INTELLECTUAL PROPERTY LAW - TRADEMARK

Asia Brewery v. CA & San Miguel, GR 103543, July 5, 1993

GEORGE
The lone issue in this appeal is whether ABI infringes SMC's
trademark: San Miguel Pale Pilsen with Rectangular Hops and Malt
Design, and thereby commits unfair competition against the latter.
Infringement of trademark is a form of unfair competition (Clarke
vs. Manila Candy Co., 36 Phil. 100, 106). Sec. 22 of Republic Act No.
166, otherwise known as the Trademark Law, defines what
constitutes infringement:
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.)
This definition implies that only registered trade marks, trade
names and service marks are protected against infringement or
unauthorized use by another or others. The use of someone else's
registered trademark, trade name or service mark is unauthorized,
hence, actionable, if it is done "without the consent of the
registrant." (Ibid.)
Does ABI's BEER PALE PILSEN label or "design" infringe upon SMC's
SAN MIGUEL PALE PILSEN WITH RECTANGULAR MALT AND HOPS
DESIGN? The answer is "No."

purchasers. (Auburn Rubber Corporation vs. Honover Rubber Co.,

107 F. 2d 588; . . . .) (Emphasis supplied.)
In Forbes, Munn & Co. (Ltd.) vs. Ang San To, 40 Phil. 272, 275, the
test was similarity or "resemblance between the two (trademarks)
such as would be likely to cause the one mark to be mistaken for
the other.
In Phil. Nut Industry Inc. vs. Standard Brands Inc., 65 SCRA 575, the
court was more specific: the test is "similarity in the dominant
features of the 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.
Besides the dissimilarity in their names, the following other
dissimilarities in the trade dress or appearance of the competing
products abound:
(1) The SAN MIGUEL PALE PILSEN bottle has a slender tapered neck.
The BEER PALE PILSEN bottle has a fat, bulging neck.
(2) The words "pale pilsen" on SMC's label are printed in bold and
laced letters along a diagonal band, whereas the words "pale
pilsen" on ABI's bottle are half the size and printed in slender block
letters on a straight horizontal band. (See Exhibit "8-a".).
(3) The names of the manufacturers are prominently printed on
their respective bottles.
SAN MIGUEL PALE PILSEN is "Bottled by the San Miguel Brewery,
Philippines," whereas BEER PALE PILSEN is "Especially brewed and
bottled by Asia Brewery Incorporated, Philippines."
(4) On the back of ABI's bottle is printed in big, bold letters, under a
row of flower buds and leaves, its copyrighted slogan: "BEER NA
BEER!" Whereas SMC's bottle carries no slogan.
(5) The back of the SAN MIGUEL PALE PILSEN bottle carries the SMC
logo, whereas the BEER PALE PILSEN bottle has no logo.

Infringement is determined by the "test of dominancy" rather than

by differences or variations in the details of one trademark and of
another.

(6) The SAN MIGUEL PALE PILSEN bottle cap is stamped with a coat
of arms and the words "San Miguel Brewery Philippines" encircling
the same.

The question at issue in cases of infringement of trademarks is

whether the use of the marks involved would be likely to cause
confusion or mistakes in the mind of the public or deceive

The BEER PALE PILSEN bottle cap is stamped with the name "BEER"
in the center, surrounded by the words "Asia Brewery Incorporated
Philippines."

(7) Finally, there is a substantial price difference between BEER

PALE PILSEN (currently at P4.25 per bottle) and SAN MIGUEL PALE
PILSEN (currently at P7.00 per bottle). One who pays only P4.25 for
a bottle of beer cannot expect to receive San Miguel Pale Pilsen
from the storekeeper or bartender.
The fact that the words pale pilsen are part of ABI's trademark does
not constitute an infringement of SMC's trademark: SAN MIGUEL
PALE PILSEN, for "pale pilsen" are generic words descriptive of the
color ("pale"), of a type of beer ("pilsen"), which is a light bohemian
beer with a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia. "Pilsen" is a "primarily geographically descriptive
word," (Sec. 4, subpar. [e] Republic Act No. 166, as inserted by Sec.
2 of R.A. No. 638) hence, non-registerable and not appropriable by
any beer manufacturer. The Trademark Law provides:
Sec. 4. . . .. The owner of trade-mark, trade-name or service-mark
used to distinguish his goods, business or services from the goods,
business or services of others shall have the right to register the
same [on the principal register], unless it:
xxx xxx xxx
(e) Consists of a mark or trade-name which, when applied to or
used in connection with the goods, business or services of the
applicant is merely descriptive or deceptively misdescriptive of
them, or when applied to or used in connection with the goods,
business or services of the applicant is primarily geographically
descriptive or deceptively misdescriptive of them, or is primarily
merely a surname." (Emphasis supplied.)
The words "pale pilsen" may not be appropriated by SMC for its
exclusive use even if they are part of its registered trademark: SAN
MIGUEL PALE PILSEN. No one may appropriate generic or
descriptive words. They belong to the public domain (Ong Ai Gui vs.
Director of Patents, 96 Phil. 673, 676 [1955]):
In view of the visible differences between the two products, the
Court believes it is quite unlikely that a customer of average
intelligence would mistake a bottle of BEER PALE PILSEN for SAN
MIGUEL PALE PILSEN.
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.
Unfair competition is the employment of deception or any other
means contrary to good faith by which a person shall pass off the

goods manufactured by him or in which he deals, or his business, or

services, for those of another who has already established goodwill
for his similar goods, business or services, or any acts calculated to
produce the same result. (Sec. 29, Republic Act No. 166, as
amended.)
. . ..The universal test question is whether the public is likely to be
deceived. Nothing less than conduct tending to pass off one man's
goods or business as that of another will constitute unfair
competition. Actual or probable deception and confusion on the
part of the customers by reason of defendant's practices must
always appear. (Shell Co., of the Philippines, Ltd. vs. Insular
Petroleum Refining Co. Ltd. et al., 120 Phil. 434, 439.)
Emerald Garment v. CA, GR 100098, Dec. 29, 1995 -Mary
FACTS:

On 18 September 1981, private respondent H.D. Lee Co.,

Inc. filed with the Bureau of Patents, Trademarks & Technology
Transfer (BPTTT) a Petition for Cancellation of Registration No. SR
5054 for the trademark "STYLISTIC MR. LEE" used on skirts, jeans,
blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts
and lingerie under Class 25, issued on 27 October 1980 in the
name of petitioner Emerald Garment Manufacturing Corporation.
Private respondent averred that petitioner's trademark "so
closely resembled its own trademark, 'LEE' as previously registered
and used in thePhilippines cause confusion, mistake and deception
on the part of the purchasing public as to the origin of the goods.
On 19 July 1988, the Director of Patents rendered a decision
granting private respondent's petition for cancellation and
opposition to registration. The Director of Patents, using the test of
dominancy, declared that petitioner's trademark was confusingly
similar to private respondent's mark because "it is the word 'Lee'
which draws the attention of the buyer and leads him to conclude
that the goods originated from the same manufacturer. It is
undeniably the dominant feature of the mark.
ISSUE:
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.

HELD:
The word "LEE" is the most prominent and distinctive feature
of the appellant's trademark and all of the appellee's "LEE"
trademarks. It is the mark which draws the attention of the buyer
and leads him to conclude that the goods originated from the same
manufacturer. The alleged difference is too insubstantial to be
noticeable. The likelihood of confusion is further made more
probable by the fact that both parties are engaged in the same line
of business.
Although the Court decided in favor of the respondent, the
appellee has sufficiently established its right to prior use and
registration of the trademark "LEE" in the Philippines and is thus
entitled to protection from any infringement upon the same. The
dissenting opinion of Justice Padilla is more acceptable.
UFC v. Fiesta Barrio, GR 198889, January 20, 2016 - MARQ
( http://news.abs-cbn.com/business/02/29/16/sc-ufc-owns-papa-trademark)
The Supreme Court has granted the petition of UFC (now merged
with Nutri-Asia, Inc.) to set aside the June 23, 2011 Decision and
October 4, 2011 Resolution of the CA, and reinstated the decisions
of the IPO rejecting the application for the mark "Papa Boy &
Device" since the mark "Papa" is owned by UFC Philippines Inc.,
which has been manufacturing catsup and other condiments for
decades.
FACTS:
In 2002, respondent Barrio Fiesta filed application for the mark
"Papa Boy & Device" for goods under Class 30, specifically for
lechon sauce. Nutri-Asia opposed the application, contending that
"Papa Boy & Device" is confusingly similar with its "Papa" marks,
considering that its ketchup product and respondent's lechon sauce
product are related articles that fall under the same Class 30. The
mark "Papa" for use on banana catsup and other similar goods was
first used in 1954 by Neri Papa, taken from his surname. Mr. Papa
used the mark "Papa" for about 27 years until he assigned the said
mark to Hernan D. Reyes, who subsequently filed an application
to register the mark.
RULING:
The CA erred in applying the holistic test and in reversing and
setting aside the March 26, 2008 Decision of the IPO-BLA and the
January 29, 2009 decision of the Director General of the IPO, both
of which rejected respondent's application for the mark "Papa Boy

& Device." The findings of fact of the highly technical agency, the
IPO, which has the expertise in this field, should have been given
great weight by the CA.
The SC ruled that
a scrutiny of both petitioner's and respondent's respective
marks would show that the IPO-BLA and the IPO Director
General correctly found the word "Papa" as the dominant
feature of petitioner's mark "Papa Ketsarap." Contrary to
respondent's contention, "Ketsarap" cannot be the dominant
feature of the mark as it is merely descriptive of the
product.
it is the "Papa" mark that has been in commercial use for
decades and has established awareness and goodwill
among consumers. Agreeing with the IPO-BLA, the SC
stressed that the word "Papa" is also the dominant feature
of respondent's "Papa Boy & Device" mark subject of the
application, such that the word "Papa" is written on top of
and before the other words such that it is the first
word/figure that catches the eyes.
The SC added, as
correctly pointed out by the IPO Director General, that the
part of respondent's mark which appears prominently to the
eyes and ears is the phrase "Papa Boy" and that is what a
purchaser of respondent's product would immediately recall,
not the smiling hog in the logo.
Papa Boy & Device" cannot be registered because this
mark is related to a product, lechon sauce, an everyday allpurpose condiment and sauce, that is not subjected to great
scrutiny and care by the casual purchaser, who knows from
regular visits to the grocery store under what aisle to find it,
in which bottle it is contained, and approximately how much
it costs. Since petitioner's product, catsup, is also a
household product found on the same grocery aisle, in
similar packaging, the public could think that petitioner had
expanded its product mix to include lechon sauce, and that
the "Papa Boy" lechon sauce is now part of the "Papa" family
of sauces.
if "Papa Boy & Device" is allowed registration, confusion of
business may set in, and petitioner's hard-earned goodwill
may be associated to the newer product introduced by
respondent, all because of the use of the dominant feature
of petitioner's mark on respondent's mark, which is the word
"Papa. It noted that the words "Barrio Fiesta" are not
included in the mark, and although printed on the label of
respondent's lechon sauce packaging, still do not remove

the impression that "Papa Boy" is a product owned by the

manufacturer of "Papa" catsup, by virtue of the use of
dominant feature. It is possible that petitioner could expand
its business to include lechon sauce, and that would be well
within petitioner's rights, but the existence of "Papa Boy"
lechon sauce would already eliminate this possibility and
deprive petitioner of its rights as an owner of a valid mark
included in the Intellectual Property Code.
the CA erred in finding that "Papa," being a common term of
endearment for one's father, is a word over which petitioner
could not claim exclusive use and ownership. The MerriamWebster dictionary defines "Papa" simply as "a person's
father." True, a person's father has no logical connection
with catsup products, and that precisely makes "Papa" as an
arbitrary mark capable of being registered, as it is
distinctive, coming from a family name that started the
brand several decades ago. The SC stressed that what was
registered was not the word "Papa" as defined in the
dictionary, but the word "Papa" as the last name of the
original owner of the brand. In fact, being part of several of
petitioner's marks, there is no question that the IPO has
found "Papa" to be a registrable mark.

McDonald's Corporation v. L.C. Big Mak Burger, Inc., G.R.

No.
143993,
August
18,
2004
-DONNA
Petitioner McDonald's Corporation ("McDonald's") is a US
corporation that operates a global chain of fast-food restaurants,
with Petitioner McGeorge Food Industries ("McGeorge"), as the
Philippine
franchisee.
McDonald's owns the "Big Mac" mark for its "double-decker
hamburger sandwich." with the US Trademark Registry on 16
October
1979.
Based on this Home Registration, McDonald's applied for the
registration of the same mark in the Principal Register of
the then Philippine Bureau of Patents, Trademarks and
Technology ("PBPTT") (now IPO). On 18 July 1985, the
PBPTT
allowed
registration
of
the
"Big
Mac."
Respondent L.C. Big Mak Burger, Inc. is a domestic
corporation which operates fast-food outlets and snack vans in
Metro Manila and nearby provinces. Respondent corporation's

menu includes hamburger sandwiches and other food items.

On 21 October 1988, respondent corporation applied with the
PBPTT for the registration of the "Big Mak" mark for its hamburger
sandwiches, which was opposed by McDonald's. McDonald's also
informed LC Big Mak chairman of its exclusive right to the "Big
Mac" mark and requested him to desist from using the "Big Mac"
mark
or
any
similar
mark.
Having received no reply, petitioners sued L.C. Big Mak Burger, Inc.
and its directors before Makati RTC Branch 137 ("RTC"), for
trademark
infringement
and
unfair
competition.
RTC rendered a Decision finding respondent corporation liable for
trademark infringement and unfair competition. CA reversed RTC's
decision
on
appeal.
1ST ISSUE:W/N respondent corporation is liable for trademark
infringement
and
unfair
competition.
Ruling: Yes Section 22 of Republic Act No. 166, as amended,
defines trademark infringement as follows:
Infringement, what constitutes. - Any person who [1] 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 [2] 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.
To establish trademark infringement, the following elements must
be shown: (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."
Of these, it is the element of likelihood of confusion that is the
gravamen
of
trademark
infringement.

1st

element:

A mark is valid if it is distinctive and not merely generic and

descriptive.
The "Big Mac" mark, which should be treated in its entirety and not
dissected word for word, is neither generic nor descriptive. Generic
marks are commonly used as the name or description of a kind of
goods, such as "Lite" for beer. Descriptive marks, on the other
hand, convey the characteristics, functions, qualities or ingredients
of a product to one who has never seen it or does not know it
exists, such as "Arthriticare" for arthritis medication. On the
contrary, "Big Mac" falls under the class of fanciful or arbitrary
marks as it bears no logical relation to the actual characteristics of
the product it represents. As such, it is highly distinctive and thus
valid.
2nd

element:

specific segments of the market. The registered trademark owner

enjoys protection in product and market areas that are the normal
potential
expansion
of
his
business.
Furthermore, In determining likelihood of confusion, the SC has
relied on the dominancy test (similarity of the prevalent features of
the competing trademarks that might cause confusion) over the
holistic test (consideration of the entirety of the marks as applied to
the
products,
including
the
labels
and
packaging).
Applying the dominancy test, Respondents' use of the "Big Mak"
mark results in likelihood of confusion. Aurally the two marks are
the same, with the first word of both marks phonetically the same,
and the second word of both marks also phonetically the same.
Visually, the two marks have both two words and six letters, with
the first word of both marks having the same letters and the
second
word
having
the
same
first
two
letters.

Petitioners have duly established McDonald's exclusive ownership

of the "Big Mac" mark. Prior valid registrants of the said mark had
already
assigned
his
rights
to
McDonald's.

Lastly, since Section 22 only requires the less stringent standard of

"likelihood of confusion," Petitioners' failure to present proof of
actual confusion does not negate their claim of trademark
infringement.

3rd

element:

2ND ISSUE: W/N Respondents committed Unfair Competition

Section 22 covers two types of confusion arising from the use of

similar or colorable imitation marks, namely, confusion of goods
(confusion in which the ordinarily prudent purchaser would be
induced to purchase one product in the belief that he was
purchasing the other) and confusion of business (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).

Ruling: Yes.
Section 29 ("Section 29")73 of RA 166 defines unfair competition,
thus:
Any person who will 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.
The essential elements of an action for unfair competition are (1)
confusing similarity in the general appearance of the goods, and (2)
intent to deceive the public and defraud a competitor.

There is confusion of goods in this case since respondents used the

"Big Mak" mark on the same goods, i.e. hamburger sandwiches,
that
petitioners'
"Big
Mac"
mark
is
used.
There is also confusion of business due to Respondents' use of the
"Big Mak" mark in the sale of hamburgers, the same business that
petitioners are engaged in, also results in confusion of business.
The registered trademark owner may use his mark on the same or
similar products, in different segments of the market, and at
different price levels depending on variations of the products for

In the case at bar, Respondents have applied on their plastic

wrappers and bags almost the same words that petitioners use on
their styrofoam box. Further, Respondents' goods are hamburgers
which are also the goods of petitioners. Moreover, there is actually
no notice to the public that the "Big Mak" hamburgers are products
of "L.C. Big Mak Burger, Inc." This clearly shows respondents' intent
to deceive the public.

DEL MONTE CORPORATION and PHILIPPINE PACKING

CORPORATION
vs.
CA
and
SUNSHINE
SAUCE
MANUFACTURING INDUSTRIES, G.R. No. L-78325 January 25,
1990 -VALZ
FACTS: Petitioner Del Monte Corporation (Del Monte), through its
local distributor and manufacturer, PhilPack filed an infringement of
copyright complaint against respondent Sunshine
Sauce
Manufacturing Industries (SSMI), also a maker of catsup and other
kitchen sauces. In its complaint, Del Monte alleged that SSMI are
using bottles and logos identical to the petitioner, to which is
deceiving and misleading to the public.
In its answer, Sunshine alleged that it had ceased to use the Del
Monte bottle and that its logo was substantially different from the
Del Monte logo and would not confuse the buying public to the
detriment of the petitioners.
The Regional Trial Court of Makati dismissed the complaint. It held
that there were substantial differences between the logos or
trademarks of the parties nor on the continued use of Del Monte
bottles. The decision was affirmed in toto by the Court of Appeals.
ISSUE: Whether or not SSMI committed infringement against Del
Monte in the use of its logos and bottles.
HELD: Yes. In determining whether two trademarks are confusingly
similar, the two marks in their entirety as they appear in the
respective labels must be considered in relation to the goods to
which they are attached; the discerning eye of the observer must
focus not only on the precognizant words but also on the other
features appearing on both labels. It has been correctly held that
side-by-side comparison is not the final test of similarity. In
determining whether a trademark has been infringed, we must
consider the mark as a whole and not as dissected.
The Court is agreed that are indeed distinctions, but similarities
holds a greater weight in this case. The Sunshine label is a
colorable imitation of the Del Monte trademark. 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. 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.

With regard to the bottle use, Sunshine despite the many choices
available to it and notwithstanding that the caution "Del Monte
Corporation, Not to be Refilled" was embossed on the bottle, still
opted to use the petitioners' bottle to market a product which
Philpack also produces. This clearly shows the private respondent's
bad faith and its intention to capitalize on the latter's reputation
and goodwill and pass off its own product as that of Del Monte.
Skechers USA v. Inter-Pacific, GR 164321, March 23, 2011
-Ken
FACTS: Petitioner Skechers USA has registered the trademark
"Skechers" and the trademark "S" (with an oval design) with the
IPO. Pursuant to a search warrant, more than 6,000 pairs of shoes
bearing the "S" logo were seized. Respondents moved to quash the
search warrant arguing that there was no confusing similarity
between petitioner's "Skechers" rubber shoes and its "Strong"
rubber shoes. RTC applying the Holistic Test ordered the quashing
of the warrant which was affirmed by the CA. RTC noted the
following differences: 1) the mark "S" is not enclosed in an oval
design; 2) the hang tags and labels bear the word "Strong" for
respondent and "Skechers USA" for petitioner; 3) Strong shoes are
modestly priced compared to Skechers shoes.
ISSUE: Whether or not respondents are guilty of Infringement
RULING: Yes. Applying the Dominancy Test, even if respondents
did not use the oval design, the mere fact that it used the same
stylized "S" (same font and size of the lettering) the same being the
dominant
feature
of
petitioner's
trademark
constitutes
infringement. Applying the Holistic Test, the dissimilarities between
the shoes are too trifling and frivolous that it is indubitable that
respondent's products will cause confusion and mistakes in the
eyes of the public. Respondent's shoes may not be an exact replica
of the petitioner's shoes, but the features and overall design are so
similar and alike that confusion is higly likely. Registered trademark
owner may use its mark 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 purchasing public might be mistaken in thinking
that petitioner had ventured into a lower market segment which
scenario is plausible especially since both petitioner and
respondent manufacture rubber shoes.
Philip Morris v Fortune Tobacco, GR 158589, June 27, 2006

MARVILIE
9/14/16
McDonalds v. McJoy, GR 166115
Since 1987, MacJoy Devices had been operating in Cebu. MacJoy is
a fast food restaurant which sells fried chicken, chicken barbeque,
burgers, fries, spaghetti, palabok, tacos, sandwiches, halo-halo and
steaks. In 1991, MacJoy filed its application for trademark before
the Intellectual Property Office (IPO). McDonalds opposed the
application as it alleged that MacJoy closely resembles McDonalds
corporate logo such that when used on identical or related goods,
the trademark applied for would confuse or deceive purchasers into
believing that the goods originate from the same source or origin
that the use and adoption in bad faith of the MacJoy and Device
mark would falsely tend to suggest a connection or affiliation with
McDonalds restaurant services and food products, thus,
constituting a fraud upon the general public and further cause the
dilution of the distinctiveness of McDonalds registered and
internationally recognized McDonaldS marks to its prejudice and
irreparable damage.
The IPO ruled in favor of McDonalds. MacJoy appealed before the
Court of Appeals and the latter ruled in favor of MacJoy. The Court
of Appeals, in ruling over the case, actually used the holistic test
(which is a test commonly used in infringement cases). The holistic
test looks upon the visual comparisons between the two
trademarks. In this case, the Court of Appeals ruled that other than
the letters M and C in the words MacJoy and McDonalds, there
are no real similarities between the two trademarks. MacJoy is
written in round script while McDonalds is written in thin gothic.
MacJoy is accompanied by a picture of a (cartoonish) chicken
while McDonalds is accompanied by the arches M. The color
schemes between the two are also different. MacJoy is in deep
pink while McDonalds is in gold color.
ISSUE: Whether or not MacJoy infringed upon the trademark of
McDonalds.
HELD: Yes. The Supreme Court ruled that the proper test to be
used is the dominancy test. The dominancy test not only looks at
the visual comparisons between two trademarks but also the aural
impressions created by the marks in the public mind as well as

connotative comparisons, giving little weight to factors like prices,

quality, sales outlets and market segments. In the case at bar, the
Supreme Court ruled that McDonalds and MacJoy marks are
confusingly similar with each other such that an ordinary purchaser
can conclude an association or relation between the marks. To
begin with, 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 i.e. in an archlike, capitalized and stylized manner. For sure, it is the prefix Mc,
an abbreviation of Mac, which visually and aurally catches the
attention of the consuming public. Verily, the word MACJOY
attracts attention the same way as did McDonalds, MacFries,
McSpaghetti, McDo, Big Mac and the rest of the MCDONALDS
marks which all use the prefixes Mc and/or Mac. Besides and most
importantly, both trademarks are used in the sale of fastfood
products.
Further, the owner of MacJoy provided little explanation why in all
the available names for a restaurant he chose the prefix Mac to
be the dominant feature of the trademark. The prefix Mac and
Macjoy has no relation or similarity whatsoever to the name
Scarlett Yu Carcel, which is the name of the niece of MacJoys
president whom he said was the basis of the trademark MacJoy. By
reason of the MacJoys 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 MacJoy would want to ride high on the established reputation
and goodwill of the McDonalds marks, which, as applied to its
restaurant business and food products, is undoubtedly beyond
question.
Fredco v. Harvard, GR 185917, June 1, 2011
Fredco Manufacturing Corporation (Fredco) filed before the Bureau
of Legal Affairs of the Philippine Intellectual Property Office a
Petition for Cancellation of Registration No. 56561 issued to
President and Fellows of Harvard College (Harvard University) for
the mark Harvard Veritas Shield Symbol under classes 16, 18, 21,
25
and
28.
Fredco claimed that Harvard University had no right to register the
mark in class 25, since its Philippine registration was based on a
foreign registration. Thus, Harvard University could not have been

considered as a prior adopter and user of the mark in the

Philippines.

Section 37 of R.A. No. 166. As pointed out by Harvard University in

its
Comment:

Fredco explained that the mark was first used in the Philippines by
its predecessor-in-interest New York Garments as early as 1982,
and a certificate of registration was issued in 1988 for goods under
class 25. Although the registration was cancelled for the non-filing
of an affidavit of use, the fact remained that the registration
preceded Harvard Universitys use of the subject mark in the
Philippines.

Although Section 2 of the Trademark law (R.A. 166) requires for the
registration of trademark that the applicant thereof must prove that
the same has been actually in use in commerce or services for not
less than two (2) months in the Philippines before the application
for registration is filed, 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.

Harvard University, on the other hand claimed that the name and
mark Harvard was adopted in 1639 as the name of Harvard
College of Cambridge, Massachusetts, USA. The marks Harvard
and Harvard Veritas Shield Symbol, had been used in commerce
since 1872, and was registered in more than 50 countries.
The Bureau of Legal Affairs ruled in favor of Fredco and ordered the
cancellation of Registration No. 56561. It found Fredco to be the
prior user and adopter of the mark Harvard in the Philippines. On
appeal, the Office of the Director General of the Intellectual
Property Office reversed the BLA ruling on the ground that more
than the use of the trademark in the Philippines, the applicant must
be the owner of the mark sought to be registered. Fredco, not being
the owner of the mark, had no right to register it.
The Court Appeals affirmed the decision of the Office of the Director
General. Fredco appealed the decision with the Supreme Court. In
its appeal, Fredco insisted that the date of actual use in the
Philippines should prevail on the issue of who had a better right to
the
mark.
The
The

Supreme
petition

Court
has

ruled:
no

merit.

Under Section 2 of Republic Act No. 166, 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.
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. However, Harvard University's registration of the name
"Harvard" is based on home registration which is allowed under

In any event, under Section 239.2 of Republic Act No. 8293 (R.A.
No. 8293), "[m]arks registered under Republic Act No. 166 shall
remain in force but shall be deemed to have been granted under
this Act x x x," which does not require actual prior use of the mark
in the Philippines. Since the mark "Harvard Veritas Shield Symbol"
is now deemed granted under R.A. No. 8293, any alleged defect
arising from the absence of actual prior use in the Philippines has
been
cured
by
Section
239.2.
The Supreme Court further ruled that Harvard University is entitled
to protection in the Philippines of its trade name Harvard even
without registration of such trade name in the Philippines. It
explained:
There is no question then, and this Court so declares, that
"Harvard" is a well-known name and mark not only in the United
States but also internationally, including the Philippines. The mark
"Harvard" is rated as one of the most famous marks in the world. It
has been registered in at least 50 countries. It has been used and
promoted extensively in numerous publications worldwide. It has
established a considerable goodwill worldwide since the founding of
Harvard University more than 350 years ago. It is easily
recognizable as the trade name and mark of Harvard University of
Cambridge, Massachusetts, U.S.A., internationally known as one of
the leading educational institutions in the world. As such, even
before Harvard University applied for registration of the mark
"Harvard" in the Philippines, the mark was already protected under
Article 6bis and Article 8 of the Paris Convention.
PROSOURCE INTERNATIONAL, INC. v. HORPHAG RESEARCH
MANAGEMENT SA. G.R. No. 180073. November 25, 2009

-DONNA
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 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 Dominancy
or the Holistic Test, PCO-GENOLS is deceptively similar to
PYCNOGENOL.
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.
BERRIS AGRICULTURAL vs. ABYADANG, G.R. No. 183404,
October 13, 2010 -ANGEL
FACTS: On January 16, 2004, respondent Norvy A. Abyadang
(Abyadang), proprietor of NS Northern Organic Fertilizer, filed with
the Intellectual Property Office (IPO) a trademark application for the
mark NS D-10 PLUS for use in connection with Fungicide (Class 5).
The application, under Application Serial No. 4-2004-00450, was
given due course and was published in the IPO e-Gazette for
opposition on July 28, 2005.
On August 17, 2005, petitioner Berris Agricultural Co., Inc. (Berris),
with business address in Barangay Masiit, Calauan, Laguna, filed
with the IPO Bureau of Legal Affairs (IPO-BLA) a Verified Notice of
Opposition against the mark under application allegedly because
NS D-10 PLUS is similar and/or confusingly similar to its registered
trademark D-10 80 WP, also used for Fungicide (Class 5).
The IPO ruled in favor of Berries but on appeal with the CA, the CA
ruled in favor of Abyadang.

ISSUE: Is Abyadangs mark NS D-10 PLUS confusingly similar to

that of Berris D-10 80 WP such that the latter can rightfully prevent
the IPO registration of the former?
RULING: YES. According to Section 123.1(d) of R.A. No. 8293, a
mark cannot be registered if it is identical with a registered mark
belonging to a different proprietor with an earlier filing or priority
date, with respect to: (1) the same goods or services; (2) closely
related goods or services; or (3) near resemblance of such mark as
to likely deceive or 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.
Comparing Berris mark D-10 80 WP with Abyadangs mark
NS D-10 PLUS, as appearing on their respective packages, one
cannot but notice that both have a common component which is D10. On Berris package, the D-10 is written with a bigger font than
the 80 WP. Admittedly, the D-10 is the dominant feature of the
mark. The D-10, being at the beginning of the mark, is what is most
remembered of it. Although, it appears in Berris certificate of
registration in the same font size as the 80 WP, its dominancy in
the D-10 80 WP mark stands since the difference in the form does
not alter its distinctive character.
Applying the Dominancy Test, it cannot be gainsaid that
Abyadangs NS D-10 PLUS is similar to Berris D-10 80 WP, that
confusion or mistake is more likely to occur. Undeniably, both
marks pertain to the same type of goods fungicide with 80%
Mancozeb as an active ingredient and used for the same group of
fruits, crops, vegetables, and ornamental plants, using the same
dosage and manner of application. They also belong to the same

classification of goods under R.A. No. 8293. Both depictions of D-10,

as found in both marks, are similar in size, such that this portion is
what catches the eye of the purchaser. Undeniably, the likelihood of
confusion is present.
This likelihood of confusion and mistake is made more
manifest when the Holistic Test is applied, taking into consideration
the packaging, for both use the same type of material (foil type)
and have identical color schemes (red, green, and white); and the
marks are both predominantly red in color, with the same phrase
BROAD SPECTRUM FUNGICIDE written underneath.
Considering these striking similarities, predominantly the D10, the buyers of both products, mainly farmers, may be misled
into thinking that NS D-10 PLUS could be an upgraded formulation
of the D-10 80 WP. Verily, the protection of trademarks as
intellectual property is intended not only to preserve the goodwill
and reputation of the business established on the goods bearing
the mark through actual use over a period of time, but also to
safeguard the public as consumers against confusion on these
goods.
9/21/16
MIGHTY CORPORATION vs. GALLO WINERY -RUTH
Facts:
Gallo Winery produces different kinds of wines and brandy
products and sells them in many countries under different
registered trademarks. On the other hand, Mighty Corporation and
La Campana and their sister company, Tobacco Industries of the
Philippines, are engaged in the cultivation, manufacture,
distribution and sale of tobacco products for which they have been
using the GALLO cigarette trademark since 1973.
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.
Issues:
1. Whether or not respondents enjoyed the exclusive right to
use the trademark?
2. Whether or not there is similarity or likelihood of confusion?

3. Whether or not the wines and cigarettes are identical,

competing or related goods; and thus there is trademark
infringement?
4. Whether or not petitioners are liable for unfair competition?

The discerning eye of the observer must focus not only

on the predominant words but also on the other features
appearing in both labels in order that he may draw his
conclusion whether one is confusingly similar to the
other.

Ruling:
1.

2.

No. Actual use in commerce in the Philippines is an

essential prerequisite for the acquisition of ownership over a
trademark pursuant to Sec. 2 and 2-A of the Philippine
Trademark Law (R.A. No. 166). 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, Petitioners
and its predecessor-in-interest, Tobacco Industries, have
indeed been using and selling GALLO cigarettes in the
Philippines since 1973. Respondents never enjoyed the
exclusive right to use the GALLO wine trademark to the
prejudice of Tobacco Industries and its successors-ininterest, herein petitioners.
Furthermore, Section 20 of the Trademark Law,
provided that the certificate of registration confer only the
exclusive right to use its own symbol only to those goods
specified in the certificate, subject to any conditions and
limitations stated therein. GALLO trademark registration
certificates in the Philippines and in other countries
expressly state that they cover wines only, without any
evidence or indication that registrant Gallo Winery expanded
or intended to expand its business to cigarettes. Thus, by
strict application of Section 20 of the Trademark Law, Gallo
Winery's exclusive right to use the GALLO trademark should
be limited to wines, the only product indicated in its
registration certificates.
No. There are two tests in determining similarity and
likelihood of confusion in trademark resemblance:
a. Dominancy Test focuses on the similarity of the
prevalent features of the competing trademarks which
might cause confusion or deception, and thus
infringement. 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.
b. Holistic Test requires that the entirety of the marks in
question be considered in resolving confusing similarity.

Applying the Dominancy and Holistic Tests, the

dominant feature of the GALLO cigarette trademark is the
device of a large rooster. The rooster device is given
prominence in the GALLO cigarette packs in terms of size
and location on the labels. It has no relation at all to the
product but was chosen merely as a trademark due to the
fondness for fighting cocks of the son of petitioner's
president. Furthermore, petitioners adopted GALLO, the
Spanish word for rooster, as a cigarette trademark to appeal
to one of their target markets, the sabungeros. Also, on the
side of the GALLO cigarette packs are the words MADE BY
MIGHTY CORPORATION, thus clearly informing the public as
to the identity of the manufacturer of the cigarettes.
On the other hand, GALLO Winerys wine and brandy
labels are diverse. The labels are embellished with sketches
of buildings and trees, vineyards or a bunch of grapes while
in a few, one or two small roosters facing right or facing
each other. Moreover, on the labels of Gallo Winerys wines
are printed the words VINTED AND BOTTLED BY ERNEST &
JULIO GALLO, MODESTO, CALIFORNIA.
The many different features like color schemes, art
works and other markings of both products drown out the
similarity between them, the use of the word GALLO a
family surname for the Gallo Winerys wines and a Spanish
word for rooster for petitioner's cigarettes.
3.

No. The wines and cigarettes are not identical,

competing or related goods. When goods are so related that
the public may be, or is actually, deceived and misled that
they come from the same maker or manufacturer,
trademark infringement occurs.
Obviously, wines and cigarettes are not identical or
competing products. Neither do they belong to the same
class of goods. However, product classification alone cannot
serve as the decisive factor in the resolution of whether or
not wines and cigarettes are related goods. Emphasis should
be on the similarity of the products involved and not on the
arbitrary classification or general description of their
properties or characteristics.
Wines and cigarettes are non-competing and are

totally unrelated products not likely to cause confusion vis-vis the goods or the business of the petitioners and
respondents. Wines are bottled and consumed by drinking
while cigarettes are packed in cartons or packages and
smoked. There is a whale of a difference between their
descriptive properties, physical attributes or essential
characteristics like form, composition, texture and quality.
GALLO cigarettes are inexpensive items while GALLO
wines are not. GALLO wines are patronized by middle-tohigh-income earners while GALLO cigarettes appeal only to
simple folks like farmers, fishermen, laborers and other lowincome workers. Indeed, the big price difference of these
two products is an important factor in proving that they are
in fact unrelated and that they travel in different channels of
trade. There is a distinct price segmentation based on vastly
different social classes of purchasers.
Tobacco and alcohol products may be considered
related only in cases involving special circumstances which
exist only if a famous mark is involved and there is a
demonstrated intent to capitalize on it. Both of these are
absent in the present case.
4.
No. Petitioners are not liable for unfair competition.
Under Section 29 of the Trademark Law, any person who
employs deception or any other means contrary to good
faith by which he passes 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 commits
any acts calculated to produce said result, is guilty of unfair
competition. The universal test question is whether the
public is likely to be deceived. Nothing less than conduct
tending to pass off one man's goods or business as that of
another constitutes unfair competition. Actual or probable
deception and confusion on the part of customers by reason
of defendant's practices must always appear. Petitioners
never attempted to pass off their cigarettes as those of
respondents. There is no evidence of bad faith or fraud
imputable to petitioners in using their GALLO cigarette
mark.
5.

To conclude, after applying all the tests provided by

the governing laws as well as those recognized by
jurisprudence, the court found that petitioners are not liable
for trademark infringement, unfair competition or damages.

Fruit of the Loom v. CA, GR L-32747, November 29, 2004

-KYLE
FACTS:
Petitioner is a corporation duly organized and existing under the
laws of US, the registrant of a trademark, FRUIT OF THE LOOM, for
classes of merchandise including mens, womens and childrens
underwear, which includes womens panties and which fall under
class 40 classification of goods and knitted, netted and textile
fabrics.
Respondent is a domestic corporation, the registrant of a
trademark FRUIT FOR EVE for merchandises covering garments
similar to Ps products like womens panties and pajamas.
P filed before the RTC a complaint for TMI/UC against R alleging that
the latters trademark FRUIT FOR EVE is confusingly similar to its
trademark FRUIT OF THE LOOM used also on womens panties and
other textile products, and that the color get-up and general
appearance of Rs hang tag consisting of a big red apple is a
colorable imitation to the hang tag of P.
Likewise, R stated that the trademark FRUIT FOR EVE is being used
on ladies' panties and pajamas only whereas petitioner's trademark
is used even on men's underwear and pajamas.
RTC rendered a decision in favor of P, but both parties appealed to
the CA. CA reversed the decision of the RTC. Ps MR was denied.
ISSUE:
Whether or not Rs trademark FRUIT FOR EVE and its hang tag are
confusingly similar to Ps trademark FRUIT OF THE LOOM and its
hang tag so as to constitute an infringement of the latters
trademark rights and justify the cancellation of the former.
RULING:
No. In determining whether the trademarks are confusingly similar,
a comparison of the words is not the only determinant factor.
In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE,
the lone similar word is FRUIT.
By mere pronouncing the two marks, it could hardly be said
that it will provoke a confusion, as to mistake one for the
other. Standing by itself, FRUIT OF THE LOOM is wholly
different from FRUIT FOR EVE.

The court also did not agree with petitioner that the
dominant feature of both trademarks is the word FRUIT for
even in the printing of the trademark in both hang tags, the
word FRUIT is not at all made dominant over the other
words.
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.
The similarities of the competing trademarks in this case are
completely lost in the substantial differences in the
design and general appearance of their respective
hang tags.
The shape of petitioner's hang tag is round with a base that
looks like a paper rolled a few inches in both ends; while
that of private respondent is plain rectangle without any
base.
The designs differ. Petitioner's trademark is written in almost
semi-circle while that of private respondent is written in
straight line in bigger letters than petitioner's. Private
respondent's tag has only an apple in its center but that of
petitioner has also clusters of grapes that surround the
apple in the center.
The colors of the hang tag are also very distinct from each
other. Petitioner's hang tag is fight brown while that of
respondent is pink with a white colored center piece. The
apples which are the only similarities in the hang tag are
differently colored. Petitioner's apple is colored dark red,
while that of private respondent is light red.
Thus, the trademarks FRUIT OF THE LOOM and FRUIT FOR
EVE do not resemble each other as to confuse or deceive an
ordinary purchaser.
The ordinary purchaser must be thought of as having,
and credited with, at least a modicum of intelligence to be
able to see the obvious differences between the two
trademarks in question.
Furthermore, a person who buys petitioners products and
starts to have a liking for it, will not get confused and
reach out for private respondents products when she goes
to a garment store.

Pearl and Dean Inc. v Shoemart Inc. GR No. 148222, August

15, 2003 (PATENT)

Facts: Plaintiff P and D is engaged in manufacturing advertising

display units called as light boxes. These are specialty printed
posters with plastic sheets and illuminated back lights that are
mainly used as stationeries. They secure copyright registration over
these advertising light boxes and marketed using the trademark
poster ads. They applied for the registration of trademark before
the Bureau of Patents, Trademark and Technology Transfer which
was approved on September 12, 1988. P and Dnegotiated with the
defendant Shoemart for the lease and installation of the light boxes
in SM City North Edsa but was given an alternative to have
them leased to SM Makati and SM Cubao while the said branch was
under construction. Only the contract with SM Makati was returned
with signature. In 1986 the counsel of Shoemart informed P and
D that it is rescinding its contract for SM Makati due to nonperformance of the terms thereof. Two years later, the Metro
Industrial Services, the same company contracted by the plaintiff to
fabricate their display units offered to construct light boxes for the
Shoemart chain of stores wherein 10 light boxes were created for
them. Upon the termination of contract with Metro Industrial
Service, SM hired EYD Rainbow Advertising Co. to make light boxes.
When P and D knew about the exact copies of its light boxes
installed at SM City branches in 1989, it investigated and found out
that North Edsa Marketing Inc (NEMI), sister company of SM was
primarily selling ad space in lighted display units. P and D sent
letter to both NEMI and SM enjoining them to cease from using the
subject light boxes and remove them from SM establishments. It
also demanded to discontinue the use of its trademark poster ads
with compensatory damages of 20M. SM suspended the lease of
light boxes in its branches while NEMI took down its advertisement
for posterads. Claiming both failed to meet its demand P and
D filed a case for infringement of trademark, copyright, unfair
competition and damages.
SM denied the charges against it and noted that the registration of
mark poster ads is limited to stationeries like letterhead and
envelope. It further stresses that it independently develop its own
poster panels using techniques and available technology without
notice to P and D copyright. It further contends that poster ads is
a generic name that cannot be appropriated for a trademark and
that P and Ds advertising display units contained no copyright
notice in
violation
of
Section
27
of
P.D.
49. NEMI
likewise repleaded the averments of SM and denied to have
manufactured, installed or advertised the display units. The RTC
decided in favor of P and D but on appeal the Court of Appeals
reversed its decision. In its judgment its stand is that the copyright
of the plaintiff is limited to its technical drawings only and not the

light boxes itself. When a drawing is technical, the copyright over

the drawing does not extend to actual object. Thus the CA is
constrained to adopt the view of the respondents that the poster
ads is a generic poster term ads and in the absence of convincing
proof that such wording acquired secondary meaning, the P and Ds
exclusive right to use poster ads is limited to what is written on
its certificate of registration which is stationaries.
Issue: Whether or not there is patent infringement
Ruling: It held that the petitioner never secured patent for the
light boxes. Without any acquired rights to protect its invention it
cannot legally prevent anyone from manufacturing the same. There
can be no infringement of a patent until a patent has been issued,
since whatever right one has to the invention covered by the
patent arises alone from the grant of patent. Inventors have no
common law right tomonopoly of his work. He has the right to
invent but once he voluntarily discloses it the world is free to copy
and use it. A patent gives the inventor the exclusive right to make,
sell, use and exclude others from using his invention. Assuming the
petitioners ad units were patentable, he made them public by
submitting its engineering drawings to the National Library. To
legally preclude others from copying and profiting from ones
invention, patent is a primary requirement. The ultimate goal of a
patent system is to bring new designs and technologies into the
public domain through disclosure. Ideas, once disclosed to the
public without the protection of a valid patent, are subject to
appropriation without significant restraint. Therefore, without any
patent secured to protect ones work, there is no protection against
its use by the public. Petitioner mainly secured copyright in which
its design is classified as class O limited to box wraps, pictorial
illustration, labels and tags. Thus its copyright is covered only the
works falling within this category. Moreover, the term poster ads
is generic and incapable to be used as trademark thus the
respondents are not held guilty of the charges against them.

Philip Morris v. Fortune Tobacco- Marvilie

FACTS: Petitioner Philip Morris, Inc., a corporation organized under the laws of the
State of Virginia, United States of America, is, per Certificate of Registration No.
18723 issued on April 26, 1973 by the Philippine Patents Office (PPO), the
registered owner of the trademark MARK VII for cigarettes. Similarly, petitioner
Benson & Hedges (Canada), Inc., a subsidiary of Philip Morris, Inc., is the registered
owner of the trademark MARK TEN for cigarettes as evidenced by PPO
Certificate of Registration No. 11147. And as can be seen in Trademark Certificate of

Registration No. 19053, another subsidiary of Philip Morris, Inc., the Swiss company
Fabriques de Tabac Reunies, S.A., is the assignee of the trademark LARK, which
was originally registered in 1964 by Ligget and Myers Tobacco Company. On the
other hand, respondent Fortune Tobacco Corporation, a company organized in the
Philippines, manufactures and sells cigarettes using the trademark MARK.
The legal dispute between the parties started when the herein petitioners, on the
claim that an infringement of their respective trademarks had been committed, filed,
on August 18, 1982, a Complaint for Infringement of Trademark and Damages
against respondent Fortune Tobacco Corporation, docketed as Civil Case No. 47374
of the RTC of Pasig.
Petitioners claimed that the respondent, without any previous consent from any of
the petitioners, manufactured and sold cigarettes bearing the identical and/or
confusingly similar trademark MARK Accordingly, they argued that respondents
use of the trademark MARK in its cigarette products have caused and is likely to
cause confusion or mistake, or would deceive purchasers and the public in general
into buying these products under the impression and mistaken belief that they are
buying petitioners products.
RTC- ruled in favor of respondents; dismissed petitioners complaint
CA- ruled that petitioner has legal standing to sue but found that there was no
infringement
Hence this petition
Issue: Whether or not the fact that Petitioner has a Certificate of Registration issued
by the Philippine Patents Office entitles them to protection in the PH?
Held: No. The Certificate of Registration is merely a prima facie evidence of validity
of registration.
The registration of a trademark gives the registrant, such as petitioners,
advantages denied non-registrants or ordinary users, like respondent. But while
petitioners enjoy the statutory presumptions arising from such registration i.e., as to
the validity of the registration, ownership and the exclusive right to use the registered
marks, they may not successfully sue on the basis alone of their respective
certificates of registration of trademarks. For, petitioners are still foreign
corporations. As such, they ought, as a condition to availment of the rights and
privileges vis--vis their trademarks in this country, to show proof that, on top of
Philippine registration, their country grants substantially similar rights and privileges
to Filipino citizens pursuant to Section 21-A[20] of R.A. No. 166.
The registration of trademark cannot be deemed conclusive as to the actual use of
such trademark in local commerce. As it were, registration does not confer upon the
registrant an absolute right to the registered mark. The certificate of registration
merely constitutes prima facie evidence that the registrant is the owner of the

registered mark. Evidence of non-usage of the mark rebuts the presumption of

trademark ownership, as what happened here when petitioners no less admitted not
doing business in this country.
Registration in the Philippines of trademarks does not ipso facto convey an absolute
right or exclusive ownership thereof. To borrow from Shangri-La International Hotel
Management, Ltd. v. Development Group of Companies, Inc, trademark is a creation
of use and, therefore, actual use is a pre-requisite to exclusive ownership; registration
is only an administrative confirmation of the existence of the right of ownership of
the mark, but does not perfect such right; actual use thereof is the perfecting
ingredient.
True, the Philippines adherence to the Paris Convention effectively obligates the
country to honor and enforce its provisions as regards the protection of industrial
property of foreign nationals in this country. However, any protection accorded has
to be made subject to the limitations of Philippine laws. Hence, despite Article 2 of
the Paris Convention which substantially provides that (1) nationals of membercountries shall have in this country rights specially provided by the Convention as
are consistent with Philippine laws, and enjoy the privileges that Philippine laws now
grant or may hereafter grant to its nationals, and (2) while no domicile requirement
in the country where protection is claimed shall be required of persons entitled to the
benefits of the Union for the enjoyment of any industrial property rights, foreign
nationals must still observe and comply with the conditions imposed by Philippine
law on its nationals.
Considering that R.A. No. 166, as amended, specifically Sections 2and 2-A thereof,
mandates actual use of the marks and/or emblems in local commerce and trade
before they may be registered and ownership thereof acquired, the petitioners cannot,
therefore, dispense with the element of actual use. Their being nationals of membercountries of the Paris Union does not alter the legal situation.