RE.
: IPL DIGESTS
1.1. KHO v. CA | 115758 | 2002
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one
another.
A trademark is any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise
and shall include a stamped or marked container of goods. In
relation thereto, a trade name means the name or
designation identifying or distinguishing an enterprise.
Meanwhile, the scope of a copyright is confined to literary
and artistic works which are original intellectual creations in
the literary and artistic domain protected from the moment
of their creation.
Patentable inventions, on the other hand, refer to any
technical solution of a problem in any field of human activity
which is new, involves an inventive step and is industrially
applicable.
FACTS: On December 20, 1991, petitioner Elidad C. Kho filed
a complaint against the respondents Summerville General
Merchandising and Company and Ang Tiam Chay.
Petitioner, doing business under the name and style KEC
Cosmetics Laboratory, alleges that it is the registered owner
of copyright and patent registration of the Chin Chun Su
container and medicated cream.
Hence, petitioner filed a complaint to enjoin respondent
Summerville Company from advertising and selling cream
products under the same brand name Chin Chun Su as it will
mislead the public and damage petitioner’s business.
On 1993, the trial court ruled to bar petitioner from using
the mark Chin Chun Su. The same decision was affirmed by
the CA. Hence, this case.
ISSUE: WHETHER PETITIONER IS ENTITLED TO THE
EXCLUSIVE USE OF THE TRADEMARK CHIN CHUN SU?
HELD: NO. *Refer to stated doctrine.*
Petitioner has no right to support her claim for the exclusive
use of the subject trade name and its container.
In order to be entitled to exclusively use the same in the sale
of the beauty cream product, the user must sufficiently
prove that she registered or used it before anybody else
did.
The petitioner’s copyright and patent registration of the
name and container would not guarantee her right to the
exclusive use of the same for the reason that they are not
appropriate subjects of the said intellectual rights.
2.2. SMITH KLINE BECKMAN CORP v. CA | 126627 | 2003
When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything
beyond them.
FACTS: Smith Kline Beckman Corporation, filed on October
8, 1976, as assignee, before the Philippine Patent Office an
application for patent over an invention entitled Methods
and Compositions for Producing Biphasic Parasiticide
Activity Using Methyl 5 Propylthio-2-Benzimidazole
Carbamate.
In 1981, Letters Patent No. 14561 for the aforesaid invention
was issued to petitioner for a term of seventeen years. Tryco
Pharma Corporation, on the other hand, is a domestic
corporation that manufactures, distributes and sells
veterinary products including Impregon, a drug that has
Albendazole for its active ingredient.
Petitioner sued private respondent for infringement of
patent and unfair competition before the RTC of Caloocan
City. It claimed that its patent covers or includes the
substance Albendazole such that private respondent, by
manufacturing, selling, using, and causing to be sold and
used the drug Impregon without its authorization, infringed
Claims 2, 3, 4, 7, 8 and 9 of its letters patent.
It also committed unfair competition under the Revised
Penal Code and The Trademark Law for advertising and
selling as its own the drug Impregon although the same
contained petitioners patented Albendazole.
The RTC dismissed the complaint. This decision was affirmed
by the CA and petitioner’s motion for reconsideration was
denied.
ISSUE: WHETHER TRYCO PHRAMA CORPORATION
COMMITTED PATENT INFRINGEMENT?
HELD: NO. Tryco Pharma Corporation did not commit patent
infringement. From a reading of the 9 claims of Letters
Patent No. 14561 in relation to the other portions thereof,
no mention is made of the compound Albendazole.
When the language of its claims is clear and distinct, the
patentee is bound thereby and may not claim anything
beyond them.
Albendazole is admittedly a chemical compound that exists
by a name different from that covered in petitioner’s letters
patent, the language of Letter Patent No. 14561 fails to yield
anything at all regarding Albendazole.
And no extrinsic evidence had been adduced to prove that
Albendazole inheres in petitioners patent in spite of its
omission therefrom or that the meaning of the claims of the
patent embraces the same.
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3.3. CHING v. SALINAS | 161295 | 2005
Indeed, while works of applied art, original intellectual,
literary and artistic works are copyrightable, useful articles
and works of industrial design are not.
A useful article may be copyrightable only if and only to the
extent that such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from,
and are capable of existing independently of the utilitarian
aspects of the article.
FACTS: Jessie G. Ching is the owner and general manager of
Jeshicris Manufacturing Co., the maker and manufacturer of
a utility model described as "Leaf Spring Eye Bushing for
Automobile". Ching and Joseph Yu were issued by the
National Library Certificates of Copyright Registration and
Deposit of the said work.
Thereafter, Ching requested the NBI for assistance for the
apprehension and prosecution of illegal manufacturers,
producers and/or distributors of the said utility model.
After due investigation, the NBI filed applications for search
warrants in the RTC of Manila against William Salinas, Sr. and
the officers and members of the Board of Directors of
Wilaware Product Corporation.
It was alleged that the respondents therein reproduced and
distributed the said model in violation of the law on
copyright. Salinas filed a motion to quash the search
warrants on the ground that the works covered by the
Certificates of Copyright issued by the National Library are
not artistic in nature as they are considered automotive
spare parts and pertain to technology.
They aver that the models are the proper subject of a patent,
not copyright. The trial court granted the motion and
quashed the search warrant. The CA dismissed his appeal.
Hence, this petition.
ISSUE: WHETHER THE LEAF SPRING EYE BUSHING FOR
AUTOMOBILE IS A WORK OF ART THUS MAKING IT THE
PROPER SUBJECT OF A COPYRIGHT?
HELD: NO. The application for a copyright certificate filed by
the petitioner reveals that the said Leaf Spring Eye Bushing
for Automobile is merely a utility model.
The Leaf Spring Eye Bushing for Automobile along with the
Vehicle Bearing Cushion are not intellectual creations in the
literary and artistic domain, or works of applied art. They
are certainly not ornamental designs or one having
decorative quality or value.
It bears stressing that the focus of copyright is the usefulness
of the artistic design, and not its marketability.
NEC POSSUM TECUM VIVERE NEC SINE
4.4. ROMA DRUG & ROMEO RODRIGUEZ v. RTC OF
GUAGUA, PAMPANGA | 149907 | 2009
Section 7 of Rep. Act No. 9502 unequivocally grants third
persons the right to import drugs or medicines whose patent
were registered in the Philippines by the owner of the
product.
The unqualified right of private third parties such as
petitioner to import or possess “unregistered imported
drugs” in the Philippines is further confirmed by the
“Implementing Rules to Republic Act No. 9502” promulgated
on November 4, 2008.
Where a statute of later date, such as Republic Act No. 9502,
clearly reveals an intention on the part of the legislature to
abrogate a prior act on the subject that intention must be
given effect; Irreconcilable inconsistency between two laws
embracing the same subject may exist when the later law
nullifies the reason or purpose of the earlier act, so that the
latter loses all meaning and function.
FACTS: On August 14, 2000, Roma Drug was raided by the
NBI and BFAD and seized several important medicines. It
appears that Roma Drug is one of six drug stores which were
raided on or around the same time upon the request of
SmithKline which was the duly registered corporation to
distribute such medicines.
During preliminary investigation, Rodriguez challenged the
constitutionality of the law on Special Law on Counterfeit
Drugs (SLCD).
On the other hand, the presumption of constitutionality of
statutes is invoked, and the assertion is made that there is
no clear and unequivocal breach of the Constitution
presented by the SLCD.
ISSUE: WHETHER THIRD PERSONS HAS THE RIGHT TO
IMPORT DRUGS OR MEDICINES WHOSE PATENT WERE
REGISTERED IN THE PHILIPPINES BY THE OWNER OF THE
PRODUCT?
HELD: YES. *See stated doctrine* The same issue have in fact
been mooted with the passage in 2008 o Republic Act No.
9502, also known as the “Universally Accessible Cheaper and
Quality Medicines Act of 2008.”
See Section 72.1 of the IPC as amended.
It may be that Rep. Act No. 9502 did not expressly repeal any
provision of the SLCD. However, it is clear that the SLCO’s
classification of “unregistered imported drugs” as
“counterfeit drugs,” and of corresponding criminal penalties
therefore are irreconcilably in the imposition conflict with
Rep. Act No. 9502 since the latter indubitably grants private
third persons the unqualified right to import or otherwise
use such drugs.
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5.5. PHIL. PHARMAWEALTH v. PFIZER | 167715 | 2010
The exclusive right of a patentee to make, use, and sell a
patented product, article or process exists only during the
term of the patent.
FACTS: Pfizer is the registered owner of Philippine Letters
Patent No. 21116 which was issued on July 16, 1987 and is
valid until July 16, 2004. It covers Sulbactam Ampicillin which
is marketed under the brand name "Unasyn."
The sole and exclusive distributor of "Unasyn" products in
the Philippines is Zuellig Pharma Corporation.
In 2003, Pfizer, Inc. and Pfizer (Phil.), Inc. came to know that
Phil Pharmawealth, Inc. submitted bids for the supply of
Sulbactam Ampicillin to several hospitals without their
consent and in violation of their intellectual property rights.
Pfizer, Inc. filed a complaint for patent infringement against
Phil Pharmawealth, Inc. with the Bureau of Legal Affairs of
the Intellectual Property Office (BLA-IPO).
It issued a preliminary injunction which was effective for
ninety days from petitioner's receipt of the said order.
Respondents then filed a special civil action for certiorari
with the CA assailing the resolutions of the BLA-IPO. While
the case was pending before the CA, respondents filed a
complaint with the RTC of Makati City for infringement and
unfair competition with damages against petitioner.
The RTC of Makati City directed the issuance of a writ of
preliminary injunction. Petitioner filed a motion to dismiss
with the CA, however, the same was denied. The subsequent
motion for reconsideration also met the same fate. Hence
this case.
ISSUE: WHETHER AN INJUNCTIVE RELIEF MAY BE ISSUED
UPON A PATENT WHICH HAS ALREADY LAPSED?
HELD: NO. It is clear from Section 37 of Republic Act No. 165
which was the governing law at the time of issuance of
respondents’ patent that the exclusive right of a patentee to
make, use, and sell a patented product, article or process
exists only during the term of the patent.
Respondents themselves admitted that the validity of the
said patent is until July 16, 2004, which is in conformity with
Section 21 of RA 165, providing that the term of a patent
shall be seventeen (17) years from the date of issuance
thereof.
On the basis of the foregoing, the Court agrees with
petitioner that after July 16, 2004, respondents no longer
possess the exclusive right to make, use and sell the articles
or products covered by Philippine Letters Patent No. 21116.
RE.: IPL DIGESTS
6.6. E.I. DUPONT DE NEMOURS & CO. v. FRANCISCO |
174379 | 2016
Ideas not covered by a patent are free for the public to use
and exploit. Thus, there are procedural rules on the
application and grant of patents established to protect
against any infringement. To balance the public interests
involved, failure to comply with strict procedural rules will
result in the failure to obtain a patent.
FACTS: Petitioner is a Delaware-based corporation. In 1987,
petitioner filed an application for PH patent before Bureau
of Patents. Said application was for Angiotensin II Receptor
Blocking Imidazole (losartan), an invention related to the
treatment of hypertension and congestive heart failure.
On January 30, 2002, IPO Patent Examiner conveyed that the
application was deemed abandoned since it took 13 years
for petitioner to request for an office action.
A petition for the revival of its patent application was filed
by petitioer, however, the same was denied for having been
filed out of time. Petitioner appealed to Director-General of
IPO, however, the same also denied.
Petitioner appealed to the Court of Appeals which granted
the appeal allowing the revival of the patent application. In
August 2006 however, CA reversed its ruling on the ground
that the public interest would be prejudiced by the revival of
petitioner’s patent application. Hence the present case.
ISSUE: WHETHER OR NOT THE PATENT APPLICATION OF
PETITIONER SHOULD BE REVIVED?
HELD: NO. Sec. 113 of 1962 Revised Rules of Practice, an
abandoned patent application may only be revived within 4
months from the date of abandonment, provided it is shown
to the satisfaction of the Director that the delay was
unavoidable. An application not revived within the specified
period shall be deemed forfeited.
Sec. 113 has since been superseded by Section 133.4 of the
Intellectual Property Code, Rule 930 of the Rules and
Regulations on Inventions, and Rule 929 of the Revised
Implementing Rules and Regulations for Patents, Utility
Models and Industrial Design. The period of four (4) months
from the date of abandonment, however, remains
unchanged.
NOTE: The Justice Leonen erroneously applied the period for
trademarks when the case is mainly about patent
application.
However, notwithstanding the misapplication of Sec. 133.4,
petitioner is still guilty of inexcusable negligence as revealed
by its unusual delay in tending its patent application.
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7.7. PEARL & DEAN vs. SHOEMART | 148222 | 2016
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one
another. Hence, an invention is a proper subject of patent
and not copyright.
FACTS: Pearl and Dean, Inc. is a corporation engaged in the
manufacture of advertising display units simply referred to
as light boxes. Pearl and Dean was able to secure a
Certificate of Copyright Registration over these illuminated
display units entitled “advertising display units” and
marketed under the tradename “Poster ads”.
Sometime in 1985, Pearl and Dean negotiated with
Shoemart, Inc. (SMI) for the lease and installation of the light
boxes in SM City North Edsa which was still under
construction at that time. However, the deal did not go
anywhere.
Years later, Pear and Dean received reports that exact copies
of its light boxes were installed at SM City branches.
In the light of its discoveries, Pearl and Dean filed a case for
infringement of trademark and copyright, unfair
competition and damages. RTC ruled in favor of Pearl and
Dean but was reversed by the CA.
ISSUE: WHETHER SM AND NEMI ARE GUILTY OF
INFRINGEMENT OF TRADEMARK AND COPYRIGHT, UNFAIR
COMPETITION.
HELD: NO. Although petitioner’s copyright certificate was
entitled “Advertising Display Units” (which depicted the box-
type electrical devices), its claim of copyright infringement
cannot be sustained.
Copyright, in the strict sense of the term, is purely a
statutory right. Accordingly, it can cover only the works
falling within the statutory enumeration or description.
Even as the Court found that P & D indeed owned a valid
copyright, the same could have referred only to the technical
drawings within the category of “pictorial illustrations.” It
could not have possibly stretched out to include the
underlying light box. The light box was not a literary or
artistic piece which could be copyrighted under the
copyright law.
On the issue of trademark infringement, the petitioner’s
president said it was able to secure a trademark certificate
for “Poster Ads” where the goods it specified were
“stationeries such as letterheads, envelopes, calling cards
and newsletters.”
On the contrary, it dealt in electrically operated backlit
advertising units which, however, were not at all specified in
the trademark certificate.
NEC POSSUM TECUM VIVERE NEC SINE
8.8. BRANDIR INTERNATIONAL, INC. vs. CASCADE PACIFIC
LUMBER CO | 1987
To state the Denicola test in the language of conceptual
separability, if design elements reflect a merger of aesthetic
and functional considerations, the artistic aspects of a work
cannot be said to be conceptually separable from the
utilitarian elements.
Conversely, where design elements can be identified as
reflecting the designer's artistic judgment exercised
independently of functional influences, conceptual
separability exists.
FACTS: After seeing undulating wire sculptures, a friend
suggested to the artist, the chief owner of Brandir
International, Inc. (Brandir) (Plaintiff), that the sculptures
would make excellent bicycle racks.
Plaintiff then started to manufacture and sell bike racks
derived in part from one or more of the works of art. When
Plaintiff discovered that Cascade Pacific Lumber (Defendant)
was selling a similar product, it included a copyright notice
with its products and applied to the Copyright Office for
registration.
The Copyright Office denied the applications for registration
as the bicycle racks did not include any element that was
capable of independent existence as a copyrightability, and
the district court granted summary judgment on the
copyright claim. Plaintiff appealed.
ISSUE: WHETHER COPYRIGHTABILITY ULTIMATELY DEPEND
ON THE EXTENT TO WHICH THE WORK REFLECTS ARTISTIC
EXPRESSION NOT RESTRICTED BY FUNCTIONAL
CONSIDERATIONS?
HELD: YES. Copyrightability ultimately should depend on the
extent to which the work reflects artistic expression not
restricted by functional considerations.
If design elements reflect a merger of aesthetic and
functional considerations, the artistic aspects of a work
cannot be said to be conceptually separable from the
utilitarian elements.
The final form of the bicycle rack sold by Brandir (Plaintiff) is
basically a product of industrial design.nForm and function
are inextricably intertwined in the rack, its ultimate design
being as much the result of utilitarian pressures as aesthetic
choices.
The original aesthetic elements have clearly been adapted to
accommodate and further a utilitarian purpose.
The majority in this case adopted a test suggested by
Professor Denicola in his article Applied Art and Industrial
Design, 67 Min. L. Rev. 707 (1983).
2

9.1. CO TIONG SA v. DIRECTOR OF PATENTS | 5378 | 1954
The question of infringement of trademark is to be
determined by the test of dominancy. Similarity in size,
form, and color, while relevant, is not conclusive. Duplication
or imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate.
There is infringement of trademark when the use of the
marks involved would be likely to cause confusion or mistake
in the mind of the public or to deceive purchasers.
Infringement of trademark is a form of unfair competition
and unfair competition is always a question of fact. The
universal test has been said to be whether the public is likely
to be deceived.
The question of similarity or dissimilarity of trademarks can
be determined by a mere examination and comparison of the
competing trademarks. Failure on the part of the oppositor
to submit the testimony of witnesses, who are to give
opinions on the alleged similarity or dissimilarity, cannot be
a ground for a dismissal of an opposition.
FACTS: Herein petitioner, Co Tiong Sa is an applied for the
registration of the trademark "FREEDOM" and its
corresponding design. The same application was, however,
opposed by a Saw Woo Chiong & Co. which has used a similar
looking design consisting of the “Freeman.” The Director of
Patents sustained the opposition and denied petitioner’s
application. Hence this appeal.
ISSUE: WHETHER CO-TIONG SA’S APPLICATION FOR
REGISTRATION SHOULD PREVAIL?
HELD: NO. There is no question that if the details of the two
trademarks are to be considered, many differences would be
noted that would enable a careful and scrutinizing eye to
distinguish one trademark from the other.
*See stated doctrine.*
The average buyer usually seeks a sign, some special, easily
remembered earmarks of the brand he has in mind. It may
be the color, sound, design, or a peculiar shape or name.
Once his eyes see that or his ear hears it, he is satisfied.
Upon examination of the trademark of the oppositor-
respondent, one will readily see that the dominant feature
is the word "FREEMAN" written in a peculiar print, slightly
slanting to the right, with a peculiarly written capital letters
"FF".
These dominant features or characteristics of oppositor's
trademarks are reproduced or imitated in applicant's
trademark. In the first place, the word "FREEDOM" conveys
a similar idea as the word "FREEMAN". In the second place,
RE.: IPL DIGESTS
the style in which both capital "F" are written are similar. The
print and slant of the letters are also similar.
An ordinary purchaser or an unsuspecting customer who has
seen the oppositor's label sometime before will not
recognize the difference between that label and applicant's
label. He may notice some variations, but he will ignore
these, believing that they are variations of the same
trademark to distinguish one kind or quality of goods from
another.
After a careful study, the Court found that the dominant
characteristic of oppositor's trademark "FREEMAN" has
been imitated in applicant's trademark "FREEDOM," such as
to confuse the public and unwary customers and purchasers,
and to deceive them into believing that the articles bearing
one label are similar or produced by the same manufacturer
as those carrying the other label.
10.2. ETEPHA v. DIRECTOR OF PATENTS | 20635 | 1966
To The objects of a trademark are to point out distinctly the
origin or ownership of the article to which it is affixed, to
secure to him, who has been instrumental in bringing into
market a superior article of merchandise, the fruit of his
industry and skill, and to prevent fraud and imposition.
The validity of a cause for infringement is predicated upon
colorable imitation. The phrase “colorable imitation”
denotes such a “close or ingenious imitation as to be
calculated to deceive ordinary persons, or such a
resemblance to the original as to deceive an ordinary
purchaser giving such attention as a purchaser usually gives,
and to cause him to purchase the one supposing it to be the
other.
FACTS: Respondent Westmont Pharmaceuticals, an
American corporation, sought registration of trademark
‘Atussin’ placed on its medicinal preparation for the
treatment of coughs. Petitioner Etepha, owner of the
trademark ‘Pertussin’ placed also on preparation for cough
treatment, objected claiming that it will be damaged since
the 2 marks are confusingly similar.
The Director of Patents gave due course to the application.
Hence the present case.
ISSUE: WHETHER PETITIONER’S TRADEMARK IS
REGISTRABLE?
HELD: YES. That the word “tussin” figures as a component of
both trademarks is nothing to wonder at.
The Director of Patents aptly observes that it is “the common
practice in the drug and pharmaceutical industries to
‘fabricate’ marks by using syllables or words suggestive of
the ailments for which they are intended and adding thereto
distinctive prefixes or suffixes”.
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And appropriately to be considered now is the fact that,
concededly, the “tussin” (in Pertussin and Atussin) was
derived from the Latin root-word “tussis” meaning cough.
“Tussin” is merely descriptive; it is generic. While “tussin” by
itself cannot thus be used exclusively to identify one’s goods,
it may properly become the subject of a trademark “by
combination with another word or phrase”.
And this union of words is reflected in petitioner’s Pertussin
and respondent’s Atussin, the first with prefix “Per” and the
second with Prefix “A.”
The Court held that the two words had sounded differently
on the basis that the first syllable is most pronounced upon
the two words, and that the last syllable is the only similarity
is not uncommon in drug compounds.
The class of persons who buys the subject products was also
taken into consideration as the same persons are not of the
ordinary kind who may not be anyone, or be bought at any
time or anywhere.
The products at hand are of such kind that cannot be
dispensed with without the proper prescription.
11.3. GABRIEL v. PEREZ | 24075 | 1974
Findings of facts of Director of Patents conclusive on
Supreme Court.
Agreement giving distributor ownership of packages does
not necessarily grant her exclusive use of trademark.
The objects of a trademark are to point out distinctly the
origin or ownership of the goods to which it is affixed, to
secure to him, who has been instrumental in bringing into the
market a superior article of merchandise, the fruit of his
industry and skill, and to prevent fraud and imposition.
Fact that distributor spent substantial sums to promote
product covered by trademark and hired the artist who
designed the trademark not sufficient to vest ownership of
the trademark.
FACTS: Dr. Jose R. Perez filed with the Patents Office on
February 23, 1961 an application for registration of the
trademark "WONDER" in the Supplemental Register.
On October 19, 1962, petitioner Crisanta Y. Gabriel claiming
that he had been using the subject mark since 1959 filed with
the Patent Office a petition for cancellation of the trademark
"WONDER from the supplemental register alleging that the
registrant was not entitled to register the said trademark at
the time of his application for registration.
NEC POSSUM TECUM VIVERE NEC SINE
In support of her petition, she further alleged the written
contract between her and the registrant (respondent)
wherein, according to her, the latter has recognized her right
of use and ownership of said trademark; and that the labels
submitted by the registrant are the very containers bearing
the trademark "WONDER" which are owned by her and
which she has been exclusively and continuously using in
commerce.
After Dr. Perez, for his research, obtained a certificate of
label from the bureau of health which covered his beauty
soap. He made an agreement (January, 1959) with a certain
company named 'Manserco' for the distribution of his soap.
It was then being managed by the brother of the Petitioner
Crisanta Y. Gabriel.
Because the corporation was allegedly going bankrupt and
the members were deserting, the Respondent terminated
the agreement in July, 1959, and thereafter he asked the
Petitioner to become the distributor of his products.
Director of Patents rendered his decision denying the
petition of Gabriel to cancel the certificate of registration.
Hence this petition for review.
ISSUE: WHETHER GABRIEL, AS A MERE DISTRIBUTOR HAVE
THE RIGHT TO REGISTER THE SUBJECT MARK IN HER OWN
NAME?
HELD: NO. *See stated doctrine.* Crisanta Y. Gabriel appears
to be a mere distributor of the product by contract with the
manufacturer, respondent Dr. Jose R. Perez and the same
was only for a term.
Under Sections 2 and 2-A of the Trademark Law, Republic
Act No. 166, as amended, the right to register trademark is
based on ownership and a mere distributor of a product
bearing a trademark, even if permitted to use said
trademark, has no right to and cannot register the said
trademark
The agreement never mentioned transfer of ownership of
the trademark. It merely empowers the petitioner as
exclusive distributor to own the package and to create a
design at her pleasure, but not the right to appropriate unto
herself the sole ownership of the trademark so as to entitle
her to registration in the Patent Office.
The exclusive distributor does not acquire any proprietary
interest in the principal's trademark.
The trademark "WONDER" has long been identified and
associated with the product manufactured and produced by
the Dr. Jose R. Perez Cosmetic Laboratory.
NOTE: Petitioner's act in defraying substantial expenses in
the promotion of the Respondent's goods and the printing
of the packages are the necessary or essential consequences
3

of Paragraph 6 of the agreement because, anyway, those
activities are normal in the field of sale and distribution, as it
would redound to her own benefit as distributor, and those
acts are incumbent upon her to do.
12.4. ESSO STANDARD EASTERN v. CA | 29971 | 1982
Non-competing goods may be those which, though they are
not in actual competition, are so related to each other that it
might reasonably be assumed that they originate from one
manufacturer.
FACTS: The petitioner Esso Standard is a foreign corporation
duly licensed to do business in the Philippines engaged in the
sale of petroleum products (Gas) which are identified by the
trademark 'Esso'.
United Cigarette is a domestic corporation engaged in the
manufacture and sale of cigarettes. It acquired the business
from La Oriental Tobacco Corp including patent rights, one
of which is the use of 'Esso' on its cigarettes.
Petitioner asserted that the continued use by private
respondent of the same trademark ESSO on its cigarettes
was being carried out for the purpose of deceiving the public
as to its quality and origin to the detriment and disadvantage
of its own products.
The trial court decided in favor of petitioner. The same
decision was reversed by the Court of Appeals, hence this
case.
ISSUE: WHETHER RESPONDENT UNITED CIGARETTE IS
GUILTY OF TRADEMARK INFRINGEMENT?
HELD: NO. Infringement is defined by law as the use without
the consent of the trademark owner of any reproduction,
counterfeit, copy or colorable imitation of any registered
mark or tradename which would likely cause confusion or
mistake or deceive purchasers or others as to the source or
origin of such goods.
The products of both parties (Petroleum and cigarettes) are
non-competing. But as to whether trademark infringement
exists depend on whether or not the goods are so related
that the public may be or is actually deceived and misled that
they come from the same maker.
Under the Related Goods Theory, goods are related when
they belong to the same class or have the same descriptive
properties or when they have same physical attributes.
In these case, the goods are absolutely different and are so
foreign from each other it would be unlikely for purchasers
to think that they came from the same source.
Moreover, the goods flow from different channels of trade
and are evidently different in kind and nature.
RE.: IPL DIGESTS
13.5 DEL MONTE CORPORATION v. CA | 78325 | 1990
The question is not whether the two articles are
distinguishable by their label when set side by side but
whether the general confusion made by the article upon the
eye of the casual purchaser who is unsuspicious and off his
guard, is such as to likely result in his confusing it with the
original.
FACTS: In 1965, Philippine Packing was authorized by Del
Monte to manufacture and sell catsup under the Del Monte
trademark. In 1980, Sunshine Sauce registered its logo for
catsup which is contained in various kinds of bottles,
including the Del Monte bottle it buys from junk shops.
Del Monte, upon learning that Sunshine was using its bottles
and a logo confusingly similar to it, filed a complaint against
Sunshine for infringement of trademark.
After hearing, the trial court dismissed the complaint, ruling
that there were substantial differences between the logos.
The shape, brand, words, lettering, color, shape, of the logos
and the color of the products were different.
ISSUE: WHETHER THERE IS INFRINGEMENT?
HELD: YES. Side-by-side comparison is not the final test of
similarity. The question is not whether the two articles are
distinguishable by their label when set side by side but
whether the general confusion made by the article upon the
eye of the casual purchaser who is unsuspicious and off his
guard, is such as to likely result in his confusing it with the
original.
As a general rule, an ordinary buyer does not exercise as
much prudence in buying an article for which he pays a few
centavos as in this case, catsup. In the present case, even if
the labels were analyzed together, it is not difficult to see
that the Sunshine label is a colorable imitation of the Del
Monte trademark.
The predominant colors used in the Del Monte label are
green and redorange, the same with Sunshine.
The word "catsup" in both bottles is printed in white and the
style of the print/letter is the same. Although the logo of
Sunshine is not a tomato, the figure nevertheless
approximates that of a tomato. The inevitable conclusion is
that it was guilty of infringement.
With regard to bottle use, the Court ruled that Sunshine is
not guilty of infringement for having used the Del Monte
bottle since the patent for the bottle was only registered
under the Supplemental Register.
Under the law, registration under the Supplemental Register
is not a basis for a case of infringement because unlike
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registration under the Principal Register, it does not grant
exclusive use of the patent.
However, such use may constitute unfair competition since
Sunshine may be considered passing off its own product as
that of Del Monte.
14.6. EMERALD GARMENT MANUFACTURING
CORPORATION v.CA | 100098 | 1995
The holistic test mandates that the entirety of the marks in
question must be considered in determining confusing
similarity.
FACTS: H.D. Lee Co. Inc, a foreign corporation organized
under the laws of Delaware, U.S.A, filed a petition to cancel
the registration in the Supplemental Register of the
trademark “STYLISTIC MR. LEE” issued in the name of
Emerald Garment Manufacturing Corp. H.D. Lee asserts that
petitioner's trademark tends to mislead and confuse the
public and thus constitutes an infringement of its own mark,
since the dominant feature therein is the word "LEE."
Petitioner contends that its trademark "STYLISTIC MR. LEE"
is entirely different from and not confusingly similar to
private respondent's "LEE" trademark.
Subsequently, it caused the publication of its application for
registration of the trademark "STYLISTIC MR. LEE" in the
Principal Register. H.D. Lee opposed.
In 1988, the Director of Patents ruled in favor of HD Lee. In
1990, the Court of Appeals affirmed the decision of the
Director of Patents. Hence, the petition for review on
certiorari.
ISSUE: WHETHER THE TRADEMARK “STYLISTIC MR. LEE” IS
CONFUSINGLY SIMILAR TO HD LEE’S TRADEMARKS TO
WARRANT ITS CANCELLATION IN THE SUPPLEMENTAL
REGISTRY?
HELD: NO. Stylistic Mr. Lee is not a variation of the Lee mark.
HD Lee’s variation follows the format lee riders, “leesure”,
and “leeleens” and thus does not allow the conclusion that
“Stylistic Mr. Lee” is another variation under HD Lee’s mark.
Although on stylistic Mr. Lee’s label, the word “lee” is
prominent, the trademark should be considered as a whole
and not piecemeal. Further, “Lee” is a surname.
Personal names nor surnames cannot be monopolized as
trademarks or tradenames as against others of the same
name or surname.
Furthermore, inasmuch as Emerald Garment has shown the
use of stylistic Mr. Lee since 1975 through sales invoice from
stores and retailers; and that HD Lee was not able for
NEC POSSUM TECUM VIVERE NEC SINE
transactions period to 1981. The Supreme Court allowed the
use of stylistic Mr. Lee by Emerald Garment.
15.7. MIRPURI v. CA | 114508 | 1999
The essential requirement under the Paris Convention is that
the trademark to be protected must be “well-known” in the
country where protection is sought.
Modern authorities on trademark law view trademarks as
performing three distinct functions:
(1) They indicate origin or ownership of the articles to
which they are attached;
(2) They guarantee that those articles come up to a
certain standard of quality; and
(3) They advertise the articles they symbolize.
FACTS: Lolita Escobar, the predecessor-in-interest of
Pribhdas Mirpuri (Mirpuri) sought for the registration of the
mark Barbizon for use in ladies undergarments.
Barbizon Corporation, a corporation organized in the United
States opposed the registration because it was confusingly
similar to the trademark Barbizon it owns and has not
abandoned. The Director of Patents dismissed the
opposition in IPC No. 686. Escobar was issued a certificate of
registration for the trademark Barbizon.
However due to non-compliance with certain requirements,
the certificate was cancelled. When Mirpuri tried to register
again, Barbizon Corporation opposed the application again.
The Director of Patents dismissed the case since the case
was barred by res judicata. The Court of Appeals reversed
the decision of the Director of Patents, rationating that there
was no res judicata since Barbizon raised new issues not
found in the first case, also they raised rights protected
under a different law, the Paris Convention.
ISSUE: WHETHER THE TRADEMARK OF BARBIZON WHICH
WAS PREVIOUSLY REGISTERED IN THE UNITED STATES
PROTECTED BY THE PARIS CONVENTION?
HELD: YES. Article 6 bis of the Paris Convention protects well-
known trademarks. Each country of the Union bound itself
to undertake to refuse or cancel the registration, and
prohibit the use of a trademark which is a reproduction,
imitation or translation, or any essential part of which
trademark constitutes a reproduction, liable to create
confusion, of a mark considered by the competent authority
of the country where protection is sought, to be well-known
in the country as being already the mark of a person entitled
to the benefits of the Convention, and used for identical or
similar goods.
The essential requirement under Article 6bis is that the
trademark to be protected must be “well-known” in the
country where protection is sought. The power to determine
4

whether a trademark is well-known lies in the competent
authority of the country of registration or use.
Criterions were set by the Minister Roberto Ongpin for the
determination of well-known marks:
(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 reproduction, imitation,
translation or other infringement;
(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, and the
like, in different countries, including volume or
other measure of international trade and
commerce;
(c) That the trademark is duly registered in the
industrial property office(s) of another country or
countries, taking into consideration the date of
such registration;
(d) That the trademark has long been established and
obtained goodwill and international consumer
recognition as belonging to one owner or source;
(e) That the trademark actually belongs to a party
claiming ownership and has the right to
registration under the provisions of the
aforestated PARIS CONVENTION.
Case is remanded back to the Bureau of Patents for further
proceedings.
16.8. AMIGO MANUFACTURING INC. v. CLUETT PEABODY
CO. INC. | 139300 | 2001
The findings of the Bureau of Patents that two trademarks
are confusingly and deceptively similar to each other are
binding upon the courts, absent any sufficient evidence to the
contrary.
In the present case, the Bureau considered the totality of the
similarities between the two sets of marks and found that
they were of such degree, number
FACTS: The Amigo, a Philippine-based company and a
successor-in-interest of Great American Knitting Mills, Inc.,
sought the cancellation of the trademark and devices Cluett,
a US-based company, was using on men’s socks and claimed
exclusive ownership over it.
AMIGO CLUETT
Brand name: GOLD TOE Brand name: GOLD TOP
DEVICE: representation of DEVICE: has dominant
a sock and magnifying color white at the center
glass on the toe of a sock and a blackish brown
consisting of a ‘plurality of background with a
RE.: IPL DIGESTS
gold colored lines magnified design of the
arranged in parallel socks garter, and is
relation within triangular labeled ‘Amigo
are of toe of the stocking Manufacturing Inc.,
and spread from each Mandaluyong, Metro
other by lines of Manila, made in the
contrasting color of the Philippines.
major part of the stocking.
Linenized Linenized
The trial court rendered decision in favor of Cluett Peabody
Co., Inc,. The Court of Appeals affirmed the decision of the
trial court. Hence this case.
ISSUE: WHETHER PETITIONER HAD BEEN IN ACTUAL USE OF
THE MARK LONGER THAN RESPONDENT?
HELD: NO. Absent any clear showing to the contrary, the
finding of the Bureau of Patents that it was Cluett which had
prior use of the trademark as shown in the various
Certificates of Registration issued in its favor.
The registration of a mark upon the supplemental register is
not, as in the case of the principal register, prima facie
evidence of (a) the validity of registration, (2) registrant’s
ownership of the mark, and (3) registrant’s exclusive right to
use the mark.
Section 20, RA 166. A certificate of registration of a mark or
tradename shall be prima facie evidence of the validity of the
registration, the registrant’s ownership of the mark or
tradename, and of the registrant’s exclusive right to use the
same subject to any conditions and limitations stated
therein.
Thus, it was Cluett, which first validly registered the
trademarks and was able to present proof of registration
that first used the trademark and device in question.
ISSUE: WHETHER THERE ARE CONFUSING SIMILARITIES ON
THE TRADEMARK AND DEVICE OF THE PARTIES?
HELD: YES. Petitioner alleges that the two names sound
alike, however the Bureau of Patents, did not rely on the
idem sonans test alone in arriving at its conclusion.
In Emerald Garment Manufacturing Corporation v. Court of
Appeals, the Court stated that in determining whether
trademarks are confusingly similar, jurisprudence has
developed two kinds of tests, the Dominancy Test and the
Holistic Test.
Applying the two tests, there are some minor differences
between the two sets of marks. The similarities are of such
degree, the number and quality that the overall impression
given is that the two brands of socks are deceptively the
same, or at least very similar to each other:
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a. Both products used the same type of lettering.
Both also included a representation of man’s foot
wearing a sock and the word linenized with arrows
printed on label;
b. The names of the brands are similar: Gold Top and
Gold Toe;
c. Petitioner and respondent are engaged in the
same line of business.
Petitioner cannot therefore ignore the fact that, when
compared, most of the features of its trademark are
strikingly similar to those of respondent. Since Amigo did not
present any explanation why it chose the representation, it
is so far from claiming ownership over the trademark and
device. Hence, violating the applicable trademark provision
at that time.
Let it be remembered that duly registered trademarks are
protected by law as intellectual properties and cannot be
appropriated by others without violating the due process
clause. An infringement of intellectual rights is no less vicious
and condemnable as theft of material property, whether
personal or real.
ISSUE: WHETHER THE PARIS CONVENTION SHALL APPLY?
HELD: YES. A foreign-based trademark owner, whose
country of domicile is a party to an international convention
relating to protection of trademarks, is accorded protection
against infringement or any unfair competition. Thus the
Paris Convention applies, of which the Philippines and the
United States are members.
Respondent is domiciled in the United States and is the
registered owner of the “Gold Toe” trademark. Hence, it is
entitled to the protection of the Convention.
A foreign-based trademark owner, whose country of
domicile is a party to an international convention relating to
protection of trademarks, is accorded protection against
infringement or any unfair competition as provided in
Section 37 of Republic Act 166, the Trademark Law which
was the law in force at the time this case was instituted.
17.9. SHANGRI-LA INTERNATIONAL v. CA | 111580 | 2001
The filing of a suit to enforce the registered mark with the
proper court or Bureau shall exclude any other court or
agency from assuming jurisdiction over a subsequently filed
petition to cancel the same mark.
On the other hand, the earlier filing of petition to cancel the
mark with the Bureau shall not constitute a prejudicial
question that must be resolved before an action to enforce
the rights to same registered mark may be decided.
FACTS: Shangri-La International Hotel Management Ltd.
filed with the Bureau of Patents, Trademarks and
NEC POSSUM TECUM VIVERE NEC SINE
Technology Transfer (BPTTT) a petition for the cancellation
of the registration of the “Shangri-La” mark and “S” logo
issued to the Developers Group of Companies, Inc.
The Shangri-La Group filed with the BPTTT its own
application for registration of the subject mark and logo. The
Developers Group opposed the application.
Three years later, the Developers Group instituted with the
Regional Trial Court a complaint for infringement and
damages with prayer for injunction.
The Shangri-La group moved for the suspension of the
proceedings in the infringement case on account of the
pendency of the administrative proceedings before the
BPTTT. The trial court denied the motion.
The Court of Appeals dismissed the petition for certiorari.
Hence, this case.
ISSUE: WHETHER, DESPITE THE INSTITUTION OF A CASE
FOR CANCELLATION OF A MARK WITH THE BPTTT (NOW
THE BUREAU OF LEGAL AFFAIRS, INTELLECTUAL PROPERTY
OFFICE) BY ONE PARTY, THE ADVERSE PARTY CAN FILE A
SUBSEQUENT ACTION FOR INFRINGEMENT WITH THE
REGULAR COURTS OF JUSTICE IN CONNECTION WITH THE
SAME REGISTERED MARK?
HELD: YES. Rule 8, Section 7, of the Regulations on Inter
Partes Proceedings, provides to wit -
Section 7. Effect of filing of a suit before the Bureau
or with the proper court. - The filing of a suit to
enforce the registered mark with the proper court or
Bureau shall exclude any other court or agency from
assuming jurisdiction over a subsequently filed
petition to cancel the same mark. On the other hand,
the earlier filing of petition to cancel the mark with
the Bureau shall not constitute a prejudicial question
that must be resolved before an action to enforce the
rights to same registered mark may be decided.
Hence, as applied in the case at bar, the earlier institution of
an Inter Partes case by the Shangri-La Group for the
cancellation of the "Shangri-La" mark and "S" device/logo
with the BPTTT cannot effectively bar the subsequent filing
of an infringement case by registrant Developers Group.
The rationale is plain: Certificate of Registration No. 31904,
upon which the infringement case is based, remains valid
and subsisting for as long as it has not been cancelled by the
Bureau or by an infringement court.
As such, Developers Group's Certificate of Registration in the
principal register continues as "prima facie evidence of the
validity of the registration, the registrant's ownership of the
mark or trade-name, and of the registrant's exclusive right
to use the same in connection with the goods, business or
services specified in the certificate."
5

Since the certificate still subsists, Developers Group may
thus file a corresponding infringement suit and recover
damages from any person who infringes upon the former's
rights.
18.10. SOLID TRIANGLE SALES CORPORATION v. SHERIFF OF
RTC QC, BRANCH 93 | 144309 | 2001
There is no unfair competition under Section 168 of the
Intellectual Property Code where a person did not pass off
the subject goods as that of another.
FACTS: On January 28, 1999, Judge Bruselas, Jr., Presiding
Judge of RTC, Quezon City, upon application of the Economic
Intelligence and Investigation Bureau (EIIB), issued a search
warrant against herein private respondent Sanly
Corporation for violation of Sec. 168 of R.A No. 8293 for
unfair competition.
By virtue of the Search Warrant, EIIB agents seized 451 boxes
of Mitsubishi photographic color paper from respondent
Sanly.
Forthwith, Solid Triangle, through Robert Sitchon, its
Marketing and Communication Manager, filed with the
Office of the City Prosecutor, Quezon City, an affidavit
complaint for unfair competition against the members of the
Board of Sanly and LWT Co., Inc. (LWT)
The private respondent corporation contends that there is
no unfair competition being committed since the products
that he sells, particularly Mitsubishi photographic color
paper, are genuine products of Mitsubishi that he buys from
Hong Kong while the complainant purchases the same kind
of paper from Japan.
Respondents filed a motion to quash the warrant which was
granted by the Court. Petitioner filed a motion for
reconsideration with the same Court, however, the same
was denied. The case was elevated to the present petition.
ISSUE: WHETHER OR NOT THERE WAS PROBABLE CAUSE
THAT THE CRIME OF UNFAIR COMPETITION UNDER THE IPC
HAS BEEN COMMITTED BY THE RESPONDENTS?
HELD: NO. Sanly Corporation did not pass off the subject
goods as that of another. Indeed, it admits that the goods
are genuine Mitsubishi photographic paper, which it
purchased from a supplier in Hong Kong.
Petitioners also allege that private respondents “made it
appear that they were duly authorized to sell or distribute
Mitsubishi Photo Paper in the Philippines.” Assuming that
this act constitutes a crime, there is no proof to establish
such an allegation.
RE.: IPL DIGESTS
19.11. MIGHTY CORPORATION v. E&J GALLO WINERY |
154342 | 2004
The fact that one person has adopted and used a particular
trademark for his goods does not prevent the adoption and
use of the same trademark by others on articles of a different
description.
FACTS: Gallo Winery is a foreign corporation not doing
business in the Philippines but organized and existing under
the laws of California. Andresons has been Gallo Winery’s
exclusive wine importer and distributor in the Philippines
since 1991, selling these products in its own name and for its
own account.
Mighty Corporation and La Campana are engaged in the
cultivation, manufacture, distribution and sale of tobacco
products for which they have been using the GALLO
trademark for their cigarettes.
E.&J. Gallo sued Mighty Corporation sued Mighty
Corporation for trademark infringement and unfair
competition, when one of their employees saw the Gallo
cigarettes displayed together with Gallo wines in a
supermarket.
The Regional Trial Court ruled that Mighty Corporation was
liable for infringement and unfair competition and
permanently enjoined the using the GALLO trademark.
ISSUE: WHETHER GALLO CIGARETTES AND GALLO WINES
IDENTICAL, SIMILAR OR RELATED GOODS FOR THE REASON
ALONE THAT THEY ARE FORMS OF VICE?
HELD: NO. Confusion of goods is evident where the litigants
are actually in competition; but confusion of business may
arise between non-competing interests as well.
Wines and cigarettes are not identical or competing
products, neither do they belong to the same class of goods.
Product classification alone cannot serve as the decisive
factor to determine if wines and cigarettes are related
goods.
Emphasis should be on the similarity of the products
involved and not on the arbitrary classification or general
description of their properties or characteristics.
The mere fact that one person has adopted and used a
particular trademark for his goods does not prevent the
adoption and use of the same trademark by others on
articles of a different description.
Non-competing goods may be those which, though they are
not in actual competition, are so related to each other that
it can reasonably be assumed that they originate from one
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manufacturer, in which case, confusion of business can arise
out of the use of similar marks.
There is no trademark infringement if the public does not
expect the plaintiff to make or sell the same class of goods
as those made or sold by the defendant.
To determine whether goods are related, several factors
come into play:
1. The business (and its location) to which the goods
belong;
2. The class of product to which the goods belong;
3. The product's quality, quantity, or size, including the
nature of the package, wrapper or container;
4. The nature and cost of the articles;
5. The descriptive properties, physical attributes or
essential characteristics with reference to their form,
composition, texture or quality;
6. The purpose of the goods;
7. Whether the article is bought for immediate
consumption, that is, day-to-day household items;
8. The fields of manufacture;
9. The conditions under which the article is usually
purchased; and
10. The channels of trade through which the goods flow,
how they are distributed, marketed, displayed and
sold.
NOTE: See Art. 3 for the right against unauthorized search
and seizure. See requirements for a valid search warrant.
EXTRA: The Court held following to constitute the elements
of trademark infringement in accordance not only with
Section 22 of R.A. No. 166, as amended, but also Sections 2,
2-A, 9-A and 20 thereof:
(a) A trademark actually used in commerce in the
Philippines and registered in the principal register of
the Philippine Patent Office;
(b) Is used by another person in connection with the
sale, offering for sale, or advertising of any goods,
business or services 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 such trademark is reproduced,
counterfeited, copied or colorably imitated by
another person and such reproduction, counterfeit,
copy or colorable imitation is applied to labels, signs,
prints, packages, wrappers, receptacles or
advertisements intended to be used upon or in
connection with such goods, business or services as
to likely cause confusion or mistake or to deceive
purchasers;
(c) The trademark is used for identical or similar goods,
and
(d) Such act is done without the consent of the
trademark registrant or assignee.
NEC POSSUM TECUM VIVERE NEC SINE
20.12. MCDONALD'S CORPORATION v. LC BIG MAK
BURGER INC. | 143993 | 2004
The essential elements of an action for unfair competition
are (1) confusing similarity in the general appearance of the
goods, and (2) intent to deceive the public and defraud a
competitor.
The confusing similarity may or may not result from similarity
in the marks, but may result from other external factors in
the packaging or presentation of the goods.
FACTS: Petitioner McDonald's Corporation is a US
corporation that operates a global chain of fast-food
restaurants which owns the "Big Mac" mark for its "double-
decker hamburger sandwich" registered with the US
Trademark Registry and likewise applied and granted
registration here in the Philippines.
Respondent L.C. Big Mak Burger, Inc. is a domestic
corporation which operates fast-food outlets and snack vans
in Metro Manila and nearby provinces. Respondent
Corporation’s menu includes hamburger sandwiches and
other food items where it applied for the registration of the
mark “Big Mak”.
This application was opposed by McDonald’s for being an
infringement to its registered mark and such constitutes
unfair competition.
RTC rendered a Decision finding respondent corporation
liable for trademark infringement and unfair competition
but it was reversed by CA who applied the holistic test in the
case at bar.
ISSUE: WHETHER THERE IS UNFAIR COMPETITION?
HELD: YES. *Refer to stated doctrine.* The dissimilarities in
the packaging are minor compared to the stark similarities in
the words that give respondents' "Big Mak" hamburgers the
general appearance of petitioners' "Big Mac" hamburgers.
Section 29(a) expressly provides that the similarity in the
general appearance of the goods may be in the "devices or
words" used on the wrappings.
Respondents have applied on their plastic wrappers and
bags almost the same words that petitioners use on their
styrofoam box. What attracts the attention of the buying
public are the words "Big Mak" which are almost the same,
aurally and visually, as the words "Big Mac."
The dissimilarities in the material and other devices are
insignificant compared to the glaring similarity in the words
used in the wrappings. Section 29(a) also provides that the
defendant gives "his goods the general appearance of goods
of another manufacturer." Respondents' goods are
hamburgers which are also the goods of petitioners.
6

NOTE: If respondents sold egg sandwiches only instead of
hamburger sandwiches, their use of the "Big Mak" mark
would not give their goods the general appearance of
petitioners' "Big Mac" hamburgers.
In such case, there is only trademark infringement but no
unfair competition. However, since respondents chose to
apply the "Big Mak" mark on hamburgers, just like
petitioner's use of the "Big Mac" mark on hamburgers,
respondents have obviously clothed their goods with the
general appearance of petitioners' goods.
21.13. SASOT v. PEOPLE | 143193 | 2005
A foreign corporation not doing business in the Philippines
has capacity to sue for unfair competition under Article 189
of the Revised Penal Code.
FACTS: Allandale and Melbarose Sasot of Allandale
Sportslines, Inc. were charged with a violation of Article 189
of the Revised Penal Code on unfair competition. The
information alleges that the accused are engaged in the
manufacture, printing, sale, and distribution of counterfeit
“NBA” garment products, thus inducing the public to believe
that the goods offered by them are those of NBA Properties,
Inc.
In their motion to quash, the Sasots argue that the
complainant is a foreign corporation not doing business in
the Philippines, and cannot be protected by Philippine
patent laws.
ISSUE: WHETHER FOREIGN CORPORATION NOT ENGAGED
AND LICENSED TO DO BUSINESS IN THE PHILIPPINES MAY
MAINTAIN A CAUSE OF ACTION FOR UNFAIR
COMPETITION?
HELD: YES. The crime of Unfair Competition punishable
under Article 189 of the Revised Penal Code is a public crime.
It is essentially an act against the State and it is the latter
which principally stands as the injured party, although there
is a private right violated. Petitioner's capacity to sue would
become, therefore, of not much significance. Thus, the
complainant’s capacity to sue in such case becomes
immaterial.
Moreover, 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, the Court were moreover recognizing its 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.
NOTE: Compare with the present law.
RE.: IPL DIGESTS
22.14. LEVI STRAUSS (PHILS.) INC. v. VOGUE TRADERS
CLOTHING COMPANY | 132993 | 2005
An action for infringement or unfair competition, including
the available remedies of injunction and damages, in the
regular courts can proceed independently or simultaneously
with an action for the administrative cancellation of a
registered trademark in the BPTTT.
FACTS: Petitioner Levi Strauss Phils. is a grantee of license by
its US-based principal to use LEVI’S trademark in the
manufacturing and sale of its clothing and other goods.
Later, petitioner discovered the existence of respondent’s
trademark LIVE’S which in its view was confusingly similar to
its trademark.
Thus, petitioner instituted an administrative case for its
cancellation. Respondent on the other hand, filed a civil
action for damages against petitioner. Petitioner
counterclaimed that its trademark is infringed and moved to
enjoin respondent from using said confusingly similar mark.
Trial court ruled for petitioner.
CA ordered the trial court to desist from proceeding with the
civil case until the pending administrative action has been
resolved.
ISSUE: WHETHER OR NOT THE ADMINISTRATIVE ACTION
TO CANCEL THE TRADEMARK REGISTRATION CAN PROCEED
INDEPENDENTLY FROM AN ACTION OF INFRINGEMENT OR
UNFAIR COMPETITION?
HELD: YES. The passage of Republic Act No. 8293, otherwise
known as the “Intellectual Property Code of the Philippines,”
expanded the rights accorded to an owner of a registered
trademark. Sections 151 (2) thereof state:
Section 151.2. Notwithstanding the foregoing
provisions, the court or the administrative agency
vested with jurisdiction to hear and adjudicate any
action to enforce the rights to a registered mark shall
likewise exercise jurisdiction to determine whether
the registration of said mark may be cancelled in
accordance with this Act. The filing of a suit to
enforce the registered mark with the proper court or
agency shall exclude any other court or agency from
assuming jurisdiction over a subsequently filed
petition to cancel the same mark. On the other hand,
the earlier filing of petition to cancel the mark with
the Bureau of Legal Affairs (formerly BPTTT) shall not
constitute a prejudicial question that must be
resolved before an action to enforce the rights to
same registered mark may be decided.
It bears stressing that an action for infringement or unfair
competition, including the available remedies of injunction
and damages, in the regular courts can proceed
independently or simultaneously with an action for the
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administrative cancellation of a registered trademark in the
BPTTT.
As applied to the present case, petitioner’s prior filing of two
inter partes cases against the respondent before the BPTTT
for the cancellation of the latter’s trademark registrations,
namely, “LIVE’S” and “LIVE’S Label Mark,” does not preclude
petitioner’s right (as a defendant) to include in its answer (to
respondent’s complaint for damages in Civil Case No. No. 96-
76944) a counterclaim for infringement with a prayer for the
issuance of a writ of preliminary injunction.
23.15. LEVI STRAUSS & CO. v. CLINTON APPARELLE INC. |
138900 | 2005
Trademark dilution is the lessening of the capacity of a
famous mark to identify and distinguish goods or services,
regardless of the presence or absence of:
(1) Competition between the owner of the famous
mark and other parties; or
(2) Likelihood of confusion, mistake or deception.
FACTS: LS & Co. and LSPI filed a complaint for Trademark
Infringement, Injunction and Damages against Clinton
Apparelle, Inc. for allegedly manufacturing jeans under the
brand name "Paddocks" with a design which is substantially
similar to "Dockers and Design" trademark of the former.
The trial court granted the writ of preliminary injunction.
Thereafter, Clinton Apparelle filed a Motion to Dismiss and a
Motion for Reconsideration of the Order granting the writ.
Both motions were denied. Thus, Clinton Apparelle filed with
the CA a Petition for certiorari, assailing the orders of the
trial court.
The CA granted the petition, ruling that the issuance of the
injunctive writ is questionable; the petitioners having failed
to sufficiently establish its material and substantial right to
have the writ issued, and the implementation of the
questioned writ would effectively shut down respondent's
business.
Hence, LS & Co. filed the present petition asserting that a
trademark owner does not have to wait until the mark loses
its distinctiveness to obtain injunctive relief, and that the
mere use by an infringer of a registered mark is already
actionable even if he has not yet profited thereby or has
damaged the trademark owner.
ISSUE: WHETHER EROSION OR DILUTION OF TRADEMARK
IS PROTECTABLE BY INJUNCTION?
HELD: YES. The owner of a famous mark is entitled to an
injunction against another person's commercial use in
commerce of a mark or trade name, if such use begins after
the mark has become famous and causes dilution of the
distinctive quality of the mark.
NEC POSSUM TECUM VIVERE NEC SINE
This is intended to protect famous marks from subsequent
uses that blur distinctiveness of the mark or tarnish or
disparage it.
However, in the case at bar, petitioners have yet to establish
whether "Dockers and Design" has acquired a strong degree
of distinctiveness and whether Clinton Apparelle began
using its mark after the petitioners' mark became famous
and such subsequent use defames petitioners' mark.
The Survey Report which petitioners presented to establish
that there was confusing similarity between two marks is not
sufficient proof of any dilution that the trial court must
enjoin.
Accordingly, the Court finds that petitioners did not
adequately prove their entitlement to the injunctive writ.
In the absence of proof of a legal right and the injury
sustained by the applicant, an order of the trial court
granting the issuance of an injunctive writ will be set aside
for having been issued with grave abuse of discretion.
24.16. SHANGRI-LA INTERNATIONAL v. DEVELOPERS
GROUP OF COMPANIES INC. | 159938 | 2006
As between actual use of a mark without registration, and
registration of the mark without actual use thereof, the
former prevails over the latter. For a rule widely accepted
and firmly entrenched, because it has come down through
the years, is that actual use in commerce or business is a pre-
requisite to the acquisition of the right of ownership.
Trademark is a creation of use and, therefore, actual use is a
pre-requisite to exclusive ownership; registration is only an
administrative confirmation of the existence of the right of
ownership of the mark, but does not perfect such right;
actual use thereof is the perfecting ingredient.
FACTS: Respondent DGCI applied for and was granted
registration of the ‘Shangri-La’ mark and ‘S’ logo in its
restaurant business. Petitioner Shangri-La, chain of hotels
and establishments owned by the Kuok family worldwide,
moved to cancel the registration of the mark on the ground
that it was illegally and fraudulently obtained and
appropriated by respondents. Petitioner also moved to
register the mark and logo in its own name.
Later, respondent DGCI filed before the trial court a
complaint for infringement against petitioner alleging that
DGCI had been the prior exclusive user and the registered
owner in the Philippines of said mark and logo. Petitioner
Shangri-La argued that respondent had no right to apply for
the registration because it did not have prior actual
commercial use thereof. The trial court found for
respondent. CA affirmed.
7

ISSUE: WHETHER OR NOT RESPONDENT’S PRIOR USE OF
THE MARK IS A REQUIREMENT FOR ITS REGISTRATION?
HELD: YES. While the present law on trademarks has
dispensed with the requirement of prior actual use at the
time of registration, the law in force at the time of
registration must be applied.
Under the provisions of the former trademark law, R.A. No.
166, as amended, hence, the law in force at the time of
respondent’s application for registration of trademark, the
root of ownership of a trademark is actual use in commerce.
Section 2 of said law requires that before a trademark can be
registered, it must have been actually used in commerce and
service for not less than two months in the Philippines prior
to the filing of an application for its registration.
*See underlined doctrine.* While the petitioners may not
have qualified under Section 2 of R.A. No. 166 as a registrant,
neither did respondent DGCI, since the latter also failed to
fulfill the 2-month actual use requirement. What is worse,
DGCI was not even the owner of the mark.
For it to have been the owner, the mark must not have been
already appropriated (i.e., used) by someone else. At the
time of respondent DGCI’s registration of the mark, the same
was already being used by the petitioners, albeit abroad, of
which DGCI’s president was fully aware.
25.17. PHILIP MORRIS INC. v. FORTUNE TOBACCO
CORPORATION | 158589 | 2006
The holistic test entails a consideration of the entirety of the
marks as applied to the products, including the labels and
packaging, in determining confusing similarity.
Members of the Paris Union does not automatically entitle
petitioners to the protection of their trademarks in this
country absent actual use of the marks in local commerce
and trade.
Re: Reiteration of the doctrine in case 24 regarding actual
use being pre-requisite to exclusive ownership.
Re: Reiteration of the doctrine in case 19 regarding elements
of unfair competition.
FACTS: Petitioner Philip Morris, Inc. is a corporation
organized under the laws of the State of Virginia, United
States of America and is the the registered owner of the
trademark "MARK VII" for cigarettes.
Two of its subsidiaries are the registered owner of the
trademarks, “MARK TEN” and “LARK”. On the other hand,
respondent Fortune Tobacco, a domestic corporation,
manufactures and sells cigarettes using the trademark
“MARK”.
RE.: IPL DIGESTS
Petitioner filed a Complaint for Infringement of Trademark
and Damages against respondent arguing that the latter’s
use of the trademark "MARK" is likely to cause confusion or
would deceive purchasers and the public in general into
buying these products under the impression and mistaken
belief that they are buying petitioners’ products.
The trial court ruled that there is no infringement of
trademark. The appellate court affirmed the decision.
ISSUE: WHETHER THERE IS LIKELIHOOD OF CONFUSION?
HELD: NO. The "likelihood of confusion" is the gravamen of
trademark infringement. In determining similarity and
likelihood of confusion, jurisprudence has developed two
tests: the dominancy test and the holistic test. The CA
correctly relied on the holistic test.
Indeed, although the perceived offending word "MARK" is
itself prominent in petitioners’ trademarks "MARK VII" and
"MARK TEN," the entire marking system should be
considered as a whole and not dissected, because a
discerning eye would focus not only on the predominant
word but also on the other features appearing in the labels.
Only then would such discerning observer draw his
conclusion whether one mark would be confusingly similar
to the other and whether or not sufficient differences
existed between the marks.
ISSUE: WHETHER THE PARIS CONVENTION APPLIES?
HELD: NO. The fact that their respective home countries,
namely, the United States, Switzerland and Canada, are,
together with the Philippines, members of the Paris Union
does not automatically entitle petitioners to the protection
of their trademarks in this country absent actual use of the
marks in local commerce and trade.
The Court held that any protection accorded has to be made
subject to the limitations of Philippine laws. Sections 2 and
2-A of R.A. No. 166, as amended, mandate actual use of the
marks and/or emblems in local commerce and trade before
they may be registered and ownership thereof acquired.
ISSUE: WHETHER THERE IS ACTUAL USE?
HELD: NO. Registration of trademark cannot be deemed
conclusive as to the actual use of such trademark in local
commerce.
As stated in Shangri-La International Hotel Management,
Ltd. v. Developers Group of Companies, Inc. Trademark is a
creation of use and, therefore, actual use is a pre-requisite
to exclusive ownership; registration is only an administrative
confirmation of the existence of the right of ownership of
the mark, but does not perfect such right; actual use thereof
is the perfecting ingredient.
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With the foregoing perspective, it may be stated right off
that the registration of a trademark unaccompanied by
actual use thereof in the country accords the registrant
only the standing to sue for infringement in Philippine
courts. Entitlement to protection of such trademark in the
country is entirely a different matter.
26.18. MATTEL INC. v. FRANCISCO | 166886 | 2008
Admission of non-compliance with the requirement of filing
a Declaration of Actual Use is tantamount to a judicial
admission of abandonment of trademark.
FACTS: Jimmy A. Uy filed a trademark application with the
Bureau of Patents, Trademarks and Technology Transfer
(BPTTT) for registration of the trademark "BARBIE" for use
on confectionary products, such as milk, chocolate, etc. in
Class 30 of the International Classification of Goods.
Mattel, Inc., a corporation organized under the laws of the
State of Delaware, United States of America, filed a Notice
of Opposition against Uy's "Barbie" trademark as the latter
was confusingly similar to its trademark on dolls, doll clothes
and doll accessories, toys and other similar commercial
products.
While the case was pending, Republic Act 8293, otherwise
known as the Intellectual Property Code of the Philippines
was enacted and took effect Director of the Bureau of Legal
Affairs, IPO, dismissed Mattel's opposition and gave due
course to Uy’s application for the registration.
Later, the Director General rendered a Decision denying the
Mattel’s appeal. Mattel filed a Motion for New Trial on the
ground of newly discovered evidence but was denied. On
appeal, CA affirmed the decision of the Director General.
Hence this case.
Mattel argues that that the Director General of the IPO has
the power to act on a pending trademark application
considered as “withdrawn” for failure to file the DAU.
On the other hand, Uy submits that the case has become
moot and academic since the records will show that no
Declaration of Actual Use was filed on or before December
1, 2001, thus, he is deemed to have abandoned his
trademark application for failure to comply with the
mandatory filing of the DAU.
ISSUE: WHETHER THE CASE HAS BECOME MOOT AND
ACADEMIC?
HELD: YES. Uy's declaration in his Comment and
Memorandum before this Court that he has not filed the
DAU as mandated by pertinent provisions of R.A. No. 8293 is
a judicial admission that he has effectively abandoned or
withdrawn any right or interest in his trademark.
Under Sec. 124.2 of R.A. No. 8293, “The applicant or the
registrant shall file a declaration of actual use of the mark
with evidence to that effect, as prescribed by the
Regulations within three (3) years from the filing date of the
application. Otherwise, the applicant shall be refused or the
marks shall be removed from the Register by the Director.”
A judicial admission binds the person who makes the same.
In the same vein, an admission against interest is the best
evidence which affords the greatest certainty of the facts in
dispute.
The rationale for the rule is based on the presumption that
no man would declare anything against himself unless such
declaration is true.
Thus, it is fair to presume that the declaration corresponds
with the truth, and it is his fault if it does not. Hence, the
petition was dismissed.
NOTE: Difference in DAU in RA 166 and RA 8293.
27.19. COCA-COLA BOTTLERS v. GOMEZ | 154491 | 2008
The law on unfair competition does not thereby cover every
unfair act committed in the course of business; it covers only
acts characterized by deception or any other means contrary
to good faith in the passing off of goods and services as those
of another who has established goodwill in relation with
these goods or services, or any other act calculated to
produce the same result.
Hoarding does not relate to any patent, trademark, trade
name or service mark that the respondents have invaded,
intruded into or used without proper authority from the
petitioner. Nor are the respondents alleged to be
fraudulently "passing off" their products or services as those
of the petitioner. Hence, hoarding is not an act that would
constitute unfair competition.
FACTS: On July 2, 2001 Coca-Cola applied for a search
warrant against Pepsi for hoarding Coke empty bottles in
Pepsi's yard in Concepcion Grande, Naga City, an act
allegedly penalized as unfair competition under the IP Code.
Coca-Cola claimed that the bottles must be confiscated to
preclude their illegal use, destruction or concealment by the
respondents. The MTC issued a search warrant. The local
police seized and brought to the MTC’s custody 2,464 Litro
and 4,036 eight and 12 ounces empty Coke bottles, 205
Pepsi shells for Litro, and 168 Pepsi shells for smaller empty
Coke bottles, and later filed with the Office of the City
Prosecutor of Naga a complaint against two Pepsi officers,
including herein respondent Naga general manager Quintin
J. Gomez, Jr., for violation of Section 168.3 (c) in relation to
Section 170 of the IP Code.5.
8
NEC POSSUM TECUM VIVERE NEC SINE

The respondents also filed motions for the return of their
shells and to quash the search warrant. They contended that
no probable cause existed to justify the issuance of the
search warrant; the facts charged do not constitute an
offense. The same motion was denied by the MTC.
Respondents elevated the case to the RTC where the same
voided the warrant for lack of probable cause and the non-
commission of the crime of unfair competition. Petitioner
bypassed the Court of Appeals and asked the Supreme Court
to review the decision of the RTC.
ISSUE: WHETHER HOARDING OF BOTTLES CONSTITUTES AN
OFFENSE OF UNFAIR COMPETITION?
HELD: NO. From jurisprudence, unfair competition has been
defined as the passing off (or palming off) or attempting to
pass off upon the public the goods or business of one person
as the goods or business of another with the end and
probable effect of deceiving the public. One of the essential
requisites in an action to restrain unfair competition is proof
of fraud; the intent to deceive must be shown before the
right to recover can exist.
The advent of the IP Code has not significantly changed these
rulings as they are fully in accord with what Section 168 of
the Code in its entirety provides. Deception, passing off and
fraud upon the public are still the key elements that must be
present for unfair competition to exist.
The Court noted that:
 Section 168.1 speaks of a person who has earned
goodwill with respect to his goods and services and
who is entitled to protection under the Code, with or
without a registered mark.
 Section 168.2, as previously discussed, refers to the
general definition of unfair competition.
 Section 168.3, on the other hand, refers to the
specific instances of unfair competition, with:
 Section 168.3(a) referring to the sale of goods
given the appearance of the goods of another;
 Section 168.3(b), to the inducement of belief
that his or her goods or services are that of
another who has earned goodwill;
 While the disputed Section 168.3(c) being a
“catch all” clause whose coverage the parties
now dispute.
The Court concluded that the "hoarding" - as defined and
charged by the petitioner - does not fall within the coverage
of the IP Code and of Section 168 in particular. It does not
relate to any patent, trademark, trade name or service mark
that the respondents have invaded, intruded into or used
without proper authority from the petitioner. Nor are the
respondents alleged to be fraudulently "passing off" their
products or services as those of the petitioner.
RE.: IPL DIGESTS
The respondents are not also alleged to be undertaking any
representation or misrepresentation that would confuse or
tend to confuse the goods of the petitioner with those of the
respondents, or vice versa.
NOTE: What in fact the petitioner alleges is an act foreign to
the Code, to the concepts it embodies and to the acts it
regulates; as alleged, hoarding inflicts unfairness by seeking
to limit the opposition's sales by depriving it of the bottles it
can use for these sales. In this light, hoarding for purposes of
destruction is closer to what another law, R.A. No. 623
covers.
28.20. LEVI STRAUSS INC. v. LIM | 162311 | 2008
Generally, unfair competition consists in employing
deception or any other means contrary to good faith by
which any person shall pass off the goods manufactured by
him or in which he deals, or his business, or services for those
of the one having established goodwill, or committing any
acts calculated to produce such result.
The elements of unfair competition under Article 189(1) of
the Revised Penal Code are:
(a) That the offender gives his goods the general
appearance of the goods of another manufacturer
or dealer;
(b) That the general appearance is shown in the (1)
goods themselves, or in the (2) wrapping of their
packages, or in the (3) device or words therein, or
in (4) any other feature of their appearance;
(c) That the offender offers to sell or sells those goods
or gives other persons a chance or opportunity to
do the same with a like purpose; and
(d) That there is actual intent to deceive the public or
defraud a competitor.
FACTS: Petitioner Levi Strauss (Phils.), Inc. Is a duly-
registered domestic corporation. It is a wholly-owned
subsidiary of Levi Strauss & Co. (LS & Co.) A Delaware, USA
company. In 1972, LS & Co. Granted petitioner a non-
exclusive license to use its registered trademarks and trade
names for the manufacture and sale of various garment
products, primarily pants, jackets, and shirts, in the
Philippines.
Presently, it is the only company that has authority to
manufacture, distribute, and sell products bearing the LEVI’S
trademarks or to use such trademarks in the Philippines.
These trademarks are registered in over 130 countries,
including the Philippines, and were first used in commerce in
the Philippines in 1946.
Sometime in 1995, petitioner lodged a complaint before the
Inter-Agency Committee on Intellectual Property Rights,
alleging that a certain establishment owned by respondent
Tony Lim, doing business under the name Vogue Traders
Clothing Company, was engaged in the manufacture, sale,
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and distribution of products similar to those of petitioner
and under the brand name “LIVE’S,” and was granted the
filing of an information against respondent.
Respondent then filed his own motion for reconsideration of
the Bello resolution, the DOJ then ordered the dismissal of
the complaint. Dissatisfied with the DOJ rulings, petitioner
sought recourse with the CA.
On October 17, 2003, the appellate court affirmed the
dismissal of the unfair competition complaint.
ISSUE: WHETHER THERE IS UNFAIR COMPETITION?
HELD: NO. *Refer to stated doctrine.* All these elements
must be proven. In finding that probable cause for unfair
competition does not exist, the investigating prosecutor
arrived at the same conclusion that there is insufficient
evidence to prove all the elements of the crime that would
allow them to secure a conviction as there was no actual
intent to deceive by taking into consideration the differences
in spelling, meaning, and phonetics between “LIVE’S” and
“LEVI’S,” as well as the fact that respondent had registered
his own mark.
While it is true that there may be unfair competition even if
the competing mark is registered in the Intellectual Property
Office, it is equally true that the same may show prima facie
good faith.
Indeed, registration does not negate unfair competition
where the goods are packed or offered for sale and passed
off as those of complainant. However, the mark’s
registration, coupled with the stark differences between the
competing marks, negate the existence of actual intent to
deceive, in this particular case.
More importantly, the likelihood of confusion exists not only
if there is confusing similarity. It should also be likely to cause
confusion or mistake or deceive purchasers.
Thus, the CA correctly ruled that the mere fact that some
resemblance can be pointed out between the marks used
does not in itself prove unfair competition. To reiterate, the
resemblance must be such as is likely to deceive the ordinary
purchaser exercising ordinary care.
The consumer survey alone does not equate to actual
confusion. The Court noted that the survey was made by
showing the interviewees actual samples of petitioner’s and
respondent’s respective products, approximately five feet
away from them. From that distance, they were asked to
identify the jeans’ brand and state the reasons for thinking
so.
This method discounted the possibility that the ordinary
intelligent buyer would be able to closely scrutinize, and
even fit, the jeans to determine if they were “LEVI’S” or not.
NEC POSSUM TECUM VIVERE NEC SINE
It also ignored that a consumer would consider the price of
the competing goods when choosing a brand of jeans. It is
undisputed that “LIVE’S” jeans are priced much lower than
“LEVI’S.”
29.21. ESPIRITU v. PETRON CORP. | 170891 | 2009
What the law punishes is the act of giving one’s goods the
general appearance of the goods of another which would
likely mislead the buyer into believing that such goods belong
to the latter.
FACTS: Respondent Petron Corporation (Petron) sold and
distributed liquefied petroleum gas (LPG) in cylinder tanks
that carried its trademark Gasul. Respondent Carmen J.
Doloiras owned and operated Kristina Patricia Enterprises,
the exclusive distributor of Gasul LPGs in the whole of
Sorsogon. Bicol Gas Refilling Plant Corporation was also in
the business of selling and distributing LPGs in Sorsogon but
theirs carried the trademark Bicol Savers Gas.
In the course of trade and competition, any given distributor
of LPGs at times acquired possession of LPG cylinder tanks
belonging to other distributors operating in the same area.
They called these captured cylinders. It is a common practice
to swap captured cylinders and return it to their respective
LPG owners.
A KPE employee visited Bicol Gas, he requested for a swap
but the employee of Bicol Gas refused as he first needed to
ask the permission of the Bicol Gas Owners.
KPE filed a complaint for violation of RA 623 (illegally filling
up of registered cylinder tanks), infringement of trademarks
and unfair competition. The provincial prosecutors only
found probable cause on the violation of RA 623.
KPE and Petron filed a special civil action for certiorari. CA
ruled in their favor, holding that unfair competition do not
absorb trademark infringement,
ISSUE: WHETHER BICOL GAS COMMITTED TRADEMARK
INFRINGEMENT?
HELD: NO. *See Section 155 of R.A. 8293 (in relation to
Section 170)* KPE and Petron have to show that the alleged
infringer, the responsible officers and staff of Bicol Gas, used
Petrons Gasul trademark or a confusingly similar trademark
on Bicol Gas tanks with intent to deceive the public and
defraud its competitor as to what it is selling.
Here, however, the allegations in the complaint do not show
that Bicol Gas painted on its own tanks Petrons Gasul
trademark or a confusingly similar version of the same to
deceive its customers and cheat Petron. Indeed, in this case,
the one tank bearing the mark of Petron Gasul found in a
truck full of Bicol Gas tanks was a genuine Petron Gasul tank,
more of a captured cylinder belonging to competition.
9

No proof has been shown that Bicol Gas has gone into the
business of distributing imitation Petron Gasul LPGs.
ISSUE: WHETHER BICOL GAS COMMITTED UNFAIR
COMPETITION?
HELD: NO. *See Section 168.3 (a) of R.A. 8293 (also in
relation to Section 170.)* Essentially, what the law punishes
is the act of giving ones goods the general appearance of the
goods of another, which would likely mislead the buyer into
believing that such goods belong to the latter.
ISSUE: WHETHER BICOL GAS VIOLATED RA 623?
HELD: NO. R.A. 623, as amended punishes any person who,
without the written consent of the manufacturer or seller of
gases contained in duly registered steel cylinders or tanks,
fills the steel cylinder or tank, for the purpose of sale,
disposal or trafficking, other than the purpose for which the
manufacturer or seller registered the same.
This is was what happened in this case, assuming the
allegations of KPEs manager to be true. Bicol Gas employees
filled up with their firm’s gas, the tank registered to Petron
and bearing its mark without the latter’s written authority.
Consequently, they may be prosecuted for that offense.
The Court of Appeals of course specifically mentioned
petitioner stockholder Manuel C. Espiritu, Jr. as the
registered owner of the truck that the KPE manager brought
to the police for investigation because that truck carried a
tank of Petron Gasul. But the act that R.A. 623 punishes is
the unlawful filling up of registered tanks of another.
It does not punish the act of transporting such tanks. And the
complaint did not allege that the truck owner connived with
those responsible for filling up that Gasul tank with Bicol Gas
LPG.
RULING AS TO LIABILITY: Corporate officers or employees
through whose act, default or omission the corporation
commits a crime may themselves be individually held
answerable for the crime.
Bicol Gas is a corporation. As such, it is an entity separate
and distinct from the persons of its officers, directors, and
stockholders. It has been held, however, that corporate
officers or employees, through whose act, default or
omission the corporation commits a crime, may themselves
be individually held answerable for the crime.
Before a stockholder may be held criminally liable for acts
committed by the corporation, it must be shown that he had
knowledge of the criminal act committed in the name of the
corporation and that he took part in the same or gave his
consent to its commission whether by action or inaction.
RE.: IPL DIGESTS
No evidence was presented establishing the names of the
stockholders who were charged with running the operations
of Bicol Gas. The complaint even failed to allege who among
the stockholders sat in the board of directors of the company
or served as its officers.
30.22. PROSOURCE INTERNATIONAL INC. v. HORPHAG
RESEARCH MANAGEMENT SA | 180073 | 2009
Although there were dissimilarities in the trademark due to
the type of letters used as well as the size, color and design
employed on their individual packages/bottles, still the close
relationship of the competing products’ name in sounds as
they were pronounced, clearly indicates that purchasers
could be misled into believing that they are the same and/or
originates from a common source and manufacturer.
FACTS: Respondent is a corporation and owner of trademark
PYCNOGENOL, a food. Respondent later discovered that
petitioner was also distributing a similar food supplement
using the mark PCO-GENOLS since 1996. This prompted
respondent to demand that petitioner cease and desist from
using the aforesaid mark.
Respondent filed a Complaint for Infringement of Trademark
with Prayer for Preliminary Injunction against petitioner, in
using the name PCO-GENOLS for being confusingly similar.
Petitioner appealed otherwise.
The RTC decided in favor of respondent. It observed that
PYCNOGENOL and PCO-GENOLS have the same suffix
"GENOL" which appears to be merely descriptive and thus
open for trademark registration by combining it with other
words and concluded that the marks, when read, sound
similar, and thus confusingly similar especially since they
both refer to food supplements. CA affirmed. Hence this
case.
ISSUE: WHETHER THE NAMES PYCNOGENOL AND PCO-
GENOLS ARE CONFUSINGLY SIMILAR?
HELD: YES. The Dominancy Test focuses on the similarity of
the prevalent features of the competing trademarks that
might cause confusion and deception, thus constituting
infringement. If the competing trademark contains the main,
essential and dominant features of another, and confusion
or deception is likely to result, infringement takes place.
The Court reiterated that the issue of trademark
infringement is factual, with both the trial and appellate
courts finding the allegations of infringement to be
meritorious.
It has been consistently held, factual determinations of the
trial court, concurred in by the CA, are final and binding on
this Court. Hence, petitioner is liable for trademark
infringement.
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Both the words have the same suffix "GENOL" which on
evidence, appears to be merely descriptive and furnish no
indication of the origin of the article and hence, open for
trademark registration by the plaintiff through combination
with another word or phrase.
When the two words are pronounced, the sound effects are
confusingly similar not to mention that they are both
described by their manufacturers as a food supplement and
thus, identified as such by their public consumers.
And although there were dissimilarities in the trademark due
to the type of letters used as well as the size, color and
design employed on their individual packages/bottles, still
the close relationship of the competing products’ name in
sounds as they were pronounced, clearly indicates that
purchasers could be misled into believing that they are the
same and/or originates from a common source and
manufacturer.
Thus the Court upheld the decision of the Court of Appeals.
31.23. BATISTIS v. PEOPLE | 181571 | 2009
Where there is no question that the accused exerted the
effort to make the counterfeit products look genuine to
deceive the unwary public into regarding the products as
genuine, he thereby committed acts constituting
infringement of trademark as set out in Section 155 of the
Intellectual Property Code.
FACTS: Allied Domecq Philippines, Inc., a Philippine
corporation exclusively authorized to distribute Fundador
brandy products imported from Spain wholly in finished
form, initiated this case against Batistis.
Upon its request, agents of the National Bureau of
Investigation (NBI) conducted a test-buy in the premises of
Batistis, and thereby confirmed that he was actively engaged
in the manufacture, sale and distribution of counterfeit
Fundador brandy products. Batistis was charged in the RTC
in Manila with two separate offenses, namely, infringement
of trademark and unfair competition.
The RTC found Batistis guilty beyond reasonable doubt of
infringement of trademark and unfair competition. The
Court of Appeals affirmed his conviction for infringement of
trademark, but acquitted him of unfair competition.
ISSUE: WHETHER THERE IS INFRINGEMENT?
HELD: YES. *See Article 155 of the Intellectual Property Code
which identifies the acts constituting infringement of
trademark.*
The Operations Manager of Pedro Domecq, S.A. whose task
involved the detection of counterfeit products in the
Philippines, testified that the seized Fundador brandy, when
compared with the genuine product, revealed several
characteristics of counterfeiting, namely:
(a) The Bureau of Internal Revenue (BIR) seal label
attached to the confiscated products did not
reflect the word tunay when he flashed a black
light against the BIR label;
(b) The “tamper evident ring” on the confiscated item
did not contain the word Fundador; and
(c) The word Fundador on the label was printed flat
with sharper edges, unlike the raised, actually
embossed, and
(1) Finely printed genuine Fundador trademark.
There is no question that Batistis exerted the effort to make
the counterfeit products look genuine to deceive the unwary
public into regarding the products as genuine.
The buying public would be easy to fall for the counterfeit
products due to their having been given the appearance of
the genuine products, particularly with the difficulty of
detecting whether the products were fake or real if the
buyers had no experience and the tools for detection, like
black light.
He thereby infringed the registered Fundador trademark by
the colorable imitation of it through applying the dominant
features of the trademark on the fake products, particularly
the two bottles filled with Fundador brandy. His acts
constituted infringement of trademark.
32.24. SUPERIOR COMMERCIAL ENTERPRISES INC. v.
KUNNAN ENTERPRISES LTD. | 169974 | 2010
The cancellation of registration of a trademark has the effect
of depriving the registrant of protection from infringement
from the moment judgment or order of cancellation has
become final.
FACTS: SUPERIOR filed a complaint for trademark
infringement and unfair competition with preliminary
injunction against KUNNAN and SPORTS CONCEPT with the
RTC. It claimed to be the owner of the trademarks, trading
styles, company names and business names
"KENNEX","KENNEX & DEVICE","PRO KENNEX" and "PRO-
KENNEX" (disputed trademarks). It presented as evidence of
its ownership of the disputed trademarks the preambular
clause of the Distributorship Agreement it executed with
KUNNAN.
KUNNAN disputed SUPERIOR’s claim of ownership and
maintained that SUPERIOR as mere distributor fraudulently
registered the trademarks in its name.
Prior to and during the pendency of the infringement and
unfair competition case before the RTC, KUNNAN filed with
the now defunct BPTTT separate Petitions for the
Cancellation of Registration Trademark in the name of
10
NEC POSSUM TECUM VIVERE NEC SINE

SUPERIOR as well as Opposition to application involving the
KENNEX and PRO KENNEX trademarks.
RTC held KUNNAN liable for trademark infringement and
unfair competition and also issued a writ of preliminary
injunction enjoining KUNNAN from using the disputed
trademarks.
In the course of its appeal to the CA, KUNNAN filed a
Manifestation praying that the decision of the BLA of the
IPO, cancelling the trademark "PRO-KENNEX" issued in favor
of SUPERIOR*, be made of record and be considered by the
CA in resolving the case.
Later, SUPERIOR’s registration of the disputed trademarks
stood effectively cancelled. CA reversed the decision of the
RTC.
ISSUE: WHETHER THE CA IS CORRECT IN HOLDING THAT
PETITIONER SUPERIOR IS NOT THE TRUE AND RIGHTFUL
OWNER OF THE TRADEMARKS "KENNEX" AND "PRO-
KENNEX" IN THE PHILIPPINES?
HELD: YES. Essentially, Section 22 of RA 166 states that only
a registrant of a mark can file a case for infringement.
Corollary to this, Section 19 of RA 166 provides that any right
conferred upon the registrant under the provisions of RA 166
terminates when the judgment or order of cancellation has
become final.
Thus, the Court have previously held that the cancellation of
registration of a trademark has the effect of depriving the
registrant of protection from infringement from the moment
judgment or order of cancellation has become final. Hence,
the petition was denied.
*DECISION OF THE BLA: In the case at bar, Petitioner-
Opposer (Kunnan) has overwhelmingly and convincingly
established its rights to the mark “PRO KENNEX”.
It was proven that actual use by Respondent-Registrant is
not in the concept of an owner but as a mere distributor and
as enunciated in the case of Crisanta Y. Gabriel vs. Dr. Jose R.
Perez, 50 SCRA 406, “a mere distributor of a product bearing
a trademark, even if permitted to use said trademark has no
right to and cannot register the said trademark.”
33.25. SOCIETE DES PRODUITS NESTLE SA v. DY | 172276 |
2010
Applying the dominancy test in the present case, the Court
finds that NANNY is confusingly similar to NAN, also
considering that both pertain to milk products.
FACTS: Martin Dy Jr., imports and repackages Sunny
Powdered Milk from Australia and sells them under the
name “NANNY”. NANNY retails primarily in parts of Visayas
and Mindanao.
RE.: IPL DIGESTS
Nestle, is a foreign corporation organized under the laws of
Switzerland and owns the trademark “NAN” for its line of
infant formula. Nestle allocates a substantial amount of
resources for the production and promotion of the NAN
product line.
Nestle wrote a letter to Dy Jr. asking him to stop using the
name “NANNY”, they alleged that it infringes upon the
trademark ownership of Nestle over the trademark “NAN”.
He refused to recognize Nestle’s request and continued
using the name “NANNY”.
Thus, Nestle filed a case with the RTC of Dumaguete City. The
Commercial Court found Dy Jr., liable for trademark
infringement on the grounds that even though it is not
apparent in the packaging of NANNY, the name itself relates
to a child’s nurse, which is closely related to the product line
of NAN catering to infants. CA reversed the RTC’s ruling.
It stated that even though there is similarity in the products,
the lower price range of NANNY cautions and reminds the
purchaser that it is different from NAN, which is more
expensive. This does not create confusion as to the
consumers because the apparent difference in price shows
that they are two different products.
ISSUE: WHETHER THE PRODUCT NAME NANNY INFRINGES
UPON THE TRADEMARK OF NESTLE’S NAN?
HELD: YES. The decision of the RTC is reinstated. There is no
question that the product will cause confusion within the
consuming public. The primary test that should be used in
determining trademark infringement in this case is the
dominancy test. Applying the dominancy test in the present
case, the Court finds that NANNY is confusingly similar to
NAN.
NAN is the prevalent feature of Nestles line of infant
powdered milk products. It is written in bold letters and used
in all products.
The line consists of PRE-NAN, NAN-H.A., NAN-1, and NAN-2.
Clearly, NANNY contains the prevalent feature NAN. The first
three letters of NANNY are exactly the same as the letters of
NAN. When NAN and NANNY are pronounced, the aural
effect is confusingly similar.
The Court agrees with the lower courts that there are
differences between NAN and NANNY:
(1) NAN is intended for infants while NANNY is intended
for children past their infancy and for adults; and
(2) NAN is more expensive than NANNY.
However, as the registered owner of the "NAN" mark, Nestle
should be free to use its mark on similar products, in
different segments of the market, and at different price
levels.
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34.26. DERMALINE INC. v. MYRA PHARMACEUTICALS INC.
| 190065 | 2010
When one applies for the registration of a trademark or label
which is almost the same or that very closely resembles one
already used and registered by another, the application
should be rejected and dismissed outright, even without any
opposition on the part of the owner and user of a previously
registered label or trademark.
FACTS: Dermaline filed with the IPO an application to
register the trademark “Dermaline.” Myra opposed this
alleging that the trademark resembles its trademark
“Dermalin” and will cause confusion, mistake and deception
to the purchasing public. “Dermalin” was registered way
back 1986 and was commercially used since 1977.
Myra claims that despite attempts of Dermaline to
differentiate its mark, the dominant feature is the term
“Dermaline” to which the first 8 letters were identical to that
of “Dermalin.” The pronunciation for both is also identical.
Further, both have 3 syllables each with identical sound and
appearance.
ISSUE: WHETHER THE IPO SHOULD ALLOW THE
REGISTRATION OF THE TRADEMARK “DERMALINE.”?
HELD: NO. As Myra correctly posits, it has the right under
Section 147 of R.A. No. 8293 to prevent third parties from
using a trademark, or similar signs or containers for goods or
services, without its consent, identical or similar to its
registered trademark, where such use would result in a
likelihood of confusion.
Using Dominancy Test, the IPO declared that both confusion
of goods and service and confusion of business or of origin
were apparent in both trademarks.
While it is true that the two marks are presented differently,
they are almost spelled in the same way, except for
Dermaline’s mark which ends with the letter "E," and they
are pronounced practically in the same manner in three (3)
syllables, with the ending letter "E" in Dermaline’s mark
pronounced silently.
Thus, when an ordinary purchaser, for example, hears an
advertisement of Dermaline’s applied trademark over the
radio, chances are he will associate it with Myra’s.
When one applies for the registration of a trademark or label
which is almost the same or that very closely resembles one
already used and registered by another, the application
should be rejected and dismissed outright, even without any
opposition on the part of the owner and user of a previously
registered label or trademark.
NEC POSSUM TECUM VIVERE NEC SINE
Further, Dermaline’s stance that its product belongs to a
separate and different classification from Myra’s products
with the registered trademark does not eradicate the
possibility of mistake on the part of the purchasing public to
associate the former with the latter, especially considering
that both classifications pertain to treatments for the skin.
35.27. EY INDUSTRIAL SALES INC. v. SHEN DAR ELECTRICITY
AND MACHINERY CO. LTD. | 184850 | 2010
Under the “first-to-file” rule, the registration of a mark is
prevented with the filing of an earlier application for
registration.
FACTS: On June 9, 1997, Shen Dar filed Trademark
Application with the IPO for the mark VESPA, Chinese
Characters and Device for use on air compressors and
welding machines. On July 28, 1999, EYIS filed Trademark
Application also for the mark VESPA, for use on air
compressors. On January 18, 2004, the IPO issued Certificate
of Registration (COR) in favor of EYIS. Thereafter, on
February 8, 2007, Shen Dar was also issued COR.
In the meantime, Shen Dar filed a Petition for Cancellation
of EYIS COR with the Bureau of Legal Affairs (BLA). In the
Petition, Shen Dar argued that the issuance of the COR in
favor of EYIS violated Section 123.1 paragraphs (d), (e) and
(f) of the Intellectual Property Code, having first filed an
application for the mark.
Shen Dar further alleged that EYIS was a mere distributor of
air compressors bearing the mark VESPA which it imported
from Shen Dar. It also argued that it had prior and exclusive
right to the use and registration of the mark VESPA in the
Philippines under the provisions of the Paris Convention.
Director of the BLA ruled in favor of EYIS. Later, IPO Director
General upheld the COR issued in favor of EYIS and cancelled
that of Shen Dar. On appeal, CA reversed.
ISSUE: WHETHER EYIS IS THE TRUE OWNER OF THE MARK
“VESPA.”
HELD: YES. RA 8293 espouses the first-to-file rule as stated
under Sec. 123.1(d)
EYIS must be considered as the prior and continuous user of
the mark "VESPA" and its true owner. Hence, EYIS is entitled
to the registration of the mark in its name. The registration
of a mark is prevented with the filing of an earlier application
for registration.
This must not, however, be interpreted to mean that
ownership should be based upon an earlier filing date. While
Intellectual Property Code removed the previous
requirement of proof of actual use prior to the filing of an
application for registration of a mark, proof of prior and
11

continuous use is necessary to establish ownership of a
mark.
Such ownership constitutes sufficient evidence to oppose
the registration of a mark. Sec. 134 of the IP Code provides
that "any person who believes that he would be damaged by
the registration of a mark x x x" may file an opposition to the
application. The term "any person" encompasses the true
owner of the mark, the prior and continuous user.
Notably, the Court has ruled that the prior and continuous
use of a mark may even overcome the presumptive
ownership of the registrant and be held as the owner of the
mark.
By itself, registration is not a mode of acquiring ownership.
When the applicant is not the owner of the trademark being
applied for, he has no right to apply for registration of the
same.
Registration merely creates a prima facie presumption of the
validity of the registration, of the registrant’s ownership of
the trademark and of the exclusive right to the use thereof.
Such presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must
give way to evidence to the contrary. In the instant case, EYIS
is the prior user of the mark, and is thus the true owner
thereof.
36.28. FREDCO MANUFACTURING CORP. v. PRESIDENT
AND FELLOWS OF HARVARD COLLEGE | 185917 | 2011
A mark which is considered by the competent authority of the
Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, cannot be
registered by another in the Philippines.
FACTS: Fredco Manufacturing Corporation (Fredco) filed
before the Intellectual Property Office a Petition for
Cancellation of Registration issued to Harvard University for
the mark “Harvard Veritas Shield Symbol”.
Fredco claims that as early as 1982 the mark was already
used in the Philippines by its predecessor-in-interest.
Harvard University claimed that the name and mark
“Harvard” was adopted in 1639 as the name of Harvard
College of Cambridge, Massachusetts, USA. The marks had
been used in commerce since 1872, and was registered in
more than 50 countries.
The Bureau of Legal Affairs ruled in favor of Fredco and
ordered the cancellation of the mark. It found Fredco to be
a prior user of the mark Harvard in the Philippines. The
Director General reversed the ruling on the ground that
Fredco was not the owner of the mark sought to be
registered. The Court of Appeals affirmed the decision of the
Director General.
RE.: IPL DIGESTS
ISSUE: WAS FREDCO’S TRADEMARK REGISTRATION OF THE
MARK “HARVARD” VALID?
HELD: NO. "Harvard" is the trade name of the world famous
Harvard University, and it is also a trademark of Harvard
University. Under Article 8 of the Paris Convention, as well
as Section 37 of R.A. No. 166, Harvard University is entitled
to protection in the Philippines of its trade name "Harvard"
even without registration of such trade name in the
Philippines.
This means that no educational entity in the Philippines can
use the trade name "Harvard" without the consent of
Harvard University. Likewise, no entity in the Philippines can
claim, expressly or impliedly through the use of the name
and mark "Harvard," that its products or services are
authorized, approved, or licensed by, or sourced from,
Harvard University without the latter's consent.
To be protected under the two directives of the Ministry of
Trade, an internationally well-known mark need not be
registered or used in the Philippines.
All that is required is that the mark is well-known
internationally and in the Philippines for identical or similar
goods, whether or not the mark is registered or used in the
Philippines.
Section 123.1(e) of R.A. No. 8293 now categorically states
that "a mark which is considered by the competent authority
of the Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, cannot be
registered by another in the Philippines.
Section 123.1(e) does not require that the well-known mark
be used in commerce in the Philippines but only that it be
well-known in the Philippines.
37.29. ONG v. PEOPLE | 169440 | 2011
Any person who shall, without the consent of the owner of
the registered mark, counterfeits a registered mark or a
dominant feature thereof and apply such counterfeit to
packages intended to be used in commerce is liable for
infringement regardless of whether there is actual sale of
goods using the infringing material.
FACTS: Gemma Ong was charged with Trademark
Infringement. She was allegedly offering for sale counterfeit
Marlboro cigarettes in violation of the rights of La Suerte
Cigar and Cigarettes Factory, the exclusive manufacturer of
Marlboro Cigarette in the Philippines and that of Philip
Morris Products, Inc., the registered owner and proprietor of
the MARLBORO trademark. Counterfeit goods were not only
found in her possession and control, but also in the building
registered under her business, Fascinate Trading.
ISSUE: WHETHER THERE IS INFRINGEMENT?
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HELD: YES. All the elements to establish trademark
infringement are present in this case. The trademark
“Marlboro” is not only valid for being neither generic nor
descriptive, it was also exclusively owned by PMPI, as
evidenced by the certificate of registration issued by the
Intellectual Property Office.
Also, the counterfeit cigarettes were intended to confuse
and deceive the public as to the origin of the cigarettes
intended to be sold. They not only bore PMPI’s mark, but
they were also packaged almost exactly as PMPI’s product.
Moreover, under the law, any person who shall, without the
consent of the owner of the registered mark, counterfeits a
registered mark or a dominant feature thereof and apply
such counterfeit to packages intended to be used in
commerce is liable for infringement regardless of whether
there is actual sale of goods using the infringing material.
38.30. DIAZ v. PEOPLE | 180677 | 2013
It is the tendency of the allegedly infringing mark to be
confused with the registered trademark that is the gravamen
of the offense of infringement of a registered trademark.
The acquittal of the accused should follow if the allegedly
infringing mark is not likely to cause confusion.
FACTS: Levi Strauss and Company (Levi’s), is a foreign
corporation based in the State of Delaware and is the owner
of trademarks and designs of Levi’s jeans like LEVI’S 501
which has the registered trademark of a leather patch
showing two horses pulling a pair of pants and an arcuate
pattern with the inscription "LEVI STRAUSS & CO.
Levi Strauss Philippines, Inc., as a licensee of Levi’s, received
an information that Victorio Diaz was selling counterfeit
LEVI’s 501 jeans.
It sought assistance from National Bureau of Investigation
for the issuance of the search warrants.
After obtaining it, NBI agents searched the tailoring shops of
Diaz and seized several fake LEVI’S 501 jeans from them. Diaz
admitted being the owner of the shops searched, but he
denied any criminal liability.
Diaz stated that he did not manufacture Levi’s jeans, and
that he used the label "LS Jeans Tailoring" in the jeans that
he made and sold, and such label was registered with the
Intellectual Property Office, which stood for Latest Style. The
Department of Justice filed two informations against Diaz for
violation of the IP Code. The RTC and CA found him guilty.
ISSUE: WHETHER NOT DIAZ IS LIABLE FOR THE CRIMES OF
INFRINGEMENT OF TRADEMARK?
NEC POSSUM TECUM VIVERE NEC SINE
HELD: NO. The likelihood of confusion is the gravamen of the
offense of trademark infringement. There are two tests to
determine likelihood of confusion, namely: the dominancy
test, and the holistic test.
The holistic test is applicable here considering that the
herein criminal cases also involved trademark infringement
in relation to jeans products.
Accordingly, the jeans trademarks of Levi’s Philippines and
Diaz must be considered as a whole in determining the
likelihood of confusion between them.
The maong pants or jeans made and sold by Levi’s
Philippines, which included LEVI’S 501, were very popular in
the Philippines.
The consuming public knew that the original LEVI’S 501 jeans
were under a foreign brand and quite expensive.
Such jeans could be purchased only in malls or boutiques as
ready-to-wear items, and were not available in tailoring
shops like those of Diaz’s as well as not acquired on a "made-
to-order" basis.
The consuming public could easily discern if the jeans were
original or fake LEVI’S 501, or were manufactured by other
brands of jeans. Confusion and deception were remote. Diaz
used the trademark "LS JEANS TAILORING", which was
visually and aurally different from the trademark "LEVI
STRAUSS & CO" appearing on the patch of original jeans
under the trademark LEVI’S 501.
There was no likelihood of confusion between the
trademarks involved. Thereby, the evidence of guilt did not
satisfy the quantum of proof required for a criminal
conviction. Consequently, Diaz should be acquitted of the
charges.
39.31. ECOLE DE CUISINE MANILLE v. RENAUD COINTREAU
& CIE | 185830 | 2013
Foreign marks which are not registered are still accorded
protection against infringement and/or unfair competition.
FACTS: Renaud Cointreau & Cie, a partnership registered
under the laws of France, filed an application for registration
of its trademark “Le Cordon Blue and Device” with the (now
defunct) Bureau of Patents, on the basis of its home
registration in France.
When its application was published for opposition, Ecole De
Cuisine Manille Inc. filed an opposition against Contreau’s
application arguing that it is the rightful owner of the subject
mark, considering that it was the first entity that used the
same in the Philippines. Hence, it is the one entitled to its
registration and not Cointreau.
12

Accordingly, the Bureau of legal Affairs (BLA) of the
Intellectual Property Office ruled in favor of Ecole’s
opposition contending that it is the rightful owner of the
subject mark, considering that it was the first entity that
used the same in the Philippines.
On appeal, the IPO Director General reversed the BLA’s
decision on the ground that section 2-A of R.A. No. 166 does
not require actual use in the Philippines to be able to acquire
ownership of the mark.
Thus, IPO Director General upheld Cointreau’s ownership
and right to register based on Cointreau’s use of the mark
since 1985 for its culinary school in France (in which Ecole’s
own directress was an alumna).
It also held that while Ecole may have prior use of the subject
mark in the Philippines, it failed to explain how it came up
with such name and mark. The Court of Appeals affirmed the
IPO Director General’s decision. Hence, this petition was
filed.
ISSUE: WHETHER COINTREAU THE LAWFUL OWNER OF THE
SUBJECT MARK, AND THUS ENTITLED TO REGISTER THE
SUBJECT MARK?
HELD: YES. Under Section 2 of R.A. No. 166, the law in force
at that time, in order to register a trademark, one must be
the owner thereof and must have actually used the mark in
commerce in the Philippines for two (2) months prior to the
application for registration.
Nevertheless, foreign marks which are not registered are still
accorded protection against infringement and/or unfair
competition. At this point, it is worthy to emphasize that the
Philippines and France, Cointreau’s country of origin, are
both signatories to the Paris Convention for the Protection
of Industrial Property.
Article 8 of the Paris Convention states that a trade name
shall be protected in all the countries of the Union without
the obligation of filing or registration, whether or not it
forms part of a trademark.
Thus, under Philippine law, a trade name of a national of a
State that is a party to the Paris Convention, whether or not
the trade name forms part of a trademark, is protected
"without the obligation of filing or registration.’"
It is thus clear that at the time Ecole started using the subject
mark, the same was already being used by Cointreau, albeit
abroad, of which Ecole’s directress was fully aware, being an
alumna of the latter’s culinary school in Paris, France.
Hence, Ecole cannot claim any tinge of ownership
whatsoever over the subject mark as Cointreau is the true
and lawful owner thereof.
RE.: IPL DIGESTS
As such, the IPO Director General and the CA were correct in
declaring Cointreau as the true and lawful owner of the
subject mark and as such, is entitled to have the same
registered under its name.
In any case, the present law on trademarks, Republic Act No.
8293, otherwise known as the Intellectual Property Code of
the Philippines, as amended, has already dispensed with the
requirement of prior actual use at the time of registration.
Thus, there is more reason to allow the registration of the
subject mark under the name of Cointreau as its true and
lawful owner.
40.32. REPUBLIC GAS CORPORATION v. PETRON
CORPORATION | 194062 | 2013
Mere unauthorized use of a container bearing a registered
trademark in connection with the sale, distribution or
advertising of goods or services which is likely to cause
confusion, mistake or deception among the buyers or
consumers can be considered as trademark infringement.
FACTS: Petron Corporation and Pilipinas Shell Petroleum
Corporation are two of the largest bulk suppliers and
producers of LPG in the Philippines. Petron is the registered
owner in the Philippines of the trademarks GASUL and
GASUL cylinders used for its LGP products.
Pilipinas Shell, on the other hand, is the authorized user
including the marks SHELLANE and SHELL device in
connection with the production, sale and distribution of
SHELLANE LPGs of Republic Gas Corporation ("REGASCO"),
an entity duly licensed to engage in, conduct and carry on,
the business of refilling, buying, selling, distributing and
marketing at wholesale and retail of Liquefied Petroleum
Gas.
LPG Dealers Associations, such as the Shellane Dealers
Association, Inc., Petron Gasul Dealers Association, Inc. and
Total gaz Dealers Association, received reports that certain
entities were engaged in the unauthorized refilling, sale and
distribution of LPG cylinders bearing the registered
tradenames and trademarks of the petitioners. The
associations filed a letter-complaint in NBI regarding the
alleged illegal trading of petroleum products.
NBI operatives, then conducted a test-buy operation. They
brought with them four (4) empty LPG cylinders bearing the
trademarks of SHELLANE and GASUL and included the same
with the purchase of J&S, a REGASCO’s regular customer The
LPG cylinders refilled by REGASCO were likewise found later
to be underrefilled.
The NBI agent applied for the issuance of search warrants
against REGASCO.
2019 RE: COMPILATION: IPL CASES. READ AT YOUR OWN RISK. READ THE FULL TEXT FIRST. THE SAME IS STILL SUBJECT TO EDITING. NOT SUGGESTED FOR PRINTING. VER. 5
The Department of Justice dismissed the complaint for
insufficiency of evidence. However, CA reversed the ruling of
DOJ. Hence, this petition.
ISSUE: WHETHER THERE IS PROBABLE CAUSE TO HOLD
PETITIONERS LIABLE FOR TRADEMARK INFRINGEMENT?
HELD: YES. The Court in a very similar case, made it
categorically clear that the mere unauthorized use of a
container bearing a registered trademark in connection with
the sale, distribution or advertising of goods or services
which is likely to cause confusion, mistake or deception
among the buyers or consumers can be considered as
trademark infringement.
Here, petitioners have actually committed trademark
infringement when they refilled, without the respondents’
consent, the LPG containers bearing the registered marks of
the respondents.
41.33. BIRKENSTOCK ORTHOPAEDIE GMBH AND CO. KG v.
PHILIPPINE SHOE EXPO MARKETING CORPORATION |
194307 | 2013
The presumption of ownership accorded to a registrant yields
to superior evidence of actual and real ownership of a
trademark.
FACTS: Birkenstock, a corporation duly organized and
existing under the laws of Germany, applied for various
trademark registrations before the IPO.
However, registration proceedings were suspended in view
of an existing registration of the mark "BIRKENSTOCK AND
DEVICE" in the name of Shoe Town International and
Industrial Corporation, the predecessor-in-interest of
respondent Philippine Shoe Expo Marketing Corporation,
which was cancelled later on.
Respondent filed three separate verified notices of
oppositions to the subject applications claiming that:
(a) It, together with its predecessor-in-interest, has
been using Birkenstock marks in the Philippines for
more than 16 years through the mark "BIRKENSTOCK
AND DEVICE";
(b) The marks covered by the subject applications are
identical to the one covered by prior registration and
thus, petitioner has no right to the registration of
such marks;
(c) Respondent’s predecessor-in-interest likewise
obtained a Certificate of Copyright Registration for
the word "BIRKENSTOCK."
BLA sustained respondent’s opposition. However, the IPO
Director General reversed and set aside the ruling of the BLA,
thus allowing the registration of the subject applications.
On appeal, CA reversed and set aside the ruling of the IPO
Director General and reinstated that of the BLA.
ISSUE: WHETHER THE SUBJECT MARKS SHOULD BE
ALLOWED REGISTRATION IN THE NAME OF PETITIONER.
HELD: YES. Under Section 2 of RA 166, which is also the law
governing the subject applications, in order to register a
trademark, one must be the owner thereof and must have
actually used the mark in commerce in the Philippines for
two (2) months prior to the application for registration.
Section 2-A of the same law sets out to define how one goes
about acquiring ownership thereof. Under the same section,
it is clear that actual use in commerce is also the test of
ownership but the provision went further by saying that the
mark must not have been so appropriated by another.
Significantly, to be an owner, Section 2-A does not require
that the actual use of a trademark must be within the
Philippines.
Thus, under RA 166, one may be an owner of a mark due to
its actual use but may not yet have the right to register such
ownership here due to the owner’s failure to use the same
in the Philippines for two (2) months prior to registration.
Clearly, it is not the application or registration of a trademark
that vests ownership thereof, but it is the ownership of a
trademark that confers the right to register the same.
A trademark is an industrial property over which its owner is
entitled to property rights which cannot be appropriated by
unscrupulous entities that, in one way or another, happen to
register such trademark ahead of its true and lawful owner.
The presumption of ownership accorded to a registrant must
then necessarily yield to superior evidence of actual and real
ownership of a trademark.
In the instant case, petitioner was able to establish that it is
the owner of the mark "BIRKENSTOCK." It submitted
evidence relating to the origin and history of "BIRKENSTOCK"
and its use in commerce long before respondent was able to
register the same here in the Philippines.
It has sufficiently proven that "BIRKENSTOCK" was first
adopted in Europe in 1774 by its inventor, Johann
Birkenstock, a shoemaker, on his line of quality footwear and
thereafter, numerous generations of his kin continuously
engaged in the manufacture and sale of shoes and sandals
bearing the mark "BIRKENSTOCK" until it became the entity
now known as the petitioner.
Petitioner also submitted various certificates of registration
of the mark "BIRKENSTOCK" in various countries and that it
has used such mark in different countries worldwide,
including the Philippines. Hence, the petition was granted.
13
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42.34. SHANG PROPERTIES REALTY CORP. v. ST. FRANCIS
DEVELOPMENT CORP. | 190706 | 2014
The "true test" of unfair competition has thus been whether
the acts of the defendant have the intent of deceiving or are
calculated to deceive the ordinary buyer making his
purchases under the ordinary conditions of the particular
trade to which the controversy relates.
FACTS: St. Francis filed separate complaints against Shang
before the IPO an intellectual property violation case for
unfair competition, false or fraudulent declaration, and
damages arising from Shang’s use and filing of applications
for the registration of the marks "THE ST. FRANCIS TOWERS"
and "THE ST. FRANCIS SHANGRI-LA PLACE."
Respondent also filed an inter partes case opposing the
petitioners’ application for registration of the mark "THE ST.
FRANCIS TOWERS" for use relative to the latter’s business,
particularly the construction of permanent buildings or
structures for residential and office purposes and an inter
partes case opposing the petitioners’ application for
registration of the mark "THE ST. FRANCIS SHANGRI-LA
PLACE."
St. Francis alleged that it has used the mark "ST. FRANCIS" to
identify its numerous property development projects
located at Ortigas Center.
They added that as a result of its continuous use of the mark
"ST. FRANCIS" in its real estate business, it has gained
substantial goodwill with the public that consumers and
traders closely identify the said mark with its property
development projects.
Accordingly, St. Francis claimed that Shang could not have
the mark "THE ST. FRANCIS TOWERS" registered in their
names, and that Shang’s use of the marks given above in
their own real estate development projects constitutes
unfair competition as well as false or fraudulent declaration.
Shang denied committing unfair competition and false or
fraudulent declaration, maintaining that they could register
the marks above under their names.
They contended that St Francis cannot claim ownership and
exclusive use of the mark "ST. FRANCIS" because the same is
geographically descriptive of the goods or services for which
it is intended to be used as both of their real estate projects
located along the streets bearing the name "St. Francis,"
particularly, St. Francis Avenue and St. Francis Street (now
known as Bank Drive), both within the vicinity of the Ortigas
Center.
ISSUE: WHETHER THERE IS UNFAIR COMPETITION?
RE.: IPL DIGESTS
HELD: NO. There is no unfair competition. The statutory
attribution of the unfair competition concept is well
supplemented by jurisprudential pronouncements.
In the recent case of Republic Gas Corporation v. Petron
Corporation, the Court has echoed the classic definition of
the term which is the passing off (or palming off) or
attempting to pass off upon the public of the goods or
business of one person as the goods or business of another
with the end and probable effect of deceiving the public.
Passing off (or palming off) takes place where the defendant,
by imitative devices on the general appearance of the goods,
misleads prospective purchasers into buying his
merchandise under the impression that they are buying that
of his competitors.
In other words, the defendant gives his goods the general
appearance of the goods of his competitor with the intention
of deceiving the public that the goods are those of his
competitor."
The "true test" of unfair competition has thus been
"whether the acts of the defendant have the intent of
deceiving or are calculated to deceive the ordinary buyer
making his purchases under the ordinary conditions of the
particular trade to which the controversy relates."
Based on the foregoing, it is therefore essential to prove the
existence of fraud, or the intent to deceive, actual or
probable, determined through a judicious scrutiny of the
factual circumstances attendant to a particular case.
43.35. WILLAWARE PRODUCTS CORP. v. JESICHRIS
MANUFACTURING CORPORATION | 195549 | 2014
In order to qualify the competition as "unfair," it must have
two characteristics: (1) it must involve an injury to a
competitor or trade rival, and (2) it must involve acts which
are characterized as "contrary to good conscience," or
"shocking to judicial sensibilities," or otherwise unlawful; in
the language of our law, these include force, intimidation,
deceit, machination or any other unjust, oppressive or high-
handed method. The public injury or interest is a minor
factor; the essence of the matter appears to be a private
wrong perpetrated by unconscionable means.
FACTS: In November 2000, Jesichris Manufacturing
Corporation (respondent) discovered that Willaware
Products Corporation (petitioner) had been manufacturing
and distributing the same automotive parts with a similar
design, same material and colors but was selling these
products at a lower price as respondent’s plastic-made
automotive parts and to the same customers.
Respondent alleged that it had originated the use of plastic
in place of rubber in the manufacture of automotive
underchassis parts such as spring eye bushing, stabilizer
2019 RE: COMPILATION: IPL CASES. READ AT YOUR OWN RISK. READ THE FULL TEXT FIRST. THE SAME IS STILL SUBJECT TO EDITING. NOT SUGGESTED FOR PRINTING. VER. 5
bushing, shock absorber bushing, center bearing cushions,
among others.
Petitioner’s manufacture of the same automotive parts with
plastic material was taken from respondent’s idea of using
plastic for automotive parts. Petitioner also had lured the
workers of respondent.
Petitioner allegedly deliberately copied respondent’s
products all of which acts constitute unfair competition, is
and are contrary to law, morals, good customs and public
policy and have caused respondent damages in terms of lost
and unrealized profits in the amount of two million pesos as
of the date of respondent’s complaint.
As a consequence, respondent filed the present complaint
for damages for unfair competition with prayer for
permanent injunction to enjoin petitioner from
manufacturing and distributing plastic-made automotive
parts similar to those of respondent.
ISSUE: WHETHER OR NOT PETITIONER COMMITTED ACTS
AMOUNTING TO UNFAIR COMPETITION UNDER ARTICLE 28
OF THE CIVIL CODE.
HELD: YES. The instant case falls under Article 28 of the Civil
Code on human relations, and not unfair competition under
Republic Act No. 8293, as the present suit is a damage suit
and the products are not covered by patent registration. A
fortiori, the existence of patent registration is immaterial in
the present case.
The concept of "unfair competition" under Article 28 is very
much broader than that covered by intellectual property
laws. Under the present article, which follows the extended
concept of "unfair competition" in American jurisdictions,
the term covers even cases of discovery of trade secrets of a
competitor, bribery of his employees, misrepresentation of
all kinds, interference with the fulfillment of a competitor’s
contracts, or any malicious interference with the latter’s
business.
*See Stated Doctrine.* Both characteristics are present
because:
1) Both parties are competitors or trade rivals, both
being engaged in the manufacture of plastic-made
automotive parts;
2) The acts of the petitioner were clearly "contrary to
good conscience" as petitioner admitted having
employed respondent’s former employees,
deliberately copied respondent’s products and even
went to the extent of selling these products to
respondent’s customers.
It is evident that petitioner is engaged in unfair competition
as shown by his act of suddenly shifting his business from
manufacturing kitchenware to plastic-made automotive
parts; his luring the employees of the respondent to transfer
NEC POSSUM TECUM VIVERE NEC SINE
to his employ and trying to discover the trade secrets of the
respondent.
Moreover, when a person starts an opposing place of
business, not for the sake of profit to himself, but regardless
of loss and for the sole purpose of driving his competitor out
of business so that later on he can take advantage of the
effects of his malevolent purpose, he is guilty of wanton
wrong.
44.36. TAIWAN KOLIN CORPORATION LTD. v. KOLIN
ELECTRONICS CO. INC. | 209843 | 2015
It is hornbook doctrine that emphasis should be on the
similarity of the products involved and not on the arbitrary
classification or general description of their properties or
characteristics.
FACTS: Taiwan Kolin filed with IPO a trademark application
for the use of “KOLIN” on a combination of goods falling
under Classes 9 of the Nice Classification (NCL), particularly:
television sets, cassette recorder, VCD Amplifiers,
camcorders and other audio/video electronic equipment,
flat iron, vacuum cleaners, cordless handsets, videophones,
facsimile machines, teleprinters, cellular phones and
automatic goods vending machine.
Kolin Electronics, registered owner of mark “KOLIN”,
opposed the application on the ground that the mark Taiwan
Kolin seeks to register is identical, if not confusingly similar,
with the products under Class 9 of the NCL. The BLA-IPO
denied petitioner’s application.
Petitioner moved for reconsideration but the same was
denied. Later, the IPO Director General reversed the BLA-
IPO. On appeal of Kolin Electronics, CA granted respondent’s
appeal reinstating the decision of the BLA-IPO.
Taiwan Kolin postulates, in the main, that its goods are not
closely related to those of Kolin Electronics. On the other
hand, respondent hinges its case on the CA’s findings that its
and petitioner’s products are closely-related.
ISSUE: WHETHER THE PRODUCTS OF THE PARTIES
INVOLVED ARE RELATED?
HELD: NO. Whether or not the products covered by the
trademark sought to be registered by Taiwan Kolin, on the
one hand, and those covered by the prior issued certificate
of registration in favor of Kolin Electronics, on the other, fall
under the same categories in the NCL is not the sole and
decisive factor in determining a possible violation of Kolin
Electronics’ intellectual property right should petitioner’s
application be granted.
It is hornbook doctrine that emphasis should be on the
similarity of the products involved and not on the arbitrary
14

classification or general description of their properties or
characteristics.
The mere fact that one person has adopted and used a
trademark on his goods would not, without more, prevent
the adoption and use of the same trademark by others on
unrelated articles of a different kind.
Goods should be tested against several factors before
arriving at a sound conclusion on the question of
relatedness. Among these are:
(a) The business (and its location) to which the goods
belong;
(b) The class of product to which the goods belong;
(c) The product’s quality, quantity, or size, including
the nature of the package, wrapper or container;
(d) The nature and cost of the articles;
(e) The descriptive properties, physical attributes or
essential characteristics with reference to their
Form, composition, texture or quality;
(f) The purpose of the goods;
(g) Whether the article is bought for immediate
consumption, that is, day-to-day household items;
(h) The fields of manufacture;
(i) The conditions under which the article is usually
purchased; and
(j) The channels of trade through which the goods
flow, how they are distributed, marketed,
displayed and sold.
It cannot be stressed enough that the products involved in
the case at bar are, generally speaking, and various kinds of
electronic products. These are not ordinary consumable
household items, like catsup, soy sauce or soap which are of
minimal cost. The products of the contending parties are
relatively luxury items not easily considered affordable.
Accordingly, the casual buyer is predisposed to be more
cautious and discriminating in and would prefer to mull over
his purchase. Confusion and deception, then, is less likely.
Thus, the petition was granted.
45.37. UFC PHILIPPINES INC. v. BARRIO FIESTA
MANUFACTURING CORPORATION | 198889 | 2016
RE: Holistic and Dominancy Tests
The Bureau of Legal Affairs of the Intellectual Property Office
(IPO-BLA) and the IPO Director General correctly found the
word “PAPA” as the dominant feature of petitioner’s mark
“PAPA KETSARAP.”
FACTS: Barrio Fiesta filed an application with the IPO for the
mark “PAPA BOY & DEVICE” for “lechon sauce.” UFC
opposed the application. It contended that “PAPA BOY &
DEVICE” is confusingly similar with its “PAPA” marks and its
variations inasmuch as the former incorporates the term
RE.: IPL DIGESTS
“PAPA,” which is the dominant feature of petitioner’s
“PAPA” marks.
UFC averred that the use of “PAPA BOY & DEVICE” mark for
lechon sauce product, if allowed, would likely lead the
consuming public to believe that said lechon sauce product
originates from or is authorized by UFC, and that the “PAPA
BOY & DEVICE” mark is a variation or derivative of UFC’s
“PAPA” marks. UFC argued that this was especially true
considering that UFC’s ketchup product and Barrio Fiesta’s
lechon sauce product are related articles.
The IPO ruled in favor of the petitioner, applying the
dominance test. This was reversed by the CA (using the
holistic test); hence, this petition.
ISSUE: WHETHER THE CA ERRED IN APPLYING THE HOLISTIC
TEST?
HELD: NO. The dominancy test should have been applied.
This Court has relied on the dominancy test rather than the
holistic test. The dominancy test considers the dominant
features in the competing 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 the
adoption of the dominant features of the registered mark,
disregarding minor differences.
Courts will consider more the aural and visual impressions
created by the marks in the public mind, giving little weight
to factors like prices, quality, sales outlets and market
segments.
ISSUE: WHETHER BARRIO FIESTA’S MARK MAY BE
REGISTERED?
HELD: NO. The mark is related to a product, lechon sauce, an
everyday all-purpose condiment and sauce, that is not
subjected to great scrutiny and care by the casual purchaser,
who knows from regular visits to the grocery store under
what aisle to find it, in which bottle it is contained, and
approximately how much it costs.
Since UFC’s product, catsup, is also a household product
found on the same grocery aisle, in similar packaging, the
public could think that UFC had expanded its product mix to
include lechon sauce, and that the “PAPA BOY” lechon sauce
is now part of the “PAPA” family of sauces, which is not
unlikely considering the nature of business that UFC is in.
Thus, if allowed registration, confusion of business may set
in, and UFC’s hard-earned goodwill may be associated to the
newer product introduced by Barrio Fiesta, all because of the
use of the dominant feature of UFC’s mark on Barrio Fiesta’s
mark, which is the word “PAPA.”
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The words “Barrio Fiesta” are not included in the mark, and
although printed on the label of Barrio Fiesta’s lechon sauce
packaging, still do not remove the impression that “PAPA
BOY” is a product owned by the manufacturer of “PAPA”
catsup, by virtue of the use of the dominant feature.
It is possible that UFC could expand its business to include
lechon sauce, and that would be well within UFC’s rights, but
the existence of a “PAPA BOY” lechon sauce would already
eliminate this possibility and deprive UFC of its rights as an
owner of a valid mark included in the Intellectual Property
Code.
46.38. INTELLECTUAL PROPERTY ASSOCIATION OF THE
PHILIPPINES v. OCHOA | 204605 | 2016
The registration of trademarks and copyrights have been the
subject of executive agreements entered into without the
concurrence of the Senate. Some executive agreements have
been concluded in conformity with the policies declared in
the acts of Congress with respect to the general subject
matter.
Department of Foreign Affairs (DFA) Secretary Del Rosario’s
determination and treatment of the Madrid Protocol as an
executive agreement, being in apparent contemplation of
the express state policies on intellectual property as well as
within his power under Executive Order (EO) No. 459, are
upheld.
The Madrid Protocol does not amend or modify the
Intellectual Property Code of the Philippines (IP Code) on the
acquisition of trademark rights considering that the
applications under the Madrid Protocol are still examined
according to the relevant national law. In that regard, the
Intellectual Property Office of the Philippines (IPOPHL) will
only grant protection to a mark that meets the local
registration requirements
FACTS: The Madrid System for the International Registration
of Marks (Madrid System), which is the centralized system
providing a one-stop solution for registering and managing
marks worldwide, allows the trademark owner to file one
application in one language, and to pay one set of fees to
protect his mark in the territories of up to 97 member-states.
The Madrid System is governed by the Madrid Agreement,
concluded in 1891, and the Madrid Protocol, concluded in
1989. The Madrid Protocol has two objectives, namely: (1)
to facilitate securing protection for marks; and (2) to make
the management of the registered marks easier in different
countries.
In 2004, the Intellectual Property Office of the Philippines
(IPOPHL), began considering the country's accession to the
Madrid Protocol. After a campaign for information
dissemination, and a series of consultations with
stakeholders, IPOPHL ultimately arrived at the conclusion
that accession would benefit the country and help raise the
level of competitiveness for Filipino brands.
Hence, it recommended to the Department of Foreign
Affairs (DFA) that the Philippines should accede to the
Madrid Protocol. After its own review, the DFA endorsed to
the President the country's accession to the Madrid
Protocol. The DFA determined that the Madrid Protocol was
an executive agreement.
On March 27, 2012, President Benigno C. Aquino III ratified
the Madrid Protocol through an instrument of accession,
which was deposited with the Director General of the World
Intellectual Property Organization (WIPO) on April 25, 2012.
The Madrid Protocol entered into force in the Philippines on
July 25, 2012.
Thus, the Intellectual Property Association of the Philippines
(IPAP) commenced this special civil action for certiorari and
prohibition to challenge the validity of the President's
accession to the Madrid Protocol without the concurrence
of the Senate.
According to the IPAP, the Madrid Protocol is a treaty, not
an executive agreement; hence, respondent DFA Secretary
Albert Del Rosario acted with grave abuse of discretion in
determining the Madrid Protocol as an executive
agreement.
Also, the IPAP has argued that the implementation of the
Madrid Protocol in the Philippines; specifically the
processing of foreign trademark applications, conflicts with
the Intellectual Property Code of the Philippines.
ISSUE: WHETHER NOT THE PRESIDENT'S RATIFICATION OF
THE MADRID PROTOCOL IS VALID AND CONSTITUTIONAL?
HELD: YES. International agreements involving political
issues or changes of national policy and those involving
international arrangements of a permanent character
usually take the form of treaties. But international
agreements embodying adjustments of detail carrying out
well-established national policies and traditions and those
involving arrangements of a more or less temporary nature
usually take the form of executive agreements.
In view of the expression of state policy having been made
by the Congress itself, the IPAP is plainly mistaken in
asserting that "there was no Congressional act that
authorized the accession of the Philippines to the Madrid
Protocol."
Accordingly, DFA Secretary Del Rosario's determination and
treatment of the Madrid Protocol as an executive
agreement, being in apparent contemplation of the express
state policies on intellectual property as well as within his
power under Executive Order No. 459, are upheld.
15
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ISSUE: WHETHER THE MADRID PROTOCOL IS IN CONFLICT
WITH THE IP CODE?
HELD: NO. The IPAP also rests its challenge on the supposed
conflict between the Madrid Protocol and the IP Code,
contending that the Madrid Protocol does away with the
requirement of a resident agent under Section 125 of the IP
Code; and that the Madrid Protocol is unconstitutional for
being in conflict with the local law, which it cannot modify,
The IPAP's contentions stand on a faulty premise.
The method of registration through the IPOPHL, as laid down
by the IP Code, is distinct and separate from the method of
registration through the WIPO, as set in the Madrid Protocol.
Comparing the two methods of registration despite their
being governed by two separate systems of registration is
thus misplaced.
In arguing that the Madrid Protocol conflicts with Section
125 of the IP Code, the IPAP highlights the importance of the
requirement for the designation of a resident agent.
It underscores that the requirement is intended to ensure
that non-resident entities seeking protection or privileges
under Philippine Intellectual Property Laws will be subjected
to the country's jurisdiction. It submits that without such
resident agent, there will be a need to resort to costly, time
consuming and cumbersome extra-territorial service of writs
and processes.
The IPAP misapprehends the procedure for examination
under the Madrid Protocol. The difficulty, which the IPAP
illustrates, is minimal, if not altogether inexistent. The
IPOPHL actually requires the designation of the resident
agent when it refuses the registration of a mark. Local
representation is further required in the submission of the
Declaration of Actual Use, as well as in the submission of the
license contract.
The Madrid Protocol accords with the intent and spirit of the
IP Code, particularly on the subject of the registration of
trademarks.
The Madrid Protocol does not amend or modify the IP Code
on the acquisition of trademark rights considering that the
applications under the Madrid Protocol are still examined
according to the relevant national law. In that regard, the
IPOPHL will only grant protection to a mark that meets the
local registration requirements.
47.39. DY v. KONINKLIJKE PHILIPS ELECTRONICS NV |
186088 | 2017
In determining similarity and likelihood of confusion,
jurisprudence has developed two tests: The dominancy test
focuses on the similarity of the prevalent or dominant
features of the competing trademarks that might cause
RE.: IPL DIGESTS
confusion, mistake, and deception in the mind of the
purchasing public.
On the other hand, the holistic or totality test necessitates a
consideration of the entirety of the marks as applied to the
products, including the labels and packaging, in determining
confusing similarity. The discerning eye of the observer must
focus not only on the predominant words, but also on the
other features appearing on both labels so that the observer
may draw conclusion on whether one is confusingly similar
to the other.
FACTS: On 12 April 2000, PHILITES filed a trademark
application covering its fluorescent bulb, incandescent light,
starter and ballast. After publication, Koninklijke Philips
Electronics, N .V. ("PHILIPS") filed a Verified Notice of
Opposition on the ground that PHILIPS is a registered and
well-known mark in the Philippines and that the mark
presented in the application is identical or confusingly
similar to that of theirs.
The IPP-BLA Director Estrellita Beltran-Abelardo denied the
Opposition. IPP-DG affirmed the ruling of the IPP-BLA. The
Court of Appeals reversed and set aside the Decision of the
IPP Office of the Director General. Hence this case.
ISSUE: WHETHER THE PHILIPS MARK A REGISTERED AND
WELL-KNOWN MARK IN THE PHILIPPINES?
HELD: YES. PHILIPS is the registered owner in the Philippines
of the "PHILIPS" and "PHILIPS SHIELD EMBLEM" trademarks.
It also appears that worldwide, PHILIPS has thousands of
trademark registrations in various countries. As found by the
High Court in Philips Export B.V. vs Court of Appeals, PHILIPS
is a trademark or trade name which was registered as far
back as 1922, and has acquired the status of a well-known
mark in the Philippines and internationally as well.
ISSUE: WHETHER THE PHILITES MARK IDENTICAL OR
CONFUSINGLY SIMILAR WITH THAT OF PHILIPS?
HELD: YES. *See stated doctrine* Applying the dominancy
test in the instant case, it shows the uncanny resemblance
or confusing similarity between the trademark applied for by
PHILITES with that of PHILIPS registered trademark.
An examination of the trademarks shows that their
dominant or prevalent feature is the five-letter "PHILI",
"PHILIPS" for petitioner, and "PHILITES" for respondent.
The marks are confusingly similar with each other such that
an ordinary purchaser can conclude an association or
relation between the marks. The consuming public does not
have the luxury of time to ruminate the phonetic sounds of
the trademarks, to find out which one has a short or long
vowel sound.
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At bottom, the letters "PHILI'' visually catch the attention of
the consuming public and the use of respondent's trademark
will likely deceive or cause confusion. Most importantly,
both trademarks are used in the sale of the same goods,
which are light bulbs.
Applying the holistic test, entails a consideration of the
entirety of the marks as applied to the products, including
the labels and packaging, in determining confusing
similarity.
A comparison between petitioner's registered trademark
"PHILIPS'' as used in the wrapper or packaging of its light
bulbs and that of respondent's applied for trademark
"PHILITES" as depicted in the container or actual
wrapper/packaging of the latter's light bulbs will readily
show that there is a strong similitude and likeness between
the two trademarks that will likely cause deception or
confusion to the purchasing public.
48.40. SERI SOMBOONSAKDIKUL v. ORLANE SA | 188996 |
2017
Whether a trademark causes confusion and is likely to
deceive the public hinges on "colorable imitation" which has
been defined as "such similarity in form, content, words,
sound, meaning, special arrangement or general appearance
of the trademark or trade name in their overall presentation
or in their essential and substantive and distinctive parts as
would likely mislead or confuse persons in the ordinary
course of purchasing the genuine article."
FACTS: On September 23, 2003, herein petitioner Seri
Somboonsakdikul filed an application for registration of the
mark LOLANE with the IPO for goods classified under Class 3
(personal care products) of the International Classification of
Goods and Services for the Purposes of the Registration of
Marks (International Classification of Goods).
Orlane S.A. (respondent) filed an opposition to petitioner's
application, on the ground that the mark LOLANE was similar
to ORLANE in presentation, general appearance and
pronunciation, and thus would amount to an infringement
of its mark.
The Bureau of Legal Affairs (BLA) rejected petitioner's
application. On appeal, the Director General of the IPO
affirmed the Decision of the BLA Director. The Court of
Appeals affirmed the same decision. Hence this case.
ISSUE: WHETHER THERE IS CONFUSING SIMILARITY
BETWEEN ORLANE AND LOLANE WHICH WOULD BAR THE
REGISTRATION OF LOLANE BEFORE THE IPO?
HELD: NO. There is no colorable imitation between the
marks LOLANE and ORLANE which would lead to any
likelihood of confusion to the ordinary purchasers.
NEC POSSUM TECUM VIVERE NEC SINE
Colorable imitation does not mean such similitude as
amounts to identity. Nor does it require that all the details
be literally copied. In determining colorable imitation, the
Court have used either the dominancy test or the holistic or
totality test. *RE: Discussion on the two tests*
While there are no set rules as what constitutes a dominant
feature with respect to trademarks applied for registration,
usually, what are taken into account are signs, color, design,
peculiar shape or name, or some special, easily remembered
earmarks of the brand that readily attracts and catches the
attention of the ordinary consumer.
In UFC Philippines, Inc., what the Court considered as the
dominant feature of the mark is the first word/figure that
catches the eyes or that part which appears prominently to
the eyes and ears.
Based on the distinct visual and aural differences between
LOLANE and ORLANE, the Court found that there is no
confusing similarity between the two marks.
First, an examination of the appearance of the marks would
show that there are noticeable differences in the way they
are written or printed. As correctly argued by petitioner in
his answer before the BLA, there are visual differences
between LOLANE and ORLANE since the mark ORLANE is in
plain block upper case letters while the mark LOLANE was
rendered in stylized word with the second letter L and the
letter A co-joined.
Second, as to the aural aspect of the marks, LOLANE and
ORLANE do not sound alike. Finally, appeals to the ear in
pronouncing ORLANE and LOLANE are dissimilar. The first
syllables of each mark, i.e., OR and LO do not sound alike,
while the proper pronunciation of the last syllable LANE-
"LEYN" for LOLANE and "LAN" for ORLANE, being of French
origin, also differ.
While there is possible aural similarity when certain sectors
of the market would pronounce ORLANE as "ORLEYN," it is
not also impossible that some would also be aware of the
proper pronunciation—especially since, as respondent
claims, its trademark ORLANE has been sold in the market
for more than 60 years and in the Philippines, for more than
40 years.
The essential element in determining likelihood of
confusion, i.e., colorable imitation by LOLANE of the mark
ORLANE, is absent in this case. Resemblance between the
marks is a separate requirement from, and must not be
confused with, the requirement of a similarity of the goods
to which the trademarks are attached.
16

Finding that LOLANE is not a colorable imitation of ORLANE
due to distinct visual and aural differences using the
dominancy test, the Court no longer find it necessary to
discuss the contentions of the petitioner as to the
appearance of the marks together with the packaging,
nature of the goods represented by the marks and the price
difference, as well as the applicability of foreign judgments.
The Court ruled that the mark LOLANE is entitled to
registration.
49.41. MANG INASAL PHILIPPINES INC. v. IFP
MANUFACTURING CORPORATION | 221717 | 2017
A mark that is similar to a registered mark or a mark with an
earlier filing or priority date (earlier mark) and which is likely
to cause confusion on the part of the public cannot be
registered with the Intellectual Property Office
(IPO).
Confusion, in either of its forms, is, thus, only possible when
the goods or services covered by allegedly similar marks are
identical, similar or re1ated in some manner. Verily, to fall
under the ambit of Sec. 123.1(d)(iii) and be regarded as likely
to deceive or cause confusion upon the purchasing public, a
prospective mark must be shown to meet two (2) minimum
conditions:
1. The prospective mark must nearly resemble or be
similar to an earlier mark; and
2. The prospective mark must pertain to goods or
services that are either identical, similar or related to
the goods or services represented by the earlier mark.
FACTS: The Trademark Application and the Opposition
Respondent IFP Manufacturing Corporation is a local
manufacturer of snacks and beverages.
On May 26, 2011, respondent filed with the Intellectual
Property Office (IPO) an application for the registration of
the mark "OK Hotdog Inasal Cheese Hotdog Flavor Mark"in
connection with goods under Class 30 of the Nice
Classification.
The said mark, which respondent intends to use on one of its
curl snack products. The application of respondent was
opposed by petitioner Mang Inasal Philippines, Inc.
Petitioner is a domestic fast food company and the owner of
the mark "Mang Inasal, Home of Real Pinoy Style Barbeque
and Device" (Mang Inasal mark) for services under Class 43
of the Nice Classification.
The said mark, which was registered with the IPO in 2006
and had been used by petitioner for its chain of restaurants
since 2003.
RE.: IPL DIGESTS
Petitioner, in its opposition, contended that the registration
of respondent's OK Hotdog Inasal mark is prohibited under
Section 123.l (d)(iii) of Republic Act No. (RA) 8293.
ISSUE: WHETHER THE REGISTRATION OF RESPONDENT'S
OK HOTDOG INASAL MARK IS PROHIBITED UNDER SECTION
123.L (D) (III) OF REPUBLIC ACT NO. (RA) 8293?
HELD: YES. The OK Hotdog Inasal mark meets the two
conditions of the proscription under Sec. 123.l(d)(iii) of RA
8293. First, it is similar to the Mang Inasal mark, an earlier
mark. Second, it pertains to goods that are related to the
services represented by such earlier mark.
The Proscription: Sec. 123.l(d)(iii) of RA 8293 A mark that is
similar to a registered mark or a mark with an earlier filing or
priority date (earlier mark) and which is likely to cause
confusion on the part of the public cannot be registered with
the IPO. Such is the import of Sec. 123.l(d)(iii) of RA 8293:
SECTION 123. Registrability. – 123. 1. A mark cannot be
registered if it:
Verily, to fall under the ambit of Sec. 123. l(d)(iii) and be
regarded as likely to deceive or cause confusion upon
the purchasing public, a prospective mark must be
shown to meet two (2) minimum conditions:
1. The prospective mark must nearly resemble or be
similar to an earlier mark; and
2. The prospective mark must pertain to goods or
services that are either identical, similar or related
to the goods or services represented by the earlier
mark.
It is the fact that the underlying goods and services of both
marks deal with inasal and inasal-flavored products which
ultimately fixes the relations between such goods and
services.
50.42. CITIGROUP INC. v. CITYSTATE SAVINGS BANK INC. |
205409 | 2018
RE: Discussion on the two tests.
FACTS: Citystate Savings Bank applied for registration of its
trademark "CITY CASH WITH GOLDEN LION'S HEAD" with the
IPO. Citigroup, a US Corporation which owns Citibank,
opposed Citystate’s application.
Citigroup claimed that the "CITY CASH WITH GOLDEN LION'S
HEAD" mark is confusingly similar to its own "CITI" marks.
After an exchange of pleadings, the Director of the Bureau
of Legal Affairs rejected Citystate’s application.
The case was appealed to the Office of the Director General
of the Intellectual Property Office which then reversed the
decision of the BLA. Citigroup elevated the matter to the
Court of Appeals which then affirmed the Director General’s
decision. Hence this case.
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ISSUE: WHETHER THE REGISTRATION OF CITYSTATE OF ITS
TRADEMARK WILL RESULT IN A LIKELIHOOD OF
CONFUSION?
HELD: NO. Under the dominancy test, the main, essential,
and dominant features of the marks in this case, as well as
the contexts in which the marks are to be used.
The use of the "CITY CASH WITH GOLDEN LION'S HEAD" mark
will not result in the likelihood of confusion in the minds of
customers since the most noticeable part thereof is the
golden lion’s head, after this is noticed, the words “City” and
Cash” are equally prominent.
On the other hand, Citibank’s marks are best described as
consisting the prefix “CITI” added to words. Thus, the
prevalent feature in Citystate’s marks is not present in any
of Citibank’s marks.
The only similar feature between Citystate’s mark and
Citibank’s collection of marks is the word "CITY" in the
former, and the "CITI" prefix found in the latter. This
similarity alone is not enough to create a likelihood of
confusion.
51.43. ABS-CBN PUBLISHING INC. v. DIRECTOR OF THE
BUREAU OF TRADEMARKS | 217916 | 2018
FACTS: In 2004, the petitioner filed with the Intellectual
Property Office of the Philippines (IPO) its application for the
registration of its trademark "METRO" (applicant mark)
under class 16 of the Nice classification, with specific
reference to "magazines."
It was assigned to Examiner Arlene M. Icban (Examiner
Icban), who, after a judicious examination of the application,
refused the applicant mark's registration because the
applicant mark is identical with three other cited marks, and
is therefore unregistrable according to Section 123.1(d) of
the Intellectual Property Code of the Philippines (IPC).
The petitioner appealed the assessment of Examiner Icban
before the Director of the Bureau of Trademarks of the IPO,
who eventually affirmed Examiner Icban's findings.
The decision averred that the applicant and cited marks
were indeed confusingly similar, so much so that there may
not only be a confusion as to the goods but also a confusion
as to the source or origin of the goods.
NEC POSSUM TECUM VIVERE NEC SINE
Petitioner appealed to the ODG of the IPO. The ODG upheld
the decision of the Examiner’s assessment and the Bureau
Director's decision.
ISSUE: WHETHER THE ODG WAS CORRECT IN REFUSING TO
REGISTER THE APPLICANT MARK FOR BEING IDENTICAL
AND CONFUSINGLY SIMILAR WITH THE CITED MARKS
ALREADY REGISTERED WITH THE IPO?
HELD: YES. According to Section 123.1(d) of the Intellectual
Property Code of the Philippines (IPC), a mark cannot be
registered if it is "identical with a registered mark belonging
to a different proprietor or a mark with an earlier filing or
priority date," in respect of the following: (SCN)
(i) The Same goods or services; or
(ii) Closely related goods or services; or
(iii) If it Nearly resembles such a mark as to be likely to
deceive or cause confusion.
To determine whether a mark is to be considered as
"identical" or that which is confusingly similar with that of
another, the Court has developed two (2) tests: the
dominancy and holistic tests.
While the Court has time and again ruled that the application
of the tests is on a case to case basis, upon the passage of
the IPC, the trend has been to veer away from the usage of
the holistic test and to focus more on the usage of the
dominancy test.
As stated by the Court in the case of McDonald's Corporation
vs. L.C. Big Mak Burger, Inc., the "test of dominancy is now
explicitly incorporated into law in Section 155.1 of the
Intellectual Property Code which defines infringement as the
'colorable imitation of a registered mark x x x or a dominant
feature thereof.’ *See Section 155*
In other words, in committing the infringing act, the infringer
merely introduces negligible changes in an already
registered mark, and then banks on these slight differences
to state that there was no identity or confusing similarity,
which would result in no infringement.
This kind of act, which leads to confusion in the eyes of the
public, is exactly the evil that the dominancy test refuses to
accept. The small deviations from a registered mark are
insufficient to remove the applicant mark from the ambit of
infringement.
Section 3, Rule 18 of the Rules of Procedure for Intellectual
Property Cases provides for the legal presumption that there
is likelihood of confusion if an identical mark is used for
identical goods. The provision states:
SEC. 3. Presumption of likelihood of confusion. -
Likelihood of confusion shall be presumed in case an
identical sign or mark is used for identical goods or
services.
17

In the present case, the applicant mark is classified under
"magazines," which is found in class 16 of the Nice
classification.
A perusal of the records would reveal, however, that the
cited marks "METRO" (word) and "METRO" (logo) are also
both classified under magazines. In fact, the Examiner found
that the cited marks were used on the following
classification of goods:
Even then, it must be emphasized that absolute certainty of
confusion or even actual confusion is not required to refuse
registration.
Indeed, it is the mere likelihood of confusion that provides
the impetus to accord protection to trademarks already
registered with the IPO.
The Court cannot emphasize enough that the cited marks
"METRO" (word) and "METRO" (logo) are identical with the
registrant mark "METRO" both in spelling and in sound. In
fact, it is the same exact word.
Considering that both marks are used in goods which are
classified as magazines, it requires no stretch of imagination
that a likelihood of confusion may occur.
Again, the Court points to the finding of Examiner Icban
which was reviewed and upheld twice: one by the Director
of the Bureau of Trademarks and another by the Director
General of the IPO.
52.1. RED LINE TRANSPORTATION CO. vs RURAL TRANSIT
CO. | 41570 | 1934
There is no law that empowers the Public Service Commission
or any court in this jurisdiction to authorize one corporation
to assume the name of another corporation as a trade name.
Both the Rural Transit Company, Ltd., and the Bachrach
Motor Co., Inc., are Philippine corporations and the very law
of their creation and continued existence requires each to
adopt and certify a distinctive name.
FACTS: On June 4, 1932, herein respondent Rural Transit
filed an application for certification of a new service
between Tuguegarao and Ilagan with the Public Company
Service Commission.
Herein petitioner Red Line opposed said application, arguing
that they already hold a certificate of public convenience for
Tuguegarao and Ilagan, and is rendering adequate service,
and also argued that granting Rural Transit’s application
would constitute a ruinous competition over said route.
On December 21, 1932, Public Service Commission approved
Rural Transit’s application, with the condition that "all the
other terms and conditions of the various certificates of
RE.: IPL DIGESTS
public convenience of the herein applicant and herein
incorporated are made a part hereof."
On January 14, 1933, the oppositor Red Line filed a motion
for rehearing and reconsideration in which it called the
commissioner’s attention to the fact that there was pending
in the CFI, an application for the voluntary dissolution of the
corporation Rural Transit Company Ltd.
At the trial of this case, an issue was raised as to who was
the real party in interest in making the application, whether
the Rural Transit Company, Ltd., as appeared on the face of
the application, or the Bachrach Motor Company, Inc., using
name of the Rural Transit Company, Ltd., as a trade name.
PSC granted Rural Transit’s application. PSC relied on a
Resolution in case No. 23217, authorizing Bachrach Motor to
continue using Rural Transit’s name as its tradename in all
its applications and petitions to be filed before the PSC.
RESOLUTION OF THE PSC: Premises considered we hereby
authorize the Bachrach Motor Co., Inc., to continue using the
name of 'Rural Transit Co., Ltd. as its trade name in all the
applications, motions or other petitions to be filed in this
commission in connection with said business and that this
authority is given retroactive effect as of the date of filing of
the application in this case, to wit, April 28, 1930.
Hence, this petition for review.
ISSUE: WHETHER THE PUBLIC SERVICE COMMISSION
AUTHORIZE A CORPORATION TO ASSUME THE NAME OF
ANOTHER CORPORATION AS A TRADE NAME?
HELD: NO. *Refer to stated doctrine.* In this case, the order
of the commission authorizing the Bachrach Motor Co.,
Incorporated, to assume the name of the Rural Transit Co.,
Ltd. likewise incorporated, as its trade name being void.
Accepting the order of December 21, 1932, at its face as
granting a certificate of public convenience to the applicant
Rural Transit Co., Ltd., the said order last mentioned is set
aside and vacated on the ground that the Rural Transit
Company, Ltd., is not the real party in interest and its
application was fictitious
53.2. UNIVERSAL MILLS CORP. vs. UNIVERSAL TEXTILE
MILLS, INC. | 28351 | 1977
The corporate names in question are not identical, but they
are indisputably so similar that even under the test of
reasonable care and observation as the public generally are
capable of using and may be expected to exercise” invoked
by appellant.
Confusion will usually arise, considering that appellant
included among its primary purposes the manufacturing,
dyeing, finishing and selling of fabrics of all kinds” which
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respondent had been engaged for more than a decade ahead
of petitioner.
FACTS: Herein respondent Universal Textile Mills organized
on December 29, 1953, and was issued a certificate of
registration as a textile manufacturing firm on January 8,
1954.
On the other hand, herein petitioner Universal Mills
Corporation originally dealt in the production of hosieries
and apparels, and acquired its current name by amending its
articles of incorporation, changing its name from Universal
Hosiery Mills Corporation to Universal Mills Corporation on
May 24, 1963.
The immediate cause of this present complaint, however,
was the occurrence of a fire which gutted respondent’s
spinning mills in Pasig, Rizal.
As a result of this fire and because of the similarity of
respondent’s name to that of herein complainant, the
newspaper reports on the fire created uncertainty and
confusion among its bankers, stockholders and customers
prompting petitioner to make announcements, clarifying the
real identity of the corporation whose property was burned.
Herein respondent filed a petition with the SEC to enjoin
herein petitioner Universal Mills Corporation from using its
corporate name. Universal Mills denied any similarity and
that even assuming that there is similarity, the same is not
confusing nor deceptive.
Moreover, herein petitioner argues that it had changed its
name because it expanded its business to include the
manufacture of fabric of all kinds.
The SEC ruled to enjoin Universal Mills Corporation from
using its corporate name. Hence this appeal to the Supreme
Court on the ground that the SEC had acted in grave abuse
of discretion when it ruled against Universal Mills
Corporation.
ISSUE: WHETHER PETIONER’S TRADE NAME IS
CONFUSINGLY SIMILAR WITH THAT OF RESPONDENT’S?
HELD: YES. The business names “Universal Mills
Corporation” and “Universal Textile Mills, Inc.” though not
identical are so similar as to cause confusion to the general
public, particularly where the former included the
manufacture, dyeing and selling of fabrics of all kinds in
which the latter had been engaged for more than a decade
ahead of the petitioner.
Confusion will usually arise, considering that appellant
included among its primary purposes the manufacturing,
dyeing, finishing and selling of fabrics of all kinds” which
respondent had been engaged for more than a decade
ahead of petitioner.
54.3. LYCEUM OF THE PHILIPPINES vs. CA | 101897 | 1993
The doctrine of secondary meaning requires that the word or
phrase used in the corporate name has been for such length
of time with such exclusivity as to have associated or
identified the corporation in the mind of the general public.
As to trade names, a person may not use a name if the word
is generic.
FACTS: Herein petitioner Lyceum of the Philippines, Inc. is an
educational institution duly registered with Securities and
Exchange Commission since 1950. Petitioner commenced a
proceeding before the SEC against the Lyceum of Baguio to
compel it to change its corporate name and to adopt another
name not similar to or identical with the corporate name of
petitioner.
The SEC ruled in favor of petitioner, and wrote to all the
educational institutions it could find using the word Lyceum
in its corporate name to advise them to discontinue such
use. The same failed.
In 1984, it instituted proceedings before SEC to compel
several other educational institutions to delete the word
“Lyceum” from their corporate names and to permanently
enjoin them from using the said word.
The SEC sustained petitioner’s claim. On appeal, the SEC En
Banc, however, ruled against petitioner. The Court of
Appeals affirmed the decision of the SEC En Banc. Hence this
case.
ISSUE: WHETHER THE CORPORATE NAMES OF THE PARTIES
ARE IDENTICAL WITH OR DECEPTIVELY SIMILAR TO THAT
OF THE PETITIONER?
HELD: NO. The corporate names of the parties carry the
word “Lyceum” but confusion and deception are precluded
by the appending of geographic names.
Lyceum generally refers to a school or an institution of
learning and it is natural to use this word to designate an
entity which is organized and operating as an educational
institution.
RE: SECONDARY MEANING: Petitioner claims that the word
“Lyceum” has acquired a secondary meaning in relation to
petitioner with the result that that word, although generic,
has become appropriable by petitioner to the exclusion of
other institutions.
ISSUE: WHETHER THE USE BY PETITIONER OF "LYCEUM" IN
ITS CORPORATE NAME HAS ACQUIRED SECONDARY
MEANING?
18
NEC POSSUM TECUM VIVERE NEC SINE

HELD: NO. *See stated doctrine.* while the appellant may
have proved that it had been using the word 'Lyceum' for a
long period of time, this fact alone did not amount to mean
that the said word had acquired secondary meaning in its
favor because the appellant failed to prove that it had been
using the same word all by itself to the exclusion of others.
More so, there was no evidence presented to prove that
confusion will surely arise if the same word were to be used
by other educational institutions. Consequently, the
allegations of the appellant in its first two assigned errors
must necessarily fail.
55.4. PHILIPS EXPORT B.V. vs. CA | 96161 | 1992
Priority of adoption determines the right to the exclusive use
of a corporate name with freedom from infringement.
Further, to determine whether a given corporate name is
“identical” or “confusingly or deceptively similar” with
another entity’s corporate name, the corporate names must
be evaluated in their entirety (Lyceum of the Philippines v.
CA).
FACTS: Herein petitioner Philips Export BV is a foreign
corporation organized in Netherlands and not engaged in
business in the Philippines. It is the registered owner of the
trademark “Phillips” and “Phillips Shield Emblem”.
Respondent Standard Philips Corporation (Standard Philips),
on the other hand, was issued a Certificate of Registration by
respondent Commission on 19 May 1982.
Petitioner along with Philips Electrical and Philips Industrial
is a corporation belonging to the Philips Group of
Companies. In 1984, PEVB filed a letter-complaint with the
SEC for the cancellation of the word “Phillips” from Standard
Philip’s corporate name in view of the prior registration with
the Bureau of Patents of the trademark “PHILIPS” and the
logo “PHILIPS SHIELD EMBLEM” in the name of Petitioner
PEBV, and the previous registration of Petitioners Philips
Electrical and Philips Industrial with the SEC.
Standard Philips refusal to change its name prompted
petitioners to file a petition for the issuance of a writ of
preliminary injunction against Standard Philips alleging,
among others, that Private Respondent’s use of the word
PHILIPS amounts to an infringement and clear violation of
Petitioners’ exclusive right to use the same considering that
both parties engage in the same business.
In its Answer, dated 7 March 1985, Private Respondent
countered that Petitioner PEBV has no legal capacity to sue;
that its use of its corporate name is not at all similar to
Petitioners’ trademark PHILIPS when considered in its
entirety; and that its products consisting of chain rollers,
belts, bearings and cutting saw are grossly different from
Petitioners’ electrical products.
RE.: IPL DIGESTS
The SEC ruled against the issuance of the writ of preliminary
injunction. The same was affirmed by the SEC En Banc. The
Court of Appeals dismissed the ensuing petition for review
on certiorari. Hence this case.
ISSUE: WHETHER STANDARD PHILIPS CORPORATION MAY
BE ENJOINED FROM USING ITS CORPORATE NAME?
HELD: YES. PHILIPS is a trademark or trade name which was
registered as far back as 1922. Petitioners, therefore, have
the exclusive right to its use which must be free from any
infringement by similarity. A corporation has an exclusive
right to the use of its name, which may be protected by
injunction upon a principle similar to that upon which
persons are protected in the use of trademarks and
tradenames (18 C.J.S 574).
As early as Western Equipment and Supply Co. v. Reyes, 51
Phil. 115 (1927), the Court declared that a corporation’s right
to use its corporate and trade name is a property right, a
right in rem, which it may assert and protect against the
world in the same manner as it may protect its tangible
property, real or personal, against trespass or conversion. It
is regarded, to a certain extent, as a property right and one
which cannot be impaired or defeated by subsequent
appropriation by another corporation in the same field (Red
Line Transportation Co. vs. Rural Transit Co., September 6,
1934, 60 Phil. 549).
Notably, too, Private Respondent’s name actually contains
only a single word, that is, “STANDARD”, different from that
of Petitioners inasmuch as the inclusion of the term
“Corporation” or “Corp.” merely serves the purpose of
distinguishing the corporation from partnerships and other
business organizations.
The fact that there are other companies engaged in other
lines of business using the word “PHILIPS” as part of their
corporate names is no defense and does not warrant the use
by Private Respondent of such word which constitutes an
essential feature of Petitioners’ corporate name previously
adopted and registered and having acquired the status of a
well-known mark in the Philippines and internationally as
well (Bureau of Patents Decision No. 88-35 [TM], June 17,
1988, SEC Records).
In support of its application for the registration of its Articles
of Incorporation with the SEC, Private Respondent had
submitted an undertaking “manifesting its willingness to
change its corporate name in the event another person, firm
or entity has acquired a prior right to the use of the said firm
name or one deceptively or confusingly similar to it.” Private
Respondent must now be held to its undertaking.
As a general rule, parties organizing a corporation must
choose a name at their peril; and the use of a name similar
to one adopted by another corporation, whether a business
or a nonbusiness or nonprofit organization if misleading and
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likely to injure it in the exercise of its corporate functions,
regardless of intent, may be prevented by the corporation
having the prior right, by a suit for injunction against the new
corporation to prevent the use of the name.
Our own Corporation Code, in its Section 18, expressly
provides that:
“No corporate name may be allowed by the Securities and
Exchange Commission if the proposed name is identical or
deceptively or confusingly similar to that of any existing
corporation or to any other name already protected by law
or is patently deceptive, confusing or contrary to existing
law. Where a change in the corporate name is approved, the
commission shall issue an amended certificate of
incorporation under the amended name.” (Emphasis
supplied)
The statutory prohibition cannot be any clearer. To come
within its scope, two requisites must be proven, namely:
1. That the complainant corporation acquired a prior
right over the use of such corporate name; and
2. The proposed name is either:
a. Identical or
b. Deceptively or confusingly similar to that of any
existing corporation or to any other name
already protected by law; or
c. Patently deceptive, confusing or contrary to
existing law.
The right to the exclusive use of a corporate name with
freedom from infringement by similarity is determined by
priority of adoption (1 Thompson, p. 80 citing Munn v.
Americana Co., 82 N., Eq. 63, 88 Atl. 30; San Francisco Oyster
House v. Mihich, 75 Wash. 274; 134 Pac. 921). In this regard,
there is no doubt with respect to Petitioners’ prior adoption
of the name “PHILIPS” as part of its corporate name.
Petitioners Philips Electrical and Philips Industrial were
incorporated on 29 August 1956 and 25 May 1956,
respectively, while Respondent Standard Philips was issued
a Certificate of Registration on 19 April 1982, twenty-six (26)
years later (Rollo, p. 16). Petitioner PEBV has also used the
trademark “PHILIPS” on electrical lamps of all types and their
accessories since 30 September 1922, as evidenced by
Certificate of Registration No. 1651.
The second requisite no less exists in this case. In
determining the existence of confusing similarity in
corporate names, the test is whether the similarity is such as
to mislead a person using ordinary care and discrimination.
In so doing, the Court must look to the record as well as the
names themselves (Ohio Nat. Life Ins. Co. v. Ohio Life Ins.
Co., 210 NE 2d 298).
While the corporate names of Petitioners and Private
Respondent are not identical, a reading of Petitioner’s
corporate names, to wit: “PHILIPS EXPORT B.V., PHILIPS
ELECTRICAL LAMPS, INC. and PHILIPS INDUSTRIAL
NEC POSSUM TECUM VIVERE NEC SINE
DEVELOPMENT, INC., inevitably leads one to conclude that
“PHILIPS” is, indeed, the dominant word in that all the
companies affiliated or associated with the principal
corporation, PEBV, are known in the Philippines and abroad
as the PHILIPS Group of Companies.
Respondents maintain, however, that Petitioners did not
present an iota of proof of actual confusion or deception of
the public much less a single purchaser of their product who
has been deceived or confused or showed any likelihood of
confusion. It is settled, however, that proof of actual
confusion need not be shown. It suffices that confusion is
probably or likely to occur (6 Fletcher [Perm Ed], pp. 107-
108, enumerating a long line of cases).
It may be that Private Respondent’s products also consist of
chain rollers, belts, bearing and the like while petitioners
deal principally with electrical products. It is significant to
note, however, that even the Director of Patents had denied
Private Respondent’s application for registration of the
trademarks “Standard Philips & Device” for chains, rollers,
belts, bearings and cutting saw.
That office held that PEBV “had shipped to its subsidiaries in
the Philippines equipment, machines and their parts which
fall under international class where ‘chains, rollers, belts,
bearings and cutting saw,’ the goods in connection with
which Respondent is seeking to register “STANDARD PHILIPS
x x x also belong” (Inter Partes Case No. 2010, June 17, 1988,
SEC Rollo).
55.1. AIR PHILIPPINES CORPORATION vs. PENNSWELL |
172835 | 2007
A trade secret is defined as a plan or process, tool,
mechanism or compound known only to its owner and those
of his employees to whom it is necessary to confide it.
FACTS: Petitioner Air Philippines Corporation is a domestic
corporation engaged in the business of air transportation
services. On the other hand, respondent Pennswell, Inc. was
organized to engage in the business of manufacturing and
selling industrial chemicals, solvents, and special lubricants.
Pennswell sold and delivered to Air Philippines Corporation
industrial chemicals, solvents, and special lubricants
amounting to P450,000.00.
When Air Philippines refused to pay the obligation,
Pensswell filed a collection case before RTC Makati.
In its Answer, Air Philippines alleged that: it refused to pay
because it was defrauded by Pennswell for its previous sale
that the items in that were sold were misrepresented by
Pennswell as belonging to a new line of products, but were
in fact, identical with products it had previously purchased
from Pennswell; and that, Pennswell merely altered the
names and labels of such goods.
19

Air Philippines filed a motion to compel Pennswell to give a
detailed list of the chemical components and the ingredients
used for the products that were sold.
Pennswell opposed the motion for production, contending
that the requested information was a trade secret that it
could not be forced to disclose. The RTC upheld the
opposition of Pennswell. The Court of Appeals affirmed the
decision of the Trial Court. Hence, this case.
ISSUE: MAY PENNSWELL BE COMPELLED TO DISCLOSE THE
CHEMICAL COMPONENTS AND THE INGREDIENTS USED
FOR ITS PRODUCTS THROUGH A MOTION FOR
PRODUCTION?
HELD: NO. APC’s motion should be denied. A motion for
production or inspection of documents or things under Rule
27 is subject to the requirement that the documents or
things should not be privileged.
Here, what are sought to be produced is a detailed list of an
industrial product’s ingredients and chemical components
which are trade secrets and thus privileged. Rule 27 of the
Rules of Court provides:
Sec. 1. Motion for production or inspection order. Upon
motion of any party showing good cause therefore, the
court in which an action is pending may:
(a) Order any party to produce and permit the
inspection and copying or photographing, by or on
behalf of the moving party, of any designated
documents, papers, books, accounts, letters,
photographs, objects or tangible things, not
privileged, which constitute or contain evidence
material to any matter involved in the action and
which are in his possession, custody or control; or
(b) Order any party to permit entry upon designated
land or other property in his possession or control
for the purpose of inspecting, measuring,
surveying, or photographing the property or any
designated relevant object or operation thereon.
The order shall specify the time, place and manner
of making the inspection and taking copies and
photographs, and may prescribe such terms and
conditions as are just.
Rule 27 sets an unequivocal proviso that the documents,
papers, books, accounts, letters, photographs, objects or
tangible things that may be produced and inspected should
not be privileged. Section 24 of Rule 130 draws the types of
disqualification by reason of privileged communication, to
wit:
(a) Communication between husband and wife;
(b) Communication between attorney and client;
(c) Communication between physician and patient;
(d) Communication between priest and penitent; and
(e) Public officers and public interest.
RE.: IPL DIGESTS
There are, however, other privileged matters that are not
mentioned by Rule 130. Among them are the following: To compel its disclosure is to cripple respondents business,
(a) Editors may not be compelled to disclose the source and to place it at an undue disadvantage. If the chemical
of published news; composition of respondents lubricants are opened to public
(b) Voters may not be compelled to disclose for whom scrutiny, it will stand to lose the backbone on which its
they voted; business is founded.
(c) Trade secrets;
(d) Information contained in tax census returns; and (d) This would result in nothing less than the probable demise
bank deposits. of respondents business. Respondent’s proprietary interest
over the ingredients which it had developed and expended
A trade secret is defined as a plan or process, tool, money and effort on is incontrovertible.
mechanism or compound known only to its owner and those
of his employees to whom it is necessary to confide it. The The chemical composition, formulation, and ingredients of
definition also extends to a secret formula or process not special lubricants requested by Air Philippines formed part
patented, but known only to certain individuals using it in of the trade secrets of Pennswell. Because of public policy,
compounding some article of trade having a commercial trade secrets are privileged and the rules providing for the
value. American jurisprudence has utilized the following production and inspection of books and papers do not
factors to determine if an information is a trade secret, to authorize their production in a court of law.
wit:
(1) The extent to which the information is known
outside of the employer’s business;
(2) The extent to which the information is known by
employees and others involved in the business;
(3) The extent of measures taken by the employer to
guard the secrecy of the information;
(4) The value of the information to the employer and to
competitors;
(5) The amount of effort or money expended by the
company in developing the information; and
(6) The extent to which the information could be easily
or readily obtained through an independent source.
The chemical composition, formulation, and ingredients of
respondent’s special lubricants are trade secrets within the
contemplation of the law.
Respondent was established to engage in the business of
general manufacturing and selling of, and to deal in,
distribute, sell or otherwise dispose of goods, wares,
merchandise, products, including but not limited to
industrial chemicals, solvents, lubricants, acids, alkalies,
salts, paints, oils, varnishes, colors, pigments and similar
preparations, among others. It is unmistakable to our minds
that the manufacture and production of respondent’s
products proceed from a formulation of a secret list of
ingredients.
In the creation of its lubricants, respondent expended
efforts, skills, research, and resources. What it had achieved
by virtue of its investments may not be wrested from
respondent on the mere pretext that it is necessary for
petitioner’s defense against a collection for a sum of money.
By and large, the value of the information to respondent is
crystal clear.
The ingredients constitute the very fabric of respondent’s
production and business. No doubt, the information is also
valuable to respondent’s competitors.
2019 RE: COMPILATION: IPL CASES. READ AT YOUR OWN RISK. READ THE FULL TEXT FIRST. THE SAME IS STILL SUBJECT TO EDITING. NOT SUGGESTED FOR PRINTING. VER. 5 20
NEC POSSUM TECUM VIVERE NEC SINE