Arce Sons and Company v.

Selecta Biscuit
Company (G.R. No. L-14761)
Facts:
R filed for registration of the word SELECTA as
trade-mark to be use in its bakery products. The E
found that the trade-mark sought to be registered
resembles the word SELECTA used by the P in
its milk and ice cream products so that its use by
R will cause confusion as to the origin of their
respective goods, recommending then that the
application be refused. Upon reconsideration, PO
ordered the publication.
P filed its opposition thereto on several grounds,
among which are: that the mark SELECTA had
been continuously used by P in the manufacture
and sale of its products, including cakes, bakery
products, milk and ice cream from the time of its
organization and even prior thereto by its
predecessor-in-interest, Ramon Arce; that the
mark SELECTA has already become identified
with name of the P and its business; that the
mark to which the application of R refers has
striking resemblance, both in appearance and
meaning, to Ps mark as to be mistaken therefor
by the public and cause Rs goods to be sold as
Ps; P actually filed a complaint for UC asking for
damages and for the issuance of a WI.
CFI rendered decision perpetually enjoining R
from using the name SELECTA and ordering it to
pay P by way of damages. R appealed this to the
CA.
Meanwhile, the DP dismissed Ps opposition.
Hence, P interposed the present petition for
review. The two cases are now before the SC for
consolidated decision.

this is the situation of petitioner when it used the

word SELECTA as a trade-mark. In this sense,
the law gives its protection and guarantees its
use to the exclusion of all others. And it is also in
the sense that the law postulates that The
ownership or possession of a trademark,. . . shall
be recognized and protected in the same manner
and to the same extent, as are other property
rights known to the law, thereby giving to any
person entitled to the exclusive use of such trademark the right to recover damages in a civil
action from any person who may have sold goods
of similar kind bearing such trade-mark (Sections
2-A and 23, Republic Act No. 166, as amended).
The term SELECTA may be placed at par with
the words Ang Tibay which this Court has
considered not merely as a descriptive term
within the meaning of the Trade-mark Law but as
a fanciful or coined phrase, or a trade-mark. In
that case, this Court found that respondent has
constantly used the term Ang Tibay, both as a
trade-mark and a trade-name, in the manufacture
and sale of slippers, shoes and indoor baseballs
for twenty-two years before petitioner registered
it as a trade-name for pants and shirts so that it
has performed during that period the function of
a trade-mark to point distinctively, or by its own
meaning or by association, to the origin or
ownership of the wares to which it applies.
The rationale in the Ang Tibay case applies on all
fours to the case of petitioner.
In view of the foregoing, we hold that the DP
committed an error in dismissing the Ps
opposition, and consequently, we hereby reverse
his decision. Consistently with this finding, we
hereby affirm the decision of the court a quo.

Issue:
Whether or not the tradename SELECTA has
acquired secondary meaning in favor of
petitioner.
Ruling:
The word SELECTA, it is true, may be an ordinary
or common word in the sense that may be used
or employed by anyone in promoting his business
or enterprise, but once adopted or coined in
connection with ones business as an emblem,
sign or device to characterize its products, or as
a badge of authenticity, it may acquire a
secondary meaning as to be exclusively
associated with its products and business. In this
sense, its use by another may lead to confusion
in trade and cause damage to its business. And

Ang v. Teodoro (G.R. No. L-48226)

Facts:
R at first in partnership with Juan Katindig and
later as sole proprietor, has continuously used
ANG TIBAY both as a trademark and as a trade
name, in the manufacture and sale of slippers,
shoes, and indoor baseballs. He formally
registered both his trademark (1915) and
tradename (1933).
P registered the same trademark ANG TIBAY for
pants and shirts (1932) and established a factory
for the manufacture of said articles. P advertised
the factory which she had just built and it was
when this was brought to the attention of R that

he consulted his attorneys

brought the present suit.

and

eventually

RTC absolved P from the complaint on the

grounds that the 2 trademarks are dissimilar and
are used on different and non-competing goods;
that there had been no exclusive use of
trademark by the R and that there had been no
fraud in the use of the said trademark because
the goods on which it is used are essentially
different.
CA reversed the judgment holding that by an
uninterrupted exclusive use in the manufacture of
slippers and shoes, Rs trademark has acquired
secondary meaning and that the goods or articles
are similar or belongs to the same class.
Issues:
(1) Whether or not ANG TIBAY is a generic or
descriptive term that has acquired a Secondary
Meaning; and
(2) Whether or not there is Unfair Competition.
Ruling:
(1) From all of this we deduce that 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 as a trade-mark or trade-name. In
this connection we do not fail to note that when
the petitioner herself took the trouble and
expense of securing the registration of these
same words as a trademark of her products she
or her attorney as well as the Director of
Commerce was undoubtedly convinced that said
words (Ang Tibay) were not a descriptive term
and hence could be legally used and validly
registered as a trade-mark. It seems stultifying
and puerile for her now to contend otherwise,
suggestive of the story of sour grapes. Counsel
for the petitioner says that the function of a
trade-mark is to point distinctively, either by its
own meaning or by association, to the origin or
ownership of the wares to which it is applied.
That is correct, and we find that Ang Tibay, as
used by the respondent to designate his wares,
had exactly performed that function for twentytwo years before the petitioner adopted it as a
trade-mark in her own business. Ang Tibay shoes
and slippers are, by association, known
throughout the Philippines as products of the Ang
Tibay factory owned and operated by the
respondent Toribio Teodoro.
In her second assignment of error petitioner
contends that the Court of Appeals erred in

holding that the words Ang Tibay had acquired

a secondary meaning. In view of the conclusion
we have reached upon the first assignment of
error, it is unnecessary to apply here the doctrine
of
secondary
meaning
in
trade-mark
parlance. This doctrine is to the effect that a
word or phrase originally incapable of exclusive
appropriation with reference to an article of the
market, because geographically or otherwise
descriptive, might nevertheless have been used
so long and so exclusively by one producer with
reference to his article that, in that trade and to
that branch of the purchasing public, the word or
phrase has come to mean that the article was his
product. We have said that the phrase Ang
Tibay, being neither geographic nor descriptive,
was originally capable of exclusive appropriation
as a trade-mark. But were it not so, the
application of the doctrine of secondary meaning
made by the Court of Appeals could nevertheless
be fully sustained because, in any event, by
respondents long and exclusive use of said
phrase with reference to his products and his
business, it has acquired a proprietary
connotation.
(2) Such construction of the law is induced by
cogent reasons of equity and fair dealing. The
courts have come to realize that there can be
unfair competition or unfair trading even if the
goods are non-competing, and that such unfair
trading can cause injury or damage to the first
user of a given trade-mark, first, by prevention of
the natural expansion of his business and,
second, by having his business reputation
confused with and put at the mercy of the
second Then noncompetitive products are sold
under the same mark, the gradual whittling away
or dispersion of the identity and hold upon the
public mind of the mark created by its first
user, inevitably results. The original owner is
entitled to the preservation of the valuable link
between him and the public that has been
created by his ingenuity and the merit of his
wares
or
services.
Experience
has
demonstrated that when a well-known trademark is adopted by another even for a totally
different class of goods, it is done to get the
benefit of the reputation and advertisements of
the originator of said mark, to convey to the
public a false impression of some supposed
connection between the manufacturer of the
article sold under the original mark and the new
articles being tendered to the public under the
same or similar mark. As trade has developed
and commercial changes have come about, the
law of unfair competition has expanded to keep

pace with the times and the element of strict

competition in itself has ceased to be the
determining factor. The owner of a trade-mark or
trade-name has a property right in which he is
entitled to protection, since there is damage to
him from confusion of reputation or goodwill in
the mind of the public as well as from confusion
of goods. The modern trend is to give emphasis
to the unfairness of the acts and to classify and
treat the issue as a fraud.
The judgment of the Court of Appeals is affirmed.

MIGHTY CORPORATION and LA CAMPANA

FABRICA DE TABACO, INC. vs. E.J. GALLO
WINERY and THE ANDRESONS GROUP, INC.

On April 21, 1993, the Makati RTC denied, for lack

of merit, respondents prayer for the issuance of
a writ of preliminary injunction.
On August 19, 1993, respondents motion for
reconsideration was denied.
On February 20, 1995, the CA likewise dismissed
respondents petition for review on certiorari.
After the trial on the merits, however, the Makati
RTC, on November 26, 1998, held petitioners
liable for, permanently enjoined from committing
trademark infringement and unfair competition
with respect to the GALLO trademark.
On appeal, the CA affirmed the Makati RTCs
decision and subsequently denied petitioners
motion for reconsideration.

FACTS:
On March 12, 1993, respondents sued
petitioners in the RTC-Makati for trademark and
trade name infringement and unfair competition,
with a prayer for damages and preliminary
injunction.
They claimed that petitioners adopted the
Gallo trademark to ride on Gallo Winerys and
Gallo and Ernest & Julio Gallo trademarks
established reputation and popularity, thus
causing confusion, deception and mistake on the
part of the purchasing public who had always
associated Gallo and Ernest and Julio & Gallo
trademarks with Gallo Winerys wines.
In their answer, petitioners alleged,
among
other
affirmative
defenses
that:
petitioners Gallo cigarettes and Gallo Winerys
wine were totally unrelated products. To wit:
1. Gallo Winerys GALLO trademark registration
certificates covered wines only, and not
cigarettes;
2. GALLO cigarettes and GALLO wines were sold
through different channels of trade;
3. the target market of Gallo Winerys wines
was the middle or high-income bracket while
Gallo cigarette buyers were farmers, fishermen,
laborers and other low-income workers;
4. the dominant feature of the Gallo cigarette
was the rooster device with the manufacturers
name clearly indicated as MIGHTY CORPORATION,
while in the case of Gallo Winerys wines, it was
the full names of the founders-owners ERNEST &
JULIO GALLO or just their surname GALLO;

ISSUE:
Whether GALLO cigarettes and GALLO wines were
identical, similar or related goods for the reason
alone that they were purportedly forms of vice.

HELD:
Wines and cigarettes are not identical,
similar, competing or related goods.
In resolving whether goods are related,
several factors come into play:

the business (and its location) to which the

goods belong

the class of product to which the good

belong

the products quality, quantity, or size,

including the nature of the package, wrapper or
container

the nature and cost of the articles

the descriptive properties, physical attributes

or essential characteristics with reference to their
form, composition, texture or quality

the purpose of the goods

whether the article is bought for immediate

consumption, that is, day-to-day household items

the field of manufacture

the conditions under which the article is

usually purchased and


the articles of the trade through which the
goods flow, how they are distributed, marketed,
displayed and sold.
The test of fraudulent simulation is to the
likelihood of the deception of some persons in
some measure acquainted with an established
design and desirous of purchasing the commodity
with which that design has been associated. The
simulation, in order to be objectionable, must be
as appears likely to mislead the ordinary
intelligent buyer who has a need to supply and is
familiar with the article that he seeks to
purchase.
The petitioners are not liable for trademark
infringement, unfair competition or damages.
WHEREFORE, petition is granted.

MCDONALD'S CORPORATION and MCGEORGE

FOOD INDUSTRIES, INC., petitioners, vs.L.C.
BIG MAK BURGER, INC., FRANCIS B. DY,
EDNA A. DY, RENE B. DY, WILLIAM B. DY,
JESUS AYCARDO, ARACELI AYCARDO, and
GRACE
HUERTO,
respondents.
G.R.

No.

143993,

August

18,

2004.

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 tradename and apply such reproduction, counterfeit,
copy, or colorable imitation to labels, signs,
prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in
connection with such goods, business or services,
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.

business.
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:

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.
3rd

element:

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).
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 specific segments of
the market. The registered trademark owner
enjoys protection in product and market areas
that are the normal potential expansion of his

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.
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.
2ND ISSUE: W/N Respondents committed Unfair
Competition
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.
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.

McDonalds Corporation vs Macjoy Fastfood

Corporation
514 SCRA 95 Mercantile Law Intellectual
Property Law Law on Trademarks, Service
Marks and Trade Names Dominancy Test vs
Holistic Test
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, halohalo 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 arch-like,
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.

Dermaline, Inc. vs. Myra Pharmaceuticals,

Inc., GR No. 190065, August 16, 2010
Facts: Dermaline filed with the IPO an application
to register the trademark Dermaline. Myra
opposed this alleging that the trademark
resembles its trademark Dermalin and will

cause confusion, mistake and deception to the

purchasing public. Dermalin was registered way
back 1986 and was commercially used since
1977. Myra claims that despite attempts of
Dermaline to differentiate its mark, the dominant
feature is the term Dermaline to which the first
8 letters were identical to that of Dermalin. The
pronunciation for both is also identical. Further,
both have 3 syllables each with identical sound
and
appearance.
Issue: W/N the IPO should allow the registration
of the trademark Dermaline. NO
Held: As Myra correctly posits, it has the right
under Section 147 of R.A. No. 8293 to prevent
third parties from using a trademark, or similar
signs or containers for goods or services, without
its consent, identical or similar to its registered
trademark, where such use would result in a
likelihood of confusion. In determining confusion,
case law has developed two (2) tests, the
Dominancy Test and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of
the prevalent features of the competing
trademarks that might cause confusion or
deception. Duplication or imitation is not even
required; neither is it necessary that the label of
the applied mark for registration should suggest
an effort to imitate. Relative to the question on
confusion
of
marks
and
trade
names,
jurisprudence noted two (2) types of confusion,
viz: (1) confusion of goods (product confusion),
where the ordinarily prudent purchaser would be
induced to purchase one product in the belief that
he was purchasing the other; and (2) confusion of
business (source or origin confusion), where,
although the goods of the parties are different,
the product, the mark of which registration is
applied for by one party, is such as might
reasonably be assumed to originate with the
registrant of an earlier product, and the public
would then be deceived either into that belief or
into the belief that there is some connection
between the two parties, though inexistent.
Using this test, the IPO declared that both
confusion of goods and service and confusion of
business or of origin were apparent in both
trademarks. While it is true that the two marks
are presented differently, they are almost spelled
in the same way, except for Dermalines mark
which ends with the letter "E," and they are
pronounced practically in the same manner in
three (3) syllables, with the ending letter "E" in

Dermalines mark pronounced silently. Thus,

when an ordinary purchaser, for example, hears
an
advertisement
of
Dermalines
applied
trademark over the radio, chances are he will
associate it with Myras. When one applies for the
registration of a trademark or label which is
almost the same or that very closely resembles
one already used and registered by another, the
application should be rejected and dismissed
outright, even without any opposition on the part
of the owner and user of a previously registered
label
or
trademark.
Further, Dermalines stance that its product
belongs to a separate and different classification
from Myras products with the registered
trademark does not eradicate the possibility of
mistake on the part of the purchasing public to
associate the former with the latter, especially
considering that both classifications pertain to
treatments for the skin.

Soceite Des Produits Nestle, S.A. Vs. Martin

T. Dy, Jr., GR No. 172276, August 8, 2010
FACTS: Petitioner is a foreign corporation
organized under the laws of Switzerland and
manufactures food products and beverages. A
Certificate of Registration was issued on April 7,
1969 by the BPTTT which as a result Nestle owns
the NAN trademark for its line of infant
powdered milk (PRE-NAN, NAN-H.A., NAN-1, and
NAN-2). It is classified under Class-6, diactetic
preparations for infant feeding. Nestle sells its
NAN products throughout the Philippines and
invested substantial amount of resources for its
marketing.
Respondent owns 5M Enterprises which imports
Sunny Boy powdered milk from Australia, and
repacks the milk into plastic bags bearing the
name NANNY, and is also classified as Class-6
full cream milk for adults. Respondent sells the
milk
in
parts
of
Mindanao.
In 1985, petitioner requested respondent to
refrain from using NANNY and to stop infringing
the NAN trademark. Respondent did not act
which forced Nestle to file in March 1, 1990 in the
RTC of Dumaguete, a complaint against
respondent. The case was transferred to the RTC
of Cebu (special court for intellectual property
rights). The RTC held that respondent was guilty
of infringement. The trial court stated that if
determination of infringement shall only be
limited on whether or not the mark used would

likely cause confusion, it would highly unlikely to

happen in the instant case, as a comparison of
the plaintiffs NAN and defendants NANNY
products are different. Thus the dominancy test
cannot be used because the deceptive tendency
of the mark NANNY is not apparent from the
essential features of the registered trademark
NAN. The RTC invoked however the case of Esso
Standard Eastern vs. CA where the SC said that
as to whether trademark infringement exists
depends upon for the most part upon whether or
not the goods are so related that the public may
be, or is actually, deceived and misled that they
came from the same maker or manufacturer. For
non-competing goods may be those which,
though they are not in actual competition, are so
related to each other that it might reasonably be
assumed
that
they
originate
from
one
manufacturer, or from a common source. The trial
court justified that goods may become related for
purposes of infringement when they belong to
the same class, or have same descriptive
properties; when they possess the same physical
attributes or essential characteristics with
reference to their form, composition, texture or
quality. They also be related because they serve
the same purpose or are sold in grocery stores.
The RTC stated that considering that NANNY
belongs to the same class as that of NAN because
both are food products, the defendants
unregistered trade mark NANNY should be held
an
infringement
to
plaintiffs
registered
trademark NAN because defendants use of
NANNY would imply that it came from the
manufacturer
of
NAN.
The Court of Appeals reversed the TCs decision
and found respondent not liable for infringement,
stating that the TCs application of the doctrine
laid down by the SC in the Esso Standard case is
misplaced as the goods of the two contending
parties bear similar marks or labels. In the instant
case, two dissimilar marks are involved. The CA
stated that while it is true that both NAN and
NANNY are milk products and that the word NAN
is contained in the word NANNY, there are more
glaring dissimilarities in the entirety of their
trademarks as they appear in their respective
labels and also in relation to the goods to which
they are attached. The discerning eye of the
observer must focus not only on the predominant
words but also on the other features appearing in
both labels. NAN products, which consist of PreNAN, NAN-H-A, NAN-1 and NAN-2, are all infant
preparations, while NANNY is a full cream milk for
adults in [sic] all ages. NAN milk products are sold

in tin cans and hence, far expensive than the full

cream milk NANNY sold in three (3) plastic packs
containing 80, 180 and 450 grams and worth
P8.90, P17.50 and P39.90 per milk pack. The
labels of NAN products are of the colours blue and
white and have at the bottom portion an elliptical
shaped figure containing inside it a drawing of
nestling birds, which is overlapped by the tradename "Nestle." On the other hand, the plastic
packs NANNY have a drawing of milking cows
lazing on a vast green field, back-dropped with
snow-capped
mountains
and
using
the
predominant colours of blue and green. The word
NAN are all in large, formal and conservative-like
block letters, while the word NANNY are all in
small and irregular style of letters with curved
ends. With these material differences apparent in
the packaging of both milk products, NANNY full
cream milk cannot possibly be an infringement of
NAN
infant
milk.
ISSUE: Whether or not respondent is liable for
infringement
HELD Yes. In Prosource International, Inc. vs.
Horphag Research Management SA, the SC laid
down the elements of infringement under R.A. No.
166,
and
8293:
For Section 22 of R.A. No. 166, the following
constitute the elements of TM infringement:
A TM actually used in commerce and registered in
the
principal
register
of
the
PPO
Used by another person in connection with the
sale of goods or services or in connection with
which such use is likely to cause confusion or
mistake or to deceive purchasers or others as to
the source or origin of such goods or services, or
identity
of
such
business
TM

is

used

for

identical

or

similar

goods

Such act is done without the consent of the TM

registrant.
The elements of infringement under R.A. No.
8293
are:
The TM infringed is registered in the IPO, in trade
name, the same need not be registered
The TM or Trade name is not reproduced,
counterfeited, copied, or colorably imitated by
the
infringer

The infringing mark or trade name is used in

connection with the sale, offering for sale, or
advertising of any goods; or the infringing mark
or trade name is applied to labels, signs, prints,
intended to be used upon or in connection with
such
goods,
business,
or
services;
The use or application of the infringing mark or
trade name is likely to cause confusion or mistake
or to deceive purchasers or others as to the
goods or services themselves or as to the source
or origin of such goods or services or the identity
of
such
business
Without the consent of the trademark or trade
name
owner
or
assignee
Among the elements, the element of likelihood of
confusion is the gravamen of trademark
infringement, and there are to types, confusion of
goods which in the event the ordinarily prudent
purchaser would be induced to purchase one
product in the belief that he was purchasing the
other. And the other is confusion of business
which though the goods of the parties are
different, the defendants 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.
There are two tests to determine the likelihood of
confusion: the dominancy test and holistic test. In
light of the facts of the present case, the Court
holds that the dominancy test is applicable.
The test of dominancy is in fact explicitly
incorporated into law in Section 155.1 of the IPC
which defines infringement as the colourable
imitation of a registered mark...or a dominant
feature thereof. While the SC agrees with the
CAs enumeration of differences between the
respective trademarks, the SC does not agree
that the holistic test is not the one applicable in
the case as it is contrary to the elementary
postulate of the law on trademarks and unfair
competition that that confusing similarity is to be
determined on the basis of visual, aural,
connotative comparisons and overall impressions
engendered by the marks in controversy as they
are encountered in the realities of the
marketplace. The totality or holistic test only
relies on visual comparison whereas the
dominancy test relies also on the aural and
connotative comparisons and overall impressions

between

the

two

trademarks.

Applying such test in the present case the SC

finds that NANNY is confusingly similar to NAN as
it is the prevalent feature of petitioners infant
powdered milk (PRE-NAN, NAN-H.A.., NAN-1 and
NAN-2). NANNY contains the prevalent feature
NAN, and the first three letters of NANNY are
exactly the same as the letters of NAN. The aural
effect
is
confusingly
similar.
The decision of the RTC is reinstated.

Esso Standard v CA Digest

G.R. No. L-29971
Facts of the Case:
The petitioner Esso Standard is a foreign
corporation duly licensed to do business in the
philippines. it is engaged in the sale of petroleum
products which are identified by the trademarl
'Esso'. Esso is a successor of Standard Vacuum Oil
Co, it registered as a business name with the
Bureau of Commerce in 1962. United Cigarette is
a domestic corporation engaged in the
manufacture and sale of cigarettes. it acquired
the business from La Oriental Tobacco Corp
including patent rights, once of which is the use
of 'Esso' on its cigarettes.
The petitioner filed a trademark infringement
case alleging that it acquired goodwill to such an
extent that the buying public would be deceived
as ti the quality and origin of the said products to
the detriment and disadvantage of its own
products. The lower court found United Cigarette
guilty of infringement. Upon appeal, the Court of
Appeals ruled that there was no infringment in
this case.
Issue: Is there infringement committed?
Ruling: NONE. Infringement is defined by law as
the use without the consent of the trademark
owner of any reproduction, counterfeit, copy or
colorable imitation of any registered mark or
tradename which would likely cause confusion or
mistake or deceive purchasers or others as to the
source or origin of such goods.
The products of both parties (Petroleum and
cigarettes) are non-competing. But as to whether
trademark infringement exists depend on
whether or not the goods are so related that the
public may be or is actually deceived and misled
that they come from the same maker. Under the

Related Goods Theory, goods are related when

they belong to the same class or have the same
descriptive properties or when they have same
physical attributes. In these case, the goods are
absolutely different and are so foreign from each
other it would be unlikely for purchasers to think
that they came from the same source. Moreover,
the goods flow from different channels of trade
and are evidently different in kind and nature.

Canon Kabushiki
No. 120900)

Kaisha

v.

CA

(G.R.

Facts:
R NSR Rubber Corporation filed an application for
registration of the mark CANON for sandals.
P, a foreign corporation duly organized and
existing under the laws of Japan, filed an
opposition alleging that it will be damaged by the
registration of the trademark. P holds certificate
of registration for the mark CANON in various
countries and in the Philippines covering goods
like paints, chemical products, toner and dye
stuff.
BPTTT dismissed the opposition and gave due
course to PRs application for registration. P
appealed.
CA affirmed the decision of BPTTT holding that R
can use the trademark because the products of
the two parties are dissimilar. Hence, this petition
for review.
Issue:
Whether or not P is entitled to the exclusive use
of CANON because it forms part of its corporate
name, protected by the Paris Convention.
Ruling:
We cannot uphold petitioners position.
The term trademark is defined by RA 166, the
Trademark Law, as including any word, name,
symbol, emblem, sign or device or any
combination thereof adopted and used by a
manufacturer or merchant to identify his goods
and distinguish them for those manufactured,
sold or dealt in by others. Tradename is defined
by the same law as including individual names
and surnames,
firm
names,
tradenames,
devices or words used by manufacturers,
industrialists,
merchants, agriculturists, and
others to identify their business, vocations, or
occupations; the names or titles lawfully adopted

and used by natural or juridical persons,

unions, and any manufacturing, industrial,
commercial, agricultural or other organizations
engaged in trade or Simply put, a trade
name refers to the business and its goodwill;
a trademark refers to the goods.
The Convention of Paris for the Protection of
Industrial Property, otherwise known as the Paris
Convention, of which both the Philippines and
Japan, the country of petitioner, are signatories, is
a multilateral treaty that seeks to protect
industrial property consisting of patents, utility
models, industrial designs, trademarks, service
marks, trade names and indications of source or
appellations of origin, and at the same time
aims to repress unfair competition.
We agree with public respondents that the
controlling doctrine with respect to the
applicability
of Article
8
of
the
Paris
Convention is that established in Kabushi Kaisha
Isetan vs. Intermediate Appellate Court.
As pointed out by the BPTTT:
Regarding the applicability of Article 8 of the
Paris Convention, this Office believes that there is
no automatic protection afforded an entity whose
tradename is alleged to have been infringed
through the use of that name as a Trademark by
a local entity. In Kabushiki Kaisha Isetan vs. The
Intermediate Appellate Court, et. al., G.R.No.
75420, 15 November 1991, the Honorable
Supreme Court held that: The Paris Convention
for the Protection of Industrial Property does
not automatically exclude all countries of the
world which have signed it from using a
tradename which happens to be used in one
country. To illustrate if a taxicab or bus company
in a town in the United Kingdom or India happens
to use the tradename Rapid Transportation, it
does not necessarily follow that Rapid can no
longer be registered in Uganda, Fiji, or the
Philippines.
WHEREFORE, in view of the foregoing, the instant
petition for review on certiorari is DENIED for lack
of merit.

December 22, 1966

MARVEX COMMERCIAL CO., INC., petitioner,
vs.
PETRA HAWPIA and CO., and THE DIRECTOR
OF PATENTS, respondents.

Facts of the Case: Petra Hawpia & Co., a

partnership duly organized under the laws of the
Philippines filed a petition for the registration of
the trademark "LIONPAS" used on medicated
plaster, with the Philippine Patent Office,
asserting its continuous use in the Philippines
since June 9, 1958. The Marvex Commercial Co.,
Inc., a corporation also duly organized under the
laws of the Philippines, on July 24, 1959 filed an
opposition thereto, alleging that the registration
of such trademark would violate its right to and
interest in the trademark "SALONPAS" used on
another medicated plaster, which is registered its
name under Certificate of Registration 5486,
issued by the Director of Patents on September
29, 1956, and that both trademarks when used
on medicated plaster would mislead the public as
they are confusingly similar.
The 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.
Issues:
(1) Is the applicant the owner of the trademark
"LIONPAS"?;
(2) Is the trademark "LIONPAS" confusingly
similar to the trademark "SALONPAS"?

Held:
Is the applicant the owner of the
trademark "LIONPAS?"
On the 1st issue:
The
assignment
must
be
in
writing,
acknowledged before a notary public or other
officer authorized to administer oaths or perform
other notarial acts and certified under the hand
and official seal of the notary or other officer.
(Sec. 31, par. 2)
In this case, although a sheet of paper is attached
to exh. 6, on which is typewritten a certification
that the signatures of the presidents of the two
named companies (referring to the signatures in
exh. 6) "have been duly written by themselves",
this sheet is unmarked, unpaged, unsigned,
undated and unsealed. We have thumbed the
record in quest of any definitive evidence that it
is a correct translation of the Japanese characters
found on another unmarked and unpaged sheet,
and have found none.

The documents are legally insufficient to prove

that the applicant is the owner of the trademark
in question. As a matter of fact, the other
evidence on record states that the applicant is
merely the "exclusive distributor" in the
Philippines of the "LIONPAS" penetrative plaster;
describes the applicant as the "Philippine sole
distributor" of "LIONPAS"; exh. B simply states
that "LIONPAS" is "manufactured exclusively for
Petra Hawpia & Co. for distribution in the
Philippines." Not being the owner of the
trademark "LIONPAS" but being merely an
importer and/or distributor of the said penetrative
plaster, the applicant is not entitled under the law
to register it in its name.
On the 2nd issue:
The trademarks "SALONPAS" and "LIONPAS" are
confusingly similar in sound. 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 descriptive,
furnishes no indication of the origin of the article
and therefore is open for appropriation by anyone
(Ethepa vs. Director of Patents, L-20635, March
31, 1966) 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. And where goods are advertised over the
radio, similarity in sound is of especial
significance (Co Tiong Sa vs. Director of Patents,
95 Phil. 1 citing Nims, The Law of Unfair
Competition and Trademarks, 4th ed., vol. 2, pp.
678-679). "The importance of this rule is
emphasized by the increase of radio advertising
in which we are deprived of help of our eyes and
must depend entirely on the ear" (Operators, Inc.
vs. Director of Patents, supra).
In the case at bar, "SALONPAS" and "LIONPAS",
when spoken, sound very much alike. 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 (see Celanese Corporation of America
vs. E. I. Du Pont, 154 F. 2d. 146, 148).
The registration of "LIONPAS" cannot therefore be
given due course.
Decision of the respondent Director of Patents is
set aside, and the petition of the respondent
Petra Hawpia & Co. is hereby dismissed.