You are on page 1of 11

Birkenstock Orthopaedie GMBH and Co. KG (formerly Birkenstock Orthopaedie GMBH) vs.

Philippine Stock Expo Marketing Corporation


15 SCRA 469

FACTS: Petitioner Birkenstock applied for various trademark registrations before the Intellectual
Property Office (IPO). However, the applications were suspended in view of the existing
registration of the mark “BIRKENSTOCK AND DEVICE” under Registration No. 56334 in the name
of Shoe Town International and Industrial Corporation, the predecessor-in-interest of respondent
Philippine Shoe Expo Marketing Corporation. Petitioner filed a petition for cancellation of
Registration No. 564334 on the ground that it is the lawful and rightful owner of the Birkenstock
marks. During its pendency, however, respondent failed to file the required 10th Year Declaration
of Actual Use thereby resulting the cancellation of such mark. The aforesaid cancellation paved
the way for the publication of the subject applications in the IPO. In response, respondent filed
with the Bureau of Legal Affairs (BLA) of the IPO three separate verified notices of opposition to
the subject applications docketed as Inter Partes Cases claiming, among others, it, together with
its predecessor-in-interest, has been using the Birkenstock marks in the Philippines for more than
16 years through the mark “BIRKENSTOCK AND DEVICE”. In its Decision, the BLA of the IPO
sustained respondent’s opposition, thus ordering the rejection of the subject applications.
Aggrieved, petitioner appealed to the IPO Director General held that with the cancellation of
registration no. 56334 for respondents failure to file the 10th Year Declaration of Actual Use, there
is no more reason to reject the subject applications on the ground of prior registration by another
proprietor, whereby in its decision, the latter reversed and set aside the ruling of the BLA thus
allowing the registration of the subject applications. Respondent filed a petition for review with
the Court of Appeals. In its decision, the CA reversed and set aside the ruling of the IPO Director
General and reinstated that of the BLA. The petitioner filed a Motion for Reconsideration but
was denied by the CA. Hence, this petition to the Supreme Court.

ISSUE: Whether or not the subject marks should be allowed registration in the name of the
petitioner?

HELD: The court ruled in favour of the petitioner. Respondent is deemed to have abandoned the
mark. As a consequence of the respondent’s failure to file the 10th Year Declaration of Actual Use,
it was deemed to have abandoned or withdrawn any right or interest over the mark
“BIRKENSTOCK”. It must be emphasized that registration of a trademark, by itself, is not a mode
of acquiring ownership. If the applicant is not the owner of the trademark, he has no right to
apply for its registration. Registration merely creates a prima facie presumption of the validity of
the registration. Such presumption, just like the presumptive regularity in the performance of
official functions, is rebuttable and must give way to evidence to the contrary.
Fredco Manufacturing Corp. vs. Harvard
G.R. No. 185917, June 1, 2011

Facts: Fredco Manufacturing Corporation (Fredco) filed before the Bureau of Legal Affairs of the
Philippine Intellectual Property Office a Petition for Cancellation of Registration No. 56561 issued
to President and Fellows of Harvard College (Harvard University) for the mark “Harvard Veritas
Shield Symbol”. Fredco explained that the mark was first used in the Philippines by its
predecessor-in-interest New York Garments as early as 1982. Although the registration was
cancelled for the non-filing of an affidavit of use/non-use, the right to the mark “Harvard”
remained with its predecessor and now with Fredco. Harvard University, on the other hand
claimed that the name and mark “Harvard” was adopted in 1639 as the name of Harvard College
of Cambridge, Massachusetts, USA. The mark “Harvard” had been used in commerce since
1872. The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Harvard
University’s registration of the mark “Harvard”. On appeal, the Office of the Director General of
the Intellectual Property Office reversed the BLA ruling on the ground that more than the use of
the trademark in the Philippines, the applicant must be the owner of the mark sought to be
registered. Fredco filed a petition for review before the Court of Appeals, however, the Court of
Appeals affirmed the decision of the office of the Director General of the IPO.

Issue: Whether or not Fredco can use “Harvard” as a trademark considering that it used the mark
in the Philippines ahead of the respondent.

Held: No. There is dispute that the mark “Harvard” used by Fredco is the same as the mark
“Harvard” in the “Harvard Veritas Shield Symbol” of Harvard University and it is also unrefuted
that Harvard University has been using the mark “Harvard” in commerce since 1872. Further,
there is no dispute that Harvard University has registered the name and mark “harvard” in at
least 50 countries. Under Section 2 of Republic Act No. 166, as amended (R.A. No. 166), before a
trademark can be registered, it must have been actually used in commerce for not less than two
months in the Philippines prior to the filing of an application for its registration. 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 of the mark "Harvard Veritas Shield Symbol" before its application for
registration of the mark "Harvard" with the then Philippine Patents Office. However, Harvard
University's registration of the name "Harvard" is based on home registration which is allowed
under Section 37 of R.A. No. 166.
Ana Ang vs. Toribio Teodoro
G.R. No. L-48226, December 14, 1942

Facts: Respondent Toribio Teodoro has continuously used "Ang Tibay," both as a trade-mark and
as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910.
On September 29, 1915, he formally registered it as trade-mark and as trade-name on January 3,
1933. Petitioner Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on
April 11, 1932, and established a factory for the manufacture of said articles in the year 1937.
This was brought to the attention of the appellee and the latter eventually brought the present
suit. The Court absolved the defendant (Ms. Ang) on the grounds that the two trademarks are
dissimilar and are used on different and non-competing goods; that there had been no exclusive
use of the trade-mark by the plaintiff; and that there had been no fraud in the use of the said
trade-mark by the defendant because the goods on which it is used are essentially different from
those of the plaintiff. The Court of Appeals reversed that judgment, holding that by uninterrupted
and exclusive use since 1910 in the manufacture of slippers and shoes, respondent’s trade-mark
has acquired a secondary meaning; that the goods or arcticles on which the two trade-marks are
used are similar or belong to the same class; and that the use by the petitioner of said trade-mark
constitute a violation of Section 3 and 7 of Act No. 666. Petitioner contends that the phrase "Ang
Tibay" as employed by the respondent on the articles manufactured by him is a descriptive term
because, "freely translate in English," it means "strong, durable, lasting." He invokes section 2 of
Act No. 666, which provides that words or devices which related only to the name, quality, or
description of the merchandise cannot be the subject of a trade-mark. Respondent contend that
the words "Ang Tibay" are not descriptive but merely suggestive and may properly be regarded
as fanciful or arbitrary in the legal sense.

Issue: Whether Ana Ang can register the Trademark “Ang Tibay” for her products pants and
shirts.

Held: No. The court ruled that “Ang Tibay” is not a descriptive term within the meaning of the
Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be
appropriated as a trade-ark or trade-name.
McDonald’s Corporation vs. L.C. Big Mak Burger, Inc.
G.R.No. 143993, August 18, 2004

Factts: Petitioner McDonald’s Corporation (“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” mark in
the Principal Registrar based on its Home Registration in the United States. 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. Petitioner opposed on the ground that ‘Big Mak’ was a colorable
imitation of its registered ‘Big Mac’ mark for the same food products and informed LC Big Mak
chairman of its exclusive right to the "Big Mac" mark. Respondents claimed that McDonald’s does
not have an exclusive right to the “Big Mac” mark because the word ‘Big’ is a generic and
descriptive term.

Issue: W/N respondent corporation is liable for trademark infringement and unfair competition.

Held: Yes. A mark is valid if it is “distinctive” and thus not barred from registration under Section
4 of RA 166. However, once registered, not only the mark’s validity but also the registrant’s
ownership of the mark is prima facie presumed. 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. Respondents' use of the "Big Mak"
mark results in likelihood of confusion.
McDonald’s Corp. vs. McJoy Fastfood Corp.,
G.R. No. 166115, February 2, 2007

Facts: In 1991, respondent MacJoy Fastfood Corporatio engaged in the sale of fast food products
in Cebu City, filed its application for the registration of trademark “MACJOY & DEVICE” before
the Intellectual Property Office (IPO). McDonald’s opposed the respondents application as it
claims that the trademark “MACJOY & DEVICES” closely resembles its 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 McDonald’s restaurant services and food products, thus,
constituting a fraud upon the general public and further cause the dilution of the distinctiveness
of McDonald’s registered and internationally recognized McDonald’S marks to its prejudice and
irreparable damage. Respondent denied the allegations of the petitioner but the IPO ruled in
favour of the petitioner stating that the prefixes “Mac/Mc” in both the “MACJOY” and the
“MCDONALDS” marks lead to the conclusion that there is confusing similarity between them
especially since both are used on almost the same products. MacJoy appealed before the Court
of Appeals. Finding no confusing similarity between the marks “MACJOY” and “MCDONALD’S”,
and the latter reversed and set aside the appealed decision of the IPO.

Issue: Whether respondent’s “MacJoy & Device” mark is confusingly similar to petitioner’s
“McDonald’s” marks.

Held: Yes. Applying the dominancy test to the instant case, the Court ruled that “McDonald’s”
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 MCDONALD’S
marks which all use the prefixes Mc and/or Mac. Besides and most importantly, both trademarks
are used in the sale of fastfood products.
Skechers, U.S.A., Inc., vs. Inter Pacific Industrial Trading Corp.,
G.R. No. 164321, March 23, 2011

Facts: Petitioner Skecher U.S.A filed an application for the issuance of search warrants against an
outlet and warehouse operated by respondents for infringement of trademark. In the course of
its business, petitioner has registered the trademark "SKECHERS" and the trademark "S" (within
an oval design) with the Intellectual Property Office (IPO). Two search warrants5 were issued by
the RTC and were served on the premises of respondent Inter Pacific Industrial Trading Corp. As
a result of the raid, more than 6,000 pairs of shoes bearing the "S" logo were seized. Later,
respondents moved to quash the search warrants, arguing that there was no confusing similarity
between petitioner’s "Skechers" rubber shoes and its "Strong" rubber shoes. RTC granted the
motion and quashed the search warrants. The RTC agreed with respondent’s view that Skechers
rubber shoes and Strong rubber shoes have glaring differences such that an ordinary prudent
purchaser would not likely be misled or confused in purchasing the wrong article. Petitioner filed
a petition for certiorari with the CA which affirmed the decision of the RTC.
Issue: Whether or not respondent is guilty of trademark infringement.

Held: Yes. 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 petitioner’s stylized "S" is within an oval
design, to this Court’s 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 petitioner’s trademark, already constitutes infringement under the
Dominancy Test.
Asia Brewery, Inc. vs. CA and San Miguel Corporation
G.R. No. 103543, July 5, 1993

Facts: San Miguel Corporation (SMC) filed a complaint against Asia Brewery Inc. (ABI) for
infringement of trademark and unfair competition on account of the latter's BEER PALE PILSEN
or BEER NA BEER product which has been competing with SMC's SAN MIGUEL PALE PILSEN for a
share of the local beer market. The trial court dismissed SMC's complaint because ABI "has not
committed trademark infringement or unfair competition against" SMC. On appeal by SMC, the
Court of Appeals reversed the decision rendered by the trial court, finding the defendant Asia
Brewery Incorporated GUILTY of infringement of trademark and unfair competition. ABI then
filed a petition for certiorari.

Issue: Whether ABI’s Beer Pale Pilsen infringes SMC’s San Miguel Pale Pilsen with Rectangular
Malt and Hops Design.

Held: No. There is absolutely no similarity in the dominant features of both trademarks.
Infringement is determined by the “test of dominancy” rather than by differences or variations
in the details of one trademark and of another. There is hardly any dispute that the dominant
feature of SMC’s trademark is the name of the product: SAN MIGUEL PALE PILSEN, written in
white Gothic letters with elaborate serifs at the beginning and end of the letters “S” and “M” on
an amber background across the upper portion of the rectangular design. On the other hand, the
dominant feature of ABI’s trademark is the name: BEER PALE PILSEN, with the word “Beer”
written in large amber letters, larger than any of the letters found in the SMC label. The trial court
perceptively observed that the word “BEER” does not appear in SMC’s trademark, just as the
words “SAN MIGUEL” do not appear in ABI’s trademark. Hence, there is absolutely no similarity
in the dominant features of both trademarks. Neither in sound, spelling or appearance can BEER
PALE PILSEN be said to be confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases
BEER PALE PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence
whatsoever was presented by SMC proving otherwise.
Prosource International, Inc. vs. Horphag Research Management SA.
G.R. No. 180073, November 25, 2009

Facts: Respondent Hrophag Research Management SA is a corporation and owner of trademark


PYCNOGENOL, a food supplement sold and distributed by Zuellig Pharma Corporation.
Respondent later discovered that petitioner Prosource International, Inc. 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. Without notifying the
respondent, petitioner discontinued the use of, and withdrew from the market, the products
under the name PCO-GENOLS. 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 with respondent’s trademark PYCNOGENOL. Petitioner contended among
others that the two marks were not confusingly similar and it denied liability since it discontinued
the use of the mark prior to the institution of the infringement case. Petitioner prayed for the
dismissal of the complaint and by way of counterclaim, prayed that respondent be directed to
pay exemplary damages and attorney’s fees. 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. Petitioner was made to answer for attorney’s fees. 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 petitioner’s use of PCO-GENOLS infringed the respondent’s PYCNOGENOL.

Held: YES. When the two words are pronounced, the sound effects are confusingly similar. The
trial and appellate courts applied the Dominancy Test in determining whether there was a
confusing similarity between the two marks. The trial court found and the Ca affirmed that 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.
Del Monte Corporation vs. Court of Appeals
G.R. No. L-78325, January 25, 1990

Facts: Petitioner Del Monte Corporation is a foreign company not engaged in business in the
Philippines. Petitioner granted Philippines Packing Corp. (Philpack) the right to manufacture,
distribute and sell in the Philippines various products including catsup under the Del Monte
trademark and logo 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 Monte’s 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 RTC dismissed and held among other reasons
that complainants failed to establish the defendant’s malice or bad faith, which was an essential
element of infringement of trademark or unfair competition. The decision was affirmed by CA,
holding that there were substantial differences between the 2 marks.

Issue: Whether the logo of Sunshine cause confusion to the buying public.

Held: Yes. 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. The ordinary buyer does not usually make such scrutiny nor does he usually have
the time to do so. A number of courts have held that to determine whether a trademark has been
infringed, we must consider the mark as a whole and not as dissected. 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.
Fruit of the Loom, Inc. vs. Court of Appeals and General Garments Corp.
G.R. No. L- 32747, November 29, 2004

Facts: Petitioner Fruit of the Loom, an American corporation, is the registrant of the trademark
‘Fruit of the Loom’ covering goods such as underwear and other textile fabrics. Respondent
General Garments on the other hand, is a domestic corporation and a registrant of the trademark
‘Fruit for Eve’ covering garments similar to petitioner’s products. Petitioner filed before the lower
court, a complaint for infringement of trademark and unfair competition against respondent.
Petitioner alleged that respondent’s trademark FRUIT FOR EVE is confusingly similar to its
trademark FRUIT OF THE LOOM used also to underwears and textile products. Furthermore, it
was also alleged that the color get-up and appearance of respondents hang tag is colourable
imitation to the hang tag of petitioner.

Issue: Whether respondent’s FRUIT OF THE EVE is confusingly similar with the petitioner’s FRUIT
OF THE LOOM.

Held: NO. 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. The
court have examined the two trademarks as they appear in the hang tags submitted by the
parties and were impressed more by the dissimilarities than by the similarities appearing therein.
The court held that the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble
each other as to confuse or deceive an ordinary purchaser.
Berries Agricultural Co., Inc. vs. Norvy Abyadang,
G.R. No. 183404, October 13, 2010

Facts: Respondent Norvy A. Abyadang (Abyadang), proprietor of NS Northern OrganicFertilizer


filed with the Intellectual Property Office (IPO) a trademark application for the mark “NS D-10
PLUS” for use in connection with Fungicide (Class 5) with active ingredient 80% Mancozeb. he
application was given due course and was published in the IPO e-Gazette for opposition.
Subsequently, petitioner Berris Agricultural Co., Inc. (Berris) filed with the IPO Bureau of Legal
Affairs (IPO-BLA) a Verified Notice of Opposition against the mark under application allegedly
because “NS D-10 PLUS” is similar and/or confusingly similar to its registered trademark “D-10
80 WP,” also used for Fungicide (Class 5) with active ingredient 80% Mancozeb.
Director Estrellita Beltran-Abelardo (Director Abelardo) of the IPO-BLA issued a decision holding
that NS D-10 Plus os confusingly similar to D-10 Wp. Abyadang filed a motion for reconsideration
but Director Abelardo denied such motion. Aggrieved, Abyadang filed an appeal with the Office
of the Director General, Intellectual Property Philippines (IPPDG) but Director General rendered
a decision denying the appeal and affirming the appealed decision of the Director
Abelardo. Undeterred, Abyadang filed a petition for review before the CA. In its decision, the CA
reversed the IPPDG decision.

Issue: Whether respondent’s NS D-10 Plus is confusingly similar with petitioner’s D-10 80 WP.

Held: Comparing Berris mark D-10 80 WP with Abyadangs mark NS D-10 PLUS, as appearing on
their respective packages, one cannot but notice that both have a common component which is
D-10. On Berris package, the D-10 is written with a bigger font than the 80 WP. Admittedly, the
D-10 is the dominant feature of the mark. The D-10, being at the beginning of the mark, is what
is most remembered of it. Although, it appears in Berris certificate of registration in the same
font size as the 80 WP, its dominancy in the D-10 80 WP mark stands since the difference in the
form does not alter its distinctive character. Applying the Dominancy Test, it cannot be gainsaid
that Abyadangs NS D-10 PLUS is similar to Berris D-10 80 WP, that confusion or mistake is more
likely to occur. Undeniably, both marks pertain to the same type of goods fungicide with 80%
Mancozeb as an active ingredient and used for the same group of fruits, crops, vegetables, and
ornamental plants, using the same dosage and manner of application. They also belong to the
same classification of goods under R.A. No. 8293. Both depictions of D-10, as found in both marks,
are similar in size, such that this portion is what catches the eye of the purchaser. Undeniably,
the likelihood of confusion is present.