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CONTRA: Philip Morris, Inc. vs. CA GR No. 91332, 16 July 1993 .............. 47
Table of Contents
What are Trademarks? (Sec 121, IPC)................................................................... 2 Cluster 5.................................................................................................................... 52
How are Trademarks being distinguished from Tradenames/Business names, Customary / Usual signs, Sec 123.1 (i) ................................................................ 52
and Collective marks? (Sec. 121.1, 121.2, 121.3, 165, and 167, IPC) ............... 2 Marks that acquired Secondary Meanings, Sec. 123.2 in relation to Sec. 123.1
Canon Kabushiki Kaisha vs. CA, GR No. 120900, July 20, 2000 .................. 2 (j-l).............................................................................................................................. 52
What are the purposes of Trademarks? ................................................................. 4 Ang vs. Teodoro GR No. L-48226, 14 December 1942 (SUPRA).............. 52
Etepha vs. Director of Patents, GR. No L-20635 March 31, 1966 ................. 4 Ong Ai Gui vs. Director of Patent, GR No. L-6235, 28 March 1995 ............ 52
Mirpuri vs. CA GR No 114508 Nov. 19, 1999 ................................................... 5 Lyceum of the Phil vs. CA (SUPRA) ................................................................ 54
Acquisition of Ownership of Marks (Sec. 122, IPC); ........................................... 11 Arce Sons and Co. vs. Selecta Biscuits GR No. L-14761, 28 Jan. 1961.... 54
Generic - Sec. 123.1 (h) IPC .................................................................................. 12 Exclusive use, Sec. 147.......................................................................................... 57
Descriptive - Sec. 123.1 (j) IPC.............................................................................. 12 Importation of Drugs and Medicines, Sec. 72.1 ................................................... 57
Fanciful or Suggestive – others Suggestive ......................................................... 12 Are there any exceptions to the conferred rights? Sec 148 ............................... 57
Asia Brewery, Inc. vs. CA GR No. 103543, 5 July 1993 ............................... 12 May an application or registration be transferred or assigned? Sec 149 ......... 58
Societe Des Produits Nestle S.A vs. CA GR No. 112012, 4 April 2001 ...... 16 What about licensing? Sec. 150 ............................................................................ 58
Mc Donald’s Corporation vs. LC Big Mak Burger Inc. GR No. 143997, 18 What are the grounds to cancel registration? Secs. 151 and 154 .................... 58
August 2004 ........................................................................................................ 19 What is Trademark Infringement? Secs. 155-156 ............................................... 58
Lyceum of the Philippines Inc vs. CA, GR No. 101897, 5 March 1993 ....... 26 Can damages be recovered? Secs. 156-158 ...................................................... 58
Etpha vs. Director of Patents (supra) ............................................................... 29 What is Unfair Competition? Sec. 168 .................................................................. 59
Ang vs. Teodoro GR No. L-48226, 14 Dec. 1942 .......................................... 29 How is trademark infringement similar / dissimilar to unfair competition? To
Cluster 2 .................................................................................................................... 31 False Designation of Origin and False Description or Representation? Sec.
169 ............................................................................................................................. 59
Immoral Matters, Sec. 123.1 (a); Contrary to Public Order and Morality, Sec
123. 1 (m).................................................................................................................. 31 Ang vs. Teodoro (SUPRA) ................................................................................ 60
Flags, Sec. 123.1 (b); See also Sec. 4 Act No. 2928, RA No. 226; Portraits, Ang Si Heng vs. Wellington Department Store Inc. GR No. L-4531, 10 Jan.
Sec. 123.1 (c) ........................................................................................................... 31 1953 ..................................................................................................................... 60
Shapes, Colors Sec 123.1 (k) and (l) .................................................................... 31 Mc Donald’s Corp vs. LC Big Make Burger (SUPRA) ................................... 61
Cluster 3 .................................................................................................................... 31 Can a Foreign Corporation not engaged in business in the Philippines bring an
action for trademark infringement before Philippine courts? Sec 160 IPC and
Confusingly Similar with registered marks, Sec 123 (d); Sec 147,1 ................. 31 Rule 3 AM No. 10-3-10-SC .................................................................................... 61
Deceptive, Sec. 123.1 (g) ....................................................................................... 32 What are the defenses against Infringement? ..................................................... 61
What are the tests developed to determine if colorable imitation / confusing Bona Fide Prior User, Sec. 159..1, Sec. 1 Rule 16 AM No. 10-3-10 SC ......... 61
similarity exists? ....................................................................................................... 32
Innocent Infringer, Sec. 159.2 ................................................................................ 61
Dominancy test ........................................................................................................ 32
Against Publishers or Distributors, Sec. 159.3 .................................................... 61
Holistic test ............................................................................................................... 32
Imported Drugs and Medicines, Sec. 159.4 ......................................................... 61
Mc Donald’s Corp vs. LC Big Mac (Supra) ................................................ 32
What are the penalties that could be imposed? Civil, Administrative, Criminal –
Asia Brewery Inc. vs. CA (Supra) .................................................................... 32 Sec 170, Damages – Sec 156 and 158, Injunctive Relief – Sec. 156 .............. 61
Del Monte Corp vs. CA GR No. L-78325, 25 January 1990 ......................... 32 Philip Morris et. Al vs. CA (SUPRA) ................................................................ 62
American Wire and Cable Company vs. Dir. of Patents GR No. L-26557, 18 Developers Group of Companies, Inc. vs. CA GR No. 104583 8 March
Feb. 1990 ............................................................................................................ 35 1993 ..................................................................................................................... 62
Converse Rubber Corp vs Universal Rubber Products, Inc. GR No. L- Conrad and Company vs. CA, Filtrite and Victoria Biscuits GR No. 115115,
27906, 8 Jan. 1987 ............................................................................................ 36 18 July 1995........................................................................................................ 63
Cluster 4 .................................................................................................................... 38
Confusingly Similar with Well-known Marks, Sec. 123.1 (e, f), Article 6bis,
Paris Convention for the Protection of Intellectual Property Rights, Art 16(2-3)
Agreement on Trade Related Aspects of Intellectual Property Rights.............. 38
246 Corporation vs. Daway, GR. No. 114508, 19 Nov. 1999 ....................... 39
On this point the following culled from a recent decision of the For the reasons given, the appealed decision of the respondent Director of
United States Court of Customs and Patent Appeals (June 15, Patents — giving due course to the application for the registration of
1956) is persuasive: 14 trademark ATTUSIN is hereby affirmed. Costa against petitioner. So
ordered.
Confusion is likely between trademarks, however,
only if their over-all presentations in any of the
particulars of sound, appearance, or meaning are Mirpuri vs. CA GR No 114508 Nov. 19, 1999
such as would lead the purchasing public into
believing that the products to which the marks are
applied emanated from the same source. In testing The Convention of Paris for the Protection of Industrial Property is a multi-
this issue, fixed legal rules exist — if not in harmony, lateral treaty which the Philippines bound itself to honor and enforce in this
certainly in abundance — but, in the final analysis, the country. As to whether or not the treaty affords protection to a foreign
Private respondent Barbizon Corporation, a corporation organized and (c) Still further, sometime in 1961, Opposer adopted the trademark
doing business under the laws of New York, U.S.A., opposed the BARBIZON and a Representation of a Woman and thereafter used the
application. It claimed that: said trademark on various kinds of wearing apparel. Opposer obtained
from the United States Patent Office registration of the said mark on April
5, 1983 under Certificate of Registration No. 1,233,666 for the following
The mark BARBIZON of respondent-applicant is confusingly similar to the
goods: wearing apparel: robes, pajamas, nightgowns and lingerie. A copy
trademark BARBIZON which opposer owns and has not abandoned.
of the said certificate of registration is herewith enclosed as Annex "C."
That opposer will be damaged by the registration of the mark BARBIZON
and its business reputation and goodwill will suffer great and irreparable
injury. (d) All the above registrations are subsisting and in force and Opposer has
That the respondent-applicant's use of the said mark BARBIZON which not abandoned the use of the said trademarks. In fact, Opposer, through a
resembles the trademark used and owned by opposer, constitutes an wholly-owned Philippine subsidiary, the Philippine Lingerie Corporation,
unlawful appropriation of a mark previously used in the Philippines and not has been manufacturing the goods covered by said registrations and
abandoned and therefore a statutory violation of Section 4 (d) of Republic selling them to various countries, thereby earning valuable foreign
Act No. 166, as amended. 1 exchange for the country. As a result of respondent-applicant's
This was docketed as Inter Partes Case No. 686 (IPC No. 686). After filing misappropriation of Opposer's BARBIZON trademark, Philippine Lingerie
of the pleadings, the parties submitted the case for decision. Corporation is prevented from selling its goods in the local market, to the
damage and prejudice of Opposer and its wholly-owned subsidiary.
On June 18, 1974, the Director of Patents rendered judgment dismissing
the opposition and giving due course to Escobar's application, thus: (e) The Opposer's goods bearing the trademark BARBIZON have been
used in many countries, including the Philippines, for at least 40 years and
has enjoyed international reputation and good will for their quality. To
WHEREFORE, the opposition should be, as it is
protect its registrations in countries where the goods covered by the
hereby, DISMISSED. Accordingly, Application Serial
registrations are being sold, Opposer has procured the registration of the
No. 19010 for the registration of the trademark
trademark BARBIZON in the following countries: Australia, Austria, Abu
BARBIZON, of respondent Lolita R. Escobar, is given
Dhabi, Argentina, Belgium, Bolivia, Bahrain, Canada, Chile, Colombia,
due course.
Denmark, Ecuador, France, West Germany, Greece, Guatemala,
Hongkong, Honduras, Italy, Japan, Jordan, Lebanon, Mexico, Morocco,
IT IS SO ORDERED. 2 Panama, New Zealand, Norway, Sweden, Switzerland, Syria, El Salvador,
South Africa, Zambia, Egypt, and Iran, among others;
This decision became final and on September 11, 1974, Lolita
Escobar was issued a certificate of registration for the (f) To enhance its international reputation for quality goods and to further
trademark "Barbizon." The trademark was "for use in promote goodwill over its name, marks and products, Opposer has
"brassieres and lady's underwear garments like panties." 3 extensively advertised its products, trademarks and name in various
publications which are circulated in the United States and many countries
around the world, including the Philippines;
Escobar later assigned all her rights and interest over the trademark to
petitioner Pribhdas J. Mirpuri who, under his firm name then, the "Bonito
Enterprises," was the sole and exclusive distributor of Escobar's (g) The trademark BARBIZON was fraudulently registered in the
"Barbizon" products. Philippines by one Lolita R. Escobar under Registration No. 21920, issued
on September 11, 1974, in violation of Article 189 (3) of the Revised Penal
Code and Section 4 (d) of the Trademark Law. Herein respondent
In 1979, however, Escobar failed to file with the Bureau of Patents the
applicant acquired by assignment the "rights" to the said mark previously
Affidavit of Use of the trademark required under Section 12 of Republic registered by Lolita Escobar, hence respondent-applicant's title is vitiated
Act (R.A.) No. 166, the Philippine Trademark Law. Due to this failure, the by the same fraud and criminal act. Besides, Certificate of Registration
Bureau of Patents cancelled Escobar's certificate of registration.
No. 21920 has been cancelled for failure of either Lolita Escobar or herein
respondent-applicant, to seasonably file the statutory affidavit of use. By
On May 27, 1981, Escobar reapplied for registration of the cancelled applying for a re-registration of the mark BARBIZON subject of this
trademark. Mirpuri filed his own application for registration of Escobar's opposition, respondent-applicant seeks to perpetuate the fraud and
trademark. Escobar later assigned her application to herein petitioner and criminal act committed by Lolita Escobar.
this application was opposed by private respondent. The case was
docketed as Inter Partes Case No. 2049 (IPC No. 2049).
(h) Opposer's BARBIZON as well as its BARBIZON and Bee Design and
BARBIZON and Representation of a Woman trademarks qualify as well-
In its opposition, private respondent alleged that: known trademarks entitled to protection under Article 6bis of the
Convention of Paris for the Protection of Industrial Property and further
amplified by the Memorandum of the Minister of Trade to the Honorable
(a) The Opposer has adopted the trademark BARBIZON (word), sometime Director of Patents dated October 25, 1983 [sic], 4 Executive Order No.
in June 1933 and has then used it on various kinds of wearing apparel. On 913 dated October 7, 1963 and the Memorandum of the Minister of Trade
August 14, 1934, Opposer obtained from the United States Patent Office a and Industry to the Honorable Director of Patents dated October 25, 1983.
more recent registration of the said mark under Certificate of Registration
No. 316,161. On March 1, 1949, Opposer obtained from the United States
Patent Office a more recent registration for the said trademark under (i) The trademark applied for by respondent applicant is identical to
Certificate of Registration No. 507,214, a copy of which is herewith Opposer's BARBIZON trademark and constitutes the dominant part of
attached as Annex "A." Said Certificate of Registration covers the Opposer's two other marks namely, BARBIZON and Bee design and
following goods — wearing apparel: robes, pajamas, lingerie, nightgowns BARBIZON and a Representation of a Woman. The continued use by
respondent-applicant of Opposer's trademark BARBIZON on goods
In the Middle Ages, the use of many kinds of marks on a variety of goods
Before us, petitioner raises the following issues: was commonplace. Fifteenth century England saw the compulsory use of
identifying marks in certain trades. There were the baker's mark on bread,
1. WHETHER OR NOT THE DECISION OF THE DIRECTOR OF bottlemaker's marks, smith's marks, tanner's marks, watermarks on paper,
PATENTS IN INTER PARTES CASE NO. 686 RENDERED ON JUNE 18, etc. 18 Every guild had its own mark and every master belonging to it had a
1974, ANNEX C HEREOF, CONSTITUTED RES JUDICATA IN SO FAR special mark of his own. The marks were not trademarks but police marks
AS THE CASE BEFORE THE DIRECTOR OF PATENTS IS compulsorily imposed by the sovereign to let the public know that the
CONCERNED; goods were not "foreign" goods smuggled into an area where the guild
had a monopoly, as well as to aid in tracing defective work or poor
craftsmanship to the artisan. 19 For a similar reason, merchants also used
2. WHETHER OR NOT THE DIRECTOR OF PATENTS CORRECTLY merchants' marks. Merchants dealt in goods acquired from many sources
APPLIED THE PRINCIPLE OFRES JUDICATA IN DISMISSING PRIVATE and the marks enabled them to identify and reclaim their goods upon
RESPONDENT BARBIZON'S OPPOSITION TO PETITIONER'S recovery after shipwreck or piracy. 20
APPLICATION FOR REGISTRATION FOR THE TRADEMARK
BARBIZON, WHICH HAS SINCE RIPENED TO CERTIFICATE OF
REGISTRATION NO. 53920 ON NOVEMBER 16, 1992; With constant use, the mark acquired popularity and became voluntarily
adopted. It was not intended to create or continue monopoly but to give
the customer an index or guarantee of quality. 21 It was in the late 18th
3. WHETHER OR NOT THE REQUISITE THAT A "JUDGMENT ON THE century when the industrial revolution gave rise to mass production and
MERITS" REQUIRED A "HEARING WHERE BOTH PARTIES ARE distribution of consumer goods that the mark became an important
SUPPOSED TO ADDUCE EVIDENCE" AND WHETHER THE JOINT instrumentality of trade and commerce. 22 By this time, trademarks did not
The Solicitor General, on behalf of respondent Director of Patents, has The judgment in IPC No. 686 being on the merits, petitioner and the
joined cause with petitioner. Both claim that all the four elements of res Solicitor General allege that IPC No. 686 and IPC No. 2049 also comply
judicata have been complied with: that the judgment in IPC No. 686 was with the fourth requisite of res judicata, i.e., they involve the same parties
final and was rendered by the Director of Patents who had jurisdiction over and the same subject matter, and have identical causes of action.
the subject matter and parties; that the judgment in IPC No. 686 was on
the merits; and that the lack of a hearing was immaterial because
Undisputedly, IPC No. 686 and IPC No. 2049 involve the same parties
substantial issues were raised by the parties and passed upon by the
and the same subject matter. Petitioner herein is the assignee of Escobar
Director of Patents. 37
while private respondent is the same American corporation in the first
case. The subject matter of both cases is the trademark "Barbizon."
The decision in IPC No. 686 reads as follows: Private respondent counter-argues, however, that the two cases do not
have identical causes of action. New causes of action were allegedly
introduced in IPC No. 2049, such as the prior use and registration of the
xxx xxx xxx. trademark in the United States and other countries worldwide, prior use in
Three years later, on October 25, 1983, then Minister Roberto Ongpin
In the case at bar, private respondent anchors its cause of action on the
issued another Memorandum to the Director of Patents, viz:
first paragraph of Article 6bis of the Paris Convention which reads as
follows:
Pursuant to Executive Order No. 913 dated 7 October 1983 which
strengthens the rule-making and adjudicatory powers of the Minister of
Article 6bis
Trade and Industry and provides inter alia, that "such rule-making and
adjudicatory powers should be revitalized in order that the Minister of
(1) The countries of the Union undertake, either administratively if their Trade and Industry can . . . apply more swift and effective solutions and
legislation so permits, or at the request of an interested party, to refuse or remedies to old and new problems . . . such as infringement of
to cancel the registration and to prohibit the use, of a trademark which internationally-known tradenames and trademarks . . ." and in view of the
constitutes a reproduction, an imitation, or a translation, liable to create decision of the Intermediate Appellate Court in the case of LA CHEMISE
confusion, of a mark considered by the competent authority of the country LACOSTE, S.A., versus RAM SADWHANI [AC-G.R. SP NO. 13359 (17)
of registration or use to be well-known in that country as being already the June 1983] 56 which affirms the validity of the MEMORANDUM of then
mark of a person entitled to the benefits of this Convention and used for Minister Luis R. Villafuerte dated 20 November 1980 confirming our
identical or similar goods. These provisions shall also apply when the obligations under the PARIS CONVENTION FOR THE PROTECTION OF
essential part of the mark constitutes a reproduction of any such well- INDUSTRIAL PROPERTY to which the Republic of the Philippines is a
known mark or an imitation liable to create confusion therewith. signatory, you are hereby directed to implement measures necessary to
effect compliance with our obligations under said Convention in general,
and, more specifically, to honor our commitment under
(2) A period of at least five years from the date of registration shall be
Section 6bis 57 thereof, as follows:
allowed for seeking the cancellation of such a mark. The countries of the
1. Whether the trademark under consideration is well-known in the
Union may provide for a period within which the prohibition of use must be
Philippines or is a mark already belonging to a person entitled to the
sought.
benefits of the CONVENTION, this should be established, pursuant to
Philippine Patent Office procedures in inter partesand ex parte cases,
(3) No time limit shall be fixed for seeking the cancellation or the according to any of the following criteria or any combination thereof:
prohibition of the use of marks registered or used in bad faith. 50 (a) a declaration by the Minister of Trade and Industry that the trademark
being considered is already well-known in the Philippines such that
permission for its use by other than its original owner will constitute a
This Article governs protection of well-known trademarks. Under the first reproduction, imitation, translation or other infringement;
paragraph, each country of the Union bound itself to undertake to refuse
(b) that the trademark is used in commerce internationally, supported by
or cancel the registration, and prohibit the use of a trademark which is a proof that goods bearing the trademark are sold on an international scale,
reproduction, imitation or translation, or any essential part of which advertisements, the establishment of factories, sales offices,
trademark constitutes a reproduction, liable to create confusion, of a mark
distributorships, and the like, in different countries, including volume or
considered by the competent authority of the country where protection is other measure of international trade and commerce;
sought, to be well-known in the country as being already the mark of a (c) that the trademark is duly registered in the industrial property office(s)
person entitled to the benefits of the Convention, and used for identical or
of another country or countries, taking into consideration the date of such
similar goods. registration;
(d) that the trademark has long been established and obtained goodwill
Art. 6bis was first introduced at The Hague in 1925 and amended in and international consumer recognition as belonging to one owner or
Lisbon in 1952. 51 It is a self-executing provision and does not require source;
legislative enactment to give it effect in the member country. 52 It may be (e) that the trademark actually belongs to a party claiming ownership and
has the right to registration under the provisions of the aforestated PARIS
Intellectual and industrial property rights cases are not simple property
cases. Trademarks deal with the psychological function of symbols and
the effect of these symbols on the public at large. 75 Trademarks play a
significant role in communication, commerce and trade, and serve Acquisition of Ownership of Marks (Sec. 122, IPC);
valuable and interrelated business functions, both nationally and What marks are registrable/non-registrable?
internationally. For this reason, all agreements concerning industrial
property, like those on trademarks and tradenames, are intimately Section 122. How Marks are Acquired. - The rights in a mark shall be
connected with economic development. 76 Industrial property encourages acquired through registration made validly in accordance wih the provisions of
investments in new ideas and inventions and stimulates creative efforts for this law. (Sec. 2-A, R A. No. 166a)
the satisfaction of human needs. They speed up transfer of technology
and industrialization, and thereby bring about social and economic 1. Registration is necessary before one can file an action for infringement
progress. 77 These advantages have been acknowledged by the Philippine 2. Actual Use
government itself. The Intellectual Property Code of the Philippines i. Prior use in the Philippines is not required before registration.
declares that "an effective intellectual and industrial property system is ii. However, there must be actual use after registration.
vital to the development of domestic and creative activity, facilitates Declaration to use within 3 years upon application
transfer of technology, it attracts foreign investments, and ensures market Declaration of actual use and evidence to that effect or should show valid
access for our products." 78 The Intellectual Property Code took effect on reasons for non-use within 1 year from fifth anniversary date of registration
January 1, 1998 and by its express provision, 79 repealed the Trademark iii. Certificate of Registration of the mark – prima facie evidence of the
Law, 80 the Patent Law, 81 Articles 188 and 189 of the Revised Penal validity of registration
Code, the Decree on Intellectual Property, 82 and the Decree on iv. registration is not important to protect the goodwill of his goods or
Compulsory Reprinting of Foreign Textbooks. 83 The Code was enacted to services
strengthen the intellectual and industrial property system in the Philippines v. Registration of the mark is not necessary for purposes of filing cases for
as mandated by the country's accession to the Agreement Establishing unfair competition or false designation of origin
the World Trade Organization (WTO). 84
“The rights in a mark shall be acquired through registration made validly in
accordance with the provisions of this law.”
The WTO is a common institutional framework for the conduct of trade - Right is acquired from time of registration is actually the filing
relations among its members in matters related to the multilateral and date of application
plurilateral trade agreements annexed to the WTO Agreement. 85 The - Filing date of application – the date of which the IPO receives the
WTO framework ensures a "single undertaking approach" to the following indications and elements: (a) express or implication that
administration and operation of all agreements and arrangements the registration of the mark is sought (b) identity of the applicant
attached to the WTO Agreement. Among those annexed is the Agreement (c) indications sufficient to contact the application or his
on Trade-Related Aspects of Intellectual Property Rights or representative (d) reproduction of the mark (e) list of goods or
TRIPs. 86 Members to this Agreement "desire to reduce distortions and services for which registration is sought
impediments to international trade, taking into account the need to The right may also be protected from priority date. Take note of reciprocity
promote effective and adequate protection of intellectual property rights, rule where the application is filed in the Philippines and the same applicant
Upon a motion for reconsideration filed by ABI, the above dispositive part of
the decision, was modified by the separate opinions of the Special Sixth
Generic - Sec. 123.1 (h) IPC Division 1 so that it should read thus:
(h) Consists exclusively of signs that are generic for the goods or services that
they seek to identify;
In the light of the foregoing analysis and under the plain language of the
applicable rule and principle on the matter, We find the defendant Asia
Brewery Incorporated GUILTY of infringement of trademark and unfair
Descriptive - Sec. 123.1 (j) IPC competition. The decision of the trial court is hereby REVERSED, and a new
(j) Consists exclusively of signs or of indications that may serve in trade to judgment entered in favor of the plaintiff and against the defendant as
designate the kind, quality, quantity, intended purpose, value, geographical follows:
origin, time or production of the goods or rendering of the services, or other (1) The defendant Asia Brewery Inc., its officers, agents, servants and
characteristics of the goods or services; employees are hereby permanently enjoined and restrained from
manufacturing, putting up, selling, advertising, offering or announcing for
sale, or supplying Beer Pale Pilsen, or any similar preparation, manufacture
or beer in bottles and under labels substantially identical with or like the said
Fanciful or Suggestive – others Suggestive bottles and labels of plaintiff San Miguel Corporation employed for that
purpose, or substantially identical with or like the bottles and labels now
employed by the defendant for that purpose, or in bottles or under labels
which are calculated to deceive purchasers and consumers into the belief
Asia Brewery, Inc. vs. CA GR No. 103543, 5 July 1993 that the beer if the product of the plaintiff or which will enable others to
substitute, sell or palm off the said beer of the defendant as and for the beer
of the plaintiff-complainant.
On September 15, 1988, San Miguel Corporation (SMC) filed a complaint (2) The defendant Asia Brewery Inc. is hereby ordered 2 to recall all its
against Asia Brewery Inc. (ABI) for infringement of trademark and unfair products bearing the mark Beer Pale Pilsen from its retailers and deliver
competition on account of the latter's BEER PALE PILSEN or BEER NA these as well as all labels, signs, prints, packages, wrappers, receptacles
BEER product which has been competing with SMC's SAN MIGUEL PALE and advertisements bearing the infringing mark and all plates, molds,
PILSEN for a share of the local beer market. (San Miguel Corporation vs. materials and other means of making the same to the Court authorized to
Asia Brewery Inc., Civ. Case. No. 56390, RTC Branch 166, Pasig, Metro execute this judgment for destruction.
Manila.). (3) The defendant is hereby ordered to pay plaintiff the sum of Two Million
Pesos (P2,000,000.00) as moral damages and Half a Million Pesos
On August 27, 1990, a decision was rendered by the trial Court, presided (P500,000.00) by way of exemplary damages.
over by Judge Jesus O. Bersamira, dismissing SMC's complaint because (4) The defendant is further ordered to pay the plaintiff attorney's fees in the
ABI "has not committed trademark infringement or unfair competition amount of P250,000.00 plus costs of this suit.
against" SMC (p. 189, Rollo).
In due time, ABI appealed to this Court by a petition for certiorari under Rule
SMC appealed to the Court of Appeals (C.A.-G.R. CV No. 28104). On 45 of the Rules of Court. The lone issue in this appeal is whether ABI
September 30, 1991, the Court of Appeals (Sixth Division composed of infringes SMC's trademark: San Miguel Pale Pilsen with Rectangular Hops
Justice Jose C. Campos, Jr., chairman and ponente, and Justices Venancio and Malt Design, and thereby commits unfair competition against the latter. It
D. Aldecoa Jr. and Filemon H. Mendoza, as members) reversed the trial is a factual issue (Phil. Nut Industry Inc. v. Standard Brands Inc., 65 SCRA
court. The dispositive part of the decision reads as follows: 575) and as a general rule, the findings of the Court of Appeals upon factual
questions are conclusive and ought not to be disturbed by us. However,
there are exceptions to this general rule, and they are:
In the light of the foregoing analysis and under the plain language of the
applicable rule and principle on the matter, We find the defendant Asia
Brewery Incorporated GUILTY of infringement of trademark and unfair (1) When the conclusion is grounded entirely on speculation, surmises and
competition. The decision of the trial court is hereby REVERSED, and a new conjectures;
judgment entered in favor of the plaintiff and against the defendant as (2) When the inference of the Court of Appeals from its findings of fact is
follows: manifestly mistaken, absurd and impossible;
(1) The defendant Asia Brewery Inc. its officers, agents, servants and (3) Where there is grave abuse of discretion;
employees are hereby permanently enjoined and restrained from (4) When the judgment is based on a misapprehension of facts;
manufacturing, putting up, selling, advertising, offering or announcing for (5) When the appellate court, in making its findings, went beyond the issues
sale, or supplying Beer Pale Pilsen, or any similar preparation, manufacture of the case, and the same are contrary to the admissions of both the
or beer in bottles and under labels substantially identical with or like the said appellant and the appellee;
bottles and labels of plaintiff San Miguel Corporation employed for that (6) When the findings of said court are contrary to those of the trial court;
purpose, or substantially identical with or like the bottles and labels now (7) When the findings are without citation of specific evidence on which they
employed by the defendant for that purpose, or in bottles or under labels are based;
which are calculated to deceive purchasers and consumers into the belief (8) When the facts set forth in the petition as well as in the petitioner's main
that the beer is the product of the plaintiff or which will enable others to and reply briefs are not disputed by the respondents; and
substitute, sell or palm off the said beer of the defendant as and for the beer (9) When the findings of facts of the Court of Appeals are premised on the
of the plaintiff-complainant. absence of evidence and are contradicted on record. (Reynolds Philippine
(2) The defendant Asia Brewery Inc. is hereby ordered to render an Corporation vs. Court of Appeals, 169 SCRA 220, 223 citing, Mendoza vs.
accounting and pay the San Miguel Corporation double any and all the Court of Appeals, 156 SCRA 597; Manlapaz vs. Court of Appeals, 147
payments derived by defendant from operations of its business and the sale SCRA 238; Sacay vs. Sandiganbayan, 142 SCRA 593, 609; Guita vs. CA,
of goods bearing the mark "Beer Pale Pilsen" estimated at approximately 139 SCRA 576; Casanayan vs. Court of Appeals, 198 SCRA 333, 336; also
Five Million Pesos (P5,000,000.00); to recall all its products bearing the mark Apex Investment and Financing Corp. vs. IAC, 166 SCRA 458 [citing
"Beer Pale Pilsen" from its retailers and deliver these as well as all labels, Tolentino vs. De Jesus, 56 SCRA 167; Carolina Industries, Inc. vs. CMS
On the other hand, ABI's trademark, as described by the trial court, consists (1) The SAN MIGUEL PALE PILSEN bottle has a slender tapered neck.
of:
The BEER PALE PILSEN bottle has a fat, bulging neck.
. . . a rectangular design bordered by what appear to be buds of flowers with
leaves. The dominant feature is "Beer" written across the upper portion of
(2) The words "pale pilsen" on SMC's label are printed in bold and laced
the rectangular design. The phrase "Pale Pilsen" appears immediately below
in smaller block letters. To the left is a hop design and to the right, written in letters along a diagonal band, whereas the words "pale pilsen" on ABI's
small prints, is the phrase "Net Contents 320 ml." Immediately below "Pale bottle are half the size and printed in slender block letters on a
In its Decision No. 90-47 dated December 27, 1990, the BPTTT denied
Our ruling in Del Monte would not apply to beer which is not usually picked
CFC’s application for registration.5 CFC elevated the matter to the Court of
from a store shelf but ordered by brand by the beer drinker himself from the
Appeals, where it was docketed as CA-G.R. SP No. 24101.
storekeeper or waiter in a pub or restaurant.
The Court of Appeals defined the issue thus: "Does appellant CFC’s trade
Moreover, SMC's brand or trademark: "SAN MIGUEL PALE PILSEN" is not
dress bear a striking resemblance with appellee’s trademarks as to create in
infringed by ABI's mark: "BEER NA BEER" or "BEER PALE PILSEN." ABI
the purchasing public’s mind the mistaken impression that both coffee
makes its own bottle with a bulging neck to differentiate it from SMC's bottle,
products come from one and the same source?"
and prints ABI's name in three (3) places on said bottle (front, back and
bottle cap) to prove that it has no intention to pass of its "BEER" as "SAN
MIGUEL." As stated above, the Court of Appeals, in the assailed decision dated
September 23, 1993, reversed Decision No. 90-47 of the BPTTT and
ordered the Director of Patents to approve CFC’s application. The Court of
There is no confusing similarity between the competing beers for the name
Appeals ruled:
of one is "SAN MIGUEL" while the competitor is plain "BEER" and the points
of dissimilarity between the two outnumber their points of similarity.
Were We to take even a lackadaisical glance at the overall
appearance of the contending marks, the physical discrepancies
Petitioner ABI has neither infringed SMC's trademark nor committed unfair
between appellant CFC’s and appellee’s respective logos are so
competition with the latter's SAN MIGUEL PALE PILSEN product. While its
ostensible that the casual purchaser cannot likely mistake one for
BEER PALE PILSEN admittedly competes with the latter in the open market,
the other. Appellant CFC’s label (Exhibit "4") is predominantly a
that competition is neither unfair nor fraudulent. Hence, we must deny SMC's
blend of dark and lighter shade of orange where the words
prayer to suppress it.
"FLAVOR MASTER", "FLAVOR" appearing on top of "MASTER",
shaded in mocha with thin white inner and outer sidings per letter
WHEREFORE, finding the petition for review meritorious, the same is hereby and identically lettered except for the slightly protruding bottom
granted. The decision and resolution of the Court of Appeals in CA-G.R. CV curve of the letter "S" adjoining the bottom tip of the letter "A" in
No. 28104 are hereby set aside and that of the trial court is REINSTATED the word "MASTER", are printed across the top of a simmering red
and AFFIRMED. Costs against the private respondent. coffee cup. Underneath "FLAVOR MASTER" appears "Premium
Instant Coffee" printed in white, slim and slanted letters. Appellees’
"MASTER ROAST" label (Exhibit "7"), however, is almost double
SO ORDERED.
the width of appellant CFC’s. At the top is printed in brown color
the word "NESCAFE" against a white backdrop. Occupying the
center is a square-shaped configuration shaded with dark brown
Societe Des Produits Nestle S.A vs. CA GR No. 112012, 4 April 2001 and picturing a heap of coffee beans, where the word "MASTER"
is inscribed in the middle. "MASTER" in appellees’ label is printed
This is a petition for review assailing the Decision of the Court of Appeals in in taller capital letters, with the letter "M" further capitalized. The
CA-G.R. SP No. 24101,1 reversing and setting aside the decision of the letters are shaded with red and bounded with thin gold-colored
Bureau of Patents, Trademarks and Technology Transfer (BPTTT),2 which inner and outer sidings. Just above the word "MASTER" is a red
Petitioners are now before this Court on the following assignment of errors: (Emphasis supplied)
1. RESPONDENT COURT GRAVELY ERRED IN REVERSING The law prescribes a more stringent standard in that there should not only be
AND SETTING ASIDE THE DECISION (NO. 90-47) OF THE confusing similarity but that it should not likely cause confusion or mistake or
DIRECTOR OF THE BUREAU OF PATENTS, TRADEMARKS deceive purchasers.
AND TECHNOLOGY TRANSFER (BPTTT) DATED DECEMBER
27, 1990.
Hence, the question in this case is whether there is a likelihood that the
trademark FLAVOR MASTER may cause confusion or mistake or may
2. RESPONDENT COURT ERRED IN FINDING THAT deceive purchasers that said product is the same or is manufactured by the
APPELLANT CFC’S TRADE DRESS IS BEYOND THE SCOPE same company. In other words, the issue is whether the trademark FLAVOR
OF THE PROSCRIPTION LAID DOWN BY JURISPRUDENCE MASTER is a colorable imitation of the trademarks MASTER ROAST and
AND THE TRADEMARK LAW. MASTER BLEND.
3. RESPONDENT COURT ERRED IN HOLDING THAT THE Colorable imitation denotes such a close or ingenious imitation as to be
TOTALITY RULE, RATHER THAN THE TEST OF DOMINANCY, calculated to deceive ordinary persons, or such a resemblance to the original
APPLIES TO THE CASE. 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
4. RESPONDENT COURT ERRED IN INVOKING THE TOTALITY other.9 In determining if colorable imitation exists, jurisprudence has
RULE APPLIED IN THE CASES OF BRISTOL MYERS V. developed two kinds of tests - the Dominancy Test and the Holistic
DIRECTOR OF PATENTS, ET AL. (17 SCRA 128), MEAD Test.10 The test of dominancy focuses on the similarity of the prevalent
JOHNSON & CO. V. NVJ VAN DORF LTD., (7 SCRA 768) AND features of the competing trademarks which might cause confusion or
AMERICAN CYANAMID CO. V. DIRECTOR OF PATENTS (76 deception and thus constitute infringement. On the other side of the
SCRA 568). spectrum, the holistic test mandates that the entirety of the marks in question
must be considered in determining confusing similarity.11
In the Mead Johnson case, the differences between ALACTA and ALASKA It must be emphasized that the products bearing the trademarks in question
are glaring and striking to the eye. Also, ALACTA refers to "Pharmaceutical are "inexpensive and common" household items bought off the shelf by
Preparations which Supply Nutritional Needs," falling under Class 6 of the "undiscerningly rash" purchasers. As such, if the ordinary purchaser is
official classification of Medicines and Pharmaceutical Preparations to be "undiscerningly rash", then he would not have the time nor the inclination to
used as prescribed by physicians. On the other hand, ALASKA refers to make a keen and perceptive examination of the physical discrepancies in the
"Foods and Ingredients of Foods" falling under Class 47, and does not
Rather, the term "MASTER" is a suggestive term brought about by the Mc Donald’s Corporation vs. LC Big Mak Burger Inc. GR No. 143997, 18
advertising scheme of Nestle. Suggestive terms27 are those which, in the August 2004
phraseology of one court, require "imagination, thought and perception to
reach a conclusion as to the nature of the goods." Such terms, "which subtly The Case
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 This is a petition for review1 of the Decision dated 26 November 1999 of the
dispute, they nevertheless involve "an element of incongruity," Court of Appeals2 finding respondent L.C. Big Mak Burger, Inc. not liable for
"figurativeness," or " imaginative effort on the part of the observer." trademark infringement and unfair competition and ordering petitioners to
pay respondents P1,900,000 in damages, and of its Resolution dated 11 July
2000 denying reconsideration. The Court of Appeals' Decision reversed the
Petitioner McDonald's Corporation ("McDonald's") is a corporation organized On 5 September 1994, the RTC rendered judgment ("RTC Decision") finding
under the laws of Delaware, United States. McDonald's operates, by itself or respondent corporation liable for trademark infringement and unfair
through its franchisees, a global chain of fast-food restaurants. competition. However, the RTC dismissed the complaint against private
McDonald's4 owns a family of marks5 including the "Big Mac" mark for its respondents and the counterclaim against petitioners for lack of merit and
"double-decker hamburger sandwich."6McDonald's registered this trademark insufficiency of evidence. The RTC held:
with the United States Trademark Registry on 16 October 1979. 7 Based on
this Home Registration, McDonald's applied for the registration of the same
Undeniably, the mark "B[ig] M[ac]" is a registered trademark for plaintiff
mark in the Principal Register of the then Philippine Bureau of Patents,
Trademarks and Technology ("PBPTT"), now the Intellectual Property Office McDonald's, and as such, it is entitled [to] protection against infringement.
("IPO"). Pending approval of its application, McDonald's introduced its "Big xxxx
Mac" hamburger sandwiches in the Philippine market in September 1981. There exist some distinctions between the names "B[ig] M[ac]" and "B[ig] M[ak]" as
On 18 July 1985, the PBPTT allowed registration of the "Big Mac" mark in appearing in the respective signages, wrappers and containers of the food products
the Principal Register based on its Home Registration in the United States. of the parties. But infringement goes beyond the physical features of the
questioned name and the original name. There are still other factors to be
considered.
Like its other marks, McDonald's displays the "Big Mac" mark in items8 and
xxxx
paraphernalia9 in its restaurants, and in its outdoor and indoor signages.
From 1982 to 1990, McDonald's spent P10.5 million in advertisement for "Big Significantly, the contending parties are both in the business of fast-food chains and
Mac" hamburger sandwiches alone.10 restaurants. An average person who is hungry and wants to eat a hamburger
sandwich may not be discriminating enough to look for a McDonald's restaurant
and buy a "B[ig] M[ac]" hamburger. Once he sees a stall selling hamburger
Petitioner McGeorge Food Industries ("petitioner McGeorge"), a domestic sandwich, in all likelihood, he will dip into his pocket and order a "B[ig] M[ak]"
corporation, is McDonald's Philippine franchisee.11 hamburger sandwich. Plaintiff McDonald's fast-food chain has attained wide
popularity and acceptance by the consuming public so much so that its air-
Respondent L.C. Big Mak Burger, Inc. ("respondent corporation") is a conditioned food outlets and restaurants will perhaps not be mistaken by many to
domestic corporation which operates fast-food outlets and snack vans in be the same as defendant corporation's mobile snack vans located along busy
Metro Manila and nearby provinces.12 Respondent corporation's menu streets or highways. But the thing is that what is being sold by both contending
includes hamburger sandwiches and other food items.13 Respondents parties is a food item – a hamburger sandwich which is for immediate
Francis B. Dy, Edna A. Dy, Rene B. Dy, William B. Dy, Jesus Aycardo, consumption, so that a buyer may easily be confused or deceived into thinking that
Araceli Aycardo, and Grace Huerto ("private respondents") are the the "B[ig] M[ak]" hamburger sandwich he bought is a food-product of plaintiff
incorporators, stockholders and directors of respondent corporation. 14 McDonald's, or a subsidiary or allied outlet thereof. Surely, defendant corporation
has its own secret ingredients to make its hamburger sandwiches as palatable and
On 21 October 1988, respondent corporation applied with the PBPTT as tasty as the other brands in the market, considering the keen competition
for the registration of the "Big Mak" mark for its hamburger sandwiches. among mushrooming hamburger stands and multinational fast-food chains and
McDonald's opposed respondent corporation's application on the ground that restaurants. Hence, the trademark "B[ig] M[ac]" has been infringed by defendant
"Big Mak" was a colorable imitation of its registered "Big Mac" mark for the corporation when it used the name "B[ig] M[ak]" in its signages, wrappers, and
same food products. McDonald's also informed respondent Francis Dy containers in connection with its food business. xxxx
("respondent Dy"), the chairman of the Board of Directors of respondent Did the same acts of defendants in using the name "B[ig] M[ak]" as a trademark or
corporation, of its exclusive right to the "Big Mac" mark and requested him tradename in their signages, or in causing the name "B[ig] M[ak]" to be printed on
to desist from using the "Big Mac" mark or any similar mark. the wrappers and containers of their food products also constitute an act of unfair
competition under Section 29 of the Trademark Law?
Having received no reply from respondent Dy, petitioners on 6 June 1990 The answer is in the affirmative. xxxx
sued respondents in the Regional Trial Court of Makati, Branch 137 ("RTC"), The xxx provision of the law concerning unfair competition is broader and more
for trademark infringement and unfair competition. In its Order of 11 July inclusive than the lawconcerning the infringement of trademark, which is of more
1990, the RTC issued a temporary restraining order ("TRO") against limited range, but within its narrower range recognizes a more exclusive right
respondents enjoining them from using the "Big Mak" mark in the operation derived by the adoption and registration of the trademark by the person whose
of their business in the National Capital Region.15 On 16 August 1990, the goods or services are first associated therewith. xxx Notwithstanding the distinction
RTC issued a writ of preliminary injunction replacing the TRO.16 between an action for trademark infringement and an action for unfair
competition, however, the law extends substantially the same relief to the injured
In their Answer, respondents admitted that they have been using the name party for both cases. (See Sections 23 and 29 of Republic Act No. 166)
"Big Mak Burger" for their fast-food business. Respondents claimed, Any conduct may be said to constitute unfair competition if the effect is to pass off
however, that McDonald's does not have an exclusive right to the "Big Mac" on the public the goods of one man as the goods of another. The choice of "B[ig]
mark or to any other similar mark. Respondents point out that the Isaiyas M[ak]" as tradename by defendant corporation is not merely for sentimental
Group of Corporations ("Isaiyas Group") registered the same mark for reasons but was clearly made to take advantage of the reputation, popularity and
hamburger sandwiches with the PBPTT on 31 March 1979. One Rodolfo the established goodwill of plaintiff McDonald's. For, as stated in Section 29, a
Topacio ("Topacio") similarly registered the same mark on 24 June person is guilty of unfair competition who in selling his goods shall give them the
1983, prior to McDonald's registration on 18 July 1985.Alternatively, general appearance, of goods of another manufacturer or dealer, either as to the
respondents claimed that they are not liable for trademark infringement or for goods themselves or in the wrapping of the packages in which they are contained,
unfair competition, as the "Big Mak" mark they sought to register does not
or the devices or words thereon, or in any other feature of their appearance, which
constitute a colorable imitation of the "Big Mac" mark. Respondents asserted
would likely influence purchasers to believe that the goods offered are those of a
that they did not fraudulently pass off their hamburger sandwiches as those
of petitioners' Big Mac hamburgers.17 Respondents sought damages in their manufacturer or dealer other than the actual manufacturer or dealer. Thus,
counterclaim. plaintiffs have established their valid cause of action against the defendants for
trademark infringement and unfair competition and for damages.19
The Issues Infringement, what constitutes. — Any person who [1] shall use,
without the consent of the registrant, anyreproduction, counterfeit,
copy or colorable imitation of any registered mark or trade-name in
The issues are:
connection with the sale, offering for sale, or advertising
of any goods, business or services on or in connection withwhich
1. Procedurally, whether the questions raised in this petition are proper for a such use is likely to cause confusion or mistake or to deceive
petition for review under Rule 45. 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
2. On the merits, (a) whether respondents used the words "Big Mak" not only such reproduction, counterfeit, copy, or colorable imitation to
as part of the corporate name "L.C. Big Mak Burger, Inc." but also as a labels, signs, prints, packages, wrappers, receptacles or
trademark for their hamburger products, and (b) whether respondent
advertisements intended to be usedupon or in connection
corporation is liable for trademark infringement and unfair competition.23 with such goods, business or services, shall be liable to a civil
action by the registrant for any or all of the
The Court's Ruling remedies herein provided.33
The petition has merit. Petitioners base their cause of action under the first part of Section
22, i.e. respondents allegedly used, without petitioners' consent, a colorable
imitation of the "Big Mac" mark in advertising and selling respondents'
On Whether the Questions Raised in the Petition are Proper for a hamburger sandwiches. This likely caused confusion in the mind of the
Petition for Review purchasing public on the source of the hamburgers or the identity of the
business.
A party intending to appeal from a judgment of the Court of Appeals may file
with this Court a petition for review under Section 1 of Rule 45 ("Section To establish trademark infringement, the following elements must be shown:
1")24 raising only questions of law. A question of law exists when the doubt or (1) the validity of plaintiff's mark; (2) the plaintiff's ownership of the mark; and
difference arises on what the law is on a certain state of facts. There is a (3) the use of the mark or its colorable imitation by the alleged infringer
question of fact when the doubt or difference arises on the truth or falsity of results in "likelihood of confusion."34 Of these, it is the element of likelihood
the alleged facts. 25 of confusion that is the gravamen of trademark infringement. 35
Here, petitioners raise questions of fact and law in assailing the Court of On the Validity of the "Big Mac"Mark
Appeals' findings on respondent corporation's non-liability for trademark and McDonald's Ownership of such Mark
infringement and unfair competition. Ordinarily, the Court can deny due
course to such a petition. In view, however, of the contradictory findings of
fact of the RTC and Court of Appeals, the Court opts to accept the petition, A mark is valid if it is "distinctive" and thus not barred from registration under
this being one of the recognized exceptions to Section 1. 26 We took a similar Section 436 of RA 166 ("Section 4").However, once registered, not only the
course of action in Asia Brewery, Inc. v. Court of Appeals27 which also mark's validity but also the registrant's ownership of the mark is prima facie
involved a suit for trademark infringement and unfair competition in which the presumed.37
trial court and the Court of Appeals arrived at conflicting findings.
Respondents contend that of the two words in the "Big Mac" mark, it is only
On the Manner Respondents Used the word "Mac" that is valid because the word "Big" is generic and
"Big Mak" in their Business descriptive (proscribed under Section 4[e]), and thus "incapable of exclusive
appropriation."38
Petitioners contend that the Court of Appeals erred in ruling that the
corporate name "L.C. Big Mak Burger, Inc." appears in the packaging for The contention has no merit. The "Big Mac" mark, which should be treated in
respondents' hamburger products and not the words "Big Mak" only. its entirety and not dissected word for word,39 is neither generic nor
descriptive. Generic marks are commonly used as the name or description of
akind of goods,40 such as "Lite" for beer41 or "Chocolate Fudge" for
The contention has merit. chocolate soda drink.42 Descriptive marks, on the other hand, convey the
characteristics, functions, qualities or ingredients of a product to one who
The evidence presented during the hearings on petitioners' motion for the has never seen it or does not know it exists,43 such as "Arthriticare" for
issuance of a writ of preliminary injunction shows that the plastic wrappings arthritis medication.44 On the contrary, "Big Mac" falls
Respondents assert that their "Big Mak" hamburgers cater mainly to the low-
Under Act No. 666,50 the first trademark law, infringement was limited to
income group while petitioners' "Big Mac" hamburgers cater to the middle
confusion of goods only, when the infringing mark is used on "goods of a
and upper income groups. Even if this is true, the likelihood of confusion of
similar kind."51 Thus, no relief was afforded to the party whose registered
business remains, since the low-income group might be led to believe that
mark or its colorable imitation is used on different although related goods. To
the "Big Mak" hamburgers are the low-end hamburgers marketed by
remedy this situation, Congress enacted RA 166 on 20 June 1947. In
petitioners. After all, petitioners have the exclusive right to use the "Big Mac"
defining trademark infringement, Section 22 of RA 166 deleted the
mark.On the other hand, respondents would benefit by associating their low-
requirement in question and expanded its scope to include such use of the
end hamburgers, through the use of the "Big Mak" mark, with petitioners'
mark or its colorable imitation that is likely to result in confusion on "the
high-end "Big Mac" hamburgers, leading to likelihood of confusion in the
source or origin of such goods or services, or identity of such
identity of business.
business."52Thus, while there is confusion of goods when the products are
competing, confusion of business exists when the products are non-
competing but related enough to produce confusion of affiliation. 53 Respondents further claim that petitioners use the "Big Mac" mark only on
petitioners' double-decker hamburgers, while respondents use the "Big Mak"
mark on hamburgers and other products like siopao, noodles and pizza.
On Whether Confusion of Goods and
Respondents also point out that petitioners sell their Big Mac double-deckers
Confusion of Business are Applicable
in a styrofoam box with the "McDonald's" logo and trademark in red, block
letters at a price more expensive than the hamburgers of respondents. In
Petitioners claim that respondents' use of the "Big Mak" mark on contrast, respondents sell their Big Mak hamburgers in plastic wrappers and
respondents' hamburgers results in confusion of goods, particularly with plastic bags. Respondents further point out that petitioners' restaurants are
respect to petitioners' hamburgers labeled "Big Mac." Thus, air-conditioned buildings with drive-thru service, compared to respondents'
petitioners alleged in their complaint: mobile vans.
1.15. Defendants have unduly prejudiced and clearly These and other factors respondents cite cannot negate the undisputed fact
infringed upon the property rights of plaintiffs in the McDonald's that respondents use their "Big Mak" mark on hamburgers, the same food
Marks, particularly the mark "B[ig] M[ac]". Defendants' product that petitioners' sell with the use of their registered mark "Big Mac."
unauthorized acts are likely, and calculated, to confuse, mislead or Whether a hamburger is single, double or triple-decker, and whether
deceive the public into believing that the products and services wrapped in plastic or styrofoam, it remains the same hamburger food
offered by defendant Big Mak Burger, and the business it is product. Even respondents' use of the "Big Mak" mark on non-hamburger
engaged in, are approved and sponsored by, or affiliated with, food products cannot excuse their infringement of petitioners' registered
plaintiffs.54 (Emphasis supplied) mark, otherwise registered marks will lose their protection under the law.
Since respondents used the "Big Mak" mark on the same The registered trademark owner may use his mark on the same or similar
goods, i.e. hamburger sandwiches, that petitioners' "Big Mac" mark is used, products, in different segments of the market, and at different price levels
trademark infringement through confusion of goods is a proper issue in this depending on variations of the products for specific segments of the market.
case. The Court has recognized that the registered trademark owner enjoys
protection in product and market areas that are the normal potential
expansion of his business. Thus, the Court has declared:
Petitioners also claim that respondents' use of the "Big Mak" mark in the sale
of hamburgers, the same business that petitioners are engaged in, results in
Applying the dominancy test, the Court finds that respondents' use of the
In determining likelihood of confusion, jurisprudence has developed two
"Big Mak" mark results in likelihood of confusion. First, "Big Mak"
tests, the dominancy test and the holistic test.57 The dominancy test focuses
sounds exactly the same as "Big Mac." Second, the first word in "Big Mak"
on the similarity of the prevalent features of the competing trademarks that
is exactlythe same as the first word in "Big Mac." Third, the first two letters in
might cause confusion. In contrast, the holistic test requires the court to
"Mak" are the same as the first two letters in "Mac." Fourth, the last letter in
consider the entirety of the marks as applied to the products, including the
"Mak" while a "k" sounds the same as "c" when the word "Mak" is
labels and packaging, in determining confusing similarity.
pronounced. Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus
"Caloocan" is spelled "Kalookan."
The Court of Appeals, in finding that there is no likelihood of confusion that
could arise in the use of respondents' "Big Mak" mark on hamburgers, relied
In short, aurally the two marks are the same, with the first word
on the holistic test. Thus, the Court of Appeals ruled that "it is
of both marks phonetically the same, and the second word of both marks
not sufficientthat a similarity exists in both name(s), but that more
also phonetically the same. Visually, the two marks have both two words and
importantly, the overall presentation, or in their essential, substantive and
six letters, with the first word of both marks having the same letters and the
distinctive parts is such as would likely MISLEAD or CONFUSE persons in
second word having the same first two letters. In spelling, considering the
the ordinary course of purchasing the genuine article." The holistic test
Filipino language, even the last letters of both marks are the same.
considers the two marks in their entirety, as they appear on the goods with
their labels and packaging. It is not enough to consider their words and
compare the spelling and pronunciation of the words.58 Clearly, respondents have adopted in "Big Mak" not only the dominant
but also almost all the features of "Big Mac." Applied to the same food
product of hamburgers, the two marks will likely result in confusion in the
Respondents now vigorously argue that the Court of Appeals' application of
public mind.
the holistic test to this case is correct and in accord with prevailing
jurisprudence.
The Court has taken into account the aural effects of the words and
letters contained in the marks in determining the issue of confusing
This Court, however, has relied on the dominancy test rather than the holistic
similarity. Thus, in Marvex Commercial Co., Inc. v. Petra Hawpia & Co., et
test. The dominancy test considers the dominant features in the competing
al.,66 the Court held:
marks in determining whether they are confusingly similar. Under the
dominancy test, courts give greater weight to the similarity of the appearance
of the product arising from theadoption of the dominant features of the The following random list of confusingly similar sounds in the
registered mark, disregarding minor differences.59 Courts will consider more matter of trademarks, culled from Nims, Unfair Competition and
the aural and visual impressions created by the marks in the public mind, Trade Marks, 1947, Vol. 1, will reinforce our view that
giving little weight to factors like prices, quality, sales outlets and market "SALONPAS" and "LIONPAS" are confusingly similar in sound:
segments. "Gold Dust" and "Gold Drop"; "Jantzen" and "Jass-Sea"; "Silver
Flash" and "Supper Flash"; "Cascarete" and "Celborite"; "Celluloid"
and "Cellonite"; "Chartreuse" and "Charseurs"; "Cutex" and
Thus, in the 1954 case of Co Tiong Sa v. Director of Patents,60 the Court
"Cuticlean"; "Hebe" and "Meje"; "Kotex" and "Femetex"; "Zuso"
ruled:
and "Hoo Hoo". Leon Amdur, in his book "Trade-Mark Law and
Practice", pp. 419-421, cities, as coming within the purview of
xxx It has been consistently held that the question of infringement the idem sonans rule, "Yusea" and "U-C-A", "Steinway Pianos"
of a trademark is to be determined by the test of dominancy. and "Steinberg Pianos", and "Seven-Up" and "Lemon-Up". In Co
Similarity in size, form and color, while relevant, is not Tiong vs. Director of Patents, this Court unequivocally said that
conclusive. If the competing trademark contains the main or "Celdura" and "Cordura" are confusingly similar in sound; this
essential or dominant features of another, and confusion and Court held in Sapolin Co. vs. Balmaceda, 67 Phil. 795 that the
deception is likely to result, infringement takes place. name "Lusolin" is an infringement of the trademark "Sapolin", as
Duplication or imitation is not necessary; nor is itnecessary that the the sound of the two names is almost the same. (Emphasis
infringing label should suggest an effort to imitate. (G. Heilman supplied)
Brewing Co. vs. Independent Brewing Co., 191 F., 489, 495, citing
Eagle White Lead Co. vs. Pflugh (CC) 180 Fed. 579). The
Certainly, "Big Mac" and "Big Mak" for hamburgers create even greater
question at issue in cases of infringement of trademarks is
confusion, not only aurally but also visually.
whether the use of the marks involved would be likely to cause
confusion or mistakes in the mind of the public or deceive
purchasers. (Auburn Rubber Corporation vs. Honover Rubber Co., Indeed, a person cannot distinguish "Big Mac" from "Big Mak" by their
107 F. 2d 588; xxx) (Emphasis supplied.) sound. When one hears a "Big Mac" or "Big Mak" hamburger advertisement
over the radio, one would not know whether the "Mac" or "Mak" ends with a
"c" or a "k."
The Court reiterated the dominancy test in Lim Hoa v. Director of
Patents,61 Phil. Nut Industry, Inc. v. Standard Brands Inc.,62 Converse
Rubber Corporation v. Universal Rubber Products, Inc.,63 and Asia Petitioners' aggressive promotion of the "Big Mac" mark, as borne by their
Brewery, Inc. v. Court of Appeals.64 In the 2001 case of Societe Des advertisement expenses, has built goodwill and reputation for such mark
Produits Nestlé, S.A. v. Court of Appeals,65 the Court explicitly rejected making it one of the easily recognizable marks in the market today.
Thisincreases the likelihood that consumers will mistakenly associate
The RTC described the respective marks and the goods of petitioners and
Section 29 ("Section 29")73 of RA 166 defines unfair competition, thus:
respondents in this wise:
xxxx
The mark "B[ig] M[ac]" is used by plaintiff McDonald's to identify its
double decker hamburger sandwich. The packaging material is
Any person who will employ deception or any other means a styrofoam box with the McDonald's logo and trademark in red
contrary to good faith by which he shall pass off the goods with block capital letters printed on it. All letters of the "B[ig] M[ac]"
manufactured by him or in which he deals, or his business, or mark are also in red and block capital letters. On the other
services for those of the one having established such goodwill, or hand, defendants' "B[ig] M[ak]" script print is in orange with only
who shall commit any acts calculated to produce said the letter "B" and "M" being capitalized and the packaging material
result, shall be guilty of unfair competition, and shall be subject to is plastic wrapper. xxxx Further, plaintiffs' logo and mascot are the
an action therefor. umbrella "M" and "Ronald McDonald's", respectively, compared to
the mascot of defendant Corporation which is a chubby boy called
"Macky" displayed or printed between the words "Big" and
In particular, and without in any way limiting the scope of unfair
"Mak."81 (Emphasis supplied)
competition, the following shall be deemed guilty of unfair
competition:
Respondents point to these dissimilarities as proof that they did not give their
hamburgers the general appearance of petitioners' "Big Mac" hamburgers.
(a) Any person, who in selling his goods shall give them the
general appearance of goods of another manufacturer or
dealer, either as to the goods themselves or in the wrapping of The dissimilarities in the packaging are minor compared to the stark
the packages in which they are contained, or the devices or similarities in the words that give respondents' "Big Mak" hamburgers the
words thereon, or in any feature of their appearance, which would general appearance of petitioners' "Big Mac" hamburgers. Section 29(a)
be likely to influence purchasers to believe that the goods offered expressly provides that the similarity in the general appearance of the goods
are those of a manufacturer or dealer, other may be in the "devices or words" used on the wrappings. Respondents have
than the actual manufacturer or dealer, or who otherwise clothes applied on their plastic wrappers and bags almost the same wordsthat
the goods with such appearance as shall deceive the public and petitioners use on their styrofoam box. What attracts the attention of the
defraud another of his legitimate trade, or any subsequent vendor buying public are the words "Big Mak" which are almost the same, aurally
3. ID.; ID.; MUST BE EVALUATED IN THEIR ENTIRETY TO DETERMINE The Lyceum of Baguio, Inc. assailed the Order of the SEC before the
WHETHER THEY ARE CONFUSINGLY OR DECEPTIVELY SIMILAR TO Supreme Court in a case docketed as G.R. No. L-46595. In a Minute
ANOTHER CORPORATE ENTITY'S NAME. — petitioner institution is not Resolution dated 14 September 1977, the Court denied the Petition for
entitled to a legally enforceable exclusive right to use the word "Lyceum" in Review for lack of merit. Entry of judgment in that case was made on 21
its corporate name and that other institutions may use "Lyceum" as part of October 1977. 2
their corporate names. To determine whether a given corporate name is
"identical" or "confusingly or deceptively similar" with another entity's
Armed with the Resolution of this Court in G.R. No. L-46595, petitioner then
corporate name, it is not enough to ascertain the presence of "Lyceum" or
wrote all the educational institutions it could find using the word "Lyceum" as
"Liceo" in both names. One must evaluate corporate names in their entirety
part of their corporate name, and advised them to discontinue such use of
and when the name of petitioner is juxtaposed with the names of private
"Lyceum." When, with the passage of time, it became clear that this recourse
respondents, they are not reasonably regarded as "identical" or "confusingly
had failed, petitioner instituted before the SEC SEC-Case No. 2579 to
or deceptively similar" with each other.
enforce what petitioner claims as its proprietary right to the word "Lyceum."
The SEC hearing officer rendered a decision sustaining petitioner's claim to
DECISION an exclusive right to use the word "Lyceum." The hearing officer relied upon
the SEC ruling in the Lyceum of Baguio, Inc. case (SEC-Case No. 1241) and
held that the word "Lyceum" was capable of appropriation and that petitioner
FELICIANO, J p:
had acquired an enforceable exclusive right to the use of that word.
Buhi Lyceum; 2. The Court of Appeals erred in holding that respondent Western
Central Lyceum of Catanduanes; Pangasinan Lyceum, Inc. was incorporated earlier than petitioner.
Lyceum of Eastern Mindanao, Inc.; and
Lyceum of Southern Philippines
3. The Court of Appeals erred in holding that the word Lyceum has not
Petitioner's original complaint before the SEC had included three (3) other
acquired a secondary meaning in favor of petitioner.
entities:
1. The Lyceum of Malacanay;
2. The Lyceum of Marbel; and 4. The Court of Appeals erred in holding that Lyceum as a generic word
3. The Lyceum of Araullo cannot be appropriated by the petitioner to the exclusion of others. 5
The complaint was later withdrawn insofar as concerned the Lyceum of We will consider all the foregoing ascribed errors, though not necessarily
Malacanay and the Lyceum of Marbel, for failure to serve summons upon seriatim. We begin by noting that the Resolution of the Court in G.R. No. L-
these two (2) entities. The case against the Liceum of Araullo was dismissed 46595 does not, of course, constitute res adjudicata in respect of the case at
when that school motu proprio change its corporate name to "Pamantasan bar, since there is no identity of parties. Neither is stare decisis pertinent, if
ng Araullo." only because the SEC En Banc itself has re-examined Associate
Commissioner Sulit's ruling in the Lyceum of Baguio case. The Minute
Resolution of the Court in G.R. No. L-46595 was not a reasoned adoption of
The background of the case at bar needs some recounting. Petitioner had
the Sulit ruling.
sometime before commenced in the SEC a proceeding (SEC-Case No.
1241) against the Lyceum of Baguio, Inc. to require it to change its corporate
name and to adopt another name not "similar [to] or identical" with that of The Articles of Incorporation of a corporation must, among other things, set
petitioner. In an Order dated 20 April 1977, Associate Commissioner Julio out the name of the corporation. 6 Section 18 of the Corporation Code
Sulit held that the corporate name of petitioner and that of the Lyceum of
Ang vs. Teodoro GR No. L-48226, 14 Dec. 1942 We find it necessary to go into the etymology and meaning of the Tagalog
words "Ang Tibay" to determine whether they are a descriptive term, i.e.,
Petitioner has appealed to this Court by certiorari to reverse the judgment of whether they relate to the quality or description of the merchandise to which
the Court of Appeals reversing that of the Court of First Instance of Manila respondent has applied them as a trade-mark. The word "ang" is a definite
and directing the Director of Commerce to cancel the registration of the article meaning "the" in English. It is also used as an adverb, a contraction of
trade-mark "Ang Tibay" in favor of said petitioner, and perpetually enjoining the word "anong" (what or how). For instance, instead of saying, "Anong
the latter from using said trade-mark on goods manufactured and sold by ganda!" ("How beautiful!"), we ordinarily say, "Ang ganda!" Tibay is a root
her. word from which are derived the verb magpatibay (to strenghten; the
nouns pagkamatibay (strength, durability), katibayan (proof, support,
strength), katibay-tibayan (superior strength); and the adjectives matibay
Respondent Toribio Teodoro, at first in partnership with Juan Katindig and (strong, durable, lasting), napakatibay(very strong), kasintibay or
later as sole proprietor, has continuously used "Ang Tibay," both as a trade- magkasintibay (as strong as, or of equal strength). The phrase "Ang Tibay" is
mark and as a trade-name, in the manufacture and sale of slippers, shoes, an exclamation denoting administration of strength or durability. For
and indoor baseballs since 1910. He formally registered it as trade-mark on instance, one who tries hard but fails to break an object exclaims, "Ang
September 29, 1915, and as trade-name on January 3, 1933. The growth of tibay!" (How strong!") It may also be used in a sentence thus, "Ang tibay ng
his business is a thrilling epic of Filipino industry and business capacity. sapatos mo!" (How durable your shoes are!") The phrase "ang tibay" is never
Starting in an obscure shop in 1910 with a modest capital of P210 but with used adjectively to define or describe an object. One does not say, "ang
tireless industry and unlimited perseverance, Toribio Teodoro, then an tibay sapatos" or "sapatos ang tibay" is never used adjectively to define or
unknown young man making slippers with his own hands but now a describe an object. One does not say, "ang tibay sapatos" or "sapatos ang
prominent business magnate and manufacturer with a large factory operated tibay" to mean "durable shoes," but "matibay na sapatos" or "sapatos na
with modern machinery by a great number of employees, has steadily grown matibay."
with his business to which he has dedicated the best years of his life and
which he has expanded to such proportions that his gross sales from 1918 to
1938 aggregated P8,787,025.65. His sales in 1937 amounted to From all of this we deduce that "Ang Tibay" is not a descriptive term within
P1,299,343.10 and in 1938, P1,133,165.77. His expenses for advertisement the meaning of the Trade-Mark Law but rather a fanciful or coined phrase
from 1919 to 1938 aggregated P210,641.56. which may properly and legally be appropriated as a trade-mark or trade-
name. 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
Petitioner (defendant below) registered the same trade-mark "Ang Tibay" for same words as a trademark of her products she or her attorney as well as
pants and shirts on April 11, 1932, and established a factory for the the Director of Commerce was undoubtedly convinced that said words (Ang
manufacture of said articles in the year 1937. In the following year (1938) her Tibay) were not a descriptive term and hence could be legally used and
gross sales amounted to P422,682.09. Neither the decision of the trial court validly registered as a trade-mark. It seems stultifying and puerile for her now
nor that of the Court of Appeals shows how much petitioner has spent or to contend otherwise, suggestive of the story of sour grapes. Counsel for the
advertisement. But respondent in his brief says that petitioner "was unable to petitioner says that the function of a trade-mark is to point distinctively, either
prove that she had spent a single centavo advertising "Ang Tibay" shirts and by its own meaning or by association, to the origin or ownership of the wares
pants prior to 1938. In that year she advertised the factory which she had to which it is applied. That is correct, and we find that "Ang Tibay," as used
just built and it was when this was brought to the attention of the appellee by the respondent to designate his wares, had exactly performed that
that he consulted his attorneys and eventually brought the present suit." function for twenty-two years before the petitioner adopted it as a trade-mark
in her own business. Ang Tibay shoes and slippers are, by association,
The trial court (Judge Quirico Abeto) presiding absolved the defendant from known throughout the Philippines as products of the Ang Tibay factory
the complaint, with costs against the plaintiff, on the grounds that the two owned and operated by the respondent Toribio Teodoro.
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 Second. In her second assignment of error petitioner contends that the Court
The judgment of the Court of Appeals is affirmed, with costs against the
petitioner in the three instances. So ordered. Confusingly Similar with registered marks, Sec 123 (d); Sec 147,1
Dominancy test Having received reports that the private respondent was using its exclusively
designed bottles and a logo confusingly similar to Del Monte's, Philpack
warned it to desist from doing so on pain of legal action. Thereafter, claiming
that the demand had been ignored, Philpack and Del Monte filed a complaint
Holistic test
against the private respondent for infringement of trademark and unfair
Dominancy Test – focuses on the similarity of the prevalent features of the competition, with a prayer for damages and the issuance of a writ of
competing trademarks which might cause confusion of deception, and thus preliminary injunction. 5
infringement. If the competing trademark contains the main, essential or
dominant features of another, and the confusion or deception is likely to result,
infringement takes place. Duplication or imitation is not necessary; nor is it In its answer, Sunshine alleged that it had long ceased to use the Del Monte
necessary that the infringing label should suggest an effort to imitate. The bottle and that its logo was substantially different from the Del Monte logo
question is whether the use of the mark involved is likely to cause confusion or and would not confuse the buying public to the detriment of the petitioners. 6
mistake in the mind of the public or deceive purchasers. The Dominancy test is
no embodied in Section 155 of the IPL and is therefore the controlling test. After trial, the Regional Trial Court of Makati dismissed the complaint. It held
that there were substantial differences between the logos or trademarks of
Holistic Test – requires that the entirety of the mark in question be considered the parties; that the defendant had ceased using the petitioners' bottles; and
in resolving confusing similarity. Comparison of words is not the only that in any case the defendant became the owner of the said bottles upon its
determining factor. The trademark in their entirety as they appear in their purchase thereof from the junk yards. Furthermore, the complainants had
respective labels or hand tags must also be considered in relation to the goods failed to establish the defendant's malice or bad faith, which was an essential
to which they are attached. The discerning eye of the observer must focus not element of infringement of trademark or unfair competition. 7
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. This decision was affirmed in toto by the respondent court, which is now
- CLR, Sundiang and Aquino faulted in this petition for certiorari under Rule 45 of the Rules of Court.
Sec. 22. Infringement, what constitutes. — Any person who 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
Asia Brewery Inc. vs. CA (Supra) 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 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
Del Monte Corp vs. CA GR No. L-78325, 25 January 1990
to a civil action by the registrant for any or all of the remedies herein
provided.
The petitioners are questioning the decision of the respondent court
upholding the dismissal by the trial court of their complaint against the
Sec. 29 of the same law states as follows:
private respondent for infringement of trademark and unfair competition.
Its motion for reconsideration having been denied by the respondent Director The sales of 12 to 20 pairs a month of petitioner's rubber shoes cannot be
of Patents, petitioner instituted the instant petition for review. considered insignificant, considering that they appear to be of high
expensive quality, which not too many basketball players can afford to buy.
Any sale made by a legitimate trader from his store is a commercial act
As correctly phrased by public respondent Director of Patents, the basic
establishing trademark rights since such sales are made in due course of
issue presented for our consideration is whether or not the respondent's
business to the general public, not only to limited individuals. It is a matter of
partial appropriation of petitioner's corporate name is of such character that it
public knowledge that all brands of goods filter into the market,
is calculated to deceive or confuse the public to the injury of the petitioner to
indiscriminately sold by jobbers dealers and merchants not necessarily with
which the name belongs.
the knowledge or consent of the manufacturer. Such actual sale of goods in
the local market establishes trademark use which serves as the basis for any
A trade name is any individual name or surname, firm name, device or word action aimed at trademark pre- exemption. It is a corollary logical deduction
used by manufacturers, industrialists, merchants and others to Identify their that while Converse Rubber Corporation is not licensed to do business in the
businesses, vocations or occupations. 8 As the trade name refers to the country and is not actually doing business here, it does not mean that its
business and its goodwill ... the trademark refers to the goods." 9 The goods are not being sold here or that it has not earned a reputation or
ownership of a trademark or tradename is a property right which the owner is goodwill as regards its products. The Director of Patents was, therefore,
entitled to protect "since there is damage to him from confusion or reputation remiss in ruling that the proofs of sales presented "was made by a single
or goodwill in the mind of the public as well as from confusion of goods. The witness who had never dealt with nor had never known opposer [petitioner] x
modern trend is to give emphasis to the unfairness of the acts and to classify x x without Opposer having a direct or indirect hand in the transaction to be
and treat the issue as fraud. 10 the basis of trademark pre- exemption."
From a cursory appreciation of the petitioner's corporate name "CONVERSE Another factor why respondent's applications should be denied is the
RUBBER CORPORATION,' it is evident that the word "CONVERSE" is the confusing similarity between its trademark "UNIVERSAL CONVERSE AND
dominant word which Identifies petitioner from other corporations engaged in DEVICE" and petitioner's corporate name and/or its trademarks "CHUCK
similar business. Respondent, in the stipulation of facts, admitted petitioner's TAYLOR" and "ALL STAR DEVICE" which could confuse the purchasing
existence since 1946 as a duly organized foreign corporation engaged in the public to the prejudice of petitioner,
manufacture of rubber shoes. This admission necessarily betrays its
knowledge of the reputation and business of petitioner even before it applied
The trademark of respondent "UNIVERSAL CONVERSE and DEVICE" is
for registration of the trademark in question. Knowing, therefore, that the
imprinted in a circular manner on the side of its rubber shoes. In the same
word "CONVERSE" belongs to and is being used by petitioner, and is in fact
manner, the trademark of petitioner which reads "CONVERSE CHUCK
the dominant word in petitioner's corporate name, respondent has no right to
TAYLOR" is imprinted on a circular base attached to the side of its rubber
appropriate the same for use on its products which are similar to those being
shoes. The deteminative factor in ascertaining whether or not marks are
produced by petitioner.
confusingly similar to each other "is not whether the challenged mark would
actually cause confusion or deception of the purchasers but whether the use
A corporation is entitled to the cancellation of a mark that is confusingly of such mark would likely cause confusion or mistake on the part of the
similar to its corporate name."11 "Appropriation by another of the dominant buying public. It would be sufficient, for purposes of the law, that the
part of a corporate name is an infringement."12 similarity between the two labels is such that there is a possibility or
likelihood of the purchaser of the older brand mistaking the new brand for
it." 19 Even if not an the details just mentioned were identical, with the
Respondent's witness had no Idea why respondent chose "UNIVERSAL
general appearance alone of the two products, any ordinary, or even
CONVERSE" as trademark and the record discloses no reasonable
perhaps even [sic] a not too perceptive and discriminating customer could be
explanation for respondent's use of the word "CONVERSE" in its trademark.
deceived ... " 20
Such unexplained use by respondent of the dominant word of petitioner's
corporate name lends itself open to the suspicion of fraudulent motive to
trade upon petitioner's reputation, thus: When the law speaks co-purchaser," the reference is to ordinary average
purchaser. 21 It is not necessary in either case that the resemblance be
sufficient to deceive experts, dealers, or other persons specially familiar with
A boundless choice of words, phrases and symbols is available to one who
the trademark or goods involve." 22
wishes a trademark sufficient unto itself to distinguish his product from those
of others. When, however, there is no reasonable explanation for the
defendant's choice of such a mark though the field for his selection was so The similarity y in the general appearance of respondent's trademark and
broad, the inference is inevitable that it was chosen deliberately to that of petitioner would evidently create a likelihood of confusion among the
deceive. 13 purchasing public. But even assuming, arguendo, that the trademark sought
to be registered by respondent is distinctively dissimilar from those of the
246 Corporation vs. Daway, GR. No. 114508, 19 Nov. 1999 III - THE HONORABLE COURT OF APPEALS VIOLATED PETITIONER’S
RIGHT TO SUBSTANTIVE DUE PROCESS WHEN IT ARBITRARILY AND
CAPRICIOUSLY RULED THAT WHAT WAS SPECIFICALLY DENIED IN
This is a petition for review on certiorari under Rule 45 of the 1997 Rules of THE ASSAILED OCTOBER 20, 2000 ORDER IS PETITIONER’S MOTION
Civil Procedure assailing the November 28, 2002 Decision1 of the Court of FOR PRELIMINARY HEARING ON DEFENDANT’S AFFIRMATIVE
Appeals in CA-G.R. SP No. 64660 which dismissed the petition for certiorari DEFENSES AND NOT PETITIONER’S MOTION TO DISMISS PER SE
filed by petitioner, as well as the Resolution2 dated February 13, 2003 CONSIDERING THAT:
denying its motion for reconsideration.
A. THERE IS ABSOLUTELY NOTHING IN THE ORDER DATED OCTOBER
The undisputed facts show that on November 26, 1998, respondents 20, 2000 OF RESPONDENT JUDGE WHICH SUGGESTS THAT THE
Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of RESOLUTION OF PETITIONER’S MOTION TO DISMISS PER SE WAS
Rolex and Crown Device, filed against petitioner 246 Corporation the instant HELD IN ABEYANCE BY THE RESPONDENT JUDGE. HENCE THE SAID
suit for trademark infringement and damages with prayer for the issuance of ORDER DATED OCTOBER 20, 2000 ALSO CONSTITUTES A DENIAL ON
a restraining order or writ of preliminary injunction3 before the Regional Trial THE MERITS OF PETITIONER’S MOTION TO DISMISS PER SE AND NOT
Court of Quezon City, Branch 90. Respondents alleged that sometime in July MERELY OF PETITIONER’S MOTION FOR PRELIMINARY HEARING
1996, petitioner adopted and, since then, has been using without authority THEREON.
the mark "Rolex" in its business name "Rolex Music Lounge" as well as in its B. PRIVATE RESPONDENTS’ COMMENT AND OPPOSITION DATED 11
newspaper advertisements as – "Rolex Music Lounge, KTV, Disco & Party AUGUST 2000, WHICH WAS CITED AND SUSTAINED BY RESPONDENT
Club." JUDGE, CLEARLY TRAVERSED THE MERITS OF THE GROUNDS FOR
PETITIONER’S MOTION TO DISMISS PER SE. HENCE, THE SAID 20
OCTOBER 2000 ORDER’S DENIAL OF PETITIONER’S MOTION IS NOT
In its answer raising special affirmative defenses, petitioner argued that LIMITED TO THE MOTION FOR PRELIMINARY HEARING BUT ALSO
respondents have no cause of action because no trademark infringement CONSTITUTES A DENIAL OF PETITIONER’S MOTION TO DISMISS PER
exist; that no confusion would arise from the use by petitioner of the mark SE.
"Rolex" considering that its entertainment business is totally unrelated to the
items catered by respondents such as watches, clocks, bracelets and parts IV - IN ARBITRARILY AND CAPRICIOUSLY RULING THAT ATTY.
thereof. It also contended that the complaint was not properly verified and ALONZO ANCHETA PROPERLY VERIFIED AND CERTIFIED PRIVATE
certified against forum shopping considering that Atty. Alonzo Ancheta, the RESPONDENTS’ COMPLAINT A QUO, THE HONORABLE COURT OF
counsel of record of respondents who signed the verification and APPEALS VIOLATED NOT ONLY PETITIONER’S SUBSTANTIVE DUE
certification, was not authorized to represent respondents. 4 PROCESS RIGHTS, BUT ALSO THE DOCTRINE OF SEPARATE
CORPORATE PERSONALITY; CONSIDERING THAT THE RECORDS OF
On July 21, 2000, petitioner filed a motion for preliminary hearing on its THIS CASE IS (sic) COMPLETELY BEREFT AND DEVOID OF ANY DULY
affirmative defenses.5 Subsequently, on motion of petitioner, the trial court EXECUTED SPECIAL POWER OF ATTORNEY, EMANATING FROM
issued a subpoena ad testificandum requiring Atty. Alonzo Ancheta to PRIVATE RESPONDENTS, WHICH EXPLICITLY AND SPECIFICALLY
appear at the preliminary hearing.6 Respondents, in the meantime, filed a AUTHORIZES ATTY. ALONZO ANCHETA TO REPRESENT PRIVATE
Comment and Opposition7 to the motion for preliminary hearing and a motion RESPONDENTS MONTRES ROLEX S.A. IN THE FILING OF THE
to quash the subpoena ad testificandum. COMPLAINT A QUO. BY REASON THEREOF, PRIVATE RESPONDENTS
COULD NOT BE DEEMED TO HAVE VOLUNTARILY APPEARED BEFORE
THE RESPONDENT JUDGE; CONSEQUENTLY, THE TRIAL COURT
In an Order dated October 27, 2000, the trial court quashed the subpoena COULD NOT HAVE VALIDLY ACQUIRED JURISDICTION OVER THE
ad testificandum and denied petitioner’s motion for preliminary hearing on PERSON OF PRIVATE RESPONDENTS.
affirmative defenses with motion to dismiss.8
V - IN ARBITRARILY AND CAPRICIOUSLY AFFIRMING RESPONDENT
With the denial of the motion for reconsideration on March 16, 2001, JUDGE’S QUASHAL OF THE SUBPOENA DATED 14 AUGUST 2000
petitioner filed a petition for certiorari with the Court of Appeals contending DIRECTED AGAINST ATTY. ALONZO ANCHETA, THE HONORABLE
The respondent court was, however, convinced that there was no probable
The facts are not seriously disputed. The petitioner is a foreign corporation, cause to justify the issuance of the search warrants. Thus, in its order dated
organized and existing under the laws of France and not doing business in March 22, 1983, the search warrants were recalled and set aside and the
the Philippines, It is undeniable from the records that it is the actual owner of NBI agents or officers in custody of the seized items were ordered to return
the abovementioned trademarks used on clothings and other goods the same to Hemandas. (Rollo, p. 25)
specifically sporting apparels sold in many parts of the world and which have
been marketed in the Philippines since 1964, The main basis of the private
respondent's case is its claim of alleged prior registration. The petitioner anchors the present petition on the following issues:
In 1975, Hemandas & Co., a duly licensed domestic firm applied for and was Did respondent judge act with grave abuse of discretion amounting to lack of
issued Reg. No. SR-2225 (SR stands for Supplemental Register) for the jurisdiction,
trademark "CHEMISE LACOSTE & CROCODILE DEVICE" by the Philippine (i) in reversing the finding of probable cause which he himself had made in
Patent Office for use on T-shirts, sportswear and other garment products of issuing the search warrants, upon allegations which are matters of defense
the company. Two years later, it applied for the registration of the same and as such can be raised and resolved only upon trial on the merits; and
trademark under the Principal Register. The Patent Office eventually issued (ii) in finding that the issuance of the search warrants is premature in the
an order dated March 3, 1977 which states that: face of the fact that (a) Lacoste's registration of the subject trademarks is still
pending with the Patent Office with opposition from Hemandas; and (b) the
subject trademarks had been earlier registered by Hemandas in his name in
xxx xxx xxx the Supplemental Register of the Philippine Patent Office?
... Considering that the mark was already registered in the Supplemental Respondent, on the other hand, centers his arguments on the following
Register in favor of herein applicant, the Office has no other recourse but to
allow the application, however, Reg. No. SR-2225 is now being contested in
I - THE PETITIONER HAS NO CAPACITY TO SUE BEFORE PHILIPPINE The rules and regulations promulgated by the Board of Investments pursuant
COURTS. to its rule-making power under Presidential Decree No. 1789, otherwise
known as the Omnibus Investment Code, support a finding that the petitioner
is not doing business in the Philippines. Rule I, Sec. 1 (g) of said rules and
II - THE RESPONDENT JUDGE DID NOT COMMIT A GRAVE ABUSE OF
regulations defines "doing business" as one" which includes, inter alia:
DISCRETION TANTAMOUNT TO LACK OF JURISDICTION IN ISSUING
THE ORDER DATED APRIL 22, 1983.
(1) ... A foreign firm which does business through middlemen acting on their
own names, such as indentors, commercial brokers or commission
Hemandas argues in his comment on the petition for certiorari that the
merchants, shall not be deemed doing business in the Philippines. But such
petitioner being a foreign corporation failed to allege essential facts bearing
indentors, commercial brokers or commission merchants shall be the ones
upon its capacity to sue before Philippine courts. He states that not only is
deemed to be doing business in the Philippines.
the petitioner not doing business in the Philippines but it also is not licensed
(2) Appointing a representative or distributor who is domiciled in the
to do business in the Philippines. He also cites the case of Leviton Industries
Philippines, unless said representative or distributor has an independent
v. Salvador (114 SCRA 420) to support his contention The Leviton case,
status, i.e., it transacts business in its name and for its account, and not in
however, involved a complaint for unfair competition under Section 21-A of
the name or for the account of a principal Thus, where a foreign firm is
Republic Act No. 166 which provides:
represented by a person or local company which does not act in its name but
in the name of the foreign firm the latter is doing business in the Philippines.
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
xxx xxx xxx
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- Applying the above provisions to the facts of this case, we find and conclude
Nine, as amended, otherwise known as the Corporation Law, at the time it that the petitioner is not doing business in the Philippines. Rustan is actually
brings the complaint; Provided, That the country of which the said foreign a middleman acting and transacting business in its own name and or its own
corporation or juristic person is a citizen, or in which it is domiciled, by treaty, account and not in the name or for the account of the petitioner.
convention or law, grants a similar privilege to corporate or juristic persons of
the Philippines.
But even assuming the truth of the private respondent's allegation that the
petitioner failed to allege material facts in its petition relative to capacity to
We held that it was not enough for Leviton, a foreign corporation organized sue, the petitioner may still maintain the present suit against respondent
and existing under the laws of the State of New York, United States of Hemandas. As early as 1927, this Court was, and it still is, of the view that a
America, to merely allege that it is a foreign corporation. It averred in foreign corporation not doing business in the Philippines needs no license to
Paragraph 2 of its complaint that its action was being filed under the sue before Philippine courts for infringement of trademark and unfair
provisions of Section 21-A of Republic Act No. 166, as amended. competition. Thus, in Western Equipment and Supply Co. v. Reyes (51 Phil.
Compliance with the requirements imposed by the abovecited provision was 115), this Court held that a foreign corporation which has never done any
necessary because Section 21-A of Republic Act No. 166 having explicitly business in the Philippines and which is unlicensed and unregistered to do
laid down certain conditions in a specific proviso, the same must be business here, but is widely and favorably known in the Philippines through
expressly averred before a successful prosecution may ensue. It is therefore, the use therein of its products bearing its corporate and tradename, has a
necessary for the foreign corporation to comply with these requirements or legal right to maintain an action in the Philippines to restrain the residents
aver why it should be exempted from them, if such was the case. The foreign and inhabitants thereof from organizing a corporation therein bearing the
corporation may have the right to sue before Philippine courts, but our rules same name as the foreign corporation, when it appears that they have
on pleadings require that the qualifying circumstances necessary for the personal knowledge of the existence of such a foreign corporation, and it is
assertion of such right should first be affirmatively pleaded. apparent that the purpose of the proposed domestic corporation is to deal
and trade in the same goods as those of the foreign corporation.
In contradistinction, the present case involves a complaint for violation of
Article 189 of the Revised Penal Code. The Leviton case is not applicable. We further held:
Asserting a distinctly different position from the Leviton argument, Hemandas xxx xxx xxx
argued in his brief that the petitioner was doing business in the Philippines ... That company is not here seeking to enforce any legal or control rights
but was not licensed to do so. To support this argument, he states that the arising from, or growing out of, any business which it has transacted in the
applicable ruling is the case of Mentholatum Co., Inc. v. Mangaliman: (72 Philippine Islands. The sole purpose of the action:
Phil. 524) where Mentholatum Co. Inc., a foreign corporation and Philippine- Is to protect its reputation, its corporate name, its goodwill, whenever that
American Drug Co., the former's exclusive distributing agent in the reputation, corporate name or goodwill have, through the natural
Philippines filed a complaint for infringement of trademark and unfair development of its trade, established themselves.' And it contends that its
competition against the Mangalimans. rights to the use of its corporate and trade name:
Is a property right, a right in rem, which it may assert and protect against all
The argument has no merit. The Mentholatum case is distinct from and
the world, in any of the courts of the world-even in jurisdictions where it does
inapplicable to the case at bar. Philippine American Drug Co., Inc., was
not transact business-just the same as it may protect its tangible property,
admittedly selling products of its principal Mentholatum Co., Inc., in the
real or personal, against trespass, or conversion. Citing sec. 10, Nims on
latter's name or for the latter's account. Thus, this Court held that "whatever
Unfair Competition and TradeMarks and cases cited; secs. 21-22, Hopkins
transactions the Philippine-American Drug Co., Inc. had executed in view of
on TradeMarks, Trade Names and Unfair Competition and cases cited.' That
the law, the Mentholatum Co., Inc., did it itself. And, the Mentholatum Co.,
point is sustained by the authorities, and is well stated in Hanover Star
Inc., being a foreign doing business in the Philippines without the license
Mining Co. v. Allen and Wheeler Co. (208 Fed., 513). in which the syllabus
required by Section 68 of the Corporation Law, it may not prosecute this
says:
action for violation of trademark and unfair competition."
Since it is the trade and not the mark that is to be protected, a trade-mark
acknowledges no territorial boundaries of municipalities or states or nations,
In the present case, however, the petitioner is a foreign corporation not doing but extends to every market where the trader's goods have become known
business in the Philippines. The marketing of its products in the Philippines is and Identified by the use of the mark.
done through an exclusive distributor, Rustan Commercial Corporation The
latter is an independent entity which buys and then markets not only
Our recognizing the capacity of the petitioner to sue is not by any means
products of the petitioner but also many other products bearing equally well-
novel or precedent setting. Our jurisprudence is replete with cases illustrating
known and established trademarks and tradenames. in other words, Rustan
instances when foreign corporations not doing business in the Philippines
This concept of probable cause was amplified and modified by our ruling
The reason is explained by a leading commentator on Philippine Commercial
in Stonehill v. Diokno, (20 SCRA 383) that probable cause "presupposes the
Laws:
introduction of competent proof that the party against whom it is sought has
performed particular acts, or committed specific omissions, violating a given
provision of our criminal laws." The registration of a mark upon the supplemental register is not, as in the
case of the principal register, prima facie evidence of (1) the validity of
registration; (2) registrant's ownership of the mark; and (3) registrant's
The question of whether or not probable cause exists is one which must be
exclusive right to use the mark. It is not subject to opposition, although it may
decided in the light of the conditions obtaining in given situations (Central
be cancelled after its issuance. Neither may it be the subject of interference
Bank v. Morfe, 20 SCRA 507). We agree that there is no general formula or
proceedings. Registration on the supplemental register is not constructive
fixed rule for the determination of the existence of probable cause since, as
notice of registrant's claim of ownership. A supplemental register is provided
we have recognized in Luna v. Plaza(26 SCRA 310), the existence depends
for the registration of marks which are not registrable on the principal register
to a large degree upon the finding or opinion of the judge conducting the
because of some defects (conversely, defects which make a mark
examination. However, the findings of the judge should not disregard the
unregistrable on the principal register, yet do not bar them from the
facts before him nor run counter to the clear dictates of reason. More so it is
supplemental register.) (Agbayani, II Commercial Laws of the Philippines,
plain that our country's ability to abide by international commitments is at
1978, p. 514, citing Uy Hong Mo v. Titay & Co., et al., Dec. No. 254 of
stake.
Director of Patents, Apr. 30, 1963);
The records show that the NBI agents at the hearing of the application for
Registration in the Supplemental Register, therefore, serves as notice that
the warrants before respondent court presented three witnesses under oath,
the registrant is using or has appropriated the trademark. By the very fact
sworn statements, and various exhibits in the form of clothing apparels
that the trademark cannot as yet be entered in the Principal Register, all who
manufactured by Hemandas but carrying the trademark Lacoste. The
deal with it should be on guard that there are certain defects, some obstacles
respondent court personally interrogated Ramon Esguerra, Samuel Fiji, and
which the user must Still overcome before he can claim legal ownership of
Mamerto Espatero by means of searching questions. After hearing the
the mark or ask the courts to vindicate his claims of an exclusive right to the
testimonies and examining the documentary evidence, the respondent court
use of the same. It would be deceptive for a party with nothing more than a
was convinced that there were good and sufficient reasons for the issuance
registration in the Supplemental Register to posture before courts of justice
of the warrant. And it then issued the warrant.
as if the registration is in the Principal Register.
A petition for the suspension of the criminal action based upon the pendency In the case at bar, the Minister of Trade, as 'the competent authority of the
of a pre-judicial question in a civil case, may only be presented by any party country of registration,' has found that among other well-known trademarks
before or during the trial of the criminal action. '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.
The case which suspends the criminal prosecution must be a civil case
Apart from this finding, the annexes to the opposition, which La Chemise
which is determinative of the innocence or, subject to the availability of other
Lacoste S.A. filed in the Patent Office, show that it is the owner of the
defenses, the guilt of the accused. The pending case before the Patent
trademark 'Lacoste' and the device consisting of a representation of a
Office is an administrative proceeding and not a civil case. The decision of
crocodile or alligator by the prior adoption and use of such mark and device
the Patent Office cannot be finally determinative of the private respondent's
on clothing, sports apparel and the like. La Chemise Lacoste S.A, obtained
innocence of the charges against him.
registration of these mark and device and was in fact issued renewal
certificates by the French National Industry Property Office.
In Flordelis v. Castillo (58 SCRA 301), we held that: xxx xxx xxx
Indeed, due process is a rule of reason. In the case at bar the order of the
Patent Office is based not only on the undisputed fact of ownership of the
As clearly delineated in the aforecited provisions of the new Civil Code and trademark by the appellee but on a prior determination by the Minister of
the Rules of Court, and as uniformly applied in numerous decisions of this
Trade, as the competent authority under the Paris Convention, that the
Court, (Berbari v. Concepcion, 40 Phil. 837 (1920); Aleria v. Mendoza, 83 trademark and device sought to be registered by the appellant are well-
Phil. 427 (1949); People v. Aragon, 94 Phil. 357 (1954); Brito-Sy v. Malate known marks which the Philippines, as party to the Convention, is bound to
Taxicab & Garage, Inc., 102 Phil 482 (1957); Mendiola v. Macadael, 1 SCRA
protect in favor of its owners. it would be to exalt form over substance to say
593; Benitez v. Concepcion, 2 SCRA 178; Zapante v. Montesa, 4 SCRA 510; that under the circumstances, due process requires that a hearing should be
Jimenez v. Averia, 22 SCRA 1380.) In Buenaventura v. Ocampo (55 SCRA held before the application is acted upon.
271) the doctrine of prejudicial question was held inapplicable because no
The appellant cites section 9 of Republic Act No. 166, which requires notice
criminal case but merely an administrative case and a civil suit were and hearing whenever an opposition to the registration of a trademark is
involved. The Court, however, held that, in view of the peculiar made. This provision does not apply, however, to situations covered by the
circumstances of that case, the respondents' suit for damages in the lower
Paris Convention, where the appropriate authorities have determined that a
court was premature as it was filed during the pendency of an administrative well-known trademark is already that of another person. In such cases, the
case against the respondents before the POLCOM. 'The possibility cannot countries signatories to the Convention are obliged to refuse or to cancel the
be overlooked,' said the Court, 'that the POLCOM may hand down a decision
registration of the mark by any other person or authority. In this case, it is not
adverse to the respondents, in which case the damage suit will become disputed that the trademark Lacoste is such a well-known mark that a
unfounded and baseless for wanting in cause of action.') the doctrine of pre- hearing, such as that provided in Republic Act No. 166, would be
judicial question comes into play generally in a situation where a civil action
superfluous.
and a criminal action both penned and there exists in the former an issue
which must be preemptively resolved before the criminal action may
proceed, because howsoever the issue raised in the civil action is resolved The issue of due process was raised and fully discussed in the appellate
would be determinative juris et de jure of the guilt or innocence of the court's decision. The court ruled that due process was not violated.
accused in the criminal case.
In the light of the foregoing it is quite plain that the prejudicial question
In the present case, no civil action pends nor has any been instituted. What argument is without merit.
was pending was an administrative case before the Patent Office.
We have carefully gone over the records of all the cases filed in this Court
Even assuming that there could be an administrative proceeding with and find more than enough evidence to sustain a finding that the petitioner is
exceptional or special circumstances which render a criminal prosecution the owner of the trademarks "LACOSTE", "CHEMISE LACOSTE", the
premature pending the promulgation of the administrative decision, no such crocodile or alligator device, and the composite mark of LACOSTE and the
peculiar circumstances are present in this case. representation of the crocodile or alligator. Any pretensions of the private
respondent that he is the owner are absolutely without basis. Any further
ventilation of the issue of ownership before the Patent Office will be a
Moreover, we take note of the action taken by the Patents Office and the superfluity and a dilatory tactic.
Minister of Trade and affirmed by the Intermediate Appellate Court in the
case of La Chemise Lacoste S. A. v. Ram Sadhwani (AC-G.R. No. SP-
13356, June 17, 1983). The issue of whether or not the trademark used by the private respondent is
different from the petitioner's trade mark is a matter of defense and will be
better resolved in the criminal proceedings before a court of justice instead of
The same November 20, 1980 memorandum of the Minister of Trade
raising it as a preliminary matter in an administrative proceeding.
discussed in this decision was involved in the appellate court's decision. The
Minister as the "implementing authority" under Article 6bis of the Paris
Convention for the protection of Industrial Property instructed the Director of The purpose of the law protecting a trademark cannot be overemphasized.
Patents to reject applications for Philippine registration of signature and other They are to point out distinctly the origin or ownership of the article to which
world famous trademarks by applicants other than its original owners or it is affixed, to secure to him, who has been instrumental in bringing into
users. The brand "Lacoste" was specifically cited together with Jordache, market a superior article of merchandise, the fruit of his industry and skill,
Gloria Vanderbilt, Sasson, Fila, Pierre Cardin, Gucci, Christian Dior, Oscar and to prevent fraud and imposition (Etepha v. Director of Patents, 16 SCRA
dela Renta, Calvin Klein, Givenchy, Ralph Laurence, Geoffrey Beene, 495).
Lanvin, and Ted Lapidus. The Director of Patents was likewise ordered to
require Philippine registrants of such trademarks to surrender their
The legislature has enacted laws to regulate the use of trademarks and
certificates of registration. Compliance by the Director of Patents was
provide for the protection thereof. Modern trade and commerce demands
challenged.
that depredations on legitimate trade marks of non-nationals including those
who have not shown prior registration thereof should not be countenanced.
The Intermediate Appellate Court, in the La Chemise Lacoste S.A. v. The law against such depredations is not only for the protection of the owner
Sadhwani decision which we cite with approval sustained the power of the of the trademark but also, and more importantly, for the protection of
Minister of Trade to issue the implementing memorandum and, after going purchasers from confusion, mistake, or deception as to the goods they are
over the evidence in the records, affirmed the decision of the Director of buying. (Asari Yoko Co., Ltd. v. Kee Boc, 1 SCRA 1; General Garments
Patents declaring La Chemise Lacoste &A. the owner of the Corporation v. Director of Patents, 41 SCRA 50).
disputed trademark and crocodile or alligator device. The Intermediate
The law on trademarks and tradenames is based on the principle of business
The records show that the goodwill and reputation of the petitioner's As earlier stated, this petition was dismissed for lack of merit on September
products bearing the trademark LACOSTE date back even before 1964 12, 1983. Acting on a motion for reconsideration, the Court on November 23,
when LACOSTE clothing apparels were first marketed in the Philippines. To 1983 resolved to deny the motion for lack of merit and declared the denial to
allow Hemandas to continue using the trademark Lacoste for the simple be final.
reason that he was the first registrant in the Supplemental Register of a
trademark used in international commerce and not belonging to him is to
Hemandas v. Hon. Roberto Ongpin (G.R. No. 65659) is the third petition.
render nugatory the very essence of the law on trademarks and tradenames.
In this last petition, the petitioner prays for the setting aside as null and void
We now proceed to the consideration of the petition in Gobindram
and for the prohibiting of the enforcement of the following memorandum of
Hemandas Suianani u. Hon. Roberto V Ongpin,et al. (G.R. No. 65659).
respondent Minister Roberto Ongpin:
Actually, three other petitions involving the same trademark and device have
MEMORANDUM:
been filed with this Court.
FOR: THE DIRECTOR OF PATENTS
Philippine Patent Office
In Hemandas & Co. v. Intermediate Appellate Court, et al. (G.R. No. 63504) xxx xxx xxx
the petitioner asked for the following relief:
Pursuant to Executive Order No. 913 dated 7 October 1983 which
IN VIEW OF ALL THE FOREGOING, it is respectfully prayed (a) that the strengthens the rule-making and adjudicatory powers of the Minister of Trade
Resolutions of the respondent Court of January 3, 1983 and February 24, and Industry and provides inter alia, that 'such rule-making and adjudicatory
1983 be nullified; and that the Decision of the same respondent Court of powers should be revitalized in order that the Minister of Trade and Industry
June 30, 1983 be declared to be the law on the matter; (b) that the Director can ...apply more swift and effective solutions and remedies to old and new
of Patents be directed to issue the corresponding registration certificate in problems ... such as the infringement of internationally-known tradenames
the Principal Register; and (c) granting upon the petitioner such other legal and trademarks ...'and in view of the decision of the Intermediate Appellate
and equitable remedies as are justified by the premises. Court in the case of LA CHEMISE LACOSTE, S.A., versus RAM
SADWHANI [AC-G.R. Sp. No. 13359 (17) June 1983] which affirms the
validity of the MEMORANDUM of then Minister Luis R. Villafuerte dated 20
On December 5, 1983, we issued the following resolution:
November 1980 confirming our obligations under the PARIS CONVENTION
FOR THE PROTECTION OF INDUSTRIAL PROPERTY to which the
Considering the allegations contained, issues raised and the arguments Republic of the Philippines is a signatory, you are hereby directed to
adduced in the petition for review, the respondent's comment thereon, and implement measures necessary to effect compliance with our obligations
petitioner's reply to said comment, the Court Resolved to DENY the petition under said convention in general, and, more specifically, to honor our
for lack of merit. commitment under Section 6 bis thereof, as follows:
The Court further Resolved to CALL the attention of the Philippine Patent
Office to the pendency in this Court of G.R. No. 563796-97 entitled 'La
1. Whether the trademark under consideration is well-known in the
Chemise Lacoste, S.A. v. Hon. Oscar C. Fernandez and Gobindram
Philippines or is a mark already belonging to a person entitled to the benefits
Hemandas' which was given due course on June 14, 1983 and to the fact
of the CONVENTION, this should be established, pursuant to Philippine
that G.R. No. 63928-29 entitled 'Gobindram Hemandas v. La Chemise
Patent Office procedures in inter partes and ex parte cases, according to any
Lacoste, S.A., et al.' filed on May 9, 1983 was dismissed for lack of merit on
of the following criteria or any combination thereof:
September 12, 1983. Both petitions involve the same dispute over the use of
(a) a declaration by the Minister of Trade and Industry that' the trademark
the trademark 'Chemise Lacoste'.
being considered is already well-known in the Philippines such that
permission for its use by other than its original owner will constitute a
The second case of Gobindram Hemandas vs. La Chemise Lacoste, S.A., et reproduction, imitation, translation or other infringement;
al. (G.R. No. 63928-29) prayed for the following: (b) that the trademark is used in commerce internationally, supported by
proof that goods bearing the trademark are sold on an international scale,
advertisements, the establishment of factories, sales offices, distributorships,
I. On the petition for issuance of writ of preliminary injunction, an order be
and the like, in different countries, including volume or other measure of
issued after due hearing: international trade and commerce;
l. Enjoining and restraining respondents Company, attorneys-in-fact, and (c) that the trademark is duly registered in the industrial property office(s) of
Estanislao Granados from further proceedings in the unfair competition
another country or countries, taking into consideration the dates of such
charges pending with the Ministry of Justice filed against petitioner; registration;
2. Enjoining and restraining respondents Company and its attorneys-in-fact (d) that the trademark has been long established and obtained goodwill and
from causing undue publication in newspapers of general circulation on their
general international consumer recognition as belonging to one owner or
unwarranted claim that petitioner's products are FAKE pending proceedings source;
hereof; and (e) that the trademark actually belongs to a party claiming ownership and
3. Enjoining and restraining respondents Company and its attorneys-in-fact
has the right to registration under the provisions of the aforestated PARIS
from sending further threatening letters to petitioner's customers unjustly CONVENTION.
stating that petitioner's products they are dealing in are FAKE and 2. The word trademark, as used in this MEMORANDUM, shall include
threatening them with confiscation and seizure thereof.
tradenames, service marks, logos, signs, emblems, insignia or other similar
II. On the main petition, judgment be rendered: devices used for Identification and recognition by consumers.
l. Awarding and granting the issuance of the Writ of Prohibition, prohibiting, 3. The Philippine Patent Office shall refuse all applications for, or cancel the
stopping, and restraining respondents from further committing the acts
registration of, trademarks which constitute a reproduction, translation or
complained of; imitation of a trademark owned by a person, natural or corporate, who is a
2. Awarding and granting the issuance of the Writ of Mandamus, ordering citizen of a country signatory to the PARIS CONVENTION FOR THE
and compelling respondents National Bureau of Investigation, its
PROTECTION OF INDUSTRIAL PROPERTY.
aforenamed agents, and State Prosecutor Estanislao Granados to 4. The Philippine Patent Office shall give due course to the Opposition in
immediately comply with the Order of the Regional Trial Court, National cases already or hereafter filed against the registration of trademarks entitled
Petitioners, in turn, filed their own motion for re-examination geared towards
This Certification, however, does not give protection as against any person
reimposition of the writ of preliminary injunction but to no avail (p. 55, Rollo in
or entity whose right may be prejudiced by infringement or unfair competition
G.R. No. 91332).
in relation to the aforesaid trademark nor the right to register if contrary to the
provisions of the Trademark Law, Rep. Act No. 166 as amended and the
Revised Rules of Practice in Trademark Cases. Hence, the instant petition casting three aspersions that respondent court
The temporary permit to manufacture under the trademark "MARK" for gravely abused its discretion tantamount to excess of jurisdiction when:
cigarettes and the acceptance of the second application filed by private
respondent in the height of their dispute in the main case were evidently
I. . . . it required, contrary to law and jurisprudence, that in order that
made subject to the outcome of the said main case or Civil Case No. 47374
petitioners may suffer irreparable injury due to the lifting of the injunction,
of the respondent Court. Thus, the Court has not missed to note the absence
petitioners should be using actually their registered trademarks in commerce
of a mention in the Sandico letter of September 26, 1986 of any reference to
in the Philippines;
the pendency of the instant action filed on August 18, 1982. We believe and
II. . . . it lifted the injunction in violation of section 6 of Rule 58 of the Rules of
hold that petitioners have shown a prima facie case for the issuance of the
Court; and
writ of prohibitory injunction for the purposes stated in their complaint and
III. . . . after having found that the trial court had committed grave abuse of
SO ORDERED. But while he dismissed the opposition, the Director ruled that the
application must be disapproved unless the word "nylon" is also
disclaimed. The grounds for the disapproval of the application were as
follows:
Cluster 5
"Nylon" is merely descriptive of the business of shirt-making if the shirts
are made of nylon. It is deceptively misdescriptive of said business, if the
shirts are not made of nylon. In either case, its registration in the Principal
Customary / Usual signs, Sec 123.1 (i) Register as a trade-name, or as a part of a trade-name, is expressly
forbidden by subsection (e) of Section 4 of Republic Act No. 166, as
(i) Consists exclusively of signs or of indications that have become customary amended by Section 2 of Republic Act No. 638.
or usual to designate the goods or services in everyday language or in bona xxx xxx xxx
fide and established trade practice; But even if the trade-name here in question were applied for under the
said subsection (f), "Nylon" would still have to be disclaimed. Used in
connection with shirt-making, "Nylon" can never become distinctive, can
Marks that acquired Secondary Meanings, Sec. 123.2 in relation to Sec. never acquire secondary meaning, because it is a generic term, like
cotton, silk, linen, or ramie. Just as no length of use and no amount of
123.1 (j-l) advertising will make "cotton," "silk," "linen," or "ramie," distinctive of shirts
or of the business of making them, so no length of use and no amount of
(j) Consists exclusively of signs or of indications that may serve in trade to advertising will make "nylon" distinctive of shirts or of the business of
designate the kind, quality, quantity, intended purpose, value, geographical manufacturing them."
origin, time or production of the goods or rendering of the services, or other
characteristics of the goods or services; Again the above decision applicant has filed an appeal to this Court.
During the pendency of this appeal, E. I. Du Pont de Nemours and Co.
filed a petition to intervene, which petition was granted. It has also,
149.5. Assignments and transfers shall have no effect against third parties
until they are recorded at the Office. (Sec. 31, R.A. No. 166a) What is Trademark Infringement? Secs. 155-156
Section 150. License Contracts. - 150.1. Any license contract concerning the
registration of a mark, or an application therefor, shall provide for effective Can damages be recovered? Secs. 156-158
control by the licensor of the quality of the goods or services of the licensee in
connection with which the mark is used. If the license contract does not
provide for such quality control, or if such quality control is not effectively Section 155. Remedies; Infringement. - Any person who shall, without the
carried out, the license contract shall not be valid. consent of the owner of the registered mark:
150.2. A license contract shall be submitted to the Office which shall keep its 155.1. Use in commerce any reproduction, counterfeit, copy, or colorable
contents confidential but shall record it and publish a reference thereto. A imitation of a registered mark or the same container or a dominant feature
license contract shall have no effect against third parties until such recording is thereof in connection with the sale, offering for sale, distribution, advertising of
effected. The Regulations shall fix the procedure for the recording of the any goods or services including other preparatory steps necessary to carry out
license contract. (n) the sale of any goods or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to deceive; or
What are the grounds to cancel registration? Secs. 151 and 154 155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a
dominant feature thereof and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages, wrappers, receptacles or
Section 151. Cancellation. - 151.1. A petition to cancel a registration of a mark advertisements intended to be used in commerce upon or in connection with
under this Act may be filed with the Bureau of Legal Affairs by any person who the sale, offering for sale, distribution, or advertising of goods or services on or
believes that he is or will be damaged by the registration of a mark under this in connection with which such use is likely to cause confusion, or to cause
Act as follows: mistake, or to deceive, shall be liable in a civil action for infringement by the
registrant for the remedies hereinafter set forth: Provided, That the
infringement takes place at the moment any of the acts stated in Subsection
(a) Within five (5) years from the date of the registration of the mark
155.1 or this subsection are committed regardless of whether there is actual
under this Act.
sale of goods or services using the infringing material. (Sec. 22, R.A. No 166a)
(b) At any time, if the registered mark becomes the generic name for
Section 156. Actions, and Damages and Injunction for Infringement. - 156.1.
the goods or services, or a portion thereof, for which it is registered,
The owner of a registered mark may recover damages from any person who
or has been abandoned, or its registration was obtained fraudulently
infringes his rights, and the measure of the damages suffered shall be either
or contrary to the provisions of this Act, or if the registered mark is
the reasonable profit which the complaining party would have made, had the
being used by, or with the permission of, the registrant so as to
defendant not infringed his rights, or the profit which the defendant actually
misrepresent the source of the goods or services on or in connection
made out of the infringement, or in the event such measure of damages
with which the mark is used. If the registered mark becomes the
cannot be readily ascertained with reasonable certainty, then the court may
generic name for less than all of the goods or services for which it is
award as damages a reasonable percentage based upon the amount of gross
registered, a petition to cancel the registration for only those goods
sales of the defendant or the value of the services in connection with which the
or services may be filed. A registered mark shall not be deemed to
mark or trade name was used in the infringement of the rights of the
be the generic name of goods or services solely because such mark
complaining party. (Sec. 23, first par., R.A. No. 166a)
is also used as a name of or to identify a unique product or service.
The primary significance of the registered mark to the relevant public
rather than purchaser motivation shall be the test for determining 156.2. On application of the complainant, the court may impound during the
whether the registered mark has become the generic name of goods pendency of the action, sales invoices and other documents evidencing sales.
or services on or in connection with which it has been used. (n) (n)
The core question before us is whether or not the petitioner was entitled to Wherefore, the Deputy Sheriff concerned is hereby directed to remove the
the writ of preliminary injunction issued by the trial court pending trial on the signs "Shangri-La and S-logo" being used by the defendants in the
merits of the charge of infringement against the private respondent. We premises in defiance of the writ of preliminary injunction issued in the
shall resolve only this question and not the merits of the petitioner's instant case.
complaint.
As prayed for further, should police assistance be necessary for the
The complaint was filed on April 15, 1991, by Developers Group of effective implementation of this Order, the Philippine National Police (PNP)
Companies, Inc. for "Infringement and Damages with Injunction" against or any police agency is hereby directed to assist the said Court officer in the
Shangri-La International Hotel Management, Ltd., et al. It was docketed as execution hereof.
Civil Case No. Q-91-8476 in the Regional Trial Court of Quezon City.
With respect to the second motion "that defendants be cited for contempt
The plaintiff alleged that the Bureau of Patents had granted it Certificate of ,"of the Court defers the resolution of the same.
Registration No. 31904 for the trademark "Shangri-La", and "S"-logo, for
restaurant services, as recorded in its Principal Register on May 31, 1983. SO ORDERED.
The defendant was illegally using the said trade mark and logo, thus
causing prejudice to the plaintiff for which it was entitled to damages.
Developers also prayed for the issuance of a restraining order and/or On August 1, 1991, Shangri-La filed a motion to lift the preliminary
preliminary injunction and asked that, after trial, judgment be rendered injunction, to which an opposition was filed by Developers on August 23,
ordering all signs, prints, advertisements and other materials in the 1991. On September 20, 1991, the motion and opposition were declared
possession of or being used by Shangri-La bearing the subject service submitted for resolution, but on September 25, 1991, Shangri-La, through a
mark and S-logo be ordered destroyed. new counsel, withdrew its motion. It then filed with the respondent Court of
Appeals a petition for certiorari with application for temporary, restraining
order and preliminary injunction against the orders issued by the trial court
In its answer, Shangri-La claimed that it was the legal and beneficial owner on July 2, 1991, and July 12, 1991.chanroblesvirtualawlibrarychanrobles
of the said mark and logo which it and its related Kuok Group of Companies virtual law library
had first adopted in 1962 and caused to be specially designed in 1975 for
their hotel business in China, Hong Kong, Malaysia, Singapore and
Thailand. It also alleged that, even before the complaint was filed, it had On November 20, 1991, the Court of Appeals 1 rendered its decision,
already filed with the Bureau of Patents a petition against Developers for disposing as follows:
the cancellation of the registration of the trade mark Shangri-La and "S"
logo in the latter's name and for the registration of the same in the name of IN LIGHT OF ALL THE FOREGOING, We find and so hold that the orders
Shangri-La. dated July 2 and 12, 1991 were issued with grave abuse of discretion.
On July 2, 1991, Judge Felix M. de Guzman issued the following order: WHEREFORE, premises considered, the petition is hereby granted. The
orders dated July 2 and July 12, 1991 issued by the respondent court in
Acting upon plaintiff's prayer for the issuance of a writ of preliminary Civil Case No. Q-91-8476 are hereby declared NULL and VOID and
injunction as contained in its verified complaint, filed thru counsel on April consequently SET ASIDE.
15, 1991;chanrobles virtual law library
SO ORDERED.
It appearing after hearing that plaintiff is entitled to the relief herein prayed
for: A motion for reconsideration was filed by Developers but this was denied
on March 11, 1992.chanroblesvirtualawlibrarychanrobles virtual law library
WHEREFORE, the Court hereby orders the issuance of a writ of
preliminary injunction directing the defendants, their agents, Developers is now before this Court alleging inter alia that the petition
representatives, licensees, assignees and all other persons acting under for certiorari filed with the Court of Appeals on September 25, 1991 was
their authority and permission to desist from using and continuing the use of premature. Its reason is that the motion to lift the preliminary injunction filed
plaintiff's mark "SHANGRI-LA", and "S-logo" or any reproduction, by Shangri-La had yet to be resolved by the trial court.
counterfeit, copy, or colorable imitation thereof, in the promotion or
advertisement of their hotel, management business, and realty projects and
services in any manner whatsoever, upon filing of a bond in the amount of Shangri-La's answer is that the writ of preliminary injunction was issued by
P1,250,000.00 to answer for payment of damages that defendants may the trial court as early as July 5, 1991, and the motion to lift was heard on
sustain by reason of the issuance of the writ, should the Court finally decide August 9, 1991, but from the latter date and until September 20, 1991, the
that plaintiff is not entitled thereto. trial judge had made no effort to resolve the said motion. It therefore had to
seek faster redress from the appellate court.
SO ORDERED.
The general rule is that certiorari will not lie unless the lower court has,
through a motion for reconsideration (or a motion to lift in this case) been
On July 12, 1991, he issued another order, to wit: given a chance to correct the errors imputed to it. However, this rule admits
of exceptions, as (1) where the issue raised is purely one of law; (2) where
Acting on the "Urgent Ex-Parte Motion to Remove The Signs "Shangri-La" the public interest is involved; and (3) in case of urgency. 2Does the
and "S-logo" Used by The Defendants And To Cite Defendants For
We note that on September 25, 1991, instead of allowing the withdrawal of As for the alleged damages, we find that Developers has not adduced any
the motion to lift, the trial court required the former counsel of Shangri-La to evidence of injury, either actual or imminent, resulting from the acts
comment thereon within 5 days. This was a correct order because he had complained of against Shangri-La. There was no finding of the trial court
not yet withdrawn his appearance and was still the counsel of record of affirming the claim for damages nor is there any support for it in the record.
Shangri-La although the motion was filed by another counsel. Nevertheless, In fact, the order dated July 2, 1991, did not state, much leas explain, the
we agree that the order would result in further delay in the proceedings to reasons for the issuance of the writ of preliminary injunction, simply saying
the prejudice of Shangri-La, which would in the meantime be prevented that it appeared "after hearing that plaintiff is entitled to the relief prayed
from continuing the use of the disputed mark and logo. Furthermore, the for." That was all. But that was not enough.
motion to lift had already been withdrawn precisely so it could be raised in
the appellate court. We feel therefore that Shangri-La's immediate recourse
In Olalia v. Hizon 3 this Court hold:
to the Court of Appeals without awaiting resolution of its withdrawn motion
to lift the injunction was not premature.
A preliminary injunction is an order granted at any stage of an action prior
to final judgment, requiring a person to refrain from a particular act. As the
Now to the propriety of the injunction order.
term itself suggests, it is merely temporary, subject to the final disposition of
the principal action. The justification for the preliminary injunction is
Section 3, Rule 58, of the Revised Rules of Court provides: urgency. It is based on evidence tending to show that the action
complained of must be stayed lest the movant suffer irreparable injury or
the final judgment granting the relief sought become ineffectual.
Sec. 3. Grounds for issuance of preliminary injunction. - A preliminary
Necessarily, that evidence need only be a "sampling," as it were, and
injunction may be granted at any time after the commencement of the
intended merely to give the court an idea of the justification for the
action and before judgment when it is established:chanrobles virtual law
preliminary injunction pending the decision of the case on the merits. The
library
evidence submitted at the hearing on the motion for the preliminary
injunction is not conclusive of the principal action, which has yet to be
(a) That the plaintiff is entitled to the relief demanded, and the whole or part decided.
of such relief consists in restraining the commission or continuance of the
acts complained of, or in the performance of an act or acts, either for a
xxx xxx xxxc
limited period or perpetually;
The conflicting claims of the parties to the subject service mark and logo SO ORDERED.
give us the impression that the right claimed by the plaintiff as its basis for
asking for injunctive relief is far from clear. The prima facie validity of its
registration has been put into serious question by the above-stated cases
filed by Shangri-La in the Bureau of Patents three years ahead of the
complaint. While it is not required that Developer's claimed right be
conclusively established at this stage, it is nevertheless necessary to show, Conrad and Company vs. CA, Filtrite and Victoria Biscuits GR No.
at least tentatively, that it exists and is not vitiated by any substantial 115115, 18 July 1995
challenge or contradiction, such as has been made by the private
respondent. In our view, the petitioner has failed to comply with this
In an Amended Decision, dated 20 April 1994, the Court of
Thus, having the exclusive right over said trademark, FITRITE should be
protected in the use thereof (Philips Export B.V. vs. Court of Appeals, G.R.
No. 96161, 206 SCRA 457 [1992]); and considering that it is apparent from
the record that the invasion of the right FITRITE sought to protect is
material and substantial; that such right of FITRITE is clear and
unmistakable; and that there is an urgent necessity to prevent serious
damage to FITRITE's business interest, goodwill and profit, thus under the
authority of Sec. 23 of said Republic Act No. 166, as amended, a
preliminary injunction may be issued in favor of FITRITE to maintain the
status quo pending trial of the action a quo on the meritswithout prejudice to
the suspension of such action if the aforesaid cancellation proceeding
before the BPTTT has not been concluded. 8 (Emphasis supplied.)
The appellate court's finding that there is an urgent necessity for the
issuance of the writ of preliminary injunction pending resolution by BPTTT
of the petition for cancellation filed by Sunshine USA in Inter Partes Case
No. 3397 would indeed appear to have merit. The prematurity of petitioner's
motion to dismiss places the case at bench quite apart from that
of Developers Group of Companies, Inc. vs. Court of Appeals, 219 SCRA
715. The allegations of the complaint, perforced hypothetically deemed
admitted by petitioner, would here justify the issuance by appellate court of
its injunction order. Petitioner, itself, does not even appear to be a party in
the administrative case (Inter Partes Case No. 3397). The averment that
Sunshine USA is petitioner's principal, and that it has a prior foreign
registration that should be respected conformably with the Convention of
the Union of Paris for the Protection of Industrial Property are mere
asseverations in the motion to dismiss which, along with some other factual
assertions, are yet to be established.
All given, we find no reversible error on the part of the appellate court in its
appealed decision.
In closing, the Court would urge the Bureau of Patents, Trademarks and
Technology Transfer to resolve with dispatch the administrative cases (Inter
Partes Case No. 3397 and No. 3739) referred to in this decision.
WHEREFORE, the petition for review is DENIED for lack of merit, and the
questioned amended decision of the Court of Appeals is AFFIRMED. Costs