CASE # 01

SMITH KLINE BECKMAN CORPORATION, vs. THE HONORABLE COURT OF

APPEALS and TRYCO PHARMA CORPORATION
G. R. No. 126627. August 14, 2003
CARPIO-MORALES, J:
DOCTRINE: The doctrine of equivalents provides that an infringement also takes
place when a device appropriates a prior invention by incorporating its innovative
concept and, although with some modification and change, performs substantially the
same function in substantially the same way to achieve substantially the same result.
Yet again, a scrutiny of petitioners evidence fails to convince this Court of the
substantial sameness of petitioners patented compound and Albendazole. While both
compounds have the effect of neutralizing parasites in animals, identity of result does
not amount to infringement of patent unless Albendazole operates in substantially the
same way or by substantially the same means as the patented compound, even
though it performs the same function and achieves the same result. In other words,
the principle or mode of operation must be the same or substantially the same.
The doctrine of equivalents thus requires satisfaction of the function-means-andresult test, the patentee having the burden to show that all three components of such
equivalency test are met
FACTS:
Smith Kline Beckman Corporation (petitioner foreign corporation registered in
Pennsylvania) filed, as assignee, before the Philippine Patent Office an application for
patent over an invention entitled Methods and Compositions for Producing
Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate. Letters Patent No. 14561 for the invention was issued to petitioner for a
term of seventeen (17) years. It provides in its claims that the patented invention
consisted of a new compound named methyl 5 propylthio-2-benzimidazole
carbamate and the methods or compositions utilizing the compound as an active
ingredient in fighting infections caused by gastrointestinal parasites and lungworms in
animals such as swine, sheep, cattle, goats, horses, and even pet animals.
Tryco Pharma Corporation (private respondent) is a domestic corporation that
manufactures, distributes and sells veterinary products including Impregon, a
drug that has Albendazole for its active ingredient and is claimed to be effective
against gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in
carabaos, cattle and goats.

Smith Kline sued Tryco for infringement of patent and unfair competition claiming that
its patent covers or includes the substance Albendazole such that Tryco by
manufacturing, selling, using, and causing to be sold and used the drug Impregon
without its authorization, infringed Claims 2, 3, 4, 7, 8 and 9 of Letters Patent No.
14561 as well as committed unfair competition under Article 189, paragraph 1 of
the Revised Penal Code and Section 29 of Republic Act No. 166 (The Trademark
Law) for advertising and selling as its own the drug Impregon although the
same contained petitioners patented Albendazole.
The trial court rendered judgment in favor of Tryco. This decision was affirmed by the
Court of Appeals ruling that Tryco is not liable for any infringement of the patent of
Smith Kline for failure to show that Albendazole is the same as Methyl 5 propylthio-2benzimidazole carbamate
Smith Kline submitted the following arguments:
First it argues that under the doctrine of equivalents Albendazole is
substantially the same as Methyl 5 propylthio-2-benzimidazole carbamate
since both of them are meant to combat worm or parasite infestation in
animals. It cites the unrebutted testimony of its witness Dr. Godofredo C.
Orinion (Dr. Orinion) that the chemical formula in Letters Patent No. 14561
refers to the compound Albendazole.
Second, the two substances substantially do the same function in
substantially the same way to achieve the same results, thereby making
them truly identical.
Third its application with the Philippine Patent Office was merely a divisional
application of a prior application in the U. S. which granted a patent for
Albendazole. Hence, petitioner concludes that both methyl 5 propylthio-2benzimidazole carbamate and the U.S.-patented Albendazole are dependent
on each other and mutually contribute to produce a single result, thereby
making Albendazole as much a part of Letters Patent No. 14561.
Tryco, on the other hand argued that the existence of a separate U.S. patent for
Albendazole indicates that the same and the compound in Letters Patent No. 14561
are different from each other; and that since it was on account of a divisional
application that the patent for methyl 5 propylthio-2-benzimidazole carbamate was
issued, then, by definition of a divisional application, such a compound is just one of
several independent inventions alongside Albendazole under petitioners original
patent application.
ISSUE: Applying the doctrine of equivalents, is Albendazole considered to be
included in Smith Klines Letters Patent No. 14561 such that the sale by Tryco of
Impregon (a drug that has Albendazole) made it liable for patent infringement?

HELD: No. Smith Kline failed to prove that Albendazole is a compound inherent in the
patented invention. Nowhere in the patent is the word Albendazole found. When the
language of its claims is clear and distinct, the patentee is bound thereby and may
not claim anything beyond them. Further, there was a separate patent for
Albendazole given by the US which implies that Albendazole is indeed separate and
distinct from the patented compound here.

A scrutiny of Smith Klines evidence fails to prove the substantial sameness of the
patented compound and Albendazole. While both compounds have the effect of
neutralizing parasites in animals, identity of result does not amount to infringement of
patent unless Albendazole operates in substantially the same way or by substantially
the same means as the patented compound, even though it performs the same
function and achieves the same result. In other words, the principle or mode of
operation must be the same or substantially the same.

The doctrine of equivalents thus requires satisfaction of the function-meansand-result test, the patentee having the burden to show that all three
components of such equivalency test are met.

CASE # 13
SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC. vs.
COURT OF APPEALS and CFC CORPORATION.

MASTER BLEND, especially when the marks are viewed in their entirety, by
considering their pictorial representations, color schemes and the letters of their
respective labels.

G.R. No. 112012. April 4, 2001

YNARES-SANTIAGO, J.

BPTTT denied CFCs application for registration. CFC elevated the matter to the
Court of Appeals, which reversed BPTTTs decision and ordered the Director of
Patents to approve CFCs application.

DOCTRINE: 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. In determining if
colorable imitation exists, jurisprudence has developed two kinds of tests - the
Dominancy Test and the Holistic Test. The test of dominancy focuses on the similarity
of the prevalent features of the competing trademarks which might cause confusion
or deception and thus constitute infringement. On the other side of the spectrum, the
holistic test mandates that the entirety of the marks in question must be considered in
determining confusing similarity.
FACTS:
CFC Corporation filed with the BPTTT an application for the registration of the
trademark FLAVOR MASTER for instant coffee. The application, as a matter of due
course, was published in the July 18, 1988 issue of the BPTTTs Official Gazette.
Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws
and domiciled in Switzerland, filed an unverified Notice of Opposition, claiming that
the trademark of CFCs product is confusingly similar to its trademarks for coffee and
coffee extracts, to wit: MASTER ROAST and MASTER BLEND.
Likewise, a verified Notice of Opposition was filed by Nestle Philippines, Inc., a
Philippine corporation and a licensee of Societe Des Produits Nestle S.A., against
CFCs application for registration of the trademark FLAVOR MASTER. Nestle claimed
that the use, if any, by CFC of the trademark FLAVOR MASTER and its registration
would likely cause confusion in the trade; or deceive purchasers and would falsely
suggest to the purchasing public a connection in the business of Nestle, as the
dominant word present in the three (3) trademarks is MASTER; or that the goods of
CFC might be mistaken as having originated from the latter.
CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the
formers trademarks, MASTER ROAST and MASTER BLEND, alleging that, except
for the word MASTER, the other words that are used respectively with said word in
the three trademarks are very different from each other in meaning, spelling,
pronunciation, and sound. CFC further argued that its trademark, FLAVOR MASTER,
is clearly very different from any of Nestles alleged trademarks MASTER ROAST and

ISSUE: Whether the trademark FLAVOR MASTER is a colorable imitation of the

trademarks MASTER ROAST and MASTER BLEND?
HELD: YES, 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.
A trademark has been generally defined as any word, name, symbol or device
adopted and used by a manufacturer or merchant to identify his goods and
distinguish them from those manufactured and sold by others.
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. In determining if colorable
imitation exists, jurisprudence has developed two kinds of tests - the Dominancy Test
and the Holistic Test. The test of dominancy focuses on the similarity of the prevalent
features of the competing trademarks which might cause confusion or deception and
thus constitute infringement. On the other side of the spectrum, the holistic test
mandates that the entirety of the marks in question must be considered in
determining confusing similarity.
In the case at bar, the Court of Appeals held that: The determination of whether two
trademarks are indeed confusingly similar must be taken from the viewpoint of the
ordinary purchasers who are, in general, undiscerningly rash in buying the more
common and less expensive household products like coffee, and are therefore less
inclined to closely examine specific details of similarities and dissimilarities between
competing products.
It must be emphasized that in infringement or trademark cases in the Philippines,
particularly in ascertaining whether one trademark is confusingly similar to or is a
colorable imitation of another, no set rules can be deduced. Each case must be
decided on its own merits.

If the ordinary purchaser is undiscerningly rash in buying such common and

inexpensive household products as instant coffee, and would therefore be less
inclined to closely examine specific details of similarities and dissimilarities between
the two competing products, then it would be less likely for the ordinary purchaser to
notice that CFCs trademark FLAVOR MASTER carries the colors orange and mocha
while that of Nestles uses red and brown. The application of the totality or holistic test
is improper since the ordinary purchaser would not be inclined to notice the specific
features, similarities or dissimilarities, considering that the product is an inexpensive
and common household item.
This Court cannot agree that totality test is the one applicable in this case. Rather,
this Court believes that the dominancy test is more suitable to this case in light of its
peculiar factual milieu.
The word MASTER is neither a generic nor a descriptive term. As such, said term can
not be invalidated as a trademark and, therefore, may be legally protected. Generic
termsare 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.
This is evident from the advertising scheme adopted by Nestle in promoting its coffee
products. In this case, Nestle has, over time, promoted its products as coffee
perfection worthy of masters like Robert Jaworski and Ric Puno Jr.

CASE # 25
LEVI STRAUSS & CO., & LEVI STRAUSS (PHILS.), INC. vs. CLINTON
APPARELLE, INC
G.R. No. 138900, SEPTEMBER 20, 2005
TINGA, J.
DOCTRINE: 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 persons
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.
FACTS:
LS & Co. and LSPI filed a complaint for Trademark Infringement, TRO and/or Writ of
Preliminary Injunction and Damages against Clinton Apparelle, Inc.* (Clinton Aparelle)
together with an alternative defendant, Olympian Garments, Inc. (Olympian
Garments), before the Regional Trial Court after they discovered the presence in the
local market of jeans under the brand name "Paddocks" which they alleged, using a
device which is substantially, if not exactly, similar to the "Dockers and Design"
trademark owned by and registered in the name of LS & Co., without its consent.
A TRO was issued which was neither attended during the hearing by Clinton
Apparelle nor Olympian Garments and which Clinton Apparelle claimed that it was not
notified of such hearing and that only Olympian Garments allegedly had been issued
with summons.
The RTC then issued an order granting the writ of preliminary injunction which was
opposed by Clinton Apparelle by filing a Motion to Dismiss and a Motion for
Reconsideration of the Order granting the writ of preliminary injunction which was
subsequently denied by the RTC.
Clinton Apparelle filed with the Court of Appeals a petition for certiorari, prohibition
and mandamus which was granted by the CA.
The CA said that the TRO had been improperly issued* and that the issuance of the
writ of preliminary injunction is questionable.*

With the denial of Motion for Reconsideration, LS & Co. and LSPI filed a petition for
review on certiorari before the SC.
ISSUE: Whether a writ of preliminary injunction should be issued as regards to the
alleged infringement of "Dockers and Design" trademark owned and registered by LS
& Co.?
HELD: NO. There was scant justification for the issuance of the writ of preliminary
injunction. Petitioners anchor their legal right to Dockers and Design trademark on the
Certificate of Registration issued in their favor by the Bureau of Patents, Trademarks
and Technology Transfer.* According to Section 138 of Republic Act No. 8293, this
Certificate of Registration is prima facie evidence of the validity of the registration, the
registrants ownership of the mark and of the exclusive right to use the same in
connection with the goods or services and those that are related thereto specified in
the certificate. Section 147.1 of said law likewise grants the owner of the registered
mark the exclusive right to prevent all third parties not having the owners consent
from using in the course of trade identical or similar signs for goods or services which
are identical or similar to those in respect of which the trademark is registered if such
use results in a likelihood of confusion.
However, attention should be given to the fact that petitioners registered trademark
consists of two elements: (1) the word mark Dockers and (2) the wing-shaped design
or logo. Notably, there is only one registration for both features of the trademark
giving the impression that the two should be considered as a single unit. Clinton
Apparelles trademark, on the other hand, uses the Paddocks word mark on top of a
logo which according to petitioners is a slavish imitation of the Dockers design. The
two trademarks apparently differ in their word marks (Dockers and Paddocks), but
again according to petitioners, they employ similar or identical logos. It could thus be
said that respondent only appropriates petitioners logo and not the word mark
Dockers; it uses only a portion of the registered trademark and not the whole.
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 owners consent of
a portion of a trademark registered in its entirety constitutes material or substantial
invasion of the owners 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 trademarkthe feature that prevails or
is retained in the minds of the publican imitation of which creates the likelihood of
deceiving the public and constitutes trademark infringement.[43] 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 persons 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.