ARCE SONS AND COMPANY V. SELECTA BISCUIT COMPANY (G.R. NO.

L-14761)

Facts:
Respondent Selecta Biscuit Company applied for the registration of the word ‘SELECTA’ to
be used in its bakery products. Petitioner Arce Sons opposed on the ground it had
continuously used the mark ‘SELECTA’ and that it has already become identified with
petitioner’s name and business. Petitioner further contends that the marks are confusingly
similar. Petitioner then filed before the court a complaint of unfair competition against
respondent which ruled in its favor. On the other hand, the Director of Patents dismissed
petitioner’s opposition.

Issue: Whether or not petitioner’s mark has acquired secondary meaning in its favor.

Ruling: YES.
The word ‘SELECTA’, it is true, may be an ordinary or common word in the sense that may
be used or employed by any one in promoting his business or enterprise, but once adopted
or coined in connection with one’s business as an emblem, sign or device to characterize
its products, or as a badge of authenticity, it may acquire a secondary meaning as to be
exclusively associated with its products and business. In this sense, its use by another may
lead to confusion in trade and cause damage to its business. And this is the situation of
petitioner when it used the word ‘SELECTA’ as a trade-mark. In this sense, the law gives its
protection and guarantees its use to the exclusion of all others.

The term ‘SELECTA’ may be placed at par with the words “Ang Tibay” which this Court has
considered not merely as a descriptive term within the meaning of the Trade-mark Law but
as a fanciful or coined phrase, or a trade-mark. And holding that respondent was entitled to
protection in the use of that trade-mark, this Court made the following comment:
Even if ‘Ang Tibay’, therefore, were not capable of exclusive appropriation as a trade-mark,
the application of the doctrine of secondary meaning could nevertheless be fully sustained
because, in any event, by respondent’s long and exclusive appropriation with reference to
an article on the market, because geographically or otherwise descriptive, might
nevertheless have been used so long and exclusively by one producer with reference to his
article that, in that trade and to that branch of the purchasing public, the word or phrase
has come to mean that article was his product.” (Ang v. Teodoro, supra.)
The rationale in the Ang Tibay case applies on all fours to the case of petitioner.
SOCIETE DES PRODUITS NESTLE V. CA (G.R. NO. 112012)

Facts:
Respondent CFC Corporation filed an application for the registration of the trademark
FLAVOR MASTER for instant coffee. Petitioners, a Swiss company and a domestic
corporation licensee of Societe, opposed on the ground that it is confusingly similar to its
trademark for coffee and coffee extracts: MASTER ROAST and MASTER BLEND. Petitioners
contend that the dominant word MASTER is present in the 3 trademarks. Respondent CFC
argued that the word MASTER cannot be exclusively appropriated being a descriptive or
generic term. BPTTT denied CFC’s application. CA held otherwise.

Issue: Whether or not the word MASTER is descriptive or generic term incapable of
exclusive appropriation.

Ruling: NO. The word “MASTER” is neither a generic nor a descriptive term. As such, said
term cannot be invalidated as a trademark and, therefore, may be legally protected.
Generic terms are those which constitute “the common descriptive name of an article or
substance,” or comprise the “genus of which the particular product is a species,” or are
“commonly used as the name or description of a kind of goods,” or “imply reference to
every member of a genus and the exclusion of individuating characters,” or “refer to the
basic nature of the wares or services provided rather than to the more idiosyncratic
characteristics of a particular product,” and are not legally protectable. On the other hand,
a term is descriptive and therefore invalid as a trademark if, as understood in its normal
and natural sense, it “forthwith conveys the characteristics, functions, qualities or
ingredients of a product to one who has never seen it and does not know what it is,” or “if it
forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the
goods,” or if it clearly denotes what goods or services are provided in such a way that the
consumer does not have to exercise powers of perception or imagination.

Rather, the term “MASTER” is a suggestive term brought about by the advertising scheme
of Nestle. Suggestive terms are those which, in the phraseology of one court, require
“imagination, thought and perception to reach a conclusion as to the nature of the
goods.” Such terms, “which subtly 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 dispute, they
nevertheless involve “an element of incongruity,” “figurativeness,” or ” imaginative effort
on the part of the observer.” The term “MASTER”, therefore, has acquired a certain
connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by
Nestle. As such, the use by CFC of the term “MASTER” in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the
ordinary purchasers.
Amigo Manufacturing, Inc. vs. Cluett Peabody Co., Inc. G.R. No. 139300. March 14, 2001
Facts:
The source of the controversy that precipitated the filing by Cluett Peabody Co., Inc. (a New
York corporation) of the present case against Amigo Manufacturing Inc. (a Philippine
corporation) for cancellation of trademark is Cluetts claim of exclusive ownership (as
successor in interest of Great American Knitting Mills, Inc.) of the following trademark and
devices, as used on men’s socks:

GOLD TOE, under Certificate of Registration No. 6797 dated September 22, 1958; DEVICE,
representation of a sock and magnifying glass on the toe of a sock, under Certificate of
Registration No. 13465 dated January 25, 1968; DEVICE, consistin
g of a‟plurality of gold colored lines
arranged in parallel relation within a triangular area of toe of the stocking and spread from
each other by lines of
contrasting color of the major part of the stocking‟ under
Certificate of Registration No. 13887 dated May 9, 1968; and LINENIZED, under Certificate
of Registration No. 15440 dated April 13, 1970. On the other hand, petitioner’s trademark
and deviceGOLD TOP, Linenized for Extra Wear has the dominant color white
‟
at the center and a
„
blackish brown
‟
background with a magnified design of the sock
‟
s garter, and is labeled
„
Amigo Manufacturing Inc., Mandaluyong, Metro Manila, Made in the Philippines. The
Patent office ruled in favor of Cluett because of
idem sonans
and the existence of a confusing similarity in appearance between two trademarks. The
Court of Appeals upheld the ruling of the patent office by stating the ff: There is hardly any
variance in the
appearance of the marks „GOLD TOP‟ and „GOLD TOE‟
since both
show a representation of a man‟s foot wearing a sock, and
the marks are printed in identical lettering and that it can not be allowed to be registered
because it runs counter to the Section 4 of Republic Act 166. Amigo
‟
s mark is only registered with the Supplemental Registry which gives no right of exclusivity
to the owner and cannot overturn the presumption of validity and exclusivity given to a
registered mark. the Philippines and the United States are parties to the Paris Convention.
The object of the Convention is to accord a national of a member nation extensive
protection against infringement and other types of unfair competition.
Issue:
1.

Who among the parties had first actual use over the trademark? 2.

Are confusing similarities on the trademark and device of the parties? 3.

Does the Paris Convention apply in the given case?

Ruling:
The petition of Amigo has no merit.

MIRPURI V. CA (G.R. NO. 114508)

Facts:

Lolita Escobar applied for the registration of the trademark ‘Barbizon’ for her products such
as brassieres and ladies undergarments. Respondent Barbizon Corporation, an American
corporation, opposed alleging that petitioner’s mark is confusingly similar to its own
trademark ‘Barbizon.’ Escobar’s application was given due course and her trademark was
registered. Later, Escobar assigned all her rights to petitioner Mirpuri who failed to file an
Affidavit of Use resulting in the cancellation of the trademark. Petitioner then applied for
registration of the trademark to which respondent Barbizon again opposed, now invoking
the protection under Article 6bis of the Paris Convention. The Director of Patents declaring
respondent’s opposition was already barred, petitioner’s application was given due course.
CA reversed the judgment.

Issue: Whether or not respondent may invoke the protection under Article 6bis of the Paris
Convention.

Ruling: YES. The Convention of Paris for the Protection of Industrial Property, otherwise
known as the Paris Convention, is a multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs, trademarks, service marks,
trade names and indications of source or appellations of origin, and at the same time aims
to repress unfair competition. The Convention is essentially a compact among various
countries which, as members of the Union, have pledged to accord to citizens of the other
member countries trademark and other rights comparable to those accorded their own
citizens by their domestic laws for an effective protection against unfair competition. Art.
6bis is a self-executing provision and does not require legislative enactment to give it effect
in the member country. It may be applied directly by the tribunals and officials of each
member country by the mere publication or proclamation of the Convention, after its
ratification according to the public law of each state and the order for its execution.

The Philippines and the United States of America have acceded to the WTO Agreement.
Conformably, the State must reaffirm its commitment to the global community and take
part in evolving a new international economic order at the dawn of the new millennium.

LA CHEMISE LACOSTE V. FERNANDEZ (G.R. NO. L-63796-97)

Facts:

Petitioner La Chemise Lacoste is a foreign corporation and the actual owner of the
trademarks ‘Lacoste,’ ‘Chemise Lacoste,’ and ‘Crocodile Device’ used on clothing and other
goods that are sold in many parts of the world. Herein respondent Hemadas & Co., a
domestic firm, applied and was granted registration of the mark ‘Chemise Lacoste and
Crocodile Device’ for its garment products. Sometime later, petitioner applied for the
registration of its mark ‘Crocodile Device’ and ‘Lacoste’ but was opposed by herein
respondent. Later, petitioner filed a letter-complaint of unfair competition before the NBI
which led to the issuance of search warrants and the seizure of goods of respondent
Hemadas. Respondent moved to quash the warrants alleging that its trademark was
different from petitioner’s trademark. Respondent court ruled to set aside the warrants and
to return the seized goods.

Issue: Whether or not petitioner’s trademark is a well-known mark protected under the
Paris Convention.

Ruling: YES. In upholding the right of the petitioner to maintain the present suit before our
courts for unfair competition or infringement of trademarks of a foreign corporation, we
are moreover recognizing our duties and the rights of foreign states under the Paris
Convention for the Protection of Industrial Property to which the Philippines and France are
parties.

Pursuant to this obligation, the Ministry of Trade issued a memorandum addressed to the
Director of the Patents Office directing the latter to reject all pending applications for
Philippine registration of signature and other world famous trademarks by applicants other
than its original owners or users. The conflicting claims over internationally known
trademarks involve such name brands as Lacoste, et. al. It is further directed that, in cases
where warranted, Philippine registrants of such trademarks should be asked to surrender
their certificates of registration, if any, to avoid suits for damages and other legal action by
the trademarks’ foreign or local owners or original users.

The Intermediate Appellate Court, in the La Chemise Lacoste S.A. v. Sadhwani decision
which we cite with approval sustained the power of the Minister of Trade to issue the
implementing memorandum and declared La Chemise Lacoste S.A. the owner of the
disputed trademark, stating: “In the case at bar, the Minister of Trade, as ‘the competent
authority of the country of registration,’ has found that among other well-known
trademarks ‘Lacoste’ is the subject of conflicting claims. For this reason, applications for its
registration must be rejected or refused, pursuant to the treaty obligation of the
Philippines.”

Sterling Products Vs. Farbenfabriken Bayer GR L-19906

Facts: The Bayer Cross in circle “trademark was registered in Germany in 1904 to
Farbenfabriken vorm. Friedr. Bayer (FFB), successor to the original Friedr. Bauyer et. Comp.,
and predecessor to Farbenfabriken Bayer aktiengessel craft (FB2). The “Bayer, and “Bayer
Cross in circle” trademarks were acquired by sterling Drug Inc. when it acquired FFB’s
subsidiary Bayer Co. of New York as a result of the sequestration of its assets by the US
Alien Property Custodian during World War I. Bayer products have been known in
Philippines by the close of the 19th century. Sterling Drugs, Inc., however, owns the
trademarks “Bayer” in relation to medicine. FBA attempted to register its chemical products
with the “Bayer Cross in circle” trademarks. Sterling Products International and FBA seek to
exclude each other from use of the trademarks in the Philippines. The trial court sustained
 SPI’s right to use the Bayer trademark for medicines and directed FBA to add distinctive
word(s) in their mark to indicate their products come from Germany.” Both appealed.

Issue: Whether SPI’s ownership of the trademarks extends to products not related to
medicine.

Held: No. SPI’s certificates of registration as to the Bayer trademarks registered in the
Philippines cover medicines only. Nothing in the certificates include chemicals or
insecticides. SPI thus may not claim “first use” of the trademarks prior to the registrations
thereof on any product other than medicines. For if otherwise held, a situation may arise
whereby an applicant may be tempte3d to register a trademark on any and all goods which
his mind may conceive even if he had never intended to use the trademark for the said
goods. Omnibus registration is not contemplated by the Trademark Law. The net result of
the decision is that SPI may hold on its Bayer trademark for medicines and FBA may
continue using the same trademarks for insecticide and other chemicals, not medicine. The
formula fashioned by the lower court avoids the mischief of confusion of origin, and does
not visit FBA with reprobation and condemnation. A statement that its product came from
Germany anyhow is but a statement of fact.

MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO, INC. vs. E.J. GALLO
WINERY and THE ANDRESONS GROUP, INC.

FACTS:

On March 12, 1993, respondents sued petitioners in the RTC-Makati for trademark and
trade name infringement and unfair competition, with a prayer for damages and preliminary
injunction.

They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and
Gallo and Ernest & Julio Gallo trademark’s established reputation and popularity, thus causing
confusion, deception and mistake on the part of the purchasing public who had always
associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines.

In their answer, petitioners alleged, among other affirmative defenses that: petitioners
Gallo cigarettes and Gallo Winery’s wine were totally unrelated products. To wit:
1. Gallo Winery’s GALLO trademark registration certificates covered wines only, and not cigarettes;
2. GALLO cigarettes and GALLO wines were sold through different channels of trade;
3. the target market of Gallo Winery’s wines was the middle or high-income bracket while Gallo
cigarette buyers were farmers, fishermen, laborers and other low-income workers;
4. the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s name
clearly indicated as MIGHTY CORPORATION, while in the case of Gallo Winery’s wines, it was
the full names of the founders-owners ERNEST & JULIO GALLO or just their surname GALLO;

On April 21, 1993, the Makati RTC denied, for lack of merit, respondent’s prayer for the
issuance of a writ of preliminary injunction.
 On August 19, 1993, respondent’s motion for reconsideration was denied.

On February 20, 1995, the CA likewise dismissed respondent’s petition for review on
certiorari.

After the trial on the merits, however, the Makati RTC, on November 26, 1998, held
petitioners liable for, permanently enjoined from committing trademark infringement and unfair
competition with respect to the GALLO trademark.

On appeal, the CA affirmed the Makati RTC’s decision and subsequently denied
petitioner’s motion for reconsideration.

ISSUE:

Whether GALLO cigarettes and GALLO wines were identical, similar or related goods for
the reason alone that they were purportedly forms of vice.

HELD:

Wines and cigarettes are not identical, similar, competing or related goods.

In resolving whether goods are related, several factors come into play:

 the business (and its location) to which the goods belong

 the class of product to which the good belong
 the product’s quality, quantity, or size, including the nature of the package, wrapper or container
 the nature and cost of the articles
 the descriptive properties, physical attributes or essential characteristics with reference to their
form, composition, texture or quality
 the purpose of the goods
 whether the article is bought for immediate consumption, that is, day-to-day household items
 the field of manufacture
 the conditions under which the article is usually purchased and
 the articles of the trade through which the goods flow, how they are distributed, marketed,
displayed and sold.

The test of fraudulent simulation is to the likelihood of the deception of some persons in
some measure acquainted with an established design and desirous of purchasing the
commodity with which that design has been associated. The simulation, in order to be
objectionable, must be as appears likely to mislead the ordinary intelligent buyer who has a
need to supply and is familiar with the article that he seeks to purchase.

The petitioners are not liable for trademark infringement, unfair competition or damages.

WHEREFORE, petition is granted