31. CANON KABUSHIKI KAISHA, Petitioner, v.

COURT OF APPEALS and NSR RUBBER CORPORATION

Facts:

On January 15, 1985, private respondent NSR Rubber Corporation (private respondent) filed an
application for registration of the mark CANON for sandals in the Bureau of Patents, Trademarks, and
Technology Transfer (BPTTT). A Verified Notice of Opposition was filed by petitioner, a foreign
corporation duly organized and existing under the laws of Japan, alleging that it will be damaged by the
registration of the trademark CANON in the name of Private Respondent.

Petitioner contends that PETITIONER IS ENTITLED TO EXCLUSIVE USE OF THE MARK CANON BECAUSE IT
IS ITS TRADEMARK AND IS USED ALSO FOR FOOTWEAR and TO ALLOW PRIVATE RESPONDENT TO
REGISTER CANON FOR FOOTWEAR IS TO PREVENT PETITIONER FROM USING CANON FOR VARIOUS
KINDS OF FOOTWEAR, WHEN IN FACT, PETITIONER HAS EARLIER USED SAID MARK FOR SAID GOODS.

Issue:

Whether or not petitioner may exclusively use such Mark (CANON)

Ruling:

NO

 The BPTTT (Bureau of Patents, Trademarks, andTechnology Transfer) and the Court of Appeals
share the opinion that the trademark "CANON" as used by petitioner for its paints, chemical
products, toner, and dyestuff, can be used by private respondent for its sandals because the
products of these two parties are dissimilar
 the BPTTT correctly ruled that since the certificate of registration of petitioner for the trademark
CANON covers class 2 (paints, chemical products, toner,dyestuff), private respondent can use
the trademark CANON for its goods classified as class 25 (sandals).Clearly, there is a world of
difference between the paints, chemical products, toner, and dyestuff of petitioner and the
sandals of private Respondent.
 The Court agreed with the BPTTT in following the Esso doctrine, when it noted that the two
classes of products in this case flow through different trade channels. The products of petitioner
are sold through special chemical stores or distributors while the products of private respondent
are sold in grocery stores, sari-sari stores and department stores
 The court cited Article 6 of the Paris Convention: The countries of the Union undertake, either
administratively if their legislation so permits, or at the request of an interested party, to refuse
or to cancel the registration and to prohibit the use of a trademark which constitutes a
reproduction, imitation or translation, liable to create confusion, of a mark considered by the
competent authority of the country of registration or use to be well-known in that country as
being already the mark of a person entitled to the benefits of the present Convention and used
for identical or similar goods.
64. FABERGE, INCORPORATED, Petitioner, v. THE INTERMEDIATE APPELLATE COURT and CO BENG KAY

Facts:

Petitioner Faberge manufactures and sells after-shave lotion, shaving cream, deodorant, toilet soap, etc.
under its registered trademark ‘BRUT’. On the other hand, respondent Co Beng Kay manufactures and
sells briefs under the trademark ‘BRUTE.’

Petitioner tried to oppose the registration by respondent of the trademark ‘BRUTE’ for being confusingly
similar with petitioner’s ‘BRUT’ but Director of Patents denied such opposition observing that
considering the overall appearance of both trademarks, there are glaring differences which would
unlikely cause a confusion among customers.

Private respondent seeks to register his trademark "BRUTE" only for briefs which is a product non-
competitive to and entirely unrelated with petitioner’s aforementioned products. Moreover, private
respondent asserts that briefs and cosmetics do not belong to the same class nor do they have the same
descriptive properties such that the use of a trademark on one’s goods does not prevent the adoption
and use of the same trademark by others on unrelated articles of a different nature in line with the
ruling of this Court in Hickok Manufacturing Co., Inc. v. Court of Appeals (116SCRA 387 [1982]).
Furthermore, respondent belies petitioner’s claim that the latter had applied for registration of the
trademark "BRUT 33 DEVICE" for briefs since the documents on file with the Director of Patents
attached to respondent’s legal Brief does not include the so-called application by petitioner of the
alleged trademark for briefs.

Issue:

Whether or not the Respondent can use the Trademark ‘BRUTE’

Ruling:

YES

It is not difficult to discern from the foregoing statutory enactments that private respondent may be
permitted to register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's
vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-
shave lotion, shaving cream, deodorant, talcum powder and toilet soap. In as much as petitioner has not
ventured in the production of briefs, an item which is not listed in its certificate of registration,
petitioner cannot and should not be allowed to feign that private respondent had invaded petitioner's
exclusive domain. To be sure, it is significant that petitioner failed to annex in its Brief the so-called
"eloquent proof that petitioner indeed intended to expand its mark "BRUT" to other goods. Even then, a
mere application by petitioner in this aspect does not suffice and may not vest an exclusive right in its
favor that can ordinarily be protected by the Trademark Law. In short, paraphrasing Section 20 of the
Trademark Law as applied to the documentary evidence adduced by petitioner, the certificate of
registration issued by the Director of Patents can confer upon petitioner the exclusive right to use its
own symbol only to those goods specified in the certificate, subject to any conditions and limitations
stated therein.