MIGHTY CORPORATION and LA CAMPANA FABRICA
the dominant feature of the Gallo cigarette was the rooster
DE TABACO, INC. vs. E.J. GALLO WINERY and THE
ANDRESONS GROUP, INC.
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.
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;
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.
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: to supply and is familiar with the article that he seeks to
purchase.
Wines and cigarettes are not identical, similar,
competing or related goods. The petitioners are not liable for trademark
infringement, unfair competition or damages.
In resolving whether goods are related, several factors
come into play: WHEREFORE, petition is granted.

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