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Lim Hoa vs Director of Patents

G.R. 8072 October 31, 1956

Ponente: Justice Montemayor

Facts:

Lim Hoa filed an application for registration of a trademark showing two midget roosters
in an attitude of combat with the word “Bantam” printed above them for a food seasoning
product. Agricom Development Co., Inc., opposed the application on the ground, that the
trademark sought to be registered was confusingly similar to its register mark, consisting of a
pictorial representation of a hen with the words “Hen Brand” and “Marca Manok”, which mark
or brand was also used on a food seasoning product, before the use of the trademark by the
applicant.

Issue:

Is there an infringement of trademark?

Held:

Yes. The court ruled that the trademarks are similar to each other which would likely
create confusion to the ordinary buyer. Although the hen and the rooster are of different sexes,
they still belong to the same specie which is the “manok”. To the ordinary buyer, it may not look
any different. The similarity may compel a person to buy one product thinking that it is the other.
Moreover, with all the animals in the land, ocean and air, the court could not phantom why the
plaintiff chose two roosters facing each other knowing that a similar trademark is used by
another establishment producing the same product.
Marvez Commercial Co., Inc., vs Petra Hawpia and Co.

18 SCRA 1178 December 22, 1966

Ponente: Justice Castro

Facts:

Respondent sought to register the tradename “LIONPAS” for its brand of medicated
plaster. Petitioner filed an opposition arguing that “LIONPAS” resembles its tradename
“SALONPAS” for another medicated plaster. The Director of Patent,however, denied the
opposition.

Issue:

Is the trademark “LIONPAS” confusingly similar with “SALONPAS”?

Held:

Yes. “SALONPAS” and “LIONPAS” are confusingly similar in sound. Both have the
suffix “PAS” and when the two products are advertised in the radio, similarity in sound is of
great significance. Similarity of sound is sufficient to rule that the two marks are confusingly
similar when applied to merchandise of the same descriptive properties.
Sta. Ana vs Maliwat

G.R. No. L-23023           August 31, 1968

Ponente: Justice Reyes

Facts:

On 21 June 1962, Florentino Maliwat filed with the Patent Office an application for
registration of the trademark FLORMANN, which is used on shirts, pants, jackets and shoes for
ladies, men, and children. On 18 September 1962, Jose P. Sta. Ana filed an application for the
registration of the tradename FLORMEN SHOE MANUFACTURERS (SHOE
MANUFACTURERS disclaimed), which is used in the business of manufacturing ladies' and
children's shoes. In view of the admittedly confusing similarity between the trademark
FLORMANN and the tradename FLORMEN, the Director of Patents declared an interference.
After trial, the respondent Director gave due course to Maliwat's application and denied that of
Sta. Ana.

Issue:

Is the trademark confusingly similar?

Held:

Modern law recognizes that the protection to which the owner of a trademark mark is
entitled is not limited to guarding his goods or business from actual market competition with
identical or similar products of the parties, but extends to all cases in which the use by a junior
appropriator of a trademark or tradename is likely to lead to a confusion of source, as where
prospective purchasers would be misled into thinking that the complaining party has extended
his business into the field. Mere dissimilarity of goods should not preclude relief where the
junior user's goods are not too different or remote from any that the owner would be likely to
make or sell; and in the present case, wearing apparel is not so far removed from shoes as to
preclude relief, any more than the pancake flour is from syrup or sugar cream. Note that the
provision does not require that the articles of manufacture of the previous user and the late user
of the mark should possess the same descriptive properties or should fall into the same categories
as to bar the latter from registering his mark in the principal register. Therefore, whether or not
shirts and shoes have the same descriptive properties, or whether or not it is the prevailing
practice or the tendency of tailors and haberdashers to expand their business into shoes making,
are not controlling. The meat of the matter is the likelihood of confusion, mistake or deception
upon purchasers of the goods of the junior user of the mark and the goods manufactured by the
previous user. Here, the resemblance or similarity of the mark FLORMANN and the name
FLORMEN and the likelihood of confusion, one to the other, is admitted; therefore, the prior
adopter, respondent Maliwat, has the better right to the use of the mark.
Acoje Mining Co., Inc., vs Director of Patents

39 SCRA 480 April 29, 1971

Ponente: Justice Fernando

Facts:

The facts as set forth in the appealed decision follow: "On September 14, 1965, Acoje
Mining Co., Inc. a domestic corporation, filed an application for registration of the trademark
LOTUS, used on Soy Sauce, Class 47. Use in commerce in the Philippines since June 1, 1965 is
asserted. The Chief trademark Examiner finally rejected the application by reason of confusing
similarity with the trademark LOTUS registered in this Office under Certificate of Registration
No. 12476 issued in favor of Philippine Refining CO., Inc., another domestic corporation. The
cited mark is being used on edible oil, Class 47."

Issue:

May petitioner Acoje Mining Company register for the purpose of advertising its product,
soy sauce, the trademark LOTUS, there being already in existence one such registered in favor of
the Philippine Refining Company for its product, edible oil, it being further shown that the
trademark applied for is in smaller type, colored differently, set on a background which is
dissimilar as to yield a distinct appearance?

Held:

the determinative factor in a contest involving registration of trade mark is not whether
the challenging mark would actually cause confusion or deception of the purchasers but whether
the use of such mark would likely cause confusion or mistake on the part of the buying public. In
short, to constitute an infringement of an existing trade-mark patent and warrant a denial of an
application for registration, the law does not require that the competing trademarks must be so
identical as to produce actual error or mistake; it would be sufficient, for purposes of the law,
that the similarity between the two labels, is such that there is a possibility or likelihood of the
purchaser of the older brand mistaking the newer brand for it."

It does not defy common sense to assert that a purchaser would be cognizant of the
product he is buying. There is quite difference between soy sauce and edible oil. If one is in the
market for the former, he is not likely to purchase the latter just because of the trademark
LOTUS. Even on the rare occasions that a mistake does occur, it can easily be rectified.
Moreover, there is no denying that the possibility of confusion is remote considering the
difference in the type used, the coloring, the petitioner's trademark being in yellow and red while
that of the Philippine Refining Company being in green and yellow, and the much smaller size of
petitioner's trademark. When regard is had for the principle that the two trademarks in their
entirety as they appear in their respective labels should be considered in relation to the goods
advertised before registration could be denied, the conclusion is inescapable that respondent
Director ought to have reached a different conclusion. Petitioner has successfully made out a
case for registration.
Esso Standard vs Court of Appeals

116 SCRA 336 August 31, 1982

Ponente: Justice Teehankee

Esso Standard v CA Digest

G.R. No. L-29971

Facts:

The petitioner Esso Standard is a foreign corporation duly licensed to do business in the
philippines. it is engaged in the sale of petroleum products which are identified by the trademarl
'Esso'. Esso is a successor of Standard Vacuum Oil Co, it registered as a business name with the
Bureau of Commerce in 1962. 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, once of which is the use of 'Esso' on its cigarettes.

The petitioner filed a trademark infringement case alleging that it acquired goodwill to
such an extent that the buying public would be deceived as ti the quality and origin of the said
products to the detriment and disadvantage of its own products. The lower court found United
Cigarette guilty of infringement. Upon appeal, the Court of Appeals ruled that there was no
infringment in this case.

Issue:

Is there infringement committed?

Held:

NONE. 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.
Fredco v. Harvard University

G.R. No. 185917 June 1, 2011

Ponente: Justice Carpio

Facts:

In 2005, Fredco Manufacturing Corporation filed a petition for cancellation before

theBureau of Legal Affairs of the Philippine Intellectual Property Office against the President
and Fellows of Harvard College for the registration of its mark “Harvard Veritas Shield Symbol”
under the Classes 16, 18, 21, 25 and 28 of the Nice International Classification of Goods an
Services alleging that its predecessor-in-interest, New York Garments Manufacturing & Export
Co., Inc., has been already using the mark “Harvard” since 1985 when it registered the same
mark under Class 25 of the Nice Classification. Thus, Harvard University is not a prior user of
the mark in the Philippines and, therefore, has no right to register the mark.

On the other hand, Harvard University claimed that the mark “Harvard” has been adopted
by Harvard University in Cambridge, Massachusetts, USA since 1639.Furthermore, it alleges
that the name and mark “Harvard” and “Harvard Veritas Shield Symbol” is registered in more
than 50 countries, including the Philippines, and has been used in commerce since 1872. In fact,
the name and mark is rated as one of the top brands of the world, being worth between $750M
and $1B.Decision of BLA-IPO The Bureau of Legal Affairs, IPO ruled in favour of Fredco
ordering the cancellation of Harvard University’s mark under Class 25 only because the other
classes were not confusingly similar with respect to the goods and services of Fredco. Decision
of ODG-IPO Harvard University appealed before the Office of the Director General of IPO
wherein ODG-IPO reversed the decision of BLA-IPO. The Director General ruled that the
applicant must also be the owner of the mark sought to be registered aside from the use of it.
Thus, Fredco is not the owner of the mark because it failed to explain how its predecessor got the
mark “Harvard”. There was also no evidence of the permission of Harvard University for Fredco
to use the mark. Decision of the Court of Appeals Fredco appealed the decision of the Director
General before the Court of Appeals, which then affirmed the decision of ODG-IPO considering
the facts found by the Director General. CA ruled that Harvard University had been using the
marks way before Fredco and the petitioners failed to explain its use of the marks bearing the
words “Harvard”, “USA”, Established 1936” and “Cambridge, Massachusetts” within an oblong
device.

Issue:

W/N CA erred in affirming the decision of ODG-IPO

Held:

The Petition has no merit. Although R.A. 166 Section 2 states that before a mark can be
registered, it must have been actually used in commerce for not less than two months in the
Philippines prior to filing an application for its registration, a trademark registered in a foreign
country which is a member of the Paris Convention is allowed to register without the
requirement of use in the commerce in the Philippines. Under Section 37 of R.A. 166,
registration based on home certificate is allowed and does not require the use of the mark in the
Philippines. Furthermore, R.A. 8293 Section 239.2 provides that marks which have been
registered under R.A. 166 shall remain in force but shall be subject to the provisions of R.A.
8293, which does not require the prior use of the mark in the Philippines. Why the petition must
fail?

1. The inclusion of the origin “Cambridge, Massachusetts” in Fredco’s mark connotes that
Fredco is associated with Harvard University, which is really not true. The registration of
Fredco’s mark should have been rejected.

2. The Philippines is a signatory of the Paris Convention, which provides for the protection
against violation of intellectual property rights to all the member countries regardless of whether
the trademarks is registered or not in a particular country.1980, Luis Villafuerte issued a memo
to the Director of Patents ordering the latter to reject all pending applications of marks which
involves a well-known brand around the world by applicants other than the owner of the
mark.1983, Roberto Ongpin affirmed the memo of Villafuerte by commanding the Director of
Patents to implement measures which will comply with the provisions of the Paris Convention.
He provided criteria that should be considered to any marks that are well-known in the
Philippines or marks that belong to persons subject to the protection of the Convention.
Currently, well-known marks are protected under Section 123.1(e) of R.A. 8293. Additionally,
Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked
or Stamped Containers provides for the criteria in determining a well-known mark. The use of
the mark in commerce is not anymore required because it is enough that “any combination” of
the criteria be met in order for a mark to be well-known. The ODG-IPO traced the origin of the
mark “Harvard”. It ruled that Harvard University had been using the mark centuries before
Fredco although the latter may have used the mark first in the Philippines before the former.
Likewise, CA ruled that the name and mark “Harvard” and “Harvard Veritas Shield Symbol”
were first used in the United States since 1953 under Class 25.

Finally, the Supreme Court declared the mark “Harvard” to be well –known internationally,
including the Philippines.