G.R. No. 103543.

July 5, 1993
ASIA BREWERY, INC., petitioner, vs. THE HON. COURT OF APPEALS and SAN MIGUEL
CORPORATION, respondents. Abad Santos & Associates and Sycip, Salazar, Hernandez &
Gatmaitan for petitioner. Roco, Bunag, Kapunan Law Office for private respondent.
GRIÑO-AQUINO, J.:

FACTS OF THE CASE: Infringement of trademark and unfair competition on account of the latter’s
BEER PALE PILSEN or BEER NA BEER product was filed by San Miguel Corporation (SMC) against
Asia Brewery Inc. (ABI), which has been challenging with SMC’s SAN MIGUEL PALE PILSEN for a
share of the local beer market. A decision was rendered by the trial court, presided over by Judge Jesus O.
Bersamira, dismissing SMC's complaint because ABI "has not committed trademark infringement or
unfair competition against" SMC.
SMC appealed to the Court of Appeals which reversed the trial court. Upon a motion for reconsideration
filed by ABI, the dispositive part of the decision, was modified by the separate opinions of the Special
Sixth Division.
In due time, ABI appealed to the Supreme Court by a petition for certiorari under Rule 45 of the Rules of
Court.
LEGAL ISSUES: Whether or not Asia Brewery Inc. committed infringement of trademark and unfair
competition against San Miguel Corporation.
RULINGS: No. Infringement is controlled by the "trial of dominancy" instead of by contrasts or varieties
in the subtleties of one trademark of another. In the event that the contending trademark contains the
fundamental or prevailing aspects of another, and disarray and trickery is probably to result, infringement
happens.
The predominant aspect of SMC is the words "SAN MIGUEL PALE PILSEN" with expound serifs
toward the start and end of the letters "S" and "M." While the prevailing aspect of ABI's brand name is
the name: "BEER PALE PILSEN" with "Brew" written in enormous golden letters. Other than the
disparity in their predominant aspect, the accompanying different dissimilarities in the presence of the
contending items flourish:
SMC’s bottle has a slender tapered neck, while Beer na Beer’s bottle has a fat, bulging neck. SMC’s
bottle cap is stamped with a coat of arms and the words "San Miguel Brewery Philippines" encircling the
same, while Beer na Beer’s bottle cap is stamped with the name "BEER" in the center, surrounded by the
words "Asia Brewery Incorporated Philippines.” San Miguel is "Bottled by the San Miguel Brewery,
Philippines," while Beer na Beer is "Especially brewed and bottled by Asia Brewery Incorporated,
Philippines." San Miguel is with SMC logo, while Beer na Beer has no logo. San Miguel’s price is P7.00
per bottle, while Beer na Beer’s price is P4.25 per bottle.
Based on the dissimilarity in their dominant features as well as in sound, spelling & appearance, Beer na
Beer cannot be said to be similarly confusing with San Miguel Pale Pilsen.
The fact that the words ‘pale pilsen’ are part of ABI’s trademark does not constitute an infringement of
SMC’s trademark: SAN MIGUEL PALE PILSEN, for “pale pilsen” are generic words descriptive of the
color (“pale”), of a type of beer (“pilsen”), which is a light bohemian beer with a strong hops flavor that
originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. “Pilsen” is a
“primarily geographically descriptive word,” hence, non-registrable and not appropriable by any beer
manufacturer. The words “pale pilsen” may not be appropriated by SMC for its exclusive use even if they
are part of its registered trademark: SAN MIGUEL PALE PILSEN. No one may appropriate generic or
descriptive words. They belong to the public domain.
No unfair competition. Sec 29, Republic Act No. 166 as amended describes unfair competition as the
employment of deception or any other means contrary to good faith by which a person shall pass off the
goods manufactured by him or in which he deals, or his business, or services, for those of another who
has already established goodwill for his similar goods, business or services, or any acts calculated to
produce the same result. Therefore, the universal test question is whether the public is likely to be
deceived.
For this situation, the utilization of comparative yet unidentical bottle size, shape and shading is not
unlawful as suitably clarified. The 320 ml limit is the standard endorsed by the Department of Trade. The
golden tone is a practical component for it forestalls transmission of light and gives the most extreme
assurance to beer. Being of useful or regular use, SMC's being the first to utilize does not give SMC
selective option to such use. The bottle shape is typically normalized similarly as a ketchup or vinegar
bottle with its recognizable lengthened neck, consequently excusing the participation of dishonesty or the
goal to hoodwink general society by ABI.
Moreover, buyers generally order their beer by brand in the supermarket, sari-sari stores, restaurants; thus
dismissing the idea that Beer na Beer can be passed off as San Miguel Beer. There can be no confusion or
the likelihood of deception among the consumers.