Philippine Refining Co vs.

Ng Sam and Director of Patents

Facts:

The sole issue raised in this petition for review of the decision of the Director of patents is
whether or not the product of respondent, Ng Sam, which is ham, and those of petitioner
consisting of lard, butter, cooking oil and soap are so related that the use of the same
trademark "CAMIA" on said goods would likely result in confusion as to their source or
origin.

Issue:

Is the product of Ng Sam (Ham) and those of the petitioner so related that the use of the
trademark 'Camia' on said goods would result to confusion as to their origin?

Ruling:

No. The Court held that the businesses of the parties are non-competitive and their products
so unrelated that the identical use of the mark Camia was not likely to give rise to
confusion, much less cause damage to petitioner. The particular goods of the parties are so
unrelated that consumers would not in any probability mistake one as the source or origin of
the product of the other. Petitioners goods are basically derived from vegetable oil and
animal fats, while the product of respondent is processed from pig's legs. Furthermore,
respondent had on his product the business name "SAM'S HAM AND BACON FACTORY"
which would place no question on the origin of the product.

The Court also held that the term subject to the case is not uncommon in view of the fact that
there were two others distinct businesses bearing the same name. A trademark must be
affirmative and definite, significant and distinctive, capable to indicate origin. It was held that
if a mark is so commonplace that it cannot be readily distinguished from others, then he who
first adopted it cannot be injured by any subsequent appropriation or imitation by others, and
the public will not be deceived. What then is to be reckoned with is the similarity of the
products under the mark. The similarity is not on the classification of the property or
character of the product but on the sameness of the actual product sold or manufactured.
Such similarity is wanting in this case.
 MIRPURI vs. CA G.R. No. 114508, November 19, 1999

FACTS:

Lolita Escobar applied with the Bureau of Patents for the registration of the trademark
Barbizon, alleging that she had been manufacturing and selling these products since 1970.
private respondent Barbizon Corp opposed the application in IPC No. 686.

The Bureau granted the application and a certificate of registration was issued for the
trademark Barbizon. Escobar later assigned all her rights and interest over the trademark to
petitioner Mirpuri. In 1979, Escobar failed to file with the Bureau the Affidavit of Use of the
trademark. Due to his failure, the Bureau cancelled the certificate of registration. Escobar
applied and Mirpuri also applied and this application was also opposed by private
respondent in IPC No. 2049, claiming that it adopted said trademark in 1933 and has been
using it. It obtained a certificate from the US Patent Office in 1934. Then in 1991, DTI
cancelled petitioners registration and declared private respondent the owner and prior user
of the business name Barbizon International.

ISSUE:

Whether or not the treaty (Paris Convention) affords protection to a foreign corporation
against a Philippine applicant for the registration of a similar trademark.

HELD:

The Court held in the affirmative. RA 8293 defines trademark as any visible sign capable of
distinguishing goods. The Paris Convention 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. In short, foreign nationals are to be given the
same treatment in each of the member countries as that country makes available to its own
citizens. Nationals of the various member nations are thus assured of a certain minimum of
international protection of their industrial property.
Furthermore, the function of a mark are the following, namely; (1) they indicate the origin or
ownership of the article storage they are attached; (2) they guarantee that those articles come
up to a certain standard of quality; and (3) they advertise the article they symbolize.
 CONVERSE RUBBER VS. UNIVERSAL RUBBER

FACTS:

Converse Rubber Corporation is an American corporation while Universal Rubber Products,

Inc. is a corporation licensed to do business in the country. Converse has been operating since
1946. Universal Rubber has been operating since 1963. Later, Universal Rubber filed an
application for the trademark Universal Converse and Device before the Philippine Patent
Office. Converse Rubber opposed as it averred that the word Converse which is part of its
corporate name cannot be granted as part of Universal Rubbers trademark or trade name
because it will likely deceive purchasers of Universal Rubbers products as it may be
mistaken by unwary customers to be manufactured by Converse Rubber. The Director of
Patents did not grant the opposition by Converse Rubber.

ISSUE:

Whether or not the decision of the Director of Patents is correct.

HELD:

No. From a cursory appreciation of the Converse Rubbers corporate name CONVERSE
RUBBER CORPORATION it is evident that the word CONVERSE is the dominant word
which identifies Converse Rubber from other corporations engaged in similar business.
Universal Rubber, in the stipulation of facts, admitted Converse Rubbers existence since 1946
as a duly organized foreign corporation engaged in the manufacture of rubber shoes. This
admission necessarily betrays its knowledge of the reputation and business of petitioner even
before it applied for registration of the trademark in question. Knowing, therefore, that the
word CONVERSE belongs to and is being used by Converse Rubber, and is in fact the
dominant word in its corporate name, Universal Rubber has no right to appropriate the same
for use on its products which are similar to those being produced by Converse Rubber.
 Operators Inc. vs. Director of Patents

Facts:
Petitioner, a domestic corporation, applied to the Philippine Patent Office for registration of
AMBISCO as a trademark for its locally manufactured candy products. It has been using said
trademark since May 1956 by virtue of two contracts with the American Biscuit Company,
also a domestic corporation. The National Biscuit Company opposed the application, having
previously registered NABISCO as trademark for its own bakery goods, such as biscuits,
crackers, cakes and wafers. The oppositor, a corporation organized in the United States, has
had the said trademark registered in the Philippines since 1930, and renewed the registration
in 1948 under the latest trademark law.

Issues:
1. Whether or not the applicant had a right in the first place to apply for registration of
AMBISCO as a trademark at all.
2. whether or not the two trademarks aforesaid are so similar to each other as to cause
confusion, mistake or deception of purchasers.

Ruling:

No. Under section 2 of Republic Act No. 166, as amended by section 1 of Republic Act No.
865, trademarks, tradenames, and service marks, owned by persons, corporations,
partnerships or associations domiciled in the Philippines or in any foreign country may be
registered here provided certain conditions enumerated in the same section are complied
with. The right to register, as may be noted, is based on ownership. In the case of the
trademark AMBISCO, the evidence shows that it is owned by the American Biscuit Co., Inc.,
and not by petitioner Operators, Inc. It was incumbent upon petitioner, as applicant, to prove
that it had a right to register the trademark applied for and consequently, to show compliance
with all the legal requisites including ownership thereof. An application for registration
under the Patent Law is not an ordinary litigious controversy between private parties. Public
interest is involved and all questions as to whether or not the law is satisfied may be
considered by the Patent Office or by the Court even though not specifically raised by either
of the parties.
Yes. Considering the similarities in appearance and sound between the marks AMBISCO and
NABISCO, the nature and similarity of the products of the parties together with the fact that
opposer's NABISCO has been used in commerce in the Philippines for more than fifty five
(55) years before AMBISCO was adopted by applicant, confusion of purchasers is likely.
 UNNO COMMERCIAL ENTERPRISES, INC. vs. GENERAL MILLING CORPORATION

Facts:
On December 11, 1962, respondent General Milling Corporation filed an application for the
registration of the trademark "All Montana" to be used in the sale of wheat flour.

As the same trademark had been previously registered in favor of Unno, the Chief Trademark
Examiner declared an interference proceeding between General Milling's application (Serial
No. 9732), as Junior/Praty Applicant and Unno's registration (Registration No. 9589), as
Senior Party-Applicant to determine which party has previously adopted and used the
trademark "All Montana.

General Milling Corp. alleged that it started using the trademark "All Montana" on August
31, 1955 and subsequently was licensed to use the same by Centennial Mills, Inc. by virtue of
a deed of assignment ex cuted on September 20, 1962.

Unno Commercial on the other hand argued that the same trademark had been registered in
its favor on March 8, 1962 asserting that it started using the trademark on June 30, 1956, as
indentor or broker for S.H. Huang Bros. & Co., a local firm.

Various shipments, documents, invoices and other correspondence of Centennial Mills, Inc.,
shipping thousand of bags of wheat flour bearing the trademark "All Montana" were shown
by petitioner and maintained that anyone, whether he is only an importer, broker or indentor
can appropriate, use and own a particular mark of its own choice although he is not the
manufacturer of the goods he deals with.

Issues:
Whether or not Unno, as a mere inventor can apply for the registration of the trademark of its
principal / negative. Only owners of the trademark can apply for its registration.

Ruling:
The right to register trademark is based on ownership. When the applicant is not the owner of
the trademark being applied for, he has no right to apply for the registration of the same.

Under the Trademark Law only the owner of the trademark, trade name or service mark used
to distinguish his goods, business or service from the goods, business or service of others is
entitled to register the same. The term owner does not include the importer of the goods
bearing the trademark, trade name, service mark, or other mark of ownership, unless such
importer is actually the owner thereof in the country from which the goods are imported.
A local importer, however, may make application for the registration of a foreign trademark,
trade name or service mark if he is duly authorized by the actual owner of the name or other
mark of ownership.
The Deed of Assignment itself constitutes sufficient proof of General Milling Corporation's
ownership of the trademark "All Montana," showing that Centennial Mills was a corporation
duly organized and existing under and by virtue of the laws of the State of Oregon, U.S.A.
and the absolute and registered owner of several trademarks for wheat flour all of which
were assigned by it to respondent General Milling Corporation.

Unno Commercial Enterprises, Inc. merely acted as exclusive distributor of All Montana
wheat flour in the Philippines. Only the owner of a trademark, trade name or service mark
may apply for its registration and an importer, broker, indentor or distributor acquires no
rights to the trademark of the goods he is dealing with in the absence of a valid transfer or
assignment of the trade mark.

Inasmuch as it was not the owner of the trademark, the Senior Party could not be regarded as
having used and adopted it, and had no right to apply for its registration.

A mere importer and distributor acquires no rights in the mark used on the imported goods
by the foreign exporter in the absence of an assignment of any kind

Trademarks used and adopted on goods manufactured or packed in a foreign country in

behalf of a domestic importer, broker, or indentor and distributor are presumed to be owned
by the manufacturer or packer, unless there is a written agreement clearly showing that
ownership vests in the importer, broker, indentor or distributor. Ownership of a trademark is
not acquired by the mere fact of registration alone.
 BERRIS AGRICULTURAL CO., INC. vs. NORVY ABYADANG

Facts:

Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in
connection with Fungicide. Berris Agricultural Co., Inc. filed an opposition against the
trademark citing that it is confusingly similar with their trademark, "D-10 80 WP" which is
also used for Fungicide also with the same active ingredient. The IPO ruled in favor of Berries
but on appeal with the CA, the CA ruled in favor of Abyadang.

Issue:

Whether there is confusing similarity between the trademarks.

Ruling:

Yes. The SC found that both products have the component D-10 as their ingredient and that it
is the dominant feature in both their marks. Applying the Dominancy Test, Abyadang's
product is similar to Berris' and that confusion may likely to occur especially that both in the
same type of goods. Also using the Holistic Test, it was more obvious that there is likelihood
of confusion in their packaging and color schemes of the marks. The SC states that buyers
would think that Abyadang's product is an upgrade of Berris'.
 Cuanchow Soy and Canning Co., vs. The Director of Patents and Villapania,

Facts:

Both petitioner Chuanchow Soy & Canning Co. and respondent Rosario Villapania are
engaged in the manufacture and sale of soy sauce. Since 1950, petitioner had been using as
trade mark the words "Carp Brand Soy", printed in a distinctive style of lettering above the
drawing of a fish to distinguish its product, on labels affixed directly to the bottles containing
soy sauce, and on tissue paper in which these bottles were wrapped.

Respondent Villapania since 1956 had been using as trademark of her soy sauce the name of
"Bangos Brand" written in the same distinctive style of lettering as that of the petitioner's
"Carp Brand", above the drawing of the fish similar to the fish drawing on the trademark of
petitioner, on labels also attached to the bottles containing her soy sauce, and the bottles were
wrapped also in tissue paper bearing a similar design.

Villapania applied for registration of her trademark. Petitioner company filed its opposition
to respondent's application. Respondent Director of Patents rendered a decision dismissing
petitioner's opposition to the application.

Issue:

Whether or not the features of the respondents trademark would cause confusion or
mistakes in the mind of the public or deceive purchasers?

Ruling:

Yes, The court held that the trademarks of the parties involves in this case were very close
resemblance between the two not only in the style of lettering of the words "Carp" and
Brand" and the words "Bangos Brand", but also in the size of the letters, register mark,
consisting of a pictorial representation of a hen with the words Hen Brand and Marca
Manok, which mark or brand was also used on a food seasoning product, before the use of
the trademark by the applicant. Director of Patents held that applicants trademark would
cause confusion or mistake or deceive purchasers, and he refused registration of said
trademark. Petitioner filed an appeal to reversed the decision of the Director of Patents.
 Ethepa vs. Director of Patents

Facts:

On April 23, 1959, private respondent Westmont Pharmaceuticals, Inc. sought registration of
trademark Atussin This was objected to by petitioner Etepha, A.G. alleging that it will be
detrimental on their part as it is confusingly similar to its Pertussin. Both products deal with
the treatment of cough.

Issue:

Whether or not Attusin may be registered as a trademark.

Ruling:

Yes. The validity of a cause for infringment is predicated upon colorable imitation. The phrase
colorable imitaion denotes such a close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives, and to cause him to purchase
the one supposing it to be the other. While tussin by itself cannot thus be used exclusively
to identify ones goods, it may properly become the subject of a trademark by combination
with another word or phrase. The two labels are entirely different in colors, contents,
arrangement of words theeon, sizes, shapes and general appearance. The contrasts in pictorial
effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for
that of the other, not even by persons unfamiliar with the two trademarks. The two words do
not sound alike when pronounced.
 FRUIT OF THE LOOM VS CA

Facts:

Fruit of the Loom is the registrant of the trademark Fruit of the Loom, while General
Garments Corp.is the registrant of the trademark Fruit for Eve. Both trademarks cover
clothing. In 1976, Fruit of the Loom filed with the trial court a complaint for infringement and
unfair competition against General Garments. Petitioner filed a complaint for infringement of
trademark and unfair
competition against private respondent, alleging that:

1. The latters trademark is confusingly similar to the formers, both trademarks being
used in womens panties and other textile product.
2. That the hang tags used by private respondent is a colorable imitation of those of the
petitioner.

The trial court ruled in favor of Fruit of the Loom. General Garments appealed. The appellate
court reversed the trial courts
decision.

Hence, the petition for review on certiorari.

Issue:

Whether there was an infringement of the trademark of Fruit of the Loom.

Ruling:

No. The trademarks Fruit of the Loom and Fruit for Eve do not resemble each other as to
confuse or deceive an ordinary purchaser. No confusion would arise in the pronunciation of
the two marks. Further, the similarities of the competing trademarks are completely lost in
the substantial difference in the design and general appearance of their respective hang tags.
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.
 Del Monte Corporation vs. Court of Appeals

Facts:

Petitioner Del Monte, an American corporation, granted Philpack the right to manufacture,
distribute and sell in the Philippines its Del Monte catsup. Petitioners trademark and logo
Del Monte and its catsup bottle were subsequently registered in the Philippines. Meanwhile
respondent Sunshine Sauce, a company also engaged in the manufacturing and sale of
various kinds of sauces, registered its logo Sunshine Fruit Catsup. Philpack received reports
that respondent was buying and recycling used Del Montes bottle in junk shops to serve as
container for its own catsup. Thus, petitioner and Philpack filed a complaint for trademark
infringement and unfair competition which the trial court dismissed. CA affirmed holding
there were substantial differences between the 2 marks.

Issue:

Whether or not there is confusing similarity between the two trademarks.

Ruling:
Yes. At that, even if the labels were analyzed together it is not difficult to see that the
Sunshine label is a colorable imitation of the Del Monte trademark. The predominant colors
used in the Del Monte label are green and red-orange, the same with Sunshine. The word
catsup in both bottles is printed in white and the style of the print/letter is the same.
Although the logo of Sunshine is not a tomato, the figure nevertheless approximates that of a
tomato.
As previously stated, the person who infringes a trade mark does not normally copy out but
only makes colorable changes, employing enough points of similarity to confuse the public
with enough points of differences to confuse the courts. 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.
When as in this case, 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.
 Faberge v IAC

Facts:

Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its
underwear (briefs) products. The petitioner opposed on the ground that there is similarity
with their own symbol (BRUT, Brut33 & Device) used on its aftershave, deodorant, cream
shave, hairspray and hair shampoo/soaps and that it would cause injury to their business
reputation. It must be noted that the petitioner never applied for registration of said
trademark for its brief products. The Patent Office allowed Co Beng Kay the registration and
this was further affirmed by the Court of Appeals.

Issue:

Is there confusing similarity between the challenged marks and that its use would likely
cause confusion on the part of the purchasers?

Ruling:

No.
Co Beng Kay may rightly appropriate the mark. In this case Sec. 20 (Philippine Intellectual
Property Law) is controlling. The certificate of registration issued confers the exclusive right
to use its own symbol only to those goods specified by the first user in the certificate, subject
to any conditions or limitations stated therein. Moreover, the two products are so dissimilar
that a purchaser of one (a brief) would not be misled or mistaken into buying the other (such
as an aftershave).
 McDONALDS CORPORATION vs. MACJOY FASTFOOD CORPORATION

Facts:

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.

Ruling:
No.
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.
THE GEORGE W. LUFT COMPANY INC, vs. NGO GUAN and DIRECTOR OF PATENTS

Facts:

Petitioner, George W. Luft Co., Inc. a foreign corporation organized under the laws of the
State of New York is the owner of the trademark "Tangee", which it has allegedly used
since February 28, 1928, and is covered by Certificate of Registration No. 2178-S of the
Philippine Patent Office, dated February 21, 1950. On January 22, 1959, Ngo Guan applied for
the registration of the trademark "Tango", which he claims to have used since June, 1958.
Petitioner objected thereto alleging that "Tango" is likely to be mistaken for "Tangee", upon
the ground that the two trademarks are confusingly similar.
After appropriate proceedings the Director of Patents rendered a decision overruling said
opposition and granting Ngo Guan's application. A reconsideration of this decision having
been denied, petitioner brought the matter before this Court for a review of said decision and
of the resolution denying a reconsideration thereof.

Issue:

Whether or not the "Tango" trademark is confusingly similar with the "Tangee" trademark

Ruling:

No. One of the factors essential therefor is whether or not there is a general similarity in the
appearance of the trademarks in question, which can not be determined with reasonable
certainty without a physical examination and comparison thereof. Petitioner has rendered
such examination impossible, by not introducing any evidence whatsoever as to the
appearance of the "Tangee" trademark. What is more, such omission suggests that its
appearance is not analogous to that of respondent's "Tango", for, otherwise, petitioner would
not have failed to present a sample of its trademark, for comparison with that of respondent
Ngo Guan.
Moreover, the word "Tango" has a well established meaning, for it describes a particular
dance that is well known in the Philippines. In fact, respondent's label includes the picture of
a man and a woman dancing. Again, "Tango" is used by Ngo Guan for no other product than
hair pomade, in which petitioner does not deal. Upon the other hand, petitioner's trademark is
used for specified chemicals, medical and pharmaceutical preparations namely: "lipstick,
creme rouge, compact rouge, cleansing cream, day cream, night cream, massage cream, face
lotion, astringent, face powder, powder compacts, cosmetics for lashes, brows, and hair, hair
pencils, nail polish, perfumes, and toilet waters and it is not claimed that Ngo Guan uses
or intends to use its "Tango" trademark on articles of this kind.

ACOJE MINING CO., INC., vs. THE DIRECTOR OF PATENTS

Facts:

On September 14, 1965, Acoje Mining Co., Inc. a domestic corporation, filed an application for
registration of the trademark LOTUS, used on Soy Sauce, Class 47. Use in commerce in the
Philippines since June 1, 1965 is asserted.
The Chief Trademark Examiner finally rejected the application by reason of confusing
similarity with the trademark LOTUS registered and issued in favor of Philippine Refining
Co., Inc., another domestic corporation. The cited mark is being used on edible oil, Class 47."
The matter was then elevated to respondent Director of Patents who upheld the view of the
Chief Trademark Examiner and rejected the application of petitioner on the ground that while
there is a difference between soy sauce and edible oil and there were dissimilarities in the
trademarks due to type of letters used as well as in the size, color and design employed, still
the close relationship of the products, soy sauce and edible oil, is such "that purchasers would
be misled into believing that they have a common source."

Issue:

May petitioner register for the purpose of advertising its product, soy sauce, the trademark
LOTUS, there being already in existence one such registered in favor of respondent for its
product, edible oil, it being further shown that the trademark applied for is in smaller type,
colored differently, set on a background which is dissimilar as to yield a distinct appearance?

Ruling:

Yes. The determinative factor in a contest involving registration of trade mark is not whether
the challenging mark would actually cause confusion or deception of the purchasers but
whether the use of such mark would likely cause confusion or mistake on the part of the
buying public.
In this case, there is quite a difference between soy sauce and edible oil. If one is in the market
for the former, he is not likely to purchase the latter just because of the trademark. LOTUS.
Even on the rare occasions that a mistake does occur, it can easily be rectified, Moreover,
there is no denying that the possibility of confusion is remote considering the difference in
the type used, the coloring, the petitioner's trademark being in yellow and red while that of
the Philippine Refining Company being in green and yellow, and the much smaller size of
petitioner's trademark. Decision of respondent Director of Patents is reversed and petitioner's
application for registration of its trademark LOTUS granted.
Cigarettes are usually being sold in groceries or supermarket while petroleum products are
sold in gasoline stations however, there are some instances wherein the court said that these
goods are not confusingly similar.
MASSO HERMANOS, S.A. vs. DIRECTOR OF PATENTS

Facts:

Masso Hermanos, S.A., is the registered owner under Act No. 666 of the trademark composed
of the word "Cosmopolite" used on canned fish. Said trademark was first registered and the
certificate of registration No. 1881 issued therefor on March 16, 1917, by the Director of the
Philippine library and museum for a period of thirty years, under the provisions of Act No.
666. A renewal of the certificate of registration was applied for and issued on June 6, 1947 by
the Director of the Bureau of Commerce also under the provisions of said Act. On June 14,
1948, the petitioner, Masso Hermanos, applied to the Director of Patents for a new certificate
of registration of said trademark under the provisions of section 41 (a) of Republic Act No.
166. A trademark examiner of the Patents Office denied the petition on the ground that the
word "Cosmopolite", as a trademark for canned fish is descriptive of said goods and,
therefore, could not have been legally registered as a trademark under the provisions of Act
No. 666 and, consequently, is not entitled to registration under section 41 (a) of Republic Act
No. 166. The petitioner appealed from said ruling to the Director of Patents on the ground
that the examining officer was not authorized to re-examine certificates which were originally
issued under Act No. 666 and surrendered for re-registration under section 41(a) of Republic
Act No. 166. The Director of Patents affirmed the ruling of the trademark examiner.

Issue:

Whether or not a new certificate of registration of said trademark under the provisions of
section 41 (a) of Republic Act No. 166 should be granted.

Ruling:

Yes. It is clear that the renewal of the registration under section 41 of Republic Act No. 166 is
subject to the following requirements:
(1) The trademark must have been registered under the old laws:
(2) The registration must be subsisting under said laws; and1awphil.net
(3) The certificate issued under the old laws must have been surrendered to the Patents Office
within one year from the time Republic Act No. 166 went into effect, which was on June 20,
1947.
There is no question that the above requirements nos. (1) and (3) have been complied with by
the petitioner. The question is whether the condition required under No (2) exists in favor of
the petitioner. The word "Cosmopolite" does not give the name, quality or description of the
canned fish for which it is used. It does not even describe the place of origin, for it does not
indicate the country or place where the canned fish was manufactured. it is a very general
term which does not give the kind or quality of the goods. The registration of the trademark
"Cosmopolite" under Act No. 666 was valid and is subsisting. The Director of Patents should
not for light and unsubstantial reasons reverse the ruling of the former officer in charge of
trademark registration, which has been accepted and in force since 1917 up to the present.
Lyceum of the Philippines vs. Court of Appeals

Facts:

Petitioner is an educational institution duly registered with the SEC since Sept 1950. Before
the case at bar, Petitioner commenced a proceeding against Lyceum of Baguio with the SEC to
require it to change its corporate name and adopt a new one not similar or identical to the
Petitioner. SEC granted noting that there was substantial because of the dominant word
Lyceum. CA and SC affirmed. Petitioner filed similar complaint against other schools and
obtain a favorable decision from the hearing officer. On appeal, SEC En banc reversed the
decision and held that the word Lyceum have not become so identified with the petitioner
and that the use thereof will cause confusion to the general public.

Issues:
1. Whether or not the corporate names of the private respondents are identical with or
deceptively similar to that of the petitioner.
2. Whether or not the use by the petitioner of Lyceum in its corporate name has been for
such length of time and with such exclusivity as to have become associated or
identified with the petitioner institution in the mind of the general public (Doctrine of
Secondary meaning).

Ruling:

No to both. True enough, the corporate names of the parties carry the word Lyceum but
confusion and deception are precluded by the appending of geographic names. Lyceum
generally refers to a school or an institution of learning and it is natural to use this word to
designate an entity which is organized and operating as an educational institution. Doctrine
of Secondary meaning is a word of phrase originally incapable of exclusive appropriation,
might nevertheless have been used so long and so exclusively by one producer with reference
to his article that, in trade and to that branch of the purchasing public, the word or phrase has
come to mean that the article was his product. Lyceum of the Philippines has not gained
exclusive use of Lyceum by long passage of time. The number alone of the private
respondents suggests strongly that the use of Lyceum has not been attended with the
exclusivity essential for the applicability of the doctrine. It may be noted that one of the
respondents Western Pangasinan Lyceum used such term 17 years before the petitioner
registered with the SEC. Moreover, there may be other schools using the name but not
registered with the SEC because they have not adopted the corporate form of organization.
 Bata Industries LTD vs. Court of Appeals

Facts:

The respondent New Olympian Rubber Products sought to register the mark "BATA" for
casual rubber shoe products, alleging it had used the said mark since the 1970s. The
petitioner, a Canadian corporation opposed with its allegations that it owns and has not
abandoned said trademark. The petitioner has no license to do business in the Philippines
and the trademark has never been registered in the Philippines by any foreign entity. Bata
Industries does not sell footwear under the said trademark in the Philippines nor does it have
any licensing agreement with any local entity to sell its product. Evidence show that earlier,
even before the World War II, Bata shoes made by Gerbec and Hrdina (Czech company) were
already sold in the country. Some shoes made by the petitioner may have been sold in the
Philippines ntil 1948. On the other hand, respondent spent money and effort to popularize the
trademark "BATA" since the 70's. Moreover, it also secures 3 copyright registrations for the
word "BATA". The Philippine Patent Office (PPO) dismissed the opposition by the petitioner
while the Court of Appeals (CA) reversed said decision. However, a 2nd resolution by the CA
affirmed the PPO decision.

Issue:

Does the petitioner have the right to protect its goodwill alleged to be threatened with the
registration of the mark?

Ruling:

NO. Bata Industries has no Philippine goodwill that would be damaged by the registration of
the mark. Any slight goodwill obtained by the product before World War II was completely
abandoned and lost in the more than 35 years that passed since Manila's liberation from
Japan. The petitioner never used the trademark either before or after the war. It is also not the
successor-in-interest of Gerbec & Hrdina and there was no privity of interest between them,
Furthermore, the Czech trademark has long been abandoned in Czechoslovakia.
Shangri-La International Hotel Management, Ltd., et. al. vs. Developers Group of Companies
Inc.

Facts:

All hotels owned, operated and managed by the aforesaid SLIHM Group of Companies
adopted and used the distinctive lettering of the name "Shangri-La" as part of their trade
names. Since 1975 and up to the present, the "Shangri-La" mark and "S" logo have been used
consistently and continuously by all Shangri-La hotels and companies in their paraphernalia,
such as stationeries, envelopes, business forms, menus, displays and receipts. The Kuok
Group and/or petitioner SLIHM caused the registration of, and in fact registered, the
"Shangri-La" mark and "S" logo in the patent offices in different countries around the world.
On June 21, 1988, the petitioners filed with the BPTTT a petition, docketed as Inter Partes
Case No. 3145, praying for the cancellation of the registration of the "Shangri-La" mark and
"S" logo issued to respondent DGCI on the ground that the same were illegally and
fraudulently obtained and appropriated for the latter's restaurant business. They also filed in
the same office Inter Partes Case No. 3529, praying for the registration of the same mark and
logo in their own names. Until 1987 or 1988, the petitioners did not operate any establishment
in the Philippines, albeit they advertised their hotels abroad since 1972. Petitioners also argue
that the respondent's use of the "Shangri-La" mark and "S" logo was in evident bad faith and
cannot therefore ripen into ownership, much less registration.

The petitioners accused DGCI of appropriating and illegally using the "Shangri-La" mark and
"S" logo, adding that the legal and beneficial ownership thereof pertained to SLIHM and that
the Kuok Group and its related companies had been using this mark and logo since March
1962 for all their corporate names and affairs. In this regard, they point to the Paris
Convention for the Protection of Industrial Property as affording security and protection to
SLIHM's exclusive right to said mark and logo. They further claimed having used, since late
1975, the internationally-known and specially-designed "Shangri-La" mark and "S" logo for all
the hotels in their hotel chain.

Issue:

Whether or not the infringement case should be dismissed or at least suspended.

Ruling:

When a trademark copycat adopts the word portion of another's trademark as his own, there
may still be some doubt that the adoption is intentional. But if he copies not only the word
but also the word's exact font and lettering style and in addition, he copies also the logo
portion of the trademark, the slightest doubt vanishes. It is then replaced by the certainty that
the adoption was deliberate, malicious and in bad faith.31
It is truly difficult to understand why, of the millions of terms and combination of letters and
designs available, the respondent had to choose exactly the same mark and logo as that of the
petitioners, if there was no intent to take advantage of the goodwill of petitioners' mark and
logo.32 One who has imitated the trademark of another cannot bring an action for
infringement, particularly against the true owner of the mark, because he would be coming to
court with unclean hands.33 Priority is of no avail to the bad faith plaintiff. Good faith is
required in order to ensure that a second user may not merely take advantage of the goodwill
established by the true owner. However, since RA 166 was the law in force at the time the
case was instituted, and such was prior to the signing of the Paris Convention, petitioners
cannot claim protection from it. Complaint for infringement is dismissed. The new
Intellectual Property Code (IPC), Republic Act No. 8293, undoubtedly shows the firm resolve
of the Philippines to observe and follow the Paris Convention by incorporating the relevant
portions of the Convention such that persons who may question a mark (that is, oppose
registration, petition for the cancellation thereof, sue for unfair competition) include persons
whose internationally well-known mark, whether or not registered, is identical with or
confusingly similar to or constitutes a translation of a mark that is sought to be registered or
is actually registered.
 FREDCO MANUFACTURING CORPORATION VS. PRESIDENT AND FELLOWS OF
HARVARD COLLEGE (HARVARD UNIVERSITY)

Facts:

Petitioner Fredco Manufacturing Corporation filed a Petition for Cancellation of Registration

No. 56561 against respondent President and Fellows of Harvard College (Harvard
University). Fredco alleged that Registration No. 56561 was issued to Harvard University on
25 November 1993 for the mark "Harvard Veritas Shield Symbol" under Classes 16, 18, 21, 25
and 28. Fredco also alleged that the mark "Harvard" was first issued by its predecessor-in-
interest New York Garments on 2 January 1982 and was granted a Certificate of
Registrationon 12 December 1988 for a period of 20 years registration under Class 25. It is also
alleged that the registration was cancelled on 30 July 1988 when New York Garment
inadvertently failed to file an Affidavit of Use/Non-Use on the fifth anniversary of the
registration but the right to the mark remained with its predecessor and now with Fredco.
Harvard University, on the other hand, alleged that it is the lawful owner of the name and
mark "Harvard" in numerous countries worldwide, including the Philippines. The BLA, IPO
cancelled the registration of the mark "Harvard" under Class 25 but was reversed by the
Director General, IPO rationing that more than the use of the trademark, the application must
be the owner of the mark sought tobe registered. The CA affirmed the Director General.

Issue:

Whether or not Registration No. 56561 Class 25 must be cancelled.

Ruling:

No. 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. However, Harvard University's registration of
the name "Harvard" is based on home registration which is allowed under Section 37 of RA
166. Also, under Section 239.2 of RA 8293, "marks registered under RA 166 shall remain in
force but shall be deemed to have been granted under this Actxxx" which does not require
actual prior use of the mark in the Philippines. In addition, Article 8 of the Paris Convention,
to which both the Philippines and the US are signatories, has been incorporated in Section 37
of RA 166; thus, under Philippine laws, a trade name of national of a State that is a party to
the Paris Convention, whether or not the trade name forms part of a trademark, is protected
without the obligation of filing or registration. Be it noted that Fredco's registration was
already cancelled when it failed to file the required Affidavit of Use/Non-Use for the fifth
anniversary of the mark's registration. Hence, at the time of the filing of the Petition for
Cancellation, Fredco was no longer the registrant or presumptive owner of the mark
"Harvard.
 PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS INCORPORATED and
TIBURCIO S. EVALLE

Facts:

Philippine Nut Industry Inc., a domestic corporation, obtained from the Patent Office on
August 10, 1961, a certificate covering the trademark "PHILIPPINE PLANTERS CORDIAL
PEANUTS," the label used on its product of salted peanuts.

On May 14, 1962, Standard Brands, a foreign corporation, filed a case with the Director of
Patent, asking for the cancellation of Philippine Nut's certificate of registration on the ground
that "the registrant was not entitled to register the mark at the time of its application for
registration thereof" for the reason that it (Standard Brands) is the owner of the trademark
"PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration No. SR-172,
issued by the Patent Office on July 28, 1958.

Thereafter, the Philippine Nut filed its answer invoking the special defense that its registered
label is not confusingly similar to that of Standard Brands as the latter alleges.

Respondent Director of Patents gave due course to Standard Brand's petition, ordering the
cancellation of Philippine Nut's Certificate of Registration.

Upon denial of the motion for reconsideration, the Philippine Nut petitioned for a review,
seeking the reversal of the Director of Patents decision.

Issue:

Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by

Philippine Nut on its label for salted peanuts with the same coloring scheme and the same
lay-out of words, confusingly similar to the trademark "PLANTERS COCKTAIL PEANUTS"
used by Standard Brands on its product.

Ruling:

Yes. As to appearance and general impression of the two trademarks, the Supreme Court said
it found a very confusing similarity.

The word PLANTERS printed across the upper portion of the label in bold letters easily
attracts and catches the eye of the ordinary consumer and it is that word and none other that
sticks in his mind when he thinks of salted peanuts.
The Supreme Court also held that although it is true that no producer or manufacturer may
have a monopoly of any color scheme or form of words in a label, but when a competitor
adopts a distinctive or dominant mark or feature of another's trademark and with it makes
use of the same color ensemble, employs similar words written in a style, type and size of
lettering almost identical with those found in the other trademark, the intent to pass to the
public his product as that of the other is quite obvious. It deceives the public.

Hence, the decision of respondent Director of Patents was affirmed.

 General Garments vs. Director of Patents
Facts:

The General Garments Corporation, organized and existing under the laws of the Philippines,
is the owner of the trademark "Puritan. Puritan Sportswear Corporation, organized and
existing in and under the laws of the state of Pennsylvania, U.S.A., filed a petition with the
Philippine Patent Office for the cancellation of the trademark "Puritan" registered in the name
of General Garments Corporation, alleging ownership and prior use in the Philippines of the
said trademark on the same kinds of goods, which use it had not abandoned; and alleging
further that the registration thereof by General Garments Corporation had been obtained
fraudulently and in violation of Section 17(c) of Republic Act No. 166, as amended, in relation
to Section 4(d) thereof. On March 30, 1964 General Garments Corporation moved to dismiss
the petition.

Issue:

Whether or not Puritan Sportswear Corporation, which is a foreign corporation not licensed
to do business and not doing business in the Philippines, has legal capacity to maintain a suit
in the Philippine Patent Office for cancellation of a trademark registered therein.

Ruling:

Yes. Respondent is not suing in our courts "for the recovery of any debt, claim or demand,"
for which a license to transact business in the Philippines is required by Section 69 of the
Corporation Law, subject only to the exception already noted. The purpose of such a suit is to
protect its reputation, corporate name and goodwill which has been established, through the
natural development of its trade for a long period of years, in the doing of which it does not
seek to enforce any legal or contract rights arising from, or growing out of any business
which it has transacted in the Philippine Islands. The right to the use of the corporate or trade
name is a property right, a right in rem, which it may assert and protect in any of the courts of
the world even in jurisdictions where it does not transact business just the same as it may
protect its tangible property, real or personal against trespass or conversion. A foreign
corporation is allowed there under to sue "whether or not it has been licensed to do business
in the Philippines" pursuant to the Corporation Law. In any event, respondent in the present
case is not suing for infringement or unfair competition under Section 21- A, but for
cancellation under Section 17, on one of the grounds enumerated in Section 4. And while a
suit under Section 21-A requires that the mark or tradename alleged to have been infringed
has been "registered or assigned" to the suing foreign corporation, a suit for cancellation of
the registration of a mark or tradename under Section 17 has no such requirement. For such
mark or tradename should not have been registered in the first place (and consequently may
be cancelled if so registered) if it "consists of or comprises a mark or tradename which so
resembles a mark or tradename previously used in the Philippines by another and not
abandoned, as to be likely, when applied to or used in connection with goods, business or
services of the applicant, to cause confusion or mistake or to deceive purchasers.
 PHILLIPS EXPORT VS CA

Facts:

Philips Export B.V. (PEBV) filed with the SEC for the cancellation of the word Philips the
corporate name of Standard Philips Corporation in view of its prior registration with the
Bureau of Patents and the SEC. However, Standard Philips refused to amend its Articles of
Incorporation so PEBV filed with the SEC a petition for the issuance of a Writ of Preliminary
Injunction, however this was denied ruling that it can only be done when the corporate
names are identical and they have at least 2 words different. This was affirmed by the SEC en
banc and the Court of Appeals thus the case at bar.

Issue:

Whether or not Standard Philips can be enjoined from using Philips in its corporate name

Ruling:

A corporations right to use its corporate and trade name is a property right, a right in rem,
which it may assert and protect against the whole world. According to Sec. 18 of the
Corporation Code, no corporate name may be allowed if the proposed name is identical or
deceptively confusingly similar to that of any existing corporation or to any other name
already protected by law or is patently deceptive, confusing or contrary to existing law.

For the prohibition to apply, 2 requisites must be present:

(1) the complainant corporation must have acquired a prior right over the use of such
corporate name and

(2) the proposed name is either identical or deceptively or confusingly similar to that of any
existing corporation or to any other name already protected by law or patently deceptive,
confusing or contrary to existing law.

With regard to the 1st requisite, PEBV adopted the name Philips part of its name 26 years
before Standard Philips. As regards the 2nd, the test for the existence of confusing similarity
is whether the similarity is such as to mislead a person using ordinary care and
discrimination. Standard Philips only contains one word, Standard, different from that of
PEBV. The 2 companies products are also the same, or cover the same line of products.
Although PEBV primarily deals with electrical products, it has also shipped to its subsidiaries
machines and parts which fall under the classification of chains, rollers, belts, bearings and
cutting saw, the goods which Standard Philips also produce. Also, among Standard Philips
primary purposes are to buy, sell trade x x x electrical wiring devices, electrical component,
electrical supplies. Given these, there is nothing to prevent Standard Philips from dealing in
the same line of business of electrical devices. The use of Philips by Standard Philips tends
to show its intention to ride on the popularity and established goodwill of PEBV.
 In-N-Out Burger vs. Sehwani, Incorporated and/or Benitas Fries, Inc

Facts:

Petitioner IN-N-OUT BURGER, INC., a business entity incorporated under the laws of US,
which is a signatory to the Convention of Paris on Protection of Industrial Property and the
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). Petitioner is
engaged mainly in the restaurant business, but it has never engaged in business in the
Philippines. Respondents Sehwani, Incorporated and Benita Frites, Inc. are corporations
organized in the Philippines. On 2 June 1997, petitioner filed trademark and service mark
applications with the Bureau of Trademarks (BOT) of the IPO for "IN-N-OUT" and "IN-N-
OUT Burger & Arrow Design." Petitioner later found out, through the Official Action Papers
issued by the IPO on 31 May 2000, that respondent Sehwani, Incorporated had already
obtained Trademark Registration for the mark "IN N OUT (the inside of the letter "O" formed
like a star)." Petitioner eventually filed on 4 June 2001 before the Bureau of Legal Affairs
(BLA) of the IPO an administrative complaint against respondents for unfair competition and
cancellation of trademark registration. Respondents asserted therein that they had been using
the mark "IN N OUT" in the Philippines since 15 October 1982. Respondent then filed with
the BPTTT an application for the registration of the mark. BPTTT approved its application
and issued the corresponding certificate of registration in favor of the respondent. On Dec 22,
2003, IPO Director of Legal Affairs rendered a decision in favor of petitioner stating petitioner
had the right to use its tradename and mark in the Philippines to the exclusion of others.
However, the decision also includes that respondent is not guilty of unfair competition. Upon
appeal by petitioner, the new IPO Director General declared that respondents were guilty of
unfair competition on December 23, 2005. On 18 July 2006, the Court of Appeals promulgated
a Decision reversing the Decision dated 23 December 2005 of the IPO Director General. The
appellate court declared that Section 163 of the Intellectual Property Code specifically confers
upon the regular courts, and not the BLA-IPO, sole jurisdiction to hear and decide cases
involving provisions of the Intellectual Property Code, particularly trademarks. Hence, the
present petition.

Issues:

(1) Whether the IPO (administrative bodies) have jurisdiction to cases involving unfair
competition
(2) Whether respondent Sehwani is liable of unfair competition

Ruling:

(1) Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the
concurrent jurisdiction of civil courts and the IPO over unfair competition cases. Therefore,
the IPO Director of Legal Affairs have jurisdiction to decide the petitioner's administrative
case against respondents and the IPO Director General have exclusive jurisdiction over the
appeal of the judgment of the IPO Director of Legal Affairs.
(2) Yes. The evidence on record shows that the respondents were not using their registered
trademark but that of the petitioner. Further, respondents are giving their products the
general appearance that would likely influence purchasers to believe that these products are
those of the petitioner. The intention to deceive may be inferred from the similarity of the
goods as packed and offered for sale, and, thus,
action will lie to restrain such unfair competition. Also, respondents use of IN-N-OUT
BURGER in businesses signages reveals fraudulent intent to deceive purchasers. 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.
 Creser Precision System vs. Court of Appeals

Facts:

Petitioner claim it can file, under Section 42 of the Patent Law (R.A. 165),an action for
infringement not as a patentee but as an entity in possession of a right, title or interest in and
to the patented invention. It advances the theory that while the absence of a patent may
prevent one from lawfully suing another for infringement of said patent, such absence does
not bar the first true and actual inventor of the patented invention from suing another who
was granted a patent in a suit for declaratory or injunctive relief recognized under American
patent laws. This remedy, petitioner points out, may be likened to a civil action for
infringement under Section 42 of the Philippine Patent Law. Private respondent Floro
International submitted its memorandum alleging that petitioner has no cause of action to file
a complaint for infringement against it since Creser has no patent for the aerial fuze which it
claims to have invented; that petitioner's available remedy is to file a petition for cancellation
of patent before the Bureau of Patents; that private respondent as the patent holder cannot be
stripped of its property right over the patented aerial fuze consisting of the exclusive right to
manufacture, use and sell the same and that it stands to suffer irreparable damage and injury
if it is enjoined from the exercise of its property rights over its patent.

Issue:

Whether Creser can file an action for infringement being not as patentee.

Ruling:

NO. Section 42 of R.A. 165, otherwise known as the Patent Law, explicitly provides:
Sec. 42 Civil action for infringement. Any patentee, or anyone possessing any right, title or
interest in and to the patented invention, whose rights have been infringed, may bring a civil
action before the proper Court of First Instance (now Regional Trial court), to recover from
the infringer damages sustained by reason of the infringement and to secure an injunction for
the protection of his right. Under the aforequoted law, only the patentee or his successors-in-
interest may file an action for infringement. The phrase "anyone possessing any right, title or
interest in and to the patented invention " upon which petitioner maintains its present suit,
refers only to the patentee's successors-in-interest, assignees or grantees since actions for
infringement of patent may be brought in the name of the person or persons interested,
whether as patentee, assignees, or as grantees, of the exclusive right. Petitioner admits it has
no patent over its aerial fuze. Therefor e, it has no legal basis or cause of action to institute the
petition for injunction and damages arising from the alleged infringement by private
respondent.
 Godines vs. Court of Appeals

Facts:

Respondent SV-Agro Industries acquired a letter patent issued to one Magdalena Villaruz
which covers a utility model for hand tractor or power tiller by virtue of a deed of assignment
executed by the latter in its favor. Respondent after suffering a decline in sales of the patented
power tillers, investigated and discovered that petitioner Godines was manufacturing the
same power tillers as they have. Respondent thus filed a complaint for patent infringement
and unfair competition against petitioner Godines. The trial court held petitioner liable for
infringement. CA affirmed.

Issue:
Whether or not petitioners products infringe upon the patent of respondent SV-Agro.

Ruling:

Yes. Tests have been established to determine infringement. These are ;(a) literal
infringement; and (b) the doctrine of equivalents. In using literal infringement as a test,
resort must be had, in the first instance, to the words of the claim. If accused matter clearly
falls within the claim, infringement is made out and that is the end of it. To determine
whether the particular item falls within the literal meaning of the patent claims, the court
must juxtapose the claims of the patent and the accused product within the overall context of
the claims and specifications, to determine whether there is exact identity of all material
elements. It appears from the observation of the trial court that these claims of the patent and
the features of the patented utility model were copied by petitioner: In appearance and form,
both the floating power tillers of the defendant and the turtle power tiller of the plaintiff are
virtually the same. Viewed from any perspective or angle, the power tiller of the defendant is
identical and similar to that of the turtle power tiller of plaintiff in form, configuration, design
and appearance. The parts or components thereof are virtually the same. In operation, the
floating power tiller of the defendant operates also in similar manner as the turtle power tiller
of plaintiff. Petitioners argument that his power tillers were different from private
respondents is that of a drowning man clutching at straws. Recognizing that the logical
fallback position of one in the place of defendant is to aver that his product is different from
the patented one, courts have adopted the doctrine of equivalents. Thus, according to this
doctrine, (a)n infringement also occurs when a device appropriates a prior invention by
incorporating its innovative concept and, albeit with some modification and change, performs
substantially the same function in substantially the same way to achieve substantially the
same result. In this case, the trial court observed: But a careful examination between the two
power tillers will show that they will operate on the same fundamental principles. The court
arrive at no other conclusion but that there was infringement.
 Roberto Del Rosario vs. Court of Appeals

Facts:

Roberto Del Rosario was granted a patent for his innovation called the Minus One karaoke.
The patent was issued in June 1988 for five years and was renewed in November 1991 for
another five years as there were improvement introduced to his minus one karaoke. In
1993, while the patent was still effective, Del Rosario sued Janito Corporation, a Japanese
company owned by Janito Cua, for allegedly infringing upon the patent of Del Rosario. Del
Rosario alleged that Janito was manufacturing a sing-along system under the brand miyata
karaoke which is substantially, if not identical, the same to his minus one karaoke. The
lower court ruled in favor of Del Rosario but the Court of Appeals ruled that there was no
infringement because the karaoke system was a universal product manufactured, advertised,
and marketed all over the world long before Del Rosario was issued his patents.

Issue:

Whether or not the Court of Appeals erred in its ruling.

Ruling:

Yes. The Patent Law expressly acknowledges that any new model of implements or tools of
any industrial product even if not possessed of the quality of invention but which is of
practical utility is entitled to a patent for utility model. Here, there is no dispute that the
letters patent issued to Del Rosario are for utility models of audio equipment. It is elementary
that a patent may be infringed where the essential or substantial features of the patented
invention are taken or appropriated, or the device, machine or other subject matter alleged to
infringe is substantially identical with the patented invention. In order to infringe a patent, a
machine or device must perform the same function, or accomplish the same result by
identical or substantially identical means and the principle or mode of operation must be
substantially the same. In the case at bar, miyata karaoke was proven to have substantial if
not identical functionality as that of the minus one karaoke which was covered by the second
patent issued to Del Rosario. Further, Janito failed to present competent evidence that will
show that Del Rosarios innovation is not new.
CANON KABUSHIKI KAISHA vs. COURT OF APPEALS
G.R. No. 120900, July 20, 2000

FACTS:

On January 15, 1985, private respondent NSR Rubber Corporation filed an application
for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT). Canon Kabushiki Kaisha filed a Verified Notice of Opposition
alleging that it will be damaged by the registration of the trademark CANON in the name of
private respondent since they were using the same trademark for their footwear line of
products. The private respondent will also use the name Canon for its footwear products.

Based on the records, the evidence presented by petitioner consisted of its certificates of
registration for the mark CANON in various countries covering goods belonging to class 2,
paints, chemical products, toner, and dye stuff. Petitioner also submitted in evidence its
Philippine Trademark Registration No. 39398, showing its ownership over the trademark
CANON.

The BPTTT, on November 10, 1992, issued its decision dismissing the opposition of petitioner
and giving due course to NSR's application for the registration of the trademark CANON.
Canon Kabushiki Kaisha filed an appeal with the Court of Appeals that eventually affirmed
the decision of the BPTTT.

ISSUE:

Is the use of trademark, CANON, by the private respondent affects the business of
Canon Kabushiki Kaisha who has an existing ownership of a trademark also known as
CANON?

HELD:

The Supreme Court says that ordinarily, the ownership of a trademark or tradename is
a property right that the owner is entitled to protect as mandated by the Trademark Law.
However, when a trademark is used by a party for a product in which the other party does
not deal, the use of the same trademark on the latter's product cannot be validly objected to.

The BPTTT correctly ruled that since the certificate of registration of petitioner for the
trademark CANON covers class 2 (paints, chemical products, toner, dyestuff), private
respondent can use the trademark CANON for its goods classified as class 25 (sandals).
Clearly, there is a world of difference between the paints, chemical products, toner, and
dyestuff of petitioner and the sandals of private respondent.
Puma vs. IAC, Feb. 26, 1988

Facts:

Puma, a West German corporation and producer of Puma products, filed a complaint for
patent or trademark infringement with a prayer for the issuance of a writ of prelim injunction
against Mil-oro Manufacturing Corp. Mil-Oro had been producing Puma socks and belts.
MTD filed for lack of capacity to sue. MTD denied, injunction granted. CA reversed. Hence
this petition for review on certiorari.

Issues:
WON Puma has capacity to sue.

Ruling:

Yes. Puma had substantially complied with Sec. 21-A of RA 166. 3ts complaint specifically
alleged that it is not doing business in the Philippines and is suing under that law, which
provides that 4the country of which the said corporation or juristic person is a citizen, or in
which it is domiciled, by treaty, contention or law, grants a similar privilege to corporate or
juristic persons of the Philippines. The Federal Republic of Germany and the Philippines are
both parties of the Paris contention, which forms part of the law of the land.
EMERALD GARMENT MANUFACTUTING CORP.
vs.
COURT OF APPEALS, BUREAU OF PATENTS, TRADEMARKS AND TECHNOLOGY
TRANSFER and HDLEE COMPANY, INC

FACTS:
HD Lee Co., Inc. is a foreign corporation organized under the laws of Delaware, U
SA. It owns the trademark LEE registered in the supplemental register.
Emerald Garment, a domestic corporation owns the trademark STYLISTIC MR. LEE used
on skirt, jeans, blouse, etc. HD Lee filed with Bureau of Patents, Trademarks and Technology
Transfer (BPTTT) a petition for cancellation of Emerald Garments STYLISTIC MR. LEE
trademark. HD Lee avers that Emeralds trademark closely resembles its own trademark
which is likely to cause confusion, mistake, deception on the part of the purchasing public as
to the origin of the goods.

Emerald contended that its trademark is unmistakably different from that of HD Lees and
that its certificate of registration was legally and validly granted. Director of Patent granted
the petition for cancellation. Emerald appealed with CA. Emerald also filed with BPTTT a
motion to stay execution. BPTTT granted the motion with the condition that Emerald is
authorized only to disposed its current stock of STYLISTIC MR. LEE and prohibited
Emerald from further production in addition to its current stock.

CA issued its decision affirming the decision of the director of Patents. CA applied the TEST
OF DOMINANCY, meaning, if the competing trademark contains the main or essential or
dominant features of another by reason of which confusion and deception are likely to result,
then infringement takes place; that duplication or imitation is not necessary, a similarity in
the dominant features of the trademark would be sufficient.CA found that the word "LEE" is
the most prominent and distinctive feature of the
HD Lees
trademark. It is the mark which draws the attention of the buyer and leads him to conclude
that the goods originated from the same manufacturer. While it is true that there are other
words such as "STYLISTIC", printed in Emerald's label, such word is printed in such small
letters over the word "LEE" that it is not conspicuous enough to draw the attention of
ordinary buyers whereas the word "LEE" is printed across the label in big, bold letters and of
the same color, style, type and size of lettering as that of the trademark of the HD Lee. The
likelihood of confusion is further made more probable by the fact that both parties are
engaged in the same line of business.

ISSUES:
(1) Whether the trademark STYLISTIC MR. LEE is confusingly similar to the trademark
LEE.

(2) Whether LEE is a registrable tradename.

HELD:
(1) NO.
Emerald's trademark is the whole "STYLISTIC MR. LEE." Although on its label the word
"LEE" is prominent, the trademark should be considered as a whole and not piecemeal. The
dissimilarities between the two marks become conspicuous, noticeable and substantial
enough to matter especially in the light of the following variables that must be factored in.

(2) NO.
LEE is primarily a surname. HD Lee cannot acquire exclusive ownership over and
singular use of said term. Also, HD Lee failed to prove prior actual commercial use of LEE
trademark before filing for registration with BPTTT,
hence, has not acquired ownership over the said mark.

RATIO:
(1) Section 22 of R.A. No. 166 (Trademark Law) states that any person who shall reproduce a
counterfeit, copy or colorable imitation of any registered trademark which likely to confuse or
deceive purchasers shall be liable to a civil action by the registrant. In determining whether
ones trademark is a colorable imitation of another, each case must be decided
Esso Standard v CA Digest, G.R. No. L-29971

Facts:

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
trademark '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 to 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 infringement 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.
Lim Hoa vs Director of Patents G.R. 8072 October 31, 1956

Facts:

Lim Hoa filed an application for registration of a trademark showing two midget roosters in
an attitude of combat with the word bantam printed above them for a food seasoning
product. agricom Development to., inc., opposed the application on the ground, that the
trademark sought to be registered was confusingly similar to its register mark, consisting of a
pictorial representation of a hen with the words Hen brand and marca manok, which
mark or brand was also used on a food seasoning product, before the use of the trademark by
the applicant.

Issue:

is there an infringement of trademark?

Held:

Yes. the court ruled that the trademarks are similar to each other which would likely create
confusion to the ordinary buyer. although the hen and the rooster are of different sexes, they
still belong to the same specie which is the manok. To the ordinary buyer, it may not look
any different. The similarity may compel a person to buy one product thinking that it is the
other. Moreover, with all the animals in the land, ocean and air, the court could not phantom
why the plaintiff chose two roosters facing each other knowing that a similar trademark is
used by another establishment producing the same product.
Hickock Manufacturing vs. CA, G.R. No. L-44707, August 31, 1982

Facts:

Petitioner is a foreign corporation and all its products are manufactures by Quality House
Inc. The latter pays royalty to the petitioner. Hickok registered the trademark 'Hickok' earlier
and used it in the sale of leather wallets, key cases, money folds, belts, mens underwear,
neckties, hankies, and men's socks. While Sam Bun Liong used the same trademark in the sale
of Marikina shoes. Both products have different channels of trade. The Patent Office did not
grant the registration, but the Court of Appeals reversed the PPO decision.

Issue:
Is there infringement in this case?

Held:

NONE. Emphasis should be on the similarity of the products involves and not on the
arbitrary classification or the general description of their properties or characteristics. Also,
the mere fact that one person has adopted and used a trademark on his goods does not
prevent the adoption and use of the same by others on unrelated articles of different kind.
There is a different design and coloring of the trademark itself. The 'Hickok' trademark is in
red with white background in the middle of 2 branches of laurel (in light gold) while the one
used by Sam Bun Liong is the word 'Hickok ' in white with gold background between 2
branches of laurel in red with the word 'shoes' also in red placed below the word 'Hickok'.
SAPOLIN vs BALMACEDA, 1939

Facts:

The cross-plaintiff, Sapolin Co. Inc is a foreign corporation who alleges to be the holder of
patent certificates issued by the US Patent Office for the exclusive use of the trademark and
tradename SAPOLIN, an enamel paint. The paints with the trademark and tradename
SAPOLIN were first imported into the Philippines by MULLER & PHIPPS, a foreign
company, and thereafter by the cross- plaintiff. The demand for said paints in 1929 up to 1931
was such that the proceeds from the sales would ran to between 70,000 to 80,000 USD, of
which only 5 percent was spent to advertise and popularize the goods in the Philippines. The
trademark and tradename LUSOLIN first came into existence only in 1932, when Co Lu So &
Co, a local business entity who imports and sells construction materials, sold for several years
the paints marked SAPOLIN which he acquired from MULLER & PHIPPS and from the
cross-plaintiff. Co Lu So later filed an application with the Bureau of Commerce and Industry
for the exclusive use of the trademark and tradename LUSOLIN, to which the Bureau later
granted a trademark certificate on said application. Co Lu So, thereafter, conveyed the right
to use the aforesaid trademark and tradename LUSOLIN to cross-defendant, who later
registered the same with the Bureau of Commerce and Industry. The cross-defendant, later
(after one month of sales) notified the cross-plaintiff to stop using the trademark SAPOLIN as
this was violative of its rights as owner of the trademark LUSOLIN.

The court further noted that LUSOLIN paints are the same ones under the tradename
HAWELIT, which were imported from Germany to the Philippines by the cross-defendant,
prior to the European war. When the war broke out in Europe, the cross-defendant
discontinued the importation of HAWELIT paints and in 1927 SAPOLIN paints appeared and
found its way in the local market. Thus cross-defendant, after acquiring from Co Lu So the
certificate to use the tradename and trademark LUSOLIN, the former resumed the sale of
HAWELIT paints presenting them to the public as LUSOLIN.

Issue:

WON (the CFI of Manila erred in not holding that) the trade-mark "Lusolin" of the cross-
defendant Germann & Co., Ltd., constitutes an infringement of the cross-plaintiff's trade-
mark "Sapolin";

Held:

The Court observed that the color, design, size and other characteristics as well as the sound
produced by the pronunciation of the tradename LUSOLIN and SAPOLIN are almost the
same.

The cross-defendant itself admits in its letter to the cross-plaintiff the striking similarity
between the two trademarks and tradenames in question, in shape, design, color, and
printing as to deceive the public specially that both are being used for paints

The manner of presentation, in extent and in pronunciation between the two trademarks and
tradenames are the same as it appears in the evidence. xxx

The violation of the trademark is established by showing that the resemblance between the
two is of such a nature that one can be taken for the other. And it has been held that the
resemblance is the test of whether or not there is a trademark violation.

The Court said that it is not necessary to prove that an exact copy was made or that the same
words appearing therein were used. Is is sufficient that its essential characteristics have been
imitated or copied, to hold that there is a violation of a trademark.

As to syllabication and sound of the two tradenames SAPOLIN and LUSOLIN, it seems plain
that whoever hears or sees them cannot but think of paints of the same kind and make.
Societe Des Produits Nestl, S.A. vs. Court of Appeals

Facts:
On January 18, 1984, private respondent CFC Corporation filed with the BPTTT an
application for the registration of the trademark "FLAVOR MASTER" for instant coffee.

Petitioner Societe Des Produits Nestle, S.A., a Swiss company registered under Swiss laws
and domiciled in Switzerland, filed an unverified Notice of Opposition, claiming that the
trademark of private respondents product is confusingly similar to its trademarks for coffee
and coffee extracts, to wit: MASTER ROAST and MASTER BLEND."

A verified Notice of Opposition was filed by Nestle Philippines, Inc., a Philippine corporation
and a licensee of Societe Des Produits Nestle S.A., against CFCs application for registration
of the trademark FLAVOR MASTER.

Nestle claimed that the use, if any, by CFC of the trademark FLAVOR MASTER and its
registration would likely cause confusion in the trade; or deceive purchasers and would
falsely suggest to the purchasing public a connection in the business of Nestle, as the
dominant word
present in the three (3) trademarks is "MASTER"; or that the goods of CFC might be mistaken
as having originated from the latter.

In answer to the two oppositions, CFC argued that its trademark, FLAVOR MASTER, is not
confusingly similar with the formers trademarks, MASTER ROAST and MASTER BLEND,
alleging that, "except for the word MASTER (which cannot be exclusively appropriated by
any person for being a descriptive or generic name), the other words that are used
respectively with said word in the three trademarks are very different from each other in
meaning, spelling, pronunciation, and sound".

The BPTTT denied CFCs application for registration.

The Court of Appeals reversed the BPTTTs decision and ordered the Director of Patents to
approve CFCs application. Hence this petition before the SC.

Issue: Whether or not the CA erred in reversing the decision of the BPTTT denying CFCs
petition for registration.

Ruling:
Yes. Colorable imitation denotes such a close or ingenious imitation as to be calculated to
deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the
one supposing it to be the other. In determining if colorable imitation exists, jurisprudence
has developed two kinds of tests - the Dominancy Test and the Holistic Test.

The test of dominancy focuses on the similarity of the prevalent features of the competing
trademarks which might cause confusion or deception and thus constitute infringement.

On the other side of the spectrum, the holistic test mandates that the entirety of the marks in
question must be considered in determining confusing similarity.

The Court of Appeals erred in applying the totality rule as defined in the cases of
Bristol Myers v. Director of Patents; Mead Johnson & Co. v. NVJ Van Dorf Ltd.; and
American Cyanamid Co. v. Director of Patents. The totality rule states that "the test is not
simply to take their words and compare the spelling and pronunciation of said words.
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
predominant words but also on the other features appearing on both labels."

In the case at bar, other than the fact that both Nestles and CFCs products are inexpensive
and common household items, the similarity ends there. What is being questioned here is the
use by CFC of the trademark MASTER. In view of the difficulty of applying jurisprudential
precedents to trademark cases due to the peculiarity of each case, judicial for a should not
readily apply a certain test or standard just because of seeming similarities. As this Court has
pointed above, there could be more telling differences than similarities as to make a
jurisprudential precedent inapplicable.
ANG V. TEODORO (G.R. NO. L-48226)

Facts:

Respondent Teodoro has long been using Ang Tibay both as trademark and tradename in
the manufacture and sale of its slippers, shoes and indoor baseballs when he formally
registered it. Meanwhile, petitioner Ang registered the same trademark Ang Tibay for its
products of pants and shirts. Respondent moved to cancel the registration of petitioners
mark. The trial court found for petitioner Ang. CA reversed the judgment. Petitioner argues
the validity of the mark being descriptive; that it had not acquired secondary meaning in
favor of respondent; and that there can be no infringement/unfair competition because the
goods are not similar.

Issues:

(1) Whether or not ANG TIBAY is a descriptive term not registrable.

(2) Whether or not the trademark ANG TIBAY has acquired a secondary meaning.
(3) Whether or not there is trademark infringement and/or unfair competition between
unrelated goods.

Ruling:

(1) NO. The phrase Ang Tibay is an exclamation denoting administration of strength or
durability. For instance, one who tries hard but fails to break an object exclaims, Ang tibay!
(How strong!) The phrase ang tibay is never used adjectively to define or describe an
object. One does not say, ang tibay sapatos or sapatos ang tibay is never used adjectively
to define or describe an object. One does not say, ang tibay sapatos or sapatos ang tibay
to mean durable shoes, but matibay na sapatos or sapatos na matibay. 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 trademark or tradename. 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 trademark.

(2) NO. 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.

(3) YES. In the present state of development of the law on Trade-Marks, Unfair Competition,
and Unfair Trading, the test employed by the courts to determine whether noncompeting
goods are or are not of the same class is confusion as to the origin of the goods of the second
user. Although two noncompeting articles may be classified under two different classes by
the Patent Office because they are deemed not to possess the same descriptive properties,
they would, nevertheless, be held by the courts to belong to the same class if the simultaneous
use on them of identical or closely similar trade-marks would be likely to cause confusion as
to the origin, or personal source, of the second users goods. They would be considered as not
falling under the same class only if they are so dissimilar or so foreign to each other as to
make it unlikely that the purchaser would think the first user made the second users goods.
The Court of Appeals found in this case that by uninterrupted and exclusive use since 1910 of
respondents registered trade-mark on slippers and shoes manufactured by him, it has come
to indicate the origin and ownership of said goods. It is certainly not farfetched to surmise
that the selection by petitioner of the same trade-mark for pants and shirts was motivated by
a desire to get a free ride on the reputation and selling power it has acquired at the hands of
the respondent.
Levi Strauss vs Clinton Apparelle

Facts:
This case stemmed from the Complaint for Trademark Infringement, Injunction and Damages
filed by petitioners LS & Co. and LSPI against respondent Clinton Apparelle, Inc.* (Clinton
Aparelle) together with an alternative defendant, Olympian Garments, Inc. (Olympian
Garments), before the Regional Trial Court of Quezon City, Branch 90. The Complaint was
docketed as Civil Case No. Q-98-34252, entitled Levi Strauss & Co. and Levi Strauss (Phils.),
Inc. v. Clinton Aparelle, Inc. and/or Olympian Garments, Inc.

The Complaint alleged that LS & Co., a foreign corporation duly organized and existing
under the laws of the State of Delaware, U.S.A., and engaged in the apparel business, is the
owner by prior adoption and use since 1986 of the internationally famous Dockers and
Design trademark. This ownership is evidenced by its valid and existing registrations in
various member countries of the Paris Convention. In the Philippines, it has a Certificate of
Registration No. 46619 in the Principal Register for use of said trademark on pants, shirts,
blouses, skirts, shorts, sweatshirts and jackets under Class 25.

LS & Co. and LSPI further alleged that they discovered the presence in the local market of
jeans under the brand name Paddocks using a device which is substantially, if not exactly,
similar to the Dockers and Design trademark owned by and registered in the name of LS &
Co., without its consent. Based on their information and belief, they added, Clinton Apparelle
manufactured and continues to manufacture such Paddocks jeans and other apparel.

Issue:
1. Whether the issuance of the writ of preliminary injunction by the trial court was proper and
whether the Court of Appeals erred in setting aside the orders of the trial court.
2. Whether there is Trademark Dilution?

Ruling:
1. No. Injunction is not a remedy to protect or enforce contingent, abstract, or future rights; it
will not issue to protect a right not in esse and which may never arise, or to restrain an act
which does not give rise to a cause of action. There must exist an actual right.[37] There must
be a patent showing by the complaint that there exists a right to be protected and that the acts
against which the writ is to be directed are violative of said right.
Petitioners anchor their legal right to Dockers and Design trademark on the Certificate of
Registration issued in their favor by the Bureau of Patents, Trademarks and Technology
Transfer.
2. No. Trademark dilution is the lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or absence of: (1) competition
between the owner of the famous mark and other parties; or (2) likelihood of confusion,
mistake or deception. Subject to the principles of equity, the owner of a famous mark is
entitled to an injunction against another persons commercial use in commerce of a mark or
trade name, if such use begins after the mark has become famous and causes dilution of the
distinctive quality of the mark. This is intended to protect famous marks from subsequent
uses that blur distinctiveness of the mark or tarnish or disparage it.

Based on the foregoing, to be eligible for protection from dilution, there has to be a finding
that: (1) the trademark sought to be protected is famous and distinctive; (2) the use by
respondent of Paddocks and Design began after the petitioners mark became famous; and (3)
such subsequent use defames petitioners mark. In the case at bar, petitioners have yet to
establish whether Dockers and Design has acquired a strong degree of distinctiveness and
whether the other two elements are present for their cause to fall within the ambit of the
invoked protection. The Trends MBL Survey Report which petitioners presented in a bid to
establish that there was confusing similarity between two marks is not sufficient proof of any
dilution that the trial court must enjoin.
Conrad and Company, Inc. v. CA, et.al., G.R. No. 115115, July 18, 1995

Facts:
The respondents Fitrite, Inc. and its sister company, Victoria Biscuit Co., Inc. are domestic
corporations engaged in the business of manufacturing, selling and distributing biscuits and
cookies. Their products bear the trademark "SUNSHINE" in the Philippines which was
awarded by the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) listing
Fitrite as principal registrant.

Since May 20, 1983 when Fitrite was issued the Certificate of Registration for its trademark to
the filing of its complaint against Conrad Company Inc., Fitrite and Victoria Biscuit have been
manufacturing, selling and distributing on a massive scale biscuits and cookies bearing the
"Sunshine" trademark making it popular in Metro Manila and in the provinces.

On May 30, 1990, Conrad's own Import Manager and Executive Assistant, Raul Olaya,
executed an affidavit stating that Conrad had also been importing, selling and distributing
biscuits and cookies, and other items bearing the same trademark as Fitrite and Victoria's. It
was traced by the mentioned domestic corporations that on April 18, 1988, Conrad was
designated as an exclusive importer and dealer of the products of "Sunshine Biscuits, Inc." for
sale in the Philippine market.

A few days later, Conrad started its first importation and continuously did so. Through their
counsel, Fitrite and Victoria addressed a letter to Conrad demanding that it cease and desist
from continuing its operation and use of the subject trademark, but was ignored. This led
Fitrite and Victoria to file a complaint against Conrad for infringement and unfair
competition. Conrad sought to dismiss the complaint by invoking litis pendentia, the doctrine
of primary jurisdiction, and failure to state a cause of action. Conrad argued that it has been
granted distributorship by Sunshine Biscuits USA over the Philippine territory, and so, it
follows that the basis of Fitrite and Victoria's claim is lodged under the exclusive jurisdiction
of the BPTTT. The trial court found merit on the motion to dismiss the complaint.

Fitrite and Victoria filed a motion for reconsideration, but was denied by the lower court. The
Court of Appeals, however, found merit on their claims and reinstated the complaint. Hence,
this petition by Conrad praying that the Civil Case for "Injunction with Damages with Prayer
for Preliminary Injunction" based on infringement and unfair competition filed by Fitrite and
Victoria be dismissed.

Issue: Whether or not Fitrite and Victorias civil action against Conrad which was based on
infringement and unfair competition be dismissed because of the doctrine of litis pendentia.

Ruling:
No, the petition is without merit.
An application for administrative cancellation of a registered trademark on any of the
grounds enumerated in Section 17 of R.A. No. 166 or the Trade-Mark Law, as amended, falls
under the exclusive jurisdiction of BPTTT. But, for infringement or unfair competition, as well
as the remedy of injunction and relief for damages, it is explicitly and unquestionably within
the competence and jurisdiction of ordinary courts. As held in an earlier decision by the
Supreme Court, that the registration in the Principal Register gives rise to a presumption of
validity of the registration and of the registrant's ownership and right to the exclusive use of
the mark. Such registration can serve as the basis for an action of infringement which entitles
the registrant whose right was invaded for court protection and relief.

Section 23 and Section 27 of Chapter V, of the Trade-Mark Law provides:

Sec. 23. Actions, and damages and injunction for infringement. Any person entitled to the
exclusive use of a registered mark or trade-name may recover damages in a civil action from
any person who infringes his rights, and the measure of the damages suffered shall be either
the reasonable profit which the complaining party would have made, had the defendant not
infringe his said rights, or the profit which the defendant actually made out of the
infringement, or in the event such measure of damages cannot be readily ascertained with
reasonable certainty, then the court may award as damages a reasonable percentage based
upon the amount of gross sales of the defendant or the value of the services in connection
with which the mark or trade-name was used in the infringement of the rights of the
complaining party. In cases where actual intent to mislead the public or to defraud the
complaining party shall be shown, in the discretion of the court, the damages may be
doubled.

The complaining party, upon proper showing, may also be granted injunction.
COFFEE PARTNERS V. SAN FRANCISCO COFFEE & ROASTERY (G.R. NO. 169504)

Facts:
Petitioner Coffee Partners entered into a franchise agreement with Coffee Partners Ltd. to
operate coffee shops in the country using the trademark San Francisco Coffee. Respondent
on the other hand, is a local corporation engaged in the wholesale and retail sale of coffee and
uses the business name San Francisco Coffee & Roastery registered with the DTI. Later,
respondent filed an infringement and/or unfair competition complaint against petitioner
alleging that the latter was about to open a coffee shop under the name San Francisco Coffee
causing confusion in the minds of the public as it bore a similar name and is engaged also in
selling of coffee. Petitioner contended no infringement would arise because respondents
tradename was not registered.

Issue:
Whether or not petitioners trademark would infringe respondents tradename.

Ruling:
YES. In Prosource International, Inc. v. Horphag Research Management SA, this Court laid
down what constitutes infringement of an unregistered trade name, thus:

(1) The trademark being infringed is registered in the Intellectual Property Office; however, in
infringement of trade name, the same need not be registered;

(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated
by the infringer;

(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark or trade name is
applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended
to be used upon or in connection with such goods, business, or services;

(4) 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; and

(5) It is without the consent of the trademark or trade name owner or the assignee thereof.

RA 8293, which took effect on 1 January 1998, has dispensed with the registration
requirement. Section 165.2 of RA 8293 categorically states that trade names shall be protected,
even prior to or without registration with the IPO, against any unlawful act including any
subsequent use of the trade name by a third party, whether as a trade name or a trademark
likely to mislead the public.

It is the likelihood of confusion that is the gravamen of infringement. Applying the

dominancy test or the holistic test, petitioners SAN FRANCISCO COFFEE trademark is a
clear infringement of respondents SAN FRANCISCO COFFEE & ROASTERY, INC. trade
name. The descriptive words SAN FRANCISCO COFFEE are precisely the dominant
features of respondents trade name. Petitioner and respondent are engaged in the same
business of selling coffee, whether wholesale or retail. The likelihood of confusion is higher in
cases where the business of one corporation is the same or substantially the same as that of
another corporation. In this case, the consuming public will likely be confused as to the
source of the coffee being sold at petitioners coffee shops.
 Societe Des Produits Nestle, S.A. vs Court of Appeals
356 SCRA 207

Facts:
In 1984, CFC Corporation filed with the Bureau of Patents, Trademarks, and Technology Transfers
an application for the registration of its trademark Flavor Master an instant coffee. Nestle
opposed the application as it alleged that Flavor Master is confusingly similar to Nestle coffee
products like Master Blend and Master Roast. Nestle alleged that in promoting their products, the
word Master has been used so frequently so much so that when one hears the word Master it
connotes to a Nestle product. They provided as examples the fact that theyve been using Robert
Jaworski and Ric Puno Jr. as their commercial advertisers; and that in those commercials Jaworski
is a master of basketball and that Puno is a master of talk shows; that the brand of coffee
equitable or fit to them is Master Blend and Master Roast. CFC Corporation on the other hand
alleged that the word Master is a generic and a descriptive term, hence not subject to
trademark. The Director of Patents ruled in favor of Nestle but the Court of Appeals, using the
Holistic Test, reversed the said decision.

ISSUE:
Whether or not the Court of Appeals is correct.

HELD:
No. The proper test that should have been used is the Dominancy Test. The application of the
totality or holistic test is improper since the ordinary purchaser would not be inclined to notice
the specific features, similarities or dissimilarities, considering that the product is an inexpensive
and common household item. The use of the word Master by Nestle in its products and
commercials has made Nestle acquire a connotation that if its a Master product it is a Nestle
product. As such, the use by CFC of the term MASTER in the trademark for its coffee product
FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary
purchasers.

In addition, the word MASTER is neither a generic nor a descriptive term. As such, said term can
not be invalidated as a trademark and, therefore, may be legally protected.

Generic terms are those which constitute the common descriptive name of an article or
substance, or comprise the genus of which the particular product is a species, or are
commonly used as the name or description of a kind of goods, or imply reference to every
member of a genus and the exclusion of individuating characters, or refer to the basic nature of
the wares or services provided rather than to the more idiosyncratic characteristics of a
particular product, and are not legally protectable.

On the other hand, a term is descriptive and therefore invalid as a trademark if, as understood in
its normal and natural sense, it forthwith conveys the characteristics, functions, qualities or
ingredients of a product to one who has never seen it and does not know what it is, or if it
forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods,
or if it clearly denotes what goods or services are provided in such a way that the consumer does
not have to exercise powers of perception or imagination.
Rather, the term MASTER is a suggestive term brought about by the advertising scheme of
Nestle. Suggestive terms are those which, in the phraseology of one court, require imagination,
thought and perception to reach a conclusion as to the nature of the goods. Such terms, which
subtly connote something about the product, are eligible for protection in the absence of
secondary meaning. While suggestive marks are capable of shedding some light upon certain
characteristics of the goods or services in dispute, they nevertheless involve an element of
incongruity, figurativeness, or imaginative effort on the part of the observer.
 MARVEX COMMERCIAL CO., INC., petitioner, vs. PETRA HAWPIA and CO., and THE
DIRECTOR OF PATENTS, respondents.
G.R. No. L-19297 December 22, 1966

Facts:
The respondent 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. It was opposed by the petition alleging that the registration of
such trademark would violate its right to and interest in the trademark SALONPAS used on
another medicated plaster.

After due hearing, the Director of Patents issued a decision dismissing the opposition, tating in
part that "confusion, mistake, or deception among the purchasers will not likely and reasonably
occur" when both trademarks are applied to medicated plaster. The petitioner moved for
reconsideration but it was denied. Hence, this present appeal.

Issues:
Whether or not the respondent is the owner of the trademark LIONPAS?
Whether or not the trademark "LIONPAS" is confusingly similar to the trademark "SALONPAS"?

Ruling:
On the first issue:
No. The respondent was not the owner of the trademark LIONPAS.

Under sections 2 and 2-A of the Trade Mark Law, as amended, the right to register trademarks,
tradenames and service marks by any person, corporation, partnership or association domiciled
in the Philippines or in any foreign country, is based on ownership, and the burden is upon the
applicant to prove such ownership. In the present case, Petra failed to prove such ownership.
Based on the evidences presented, they merely provide that:
a. the applicant is merely the "exclusive distributor" in the Philippines of the "LIONPAS" penetrative
plaster
b. the applicant as the "Philippine sole distributor" of "LIONPAS"
c. "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 second issue:

Yes, the trademarks are confusingly similar. The Court considered that 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 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 special significance. n 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.
 Sterling Products Vs. Farbenfabriken Bayer
GR L-19906, 30 April 1969; En Banc, Sanchez (J).
Facts:
The Bayer Cross in circle trademark was registered in Germany in 1904 to Farbenfabriken vorm.
Friedr. Bayer (FFB), successor to the original Friedr. Bauyer et. Comp., and predecessor to
Farbenfabriken Bayer aktiengessel craft (FB2). The Bayer, and Bayer Cross in circle trademarks
were acquired by sterling Drug Inc. when it acquired FFBs subsidiary Bayer Co. of New York as a
result of the sequestration of its assets by the US Alien Property Custodian during World War I.
Bayer products have been known in Philippines by the close of the 19th century. Sterling Drugs,
Inc., however, owns the trademarks Bayer in relation to medicine. FBA attempted to register its
chemical products with the Bayer Cross in circle trademarks. Sterling Products International
and FBA seek to exclude each other from use of the trademarks in the Philippines. The trial court
sustained SPIs right to use the Bayer trademark for medicines and directed FBA to add
distinctive word(s) in their mark to indicate their products come from Germany. Both appealed.

Issue:
Whether SPIs ownership of the trademarks extends to products not related to medicine.

Held:
No. SPIs certificates of registration as to the Bayer trademarks registered in the Philippines cover
medicines only. Nothing in the certificates includes chemicals or insecticides. SPI thus may not
claim first use of the trademarks prior to the registrations thereof on any product other than
medicines.

For if otherwise held, a situation may arise whereby an applicant may be tempte3d to register a
trademark on any and all goods which his mind may conceive even if he had never intended to
use the trademark for the said goods. Omnibus registration is not contemplated by the
Trademark Law. The net result of the decision is that SPI may hold on its Bayer trademark for
medicines and FBA may continue using the same trademarks for insecticide and other chemicals,
not medicine.

The formula fashioned by the lower court avoids the mischief of confusion of origin, and does not
visit FBA with reprobation and condemnation. A statement that its product came from Germany
anyhow is but statement of fact.
AMERICAN WIRE & CABLE COMPANY, petitioner, vs. DIRECTOR OF PATENTS and CENTRAL
BANAHAW INDUSTRIES, respondents.
G.R. No. L-26557 February 18, 1970

Facts:
The respondent company applied with the Director of Patents for a registration of its trademark
DYNAFLEX and Device to be used in connection with electrical wires, which mark applicant
allegedly had been using since March 29, 1962. It was opposed by the petitioner American Wire
since the application would tend to cause confusion or result in mistake to purchasers intending
to buy DURAFLEX electric wires and goods, the mark being registered allegedly having practically
the same spelling, pronunciation and sound, and covering the same good, as that of the opposer.
Besides, opposer contended that there has been no continuous use in commerce of the
applicant's mark.

After due hearing, the Director of Patents rendered decision holding the applicant's mark
DYNAFLEX not to be similar to the previously registered trademark DURAFLEX. Consequently, the
application of Central Banahaw Industries for registration of DYNAFLEX was given due course
and the opposition thereto by American Wire & Cable Company dismissed. The latter interposed
the present appeal.

Issue:
Whether or not the mark DYNAFLEX and Device is registrable as label for electric wires, class 20,
considering that the trademark DURAFLEX and Globe representation also for electric wires,
machines and supplies under class 20, has been registered more than 4 years earlier.

Held:
No. It cannot be registered.

The court ruled that the similarity between the competing trademarks, DURAFLEX and
DYNAFLEX, is apparent. Not only are the initial letters and the last half of the appellations
identical, but the difference exists only in two out of the eight literal elements of the designations.
Coupled with the fact that both marks cover insulated flexible wires under class 20; that both
products are contained in boxes of the same material, color, shape and size; that the dominant
elements of the front designs are a red circle and a diagonal zigzag commonly related to a spark
or flash of electricity; that the back of both boxes show similar circles of broken lines with arrows
at the center pointing outward, with the identical legend "Cut Out Ring" "Draw From Inside
Circle", no difficulty is experienced in reaching the conclusion that there is a deceptive similarity
that would lead the purchaser to confuse one product with the other.

The Director of Patents has predicated his decision mostly on the semantic difference and
connotation of the prefixes "Dura" and "Dyna" of the competing trademarks, unfortunately
forgetting that the buyers are less concerned with the etymology of the words as with their sound
and the dominant features of the design.

Indeed, measured against the dominant-feature standard, applicant's mark must be disallowed.
For, undeniably, the dominant and essential feature of the article is the trademark itself. Unlike in
the case of commodities that are ordinarily picked up by the purchaser himself from the grocery
or market counters, electric wires are purchased not by their appearance but by the size (voltage)
and length and, most importantly, by brand. It is even within layman's knowledge that different
brands of wire have different characteristics and properties; and for an essential building item as
electric wires and supplies, the owner of the building would not dare risk his property, perhaps
his life, on an unknown or untested brand. He would only demand for what is recognized to be
the best.
 Asia Brewery vs. CA
GR 103543, 5 July 1993

Facts:
In 1988, san Miguel Corporation filed a complaint against Asia Brewery Inc. for infringement of
trademark and unfair competition on account of the latters Beer Pale Pilsen or Beer na Beer
product which has been competing with the formers San Miguel Pale Pilsen for a share of the
local beer market. The trial court ruled in favor of Asia Brewery. The appellate court, however,
over turned the trial courts ruling. Asia Brewery appealed.

Issue:
Whether Asia Brewery is guilty of unfair competition, arising from the allegedly confusing
similarity in the general appearance of ABIs Beer Pale Pilsen against SMCs San Miguel Pale
Pilsen.
Held:
No. The dominant feature of SMCs trademark is San Miguel Pale Pilsen while ABIs is Beer Pale
Pilsen. The word Beer does not appear in SMCs product, nor the words San Miguel appear in
ABIs product. Neither the sound nor spelling nor appearance can Beer Pale Pilsen be said to be
confusingly similar to San Miguel Pale Pilsen. San Miguel does not have exclusive rights to the
generic or descriptive words pale and pilsen. Neither does it have the exclusive right to use
320 ml. steinie bottle with white rectangular label.

The amber color is a functional feature of the beer bottle as the color prevents the transmission of
light and provides the maximum protection to beer. The bottle capacity is the standard prescribed
by the Metric System Board of the Department of Trade. The white label is the most economical to
use and presents the strongest contrast to the bottle. San Miguel cannot claim monopoly to such
features as the protection provided by law is confined to non-functional features. Further, Beer
Pale Pilsen is not being passed off as San Miguel Beer Pale Pilsen. It does not result to confusion
inasmuch as beer is ordered by brand, and is not taken freely from supermarket shelves. The
points of dissimilarity of the products outnumber their points of similarity.

The appellate court is correct in its finding that Asia Brewery does not infringe upon SMCs
trademark nor does it commit unfair competition.
ACOJE MINING CO., INC., petitioner-applicant, vs. THE DIRECTOR OF PATENTS, respondent.
G.R. No. L-28744 April 29, 1971

Facts:
Acoje Mining applied for registration of the trademark LUTOS, used in soy sauce and it was
asserted that it has been used in commerce since June 1, 1965. It was denied by the Chief
Trademark Examiner for the reason that it was similarly confusing with the trademark LUTOS
registered in favor of Philippine Refining Co.

The decision of the Chief Trademark Examiner was appealed before the Director of Patents
wherein it affirmed the view of the examiner nd rejected the application of Petitioner on the
ground that while there is a difference between soy sauce and edible oil and there were
dissimilarities in the trademarks due to type of letters used as well as in the size, color and design
employed, still the close relationship of the products, soy sauce and edible oil, is such "that
purchasers would be misled into believing that they have a common source. Hence, this petition.

Issue:
Whether or not the petitioner Acoje Mining Company may register for the purpose of advertising
its product, soy sauce, the trademark LOTUS, there being already in existence one such registered
in favor of the Philippine Refining Company for its product, edible oil, it being further shown that
the trademark applied for is in smaller type, colored differently, set on a background which is
dissimilar as to yield a distinct appearance.

Held:
Yes, Acoje Mining may register the trademark LUTOS.

The Court answered in the negative. It does not defy common sense to assert that a purchaser
would be cognizant of the product he is buying. There is quite difference between soy sauce and
edible oil. If one is in the market for the former, he is not likely to purchase the latter just because
of the trademark LOTUS. Even on the rare occasions that a mistake does occur, it can easily be
rectified. Moreover, there is no denying that the possibility of confusion is remote considering the
difference in the type used, the coloring, the petitioner's trademark being in yellow and red while
that of the Philippine Refining Company being in green and yellow, and the much smaller size of
petitioner's trademark. When regard is had for the principle that the two trademarks in their
entirety as they appear in their respective labels should be considered in relation to the goods
advertised before registration could be denied, the conclusion is inescapable that respondent
Director ought to have reached a different conclusion. Petitioner has successfully made out a case
for registration.
 MEAD JOHNSON v. NVJ VAN DORP

Facts:
In June 2, 1956, Van Dorp, filed an application for registration of the tademark ALASKA and
pictorial representation of a Boys head within a rectangular design. The trademark was
published in the issue of Official Gazette on June 5, 1956.

Mead Johnson being the owner of the trademark "ALACTA" used for powdered half-skim milk,
which was registered with the Patent Office on June 12, 1951, filed an opposition on the ground
that it will be damaged by the said registration as the trademark "ALASKA" and pictorial
representation of a Boy's Head within a rectangular design (ALASKA disclaimed), used for milk,
milk products, dairy products and infant's foods, is confusingly similar to its trademark "ALACTA".

Mead Johnson alleged that:

1. in appearance and sound the trademarks "ALASKA" and "ALACTA" are sufficiently close.
2. The three vowels are the same in both and the public would pronounce them short accenting
on the second syllable.
3. Both marks have the same number of letters and the vowels are placed on the same position.
The general form and sound of the words are of marked similarity so as to suggest the likelihood
of confusion. While "ALACTA" and "ALASKA" differ entirely in meaning, they are confusingly
similar in appearance.
4. The three letter prefixes of both marks are identical. Both marks end with the same letter "A".
The only difference lies in the letters "CT" in "ALACTA" and "SK" in "ALASKA".
5. Citing the case of Esso Standard Oil Company v. Sun Oil Company, et al., 46 TMR 444, wherein it
was held that SUNVIS and UNIVIS are quite different in sound and meaning but in their entireties
they are confusingly similar in appearance.

Alaska alleged that alleged that its trademark and product "ALASKA" are entirely different from
oppositor's trademark and product "ALACTA", since applicant's product covers milk, milk
products, dairy products and infant's foods which fall under Class 47 Foods and Ingredients of
Foods, while oppositor's products cover pharmaceutical preparations for nutritional needs which
fall under Class 6, which refers to Medicines and Pharmaceutical Preparations.

Issue:
WON there is trademark infringement

Held:
No. In determining if the trademarks are confusingly similar, a comparison of said words is not
the only determinant factor. The trademarks in their entirety as they appear in the respective
labels must also be considered in relation to the goods to which they are attached. 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. The striking and glaring differences of the trademarks are as follows:
1. SIZES of the containers are different. Alacta sells its products in a 1-lb container, while Alaska
comes in 3 sizes, 14oz tin for full cream milk, 14 tin for evap and 6 oz tin for evap
2. COLORS are different. Alactas containers come in either a light blue background color or pink
and white background; while Alaskas goods have yellowish white and red color.
3. Mark or FONT. Alacta only has the first letter capitalized written in black. Alaska has all the
letters capitalized written in white except that of the condensed full cream milk which is in red.

Furthermore, Alactas certificate of registration covers "Pharmaceutical Preparations which

Supply Nutritional Needs" which fall under Class 6 of the official classification as Medicines and
Pharmaceutical Preparations", thus indicating that Alacta's products are not foods or ingredients
of foods but rather medicinal and pharmaceutical preparations that are to be used as prescribed
by physicians. On the other hand, Alaskas goods cover "milk, milk products, dairy products and
infant's foods" as set forth in its application for registration which fall under an entirely different
class, or under Class 47 which refers to "Foods and Ingredients of Foods", and for use of these
products there is no need or requirement of a medical.
 EAST PACIFIC MERCHANDISING CORP. v. DIRECTOR OF PATENTS

Facts:
Marcelo T. Pua filed with the Office of the Director of Commerce an application for the registration
under Act 666 of the composite trademark consisting of the word "Verbena" and representation
of a Spanish lady, with specific evident set of designs. Respondent Luis P. Pellicer filed an
opposition to the application on the following grounds: (a) that the picture of a lady is common in
trade and the name "Verbena" is the generic name of a flower and, therefore, neither may be
exclusively appropriated or registered by the applicant.

The Director of Patents favored the Pellicer, alleging that the term "Verbena" is "generically
descriptive or misdescriptive of the products, namely lotion, face powder, hair pomade and
brillantine, while the representation of a Spanish lady is not only deceptively misdescriptive of
the source or origin, but also common in trade," and, resulting to the denial of East Pacifics
registration.

Issue:
Whether or not the term Verbena is registerable.

Held:
The term "Verbena" is descriptive of a whole genus of garden plants with fragrant flowers used in
connection with cosmetic products. Regardless of other connotations of the word, the use of the
term cannot be denied to other traders using such extract or oils in their own products. It follows
that the Director of Patents correctly held the term to be non-registerable in the sense that
petitioner company would be entitled to appropriate its use to the exclusion of others
legitimately entitled, such as oppositor Pellicer.

In a leading case, Caswell vs. Davis, 17 Am. Rep. 233, 241, 242, the court, on a similar issue, said:
There is no principle more firmly settled in the law of trademarks, than that words or phrases
which have been in common use and which indicate the character, kind, quality and composition
of the thing, may not be appropriated by any one to his exclusive use. In the exclusive use of them
the law will not protect. . . .

The claim that the petitioner is entitled to registration because the term "Verbena" has already
acquired a secondary significance is without merit. The provisions of law (Rep. Act No. 166, sec.
4) require that the trademark applied for must have "become distinctive of the applicant's goods",
and that a prima facie proof of this fact exists when the applicant has been in the "substantially
exclusive and continuous use thereof as a mark or tradename, for five years next preceding the
date of the filing of the application for its registration".
 ARCE SONS v. SELECTS BISCUITS 1 SCRA 253

Facts:
Respondent Selecta Biscuit Company applied for the registration of the word SELECTA to be
used in its bakery products. Petitioner Arce Sons opposed on the ground it had continuously used
the mark SELECTA and that it has already become identified with petitioners name and
business. Petitioner further contends that the marks are confusingly similar. Petitioner then filed
before the court a complaint of unfair competition against respondent which ruled in its favor. On
the other hand, the Director of Patents dismissed petitioners opposition.

Issue:
Whether or not petitioners mark has acquired secondary meaning in its favor.

Held:
YES.

The word SELECTA, it is true, may be an ordinary or common word in the sense that may be used
or employed by any one 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 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.

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. And holding that respondent was entitled to
protection in the use of that trade-mark, this Court made the following comment:

Even if Ang Tibay, therefore, were not capable of exclusive appropriation as a trade-mark, the
application of the doctrine of secondary meaning could nevertheless be fully sustained because,
in any event, by respondents long and exclusive appropriation with reference to an article on the
market, because geographically or otherwise descriptive, might nevertheless have been used so
long and 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 article was his
product. (Ang v. Teodoro, supra.)

The rationale in the Ang Tibay case applies on all fours to the case of petitioner.
 FABERGE INC. V. INTERMIDIATE APPELLATE COURT, 215 SCRA 316

Facts:
Co Beng Kay applied for the registration of the trademark 'BRUTE' to be used it its underwear
(briefs) products. The petitioner opposed on the ground that there is similarity with their own
symbol (BRUT, Brut33 & Device) used on its aftershave, deodorant, cream shave, hairspray and
hair shampoo/soaps and that it would cause injury to their business reputation. It must be noted
that the petitioner never applied for registration of said trademark for its brief products. The
Patent Office allowed Co Beng Kay the registration and this was further affirmed by the Court of
Appeals.

Issue:
Is there confusing similarity between the challenged marks and that its use would likely cause
confusion on the part of the purchasers?

Held:
NONE. Co Beng Kay may rightly appropriate the mark. In this case Sec. 20 (Philippine Intellectual
Property Law) is controlling. The certificate of registration issued confers the exclusive right to
use its own symbol only to those goods specified by the first user in the certificate, subject to any
conditions or limitations stated therein. Moreover, the two products are so dissimilar that a
purchaser of one (a brief) would not be misled or mistaken into buying the other (such as an
aftershave).
 LEVITON INDUSTRIES, NENA DE LA CRUZ LIM, DOMINGO GO, and LIM KIAT vs. HON.
SERAFIN SALVADOR, Judge, Court of First Instance of Rizal, Caloocan City, Branch XIV and
LEVITON MANUFACTURING CO., INC.
G.R. No. L-40163 June 19, 1982

Facts:
Private respondent Leviton Manufacturing Co. Inc. filed a complaint for unfair competition
against petitioners Leviton Industries before the CFI of Rizal (RTC), presided by respondent Judge
Serafin Salvador. The complaint substantially alleges that plaintiff (Leviton Manufacturing) is a
foreign corporation organized and existing under the laws of the State of New York, United States
of America with office located at 236 Greenpoint Avenue, Brooklyn City, State of New York, U.S.A.
That defendant Leviton Industries is a partnership organized and existing under the laws of the
Philippines with principal office at 382 10th Avenue, Grace Park, Caloocan City; while defendants
Nena de la Cruz Lim, Domingo Go and Lim Kiat are the partners, with defendant Domingo Go
acting as General Manager of defendant Leviton Industries. That plaintiff, founded in 1906 by
Isidor Leviton, is the largest manufacturer of electrical wiring devices in the United States under
the trademark Leviton, which various electrical wiring devices bearing the trademark Leviton
and trade name Leviton Manufacturing Co., Inc. had been exported to the Philippines since 1954;
that due to the superior quality and widespread use of its products by the public, the same are
well known to Filipino consumers under the trade name Leviton Manufacturing Co., Inc. and
trademark Leviton; that long subsequent to the use of plaintiffs trademark and trade name in the
Philippines, defendants (Leviton Industries) began manufacturing and selling electrical ballast,
fuse and oval buzzer under the trademark Leviton and trade name Leviton Industries Co.

That Domingo Go, partner and general manager of defendant partnership, had registered with
the Philippine Patent Office the trademarks Leviton Label and Leviton with respect to ballast and
fuse under Certificate of Registration Nos. SR-1132 and 15517, respectively, which registration
was contrary to paragraphs (d) and (e) of Section 4 of RA 166, as amended, and violative of
plaintiffs right over the trademark Leviton; that defendants not only used the trademark Leviton
but likewise copied the design used by plaintiff in distinguishing its trademark; and that the use
thereof by defendants of its products would cause confusion in the minds of the consumers and
likely to deceive them as to the source of origin, thereby enabling defendants to pass off their
products as those of plaintiffs. Invoking the provisions of Section 21-A of Republic Act No. 166,
plaintiff prayed for damages. It also sought the issuance of a writ of injunction to prohibit
defendants from using the trade name Leviton Industries, Co. and the trademark Leviton.

Defendants moved to dismiss the complaint for failure to state a cause of action, drawing
attention to the plaintiffs failure to allege therein its capacity to sue under Section 21-A of
Republic Act No. 166, as amended. After the filing of the plaintiffs opposition and the defendants
reply, the respondent judge denied the motion on the ground that the same did not appear to be
indubitable.

The motion for reconsideration having likewise been denied, defendants instituted the instant
petition for certiorari and prohibition, charging respondent judge with grave abuse of discretion
in denying their motion to dismiss.

Issue:
Whether or not the plaintiff (Leviton Manufacturing) herein respondents, failed to allege the
essential facts bearing its capacity to sue before Philippine courts.

Held:
Yes.

We agree with petitioners that respondent Leviton Marketing Co., Inc. had failed to allege the
essential facts bearing upon its capacity to sue before Philippine courts. Private respondents
action is squarely founded on Section 21-A of Republic Act No. 166, as amended, which we quote:

Sec. 21-A. Any foreign corporation or juristic person to which a mark or tradename has been
registered or assigned under this Act may bring an action hereunder for infringement, for unfair
competition, or false designation of origin and false description, whether or not it has been
licensed to do business in the Philippines under Act numbered Fourteen Hundred and Fifty-Nine,
as amended, otherwise known as the Corporation Law, at the time it brings the complaint;
Provided, That the country of which the said foreign corporation or juristic person is a citizen, or
in which it is domiciled, by treaty, convention or law, grants a similar privilege to corporate or
juristic persons of the Philippines. (As amended by R.A. No. 638)

Undoubtedly, the foregoing section grants to a foreign corporation, whether or not licensed to do
business in the Philippines, the right to seek redress for unfair competition before Philippine
courts. But the said law is not without qualifications. Its literal tenor indicates as a condition sine
qua non the registration of the trade mark of the suing foreign corporation with the Philippine
Patent Office or, in the least, that it be an asignee of such registered trademark. The said section
further requires that the country, of which the plaintiff foreign corporation or juristic person is a
citizen or domicilliary, grants to Filipino corporations or juristic entities the same reciprocal
treatment, either thru treaty, convention or law,

All that is alleged in private respondents complaint is that it is a foreign corporation. Such bare
averment not only fails to comply with the requirements imposed by the aforesaid Section 21-A
but violates as well the directive of Section 4, Rule 8 of the Rules of Court that facts showing the
capacity of a party to sue or be sued or the authority of a party to sue or be sued in a
representative capacity or the legal existence of an organized association of persons that is made
a party, must be averred

In the case at bar, private respondent has chosen to anchor its action under the Trademark Law of
the Philippines, a law which, as pointed out, explicitly sets down the conditions precedent for the
successful prosecution thereof. It is therefore incumbent upon private respondent to comply with
these requirements or aver its exemption therefrom, if such be the case. It may be that private
respondent has the right to sue before Philippine courts, but our rules on pleadings require that
the necessary qualifying circumstances which clothe it with such right be affirmatively pleaded.
And the reason therefor, as enunciated in Atlantic Mutual Insurance Co., et al. versus Cebu
Stevedoring Co., Inc. 4 is that

these are matters peculiarly within the knowledge of appellants alone, and it would be unfair to
impose upon appellees the burden of asserting and proving the contrary. It is enough that foreign
corporations are allowed by law to seek redress in our courts under certain conditions: the
interpretation of the law should not go so far as to include, in effect, an inference that those
conditions had been met from the mere fact that the party sued is a foreign corporation.

It was indeed in the light of this and other considerations that this Court has seen fit to amend the
former rule by requiring in the revised rules (Section 4, Rule 8) that facts showing the capacity of
a party to sue or be sued or the authority of a party to sue or be sued in a representative capacity
or the legal existence of an organized association of persons that is made a party, must be
averred,

IN VIEW OF THE FOREGOING, the instant petition is hereby granted and, accordingly, the order of
the respondent judge dated September 27, 1974 denying petitioners motion to dismiss is hereby
set aside. The Court of First Instance of Rizal (Caloocan City), the court of origin, is hereby
restrained from conducting further proceedings in Civil Case No. C-2891, except to dismiss the
same. No costs.
 PRO LINE SPORTS CENTER, INC., and QUESTOR CORPORATION, petitioners, vs. COURT OF
APPEALS, UNIVERSAL ATHLETICS INDUSTRIAL PRODUCTS, INC., and MONICO SEHWANI,
respondents.

Facts:
After the prosecution rested its case, Sehwani filed a demurrer to evidence arguing that the act of
selling the manufactured goods was an essential and constitutive element of the crime of unfair
competition under Art. 189 of the Revised Penal Code, and the prosecution was not able to prove
that he sold the products. In its Order of 12 January 1981 the trial court granted the demurrer
and dismissed the charge against Sehwani.

The existence of probable cause for unfair competition by UNIVERSAL is derivable from the facts
and circumstances of the case. The affidavit of Graciano Lacanaria, a former employee of
UNIVERSAL, attesting to the illegal sale and manufacture of "Spalding" balls and seized "Spalding"
products and instruments from UNIVERSAL's factory was sufficient prima facie evidence to
warrant the prosecution of private respondents. That a corporation other than the certified
owner of the trademark is engaged in the unauthorized manufacture of products bearing the
same trademark engenders a reasonable belief that a criminal offense for unfair competition is
being committed.

Petitioners PRO LINE and QUESTOR could not have been moved by legal malice in instituting the
criminal complaint for unfair competition which led to the filing of the Information against
Sehwani. Malice is an inexcusable intent to injure, oppress, vex, annoy or humiliate. We cannot
conclude that petitioners were impelled solely by a desire to inflict needless and unjustified
vexation and injury on UNIVERSAL's business interests. A resort to judicial processes is not per
se evidence of ill will upon which a claim for damages may be based. A contrary rule would
discourage peaceful recourse to the courts of justice and induce resort to methods less than legal,
and perhaps even violent.

Issue:
Whether or not the respondent is liable of unfair competition.

Held:
Yes. We are more disposed, under the circumstances, to hold that PRO LINE as the authorized
agent of QUESTOR exercised sound judgment in taking the necessary legal steps to safeguard the
interest of its principal with respect to the trademark in question. If the process resulted in the
closure and padlocking of UNIVERSAL's factory and the cessation of its business operations, these
were unavoidable consequences of petitioners' valid and lawful exercise of their right. One who
makes use of his own legal right does no injury. Qui jure suo utitur nullum damnum facit. If
damage results from a person's exercising his legal rights, it is damnum absque injuria.

Admittedly, UNIVERSAL incurred expenses and other costs in defending itself from the
accusation. But, as Chief Justice Fernando would put it, "the expenses and annoyance of litigation
form part of the social burden of living in a society which seeks to attain social control through
law." Thus we see no cogent reason for the award of damages, exorbitant as it may seem, in favor
of UNIVERSAL. To do so would be to arbitrarily impose a penalty on petitioners' right to litigate.
The criminal complaint for unfair competition, including all other legal remedies incidental
thereto, was initiated by petitioners in their honest belief that the charge was meritorious. For
indeed it was. The law brands business practices which are unfair, unjust or deceitful not only as
contrary to public policy but also as inimical to private interests. In the instant case, we find quite
aberrant Sehwani's reason for the manufacture of 1,200 "Spalding" balls, i.e., the pending
application for trademark registration of UNIVERSAL with the Patent Office, when viewed in the
light of his admission that the application for registration with the Patent Office was filed on 20
February 1981, a good nine (9) days after the goods were confiscated by the NBI. This apparently
was an afterthought but nonetheless too late a remedy. Be that as it may, what is essential for
registrability is proof of actual use in commerce for at least sixty (60) days and not the capability
to manufacture and distribute samples of the product to clients.

Arguably, respondents' act may constitute unfair competition even if the element of selling has
not been proved. To hold that the act of selling is an indispensable element of the crime of unfair
competition is illogical because if the law punishes the seller of imitation goods, then with more
reason should the law penalize the manufacturer. In U. S. v. Manuel, the Court ruled that the test
of unfair competition is whether certain goods have been intentionally clothed with an
appearance which is likely to deceive the ordinary purchasers exercising ordinary care. In this
case, it was observed by the Minister of Justice that the manufacture of the "Spalding" balls was
obviously done to deceive would-be buyers. The projected sale would have pushed through were
it not for the timely seizure of the goods made by the NBI. That there was intent to sell or
distribute the product to the public cannot also be disputed given the number of goods
manufactured and the nature of the machinery and other equipment installed in the factory.
h PHILIP MORRIS, INC. VS COURT OF APPEALS

i
Facts:
This is a petition for review under Rule 45 of the Rules of Court, to seek the reversal and
setting aside of the following issuances of the Court of Appeals (CA).

l
Philip Morris, Inc. and two other petitioners are ascribing whimsical exercise of the faculty
conferred upon magistrates by Section 6, Rule 58 of the Revised Rules of Court when
respondent Court of Appeals lifted the writ of preliminary injunction it earlier had issued
against Fortune Tobacco Corporation, from manufacturing and selling MARK cigarettes in
the local market. Banking on the thesis that petitioners respective symbols MARK VII,

.
MARK TEN, and MARK, also for cigarettes, must be protected against unauthorized
appropriation.

All petitioners are not doing business in the Philippines but are suing on an isolated
transaction, They Invoked provisions of the Paris Convention for the Protection of Industrial
and Intellectual Property. As corporate nationals of member-countries of the Paris Union,
they can sue before Philippine courts for infringement of trademarks, or for unfair
competition, without need of obtaining registration or a license to do business in the
Philippines, and without necessity of actually doing business in the Philippines.

C Philip Morris and its subsidiaries filed the complaint for infringement and damages against
Fortune Tobacco before the Pasig Regional Trial Court (RTC) for manufacturing and selling
cigarettes bearing the trademark Mark which is identical and confusingly similar to Philip

%
Morris trademarks. The said act was dismissed. Hence, this petition at bar.
Issue/s:
Whether or not there has been an invasion of plaintiffs right of property to such trademark or
trade name.

t Discussions:
Following universal acquiescence and comity, our municipal law on trademarks regarding
the requirement of actual use in the Philippines must subordinate an international agreement
inasmuch as the apparent clash is being decided by a municipal tribunal. Withal, the fact that
international law has been made part of the law of the land does not by any means imply the
primacy of international law over national law in the municipal sphere. Under the doctrine of
incorporation as applied in most countries, rules of international law are given a standing
equal, not superior, to national legislative enactments

H
Ruling/s:
No. There is no proof that any of petitioners products which they seek to protect from any
adverse effect of the trademark applied for by defendant, is in actual use and available for
commercial purposes anywhere in the Philippines.

A fundamental principle of Philippine Trademark Law is that actual use in commerce in the
Philippines is a pre-requisite to the acquisition of ownership over a trademark or a trade
name.

In view of the explicit representation of petitioners in the complaint that they are not engaged
in business in the Philippines, it inevitably follows that no conceivable damage can be
suffered by them not to mention the foremost consideration heretofore discussed on the
absence of their right to be protected.
 ARCE SONS AND COMPANY V. SELECTA BISCUIT COMPANY (G.R. NO. L-14761)

Facts:

Respondent Selecta Biscuit Company applied for the registration of the word SELECTA to
be used in its bakery products. Petitioner Arce Sons opposed on the ground it had
continuously used the mark SELECTA and that it has already become identified with
petitioners name and business. Petitioner further contends that the marks are confusingly
similar. Petitioner then filed before the court a complaint of unfair competition against
respondent which ruled in its favor. On the other hand, the Director of Patents dismissed
petitioners opposition.

Issue:

Whether or not petitioners mark has acquired secondary meaning in its favor.

Ruling:
YES.
The word SELECTA, it is true, may be an ordinary or common word in the sense that may
be used or employed by any one 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 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.
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. And holding that respondent was entitled to
protection in the use of that trade-mark, this Court made the following comment:
Even if Ang Tibay, therefore, were not capable of exclusive appropriation as a trade-mark,
the application of the doctrine of secondary meaning could nevertheless be fully sustained
because, in any event, by respondents long and exclusive appropriation with reference to an
article on the market, because geographically or otherwise descriptive, might nevertheless
have been used so long and 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 article was his product. (Ang v. Teodoro, supra.)
The rationale in the Ang Tibay case applies on all fours to the case of petitioner.
 CRISANTA Y. GABRIEL v. DR. JOSE R. PEREZ

Facts:

On October 19, 1962, petitioner Crisanta Y. Gabriel filed with the Patent Office a petition for
cancellation of the trademark "WONDER" from the supplemental register alleging that the
registrant was not entitled to register the said trademark at the time of his application for
registration; that the trademark was not used and has not been actually used by registrant at
the time he applied for its registration; that it was thru fraud and misrepresentation that the
registration was procured by the registrant; and that it was she who has been actually using
the said trademark since March, 1959, and as such is the rightful and recognized owner
thereof and therefore entitled to its registration. In support of her petition, she further alleged
the written contract between her and the registrant (respondent) wherein, according to her,
the latter has recognized her right of use and ownership of said trademark; and that the labels
submitted by the registrant are the very containers bearing the trademark "WONDER" which
are owned by her and which she has been exclusively and continuously using in commerce
(pp. 24-25, Vol. I, rec.).

Respondent Dr. Jose R. Perez, in due time, duly filed his answer denying each and every
ground for cancellation alleged in the said petition, and further averring that there is pending
in the Court of First Instance of Bulacan a civil case (No. 2422) for unfair competition with
injunction and damages filed by him against herein petitioner involving the manufacture of
beauty soap and the use of the trademark "WONDER"; that a writ of preliminary injunction
has been issued on September 7, 1961 by the said court against herein petitioner restraining
her "from making, manufacturing and producing 'Wonder Bleaching Beauty Soap' with the
same labels and chemical ingredients as those of the plaintiff, and from advertising, selling
and distributing the same products"; and that no right of petitioner had been violated and
therefore no cause of action exists in favor of petitioner (pp. 28-32, Vol. I, rec.).

On May 22, 1973, counsel for private respondent filed a motion for the early resolution of the
case alleging among others that "respondent Dr. Jose R. Perez had died already and still
Crisanta Y. Gabriel, the petitioner in this case, has been continuously harassing the rights of
the late Dr. Jose R. Perez as far as the ownership and use of the trademark are concerned."

By way of factual background, herein private respondent Dr. Jose R. Perez filed with the
Patents Office on February 23, 1961 an application for registration of the trademark
"WONDER" in the Supplemental Register. After due and proper proceedings, the said
petition was approved and the trademark "WONDER" was registered, as prayed for, in the
Supplemental Register. Thereafter, Certificate of Registration No. SR-389 was issued to and
in the name of herein private respondent Dr. Jose R. Perez. Said trademark "WONDER" is
used by said private respondent on bleaching beauty soap (Medicated and Special) which
under the Official Classification of Merchandise (Rule 82) of the Board of Patents falls under
Class 51. Private respondent Dr. Perez, in his petition for registration, claimed March 10, 1953
as the date of first use of said trademark and August 1, 1959 as the date of first use of said
trademark in commerce in the Philippines (see pp. 1-7, Vol. I, rec.).

Petitioner Crisanta Y. Gabriel on the other hand, earlier filed on October 3, 1960 with the
Patent Office a petition to register the same trademark "WONDER" and claimed March 7,
1959 as the date of first use of said trademark in commerce. Said petition was dismissed on
November 18, 1960 by the Patents Office (thru its examiner) on the ground that said
petitioner was not the owner of the trademark sought to be registered, informing at the same
time petitioner that "as shown on the labels submitted, it appears that Dr. Jose R. Perez is the
owner of the present mark .

Way back in 1953, the Respondent who claims to be a medical researcher and manufacturer,
was experimenting on the creation of a beauty soap. Having discovered a workable formula
he applied from the Bureau of Health for the issuance of a Certificate of Label Approval and
on June 6, 1958 he was issued such certificate. It covers a beauty soap for bleaching, which
whitens or sometimes softens the skin. (t.s.n., p. 48, Aug. 27, 1963). This certificate (Exh. '5')
particularly describes and mentions 'Dr. Perez' Wonder Beauty Soap. He continued
experimenting until he was able to discover an improved soap formula which he claims that
aside from bleaching or whitening the skin it also allegedly removes pimples, freckles,
dandruff, scabies, itching, head lice(s), rashes, falling of hair, and shallow wrinkles. (t.s.n., p.
49, Aug. 27, 1963). For such product he obtained another certificate of label approval from the
Bureau of Health on August 10, 1959 (Exh. '6'). This document also particularly describes 'Dr.
Perez Wonder Beauty Soap (Improved Formula).'

"In January, 1959 he made an agreement with a certain company named 'Manserco'
for the distribution of his soap. It was then being managed by Mariano S. Yangga
who happens to be the brother of the Petitioner Crisanta Y. Gabriel (t.s.n., pp. 3-4,
Aug. 27, 1963). This was corroborated by Mr. August Cesar Espiritu who testified
in favor of the Respondent. Mr. Espiritu claims to be the organizer and one of the
incorporators of 'Manserco,' although really no document of its corporate existence
was introduced as evidence in this case (t.s.n., pp. 55-57, Sept. 23, 1963). However,
this fact had never been disputed by the Petitioner.

"Because the corporation was allegedly going bankrupt and the members were deserting, the
Respondent terminated the agreement in July, 1959, and thereafter he asked the Petitioner to
become the distributor of his products (t.s.n., pp. 4-5, Aug. 27, 1963) and on September 1,
1959, a contract of 'Exclusive Distributorship' was executed between the Petitioner and the
Respondent.

Ruling:

Thus, as stated in the decision under review: "Therefore, it cannot be denied that the
Respondent is the originator and manufacturer of the so-called 'Dr. Perez Wonder Beauty
Soap,' a phrase clearly coined by, and associated with, the Respondent. As such, the
connotation in itself is sufficient to clothe the product as an item or a commodity emanating
from a particularly identified source who is none other than Dr. Jose R. Perez. The words
serve as an indication of origin, and the product identified by the words can never be
regarded as having emanated or originated from another individual, typical of which is the
Petitioner, a mere distributor." (P. 15, Vol. IV, rec.). Under Sections 2 and 2-A of the
Trademark Law, Republic Act No. 166, as amended, the right to register trademark is based
on ownership and a mere distributor of a product bearing a trademark, even if permitted to
use said trademark, has no right to and cannot register the said trademark (Marvex
Commercial Co., Inc. vs. Petra Hawpia & Co., 18 SCRA 1178; Operators, Inc. vs. Direct or of
Patents, et. al., 15 SCRA 148.)

"The statute provides that 'the owner of a trademark used in commerce may register his
trademark x x x.' By statutory definition a trademark is 'any word, name, symbol or device or
any combination thereof adopted and used by a manufacturer or merchant to identify his goods
and distinguish them from those manufactured by others.' (Emphasis added). There is
nothing in the statute which remotely suggests that one who merely sells a manufacturer's
goods bearing the manufacturer's mark acquires any rights in the mark; nor is there anything
in the statute which suggests that such a person may register a mark which his supplier has
adopted and used to identify his goods. Ex parte E. Leitz, Inc., (Comr Pats) 105 USPQ 480."
(Pp. 16-17, Vol. IV, rec.).

The exclusive distributor does not acquire any proprietary interest in the principal's
trademark.
"In the absence of any inequitable conduct on the part of the manufacturer, an
exclusive distributor who employs the trademark of the manufacturer does not
acquire proprietary interest in the mark which will extinguish the rights of the
manufacturer, and a registration of the trademark by the distributor as such
belongs to the manufacturer, provided the fiduciary relationship does not
terminate before application for registration is filed." (87 CJS 258-259, citing cases.).

In this instant case, the trademark "WONDER" has long been identified and associated with
the product manufactured and produced by the Dr. Jose R. Perez Cosmetic Laboratory. It
would thus appear that the decision under review is but in consonance with the sound
purposes or objects of a trademark. Indeed, a contrary ruling would have resulted in the
cancellation of the trademark in question and in granting the pending application of herein
petitioner to register the same trademark in her favor to be used on her bleaching soap, which
is of the same class as that of respondent (bleaching and beauty soap) [see pp. 222, 265-276,
Vol. I, rec.; also Exh. "9", p. 105, Vol. III, rec.]. And the effect on the public as well as on
respondent Dr. Jose R. Perez would have been disastrous. Such a situation would sanction a
false implication that the product to be sold by her (petitioner) is still that manufactured by
respondent.

Our examination of the entire records of the present case likewise revealed petitioner's
disregard of the rudiments of fair dealing. Mr. Justice Fernando, in behalf of the Court, stated
in Lim Kiah vs. Kaynee Company, thus:
"x x x The decision of the Director of Patents is not only sound in law but also
commendable for its consonance with the appropriate ethical standard which by
no means should be excluded from the business world as alien, if not a hostile,
force. While in the fierce competitive jungle which at times constitutes the arena of
commercial transactions, shrewdness and ingenuity are at a premium, the law is
by no means called upon to yield invariably its nod of approval to schemes
frowned upon by the concept of fairness. Here, petitioner engaged in
manufacturing and selling the same kind of products would rely on a trademark,
which undeniably was previously registered abroad and which theretofore had
been used and advertised extensively by one of the leading department stores in
the Philippines." (25 SCRA 490).
 ANG SI HENG and SALUSTIANA DEE, plaintiffs-appellants,
vs.
WELLINGTON DEPARTMENT STORE, INC., BENJAMIN CHUA, S.R. MENDINUETO,
and FELIMON COSIO,defendants-appellees.

Facts:
The plaintiffs-appellants herein are engaged in the business of manufacturing shirts, pants,
drawers, and other articles of wear for men, women, and children. They have been in that
business since the year 1938, having obtained the registration for the said articles the
trademark of "Wellington." In the year 1940 they registered the business name "Wellington
Company," and this registration of the name was renewed on June 11, 1946. Their invoices,
stationery, and signboard bear the trade name "Wellington Company," and in newspaper
advertisements they described their business as "Wellington Shirt Factory." It does not
appear, however, that their trademark for their articles of wear was again registered after
August 27, 1938, nor their trade name registered after 1946.
Defendant Benjamin Chua applied for the registration of the business name "Wellington
Department Store" on May 7, 1946. His application therefor was approved by the Bureau of
Commerce, and a certificate issued in his favor. On June 8, 1946, this business name was
transferred to Wellington Department Store, Inc., of which he is the president. It does not
appear, however, that his application with the Bureau of Commerce for the registration of the
business name "Wellington Department Store" has been renewed, and neither does it appear
that the business name "Wellington Company" applied for by plaintiffs-appellants has also
been renewed.
The plaintiffs-appellants allege that the use of the words "Wellington Department Store" as a
business name and as a corporate name by the defendant-appellee deceives the public into
buying defendant corporation's goods under the mistaken belief that the names are the
plaintiff's or have the same source as plaintiffs' goods, thereby resulting in damage to them.
They, therefore, pray that the defendant corporation be enjoined from using the business
name "Wellington Department Store" and the corporate name "Wellington Department Store,
Inc"; that the Director of Commerce be ordered to cancel the registration of said business
name, and the Securities and Exchange Commissioner be also ordered to cancel the corporate
name "Wellington Department Store, Inc."

Issue: WON the word Wellington is geographical name thus generic and cannot be subject to
registration

Ruling:
The term "Wellington" is either a geographical name (see Webster's International Dictionary,
where it is said to be the capital of New Zealand; urban district of Shropshire, England and of
Somersetshire, England; co. seat, of Summer co., Kans, etc.), or the surname of a person. But
mere geographical names are ordinarily regarded as common property, and it is a general
rule that the same cannot be appropriated as the subject of an exclusive trademark or trade
name. (52 Am. Jur., 548.) Even if Wellington were a surname, which is not even that of the
plaintiffs-appellants, it cannot also be validly registered as a trade name. (Section 4,
Paragraph (e), Republic Act. No. 166.) As the term cannot be appropriated as a trademark or a
trade name, no action for violation thereof can be maintained, as none is granted by the
statute in such cases. The right to damages and for an injunction for infringement of a
trademark or a trade name is granted only to those entitled to the exclusive use of a registered
trademark or trade name. (Section 23, Republic Act No. 166.) It is evident, therefore, that no
action may lie in favor of the plaintiffs-appellants herein for damages or injunctive relief for
the use by the defendants-appellees of the name "Wellington."
While there is similarity between the trademark or trade name "Wellington Department
Store," no confusion or deception can possibly result or arise from such similarity because the
latter is a "department store," while the former does purport to be so. The name "Wellington"
is admittedly the name of the trademark on the shirts, pants, drawers, and other articles of
wear for men, women and children, whereas the name used by the defendant indicates not
these manufactured articles or any similar merchandise, but a department store. Neither can
the public be said to be deceived into the belief that the goods being sold in defendant's store
originate from the plaintiffs, because the evidence shows that defendant's store sells no shirts
or wear bearing the trademark "Wellington," but other trademarks. Neither could such
deception be by any possibility produced because defendant's store is situated on the Escolta,
while plaintiffs' store or place of business is located in another business district far away from
the Escolta. The mere fact that two or more customers of the plaintiffs thought of the probable
identity of the products sold by one and the other is not sufficient proof of the supposed
confusion that the public has been led into by the use of the name adopted by the defendants.
No evidence has been submitted that customers of the plaintiffs-appellants had actually been
misled into purchasing defendant's articles and merchandise, for the very witnesses who
have supposedly noted the use of plaintiffs' trade name do not claim to have actually
purchased any articles from defendant's store.
The concept of unfair competition has received the attention of this Court in two previous
cases, that of Ang vs. Teodoro1 (2 Off. Gaz., No. 7, 673) and Teodoro Kalaw Ng Khe vs. Lever
Brothers Co.2 (G.R. No. 46817, promulgated on April 18, 1941.) In the first case this Court
stated that even a name or phrase not capable of appropriation as trademark or trade name
may, by long and exclusive use by a business with reference thereto or to its products, acquire
a proprietary connotation, such that the name or phrase to the purchasing public becomes
associated with the business or the products and entitled to protection against unfair
competition. But in the case at bar, the principle therein enunciated cannot be made to apply
because the evidence submitted by the appellants did not prove that their business has
continued for so long a time that it has become of consequence and acquired a goodwill of
considerable value, such that its articles and products have acquired a well-known reputation
and confusion will result by the use of the disputed name by the defendants' department
store. It is true that appellants business appears to have been established a few years before
the war and appellees' after liberation, yet it seems appellees' business and goodwill are the
products of their own individual initiative, not wrested by unfair competition from
appellants' business and goodwill.
We agree, therefore, with the trial court that plaintiffs-appellants have not been able to show
the existence of a cause of action for unfair competition against the defendants-appellees.
The judgment appealed from is, therefore, affirmed, with costs against the plaintiffs-
appellants.
 Rueda Hermanos vs. Paglinawan, G.R. No. 10738, Jan. 14,1916

The true test of unfair competition is whether certain goods havebeen clothed with an
appearance which is likely to deceive theordinary purchaser exercising ordinary care, and not
whether acertain limited class of purchasers with special knowledge notpossessed by the
ordinary purchaser could avoid mistake by theexercise of this special knowledge.If the
contents of two packages are the same commodity, it is nodefense to an action for unfair
competition to show minor dierencesin the size or shape of the packages or in the wording
or color of thelabels or wrappers of the packages. If the exterior size, shape, colorand
description, in other words, those things which go to make up thegeneral outside
appearances of the article, are so substantiallysimilar as to "likely deceive the ordinary
purchaser exercisingordinary care," the defendant is guilty of unfair competition .
 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,

FACTS:

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:

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
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.

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.
PAULA RECARO, doing business under the name and style, "BIG FIVE PRODUCTS", and
THING ONG,plaintiffs-appellees,
vs.
NESTOR EMBISAN, doing business under the name and style "NEL'S COFF
PRODUCTS", defendant-appellant.

Facts:
In her complaint, filed on April 4, 1958, Paula Recaro, hereafter referred to as plaintiff, alleged
that she is doing business under the registered name and style of "BIG FIVE PRODUCTS";
that she is the assignee and owner of the trademark "BIG FIVE 5", which is duly registered
with the Philippines Patent Office; that since May 22, 1952, she had been using and affixing
said trade-mark on the printed labels (a facsimile of which is appended to the complaint) of
her products, namely in vegetable lard repacked for sale on retail, with which she is identified
in the mind of the public; that defendant Nestor Embisan, doing business under the name
and style "Nel-Coff Products", is, likewise, engaged in the repacking of vegetable lard on
which he uses printed labels bearing the trademark "Big Three" (a facsimile of which is,
likewise, appended to the complaint) which is not registered with said Patent Office and is
but a reproduction, a counterfeit copy or colorable imitation of plaintiff's aforementioned
registered trade-mark, to such an extent as is likely to cause confusion or mistake or to
deceive purchasers or others as to the source or origin of such repacked products, in gross
and unauthorized infringement of plaintiff's certificate of registration; that, by giving the
wrapping of his products the general appearance of the goods sold by plaintiff, the defendant
has influenced purchasers to believe that his goods are those of the plaintiff and has deceived
the public and defrauded the plaintiff of her legitimate trade and is, therefore, engaged in
unfair competition; that, despite notice given to him, the defendant has refused and
continued to refuse to cease and desist from his aforementioned infringement of patent and
unfair competition.
Upon being summoned, defendant filed an answer stating that he has no knowledge or
information sufficient to form a belief as to the truth of plaintiff's allegations concerning her
personal circumstances, her alleged ownership of the "Big Five Products", and of the trade-
mark "BIG FIVE 5", as well as of the registration and use thereof by plaintiff. Moreover,
defendant alleged that he had been doing business under the name and style "Nel-Coff
Products" which had been duly registered with the Bureau of Commerce; that he "has been
using for sometime already on his products printed labels bearing the trade-mark "Nel's Big 3
Lard" which cannot be considered a reproduction or counterfeit copy much less a colorable
imitation of plaintiff's alleged trade-mark; that, in adopting said trademark (Nel's Big 3 Lard),
he had never intended to cause any confusion or mistake or to deceive purchasers and the
public in general, as to the source or origin, of the products concerned; and that, upon receipt
of plaintiffs notice and to show his good faith, as well as to avoid any future
misunderstanding, he "took immediate steps to substitute, as he has actually substituted, his
trade-mark 'Nel's Big 3 Lard' with that of 'MARCA 3 LARD', of which fact" the plaintiff was
notified.
Issue:
WON Nel's Big 3 on vegetable lard repacked by the defendant constitutes an infringement
upon plaintiff's registered trade-mark "Big Five 5

Ruling:
After due hearing, the lower court held that said petition was well founded and rendered
judgment "enjoining the defendant permanently and perpetually from using wrappings on
his products containing the printed labels 'Big Three' and such devices and words as to
constitute infringement of patent and unfair competition; ordering the defendant to pay the
plaintiff the sum of P100 for attorney's fees; and ordering the dismissal of the counterclaim,
without pronouncement as to costs".
Defendant interposed the present appeal whrer the CA found no merit in such complaint.
There is no genuine issue about the fact that the use of the trade-mark "Nel's Big 3" on
vegetable lard repacked by the defendant constitutes an infringement upon plaintiff's
registered trade-mark "Big Five 5", which is similarly used on repacked vegetable lard, and
the lower court did not err in granting, by summary judgment, the injunction prayed for by
the plaintiff, in dismissing defendant's counterclaim, and in refusing to reconsider said
judgment.
WHEREFORE, the decision appealed from is hereby affirmed, with the costs of both instances
against defendant-appellant, Nestor Embisan. It is so ordered.
 PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS INCORPORATED and
TIBURCIO S. EVALLE as Director of Patents

Facts:

Philippine Nut Industry Inc., a domestic corporation, obtained from the Patent Office on
August 10, 1961, a certificate covering the trademark "PHILIPPINE PLANTERS CORDIAL
PEANUTS," the label used on its product of salted peanuts.

On May 14, 1962, Standard Brands, a foreign corporation, filed a case with the Director of
Patent, asking for the cancellation of Philippine Nut's certificate of registration on the ground
that "the registrant was not entitled to register the mark at the time of its application for
registration thereof" for the reason that it (Standard Brands) is the owner of the trademark
"PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration No. SR-172,
issued by the Patent Office on July 28, 1958.

Thereafter, the Philippine Nut filed its answer invoking the special defense that its registered
label is not confusingly similar to that of Standard Brands as the latter alleges.

Respondent Director of Patents gave due course to Standard Brand's petition, ordering the
cancellation of Philippine Nut's Certificate of Registration.

Upon denial of the motion for reconsideration, the Philippine Nut petitioned for a review,
seeking the reversal of the Director of Patents decision.

Issue:

Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by

Philippine Nut on its label for salted peanuts with the same coloring scheme and the same
lay-out of words, confusingly similar to the trademark "PLANTERS COCKTAIL PEANUTS"
used by Standard Brands on its product.

Ruling:

Yes. As to appearance and general impression of the two trademarks, the Supreme Court said
it found a very confusing similarity.

The word PLANTERS printed across the upper portion of the label in bold letters easily
attracts and catches the eye of the ordinary consumer and it is that word and none other that
sticks in his mind when he thinks of salted peanuts.

The Supreme Court also held that although it is true that no producer or manufacturer may
have a monopoly of any color scheme or form of words in a label, but when a competitor
adopts a distinctive or dominant mark or feature of another's trademark and with it makes
use of the same color ensemble, employs similar words written in a style, type and size of
lettering almost identical with those found in the other trademark, the intent to pass to the
public his product as that of the other is quite obvious. It deceives the public.

Hence, the decision of respondent Director of Patents was affirmed.

ONG AI GUI VS. THE DIRECTOR OF PATENT OFFICE, E.I. DU PONT DE NEMOURS AND
COMPANY

FACTS:

Applicant-petitionerTan Ai gui filed an application with the Director of Patents for the
registration of the following tradename: "20th Century Nylon Shirts Factory, which the latter
denied.

RULING:

The Court upheld the Director of Patents reasoning that a word or a combination of words, in
this case nylon and shirt factory, which is merely descriptive of an article of trade, or of
its composition, characteristics, or qualities, cannot be appropriated and protected as a
trademark to the exclusion of its use by others.

Furthermore, the use of the term "nylon" in the tradename is both "descriptive" and
"deceptively and misdescriptive" of the applicant-appellant's business, for apparently he does
not use nylon in the manufacture of the articles he produces and sells. Not to mention, the
word nylon is a general term which is not distinctive and, thus, cannot be afforded
secondary meaning attributable petitioners business so as to permit registration.
 Corporation v. Daway

FACTS:

Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and
Crown Device, filed against 246 Corporation the instant suit for trademark infringement and
damages with prayer for the issuance of a restraining order or writ of preliminary
injunctionbefore the RTC of QC
o July 1996: 246 adopted and , since then, has been using without authority the mark
Rolex in its business name Rolex Music Lounge as well as in its newspaper
advertisements as Rolex Music Lounge, KTV, Disco & Party Club.
246 answered special affirmative defences: no confusion would arise from the use by
petitioner of the mark Rolex considering that its entertainment business is totally unrelated
to the items catered by respondents such as watches, clocks, bracelets and parts thereof
RTC: quashed the subpoena ad testificandum and denied petitioners motion for
preliminary hearing on affirmative defenses with motion to dismiss
CA: affirmed

ISSUE: W/N RTC performed a grave abuse of discretion

HELD: NO. petition denied. RTC affirmed

The issue of whether or not a trademark infringement exists, is a question of fact that
could best be determined by the trial court.
Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293)
o (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding paragraph, which is registered in
the Philippines with respect to goods or services which are not similar to those with respect to
which registration is applied for: Provided, That use of the mark in relation to those goods or
services would indicate a connection between those goods or services, and the owner of the
registered mark: Provided, further, That the interest of the owner of the registered mark are
likely to be damaged by such use
Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely
unrelated to respondents business involving watches, clocks, bracelets, etc. However, the
Court cannot yet resolve the merits of the present controversy considering that the requisites
for the application of Section 123.1(f), which constitute the kernel issue at bar, clearly require
determination facts of which need to be resolved at the trial court. The existence or absence
of these requisites should be addressed in a full blown hearing and not on a mere preliminary
hearing. The respondent must be given ample opportunity to prove its claim, and the
petitioner to debunk the same.
PROSOURCE INTERNATIONAL, INC. v. HORPHAG RESEARCH MANAGEMENT SA.
G.R. No. 180073. November 25, 2009

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.
 LA CHEMISE LACOSTE V. FERNANDEZ (G.R. NO. L-63796-97)

Facts:

Petitioner La Chemise Lacoste is a foreign corporation and the actual owner of the
trademarks Lacoste, Chemise Lacoste, and Crocodile Device used on clothing and other
goods that are sold in many parts of the world. Herein respondent Hemadas & Co., a
domestic firm, applied and was granted registration of the mark Chemise Lacoste and
Crocodile Device for its garment products. Sometime later, petitioner applied for the
registration of its mark Crocodile Device and Lacoste but was opposed by herein
respondent. Later, petitioner filed a letter-complaint of unfair competition before the NBI
which led to the issuance of search warrants and the seizure of goods of respondent
Hemadas. Respondent moved to quash the warrants alleging that its trademark was different
from petitioners trademark. Respondent court ruled to set aside the warrants and to return
the seized goods.

Issue:
Whether or not petitioners trademark is a well-known mark protected under the Paris
Convention.\

Ruling: YES.
In upholding the right of the petitioner to maintain the present suit before our courts for
unfair competition or infringement of trademarks of a foreign corporation, we are moreover
recognizing our duties and the rights of foreign states under the Paris Convention for the
Protection of Industrial Property to which the Philippines and France are parties.
Pursuant to this obligation, the Ministry of Trade issued a memorandum addressed to the
Director of the Patents Office directing the latter to reject all pending applications for
Philippine registration of signature and other world famous trademarks by applicants other
than its original owners or users. The conflicting claims over internationally known
trademarks involve such name brands as Lacoste, et. al. It is further directed that, in cases
where warranted, Philippine registrants of such trademarks should be asked to surrender
their certificates of registration, if any, to avoid suits for damages and other legal action by
the trademarks foreign or local owners or original users.
The Intermediate Appellate Court, in the La Chemise Lacoste S.A. v. Sadhwani decision which
we cite with approval sustained the power of the Minister of Trade to issue the implementing
memorandum and declared La Chemise Lacoste S.A. the owner of the disputed trademark,
stating: In the case at bar, the Minister of Trade, as the competent authority of the country of
registration, has found that among other well-known trademarks Lacoste is the subject of
conflicting claims. For this reason, applications for its registration must be rejected or refused,
pursuant to the treaty obligation of the Philippines.
 ANGELITA MANZANO,
petitioner, vs
. COURT OF APPEALS, and MELECIA MADOLARIA, asAssignor to NEW UNITED
FOUNDRY MANUFACTURING CORPORATION,
respondents
.
FACTS:

The petitioner filed an action for the cancellation of Letters of Patent covering a gasburner
registered in the name of responded Melecia Madolaria who subsequently assigned theletter
of patent to United Foundry. Petitioner alleged that the private respondent was not
theoriginal, true and actual inventor nor did she derive her rights from the original, true
and actualinventor of the utility model covered by the letter of patent; further alleged that the
utilitymodel covered by the subject letter of patent had been known or used by others in
thePhilippines for than one (1) year before she filed her application for letter of patent on
Dec1979. For failure to present substantive proof of her allegations, the lower court and Court
of Appeals denied the action for cancellation. Hence, the present petition.

ISSUE:
Whether or not the respondent court wrongfully denied the cancellation of letter of patent
registered under the private respondent.

HELD:
No. The issuance of such patent creates a presumption which yields only to clear andcogent
evidence that the patentee was the original and first inventor. The burden of provingwant of
novelty is on him who avers it and the burden is a heavy one which is met only by clearand
satisfactory proof which overcomes every reasonable doubt. Clearly enough,
the petitionerfailed to present clear and satisfactory proof to overcome every reasonable
doubt to afford thecancellation of the patent to the private respondent.
 Creser Precision Systems Inc. v CA and Floro International Co. GR NO. 118708, February 2, 1998

Facts:

Respondent was granted by the Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) a Letter of patent for its aerial fuze on January 23, 1990. Sometime in 1993,
respondent discovered that the petitioner submitted samples of its patented aerial fuze to the
AFP for testing claiming to be his own. To protect its right, respondent sent letter of warning
to petitioner on a possible court action should it proceed its testing by the AFP. In response
the petitioner filed a complaint for injunction and damages arising from alleged infringement
before the RTC asserting that it is the true and actual inventor of the aerial fuze which it
developed on 1981 under the Self Reliance Defense Posture Program of the AFP. It has been
supplying the military of the aerial fuze since then and that the fuze of the respondent is
similar as that of the petitioner. Petitioner prayed for restraining order and injunction from
marketing, manufacturing and profiting from the said invention by the respondent. The trial
court ruled in favor of the petitioner citing the fact that it was the first to develop the aerial
fuze since 1981 thsu it concludes that it is the petitioners aerial fuze that was copied by the
respondent. Moreover, the claim of respondent is solely based on its letter of patent which
validity is being questioned. On appeal, respondent argued that the petitioner has no cause of
action since he has no right to assert there being no patent issued to his aerial fuze. The Court
of Appeals reversed the decision of the trial court dismissing the complaint of the petitioner.
It was the contention of the petitioner that it can file under Section 42 of the Patent Law an
action for infringement not as a patentee but as an entity in possession of a right, title or
interest to the patented invention. It theorizes that while the absence of a patent prevents one
from lawfully suing another for infringement of said patent, such absence does not bar the
true and actual inventor of the patented invention from suing another in the same nature as a
civil action for infringement.
Issue:

Whether or not the petitioner has the right to assail the validity of the patented work of the
respondent?

Ruling:

The court finds the argument of the petitioner untenable. Section 42 of the Law on Patent (RA
165) provides that only the patentee or his successors-in-interest may file an action against
infringement. What the law contemplates in the phrase anyone possessing any right, title or
interest in and to the patented invention refers only to the patentees successors-in-interest,
assignees or grantees since the action on patent infringement may be brought only in the
name of the person granted with the patent. There can be no infringement of a patent until a
patent has been issued since the right one has over the invention covered by the patent arises
from the grant of the patent alone. Therefore, a person who has not been granted letter of
patent over an invention has not acquired right or title over the invention and thus has no
cause of action for infringement. Petitioner admitted to have no patent over his
invention. Respondents aerial fuze is covered by letter of patent issued by the Bureau of
Patents thus it has in his favor not only the presumption of validity of its patent but that of a
legal and factual first and true inventor of the invention.
KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING, owned and managed by GEMMA
DEMORAL-SAVAGE vs. JUDGE APRONIANO B. TAYPIN, Presiding Judge, RTC-BR. 12, Cebu City,
CEBU PROVINCIAL PROSECUTOR'S OFFICE, NATIONAL BUREAU OF INVESTIGATION,
Region VII, Cebu City, JUANITA NG MENDOZA, MENDCO DEVELOPMENT CORPORATION,
ALFREDO SABJON and DANTE SOSMEA

FACTS:

Petitioners Savage, seek to nullify the search warrant issued by respondent Judge Aproniano
B. Taypin of the Regional Trial Court, Br. 12 Cebu City, which resulted in the seizure of
certain pieces of wrought iron furniture from the factory of petitioners located in Biasong,
Talisay, Cebu.

The complaint was lodged by private respondent Eric Ng Mendoza, president and general
manager of Mendco Development Corporation (MENDCO), alleging that Savages products
are the object of unfair competition involving design patents, punishable under Art. 189 of the
Revised Penal Code as amended. Savage contends however, that there was no existence of
offense leading to the issuance of a search warrant and eventual seizure of its products.

ISSUE:

Whether or not unfair competition involving design patents are punishable under Article 189
of the Revised Penal Code.

HELD:

To provide a clear view, the Intellectual Property Code took effect on January 1, 1998. The repealing clause of
the IPC provides that Articles 188 and 189 of the Revised Penal Code (RPC), Presidential Decree No. 49, are
hereby repealed The issue involving the existence of "unfair competition" as a felony involving design
patents, referred to in Art. 189 of the Revised Penal Code, has been rendered moot and academic by the
repeal of the article. Hence, the search warrant cannot even be issued by virtue of a possible violation of the
IPR Code.

There is no mention of any crime of "unfair competition" involving design patents in the
controlling provisions on Unfair Competition of the RPC. It is therefore unclear whether the
crime exists at all, for the enactment of RA 8293 did not result in the reenactment of Art. 189
of the Revised Penal Code.

The court is are prevented from applying these principles, along with the new provisions on
Unfair Competition found in the IPR Code, to the alleged acts of the petitioners, for such acts
constitute patent infringement as defined by the same Code
Although the case traces its origins to the year 1997 or before the enactment of the IPR Code,
Article 22 of the Revised Penal Code provides that penal laws shall be applied
retrospectively, if such application would be beneficial to the accused. Since the IPR Code
effectively obliterates the possibility of any criminal liability attaching to the acts alleged, then
RPC provisions must be applied.