peculiar
situation obtaining in this case, where the
testimonial evidence for both parties has
been entirely disregarded, and reliance is
placed solely on the filing dates of the
applications as proof of the respective
dates of first use, then the abandoned
application filed by the junior party
applicant becomes cogent evidence to
show that he first used the trademark as of
the date of its filing.
Marvex Commercial Co., Inc. vs.Petra
Hawpia and Co., and The Director of
Patents
G.R. No. L-19297 December 22, 1966
Facts:
Respondent, Petra Hawpia & Co filed a
petition for the registration of the
trademark "LIONPAS" used on medicated
plaster.
Respondent
The
Marvex
Commercial Co. filed an opposition
thereto, alleging that the registration of
such trademark would mislead the public
as they are confusingly similar in the
trademark "SALONPAS" used on another
medicated plaster.
Director of Patents dismissed the
opposition and gave due course to the
petition, stating in part that "confusion,
mistake, or deception among the
purchasers will not likely and reasonably
occur" when both trademarks are applied
to medicated plaster.
Issue:
WON the respondents trademark would
cause confusion or mistakes in the mind of
the public or deceive purchasers?
Ruling:
Yes, both these words have the same
suffix, "PAS", which is used to denote a
plaster that adheres to the body with
curative powers. "Pas, being merely

Philippines by another and not abandoned.

Here, Aguinaldo's was continuously using
the trademark KAYNEE as among those
sold in its store. Hence, the word 'another'
used by the Statute can refer to
Aguinaldo's
petitioner alleged that the Director of
Patents relied on the explicit and literal
language of the appropriate section and
ignored other relevant provision which
could have called for a different conclusion
Issue:
WON Director of Patents ignored other
relevant sections of Sec 4(d) of RA No.
166?
Ruling:
No, Construction and interpretation come
only after it has been demonstrated that
application is impossible and inadequate
without them. Such a principle has since
then commended itself for acceptance and
has been invariably followed. Here,
petitioner engaged in manufacturing and
selling the same kind of products would
rely on a trademark, which undeniably was
previously registered abroad and which
theretofore had been used and advertised
extensively by Aguinaldos Department
Store.
American Wire & Cable Company vs.
Central Banahaw Industries, Inc and
Director of Patents
G.R. No. L-26557 February 18, 1970
Facts:
Respondent Central Banahaw Industries,
Inc., applied with the Director of Patents
for
registration
of
the
trademark
DYNAFLEX and Device to be used in
connection with electric wires.
Petitioner The American Wire and Cable
Co., Inc. user of registered trade mark
DURAFLEX for electric wires, apparatus,
machines and supplies opposed the
application on the ground that applicant's
use of the trade mark DYNAFLEX would

Ruling:
No, The court affirmed the decision of the
director of the patents that among local
tailors and haberdashers to branch out into
articles of manufacture which have some
direct relationship such as to garments or
attire to complete one's wardrobe. Mere
dissimilarity of goods should not preclude
relief where the junior user's goods are not
too different or remote from any that the
owner would be likely to make or sell; and
in the present case, wearing apparel is not
so far removed from shoes as to preclude
relief.
Doctrine:
The protection provided by the to the
trademark owner is not limited to guarding
his goods or business from actual market
competition with identical or similar
products of the parties, but extends to all
cases in which the use by a junior
appropriator of a trademark prevent the
normal potential expansion of his
business.
Lim Kiah vs. The Kaynee Company and
The Director of Patents
G.R. No. L-24802
October 14,
1968
Facts:
Petitioner Lim Kiah filed an application to
register Kaynee trademark allegedly being
used by him on undershirts, polo shirts, Tshirts,
pants,
sporting
wear
and
handkerchiefs.
Respondent Kaynee Company opposed to
the petitioners application alleging that
those goods of the former were similar to
those goods being sold by the applicant.
The public respondent held that mark
kanyee were used by Aguinaldo's
Department Store in late in 1949 or early
1950. Under Section 4(d) of Republic Act
No. 166, a trademark shall not be
registrable if it consists of or comprises a
mark or tradename previously used in the

Facts:
The respondent Tiu Chian filed an
application for the registration of the
trademark SULMETINE used on medicine
for domestic.
Petitioner American Cyanamid Company
filed a petition to cancel certificate of
registration of the respondents trademark.
Petitioner alleged that through long use in
the country, SULMET has become popular
and well-known and enjoys widespread
reputation brought about by extensive
advertisement and promotion through the
media. Granting the registration of the
respondent would confused or deceiver
the public purchasing because the
trademarks are identical.
Petitioner granted the application the
respondent on the ground that there are
there are striking differences between the
two trademarks such as the coloring
scheme, pictorial representation, clear
indication of the source and printed matter
on the label.
Issue:
WON the respondents trademark would
cause confusion or mistakes in the mind of
the public or deceive purchasers?
Ruling:
No, the court affirmed the decision of the
director of patents. The product is for
medicinal
veterinary
use
and
consequently, the purchaser will be more
wary of the nature of the product he is
buying. petitioner's SULMET label, Exhibit
B, is used on a drinking water solution
while that of respondent labels tablets.
the word SULMET is derived from a
combination of the syllables "SUL" which is
derived from Sulfa and "MET" from methyl
both of which are chemical compounds
present in the article manufactured by the
contending parties, and the addition of the
syllable "INE" in respondent's label is
sufficient to distinguish respondent's

cause confusion or result in mistake to

purchasers intending to buy DURAFLEX
electric wires and goods,
Applicant-appellee contends that the
DYNAFLEX mark would not confuse or
deceive the buyers and subscribers of the
DURAFLEX brand, because electrical
wires are of great value and the
purchasers thereof are generally intelligent
the architects, engineers and building
contractors.
Director of Patents said that the
trademarks of the parties are different in
appearance,
meaning,
sound
and
connotation and hence, are not confusingly
similar.
Issue:
WON the respondents trademark would
cause confusion or mistakes in the mind of
the public or deceive purchasers?
Ruling:
Yes, In big constructions, the designing
architect or engineer, or the contractor who
will undertake the work of building, does
not himself purchase or place the order for
the purchase of the materials to be used
therein. The task is oftentimes delegated
to another. So that even if the engineer or
contractor will specify in the bill of
materials the particular brand of wires
needed, there is no certainty that the
desired product will be acquired.
Unlike the pharmacists, the dispensers of
hardware or electrical supplies are not
generally known to pay as much concern
to the brand of articles asked for by the
customer and of a person who knows the
name of the brand but is not acquainted
with it is appearance. Hence, the likelihood
of the DYNAFLEX product being mistaken
for DURAFLEX is not remote.
American Cyanamid Company versus
Tiu Chian and Director of Patents
G.R. No. L-23954 April 29, 1977

Ruling:
The court affirmed the decision of the
Director of Patent.
De la Rama Steamship Co. Inc., plaintiff,
versus National Development Company
G.R. No. L-26966 October 30, 1970
Facts:
The petitioner De la Rama undertook the
management of the three vessels known
as "Doa Aurora," "Doa Nati" and "Doa
Alicia" which had been purchased by the
Philippine Government from Japan with
the advise and technical supervision of De
la Rama. In the management contract it
was provided that De la Rama had the
option to buy the vessels at the fifth year
following the purchase and delivery of
each of the vessels
The NDC decided to cancel the contract
but was opposed by De la Rama, which
alleged that it had been granted the option
to purchase the vessels and that in 1952 it
exercised that right of option. In the
decision in previous cases the Court
upheld the right of NDC to cancel the
management contract, and the option of
De la Rama to purchase the vessels was
declared ineffective.
De la Rama contends that she is entitled to
the preferential right to the use of the
"Doa" names and enjoining and
restraining NDC perpetually from using the
"Doa" names on any of its vessels,
NDC argues that as owner of the vessels it
had registered the "Doa" names in the
Bureau of Customs with full knowledge
and consent of De la Rama which,
therefore,
is
now
estopped
from
questioning the right, or from denying the
ownership, of NDC over the "Doa"
names.
De la Rama had been in the shipping
business since 1933 and had adopted,
prior to the war in 1941, the word "Doa" in

product or trademark from that of

petitioner.
Here, Maybe Sulmentine and Sulmet has
similar use but their presentation to the
purchasing public come in totally different
forms.
Doctrine:
The law prohibits the manufacturer labels
his product in a manner strikingly Identical
with or similar to that of another
manufacturer as to deceive or confuse the
buying public into believing that the two
preparations are one and come from the
same source.
Kee Boc vs. Far Eastern Shirt Factory
and the Director of Patents
G.R. No. L-26625. August 31, 1970
Facts:
The case involved an application to
register the trademark RACE, used on
mens undershirts and shirts, under class
40, was filed by Far Eastern Shirt Factory,
successor in interest of Asari Yoko Ltd.
The petitioner, owner of the trademark
SUN RAYS covering the same class of
goods, namely, mens undershirts, filed an
opposition against the registration of the
respondent on ground that the trademark
SUN RAYS of the petitioner is
confusingly similar to the trade mark RACE
of the respondent.
Director of Patents granted the application
of the respondent and dismissed the
opposition of the petitioner on ground that
RACE was already in use long before the
opposer adopted his trademark SUN
RAYS. In such case it is the RespondentApplicant who would be damaged by the
registration of SUN RAYS as it has
acquired, as a successor in interest,
proprietary rights over the mark RACE.
Issue:
WON the respondents trademark would
cause confusion or mistakes in the mind of
the public or deceive purchasers?

Facts:
Petitioner Philippine Nut, owner of the
trademark
"PHILIPPINE
PLANTERS
CORDIAL PEANUTS," the label used on
its product of salted peanuts.

designating its vessels; that the three

ocean-going vessels that it operated under
the management contract were named
Doa after names of the wife of the
president of the philippines.

Respodent Standard Brands filed an

petition for the cancellation of Philippine
Nut's certificate of registration on the
ground that "the registrant was not entitled
to register the mark at the time of its
application for registration thereof" for the
reason that it (Standard Brands) is the
owner of the trademark "PLANTERS
COCKTAIL PEANUTS

NDC's contention, in its answer, that De la

Rama, a private firm, could not appropriate
said names ("except Doa Nati") on the
ground that those are names of wives of
former Presidents, does not have a legal
basis. Under Section 4(c) of Rep. Act No.
166 as amended, which apparently is the
basis of the contention of NDC, what is
prohibited from being appropriated and
being
registered
are
trade-names
consisting of, or comprising, a name
identifying a particular living individual, or
the name of a deceased President of the
Philippines.

Standard Brands alleged in its petition that

Philippine Nut's trademark "PHILIPPINE
PLANTERS CORDIAL PEANUTS" closely
resembles and is confusingly similar to its
trademark
"PLANTERS
COCKTAIL
PEANUTS" used also on salted peanuts,
and that the registration of the former is
likely to deceive the buying public and
cause damage to it.
The Director of Patents found and held
that in the labels using the two trademarks
in question, the dominant part is the word
"Planters", displayed "in a very similar
manner" so much so that "as to
appearance and general impression" there
is "a very confusing similarity," and he
concluded that Philippine Nut "was not
entitled to register the mark.
According to petitioner, PLANTERS cannot
be considered as the dominant feature of
the trademarks in question because it is a
mere descriptive term, an ordinary word
which is defined in Webster International
Dictionary as "one who or that which
plants or sows, a farmer or an
agriculturist."
Issue:
WON the Petitioners trademark would
cause confusion or mistakes in the mind of
the public or deceive purchasers?

Issue:
WON the names of deceased wives of
Presidents are included in the prohibition?
Ruling:
No, Section 4(f) of said Act does not
prohibit the registration, and hence
appropriation, of a trade-name that has
become distinctive and the substantial and
exclusive use of a trade-name for five
years accepted as prima facie proof that
the trade-name has become distinctive.
Doctrine:
that even a name or phrase not capable of
appropriation as a trade name may, by
long and exclusive use by a business with
reference thereto of to its products, acquire
a proprietary connotation, such that, to the
purchasing public, the name or phrase
becomes associated with the service or
the products of the business, and so it is
entitled to protection against unfair
competition.
Philippine Nut Industry, Inc. vs.
Standard Brands Inc and Tiburcio
Evalle
G.R. No. L-23035 July 31, 1975

use dating as far back as 1938,

respondent Standard Brands has acquired
a preferential right to its adoption as its
trademark warranting protection against its
usurpation by another.
Doctrine:
There is infringement of trademark when
the use of the mark involved would be
likely to cause confusion or mistake in the
mind of the public or to deceive purchasers
as to the origin or source of the
commodity; that whether or not a
trademark causes confusion and is likely to
deceive the public is a question of fact
which is to be resolved by applying the
"test of dominancy", meaning, if the
competing trademark contains the main or
essential or dominant features of another
by reason of which confusion and
deception are likely to result, then
infringement takes pIace; that duplication
or imitation is not necessary, a similarity in
the dominant features of the trademarks
would be sufficient.
Where a trade-mark contains a dominating
or distinguishing word, and purchasing
public has come to know and designate
the article by such dominating word, the
use of such word by another in marking
similar goods may constitute Infringement
though the marks aside from such
dominating word may be dissimilar.
It is not necessary, to constitute trademark
"infringement", that every word of a trademark should be appropriated, but it is
sufficient that enough be taken to deceive
the public in the purchase of a protected
article.
A trade-name in order to be an
`infringement' upon another need not be
exactly like it in form and sound, but it is
enough if the one so resembles another as
to deceive or mislead persons of ordinary
caution into the belief that they are dealing
with the one concern when in fact they are
dealing with the other.

WON the trademark PLANTERS of the

respondent has acquired secondary
meaning?
Ruling:
Yes, The court affirmed the decision of the
Director of Patents. PLANTERS is an
ordinary word, nevertheless it is used in
the labels not to describe the nature of the
product, but to project the source or origin
of the salted peanuts contained in the
cans. 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. Hence, word
PLANTERS is the dominant, striking mark
of the labels in question.
The merchandize or goods being sold by
the parties herein are very ordinary
commodities purchased by the average
person and many times by the ignorant
and unlettered and these are the persons
who will not as a rule examine the printed
small letterings on the container but will
simply be guided by the presence of the
striking mark PLANTERS on the label.
Differences there will always be, but
whatever differences exist, these pale into
insignificance in the face of an evident
similarity in the dominant feature and
overall appearance of the labels of the
parties.
Director's decision is based not only on the
fact that petitioner herein adopted the
same dominant mark of Standard Brands,
that is, the word PLANTERS, but that it
also used in its label the same coloring
scheme of gold, blue, and white, and
basically the same lay-out of words such
as "salted peanuts" and "vacuum packed"
with similar type and size of lettering as
appearing in Standard Brands' own
trademark.
Yes, the term PLANTERS has become a
distinctive mark or symbol insofar as salted
peanuts are concerned, and by priority of