LIP DOCTRINES FINALS

Colorable Imitation of a Registered Mark

• McDonald’s vs. LC Big Mak Burger

Doctrine: 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.

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.

• McDonalds vs. MacJoy

Doctrine: 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.

Confusion in Trademark Infringement

• Sketchers vs. inter pacific industrial trading corp

Doctrine: Respondent is guilty of trademark infringement applying the dominancy
test. Applying the Dominancy Test to the case at bar, this Court finds that the use of
the stylized S by respondent in its Strong rubber shoes infringes on the mark
already registered by petitioner with the IPO. While it is undisputed that petitioners
stylized S is within an oval design, to this Courts mind, the dominant feature of the
trademark is the stylized S, as it is precisely the stylized S which catches the eye of
the purchaser. Thus, even if respondent did not use an oval design, the mere fact
that it used the same stylized S, the same being the dominant feature of petitioners
trademark, already constitutes infringement under the Dominancy Test.

Respondent’s shoe may not be an exact replica of petitioner’s shoe, but the features
and overall design are so similar and alike that confusion is highly likely.

Dominancy Test

• Asia Brewery vs. Ca and San Miguel

Doctrine: the names of the competing products are clearly different and their
respective sources are prominently printed on the label and on other parts of the
bottle, mere similarity in the shape and size of the container and label, does not
constitute unfair competition. The steinie bottle is a standard bottle for beer and is
universally used. SMC did not invent it nor patent it.

• Prosource international vs. Horphag Research Management

Doctrine: 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.

Holistic Test

• Del Monte vs. Ca

Doctrine: It has been correctly held that side-by-side comparison is not the final test
of similarity. Such comparison requires a careful scrutiny to determine in what
points the labels of the products differ, as was done by the trial judge. The ordinary
buyer does not usually make such scrutiny nor does he usually have the time to do
so. The average shopper is usually in a hurry and does not inspect every product on
the shelf as if he were browsing in a library. Where the housewife has to return
home as soon as possible to her baby or the working woman has to make quick
purchases during her off hours, she is apt to be confused by similar labels even if
they do have minute differences. The male shopper is worse as he usually does not
bother about such distinctions.
The question is not whether the two articles are distinguishable by their label when
set side by side but whether the general confusion made by the article upon the eye
of the casual purchaser who is unsuspicious and off his guard, is such as to likely
result in his confounding it with the original.

• Fruit of the Loom vs. Ca

Doctrine: The SC stated that the there is no confusing similarity which would
deceive buyers. The SC declared that the word Fruit in both goods is not enough to
show that buyers will get confused over such. It was not the dominant feature of
both products.

In relation to the hang tags, the SC did find similarities but the differences were
more glaring and striking, The similarities of the competing trademarks in this case
are completely lost in the substantial differences in the design and general
appearance of their respective hang tags

Use of both tests

• Berries Agricultural vs. Norvy abyadang

Doctrine: 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'.

• Fredco vs. Harvard

Harvard university is entitled to protection in the ph of its trade name harvard even
without registration of such trade name in the ph under art 8 of the paris
convention.

• Rolex vs. Daway

Well known mark registered in the ph extends to non-related goods

• Ecole vs. Cointreau

foreign marks which are not registered are still accorded protection under the Paris
Convention
Ra 8293 has dispensed with the requirement of prior actual use at the time of
registration.

Cointreau has been using the subject mark in france since 1985,Prior to ecole’s
averred first use of the same in the ph in 1948 of which the latter was fully aware
thereof. Ecoles directress had trained in cointreaus culinary school
• Lyceum vs. Ca
Lyceum is as generic in character as the word university. Lyceum refers to a school
or an institution of learning. Lyceum cannot compel other universities from using
the word lyceum

• Asia brewery vs. Smb

Pale pilsen is a descriptive term. A word or a combination of words 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 others

• Shang properties realty corp vs. St francis development corp

• St francis is a descriptive geographical descriptive term. Element of fraud is
wanting; hence, no unfair competition.
• Descriptive geographical terms are in the public domain in the sense that
every seller should have rhe right to inform customers of the geographical origin of
his goods.

Dermaline vs Myra

Roma Drug

Prosource vs Horphag

Levi Strauss Vs Clinton Apparel

Pearl and Dean vs SM

 Actual light boxes are not protected by the copyright over the drawings.
 Copyright over Drawings will not extend to the actual object.

Joaquin vs Drilon
 The format or mechanics of a television shows is not included in the list of
protected works in PD No. 49. Being a statutory grant, the rights are only
such as the statute confers.

ABS vs. PMSI

 Copyright is not absolute, Must-Carry rule is a limitation of copyright. Author
or creator enjoys no more rights than are consistent with public welfare.

Habana vs Robles and Goodwill Trading

 In determining the question of infringement, the amount of matter copied
from the copyrighted work is an important consideration. To constitute
infringement, it is not necessary that the whole or even a large portion of the
work shall have been copied. If so much is taken that the value of the original
is sensibly diminished, or the labors of the original author are substantially
 and to an injurious extent appropriated by another, that is sufficient in point
of law to constitute piracy.
 The act of lifting from the book substantial portions of discussions and
examples, and failure to acknowledge the same in the book is an
infringement of copyright.

NBI-Microsoft Corp vs. Hwang

 The gravamen of copyright infringement is the unauthorized performance of
any acts covered by Section 5 of PD 49. Hence, any person who performs any
of the acts under section 5 without obtaining the copyright owner’s prior
consent renders himself civilly an criminally liable for copyright
infringement.