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Faberge, Inc. v. Intermediate Appellate Court, G.R. No. 71189, November 4,

1992 (215 SCRA 316)
Petitioner: Faberge, Inc.
Respondent Court: Intermediate Appellate Court
Private Respondent: Co Beng Kay
Facts
Introduction

- Private respondent Co Beng Kay’s trademark “BRUTE” for briefs were approved by the Director
of Patents notwithstanding the opposition of Faberge, Inc.
- Said opposition was premised by their allegation that Co Beng Kay’s trademark is confusingly
similar with their “BRUT” and “BRUT 3 and DEVICE” trademark which was previously approved
for shave lotion, shaving cream, deodorant, talcum powder, and toilet soap.
- The case was brought to the Intermediate Appellate Court.

IAC’s First Decision

- Initially, the IAC, through J. Gopengco, J. Patajo and J. Racela, Jr., decided in favor of the
petitioners.
- They held that the marks "BRUT," "BRUT 33" and "BRUTE" shows that such marks are not only
similar in appearance, but they are even similar in sound and in the style of presentation and it
is safe to assume that confusion will arise from the same.
- That confusion will still arise even if the marks pertain to different products because the same
are sold in department stores and haberdashery stores. Private respondent’s claim that the
products are sold in different sections in stores is unconvincing.
- Furthermore, respondent court held that petitioner Faberge has earned and established
immense goodwill among its customers due to petitioner’s use of the mark. Allowing private
respondent to register said mark enables the same to cash on petitioner’s goodwill.

IAC’s Second Decision and Reversal

- On June 5, 1984, respondent's Motion for Reconsideration merited the nod of approval of the
appellate court.
- The reversal was made because of private respondent’s assertion that the cases of Philippine
Refining Co., Inc. vs. Ng Sam, ESSO Standard Eastern, Inc. vs. Court of Appeals, Hickok
Manufacturing Co., Inc. vs. CA, and Acoje Mining Co., Inc. vs. Director of Patents should be
applied and the same was upheld by the respondent court.
- Said cases held that identical trademark can be used by different manufacturers for products
that are non-competing and unrelated.

Issue: Whether or not private respondent’s trademark, “BRUTE”, is valid.

Held: Yes, private respondent’s trademark, “BRUTE”, is valid.

- The pertinent and applicable provisions are as follows:

- Sec. 4(d) of R.A. No. 1661 states that a mark or trade-name which so resembles a mark or trade-
name registered in the Philippines or a mark or trade-name previously used in the Philippines by
another and not abandoned, as to be likely, when applied to or used in connection with the
goods, business or services of the applicant, to cause confusion or mistake or to deceive
purchasers are not registrable (Related Goods Principle and/or Expansion of Business to said
Good Principle). Justice J.B.L. Reyes in the Sta. Ana case also stated that relief is available where
the junior user's goods are not remote from any product that the senior user would be likely to
make or sell.
- Meanwhile, Sec. 20 of the same law2 states that the exclusive rights of a registered trademark
owner pertains to goods, business or services specified in the certificate of registration.
- In the present case, petitioner contends that the products under their trademark “BRUT” (shave
lotion, shaving cream, deodorant, talcum powder, and toilet soap) is related with the product
under the trademark “BRUTE” (briefs) of private respondent and that petitioner has plans to
expand said trademark with other goods.
- Hence, petitioner posits that sec. 4(d) of R.A. No. 166 should apply.
- Naturally, private respondent claims that said products are not related.
- However, the Court stated that Sec.20 of the same law limits the rights of a registered
trademark owner to the products listed in his certificate of registration. The two provisions, as
the good court observed, are seemingly contradictory to each other.
- To dispel the confusion, the Supreme Court applied the Statutory Construction rule wherein the
later parts of a statute is upheld against earlier provisions of the same as the former is
deemed to express the latest intent of the legislators. Hence, Sec. 20 of R.A. No. 166 shall
prevail over Sec. 4 (d) of the same.
- Finally, the Supreme Court held that the goods in question are not likely to confuse the buying
public as they are non-competing and unrelated.

Case Dismissed

1
Sec. 4. Registration of trade-marks, trade-names and service-marks on the principal register. —
. . . The owner of trademark, trade-name or service-mark used to distinguish his goods, business or services from
the goods, business or services of others shall have right to register the same on the principal register, unless it:
xxx xxx xxx
4(d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the
Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned, as to be
likely, when applied to or used in connection with the goods, business or services of the applicant, to cause
confusion or mistake or to deceive purchasers.
2
Sec. 20. Certificate of registration prima facie evidence of validity. — A certificate of registration of a mark or
trade-name shall be 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, subject to any conditions and limitations stated therein.