G.R. No.

166115 February 2, 2007

McDONALDS CORPORATION, Petitioner,
vs.
MACJOY FASTFOOD CORPORATION, Respondent.

FACTS:
MacJoy Fastfood Corp. is a corporation in the sale of fastfood based in Cebu filed with IPO for the
registration of their name.

McDonald's Corporation filed an opposition to the application. McDonald's claims that their logo and use
of their name would falsely tend to suggest a connection with MacJoy's services and food products, thus,
constituting a fraud upon the general public and further cause the dilution of the distinctiveness of
petitioners registered and internationally recognized MCDONALDS marks to its prejudice and
irreparable damage.

Respondent averred that MACJOY has been used for the past many years in good faith and has spent
considerable sums of money for said mark.

The IPO held that there is confusing similarity The CA held otherwise stating there are
predominant difference like the spelling, the font and color of the trademark and the picture of the logo.

ISSUE: Whether the ruling of the CA is correct.

RULING:

No. Jurisprudence developed two tests, the dominancy and holistic test. The dominancy test focuses on
the similarity of the prevalent features of the competing trademarks that might cause confusion or
deception while the holistic test requires the court to consider the entirety of the marks as applied to the
products, including the labels and packaging, in determining confusing similarity. Under the latter test, a
comparison of the words is not the only determinant factor.

The IPO, though they correctly used the dominancy, they should have taken more considerations. In recent
cases, the SC has consistently used and applied the dominancy test in determining confusing similarity or
likelihood of confusion between competing trademarks. The CA, while seemingly applying the
dominancy test, in fact actually applied the holistic test.

Applying the dominancy test to the instant case, the Court both marks are confusingly similar with each
other such that an ordinary purchaser can conclude an association or relation between the marks. The
predominant features such as the "M," "Mc," and "Mac" appearing in both easily attract the attention of
would-be customers. Most importantly, both trademarks are used in the sale of fastfood products.

Petitioner has the right of ownership in the said marks. Petitioner's mark was registered in 1977 while
respondent only in 199
G.R. No. 179127 December 24, 2008
IN-N-OUT BURGER INC., Petitioner,
vs.

INC VS SEHWANI, Respondent.

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 isengaged mainly in the restaurant business, but it has never engaged in business in the Philippines.
Respondents Sehwani, Incorporatedand 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 administrativecomplaint against respondents for unfair competition and cancellation of
trademark registration. Respondents asserted therein that theyhad been using the mark "IN N OUT" in the Philippines since
15 October 1982. Respondent then filed with the BPTTT an application for theregistration 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 itstradename 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
competitionon 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 theregular 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.
Issue:
(1) Whether the IPO (administrative bodies) have jurisdiction to cases involving unfair competition(2) Whether
respondent Sehwani is liable of unfair competition

Held:
(1) Yes. Sec. 160 and 170, which are found under Part III of the IP Code, recognize the concurrent jurisdiction of civil
courts and theIPO over unfair competition cases. Therefore, the IPO Director of Legal Affairs have jurisdiction to decide the
petitioner's administrativecase 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.
N.B. The essential elements of an action for unfair competition are 1) confusing similarity in the general appearance of the
goods and (2) intentto deceive the public and defraud a competitor
G.R. No. 111580, June 21, 2001
Shangri-La International Hotel Management, Petitioner,
vs.

CA, Respondent.

Facts:
On June 21, 1988, the Shangri-La International Hotel Management filed with theBureau of Patents, Trademarks and
Technology Transfer (BPTTT) a petition praying for the cancellation of the registration of the "Shangri-La" mark
and "S" device/logo issued to the Developers Group of Companies, Inc., on the ground that the same was
illegally and fraudulently obtained and appropriated for the latter's restaurant business. The
Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo; that it
has been using the said mark and logo for its corporate affairs and business since March
1962 and caused the same to be specially designed for their international hotels in 1975,
much earlier than the alleged first use thereof by the
Developers Group in 1982.It also filed with the BPTTT its own applicat
i o n f o r registration of the subject mark and logo. The Developers Group filed an opposition to the
application, which was docketed as Inter Partes Case No. 3529. Almost 3 years later, or on April
15, 1991, the Developers Group instituted with the RTC of Quezon City a complaint for infringmenent and damages with
prayer for injunction.
On January 8, 1992, the ShangriLa Group moved for the suspension of t
h e proceedings in the infringement case on account of the pendency of the administrative proceedings before
the BPTTT.

This was denied by the trial court in a Resolution issued on January 16, 1992.

Issue:
Whether, despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT (now the Bureau of
Legal Affairs, Intellectual Property Office) by one party, the adverse party can file a subsequent action for
infringement with the regular courts of justice in connection with the same registered mark.

Held:
Section 151.2 of Republic Act No. 8293, otherwise known as the Intellectual Property Code,
provides, as follows Section 151.2. Notwithstanding the foregoing provisions, the court or the
administrative agency vested with jurisdiction to hear and adjudicate any action to enforce
the rights to a registered mark shall likewise
exercise jurisdiction to determine whether the registration of said mark may becancelled in
accordance with this Act. The filing of a suit to enforce the registered mark with the proper
court or agency shall exclude any other court or agency from assuming jurisdiction over a subsequently filed
petition to cancel the same mark.
On the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall
not constitute prejudicial question that must be resolved before an action to enforce the rights to same
registered mark may be decided. Similarly, Rule 8, Section 7, of the Regulations on Inter Partes Proceedings, provides
to wit Section 7.
Effect of filing of a suit before the Bureau or with the proper court .- The filing of a suit to enforce the
registered mark with the proper court or Bureau shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel the same mark.
On the other hand, the earlier filing of petition to cancel the mark with the
Bureau s h a l l n o t c o n s t i t u t e a p r e j u d i c i a l q u e s t i o n t h a t m u s t b e r e s o l v e d b
efore an action to enforce the rights to same registered mark may be decided.
Hence, as applied in the case at bar, the earlier institution of an Inter Partes case by the Shangri-La Group for the cancellation
of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot effectively bar the subsequent
filing of an infringement case by registrant Developers Group. The law and the rules are explicit. The rationale
is plain: Certificate of Registration No. 31904, upon which the infringement case is based, remains valid and
subsisting for as long as it has not been cancelled by the Bureau or by an infringement court. As
such, Developers Group's Certificate of Registration in the principal register continues as "prima
facie evidence of the validity
of t h e r e g i s t r a t i o n , t h e r e g i s t r a n t ' s o w n e r s h i p o f t h e m a r k o r t r a d e -
n a m e , a n d o f t h e registrant's exclusive right to use the same in connection with the goods,
businessor services specified in the certificate." Since the certificate still subsists, Develope
rsGroup may thus file a corresponding infringement suit and recover damages from any person who infringes
upon the former's rights.
GR 63796-97, 21 May 1984
La Chemise Lacoste, Petitioner

Vs.

Fernandez, Respondent.

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.
G.R. No. 100098, December 29, 1995
Emerald Garment Manufacturing Corporation, Petitioner
Vs.
Hon. Court Of Appeals, Bureau of Patents, Trademarks And Technology Transfer And H.D. Lee
Company, Inc., Respondent.

Facts:
On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents,
Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for
the trademark "STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits,
dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner
Emerald Garment Manufacturing Corporation.

Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as
previously registered and used in the Philippines cause confusion, mistake and deception on the part of
the purchasing public as to the origin of the goods.

On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for
cancellation and opposition to registration. The Director of Patents, using the test of dominancy,
declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is
the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods
originated from the same manufacturer. It is undeniably the dominant feature of the mark.

Issue:
Whether or not a trademark causes confusion and is likely to deceive the public is a question of
fact which is to be resolved by applying the "test of dominancy", meaning, if the competing trademark
contains the main or essential or dominant features of another by reason of which confusion and deception
are likely to result.

Held:
The word "LEE" is the most prominent and distinctive feature of the appellant's trademark and all
of the appellee's "LEE" trademarks. It is the mark which draws the attention of the buyer and leads him to
conclude that the goods originated from the same manufacturer. The alleged difference is too insubstantial
to be noticeable. The likelihood of confusion is further made more probable by the fact that both parties
are engaged in the same line of business.

Although the Court decided in favor of the respondent, the appellee has sufficiently established its
right to prior use and registration of the trademark "LEE" in the Philippines and is thus entitled to
protection from any infringement upon the same. The dissenting opinion of Justice Padilla is more
acceptable
 ARELLANO UNIVERSITY SCHOOL OF LAW

CASE DIGESTS IN INTELLECTUAL PROPERTY

LAW

Submitted to:
Atty. Arnaldo Espinas

Submitted by:
Sheila Mae S. Arnado
2016-0425