ASIA BREWERY VS.

COURT OF APPEALS
AND SAN MIGUEL CORP.

FACTS:
San Miguel Corp. (SMC) filed a complaint against Asia Brewery Inc.
(ABI) for infringement of trademark and unfair competition. RTC
dismissed the complaint finding that ABI has not committed
trademark infringement or unfair competition. The CA reversed the
decision finding that ABI is guilty of trademark infringement and
unfair competition thus the case at bar.

ISSUE:

Whether or not ABI infringes SMC’s trademark and as such

constitutes unfair competition

HELD:

NO, Infringement is determined by a test of dominancy. If the

competing trademark contains the main or essential or dominant
features of another and confusion and deception is likely to result,
infringement takes place. A closer look at the trademark of both
companies will show that the dominant features of each absolutely
bear no similarity to each other. SMC’s dominant 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 while ABI’s is the
name “Beer Pale Pilsen” with the word Beer written in large amber
letters, larger than any of the letter found in SMC label.
The word “pale pilsen” on ABI’s trademark does not constitute
trademark infringement for it is a generic word descriptive of the
color of a type of beer. No one may appropriate generic or
descriptive words for they belong to the public domain.

ABI is likewise not guilty of unfair competition for unfair

competition is the employment of deception or any other means
contrary to good faith by which a person shall pass off the goods
manufactured by him for those of another who has already
established goodwill for his similar goods. The universal test for
this is whether the public is likely to be deceived. Actual or probable
deception and confusion on the part of the customers by reason of
defendant’s practices must appear. However, this is unlikely to
happen in the case at bar for consumers generally order beer by
brand. Also, the fact that ABI also uses amber-colored steinie
bottles cannot constitute unfair competition for ABI did not copy
SMC’s bottle. SMC did not invent but merely borrowed the steinie
bottle from abroad. Likewise, amber is the most effective color in
preventing transmission of light thus providing maximum
protection to beer. 320 ml is likewise the standard prescribed under
Metrication Circular No. 778. The fact that it is the first to use the
steinie bottle does not give SMC a vested right to use it to the
exclusion of everyone else. Nobody can acquire any exclusive right
to market articles supplying the simple human needs in containers
or wrappers of the general form, size and character commonly and
immediately used in marketing such articles.

There is no confusing similarity between the competing beers

therefore ABI neither infringed SMC’s trademark nor did it commit
unfair competition.
MARVEX COMMERCIAL CO., INC., VS.
PETRA HAWPIA and CO., and THE
DIRECTOR OF PATENTS

FACTS:

Petra Hawpia & Co., a partnership duly organized under the laws
of the Philippines 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. The Marvex Commercial Co., Inc.,
a corporation also duly organized under the laws of the Philippines,
on July 24, 1959 filed an opposition thereto, alleging that the
registration of such trademark would violate its right to and
interest in the trademark "SALONPAS" used on another medicated
plaster, which is registered its name under Certificate of
Registration 5486, issued by the Director of Patents on September
29, 1956, and that both trademarks when used on medicated
plaster would mislead the public as they are confusingly similar.

The Director of Patents dismissed the opposition and gave due

course to the petition, stating in part that "confusion, mistake, or
deception among the purchasers will not likely and reasonably
occur" when both trademarks are applied to medicated plaster.
ISSUES:

(1) Is the applicant the owner of the trademark "LIONPAS"?;

(2) Is the trademark "LIONPAS" confusingly similar to the

trademark "SALONPAS"?

HELD:

Is the applicant the owner of the trademark "LIONPAS?"

On the 1st issue:

The assignment must be in writing, acknowledged before a notary

public or other officer authorized to administer oaths or perform
other notarial acts and certified under the hand and official seal of
the notary or other officer. (Sec. 31, par. 2)

In this case, although a sheet of paper is attached to exh. 6, on

which is typewritten a certification that the signatures of the
presidents of the two named companies (referring to the signatures
in exh. 6) "have been duly written by themselves", this sheet is
unmarked, unpaged, unsigned, undated and unsealed. We
have thumbed the record in quest of any definitive evidence that it
is a correct translation of the Japanese characters found on another
unmarked and unpaged sheet, and have found none.

The documents are legally insufficient to prove that the applicant

is the owner of the trademark in question. As a matter of fact, the
other evidence on record states that the applicant is merely the
"exclusive distributor" in the Philippines of the "LIONPAS"
penetrative plaster; describes the applicant as the "Philippine sole
distributor" of "LIONPAS"; exh. B simply states that "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 2nd issue:

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 (Ethepa vs. Director of Patents, L-20635,
March 31, 1966) 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
especial significance (Co Tiong Sa vs. Director of Patents, 95 Phil.
1 citing Nims, The Law of Unfair Competition and Trademarks, 4th
ed., vol. 2, pp. 678-679). "The importance of this rule is
emphasized by the increase of radio advertising in which we are
deprived of help of our eyes and must depend entirely on the ear"
(Operators, Inc. vs. Director of Patents, supra).

In 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 (see
Celanese Corporation of America vs. E. I. Du Pont, 154 F. 2d. 146,
148).

The registration of "LIONPAS" cannot therefore be given due

course.

Decision of the respondent Director of Patents is set aside, and the

petition of the respondent Petra Hawpia & Co. is hereby dismissed.
MAGDANGAL, LEONARD C.
INTELLECTUAL PROPERTY LAW

CASE DIGESTS:

1. ASIA BREWERY VS. COURT OF

APPEALS AND SAN MIGUEL CORP.

2. MARVEX COMMERCIAL CO., INC.,

VS. PETRA HAWPIA and CO., and THE
DIRECTOR OF PATENTS