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LIP Digest Compiled

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LIP – Case Digests*2010-2011 Page 1

Copyright 1. G.R. No. L-36402. March 16, 1987.] FILIPINO SOCIETY OF COMPOSERS, AUTHORS AND PUBLISHERS, INC., plaintiffappellant, vs. BENJAMIN TAN, defendant-appellee. Plaintiff-appellant: *is the owner of certain musical compositions among which are the songs entitled: "Dahil Sa Iyo", "Sapagkat Ikaw Ay Akin," "Sapagkat Kami Ay Tao Lamang" and "The Nearness Of You." *filed a complaint with the lower court for infringement of copyright against defendant-appellee for allowing the playing in defendant-appellee's restaurant of said songs copyrighted in the name of the former. Defendant-appellee, *countered that the complaint states no cause of action. While not denying the playing of said copyrighted compositions in his establishment, appellee maintains that the mere singing and playing of songs and popular tunes even if they are copyrighted do not constitute an infringement under the provisions of Section 3 of the Copyright Law. ISSUE: whether or not the playing and signing of musical compositions which have been copyrighted under the provisions of the Copyright Law (Act 3134) inside the establishment of the defendant-appellee constitute a public performance for profit within the meaning and contemplation of the Copyright Law of the Philippines; and assuming that there were indeed public performances for profit, whether or not appellee can be held liable therefor. Held: NO. It has been held that "The playing of music in dine and dance establishment which was paid for by the public in purchases of food and drink constituted "performance for profit" within a Copyright Law." Thus, it has been explained that while it is possible in such establishments for the patrons to purchase their food and drinks and at the same time dance to the music of the orchestra, the music is furnished and used by the orchestra for the purpose of inducing the public to patronize the establishment and pay for the entertainment in the purchase of food and drinks. The defendant conducts his place of business for profit, and it is public; and the music is performed for profit. Nevertheless, appellee cannot be said to have infringed upon the Copyright Law. Appellee's allegation that the composers of the contested musical compositions waived their right in favor of the general public when they allowed their intellectual creations to become property of the public domain before applying for the corresponding copyrights for the same is correct. The Supreme Court has ruled that "Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides among other things that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within the (60) days if made elsewhere, failure of which renders such creation public property." Indeed, if the general public has made use of the object sought to be copyrighted for thirty (30) days prior to the copyright application the law deems the object to have been donated to the public domain and the same can no longer be copyrighted.Under the circumstances, it is clear that the musical compositions in question had long become public property, and are therefore beyond the protection of the Copyright Law.

LIP – Case Digests*2010-2011 Page 2

Atty. Rodriguez’ Dissent: Isn’t Copyright is protected from the moment of creation?

2. G.R. No. 115758. March 19, 2002.] ELIDAD C. KHO, doing business under the name and style of KEC COSMETICS LABORATORY, petitioner, vs. HON. COURT OF APPEALS, SUMMERVILLE GENERAL MERCHANDISING and COMPANY, and ANG TIAM CRAY, respondents. Petitioner complaint alleges: *that petitioner, doing business under the name and style of KEC Cosmetics Laboratory, is the registered owner of the copyrights Chin Chun Su and Oval Facial Cream Container/Case, as shown by Certificates of Copyright Registration No. 0-1358 and No. 0-3678; *that she also has patent rights on Chin Chun Su & Device and Chin Chun Su for medicated cream after purchasing the same from Quintin Cheng, the registered owner thereof in the Supplemental Register of the Philippine Patent Office on February 7, 1980 under Registration Certificate No. 4529; *that respondent Summerville advertised and sold petitioner’s cream products under the brand name Chin Chun Su, in similar containers that petitioner uses, thereby misleading the public, and resulting in the decline in the petitioner’s business sales and income; and, that the respondents should be enjoined from allegedly infringing on the copyrights and patents of the petitioner. Respondents allege: *Summerville is the exclusive and authorized importer, re-packer and distributor of Chin Chun Su products manufactured by Shun Yi Factory of Taiwan; *that the said Taiwanese manufacturing company authorized Summerville to register its trade name Chin Chun Su Medicated Cream with the Philippine Patent Office and other appropriate governmental agencies; that KEC Cosmetics Laboratory of the petitioner obtained the copyrights through misrepresentation and falsification; and, that the authority of Quintin Cheng, assignee of the patent registration certificate, to distribute and market Chin Chun Su products in the Philippines had already been terminated by the said Taiwanese Manufacturing Company. ISSUE: WON KHO is protected under the law. Held: NO. 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. Petitioner has no right to support her claim for the exclusive use of the subject trade name and its container. The name and container of a beauty cream product are proper subjects of a trademark inasmuch as the same falls squarely within its definition. 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 the right to the exclusive use of the same for the reason that they are not appropriate subjects of the said intellectual

LIP – Case Digests*2010-2011 Page 3

rights. Consequently, a preliminary injunction order cannot be issued for the reason that the petitioner has not proven that she has a clear right over the said name and container to the exclusion of others, not having proven that she has registered a trademark thereto or used the same before anyone did.

3. [G.R. No. 76193. November 9, 1989.] UNITED FEATURE SYNDICATE, INC., petitioner, vs. MUNSINGWEAR CREATION MANUFACTURING COMPANY, respondent. Petitioner’s claim: Petitioner is asking for the cancellation of the registration of trademark CHARLIE BROWN (Registration No. SR. 4224) in the name of respondent MUNSINGWEAR, alleging that petitioner is damaged by the registration of the trademark CHARLIE BROWN of T-Shirts under Class 25 with the Registration No. SR-4224 dated September 12, 1979 in the name of Munsingwear Creation Manufacturing Co., Inc., on the following grounds: (1) that respondent was not entitled to the registration of the mark CHARLIE BROWN, & DEVICE at the time of application for registration; (2) that CHARLIE BROWN is a character creation or a pictorial illustration, the copyright to which is exclusively owned worldwide by the petitioner; (3) that as the owner of the pictorial illustration CHARLIE BROWN, petitioner has since 1950 and continuously up to the present, used and reproduced the same to the exclusion of others; (4) that the respondentregistrant has no bona fide use of the trademark in commerce in the Philippines prior to its application for registration. Respondent’s claim: -It uses, the trademark "CHARLIE BROWN" & "DEVICE" on children's wear such as T-shirts, undershirts, sweaters, brief and sandos, in class 25; whereas "CHARLIE BROWN" is used only by petitioner as character, in a pictorial illustration used in a comic strip appearing in newspapers and magazines. It has no trademark significance and therefore respondentregistrant's use of "CHARLIE BROWN" & "DEVICE" is not in conflict with the petitioner's use of "CHARLIE BROWN" -Relied on the ruling on October 2, 1984 in which the Director of the Philippine Patent Office rendered a decision in this case holding that a copyright registration like that of the name and likeness of CHARLIE BROWN may not provide a cause of action for the cancellation of a trademark registration. Issue:WHETHER THE RESPONDENT COURT OF APPEALS COMMITTED GRAVE ABUSE OF DISCRETION AMOUNTING TO EXCESS OF JURISDICTION WHEN BY DISMISSING THE APPEAL TO IT FROM THE DECISION OF THE DIRECTOR OF PATENTS, IT KNOWINGLY DISREGARDED ITS OWN DECISION IN AC-GR. SP. NO. 0342, WHICH WAS AFFIRMED BY THIS HONORABLE SUPREME COURT TO THE EFFECT THAT A COPYRIGHTED CHARACTER MAY NOT BE APPROPRIATED AS A TRADEMARK BY ANOTHER UNDER PRESIDENTIAL DECREE NO. 49. S.C. Ruling: The petitioner is impressed with merit. Since the name "CHARLIE BROWN" and its pictorial representation were covered by a copyright registration way back in 1950 the same are entitled to protection under PD No. 49, otherwise known as the "Decree on Intellectual Property".

LIP – Case Digests*2010-2011 Page 4

Aside from its copyright registration, petitioner is also the owner of several trademark registrations and application for the name and likeness of "CHARLIE BROWN" which is the duly registered trademark and copyright of petitioner United Feature Syndicate Inc. as early as 1957 and additionally also as TV SPECIALS featuring the "PEANUTS" characters "CHARLIE BROWN”. It is undeniable from the records that petitioner is the actual owner of said trademark due to its prior registration with the Patent's Office.

4. G.R. Nos. L-76649-51. August 19, 1988.] 20TH CENTURY FOX FILM CORPORATION, petitioner, vs. COURT OF APPEALS, EDUARDO M. BARRETO, RAUL SAGULLO and FORTUNE LEDESMA, respondents. Petitioner’s claim: The petitioner maintains that the lower court issued the questioned search warrants after finding the existence of a probable cause justifying their issuance. According to the petitioner, the lower court arrived at this conclusion on the basis of the depositions of applicant NBI's two witnesses which were taken through searching questions and answers by the lower court. Respondent’s claim: The respondent posits that the three questioned search warrants against the private respondents should be lifeted on the ground that it acted on the application for the issuance of the said search warrants and granted it on the misrepresentations of applicant NBI and its witnesses that infringement of copyright or a piracy of a particular film have been committed. They also maintained that the presentation of the master tapes of the copyrighted films from which the pirated films were allegedly copied, was necessary for the validity of search warrants against those who have in their possession the pirated films. The petitioner's argument to the effect that the presentation of the master tapes at the time of application may not be necessary as these would be merely evidentiary in nature and not determinative of whether or not a probable cause exists to justify the issuance of the search warrants is not meritorious. S.C. Ruling: The presentation of the master tapes of the copyrighted films from which the pirated films were allegedly copied, was necessary for the validity of search warrants against those who have in their possession the pirated films. The petitioner's argument to the effect that the presentation of the master tapes at the time of application may not be necessary as these would be merely evidentiary in nature and not determinative of whether or not a probable cause exists to justify the issuance of the search warrants is not meritorious. The court cannot presume that duplicate or copied tapes were necessarily reproduced from master tapes that it owns. The application for search warrants was directed against video tape outlets which allegedly were engaged in the unauthorized sale and renting out of copyrighted films belonging to the petitioner pursuant to P.D. 49. The essence of a copyright infringement is the similarity or at

R. FERNANDO. FELICIDAD C. respondents. Respondent stressed that (1) the book DEP is the product of her independent researches. be copied. Robles being substantially familiar with the contents of petitioners' works. 1999. HABANA. copied. (2) whether or not there was animus furandi on the part of respondent when they refused to withdraw the copies of CET from the market despite notice to withdraw the same. petitioners alleged that in 1985. The plagiarism. and her failure to acknowledge the same in her book is an infringement of petitioners' copyrights. or even a large portion of it. If so much is taken that the . No.LIP – Case Digests*2010-2011 Page 5 least substantial similarity of the purported pirated works to the copyrighted work. This linkage of the copyrighted films to the pirated films must be established to satisfy the requirements of probable cause. ISSUE: (1) whether or not. the applicant must present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of the former. incorporation and reproduction of particular portions of the book CET in the book DEP. and without securing their permission. and denied the allegations of plagiarism and copying that petitioners claimed. When is there a substantial reproduction of a book? It does not necessarily require that the entire copyrighted work. (2) DEP followed the scope and sequence or syllabus which are common to all English grammar writers as recommended by the Association of Philippine Colleges of Arts and Sciences (APCAS). without the authority or consent of petitioners. CINCO and JOVITA N.. and was not a copy of any existing valid copyrighted book. Hence. lifted. ROBLES and GOODWILL TRADING CO. plagiarized and/or transposed certain portions of their book CET. Respondent’s Contention: On November 28. studies and experiences. G. despite the apparent textual. Mere allegations as to the 5. ALICIA L. 131522. as guides. The textual contents and illustrations of CET were literally reproduced in the book DEP. respondent Robles filed her answer . so any similarity between the respondents book and that of the petitioners was due to the orientation of the authors to both works and standards and syllabus. respondents committed no copyright infringement." Respondent interposed a counterclaim for damages on the ground that bad faith and malice attended the filing of the complaint. INC.] PACITA I. because petitioner Habana was professionally jealous and the book DEP replaced CET as the official textbook of the graduate studies department of the Far Eastern University. vs. and the misrepresentations of respondent Robles that the same was her original work and concept adversely affected and substantially diminished the sale of the petitioners' book and caused them actual damages by way of unrealized income. petitioners. 49 RULING: We believe that respondent Robles' act of lifting from the book of petitioners substantial portions of discussions and examples. respondent Felicidad C. and (3) whether or not respondent Robles abused a writer's right to fair use. 1988.. and (3) the similarities may be due to the authors' exercise of the "right to fair use of copyrigthed materials. Petitioner’s contention: In the complaint. July 19. thematic and sequential similarity between DEP and CET. in violation of Section 11 of Presidential Decree No.

there is an infringement of copyright and to an injurious extent. It may be correct that the books being grammar books may contain materials similar as to some technical contents with other grammar books. The essence of intellectual piracy should be essayed in conceptual terms in order to underscore its gravity by an appropriate understanding thereof. of anything the sole right to do which is conferred by statute on the owner of the copyright. How can similar/identical examples not be considered as a mark of copying? We consider as an indicia of guilt or wrongdoing the act of respondent Robles of pulling out from Goodwill bookstores the book DEP upon learning of petitioners' complaint while pharisaically denying petitioners' demand. protected by law. Petitioners' work as authors is the product of their long and assiduous research and for another to represent it as her own is injury enough. In the case at bar. The copying must produce an "injurious effect". such as the segment about the "Author Card".LIP – Case Digests*2010-2011 Page 6 value of the original work is substantially diminished. there is a clear case of appropriation of copyrighted work for her benefit that respondent Robles committed. all the pages cited by petitioners to contain portion of their book College English for Today were eliminated. and infringement of copyright. Hence. In copyrighting books the purpose is to give protection to the intellectual product of an author. that is sufficient in point of law to constitute piracy. To constitute infringement. it is not necessary that the whole or even a large portion of the work shall have been copied. consists in the doing by any person. we believe that even if petitioners and respondent Robles were of the same background in terms of teaching experience and orientation. Here. the numerous pages that the petitioners presented showing similarity in the style and the manner the books were presented and the identical examples can not pass as similarities merely because of technical consideration. copying alone is not what is prohibited. or piracy. it is not an excuse for them to be identical even in examples contained in their books. there is no question that petitioners presented several pages of the books CET and DEP that more or less had the same contents. Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright. The respondents claim that their similarity in style can be attributed to the fact that both of them were exposed to the APCAS syllabus and their respective academic experience. and. However. the amount of matter copied from the copyrighted work is an important consideration. In determining the question of infringement. This is precisely what the . the injury consists in that respondent Robles lifted from petitioners' book materials that were the result of the latter's research work and compilation and misrepresented them as her own. It was further noted that when the book DEP was re-issued as a revised version. The similarities in examples and material contents are so obviously present in this case. In cases of infringement. If so much is taken that the value of the original is sensibly diminished. teaching approach and methodology are almost identical because they were of the same background. She circulated the book DEP for commercial use did not acknowledged petitioners as her source. However. therefore. or the labors of the original author are substantially and to an injurious extent appropriated by another. without the consent of the owner of the copyright. the work is appropriated. which is a synonymous term in this connection.

and NORTH EDSA MARKETING.” and the payment to Pearl and Dean of compensatory damages in the amount of P20million. respondents. Claiming that both SMI and NEMI failed to meet all its demands. INCORPORATED. The advertising light boxes were marketed under the trademark “Poster Ads”. August 15. pictorial illustrations. is the light box depicted in such engineering drawings ipso facto also protected by such copyright? HELD: NO. . The rights granted by this Decree shall. unfair competition and damages.LIP – Case Digests*2010-2011 Page 7 law on copyright protected. 148222. Pearl and Dean employed the services of Metro Industrial Services to manufacture its advertising displays.1 (b). No. 6.). Quotations from a published work if they are compatible with fair use and only to the extent justified by the purpose. subsist with respect to any of the following works: xxx xxx xxx (O) Prints. received reports that exact copies of its light boxes were installed at SM malls. Metro Industrial Services. INCORPORATED. from the moment of creation. Pearl and Dean (Phil. if appearing on the work. Pearl and Dean sent a letter to both SMI and NEMI enjoining them to cease using the subject light boxes and to remove the same from SMI’s establishments.R. From 1981 to about 1988. Two years later. Petitioner P & D’s complaint was that SMI infringed on its copyright over the light boxes when SMI had the units manufactured by Metro and EYD Rainbow Advertising for its own account. labels. the company formerly contracted by Pearl and Dean to fabricate its display units. vs. These units utilize specially printed posters sandwiched between plastic sheets and illuminated with back lights. 2. INCORPORATED. SHOEMART. Pearl and Dean filed this instant case for infringement of trademark and copyright. After. In the light of its discoveries. petitioner’s position was premised on its belief that its copyright over the engineering drawings extended ipso facto to the light boxes depicted or illustrated in said drawings First. petitioner’s application for a copyright certificate clearly stated that it was for a class “O” work under Section 2 (O) of PD 49 (The Intellectual Property Decree) which was the statute then prevailing. and box wraps. SMI suspended the leasing of light boxes and NEMI took down its advertisements for “Poster Ads” from the lighted display units in SMI’s stores. under Section 184. is a corporation engaged in the manufacture of advertising display units simply referred to as light boxes. SMI approved the proposal and ten (10) light boxes were subsequently fabricated by Metro Industrial for SMI.] PEARL & DEAN (PHIL. including quotations from newspaper articles and periodicals in the form of press summaries are allowed provided that the source and the name of the author. G. It also demanded the discontinued use of the trademark “Poster Ads. tags. Pearl and Dean. ISSUE: Whether the engineering or technical drawings of an advertising display unit (light box) are granted copyright protection (copyright certificate of registration). Upon receipt of the demand letter. Inc. advertising copies. are mentioned. Said Section 2 expressly enumerated the works subject to copyright: SEC. petitioner. offered to construct light boxes for Shoemart’s chain of stores. 2003. Pearl and Dean was able to secure a Certificate of Copyright Registration over these illuminated display units.). Obviously.

INC. August 28. Copyright.. 110318. and.R. and WARNER BROTHERS. even as we find that P & D indeed owned a valid copyright. UNIVERSAL CITY STUDIOS. petitioners. TWENTIETH CENTURY FOX FILM CORPORATION. 49.] COLUMBIA PICTURES.. This being so. and DANILO A. vs. But this was not the case. Petitioner’s claim: -Petitioners. Being a mere statutory grant. and sought its assistance in their anti-film piracy drive. labels. and on terms and conditions specified in the statute. and for the good reason: the light box was not a literary or artistic piece which could be copyrighted under the copyright law.. of pirated video tapes of copyrighted films all of which were enumerated in a list attached to the application. that is. respondents. 1996. NBI Senior Agent Lauro C. [G. advertising copies. PARAMOUNT PICTURES CORPORATION. among others.” What the law does not include. Acting on such request. then no doubt they would have been guilty of copyright infringement. as amended. THE WALT DISNEY COMPANY. ORION PICTURES CORPORATION. INC. it excludes. is purely a statutory right. It may be obtained and enjoyed only with respect to the subjects and by the persons. if SMI and NEMI reprinted P & D’s technical drawings for sale to the public without license from P & D.LIP – Case Digests*2010-2011 Page 8 xxx xxx xxx Although petitioner’s copyright certificate was entitled “Advertising Display Units” (which depicted the box-type electrical devices). thru counsel lodged a formal complaint with the National Bureau of Investigation for violation of PD No. video cassettes and/or laser disc recordings equipment and other machines and . SMI’s and NEMI’s acts complained of by P & D were to have units similar or identical to the light box illustrated in the technical drawings manufactured by Metro and EYD Rainbow Advertising. for leasing out to different advertisers. the same could have referred only to the technical drawings within the category of “pictorial illustrations. The strict application1[9] of the law’s enumeration in Section 2 prevents us from giving petitioner even a little leeway. PELINDARIO. Reyes applied for a search warrant with the court a quo against Sunshine seeking the seizure.” In fine. pictorial illustrations. television sets.” Stated otherwise. Was this an infringement of petitioner’s copyright over the technical drawings? We do not think so. it can cover only the works falling within the statutory enumeration or description. P & D secured its copyright under the classification class “O” work. UNITED ARTISTS CORPORATION. even if its copyright certificate was entitled “Advertising Display Units. its claim of copyright infringement cannot be sustained. in the strict sense of the term. neither could the lack of statutory authority to make the light box copyrightable be remedied by the simplistic act of entitling the copyright certificate issued by the National Library as “Advertising Display Units. SUNSHINE HOME VIDEO.” It could not have possibly stretched out to include the underlying light box. No. Accordingly. 7. petitioner’s copyright protection extended only to the technical drawings and not to the light box itself because the latter was not at all in the category of “prints. INC. tags and box wraps. COURT OF APPEALS. And no less clearly. the rights are limited to what the statute confers. INC.

-According to petitioners. It is further argued that any search warrant so issued in accordance with all applicable legal requirements is valid. which had supervened as a doctrine promulgated at the time of the resolution of private respondents' motion for reconsideration seeking the quashal of the search warrant for failure of the trial court to require presentation of the master tapes prior to the issuance of the search warrant. after complying with what the law then required. petitioners. although the 20th Century Fox case had not yet been decided. Ruling: There is merit in petitioners' impassioned and well-founded argumentation. the supposed pronunciamento in said case regarding the necessity for the presentation of the master tapes of the copyrighted films for the validity of search warrants should at most be understood to merely serve as a guidepost in determining the existence of probable cause in copyright infringement cases where there is doubt as to the true nexus between the master tape and the pirated copies. the lower court determined that there was probable cause for the issuance of a search warrant. 8. would have constituted grave abuse of discretion. there can be no finding of probable cause for the issuance of a search warrant. Article III of the Constitution and Section 3... and CASEY FRANCISCO. the presentation of master tapes of the copyrighted films is always necessary to meet the requirement of probable cause and that. showing. otherwise a careless interpretation thereof could unfairly fault the writer with the vice of overstatement and the reader with the fallacy of undue generalization. goes into the very essence of probable cause. Hence. 1999. in the absence thereof. they posit that there was no law that was retrospectively applied. The ruling in 20th Century Fox was merely an application of the law on probable cause. 108946. as the basis for a finding of probable cause for the issuance of a search warrant in copyright infringement cases involving videograms. Respondent’s claim: Private respondents predictably argue in support of the ruling of the Court of Appeals sustaining the quashal of the search warrant by the lower court on the strength of that 20th Century Fox ruling which. S. JR.] FRANCISCO G. . lease or disposition of videograms tapes in the premises.C. GABRIEL ZOSA. No. Judicial dicta should always be construed within the factual matrix of their parturition.R. INC. respondents. and BJ PRODUCTIONS. An objective and careful reading of the decision in said case could lead to no other conclusion than that said directive was hardly intended to be a sweeping and inflexible requirement in all or similar copyright infringement cases. At the time of the issuance of the search warrant involved here. In fine. they claim.. WILLIAM ESPOSO. Section 2. JOAQUIN. Rule 126 of the 1985 Rules on Criminal Procedure embodied the prevailing and governing law on the matter. To refrain from applying the 20th Century Fox ruling. as the ruling in 20th Century Fox may appear to do. a pronouncement which was not existent at the time of such determination. reproduction. that in copyright infringement cases. JR. since the law had been there all along. FELIPE MEDINA. vs.LIP – Case Digests*2010-2011 Page 9 paraphernalia used or intended to be used in the unlawful exhibition. January 28. G. It is evidently incorrect to suggest. HONORABLE FRANKLIN DRILON. sale. for the lower court could not possibly have been expected to apply.

otherwise known as the DECREE ON INTELLECTUAL PROPERTY. For this reason. 1987.R.D. 1985. of Rhoda and Me. 49. S. Issue: Whether the format and mechanics of a TV show may be subject of a copyright. 1987 entitled "An Act Creating the Videogram Regulatory Board" with broad powers to regulate and supervise the videogram industry (hereinafter briefly referred to as the BOARD). inter alia: . VIDEOGRAM REGULATORY BOARD. dated January 28. procedure. 1994 amended the National Internal Revenue Code providing. Ruling: To begin with the format of a show is not copyrightable. L-75697. CITY MAYOR and CITY TREASURER OF MANILA. regardless of the form in which it is described. M922. a dating game show aired from 1970 to 1977 claims that there is an infringement on the copyright of the show "RHODA AND ME" both in content and in the execution of the video presentation are established because respondent's "IT'S A DATE" is practically an exact copy of complainant's "RHODA AND ME" because of substantial similarities. concept. respondents. method of operation. They contend that petitioner BJPI's copyright covers only a specific episode of Rhoda and Me and that the formats or concepts of dating game shows are not covered by copyright protection under P. 1986 by petitioner on his own behalf and purportedly on behalf of other videogram operators adversely affected. 1971. the substance of the television productions complainant's "RHODA AND ME" and Zosa's "IT'S A DATE" is that two matches are made between a male and a female. 49.LIP – Case Digests*2010-2011 Page 10 Petitioner’s Claim: Petitioner BJ Productions. enumerates the classes of work entitled to copyright protection. does not include the format or mechanics of a television show. (BJPI) is the holder/grantee of Certificate of Copyright No. No. It assails the constitutionality of Presidential Decree No. and the two couples are treated to a night or two of dining and/or dancing at the expense of the show. Respondent’s Claim: Both public and private respondents maintain that petitioners failed to establish the existence of probable cause due to their failure to present the copyrighted master videotape of Rhoda and Me. Section 2 of P. process. the protection afforded by the law cannot be extended to cover them. The copyright does not extend to an idea. Inc. Presidential Decree No. vs. system. On November 5. The Decree was promulgated on October 5.] VALENTIN TIO doing business under the name and style of OMI ENTERPRISES. explained. both single. 1985 and took effect on April 10. MINISTER OF FINANCE. No. The major concepts of both shows is the same. METRO MANILA COMMISSION. or embodied in such work. [G. Any difference appear mere variations of the minor concepts. 1986. No. FACTS: This petition was filed on September 1. fifteen (15) days after completion of its publication in the Official Gazette.C. June 18. illustrated. 9. a month after the promulgation of the abovementioned decree.D. principle. petitioner. As may [be] gleaned from the evidence on record. or discovery.

G. the Greater Manila Theaters Association. L-24919. that there was an over regulation on the video industry. the need for its regulation was apparent. video establishments are seen to have proliferated in many places notwithstanding the 30% tax imposed. THE DIRECTOR OF PATENTS. On the contrary. 1987 over regulates the video industry. II. not to mention the fact that the activities of video establishments are virtually untaxed since mere payment of Mayor's permit and municipal license fees are required to engage in business. petitioners applied for Letters Patent covering said invention to respondent Director of Patents claiming the right of priority granted to foreign applicants under . an annual tax of five pesos. citizens and residents of the United States. — There shall be collected on each processed video-tape cassette. ISSUE: WON P.] JAMES HOWARD BOOTHE and JOHN MORTON. petitioners. We find no clear violation of the Constitution which would justify us in pronouncing Presidential Decree No. claim to be the inventors of a new antibiotic designated as "tetracycline". considering "the unfair competition posed by rampant film piracy. January 28. ready for playback. hereinafter collectively referred to as the Intervenors.LIP – Case Digests*2010-2011 Page 11 SEC. Held: NO. Patents 10. No. chemists. and losses in government revenues due to the drop in theatrical attendance. among other tings. 1986 has not brought about the "demise" of the video industry. upon the allegations that intervention was necessary for the complete protection of their rights and that their "survival and very existence is threatened by the unregulated proliferation of film piracy. J. over petitioner's opposition. a new derivative of chlortetracycline (popularly known as "aureomycin") PETITIONER’S CLAIMS: On February 19. 1987 as unconstitutional and void. Provided. On October 23. Importers and Distributors Association of the Philippines.: Petitioners James Howard Boothe and John Morton II. vs. While the underlying objective of the DECREE is to protect the moribund movie industry. the erosion of the moral fiber of the viewing public brought about by the availability of unclassified and unreviewed video tapes containing pornographic films and films with brutally violent sequences." The Intervenors were thereafter allowed to file their Comment in Intervention. 1986. 1980. there is no question that public welfare is at bottom of its enactment. and Philippine Motion Pictures Producers Association. In fine. Video Tapes. 134. They contend. That locally manufactured or imported blank video tapes shall be subject to sales tax. 1954. were permitted by the Court to intervene in the case. Being a relatively new industry. respondent.R. MELENCIO-HERRERA. petitioner has not overcome the presumption of validity which attaches to a challenged statute. The court does not share petitioner's fears that the video industry is being overregulated and being eased out of existence as if it were a nuisance. Integrated Movie Producers. The enactment of the Decree since April 10.D. regardless of length.

Consequently. 1956". petitioners filed with respondent Director a legalized copy of their Application for Letters Patent in the United States for the same invention (U. 1963. Receipt of petitioners' application was acknowledged by respondent Director on March 6. Serial No.S. Respondent Director opined that the portions subsequently supplied in the local application are not new matter a comparison between the foreign and local applications showed that the foreign application included the missing portions of the local one. — An application for patent for an invention filed in this country by any person who has previously regularly filed an application for a patent for the same invention in a foreign country. since the latter date would fall within the one-year period prior to March 5. 342556). 165 KNOWN AS THE PATENT LAW. Said legalized copy indicated that the application in the United States was filed on March 16. shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country: Provided. ISSUE: WHETHER RESPONDENT DIRECTOR OF PATENTS ERRED IN HOLDING THAT PETITIONERS' APPLICATION. and specific. inasmuch as said application was not complete within the meaning of Rules 47 and 48 of the Revised Rules of Practice in Patent Case when first filed on March 5. MAY NOT BE TREATED AS FILED UNDER SECTION 15 AS AMENDED. the instant application is to be considered an ordinary application.LIP – Case Digests*2010-2011 Page 12 section 15 of the Patent Law (RA 165). RESPONDENT’s CLAIM Respondent uphold the "Philippine Patent No. The purpose of requiring a definite and accurate description of the process is to apprise the public of what the patentee claims as his invention. convention or law affords similar privileges to citizens of the Philippines. It is essential to the validity of Letters Patent that the specifications be full. HELD: NO. respondent Direct qualified that petitioners' application may be considered complete only on April 14. respondent claims that the "Specification" petitioner submitted in their application was "incomplete". 1953 if their application is considered filed in the Philippines as of March 5. definite. Petitioner claims to benefit from Section 15 of the Patent Law. However. 254 — November 29. 1954 when the certified copy of the foreign application was submitted. 1954. to inform the Courts as to what . 1954. 1954. It is imperative that the application be complete in order that it may be accepted. Also. which refers to a local Patent obtained by Pfizer and Co. which by treaty. On April 14. not entitled to the right of priority granted by section 15 of the Patent Law.. That the application in this country is filed within twelve months from the earliest date on which such foreign application was filed and a certified copy of the foreign application together with a translation thereof into English… Petitioners claim that it would be entitled to the priority date of March 16. 1954. which provides that: Section 15. Application previously filed abroad. presumably covering the same invention. 1954. OF REPUBLIC ACT NO.

] PARKE. and. 1954 was far from complete. Caloocan City Branch. with preliminary injunction against Doctors' Pharmaceuticals. a motion to punish defendants for contempt. did not err in converting petitioners' application into an ordinary application filed on April 14. causing to be sold or causing to be used any 'Chloramphenicol Palmitate' not manufactured by plaintiff or plaintiff's wholly-owned subsidiary. I "was granted a compulsory license to manufacture. temporarily restrained the defendants "from directly or indirectly selling. 1954. in advertising and selling the medicine of Doctors' Pharmaceutica called "Venimicetin Suspension" have falsely and deceptively concealed that the same contains "Chloramphenicol Palmitate" and falsely and deceptively represented the same to contain "Chloramphenicol". the plaintiff filed on May 24. Inc. plaintiff-appellant. that the complaint states no cause of action against them since defendant No. Petitioners' application could be deemed as complete only on July 2. using. 1966. and (2) unfair competition. Davis & Company. therefore. Facts: On May 5. DOCTORS' PHARMACEUTICALS.. Parke. What petitioners claimed as their invention was not completely determinable therefrom. by concealing that said medicine contains "Chloramphenicol". Parke.A. causing to be sold. INC. Davis & Company. 1966. U. That defect was one of substance and not merely one of form. defendants-appellees. not only for their having failed to complete their application within the four-month period provided for by Rules 47 and 48. (1) infringement of patent. by selling. the defendants filed a Motion to Dismiss. May 29.." . the Court of First Instance issued an order which. Respondent Director.S. G. a complaint for damages for infringement of patent and unfair competition. 11. using or causing to be used "Chloramphenicol Palmitate" in their medicine called "Venimicetin Suspension". by deceiving and misleading the purchasers who are made to believe that "Venimicetin Suspension" is covered by a compulsory license from the plaintiff. and V-LAB DRUGHOUSE CORPORATION. but also for their having failed to file a complete application within twelve months from March 16. 1966. It was also alleged that the defendant V-Lab Drughouse Corporation. L-27361. Before the court could act on the plaintiff's motion for contempt. 1963 when they submitted the additional pages on the Specifications and Claims. an invention disclosed in a previously filed application must be described within the instant application in such a manner as to enable one skilled in the art to use the same for a legally adequate utility. Revised Rules of Practice in Patent Cases. vs. No. dated May 25. the date of the foreign application For. and to convey to competing manufacturers and dealers information of exactly what they are bound to avoid. among others. 1953. filed with the Court of First Instance of Rizal. Plaintiff Parke. among others. 6. On May 6.R. and as required of them by Paper No. Davis & Company alleged that the defendants are guilty of. use and sell its own brands of medicinal preparation containing 'chloramphenicol. DAVIS & COMPANY. The specification which petitioners submitted on March 5. a foreign corporation organized and existing under the laws of the State of Michigan. alleging. Inc. 1981. to be entitled to the filing date of the patent application. and V-Lab Drughouse Corporation. 1966." Alleging that the defendants have not complied with such order.LIP – Case Digests*2010-2011 Page 13 they are called upon to construe.

without the consent or authority of the plaintiff as the holder of Letters Patent No. For defendants would then be guilty of infringement of patent by selling. Thus. 279) are the same. 1966. it necessarily would have to conclude that the complaint states causes of action for infringement of patent and for unfair competition. As can be gleaned from the appealed order. the court should hypothetically assume the truth of the factual allegations of the complaint and determine whether on the basis thereof. for the purpose of the motion to dismiss. the allegations in the complaint that "Chloramphenicol" and "Chloramphenicol Palmitate" are entirely different substances and that "Venimicetin Suspension" actually contains "Chloramphenicol Palmitate" and not "Chloramphenicol" as indicated in its package and label. The existence of two patents separately covering said substances simply militates against said factual assumption and requires the presentation of evidence sufficient to convince the court that said substances are indeed the same. that in advertising and selling their product "Venimicetin Suspension. namely. using and causing to be used "Chloramphenicol Palmitate". the lower court had ruled against its veracity. the defendants filed their Reply to Opposition alleging. namely. 50. 279. Had the lower court hypothetically assumed as true. that while the packages and labels of defendants' "Venimicetin Suspension" indicate that the same contains "Chloramphenicol". the complaint for damages for infringement of patent and unfair competition. 1966. instead of hypothetically assuming the truth of the plaintiff's allegation that "Chloramphenicol" and "Chloramphenicol Palmitate" are two different substances. causing to be sold. which dismissed the complaint on the ground of lack of cause of action ISSUE: Whether or not the lower court correctly dismissed the complaint for damages for infringement of patent and unfair competition on the ground of failure to state a cause of action. defendants' contention that the complaint states no cause of action. "Chloramphenicol Palmitate". This is clearly an error considering that the said assumed fact cannot qualify as something which the court could take judicial notice of nor was it competent to so find in the absence of evidence formally presented to that effect. It is axiomatic that in resolving a motion to dismiss a complaint on the ground of failure to state a cause of action. Letters Patent No. instead of hypothetically assuming the truth of the factual allegations of the complaint. 50) and "Chloramphenicol Palmitate" (the substance covered by Letters Patent No. the pertinent portions of which heretofore quoted. the truth of the matter is that said product does not contain said substance but the substance covered by Letters Patent No. . On June 27. Plaintiff pointed out that the defendants have confused the substance which is the subject matter of the complaint. "Chloramphenicol". "Chloramphenicol Palmitate".LIP – Case Digests*2010-2011 Page 14 On June 17. 1966. among others. among others. the plaintiff filed its Opposition to Motion to Dismiss controverting." never do they state that the same contains "Chloramphenicol Palmitate". with the Letters Patent subject of the compulsory licensing case. namely. 1966. On July 5. the plaintiff filed its Rejoinder to Reply to Opposition stating. the lower court premised its ruling that there is no cause of action for infringement of patent on the assumption that "Chloramphenicol" (the substance covered by Letters Patent No. HELD: No. Letters Patent No. 279. The Court of First Instance of Rizal issued the order dated August 22. namely. it would not have dismissed. Had the lower court applied the foregoing formula. the complainant is entitled to the relief demanded. namely. For. with the substance covered by the compulsory licensing case. among others. and the Letters Patent subject of the complaint. on the ground of failure to state a cause of action. the lower court had ruled against their veracity and consequently concluded that the complaint states no cause of action.

on the ground of failure to state a cause of action. 166 provides. L-32160. castings and devices designed and intended of tiles embodying plaintiff. and that it is covered by a compulsory license from the plaintiff.A. 165 provide: "SEC. RESPONDENT’S CLAIM: On April 14. CONRADO G. Aquino and Sons alleging that:  he is the original first and sole inventor of certain new and useful improvements in the process of making mosaic pre-cast tiles. and to use the patented process for the purpose of industry or commerce. Conrado G.  he lawfully filed and prosecuted an application for Philippine patent.s patented invention. 12. Section 29 of R. Aguas the engravings." Likewise. and having complied in all respects with the statute and the rules of the Philippine Patent Office. constitutes infringement of the patent. 37. vs.] DOMICIANO A.Any patentee.A. WHEREFORE. article or product.LIP – Case Digests*2010-2011 Page 15 279. the appealed order of dismissal is hereby set aside and the complaint for damages for infringement of patent and unfair competition reinstated. No.) "SEC. the following shall be deemed guilty of unfair competition: "(c) Any person who shall make any false statement in the course of trade. using and selling tiles embodying said patent invention and that  defendant F. use and sell the patented machine. RIGHTS OF PATENTEES. or anyone possessing any right.’s medicine called "Venimicetin Suspension" contains "Chloramphenicol" when in fact it actually contains "Chloramphenicol Palmitate". DE LEON and COURT OF APPEALS. " (Italics supplied. Clearly. petitioner. throughout the territory of the Philippines for the term of the patent. . respondents. de Leon filed in the Court of First Instance of Rizal at Quezon City a complaint for infringement of patent against Domiciano A. and without in any way limiting the scope of unfair competition. 1982. whose rights have been infringed. Aquino & Sons is guilty of infringement by making and furnishing to the defendant Domiciano A. Sections 37 and 42 of R. H. 658 by making. Claim 4 of which allegedly covers said substance. may bring a civil action before the proper Court of First Instance.R. Patent No. 1962. the defendants would be guilty of unfair competition by falsely stating that Doctors' Pharmaceuticals. H. the lower court erred in dismissing. using or selling by any person without the authorization of the patentee. AGUAS. January 30. No. and such making. Aguas infringed Letters of Patent No. G. Inc. PETITIONER’S CLAIM: . the complaint for damages for infringement of patent and unfair competition.A patentee shall have the exclusive right to make.. title or interest in and to the patented invention. 42. CIVIL ACTION FOR INFRINGEMENT. No. Aguas and F. 658 was lawfully granted and issued to him. inter alia: "In particular. to recover from the infringer damages sustained by reason of the infringement and to secure an injunction for the protection of his rights.  Defendant Domiciano A.

useful and inventive. and TIBURCIO S. 1983. It should be noted that the private respondent does not claim to be the discoverer or inventor of the old process of tile-making. is not an invention or discovery. INC. de Leon. The Pomona tiles are made of ceramics. The improvement of respondent is not patentable because it is not new. as amended provides: "Any invention of a new and useful machine. EVALLE. He has improved the old method of making tiles and pre-cast articles which were not satisfactory because of an intolerable number of breakages. Letters Patent No. Section 7. ISSUE: Whether or not the respondent’s patent for the 'process of making mosaic pre -cast tile' is INVALID because said alleged process is not an invention or discovery as the same has already long been used by tile manufacturers both abroad and in this country. is assured.” The respondent's improvement is indeed inventive and goes beyond the exercise of mechanical skill. subject of said patent. or an improvement of the foregoing. to protect his rights as the inventor of "an alleged new and useful improvement in the process of making mosaic pre-cast tiles. There may be depressions but these depressions are too shallow to be considered engraved. respondents.R. Acting C. manufactured product or substance. suffice it to say that what is in issue here is the process involved in tile making and not the design. DAVIS & COMPANY. de Leon. the Machuca tiles are heavy and massive. The Machuca tiles are different from that of the private respondent. G. but with sufficient durability. in his capacity as Director of Patents. He has introduced a new kind of tile for a new purpose. shall be patentable. Republic Act No. 658 was issued by the Philippine Patent Office to the private respondent. on the ground that the process. The letters patent of de Leon was actually a patent for the old and nonpatentable process of making mosaic pre-cast tiles. provided that a certain critical depth is maintained in relation to the dimensions of the tile.J. He has overcome the problem of producing decorative tiles with deep engraving. vs. DOCTOR's PHARMACEUTICALS. Durability in spite of the thinness and lightness of the tile. 13. process. August 16. while in ceramics fire is used. Cement tiles are made with the use of water. Besides. or an improvement of the old system of making tiles. 165. The petitioner also claims that changing the design from embossed to engraved tiles is neither new nor inventive because the Machuca Tile Factory and the Pomona Tile Manufacturing Company have been manufacturing decorative wall tiles that are embossed as well as engraved. TEEHANKEE. In fact. especially if deep engravings are made on the tile.] PARKE." Indeed. petitioner. The process involved in making cement tiles is different from ceramic tiles. As regards the allegation of the petitioner that the private respondent copied some designs of Pomona. L-27004.LIP – Case Digests*2010-2011 Page 16     The petitioner questioned the validity of the patent of the private respondent. There is no similarity between the Pomona Tiles and de Leon's tiles. He only claims to have introduced an improvement of said process. The designs are embossed and not engraved as claimed by the petitioner. HELD: NO. No. Conrado G.: . Conrado G.

issued a license in favor of respondent company under petitioner's Letters Patent No. Parke. were agreed upon. petitioner alleges that it is the same rate prevailing in two compulsory licenses for patents on medicine in Great Britain.A. Inc. on a pharmaceutical pellet based on net sales." Under Section 36 of Republic Act 165 (Patent Law). No. which involved the same parties in the instant case.LIP – Case Digests*2010-2011 Page 17 FACTS: In G. Davis & Co. without the parties submitting a licensing agreement. liberal treatment in trade relations should be afforded to local industry for as reasoned out by respondent company.R. the Director of Patents. royalties of 5% on a vitamin preparation and 7%. among others. The license provides. ISSUE: Whether or not the Director of Patent committed an erroer in fixing the royalty rate HELD: NO. fixing the terms and conditions thereof and declaring that the license should take effect immediately. If Doctor's is making sufficient profit to justify an increase of royalty later. that respondent company should pay petitioner Parke. can easily demand an increase. in case the parties failed to submit a licensing agreement. in a decision dated August 31.. the rate of 12 1/2 % based on net sales was allowed. the Court affirmed. a royalty. which is a subsidiary of the huge mother firm. In developing countries like the Philippines. No. Thus.'s Patent in Canada. "it is so difficult to compete with the industrial giants of the drug industry. Davis & Company. Parke. to grant respondent Doctor's Pharmaceuticals. Davis & Co. L-22221 became final and executory. Davis & Company of Michigan. is a small manufacturing venture compared with Parke. Inc. considering that the latter has access to the books and records of the former.. Inc. of Norway and Lexal Laboratories of the Philippines. 181 ordering petitioner Parke Davis & Co. 1965 respondent Director of Patents decision rendered on November 15. On the other hand respondent company points out that in a licensing agreement between Collett & Co.R. The Court finds no abuse of discretion on the part of respondent Director of Patents considering that in fixing the royalty rate he made a compromise on the rate proposed by petitioner and those prevailing in other countries. to fix the terms and conditions of the license. after the Court's decision in G. Petitioner insists that the fixing of the royalty rate by the Director of Patents is arbitrary and without any support in evidence pointing out that the prevailing rate for compulsory licensing on the net sales of medicines containing the patented article is 15% and 18% of the selling price. on all licensed products containing "chloramphenicol" made and sold by respondent company in an amount equivalent to Eight Percent (8%) of the net sales which petitioner company now claims as grossly inadequate and proposes that it be increased to 15%. In asking for a 15% royalty rate." The Court agrees that the 8% royalty rate is reasonable "considering that Doctor's Pharmaceutical. use and sell in the Philippines its own products containing petitioner's chemical called "chloramphenicol.S. 1963 in Inter Partes Case No.R.A. The 8% royalty rate is midway between the rates in Canada and Norway. . the Director of Patents is authorized. a license to manufacture. U. among them being the petitioner herein. that it always is necessary that the local drug companies should sell at much lower (than) the prices of said foreign drug entities. Geigy S. Inc. 50 for the patented chemical "chloramphenicol". L-22221. and that in the case of J.

identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound. *It claimed that respondent committed unfair competition under Art 189 for advertising and selling as its own the drug Impregon although the same contained its patented Albendazole. the language of Letter Patent No. While Albendazole is admittedly a chemical compound that exists by a name different from that covered in petitioner’s letters patent. 14561 fails to yield anything at all regarding Albendazole. 126627.LIP – Case Digests*2010-2011 Page 18 Also. using and causing to be sold and used the drug Impregon without its authorization. Petitioner’s Claim: *Smith Kline Beckman Corp is a corporation existing under the laws of Pennsylvania. Respondent’s Claim: *Letters Patent that was issued to petitioners does not cover the substance Albendazole. Inc. The said application was approved. There is no showing that Parke.] SMITH KLINE BECKMAN CORPORATION. Davis & Co. vs. 2003. . *Petitioner is not the registered patent holder. THE HONORABLE COURT OF APPEALS and TRYCO PHARMA CORPORATION. August 14. *It claimed that its patent covers the substance Albendazole *It claimed that private respondent infringe its right over the said patent by selling. Issue: Whether respondent committed infringement against petitioner. US. petitioner.R. respondents. even though it performs the same function and achieves the same result. *It filed an application for patent over an invention entitled “Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate. No. such substance is unpatentable. Ruling: No. *That even if the patent were to include Albendazole. And no extrinsic evidence had been adduced to prove that Albendazole inheres in petitioner’s patent in spite of its omission therefrom or that the meaning of the claims of the patent embraces the same. would tend to suffer business losses by the imposition of the 8 % royalty nor does it appear that it would cause other effects on the saleability of the antibiotics and consequently the health of the consuming public by the imposition of 8 %. While both compounds have the effect of neutralizing parasites in animals.. 14. *there is no proof that it passed off in any way its veterinary products as those of petitioner *The letters patent is null and void. G. *That the BFD allowed it to manufacture and market Impregon with Albendazole as its known ingredient. *The application for the issuance is void for having been filed beyond the one year period from the filling of an application abroad for the same invention covered thereby.

Prior to the filing of the petition for revival of the patent application with the Bureau of Patents. July 12. DIETER FISCHER. They received a copy of the resolution on February 7. vs. Petitioners appealed from the resolution of the Director of Patents dated January 31. UDOLF KUEHNE. ENI SHINOZAKI. By such inaction. respondents. petitioners. 1991. MICHIBAZU OCHI. or on February 14. Bureau of Patents denied all the petitions for revival because they were filed out of time. It was then that the firm learned about the notices of abandonment. Montecillo and Ongsiako to process several patent applications in the Philippines Petitioner’s patent applications lacked certain requirements and the Bureau informed the law firm about it. REMY SIMOND and HEINRICH EVBERGGER. Two employees of the law firm. 2000.LIP – Case Digests*2010-2011 Page 19 15. FABIO CARLI. Issue: Is the appeal filed out of time? Held: Yes. 1991. ARTHUR SPRENGER. Trademarks and Technology Transfer for registration of patents. George Bangkas and Rafael Rosas were dismissed from employment. 1991. through the law firm. these dates clearly established that their appeal was seasonably filed. THE HONORABLE COURT OF APPEALS (SPECIAL FIFTH DIVISION) and THE BUREAU OF PATENTS. an unreasonable period of time had lapsed due to the negligence of petitioners counsel. and filed the consolidated appeal seven (7) days after. FRIEDEL VERDERBERG. notices of abandonment were sent on June 1987. petitioners lost sight of the fact that the petition could not be granted because of laches. MORTIMER THOMPSON. No. filed with the Bureau of Patents separate petitions for revival of the patent applications. KENJI SHIGEMATSU. Facts: On different dates. CHEN WOO CHIN. However.] LOTHAR SCHUARTZ. JOHN BERNARD WATKINS. of getting the firms letters and correspondence from the Bureau of Patents. According to petitioners. 113407. petitioners applied to the Bureau of Patents. YOSHIMI IWASAKI. among others. ROBERT CABI-AKMAN. Petitioners appeal via certiorari from the decision of the CA dismissing their appeal from the resolution of the Director of Patents that denied with finality their petition for revival of patent applications. TRADEMARKS AND TECHNOLOGY TRANSFER. Petitioners contend that their appeal was filed on time. these employees worked with the patent group of the law firm and had the duty. MALCOLM JOHN LAW. If the facts above-mentioned were the sole basis of determining whether the appeal was filed on time. petitioners were deemed to have forfeited their right to revive their applications for patent. They hired the law firm Siguion Reyna. the law firm conducted on December 1987an inventory of all the documents entrusted to them. [G. petitioners argument would be correct. through correspondences called Office Actions. Immediately after their dismissal. that petitioner’s patent applications could not be a proper subject of a consolidated appeal because they covered separate and distinct subjects and had been treated by the Bureau of Patents as separate and individual applications. which denied the petition for revival of the patent applications. The CA dismissed the consolidated appeal for being filed beyond the 15-day reglementary period to appeal. HARRY GREAVES. Prior to the dismissal.R. As petitioners law firm did not respond to these office actions within the prescribed time. The CA declared that there was an unreasonable delay before the petitions to revive applications were filed and. Facts show that the patent attorneys appointed to follow up the applications for patent registration had been negligent in complying with the rules of practice prescribed by the Bureau . petitioners. Thereafter.

189 of the Revised Penal Code committed within their respective territorial jurisdictions. petitioner’s patent attorneys not only failed to take notice of the notices of abandonment. A lawyer shall not neglect a legal matter entrusted to him. JUDGE APRONIANO B. 1987. 134217. seized from the factory were several pieces of furniture. Petitioners claim that respondent trial court had no jurisdiction over the offense since it was not designated as a special court for Intellectual Property Rights (IPR). Hence. 113-95 designating certain branches of the Regional Trial Courts. and all items seized have remained in NBI custody up to the present. that they came to know about it. 189 of the Revised Penal Code as amended. The CA did not err or gravely abuse its discretion in dismissing the petition for review. Supervising Agent Monsanto of the NBI filed an application for search warrant with the RTC of Cebu City. The firm had been notified about the abandonment as early as June 1987. punishable under Art.LIP – Case Digests*2010-2011 Page 20 of Patents. as provided in the rules of practice in patent cases. respondents. vs. Cebu. Metropolitan Trial Courts and Municipal Trial Courts in Cities as Special Courts for IPR. The application sought the authorization to search the premises of K Angelin Export International located in Talisay. Presiding Judge. when their employees Bangkas and Rosas had been dismissed. May 11. we cannot grant the present petition. but it was only after December 7. CEBU PROVINCIAL PROSECUTOR'S OFFICE. NATIONAL BUREAU OF INVESTIGATION. and to seize the pieces of wrought iron furniture found therein which were allegedly the object of unfair competition involving design patents. JUANITA NG MENDOZA. owned and managed by GEMMA DEMORAL-SAVAGE. citing in support thereof Supreme Court Administrative Order No. 12. 16. MENDCO DEVELOPMENT CORPORATION. Subsequently Supreme Court Administrative Order No. 104-96 was issued providing that jurisdiction over all violations of IPR was thereafter confined to the Regional Trial Courts. A lawyer’s fidelity to the cause of his client requires him to be ever mindful of the responsibilities that should be expected of him. Cebu City. petitioners. ISSUE: 1) Whether the respondent judge had authority/jurisdiction to issue the said search warrant 2) Whether unfair competition involving design patents punishable under Art. indicated in search warrant. Respondent Judge denied the Motion to Quash. The courts enumerated therein are mandated to try and decide violations of IPR including Art. No.R. Thereafter. RTC-BR. In the instant case. TAYPIN. but they failed to revive the application within the four-month period. president and general manager of Mendco Development Corporation (MENDCO). Cebu City. Acting on a complaint lodged by private respondent Eric Ng Mendoza. G. This clearly showed that petitioners counsel had been remiss in the handling of their clients applications. ALFREDO SABJON and DANTE SOSMENA. 189 of the Revised Penal Code exists HELD: . Region VII.] KENNETH ROY SAVAGE/K ANGELIN EXPORT TRADING. Petitioners moved to quash the search warrant. These applications are deemed forfeited upon the lapse of such period. 2000.

No. The repealing clause of the Code provides that all Acts and parts of Acts inconsistent with the Code are repealed. COURT OF APPEALS AND FLORO INTERNATIONAL CORP. vest exclusive jurisdiction with regard to all matters (including the issuance of search warrants and other judicial processes) in any one court. G.A. or services for those of the one having established such goodwill. It did not. The issue involving the existence of "unfair competition" as a felony involving design patents. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals. respondents. however. an action for infringement not as a patentee but as an entity in possession of a right. The authority to issue search warrants is inherent in all courts and may be effected outside their territorial jurisdiction. has been rendered moot and academic by the repeal of the article. The Code defines "unfair competition" thus — 168. vs. 118708. The assailed acts specifically alleged were the manufacture and fabrication of wrought iron furniture similar to that patented by MENDCO. 189 of the Revised Penal Code. or shall commit any acts calculated to produce said result. without securing any license or patent for the same.LIP – Case Digests*2010-2011 Page 21 1) YES. 165). NOT valid). 113-95 merely specified which court could "try and decide" cases involving violations of IPR.113-95. for the enactment of RA 8293 did not result in the reenactment of Art. title or .R. shall be guilty of unfair competition. The power to issue search warrants for violations of IPR has not been exclusively vested in the courts enumerated in Supreme Court Administrative Order No. and shall be subject to an action therefor. 17. we must strictly construe the statute against the State and liberally in favor of the accused. Petitioners apparently misconstrued the import of the designation of Special Courts for IPR. referred to in Art.The authority to issue search warrants was not among those mentioned in the administrative orders. under Section 42 of the Patent Law (R. Petitioner’s claim: It is Creser’s contention that it can file. In the instant case. Cebu. There is evidently no mention of any crime of "unfair competition" involving design patents in the controlling provisions on Unfair Competition.. The search warrant cannot even be issued by virtue of a possible violation of the IPR Code. and could not. 2) NO. It is therefore unclear whether the crime exists at all. for penal statutes cannot be enlarged or extended by intendment. Administrative Order No. Since the IPR Code took effect on 1 January 1998 any discussion contrary to the view herein expressed would be pointless. petitioner. for the purpose of deceiving or defrauding Mendco and the buying public. 1998. INC. But the Court has consistently ruled that a search warrant is merely a process issued by the court in the exercise of its ancillary jurisdiction and not a criminal action which it may entertain pursuant to its original jurisdiction. respondent judge has authority (Note: the search warrant issued was. February 2. In the face of this ambiguity.. 189 of the Revised Penal Code.] CRESER PRECISION SYSTEMS. implication or any equitable consideration. or his business.2. are well within the territorial jurisdiction of the respondent court. the premises searched located in Talisay.

or as grantees. Respondent’s claim: Private respondent Floro International submitted its memorandum alleging that petitioner has no cause of action to file a complaint for infringement against it since Creser has no patent for the aerial fuze which it claims to have invented. that private respondent as the patent holder cannot be stripped of its property right over the patented aerial fuze consisting of the exclusive right to manufacture.A. The phrase "anyone possessing any right. or anyone possessing any right. Issue: Whether Creser can file an action for infringement being not as patentee Ruling: NO. Petitioner admits it has no patent over its aerial fuze. respondents. This remedy. G.R. that petitioner's available remedy is to file a petition for cancellation of patent before the Bureau of Patents. Therefore. assignees. use and sell the same and that it stands to suffer irreparable damage and injury if it is enjoined from the exercise of its property rights over its patent. vs. title or interest in and to the patented invention. No. 42. 1997.] ANGELITA MANZANO. September 5. . explicitly provides: Sec. — Any patentee. as Assignor to NEW UNITED FOUNDRY MANUFACTURING CORPORATION. such absence does not bar the first true and actual inventor of the patented invention from suing another who was granted a patent in a suit for declaratory or injunctive relief recognized under American patent laws. Civil action for infringement. refers only to the patentee's successors-in-interest. petitioner. Under the aforequoted law. otherwise known as the Patent Law. 113388. to recover from the infringer damages sustained by reason of the infringement and to secure an injunction for the protection of his right. may bring a civil action before the proper Court of First Instance (now Regional Trial court). . . whose rights have been infringed. of the exclusive right. UM-4609 for a gas burner registered in the name of respondent Melecia Madolaria who subsequently assigned the letters patent to New . Petitioner’s claim: Petitioner Angelita Manzano filed with the Philippine Patent Office on 19 February 1982 an action for the cancellation of Letters Patent No. 165. whether as patentee. petitioner points out. It advances the theory that while the absence of a patent may prevent one from lawfully suing another for infringement of said patent. and MELECIA MADOLARIA. assignees or grantees since actions for infringement of patent may be brought in the name of the person or persons interested.LIP – Case Digests*2010-2011 Page 22 interest in and to the patented invention. only the patentee or his successors-in-interest may file an action for infringement. COURT OF APPEALS. may be likened to a civil action for infringement under Section 42 of the Philippine Patent Law. it has no legal basis or cause of action to institute the petition for injunction and damages arising from the alleged infringement by private respondent. title or interest in and to the patented invention" upon which petitioner maintains its present suit. Section 42 of R. 18.

in this case. private respondent discovered the solution to all the defects of the earlier models and. that the company manufactured early models of singlepiece types of burners where the mouth and throat were not detachable. Respondent’s claim: Private respondent. (b) the specification of the letters patent did not comply with the requirements of Sec. Petitioner alleged that (a) the utility model covered by the letters patent. therefore. (c) respondent Melecia Madolaria was not the original. Sandiego issued Decision No. through one witness. were useless prior art references. that after a few months. true and actual inventor of the utility model covered by the letters patent. The decision also stated that even assuming that the brochures depicted clearly each and every element of the patented gas burner device so that the prior art and patented device became identical although in truth they were not. the Philippine Patent Office found her invention novel and patentable. among others. that he was then instructed by private respondent to cast several experimental models based on revised sketches and specifications. that he was the General Supervisor of the UNITED FOUNDRY in the foundry. RA No. an LPG gas burner. that private respondent again made some innovations. UNITED FOUNDRY was engaged in the manufacture of different kinds of gas stoves as well as burners based on sketches and specifications furnished by customers. true and actual inventor nor did she derive her rights from the original. The issuance of such patent creates a presumption which yields only to clear and cogent evidence that the patentee was the original and first inventor. Rolando Madolaria testified that private respondent decided to file her application for utility model patent in December 1979. Various tests were conducted on the latest model in the presence and under the supervision of Melecia Madolaria and they obtained perfect results. Not one of the various pictorial representations of business clearly and convincingly showed that the devices presented by petitioner was identical or substantially identical with the utility model of the respondent. (d) the letters patent was secured by means of fraud or misrepresentation. was not inventive. who testified. they could not serve as anticipatory bars for the reason that they were undated. On 7 July 1986 the Director of Patents Cesar C. In issuing Letters Patent No. (b) the products which were produced in accordance with the utility model covered by the letters patent had been in public use or on sale in the Philippines for more than one (1) year before the application for patent therefor was filed. The records and evidence also do not support the petitioner’s contention that Letters Patent No. as amended. Rolando Madolaria. new or useful. UM-4609 . 14. he was able to cast several models incorporating the additions to the innovations introduced in the models. for brevity). 165. and. machine and buffing section. that in the latter part of 1978 respondent Melecia Madolaria confided in him that complaints were being brought to her attention concerning the early models being manufactured. that in his early years with the company.LIP – Case Digests*2010-2011 Page 23 United Foundry and Manufacturing Corporation (UNITED FOUNDRY. UM-4609 to Melecia Madolaria for an “LPG Burner” on 22 July 1981. 86-56 denying the petition for cancellation and holding that the evidence of petitioner was not able to establish convincingly that the patented utility model of private respondent was anticipated. The dates when they were distributed to the public were not indicated and. In support of her petition for cancellation petitioner further alleged that (a) the utility model covered by the letters patent of respondent had been known or used by others in the Philippines for more than one (1) year before she filed her application for letters patent on 9 December 1979. based on her latest sketches and specifications. Issue: Whether to grant the application for cancellation of the issued patent utility model to Melecia Madolaria for an ‘LPG Burner’ Ruling: NO.

would have resulted in the refusal by the Philippine Patent Office to issue the Letters Patent under inquiry. It also invoked Article 5 of the Paris Convention for the Protection of Industrial Property. 165.LIP – Case Digests*2010-2011 Page 24 was obtained by means of fraud and/or misrepresentation. INC..or Paris Convention. INC. INC.] SMITH KLINE & FRENCH LABORATORIES. which provides for the compulsory licensing of a particular patent after the expiration of two years from the grant of the latter if the patented invention relates to. It is thus clear that Section A(2) of Article 5 of the Paris Convention unequivocally and explicitly respects the right of member countries to adopt legislative measures to provide for the grant of compulsory licenses to prevent abuses which might result from the exercise of the exclusive rights conferred by the patent. It argued that DOCTORS PHARMACEUTICALS. LTD owns Philippine Letters Patent No. It alleged that the grant of Philippine Letters Patent No. 165 for violating the due process and equal protection clauses of the Constitution. Petitioner has failed to show compelling grounds for a reversal of the findings and conclusions of the Patent Office and the Court of Appeals. Petitioner’s claim: SMITH KLINE & FRENCH LABORATORIES. No. On 30 March 1987. and Appropriating Funds Therefor). COURT OF APPEALS. INC. No. had no cause of action and lacked the capability to work the patented product.. 165 (An Act Creating a Patent Office Prescribing Its Powers and Duties. that the petition was filed beyond the two-year protective period provided in Section 34 of R. No. petitioner." however. URUGUAY ROUND. it filed a petition for compulsory licensing with the BPTTT for authorization to manufacture its own brand of medicine from the drug Cimetidine and to market the resulting product in the Philippines. July 24. It challenged the constitutionality of Sections 34 and 35 of R.R. Held: No. 1997. and that DOCTORS PHARMACEUTICALS. for short. G. and that it had the capability to work the patented product or make use of it in its manufacture of medicine. Regulating the Issuance of Patents. TRADEMARKS AND TECHNOLOGY TRANSFER and DOCTORS PHARMACEUTICALS. would use or improve the patented product. vs. is a domestic corporation engaged in the business of manufacturing and distributing pharmaceutical products. medicine or that which is necessary for public health or public safety.A. Respondent’s claim: DOCTORS PHARMACEUTICALS. inter alia. The petition was filed pursuant to the provisions of Section 34 of Republic Act No. Finally. 12207 issued by the BPTTT for the patent of the drug Cimetidine. was motivated by the pecuniary gain attendant to the grant of a compulsory license. No evidence whatsoever was presented by petitioner to show that the then applicant Melecia Madolaria withheld with intent to deceive material facts which. LTD.c Issue: whether or not the decision of BPTTT DECISION VIOLATES INTERNATIONAL LAW AS EMBODIED IN (A) THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY AND (B) THE GATT TREATY. as such is merely supplied by way of . 12207 was issued on 29 November 1978. 19. AND MUST ACCORDINGLY BE SET ASIDE AND MODIFIED. of which the Philippines became a party thereto only in 1965. It also maintained that it was capable of satisfying the demand of the local market in the manufacture and marketing of the medicines covered by the patented product. are conclusive on this Court when supported by substantial evidence. respondents.A. BUREAU OF PATENTS. if disclosed. INC. An example provided of possible abuses is "failure to work. The rule is settled that the findings of fact of the Director of Patents. especially when affirmed by the Court of Appeals. 121867. the petition failed to specifically divulge how DOCTORS PHARMACEUTICALS.

adopted Senate Resolution No. No. 115106.A. He described his sing-along system as a handy multipurpose compact machine which incorporates an amplifier speaker. 165. it must be noted that paragraph (4) of Section A. This act is better known as the Uruguay Final Act signed for the Philippines on 15 April 1994 by Trade and Industry Secretary Rizalino Navarro. but are consistent with. Accordingly. The case at bar refers more particularly to subparagraph (e) of paragraph 1 of Section 34 -.c Parenthetically. as amended by Presidential Decree No. DEL ROSARIO. The Agreement establishing the World Trade Organization includes various agreements and associated legal instruments. but also to prevent the growth of monopolies. The President signed the instrument of ratification on 16 December 1994. promulgated on 14 December 1977. In the explanatory note of Bill No. No. [G. the legislative intent in the grant of a compulsory license was not only to afford others an opportunity to provide the public with the quantity of the patented product. and which our Congress likewise wished to prevent in enacting R. No. vs.But plainly. And it may not be doubted that the aforequoted provisions of R. Neither may petitioner validly invoke what it designates as the GATT Treaty. as amended. 97 concurring in the ratification by the President of the Agreement.A. the growth of monopolies was among the abuses which Section A. 165. No. 165. 165. Forming integral parts thereof are the Agreement Establishing the World Trade Organization. Uruguay Round. Certainly. The effectivity of both Letters Patents was for five (5) years and was extended for another five (5) years starting 2 June 1988 and 14 November 1991. even if the Act was enacted prior to the Philippines adhesion to the Convention.A.the patented invention or article relates to food or medicine or manufactured products or substances which can be used as food or medicine. Petitioner’s Contention:  Del Rosario alleged that he was a patentee of an audio equipment and improved audio equipment commonly known as the sing-along system or karaoke under Letters Patent issued by the Director of Patent. 165. the recognized right of treaty signatories under Article 5.c R. petitioner. optional tuner or radio and microphone mixer with features to enhance . Article 5 of the Paris Convention setting time limitations in the application for a compulsory license refers only to an instance where the ground therefor is "failure to work or insufficient working. the Ministerial Declarations and Decisions. 1156 which eventually became R. It was only on 14 December 1994 that the Philippine Senate. respondents. provides for a system of compulsory licensing under a particular patent. or is necessary for public health or public safety.A. one or two tape mechanisms. in the exercise of its power under Section 21 of Article VII of the Constitution. Section 34 of R. are not in derogation of." and not to any ground or circumstance as the treaty signatories may reasonably determine. 1263. this treaty has no retroactive effect.LIP – Case Digests*2010-2011 Page 25 an example.] ROBERTO L. fits well within the aforequoted provisions of Article 5 of the Paris Convention. petitioner cannot avail of the provisions of the GATT treaty 20. Article 5 of the Convention foresaw. COURT OF APPEALS AND JANITO CORPORATION. since the challenged BPTTT decision was rendered on 14 February 1994. respectively. No.R. Section A(2) of the Paris Convention.A. 1996. No. March 15. and the Understanding on Commitments in Financial Services. it is plain that the treaty does not preclude the inclusion of other forms or categories of abuses.

therefore. machine or other subject matter alleged to infringe is substantially identical with the patented invention. or the device. bass and other controls. a machine or device must perform the same function. RULING: It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated. selling and advertising the miyata or miyata karaoke brand. and. Reading List . and disregarded completely petitioner’s Utility Model No. (h) both are encased in a box-like cabinets. such as the echo or reverb to stimulate an opera hall or a studio sound. or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. (i) both can be used with one or more microphones. for recording the singer and the accompaniment. and cited the differences between its miyata equipment and petitioner’s audio equipment. competent and reliable comparison between its own model and that of petitioner.  In 1990. was manufacturing a sing-along system bearing the trademark miyata or miyata karaoke substantially similar if not identical to the sing-along system covered by the patents issued in his favor. Clearly. treble. and both may also be used to record a speaker’s voice or instrumental playing. both petitioner’s and respondent’s models involve substantially the same modes of operation and produce substantially the same if not identical results when used. (g) both are equipped with cassette tape decks which are installed with one being used for playback and the other. he learned that private respondent. its officers and everybody elsewhere acting on its behalf.  Respondent also contended that there was no infringement of the patents of petitioner by the fact alone that private respondent had manufactured the miyata karaoke or audio system. (b) both are used to sing with a minus-one or multiplex tapes. It may be noted that respondent corporation failed to present before the trial court a clear. 6237 which improved on his first patented model. (e) both are used to enhance the voice of the singer using echo effect. with the whole system enclosed in one cabinet casing. and that the karaoke system was a universal product manufactured. (c) both are used to sing with a minus-one tape and multiplex tape and to record the singing and the accompaniment. or that both are used to play minus-one or standard cassette tapes for singing or for listening to. from using. like the guitar and other instruments. (d) both are used to sing with live accompaniment and to record the same. Respondent’s Contention:  Respondent Janito Corporation denied that there was any violation of petitioner’s patent rights. it did not refute and disprove the allegations of petitioner before the trial court that: (a) both are used by a singer to sing and amplify his voice. Thus he sought from the trial court the issuance of a writ of preliminary injunction to enjoin private respondent. advertised and marketed in most countries of the world long before the patents were issued to petitioner. Notwithstanding the differences cited by respondent corporation. In order to infringe a patent. Janito Corporation.LIP – Case Digests*2010-2011 Page 26 one’s voice.

G. For petitioner. the fact alone that its trademark CANON is carried by its other products like footwear. COURT OF APPEALS and NSR RUBBER CORPORATION. a foreign corporation duly organized and existing under the laws of Japan. Allegedly. petitioner. IN HIS CAPACITY AS DIRECTOR OF PATENTS. G.] CANON KABUSHIKI KAISHA. On January 25.: The petitioner. this petition for review. No. vs. Ordinarily. No. COURT OF APPEALS. ONG SU AND THE HONORABLE TIBURCIO S.R.LIP – Case Digests*2010-2011 Page 27 21. Hence. On February 16. ISSUE: Whether the respondent can use as its trademark the word “CANON” HELD: YES. chemical products. the corporate name or tradename of petitioner is also used as its trademark on diverse goods including footwear and other related products like shoe polisher and polishing agents. FERNANDEZ.] MYRTLE PRIBHDAS J. L-28499. vs. Petitioner protests the appropriation of the mark CANON by private respondent on the ground that petitioner has used and continues to use the trademark CANON in its wide range of goods worldwide. . The BPTTT and CA share the opinion that the trademark CANON as used by petitioner for its paints. chemical products. 1993.R. To lend credence to its claim. The SC finds the arguments of petitioner to be unmeritorious. respondents. 1999. petitioner. On November 10. private respondent NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in the Bureau of Patents. alleging that it will be damaged by the registration of the trademark CANON in various countries covering goods belonging to Class 2 (paints. toner and dye stuff). 39398. November 19. 2000. the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law. petitioner. G. private respondent sought to register the mark CANON. However. 23. September 30. shoe polisher and polishing agents should have precluded the BPTTT from giving due course to the application of private respondent. DIRECTOR OF PATENTS and the BARBIZON CORPORATION. Victorias Milling Company. Trademarks and Technology Transfer (BPTTT).. MIRPURI. 1961.] VICTORIA MILLING COMPANY. 120900.R. the use of the same trademark on the latter’s product cannot be validly objected. showing ownership over the trademark CANON also under Class 2. 1977. vs. A verified Notice of Opposition was filed by petitioner. 114508. a domestic corporation and engaged in the manufacture and sale of refined granulated sugar is the owner of the trademark "VICTORIAS" and d design registered in the Philippines Patent Office on November 9. 1992 the BPTTT issued its decision dismissing the opposition of petitioner and giving due course to private respondent’s application for the registration of the trademark CANON. Inc. when a trademark is used by a party for a product in which the other party does not deal. 22. INC. 1985. petitioner points out that it has branched out in its business based on the various goods carrying its trademark CANON. Petitioner also submitted in evidence its Philippine Trademark Registration No. July 20.. EVALLE. toner and dyestuff can be used by private respondent for it s sandals because the products of these two parties are dissimilar. respondents. No. respondents. petitioner appealed the decision of the BPTTT with public respondent CA that eventually affirmed the decision of BPTTT. J.

filed with the Philippine Patent Office a petition to cancel the registration of the Ong Su trademark "Valentine. and that there is absolutely no likelihood of confusion. ordinarily are not retarded as indicia of origin for goods to which the marks are applied. The diamond Portion of petitioner's trademark argued that common geometric shapes such as circles. that the trademark "Victorias" with diamond design and the trademark "Valentine" with a design are two different marks. 1961. or deception among the purchasers because it is similar to its "Victorias" trademark. Inc. the colors black and red are not so displayed by the petitioner. does not function as a trademark. it is fundamental in trademark jurisprudence that color alone. unless displayed in a distinct or arbitrary design. I have scoured the records completely to ascertain if the petitioner has submitted satisfactory evidence in this regard. squares. that the registration of "Valentine" and design has caused and will cause great damage to petitioner by reason of mistake. PETITIONER’s CONTENTION Victorias Mining Company. triangles. and are primary colors commonly and freely used in the printing business. 8891 dated June 20. The Director of Patents denied the petition to cancel the certificate of registration of the respondent Ong Su covering the trademark "Valentine" and design because: There is no question that as to their respective literal designation the trademarks are different. 1961. or elsewhere. confusion. One is VALENTINE while the other is VICTORIAS." The petitioner allied that its tradermrk "Victorias" and diamond design has distinctive of its sugar long before the respondent used its trademark.LIP – Case Digests*2010-2011 Page 28 The respondent Ong Su is engaged in the repacking and sale of refine sugar and is the owner of the trademark "VALENTINE" and design registered in the Philippines Patent Office on June 20. Petitioner contends that the diamond design in its trademark is an index of origin. . but I find absolutely nothing to base a ruling that the triangle (sic) design has acquired a secondary meaning with respect to its sugar business. inasmuch as here. mistake or deception to purchasers through the concurrent use of the petitioner's mark "Victorias" with a diamond design and the respondents' mark "Valentine" with a design in connection with sugar. RESPONDENT’s CONTENTION Respondent averred that he is doing business under the name and style "Valentine Packaging" and has registered the trademark "Valentine" with a design for sugar and was issued Certificate of Registration No. ovals. diamonds. and the like. unless of course they have acquired secondary meaning. when used as vehicles for display on word marks. that registration was fradulently obtained by Ong Su and that "Valentine" faisely suggests a connection with Saint Valentine or with an institution or belief connected therewith. As regards the colors black and red used.

. FACTS: Petitioner Cyanamid field on April 3. and manufacturer or packer. THE DIRECTOR OF PATENTS and TIU CHIAN. rhinitis. Inc. 5348 issued on July 6. respondent fraudently filed an application for registration of SULMETINE as his trademark on a veterinary product used for the same purposes thereby making respondent's product confusingly similar with that of petitioner which is unfair and unjust to the latter. Cyanamid claims that it is the owner of a trademark SULMET which is the trademark of a veterinary product used. standing alone. "for the control of outbreaks of cecal and intestinal coccidiosis and infectious coryza (colds) in chicken flocks. ISSUE: WHETHER OR NOT THE DIRECTOR OF PATENTS ERRED IN ORDERING NOT TO CANCEL THE REGISTRATION OF THE RESPONDENT.R. petitioner.] AMERICAN CYANAMID COMPANY. I regard it as merely a matter pertaining to the address of the goods' — a matter involving unfair competition over which the Patent Office has no jurisdiction. As correctly stated by the Director of Patents. HELD: NO. turkeys and ducks and anatipestifer disease in ducks. 1977. SULMET has become popular and well-known and enjoys widespread reputation brought about by extensive advertisement and promotion through the media. coccidiosis in turkeys. The petitioner has not shown that the design portion of the mark has been so used that purchasers recognize the design. And there is no evidence that the diamond design in the trademark of the petitioner has acquired a secondary meaning with respect to its sugar business. contents. as regards the printing sequences or arrangement of such legends as weight. The word "Victorias" is what Identifies the sugar contained in the bag as the product of the petitioner. in favor of respondent Tiu Chian of the latter's trademark SULMETINE used on medicine for the control of infectious coryza and for the prevention of cold. It seems clear that the words "Valentine" and "Victorias" and the names and places of business of Victorias Milling Company. the petitioner has advertised its sugar in bags marked "Victorias" with oval. L-23954. Notwithstanding the above. roup. 1956. 1959. hexagor. and Ong Su are the dominant features of the trademarks in question. and for reducing mortality in pullorum disease in baby chicks." Through long use in the country.LIP – Case Digests*2010-2011 Page 29 Finally. as indicating goods coming from the registrant. among other purposes. No. 24. vs. and other designs. Indeed. The Director of Patents correctly ruled that he has no jurisdiction over the issue of unfair competition. respondents. The contention of petitioner that the diamond design in its trademark is an index of origin has no merit. cecal coccidiosis and intestinal coccidiosis of chicken and other domesticated birds. The petitioner has not established such a substantial similarity between the two trademarks in question as to warrant the cancellation of the trademark 'Valentine'of the respondent Su. G. acute fowl cholera in chickens. common geometric shapes such as diamonds ordinarily are not regarded as indicia of origin for goods to which the remarks are applied unless they have acquired a secondary meaning. April 29. a petition to cancel certificate of registration No.

Exhibits B and C. 1964. in short. that is. Said labels are entirely different in size. (3) Petitioner's preparation consists of a drinking water solution and this is clearly indicated in bold letters on the label. ISSUE: Whether or not petitioner correctly claims that respondent's trademark SULMETINE was copied from its trademark SULMET giving rise to a confusing similarity between the two in violation of Republic Act 166 otherwise known as the Trade-Mark Law. (2) On the top of petitioners label. whereas. and at the bottom "HENRY'S LABORATORIES PHILIPPINES" are clearly printed indicating the source of the product. based on the following findings: (1) Petitioner's trademark SULMET is used on a preparation for practically all domesticated animals such as fowl. the word "CYANAMID" is printed in prominent letters and at the bottom of the label there appears in bold letters the words "AMERICAN CYANAMID COMPANY. The above differences in the physical aspect or appearance of the respective labels were found by the Director of Patents substantial and striking enough so as to prevent any confusing similarity between the two which may lead a buyer to confuse one with the other. and that with the addition of the syllable "INE" by respondent. background. a marked distinction is effected to distinguish the two trademarks. the Director of Patents rendered his decision denying the Petition for cancellation of respondent's certificate of registration of the trademark SULMETINE. NEW YORK 20. SULMETINE is limited only to chicken and other domesticated birds. contents. Exhibit C.Y. whereas. horses and sheep. colors. "SUL" being derived from "SULFA" and "MET" from methyl. the general appearances of the labels bearing the respective trademarks are so distinct from each other that petitioner cannot assert that the dominant features. at the top of respondent's label." indicating the manufacturer of the product. An examination of the documentary evidence submitted by the parties confirms the findings of the Director of Patents that there are striking differences between the two labels. Exhibit C. the word SULMET is derived from a combination of the syllables "SUL" which is derived from Sulfa and "MET" from methyl both of which are chemical compounds present in . if any. there appears the pictures of two roosters with the word "HENRY'S" in-between. The Supreme Court held that there is no infringement of trademark which justify a cancellation of respondent's registered trademark SULMETINE. and pictorial arrangement. N. the Director of Patents reasoned out that the syllables "SUL" and "MET" are coined from a common source suggestive of chemical compounds which are attributes of the products of the parties herein. HELD: No. Moreover. On the other hand. pigs. so that neither party may claim exclusive use to them.LIP – Case Digests*2010-2011 Page 30 On June 9. of its trademark were used or appropriated in respondent's own. that of respondent consists of tablets for veterinary use prominently indicated in red letters on the label. With respect to Petitioner's contention that respondent's trademark bears the two syllables of petitioner's SULMET and that respondent merely added the syllable "INE". cattle. which preclude the possibility of the purchasing public confusing one product with the other.

STANDARD BRANDS INCORPORATED and TIBURCIO S. Certificate of Registration No. SR-416 covering the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS. as Director of Patents. a domestic corporation. SR-172. 25. EVALLE. Standard Brands a foreign corporation. The field is open for the manufacture of medicinal preparations for the same veterinary purposes. issued by the Patent Office on July 28." .LIP – Case Digests*2010-2011 Page 31 the article manufactured by the contending parties and the addition of the syllable "INE" in respondent's label is sufficient to distinguish respondent's product or trademark from that of petitioner." the label used on its product of salted peanuts. control. an ordinary word which is defined in Webster International Dictionary as "one who or that which plants or sows. No. INC. However. G.  that Philippine Nut's trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" closely resembles and is confusingly similar to its trademark "PLANTERS COCKTAIL PEANUTS" used also on salted peanuts. a farmer or an agriculturist. 1975. rhinitis and roup) and for the prevention of cecal and intestinal coccidiosis which is also indicated in petitioner's SULMET label.R. L-23035. no one including petitioner can claim a monopoly in the preparation of a medicinal product for the use indicated above. Exhibit B. their presentation to the purchasing public come in totally different forms. and that the registration of the former is likely to deceive the buying public and cause damage to it. and prevention in chicken of infectious coryza (also known as colds. That both products are for identical use may be admitted to the extent that respondent's tablets are indicated for the treatment. filed with the Director of Patents asking for the cancellation of Philippine Nut's certificate of registration on the ground that:  "the registrant was not entitled to register the mark at the time of its application for registration thereof" for the reason that it (Standard Brands) is the owner of the trademark "PLANTERS COCKTAIL PEANUTS" covered by Certificate of Registration No. obtained from the Patent Office on August 10. RESPONDENT’S CLAIM: On May 14. The Supreme Court cannot agree with petitioner that the trademarks are used on identical goods because as already indicated earlier. July 31. petitioner's SULMET label. What the law prohibits is that one manufacturer labels his product in a manner strikingly identical with or similar to that of another manufacturer as to deceive or confuse the buying public into believing that the two preparations are one and come from the same source. FACTS: Philippine Nut.] PHILIPPINE NUT INDUSTRY. petitioner. 1958. 1961. respondents. is used on a drinking water solution while that of respondent labels tablets. In the case however of SULMET and SULMETINE it is satisfactorily shown from the evidence of the parties that while their products may be for a similar use.. vs. 1962. PETITIONER’S CLAIM:  PLANTERS cannot be considered as the dominant feature of the trademarks in question because it is a mere descriptive term.

with both words ending with a "1". and that what he should have resolved is whether there is a confusing similarity in the trademarks of the parties. such as. It was error for respondent Director to have enjoined it from using PLANTERS in the absence of evidence showing that the term has acquired secondary meaning. if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result. etc. ISSUE: Whether or not the trademark "PHILIPPINE PLANTERS CORDIAL PEANUTS" used by Philippine Nut on its label for salted peanuts confusingly similar to the trademark "PLANTERS COCKTAIL PEANUTS" used by Standard Brands on its product so as to constitute an infringement of the latter's trademark rights and justify its cancellation. The word "Philippine" printed in small type in petitioner's label may simply give to the purchaser the impression that that particular can of PLANTERS salted peanuts is locally produced or canned but that what he is buying is still PLANTERS canned salted peanuts and nothing else. The court finds the alleged differences insignificant in the sense that they are not sufficient to call the attention of the ordinary buyer that the labeled cans come from distinct and separate sources. to wit: "For Quality and Price. all of which result in a confusing similarity between the two labels. Its Your Outstanding Buy". California. Petitioner also used in its label the same coloring scheme of gold. which are also prominently displayed. the presence of the word "Philippine" above PLANTERS on its label. and white. Peanut" is printed on the tin cover which is thrown away after opening the can. but these words are mere adjectives describing the type of peanuts in the labeled containers and are not sufficient to warn the unwary customer that the two products come form distinct sources. there are differences between the two trademarks. and on top of the tin can is printed "Mr. that duplication or imitation is not necessary. the address of the manufacturer in Quezon City. blue. and other phrases. meaning. the same appears on the top cover and is not visible when the cans are displayed on the shelves. Applying the "TEST OF DOMINANCY". Peanut" on Standard Brands' label. and basically the same lay-out of words such as "salted peanuts" and "vacuum packed" with similar type and size of lettering as appearing in Standard Brands' own trademark. then infringement takes place. Peanut" and the representation of a "humanized peanut". The word PLANTERS printed across the upper portion of the label in bold letters easily attracts and catches the eye of the ordinary consumer and it is that word and none other that sticks in his mind when he thinks of salted peanuts. As regards "Mr.LIP – Case Digests*2010-2011 Page 32    Respondent Director should not have based his decision simply on the use of the term PLANTERS. While it is true that PLANTERS is an ordinary word. It is true that there are other words used such as "Cordial" in petitioner's can and "Cocktail" in Standard Brands'. As a whole it is the word PLANTERS which draws the attention of the buyer and leads him to conclude that the salted peanuts contained in the two cans originate from one and the same manufacturer. plus a pictorial representation of peanuts overflowing from a tin can. nevertheless it is used in the labels not to describe the nature of the product. . aside from the fact that the figure of "Mr. while in the label of Standard Brands it is stated that the product is manufactured in San Francisco. As a matter of fact. a similarity in the dominant features of the trademarks would be sufficient. HELD: YES.. the capital letter "C" of petitioner's "Cordial" is alike to the capital "C" of Standard's "Cocktail". but to project the source or origin of the salted peanuts contained in the cans.

it is no defense to an action for unfair competition to show minor differences in the size or shape of the packages or in the wording or . were of practically the same diameter and length. J. The true test of unfair competition is whether certain goods have been clothed with an appearance which is likely to deceive the ordinary purchaser exercising ordinary care. but the matter has been established by testimonial and documentary evidence consisting of invoices covering the sale of "PLANTERS cocktail peanuts". and not whether a certain limited class of purchasers with special knowledge not possessed by the ordinary purchaser could avoid mistake by the exercise of this special knowledge. Rueda Hermanos had been engaged in the business for many years and registered a trademark for its product in the year 1910. Not only is that fact admitted by petitioner in the amended stipulation of facts. the defendant on the question of its liability. TRENT. ISSUE: Whether or not the defendant is liable for unfair competition HELD: YES. Both parties are manufacturing a chocolate candy. The printing on both packages extended longitudinally and the corresponding lines on each were printed in the same size of type. defendant-appellant. might nevertheless have been used so long and so exclusively by one producer with reference to his article that.] RUEDA HERMANOS & CO. Judgment in the court below went in favor of the plaintiff for a permanent injunction against the defendant and for damages in the sum of P1.. and the plaintiff on the alleged insufficiency of the damages allowed. With regards to the doctrine of secondary meaning. and by priority of use dating as far back as 1938. 1914. circular pieces. Both parties have appealed.: FACTS: This is a civil action for damages for unfair completion. 26. it being a mere descriptive pictorial representation of a peanut not prominently displayed on the very body of the label covering the can. Peanut and the Humanized Peanut" which is the trademark of Standard Brands salted peanuts. Both parties made their products in the shape of flat. the Court held that the doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market. there is evidence to show that the term PLANTERS has become a distinctive mark or symbol insofar as salted peanuts are concerned.200. each package containing five pieces. unlike the term PLANTERS which dominates the label. If the contents of two packages are the same commodity. It is also for this reason that We do not agree with petitioner that it is "Mr. respondent Standard Brands has acquired a preferential right to its adoption as its trademark warranting protection against its usurpation by another.. Felix Paglinawan commenced the manufacture of its confection. 10738.R. The applicability of the doctrine of secondary meaning to the situation now before the Court is appropriate because there is oral and documentary evidence showing that the word PLANTERS has been used by and closely associated with Standard Brands for its canned salted peanuts since 1938 in this country. and were wrapped in the same quality and color of paper. vs. January 14. although the shading was lighter and some of the lines were printed in italics on the defendant's package. In other words. FELIX PAGLINAWAN & CO. The packages were thus cylindrical in shape. in that trade and to that branch of the purchasing public. In March. plaintiff-appellant.LIP – Case Digests*2010-2011 Page 33 leaving no lasting impression on the consumer. No. G. 1916. the word or phrase has come to mean that the article was his product. because geographically or otherwise descriptive.

to devise its particular mark *It claims that defendant committed infringement and is liable for unfair competition Respondent’s Claim: *Respondent is a merchant doing business in the city of Manila. it appears that Felix Paglinawan. a member of the defendant company. therefore. 14269. as it was offered to the retail trade.LIP – Case Digests*2010-2011 Page 34 color of the labels or wrappers of the packages." Unfair competition is fully proven 'from the similarity in the appearance of the goods as packed or offered for sale. it must be remembered that this "may be inferred from similarity in the appearance of the goods as packed or offered for sale to those of the complaining party. shape. MUNN & CO. 1919 Malcolm. . ANG SAN To. are so substantially similar as to "likely deceive the ordinary purchaser exercising ordinary care. In so far as the finding of actual intent to imitate the plaintiff's product is concerned. *It claims that it is not liable for infringement and unfair competition. G. color and shape of plaintiff's article.R. be maintained by the defendant company.). October 16. known by the cognomen “Three Soldier Khaki” or “Soldier Khaki” *Petitioner has registered the said trademark and fairly established its title.] FORBES. No. (LTD. L-14269. GR No. representing himself to be a retailer of plaintiff's product. J: Petitioner’s Claim: *Petitioner is a limited mercantile company duly organized and licensed to do business in the Philippine Islands. *Petitioner has used a trade-mark to designate its cotton khaki drill. it could make use of effigies of soldiers in combination with other elements. cannot. *It claims the exclusive right to the figure of a soldier for a trade-mark. This was before the defendant company started to make their product. vs. 1919. *It has been engaged in the sale of imported cotton textiles comprising cotton khaki drill. *Groupmates. If the exterior size. plaintiff-appellant." the defendant is guilty of unfair competition. induced plaintiff's officers to show him through the factory and explain to him their process of making chocolate candy mixed with peanuts. Check the original case nalang if you are interested  27. color and description. October 16. defendant-appellee. In the case at bar. in other words. A review of former cases decided fails to show a single one wherein there were fewer differences in the general appearance of the packages put up for sale by the respective parties that there are in the several packages presented as exhibits in the case at bar. and ignorance of the style. Issue: Whether respondent is liable for infringement and unfair competition. in most cases of unfair competition the similarity of the goods must appear from the form of general appearance of the goods sold. size. *It deposited with the Phil Library and Museum four fcacsimiles of trademarks for khaki cloth. those things which go to make up the general outside appearances of the article. hindi ko na ininclude yung issue pertaining to “sufficient amount of damages”.' Indeed.

INC. Ltd. with respect to color. Moreover. varnish stains. aluminum enamel paints. No. From this judgment the cross-plaintiff appealed and now argues that the lower court committed the five errors set out in its brief as follows: (1) The court erred in not holding that the trade-mark "Lusolin" of the cross-defendant Germann & Co. its agents. 666. 45502. [G. The CFI of Manila rendered judgment dismissing the cross-complaint of the crossplaintiff on the ground that. as Director of the Bureau of Commerce and Industry. vs. and the sound produced by the pronunciation of the name "Lusolin" which is one of them. and GERMANN & CO.. attorneys. so as to pass off the goods of one man as those of another.. CORNELIO BALMACEDA.. May 2.: Facts: The cross-plaintiff obtained its certificates from the Patent Office of the United States to have exclusive use of the trade-mark and trade-name "Sapolin" for its products and goods. cross-plaintiff-appellant. The questioned trade-mark and trade-name are. Plaintiff asked that the cross-defendant and appellee. In all cases the court will inspect the trade-marks to discover both the differences and their resemblances. as we have said. paints for carriages.R. are almost the same as the trade-mark and trade-name "Sapolin". The cross-defendant itself. this is not such similitude as amounts to identity. appellee. An inspection of the two marks carries conviction to an unbiased and unprejudiced mind. DIAZ. and finally (5) the court erred likewise in not rendering judgment for the cross-plaintiff.. namely: white and colored enamel paints. steel enamel paints. floor wax.. Issues: (1) Is plaintiff entitled to a remedy notwithstanding the fact that its trade-mark or tradename allegedly violated has not been duly registered in the Bureau of Commerce and Industry? (2) Does plaintiff have a right of action based upon unfair competition? Held: . admits the striking similarity between the two trade-marks and trade-names in question. The articles on whose containers are pasted the said trade-mark and trade-name are paints of the kind indicated on the said containers. LTD. against the cross-defendant. The deceptive tendency indicated by copying or imitating the substantial and distinctive part of the trade-mark. is the test of infringement of a trademark. and representatives be joined from selling or offering to sell its products bearing the trade-marked "Lusolin".] SAPOLIN CO. (2) the court erred in ruling that there is no merit in the action brought by the cross-defendant as plaintiff in the initial action in view of the provisions of the said section 4 of the cited law.. 3332.. not having registered in the Bureau of Commerce and Industry the patent or trade-mark certificate which it alleged to have obtained from the Patent Office of the United States. as amended by section 1 of Act No. 28. GERMANN & CO. is sufficient to show infringement. 3332 amendatory of the aforesaid section is unconstitutional. Similarity. The attempt of the defendant was to palm off upon an unwary public his goods as being the goods of the plaintiff. (4) the court erred in not holding that Act No. constitutes an infringement of the cross-plaintiff's trade-mark "Sapolin". J. 1939. design. in its letter to the cross-plaitiff. cross-defendants. it is not entitled to the remedy sought under the provisions section 4 of Act No. etc.. size other characteristics. (3) the court erred in not holding that the cross-plaintiff has a right of action based upon unfair competition. LTD.LIP – Case Digests*2010-2011 Page 35 Ruling: Yes.

approved on December 7. unless it be first shown that the trademark of trade-name alleged to have been violated or which gave rise to the criminal action has been duly registered in the Bureau of Commerce and Industry. The two actions cannot coexist because the first does not require. No action shall be brought for damages for the violation of the rights to use trade-marks defined in the preceding sections nor shall criminal proceedings be entertained as provided in section six of this Act. An action for a violation of a trade-mark or trade-name cannot be brought at the same time as an action for unfair competition. the test for the detection of whether or not there is such a violation. which is unlikely considering that it has no power to so act. it was said and held that there was in fact a violation. 3332. may complain against another who makes use of or imitates the same mark or name although the latter's use thereof may be of prior date. encourage and protect the diligent and not the neglectful. then we would have the case of the Philippine Legislature knowingly enacting a law which openly trenches upon theanother act of Congress. and it has also been stated that it is the said resemblance and not identify that constitutes a sufficient violation. The violation of the trade-mark is established by comparing it with the one allegedly violated and by showing that the resemblance between the two — resemblance which in the case at bar is admitted by the cross-defendant itself— is of such a nature that one can be taken for the other. it seems plain that whoever hears or sees them cannot but think of paints of the same kind and make. 3332. there is no occasion to dwell at length upon the other question raised by the cross-plaintiff-appellant in its brief. by its spirit and letter. to wit: that it was has likewise a cause of action against the cross-defendant for unfair competition. The Philippine Legislature could not have intended to give to section 4 thereof. As to the syllabication and sound of the two trade-names "Sapolin" and "Lusolin" being used for paints. is to stimulate. If it be contended that the aforesaid section should be strictly interpreted. In a case to determine whether the use of the trade-name "Stephens' Blue Black Ink" violated the trade-name "Steelpens Blue Black Ink". An act cannot at once constitute a violation of a trade-mark or trade-name and an unfair competition. reads as follows: SEC. 4. To reach a different conclusion would be like asserting that the section in question is purposeless. unless a trade-mark or trade-name allegedly violated has been duly registered in the Bureau of Commerce and Industry.LIP – Case Digests*2010-2011 Page 36 (1) Yes. Section 4 of Act No. no action to cut short or prevent the violation can be taken against the infringer even in case of a trademark or trade-name registered in the Patent Office of the United States. 1926. and in other cases it was held that trade-names idem sonans constitute a violation in matters of patents and trade-marks and trade-names. as an essential and indispensable condition that there be fraud or deceit. or better still. as amended by Act No. 666. (2) None. and that one is an imitation of the other. the strict interpretation that. as amended by section 1 of Act No. because in the former the idea of fraud or deceit does not enter inasmuch as there is filed with the Bureau of Commerce and Industry the questioned mark or name for the . whereas it is undeniable that it has a purpose inasmuch as there are acts to which it extends and is perfectly applicable. because the purpose of the said section. Having reached the conclusion that there is a great simplicity between the two trademarks and trade-names in question. in accordance with the provisions of this Act. like the second. One who is using a trade-mark or trade-name in his goods or products who has not been negligent in registering the same in the Bureau of Commerce and Industry.

in the manufacture and sale of slippers. petitioner. He contends that the phrase “Ang Tibay” is a descriptive term and therefore.] ANG SI HENG and SALUSTIANA DEE. Petitioner registered the same trademark “Ang Tibay” for pants and shirts in 1932. it is more correct to conclude that the selection by petitioner of the same trademark for pants and shirts was motivated by a desire to get a free ride or the reputation and selling power it has acquired at the expense of the respondent. and FILEMON COSIO. shoes and indoor baseballs since 1910.] ANA L. thereby resulting in damage to them. Inc". respondent. 29. They. In fact. and it is ordered that this case be remanded to the court of origin to the end that it may enter therein the proper orders and decision. WELLINGTON DEPARTMENT STORE INC. whereas in the later. And there is also no occasion to enter upon a discussion of the other questions which are merely a consequence or incident of the two just passed upon. vs. R. The costs will be taxed against the cross-defendant.R. With regard to the infringement. defendants-appellees. And it must be noted that it was the respondent who first used the term “Ang Tibay” and in fact it has already acquired a secondary meaning in a proprietary connotation. pray that the defendant corporation be enjoined from using the business name "Wellington Department Store" and the corporate name "Wellington Department Store. taking into account the findings and opinion herein set forth in favor of the contention of the cross-plaintiff. Inc.. Petitioners/Plaintiff-appellants’ claim: The plaintiffs-appellants allege that the use of the words "Wellington Department Store" as a business name and as a corporate name by the defendant-appellee deceives the public into buying defendant corporation's goods under the mistaken belief that the names are the plaintiff's or have the same source as plaintiffs' goods. therefore. No. In conclusion. 48226. and the Securities and Exchange Commissioner be also ordered to cancel the corporate name "Wellington Department Store. upon presentation by the parties concerned of the evidence which they may deem necessary to adduce. cannot be subject of a trademark. TORIBIO TEODORO. 30. No. 1942. it is proper to say that there is no infringement as the goods sold by the parties are not the same. L-4531. ISSUE: Whether the trademark “Ang Tibay” is registrable HELD: YES. December 14. plaintiffs-appellants. that the Director of Commerce be ordered to cancel the registration of said business name. 1953.LIP – Case Digests*2010-2011 Page 37 registration thereof. fraud and deceit are an essential condition — two acts which can only be committed through trickery and at the back of the intented victim. January 10. BENJAMIN CHUA. Petitioner now assails the validity of respondent’s trademark. G. “Ang Tibay” is not a descriptive term within the meaning of the Trademark Law but rather a fanciful or coined phrase which may properly be appropriated as a trademark. He formally registered it as trademark on September 1915 and as a tradename in 1933. Petitioner claims also that respondent committed infringement with regard to the trademark “Ang Tibay”.R. G. MENDINUETO." Respondents/Defendants-appellees’ claim: . the appealed decision is reversed. ANG. Toribio Teodoro has continuously used “Ang Tibay” both as a trademark and tradename. vs. S.

Republic Act No. and the like. apparels.. by way of special defense. such that its articles and products have acquired a well-known reputation and confusion will result by the use of the disputed name by the defendants' department store. perfumes." b) NO. yet it seems appellees' business and goodwill are the products of their own individual initiative.2 (G. No. 166. Issues: a) Whether the plaintiffs-appellants have acquired a property right in the name "Wellington” b) Whether. acquire a proprietary connotation. respondent. if the defendants-appellees are not liable for any infringement of tradename. that no action may lie in favor of the plaintiffs-appellants herein for damages or injunctive relief for the use by the defendants-appellees of the name "Wellington.] MASSO HERMANOS. G.LIP – Case Digests*2010-2011 Page 38 The defendants Wellington Department Store. petitioner. that of Ang vs. (Section 23.) In the first case this Court stated that even a name or phrase not capable of appropriation as trademark or trade name may. no action for violation thereof can be maintained. and keep a dry goods store for the sale of the same. Lever Brothers Co. Paragraph (e). 1953. A. Jur. DIRECTOR OF PATENTS. that the plaintiffs are engaged in the manufacture or production of shirts. Petitioner’s claim: . 548. The term "Wellington" is either a geographical name or the surname of a person. 673) and Teodoro Kalaw Ng Khe vs. (Section 4. S.. they are liable for unfair competition. No. 7.R. as none is granted by the statute in such cases. But mere geographical names are ordinarily regarded as common property.) As the term cannot be appropriated as a trademark or a trade name. December 29. Teodoro1 (2 Off. the principle therein enunciated cannot be made to apply because the evidence submitted by the appellants did not prove that their business has continued for so long a time that it has become of consequence and acquired a goodwill of considerable value. and Benjamin Chua allege.) Even if Wellington were a surname. Gaz. promulgated on April 18. not wrested by unfair competition from appellants' business and goodwill. No. and children. such that the name or phrase to the purchasing public becomes associated with the business or the products and entitled to protection against unfair competition. The concept of unfair competition has received the attention of this Court in two previous cases. and it is a general rule that the same cannot be appropriated as the subject of an exclusive trademark or trade name. No.R. 1941. it cannot also be validly registered as a trade name. 166. women.) It is evident. Inc. drawers. The right to damages and for an injunction for infringement of a trademark or a trade name is granted only to those entitled to the exclusive use of a registered trademark or trade name. at least. by long and exclusive use by a business with reference thereto or to its products. which is not even that of the plaintiffs-appellants. toys. most of which are different from those manufactured and sold by plaintiffs-appellants. bags. whereas they (the defendants) are not engaged in the same business or in the manufacture or sale of articles with the trademark "Wellington.. 31. (52 Am. Republic Act. L-3952. hats." and that they are keeping a store for articles such as shoes. Ruling: a) NO. vs. and other articles of wear for men. pants.. therefore. It is true that appellants business appears to have been established a few years before the war and appellees' after liberation. 46817. But in the case at bar.

On April 30. Respondent’s claim: The word "Cosmopolite". L-8072. had adopted and used as a trademark of said food seasoning product manufactured by it. On June 14. 1948. DIRECTOR OF PATENTS. among others. The court is. labels were used. S. It does not even describe the place of origin. the registration thereunder is not subsisting. an addition was made to the brand with the words “Ve-Tsin. The respondent Director of Patents contends that the original registration of the trademark under Act No.” and since then. released for circulation on April 18. The application was published in the Official Gazette in its issue of February. on its food seasoning product at different times. as a trademark for canned fish is descriptive of said goods and. petitioner. the ruling of the respondent Director of Patents is set aside and he is ordered to issue to the petitioner a new certificate of registration of the trademark in exchange for the old one No. In view of the foregoing. consisting of a representation of two midget roosters in an attitude of combat with the word “Bantam” printed above them. therefore. Inc. the petitioner. Inc and said corporation took over the manufacture of the same food product of the Advincula family.. before the use of the trademark by the applicant. the Agricom Development Co. In the year 1948. quality or description of the canned fish for which it is used. since the year 1946. 32. in different colors but bearing the representation of a hen and .] LIM HOA. In 1947. 666 was valid and is subsisting.A. 666 of the trademark composed of the word "Cosmopolite" used on canned fish. is not entitled to registration under section 41 (a) of Republic Act No. therefore. including the use of the brand of the pictorial representation of a hen but adding to it the word “Hen”. 166. 1948. that the trademark sought to be registered was confusingly similar to its register mark. which mark or brand was also used on a food seasoning product. The word "Cosmopolite" does not give the name. October 31. the members of the Advincula family organized the Agricom Development Co. Hen Brand” and “Marca Manok. applied to the Director of Patents for a new certificate of registration of said trademark under the provisions of section 41 (a) of Republic Act No. G. a domestic corporation. Petitioner’s claim: Lim Hoa. 166. vs. 1956. opposed the application on several grounds. for it does not indicate the country or place where the canned fish was manufactured.. Issue: Whether the word “Cosmopolite” is descriptive and therefore cannot be registered as a trademark Ruling: NO.R.. filed with the Patent Office an application for the registration of a trademark. Respondent’s claim: The family of C. 666 was "null and void ab initio" because the word "cosmopolite" is descriptive and. consisting of a pictorial representation of a hen with the words “Hen Brand” and “Marca Manok”. Javier Advincula. 1881 surrendered to him on June 18.LIP – Case Digests*2010-2011 Page 39 Masso Hermanos. is the registered owner under Act No.. No. 1953. consequently. of the opinion that the registration of the trademark "Cosmopolite" under Act No. could not have been legally registered as a trademark under the provisions of Act No. the pictorial representation of a hen. 666 and. he claiming that he had used said trademark on a food seasoning product since April 25 of that year. Masso Hermanos. of the same year. therefore. 1953. respondent.

regardless of whether the brand pictures a hen or a rooster or two roosters. 1954. the Advincula family. etc.LIP – Case Digests*2010-2011 Page 40 the words just mentioned. infringement takes place. reads the pamphlets and all literature available. wherein he found and held that to allow the registration of the applicant’s trademark would likely cause confusion or mistake or deceive purchasers. So that the application to register applicant’s brand. and when a cook or a household help or even a housewife buys a food seasoning product for the kitchen the brand of “Manok” or “Marca Manok” would most likely be upper most in her mind and would influence her in selecting the product.. petitioner. describing the article he is planning to buy. ynor it is necessary that the infringing label should suggest an effort to imitate. respondents. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. machinery. 1961. Therein lies the confusion. came along afte r the use and registration of the mark or brand of the corporation and its predecessor. To her. they are all manok.R. There is such similarity between the two brands as to cause confusion in the mind of the public that buys the food seasoning product on the strength and on the indication of the trademark or brand identifying or distinguishing the same. vs. The Director of Patents issued his order dated June 26. is not conclusive. Duplication or imitation is not necessary. Similarity in size. and confusion and deception is likely to result. He is not likely to be deceived by similarity in the trademarks because he makes a more or less thorough study of the same and may even consult his friends about the relative merit and performance of the article or machinery. ET AL. a kitchen article of everyday consumption. for the prospective buyer. that the question of infringement of a trademark is to be determined by the test of dominancy. 33. before making the purchase. and perhaps even makes comparisons with similar articles in the market. even deception. form.. SELECTA BISCUIT COMPANY. Issue: Whether or not Lim Hao should be allowed to register as trademark a representation of two midget roosters in an attitude of combat with the word “Bantam” printed above them Held: No. INC. Said product is generally purchased by cooks and household help. and he refused registration of said trademark. No. while relevant. known as manok in all the principal dialects of the Philippines.] ARCE SONS AND COMPANY. January 28. radio and television sets. with the word “Bantam” printed above them. air conditioning units. The two roosters appearing in the trademark of the applicant and the hen appearing on the trademark of the corporation although of different sexes. such as. Petitioner’s Contention: . The danger of confusion in trademarks and brands which are similar may not be so great in the case of commodities or articles of relatively great value. But in the sale of a food seasoning product. belong to the same family of chicken. as compared to others also for sale. under Rule 178 of the Revised Rules of Practice in Trademark Cases. L-14761. 1953. the circumstances are far different. G. and color. If the competing trademark contains the main or essential or dominant features of another. consisting of two roosters is an attitude of combat. generally the head of the family or a businessman. sometimes illiterate who are guided by pictorial representations and the sound of the word descriptive of said representation.

Inc.. wrapped in cellophane packages. Inc. and (6) that actually a complaint has been filed by the petitioner against respondent for unfair competition in the Court of First Instance of Manila asking for damages and for the issuance of a writ of injunction against respondent enjoining the latter for continuing with the use of said mark. to petitioner's mark as to be mistaken therefor by the public and cause respondent's goods to be sold as petitioner's. .. (5) that the mark to which the application of respondent refers has striking resemblance. as might be calculated to deceive. 1955..LIP – Case Digests*2010-2011 Page 41   Petitioner ARCE SONS started his milk business as early as 1933. Malabon. and that its products may last a year with out spoilage.. has the right to use said trade-mark in the Philippines." and on its delivery trucks "Selecta Biscuit Company. partnership. place in tin containers. (2) that the mark "SELECTA" has already become identified with name of the petitioner and its business.. Quality Always.. (2) that the sale and distribution of petitioner's products are on retail basis. and its place of business is localized at Azcarraga. They filed an opposition to the application for patents filed by respondent Selecta Biscuit Company. Rizal. while the ice cream. (3) that petitioner's signboard on its place of business reads 'SELECTA' and on its delivery trucks "Selecta. Manila. either in the identical form or in any such near resemblance thereto. hereinafter referred to as respondent. Restaurant and Caterer. extending throughout the length and breadth of the Philippines. cakes and other bakery products which petitioner manufactures last only for two or three days. corporation or association . while that of respondent is on a wholesale basis. (4) that respondent is using the word "SELECTA" as a trade-mark as bakery products in unfair competition with the products of petitioner thus resulting in confusion in trade. limited to the City of Manila and suburbs. corner of Lepanto Street and at Dewey Blvd. milk and ice cream from the time of its organization and even prior thereto by its predecessor-in-interest. and cookies. Inc. bakery products. crackers. Tuason Avenue.. filed with the Philippine Patent Office a petition for the registration of the word "SELECTA" as trade-mark to be use in its bakery products alleging that it is in actual use thereof for not less than two months before said date and that "no other persons. but that the latter ignored said warning. Dewey Blvd. both in appearance and meaning. including cakes. (3) that petitioner had warned respondent not to use said mark because it was already being used by the former. Selecta Biscuit Company. milk. He sold his milk products in bottles covered with caps on which the words 'SELECTA FRESH MILK' were inscribed." in contrast with respondent's signboard on its factory which reads "Selecta Biscuit Company."  Respondents also averred that : (1) that its products are biscuits. Telephone No. They alleged that: (1) that the mark "SELECTA" had been continuously used by petitioner in the manufacture and sale of its products. Ramon Arce. Balintawak and Telephone number. Azcarraga. 2-13-27. Respondent’s Contention:  On August 31.

device. 34. In this sense. (6) that the use of the name 'SELECTA' by respondent cannot lead to confusion in the business operation of the parties.000. through its predecessor-in-interest." Verily. J. had made use of the word "SELECTA" not only as a trade-name indicative of the location of the restaurant where it manufactures and sells its products. the law gives its protection and guarantees its used to the exclusion of all others.00 authorized capital. is sign. it may acquire a secondary meaning as to be exclusively associated with its products and business.000. and its sole function is to designate distinctively the origin of the products to which it is attached. but as trade-mark is used." thereby giving to any person entitled to the exclusive use of such trade-mark the right to recover damages in a civil action from any person who may have sold goods of similar kind bearing such trade-mark. name.. or as a badge of authenticity.. therefore.00 out of the P500. erred in holding that petitioner made use of that word merely as a trade-name and not as a trade-mark within the meaning of the law. This is not only in accordance with its general acceptation but with our law on the matter. RULING: The foregoing unmistakably show that petitioner. sold or dealt in by others. may be an ordinary or common word in the sense that may be used or employed by any one in promoting his business or enterprise. respondents.000. but once adopted or coined in connection with one's business as an emblem. The Director of Patents.LIP – Case Digests*2010-2011 Page 42 (4) that the business name of petitioner is different from the business name of respondent. N. And this is the situation of petitioner when it used the word 'SELECTA' as a trade-mark. symbol." The term 'trade-mark' includes any word. vs. VAN DORP. . petitioner.2 In this sense. MEAD JOHNSON & COMPANY. sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured. emblem. " Trade-mark' or trade-name'. its used by another may lead to confusion in trade and cause damage to its business. V. as are other property rights known to the law. the word 'SELECTA' has been chosen by petitioner and has been inscribed on all its products to serve not only as a sign or symbol that may indicate that they are manufactured and sold by it but as a mark of authenticity that may distinguish them from the products manufactured and sold by other merchants or businessmen. or mark by which articles produced are dealt in by particular person or organization are distinguished or distinguishable from those produced or dealt in by other. And it is also in the sense that the law postulates that "The ownership or possession of a trade-mark shall be recognized and protected in the same manner and to the same extent.1 The word 'SELECTA'. (5) that petitioner has only a capital investment of P25. distinction being highly technical.00 whereas respondent has a fully paid-up stock in the amount of P234. sign or device to characterize its products. LTD." A 'trade-mark' is a distinctive mark of authenticity through which the merchandise of a particular producer or manufacturer may be distinguished from that of others. it is true. ET AL.

* contends that the Director of the Patent Office erred (1) in holding that the mark which respondent seeks to register does not resemble petitioner's mark as to be likely when applied to the goods to cause confusion or mistake or to deceive purchasers. while oppositor's products cover pharmaceutical preparations for nutritional needs which fall under Class 6. which refers to Medicines and Pharmaceutical Preparations. Petitioner: *filed an opposition on the ground that it will be damaged by the said registration as the trademark "ALASKA" and pictorial representation of a Boy's Head within a rectangular design. milk products. oppositor filed the present petition for review." * alleged that its trademark and product "ALASKA" are entirely different from oppositor's trademark and product "ALACTA". and because of this impression we are persuaded that said Director was justified in overruling petitioner's opposition. Hence. and (2) in holding that the trademark sought to be registered has become distinctive based on its extensive sales. . Respondent’s Claim: In answer to the opposition the applicant alleged that its trademark and product "ALASKA" are entirely different from oppositor's trademark and product "ALACTA". used for milk. a corporation organized under the laws of Indiana. Hence. milk products. dairy products and infant's foods which fall under Class 47 Foods and Ingredients of Foods. which was registered with the Patent Office on June 12.LIP – Case Digests*2010-2011 Page 43 Petitioner’s Claim: Mead Johnson & Company. ISSUE: WON the trademark ALASKA is registrable. filed an opposition on the ground that it will be damaged by the said registration as the trademark "ALASKA" and pictorial representation of a Boy's Head within a rectangular design (ALASKA disclaimed). since applicant's product covers milk.S. dairy products and infant's foods which fall under Class 47 Foods and Ingredients of Foods. milk products. Isa Pang digest ng 34 Respondent: *filed an application for the registration of the trademark "ALASKA and pictorial representation of a Boy's Head within a rectangular design. being the owner of the trademark "ALACTA" used for powdered half-skim milk. U. which refers to Medicines and Pharmaceutical Preparations. dairy products and infant's foods. dairy products and infant's foods. Issue: Whether there ALASKA is confusingly similar with ALACTA Held: NO. used for milk. 1951.. We have examined the two trademarks as they appear in the labels attached to the containers which both petitioner and respondent display for distribution and sale and we are impressed more by the dissimilarities than by the similarities appearing therein in the same manner as the Director of the Patent Office. we are not prepared to say that said Director has erred in overruling said opposition.A. since applicant's product covers milk. while oppositor's products cover pharmaceutical preparations for nutritional needs which fall under Class 6. is confusingly similar to its trademark "ALACTA". is confusingly similar to its trademark "ALACTA". milk products.

therefore. Hence.LIP – Case Digests*2010-2011 Page 44 HELD: YES. Facts: On February 12.R. respondent company. No. The goods of petitioner come in one-pound container while those of respondent come in three sizes. we are not prepared to say that said Director has erred in overruling said opposition. (c) Petitioner's mark "ALACTA" has only the first letter capitalized and is written in black.. March 31. Thus we find the following dissimilarities in the two marks: (a) The sizes of the containers of the goods of petitioner differ from those of respondent. Inc. 14-1/2-ounce tin of evaporated milk. 35. respondents. and for use of these products there is no need or requirement of a medical prescription. yellowish white and red. we believe that while there are similarities in the two marks there are also differences or dissimilarities which are glaring and striking to the eye as the former. It is true that between petitioner's trademark "ALACTA" and respondent's "ALASKA" there are similarities in spelling. pink and white. One of petitioner's containers has one single background color. MAIDEN FORM BRASSIERE CO. coming to the goods covered by the trademarks in question. and that the said trademark had . Maiden Form Brassiere Co. Respondent's mark "ALASKA" has all the letters capitalized written in white except that of the condensed full cream milk which is in red. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. the other has two background colors. (b) The colors too differ. but in determining if they are confusingly similar a comparison of said words is not the only determinant factor. it appears that the same covers "Pharmaceutical Preparations which Supply Nutritional Needs" which fall under Class 6 of the official classification as Medicines and Pharmaceutical Preparations". or under Class 47 which refers to "Foods and Ingredients of Foods".. 1957. Petitioner Andres Romero filed with the Director a petition for cancellation if said trademark arguing that “Adagio” has become a common descriptive name of a particular style of brassiere and is. milk products. We have examined the two trademarks as they appear in the labels attached to the containers which both petitioner and respondent display for distribution and sale and we are impressed more by the dissimilarities than by the similarities appearing therein in the same manner as the Director of the Patent Office.] ANDRES ROMERO. Having this view in mind. petitioner. and because of this impression we are persuaded that said Director was justified in overruling petitioner's opposition.. G. and was granted by the Director of Patents. vs. Again. INC. dairy products and infant's foods" as set forth in its application for registration which fall under an entirely different class. we also notice the following dissimilarities: In the petitioner's certificate of registration. to wit: 14-ounce tin of full condensed full cream milk. and THE DIRECTOR OF PATENTS. On the other hand. respondent's goods cover "milk. The trademarks in their entirety as they appear in the respective labels must also be considered in relation to the goods to which they are attached.166 of the trademark “Adagio” for the brassieres manufactured by it. unregistrable. to wit: light blue. a foreign corporation filed with respondent director of patents an application for registration pursuant to RA No. 1964. and 6ounce tin of evaporated milk. L-18289. appearance and sound for both are composed of six letters of three syllables each and each syllable has the same vowel. The containers of respondent's goods have two color bands. thus indicating that petitioner's products are not foods or ingredients of foods but rather medicinal and pharmaceutical preparations that are to be used as prescribed by physicians.

petitioner.000. are products intended for use in the home and usually have common purchasers . PETITIONER’S CONTENTION: Chua Che presented with the Philippines Patent Office a petition praying for the registration in his favor the trade name "X-7" for soap.LIP – Case Digests*2010-2011 Page 45 been used by local brassiere manufacturers since 1948 without objection on the part of respondent company. G. The registration of the trademark "X-7" in the name of applicant CHUA CHE will likely mislead the public so as to make them believe that said goods are manufactured or sponsored by or in some way in trade associated with opposer. 1953 the trademark X-7 on perfume. but will still use it. and also over the radio and television.] CHUA CHE. Issue: WON the trademark “Adagio” has become a common descriptive name of a particular style of brassiere and is therefore unregistrable. it is used in an arbitrary (fanciful) sense as a trade mark for brassieres manufactured by respondent company. PHILIPPINE PATENT OFFICE and SY TUO. while specifically different. L-18337. does not affect its registrability as a trademark. “the fact that said mark is used also to designate a particular style of brassiere. Held: No. January 30. respondents. which means slowly or in an easy manner and was used as a trademark by the owners thereof because they are musically inclined. Opposer's record shows that he has been using since July 31. the different styles or types of brassieres. No. The trademark “Adagio” is a musical term. applicant should be entitled to the registration of the same.R. as a trademark. and therefore no infringement and/or confusion may result RESPONDENT’s CONTENTION: Respondent opposed the registration. In these advertisements opposer has spent about P120. Being a musical term. It also appears that respondent company has likewise adopted other musical terms to identify. 1965. lipstick and nail polish. It argues that the principal issue is "priority of adoption and use." Since opposer has not yet used "X-7" mark on soap. The products of the parties. vs. by means of billboards in various places in the Philippines. It has been pointed out by appellant that the product upon which the trademark X-7 will be used (laundry soap) is different from those of appellee's. As respondent director pointed out. There is no question that opposer enjoys a valuable goodwill in the trademark X-7.00.” 36. that he has spent substantial amounts of money in building upon the goodwill of this trademark through advertisements in all kinds of media — through newspapers of general circulation.

J. 207. 37. March 31. DIRECTOR PHARMACEUTICALS. or deception.R. 1966. an opposition was filed by Nestle Philippines. April 4. INC. OF PATENTS and WESTMONT 38. a Philippine corp and a licensee of Societe. appellee's rights to the trademark "X-7". HELD: YES. vs. mistake. as the dominant word present in the 3 trademarks is MASTER. in the same manner as laundry soap. ISSUE: WHETHER OR NOT PURCHASERS OF X-7 PERFUME. filed an Opposition claiming that the trademark is confusingly similar to its trademarks for coffee and coffee extracts: MASTER ROAST and MASTER BLEND. does not detract from the fact that he has already a right to such a trademark and should. Both from the standpoint of priority of use and for the protection of the buying public and. or that the goods of CFC might be mistaken as having originated from the latter. [G. the product on which appellant wants to use the said trademark. respondents. A.LIP – Case Digests*2010-2011 Page 46 The Director of Patents rendered judgment in favor of Sy Tuo.." is indeed well taken. of course. G.G. . ATTRIBUTE COMMON ORIGIN TO THE PRODUCTS OR ASSUME THAT THERE EXISTED SOME KIND OF TRADE CONNECTION BETWEEN APPLICANT AND OPPOSER. 2001. Likewise. 112012. even though the goods fall into different categories.] SOCIETE DES PRODUITS NESTLE v. The fact that appellee Sy Tuo has not yet used the trademark "X-7" on granulated soap. petitioner. L-20635. 2nd.] YEN ETEPHA.. Societe Des Produits Nestle. Nestle claimed that the use by CFC of the trademark FLAVOR MASTER and its registration would likely cause confusion in the trade. CA and CFC CORP YNARES-SANTIAGO. be protected. The likelihood of purchasers to associate those products to a common origin is not far-fetched. lipstick and nail polish or to think that the products have common origin or sponsorship. No.) The products of appellee are common household items nowadays. it becomes manifest that the registration of said trademark in favor of applicant-appellant should be denied. registration of a trademark should be refused in cases where there is a likelihood of confusion. 205 F. (Application of Sylvan Sweets Co. therefore. LIPSTICK AND NAIL POLISH WOULD LIKELY UPON SEEING X-7 LAUNDRY SOAP.R.. While it is no longer necessary to establish that the goods of the parties possess the same descriptive properties.: FACTS: CFC Corp filed with the BPTTT an application for the registration of the trademark FLAVOR MASTER for instant coffee. or deceive purchasers and would falsely suggest to the purchasing public a connection in the business of Nestle. No. The circumstance of non-actual use of the mark on granulated soap by appellee. as previously required under the Trade Mark Act of 1905. a Swiss company registered under Swiss laws and domiciled in Switzerland. The observation of the Director of Patents to the effect that "the average purchasers are likely to associate X-7 laundry soap with X-7 perfume.

The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features. Robert Jaworski and Atty. are given the titles Master of the Game and Master of the Talk Show. In determining if colorable imitation exists. since what is of paramount consideration is the ordinary purchaser who is. It is printed across the middle portion of the label in bold letters almost twice the size of the printed word ROAST. In infringement or trademark cases in the Philippines. In due time. and would therefore be "less inclined to closely examine specific details of similarities and dissimilarities" between the two competing products. ISSUE: Whether the trademark FLAVOR MASTER is a colorable imitation of the trademarks MASTER ROAST and MASTER BLEND and thus should be denied registration. then it would be less likely for the ordinary purchaser to notice that CFC’s trademark FLAVOR MASTER carries the colors orange and mocha while that of Nestle’s uses red and brown. and is therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products.       . The holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. no set rules can be deduced. connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. in general. jurisprudence has developed two kinds of tests . The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitute infringement. particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another.the Dominancy Test and the Holistic Test. Each case must be decided on its own merits. the totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual. CA reversed applying the holistic test. one’s attention is easily attracted to the word MASTER.  Colorable imitation denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons to purchase the one supposing it to be the other. Moreover. aural. similarities or dissimilarities. The totality or holistic test only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks. the word MASTER has always been given emphasis in the TV and radio commercials and other advertisements made in promoting the product. respectively. because of these advertising schemes the mind of the buying public had come to learn to associate the word MASTER with the opposer’s goods.LIP – Case Digests*2010-2011 Page 47 BPTTT denied CFC’s application for registration applying the dominancy test. This Court cannot agree with the above reasoning. If the ordinary purchaser is "undiscerningly rash" in buying such common and inexpensive household products as instant coffee. the personalities engaged to promote the product. HELD: YES applying the dominancy test. Ric Puno. undiscerningly rash in buying the more common and less expensive household products like coffee. Therefore. rather than to the dissimilarities that exist. This Court agrees with the BPTTT when it applied the test of dominancy. When one looks at the label bearing the trademark FLAVOR MASTER. considering that the product is an inexpensive and common household item. The word MASTER is the dominant feature of opposer’s mark. Further. The CA held that the test to be applied should be the totality or holistic test.

qualities or ingredients of a product to one who has never seen it and does not know what it is. June 21. respondents. 111580. SHANGRI-LA PROPERTIES. Inc. THE COURT OF APPEALS. it "forthwith conveys the characteristics.. The term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle." are eligible for protection in the absence of secondary meaning.   39. as Judge." and are not legally protectable." "figurativeness." or comprise the "genus of which the particular product is a species." The term "MASTER" has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. Inc. Ltd. the use by CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers. Generic terms are those which constitute "the common descriptive name of an article or substance. on the ground that the same was illegally and fraudulently obtained and appropriated for the latter's restaurant business." or "imply reference to every member of a genus and the exclusion of individuating characters. DE GUZMAN. INC. INC. J. No. Inc.. Makati Shangri-La Hotel and Resort. and KUOK PHILIPPINE PROPERTIES. HON." or "refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product.. the Shangri-La International Hotel Management.LIP – Case Digests*2010-2011 Page 48 the possibility of confusion as to the goods which bear the competing marks or as to the origins thereof is not farfetched. it may be legally protected. [G. that it has been using the said mark and logo for its corporate affairs and business since March 1962 and caused the same to be specially designed for their international hotels in 1975.  The word "MASTER" is neither a generic nor a descriptive term. FELIX M. 2001. Shangri-La Properties. filed with the Bureau of Patents." Such terms. Branch 99 and DEVELOPERS GROUP OF COMPANIES. they nevertheless involve "an element of incongruity. (hereinafter collectively referred as the "Shangri-La Group"). The Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo. and Kuok Philippine Properties. As such. While suggestive marks are capable of shedding "some light" upon certain characteristics of the goods or services in dispute. Trademarks and Technology Transfer (BPTTT) a petition. A term is descriptive and therefore invalid as a trademark if. INC. praying for the cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies. INC. vs.. 1988.] SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT LTD.. Suggestive terms are those which require "imagination.." or " imaginative effort on the part of the observer. functions.R. "which subtly connote something about the product. MAKATI SHANGRI-LA HOTEL AND RESORT.. much earlier than the alleged first use thereof by the Developers Group in 1982. ." or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination. RTC of Quezon City." or "if it forthwith conveys an immediate idea of the ingredients. thought and perception to reach a conclusion as to the nature of the goods." or are "commonly used as the name or description of a kind of goods.: FACTS: On June 21. as understood in its normal and natural sense. Inc. YNARES-SANTIAGO. petitioners. qualities or characteristics of the goods. As such.

the Regional Trial Court. the issue raised before the trial court was whether the Shangri-La Group infringed upon the rights of Developers Group within the contemplation of Section 22 of Republic Act 166. as well as the Motion for Reconsideration. Intellectual Property Office) continue independently from the infringement case so as to determine whether a registered mark may ultimately be cancelled." Since the certificate still subsists. upon which the infringement case is based. This was denied. Inc. the infringement case can and should proceed independently from the cancellation case with the Bureau so as to afford the owner of certificates of registration redress and injunctive writs. as applied in the case at bar. Intellectual Property Office) by one party. The issue raised before the BPTTT was whether the mark registered by Developers Group is subject to cancellation. 1991. the Developers Group instituted a complaint for infringement and damages with prayer for injunction. or on April 15. As such. In the same light. 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. HELD: YES. the adverse party can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark. the registrant's ownership of the mark or trade-name. so must the cancellation case with the BPTTT (now the Bureau of Legal Affairs. The law and the rules are explicit. The rationale is plain: Certificate of Registration No. The Developers Group filed an opposition to the application. On the other hand. Developers Group may thus file a corresponding infringement suit and recover damages from any person who infringes upon the former's rights. remains valid and subsisting for as long as it has not been cancelled by the Bureau or by an infringement court. Hence. 1992. . Almost three (3) years later. in granting redress in favor of Developers Group. However. v. the issue raised before the BPTTT is quite different from that raised in the trial court. The Shangri-La Group filed a petition for certiorari before the Court of Appeals. ISSUE: Whether or not despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT (now the Bureau of Legal Affairs. 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. as the Shangri-La Group claims prior ownership of the disputed mark. Court of Appeals. business or services specified in the certificate. 31904. Section 151.2 of the Intellectual Property Code substantially provides that the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. On January 8. Developers Group's Certificate of Registration in the principal register continues as "prima facie evidence of the validity of the registration. The Court of Appeals affirmed the decision of the trial court. by the trial court. went further and upheld the validity and preference of the latter's registration over that of the ShangriLa Group. Following both law and the jurisprudence enunciated in Conrad and Company. the Shangri-La Group filed with the BPTTT its own application for registration of the subject mark and logo.LIP – Case Digests*2010-2011 Page 49 Likewise. against the Shangri-La Group. and of the registrant's exclusive right to use the same in connection with the goods. Furthermore.

HON. Trademarks and Technology Transfer. LTD. The Court finds it appropriate to order the suspension of the proceedings before the Bureau pending final determination of the infringement case. With the decision of the Regional Trial Court upholding the validity of the registration of the service mark "ShangriLa" and "S" logo in the name of Developers Group. 114802. filed with the (BPTTT) a petition. INC. 1988. Ltd. for the cancellation of the registration of the "Shangri-La" mark and "S" device/logo issued to the Developers Group of Companies. Likewise.R. 1992. the cancellation case filed with the Bureau hence becomes moot.. 40. Facts: On June 21. Bureau of Patents. June 21. The Developers Group filed an opposition to the application. a complaint for infringement and damages against the Shangri-La Group. where the issue of the validity of the registration of the subject trademark and logo in the name of Developers Group was passed upon. in his capacity as Director. the Court of Appeals has the competence and jurisdiction to resolve the merits of the said RTC decision.LIP – Case Digests*2010-2011 Page 50 There can be no denying that the infringement court may validly pass upon the right of registration. In any event.] DEVELOPERS GROUP OF COMPANIES. . 3529. 1991. On January 8.. IGNACIO S.. or on April 15. the Shangri-La Group filed with the BPTTT its own application for registration of the subject mark and logo. Branch 99. The Shangri-La Group alleged that it is the legal and beneficial owners of the subject mark and logo. (hereinafter collectively referred as the "Shangri-La Group"). Inc. Such a situation is certainly not in accord with the orderly administration of justice. vs. the Developers Group instituted with the Regional Trial Court of Quezon City. 2001. albeit the same is still on appeal. 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 COURT OF APPEALS. respondents. They allege that the same was illegally and fraudulently obtained and appropriated for the latter's restaurant business.. as provided under Section 161 of the Intellectual Property Code. To allow the Bureau to proceed with the cancellation case would lead to a possible result contradictory to that which the Regional Trial Court has rendered. 1992. and SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT. which was docketed as Inter Partes Case No. that it has been using the said mark and logo for its corporate affairs and business since March 1962 and caused the same to be specially designed for their international hotels in 1975. Almost three (3) years later. [G. petitioner.This was denied by the trial court in a Resolution issued on January 16. SAPALO. the Shangri-La International Hotel Management. To provide a judicious resolution of the issues at hand. No. much earlier than the alleged first use thereof by the Developers Group in 1982.

On the other hand. as the Shangri-La Group claims prior ownership of the disputed mark. INC. 41.: Facts: Respondent Cluett Peabody Co. Mandaluyong. petitioner.] AMIGO MANUFACTURING. the issue raised before the BPTTT is quite different from that raised in the trial court. Notwithstanding the foregoing provisions. c) DEVICE. the issue raised before the trial court was whether the Shangri-La Group infringed upon the rights of Developers Group within the contemplation of Section 22 of Republic Act 166. Metro Manila. 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. representation of a sock and magnifying glass on the toe of a sock. On the other hand. The issue raised before the BPTTT was whether the mark registered by Developers Group is subject to cancellation. consisting of a plurality of gold colored lines arranged in parallel relation within a triangular area of toe of the stocking and spread from each other by lines of contrasting color of the major part of the stocking.R. the adverse party can file a subsequent action for infringement with the regular courts of justice in connection with the same registered mark. The Bureau of Patents decided adversely against Amigo Manufacturing. (a Philippine corporation) for cancellation of trademark. absent any sufficient evidence to the contrary. The Bureau considered the totality of the similarities between the two sets of marks and found that they were . It found that the two trademarks are confusingly and deceptively similar to each other are binding upon the courts.. and d) LINENIZED. Furthermore. (a New York corporation) filed a petition against Petitioner Amigo Manufacturing Inc. March 14. as used on men's socks: a) GOLD TOE. 2001.LIP – Case Digests*2010-2011 Page 51 Issue: whether. the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. 139300. Intellectual Property Office) by one party.. and is labeled 'Amigo Manufacturing Inc.. [petitioner's] trademark and device 'GOLD TOP. b) DEVICE. Inc. G.. Linenized for Extra Wear' has the dominant color 'white' at the center and a 'blackish brown' background with a magnified design of the sock's garter. No. Made in the Philippines'.. 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. Respondent claim exclusive ownership of the following trademark and devices. J. vs. Inc. Inc. Ruling: YES. On the other hand. PANGANIBAN. respondent. despite the institution of an Inter Partes case for cancellation of a mark with the BPTTT (now the Bureau of Legal Affairs. The decision pivots on two point: the application of the rule of idem sonans and the existence of a confusing similarity in appearance between two trademarks. CLUETT PEABODY CO.

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of such degree, number and quality as to give the overall impression that the two products are confusingly if not deceptively the same. The CA found that there is hardly any variance in the appearance of the marks 'GOLD TOP' and 'GOLD TOE' since both show a representation of a man's foot wearing a sock, and the marks are printed in identical lettering. [Petitioner]'s mark is a combination of the different registered marks owned by [respondent]. Issues: (1) Was petitioner's trademark used in commerce in the Philippines earlier than respondent's actual use of its trademarks? (2) Is petitioner's trademark confusingly similar to respondent's trademarks? (3) Is the Paris Convention applicable? Held: 1st Issue: Dates of First Use of Trademark and Devices (1)No. Respondent had actually used the trademark and the devices in question prior to petitioner's use of its own. During the hearing at the Bureau of Patents, respondent presented Bureau registrations indicating the dates of first use in the Philippines of the trademark and the devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the Representation of a Sock and a Magnifying Glass; c) January 30, 1932, the Gold Toe Representation; and d) February 28, 1952, "Linenized." The registration of the above marks in favor of respondent constitutes prima facie evidence, which petitioner failed to overturn satisfactorily, of respondent's ownership of those marks, the dates of appropriation and the validity of other pertinent facts stated therein. Moreover, the validity of the Certificates of Registration was not questioned. Neither did petitioner present any evidence to indicate that they were fraudulently issued. Consequently, the claimed dates of respondent's first use of the marks are presumed valid. Clearly, they were ahead of petitioner's claimed date of first use of "Gold Top and Device" in 1958. Furthermore, petitioner registered its trademark only with the supplemental register. In La Chemise Lacoste v. Fernandez, the Court held that registration with the supplemental register gives no presumption of ownership of the trademark. 2nd Issue: Similarity of Trademarks (2) Yes. Petitioner points out that the director of patents erred in its application of the idem sonans rule, claiming that the two trademarks "Gold Toe" and "Gold Top" do not sound alike and are pronounced differently. It avers that since the words gold and toe are generic, respondent has no right to their exclusive use. The arguments of petitioner are incorrect. True, it would not be guilty of infringement on the basis alone of the similarity in the sound of petitioner's "Gold Top" with that of respondent's "Gold Toe." Admittedly, the pronunciations of the two do not, by themselves, create confusion. The Bureau of Patents, however, did not rely on the idem sonans test alone in arriving at its conclusion. This fact is shown in the following portion of its Decision: "As shown by the drawings and labels on file, the mark registered by Respondent is a combination of the abovementioned trademarks registered separately by the petitioner in the Philippines and the United States. "With respect to the issue of confusing similarity between the marks of the petitioner and that of the respondent-registrant applying the tests of idem sonans, the mark 'GOLD TOP & DEVICE' is confusingly similar with the mark 'GOLD TOE'. The difference in sound occurs only in the final letter at the end of the marks. For the same reason, hardly is there any variance in their appearance. 'GOLD TOE' and 'GOLD TOP'

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are printed in identical lettering. Both show [a] representation of a man's foot wearing a sock. 'GOLD TOP' blatantly incorporates petitioner's 'LINENIZED' which by itself is a registered mark."13 The Bureau considered the drawings and the labels, the appearance of the labels, the lettering, and the representation of a man's foot wearing a sock. Obviously, its conclusion is based on the totality of the similarities between the parties' trademarks and not on their sounds alone. In the present case, a resort to either the Dominancy Test or the Holistic Test shows that colorable imitation exists between respondent's "Gold Toe" and petitioner's "Gold Top." A glance at petitioner's mark shows that it definitely has a lot of similarities and in fact looks like a combination of the trademark and devices that respondent has already registered; namely, "Gold Toe," the representation of a sock with a magnifying glass, the "Gold Toe" representation and "linenized." An examination of the products in question shows that their dominant features are gold checkered lines against a predominantly black background and a representation of a sock with a magnifying glass. In addition, both products use the same type of lettering. Both also include a representation of a man's foot wearing a sock and the word "linenized" with arrows printed on the label. Lastly, the names of the brands are similar -- "Gold Top" and "Gold Toe." Moreover, it must also be considered that petitioner and respondent are engaged in the same line of business. 3rd Issue:The Paris Convention (3)Yes. Petitioner claims that the CA erred in applying the Paris Convention. Although respondent registered its trademark ahead, petitioner argues that the actual use of the said mark is necessary in order to be entitled to the protection of the rights acquired through registration. As already discussed, respondent registered its trademarks under the principal register, which means that the requirement of prior use had already been fulfilled. To emphasize, Section 5-A of Republic Act 166 requires the date of first use to be specified in the application for registration. Since the trademark was successfully registered, there exists a prima facie presumption of the correctness of the contents thereof, including the date of first use. Petitioner has failed to rebut this presumption. Thus, applicable is the Union Convention for the Protection of Industrial Property adopted in Paris on March 20, 1883, otherwise known as the Paris Convention, 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,17 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. 42. G.R. No. 118192. October 23, 1997.] PRO LINE SPORTS CENTER, INC., and QUESTOR CORPORATION, petitioners, vs. COURT OF APPEALS, UNIVERSAL ATHLETICS INDUSTRIAL PRODUCTS, INC., and MONICO SEHWANI, respondents. Facts: Proline is the exclusive distributor of Spalding sports products in the Philippines, while Questor, a US-based corporation became the owner of the trademark “Spalding”. They filed a petition against respondent Universal, a domestic corporation which manufactures and sell sports goods

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including fake “spalding balls”. By virtue of valid search warrant, Universal’s factory was searched resulting to the seizure of fake “spalding balls” and the instruments used in the manufacture thereof. Civil and criminal cases were filed against Universal. The civil case was dropped for it was doubtful whether Questor had indeed acquired the registration rights over the mark “spalding”. The criminal case was also dismissed due to insufficiency of evidence through a demurrer. The CA affirmed the lower court’s decision. Universal thereafter, filed for damages against Proline and Questor which was granted by the lower court and affirmed by the CA. Issue: Are Proline and Questor liable for damages to Universal for the wrongful recourse to court proceedings? Held: Proline and Questor cannot be adjudged liable for damages for the alleged unfounded suit. Universal failed to show that the filing of criminal charges of petitioner herein was bereft of probable cause. Petitioners could not have been moved by legal malice in instituting the criminal complaint for unfair competition. We are disposed, under circumstances, to hold that Proline as the authorized agent of Questor, exercised sound judgment in taking the necessary legal steps to safeguard the interest of its principal with respect to the trademark in question.

43. G.R. No. 123248. October 16, 1997.] TWIN ACE HOLDINGS CORPORATION, petitioner, vs. COURT OF APPEALS and LORENZANA FOOD CORPORATION, respondents. Petitioner’s Claim: TWIN ACE filed a complaint for replevin to recover three hundred eighty thousand (380,000) bottles of 350 ml., 375 ml, and 750 ml. allegedly owned by it but detained and used by LORENZANA as containers for native products without its express permission, in violation of RA No. 623. This law prohibits the use of registered bottles and other containers for any purpose other than that for which they were registered without the express permission of the owner. Respondent’s Claim: LORENZANA moved to dismiss the complaint on the ground that RA No. 623 could not be invoked by TWIN ACE because the law contemplated containers of non-alcoholic beverages only. But, assuming arguendo that the law applied in TWIN ACE's favor, the right of LORENZANA to use the bottles as containers for its patis and other native products was expressly sanctioned by Sec. 6 of the same law and upheld by this Court in Cagayan Valley Enterprises, Inc. v. Court of Appeals. Issue: Whether to grant the petition to enjoin Lorenzana from using the bottles of Twin Ace Held: We deny the petition. The question of whether registered containers of hard liquor such as rhum, gin, brandy and the like are protected by RA No. 623 has already been settled in Cagayan Valley Enterprises, Inc. v. Court of Appeals. 7 In that case, the Court dealt squarely with the issue and ruled in the affirmative reasoning that hard liquor, although regulated, is not prohibited by law, hence, still within the purview of the phrase "other lawful beverages"

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protected by RA No. 623, as amended. Consequently petitioner therein Cagayan Valley Enterprises, Inc. was enjoined from using the 350 ml. white flint bottles of La Tondeña, Inc., with the marks of ownership "La Tondeña, Inc." and "Ginebra San Miguel" for its own liquor products. But while we adopt the foregoing precedent and rule in accordance therewith, we will not decide this case in favor of petitioner because it is quite clear that respondent falls within the exemption granted in Sec. 6 which states: "The provisions of this Act shall not be interpreted as prohibiting the use of bottles as containers for "sisi," "bagoong," "patis," and similar native products."

44. G.R. Nos. L-27425 & L-30505. April 28, 1980.] CONVERSE RUBBER CORPORATION and EDWARDSON MANUFACTURING CORPORATION, plaintiffs-appellants, vs. JACINTO RUBBER & PLASTICS CO., INC., and ACE RUBBER & PLASTICS CORPORATION, defendants-appellants. Petitioner’s Contention: Plaintiffs contend that "Custombuilt" shoes are Identical in design and General appearance to "Chuck Taylor" and, claiming prior Identification of "Chuck Taylor" in the mind of the buying public in the Philippines, they contend that defendants are guilty of unfair competition by selling "Custombuilt" of the design and with the general appearance of "Chuck Taylor". The design and appearance of both products, as shown by the samples and photographs of both products, are not disputed. Respondent’s Contention: Defendants insist that (a) there is no similarity in design and general appearance between "Custombuilt" and "Chuck Taylor", pointing out that "Custombuilt" is readily Identifiable by the tradename "Custombuilt" appearing on the ankle patch, the heel patch, and on the sole. It is also vigorously contended by defendants that the registration of defendant Jacinto Rubber's trademark "Custombuilt" being prior to the registration in the Philippines of plaintiff Converse Rubber's trademark "Chuck Taylor", plaintiffs have no cause of action. It appears that defendant started to manufacture and sell "Custombuilt" of its present design and with its present appearance in 1962. ISSUE: WHETHER DEFENDAT IS GUILTY OF UNFAIR COMPETITION WHEN DEFENDANT JACINTO RUBBER & PLASTICS CO., INC., MANUFACTURED AND SOLD RUBBER-SOLED CANVASS SHOES UNDER ITS REGISTERED TRADE MARK "CUSTOMBUILT” HELD: From said examination, We find the shoes manufactured by defendants to contain, as found by the trial court, practically all the features of those of the plaintiff Converse Rubber Corporation and manufactured, sold or marketed by plaintiff Edwardson Manufacturing Corporation, except for heir respective brands, of course. We fully agree with the trial court that "the respective designs, shapes, the colors of the ankle patches, the bands, the toe patch and the soles of the two products are exactly the same ... (such that) at a distance of a few meters, it is impossible to distinguish "Custombuilt" from "Chuck Taylor". These elements are more than sufficient to serve as basis for a charge of unfair competition. Even if not all the details just mentioned were Identical, with the general appearances alone of the two products, any ordinary, or even perhaps even a not too perceptive and discriminating customer could be deceived, and,

1982. a citizen residing in Iloilo City. the imitator must be held liable. In fine. butter and cooking oil. petitioner caused the registration of said trademark with the Philippine Patent Office under certificates of registration Nos. respondent Ng Sam. 1352-S and 1353S. on its products in 1922. The records of this case disclose that the term "CAMIA" has been registered as a trademark not only by petitioner but by two (2) other concerns. Alleged date of first use of the trademark by respondent was on February 10. Custombuilt could easily be passed off for Chuck Taylor. 45. INC. ISSUE: Whether or not the product of respondent. 1352-S covers vegetable and animal fats. ham.LIP – Case Digests*2010-2011 Page 56 therefore. 1949.  Petitioner filed an opposition against respondent Ng Sam’s application for patents. filed an application with the Philippine Patent office for registration of the Identical trademark "CAMIA" for his product. Ng Sam. July 30. "Ham" is not a daily food fare for the average . 1959. Respondent’s Contention:  On November 25. Certificate of Registration No. this alone cannot serve as the decisive factor in the resolution of whether or not they are related goods.. butter. vs. The observation and conclusion of the Director of Patents are correct. polishing materials and soap of all kinds. ham. polishing materials and soap of all kinds (Class 4). Petitioner’s Contention:  The trademark "CAMIA" was first used ill the Philippines by petitioner Philippine Refining Co. all classified under Class 47 (Foods and Ingredients of Food) of the Rules of Practice of the Patent Office. G. Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. L-26676. Respondent desires to use the same on his product. While ham and some of the products of petitioner are classified under Class 47 (Foods and Ingredients of Food). which is ham. and those of petitioner consisting of lard. both issued on May 3. respondents.. The trademark "CAMIA" is used by petitioner on a wide range of products: lard.] PHILIPPINE REFINING CO.R. much less cause damage to petitioner. particularly lard. which likewise falls under Class 47. cooking oil. The particular goods of the parties are so unrelated that consumers would not in any probability mistake one as the source or origin of the product of the other. 1353-S applies to abrasive detergents. the Court hold that the business of the parties are non-competitive and their products so unrelated that the use of identical trademarks is not likely to give rise to confusion. RULING: The mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on articles of a different description. NG SAM and THE DIRECTOR OF PATENTS. Jurisprudence supports the view that under such circumstances. while certificate of registration No. abrasive detergents. No. petitioner. 1960. cooking oil and soap are so related that the use of the same trademark "CAMIA" on said goods would likely result in confusion as to their source or origin. In 1949. butter.

A consumer would not reasonably assume that. FACTS: Petitioner’s Claim: The complaint alleged that the petitioner had been for many years engaged in the sale of petroleum products and its trademark ESSO had acquired a considerable goodwill to such an extent that the buying public had always taken the trademark ESSO as equivalent to high quality petroleum products. petitioner. 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. if ever. The mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind.LIP – Case Digests*2010-2011 Page 57 consumer. .R. INC. petitioner has so diversified its business as to include the product of respondent. deceived and misled that they came from the same maker or manufacturer. No. Besides. it is indispensable that the mark must be used by one person in connection or competition with goods of the same kind as the complainant's. respondents. In the situation before us. while the product of respondent is processed from pig's legs. vs. Respondent contended that in order that there may be trademark infringement. the goods of petitioners are basically derived from vegetable oil and animal fats. They are so foreign to each other as to make it unlikely that purchasers would think that petitioner is the manufacturer of respondent's goods. 1982. One purchasing ham would exercise a more cautious inspection of what he buys on account of it price. there can be no likelihood for the consumer of respondent's ham to confuse its source as anyone but respondent. or is actually. G. cigarettes.. the goods are obviously different from each other with "absolutely no iota of similitude" as stressed in respondent court's judgment. is the purchase of said food product delegated to household helps. his business name "SAM'S HAM AND BACON FACTORY" written in bold white letters against a reddish orange background. except perhaps to those who. are expected to know their business. L-29971. is certain to catch the eye of the class of consumers to which he caters. Respondent’s Claim: In its answer. The facsimile of the label attached by him on his product.] ESSO STANDARD EASTERN. 46. Seldom. and the product of respondent. THE HONORABLE COURT OF APPEALS ** and UNITED CIGARETTE CORPORATION. are non-competing. petroleum products. ISSUE: WHETHER THERE WAS TRADEMARK INFRINGEMENT HELD: It is undisputed that the goods on which petitioner uses the trademark ESSO. like the cooks. But as to whether trademark infringement exists depends for the most part upon whether or not the goods are so related that the public may be. respondent admitted that it used the trademark ESSO on its own product of cigarettes. August 31. In addition. which was not Identical to those produced and sold by petitioner and therefore did not in any way infringe on or imitate petitioner's trademark.

R. May 21. A search warrant was issued by the trial court.” “Chemise Lacoste. 1984. S. 1963 covering garments similar to petitioner’s products like women’s panties and pajamas. which the court granted. respondents.” “Crocodile Device” and a composite mark consisting of the word “Lacoste” and a representation of a crocodile/alligator. is the registrant of a trademark FRUIT FOR EVE in the Philippine Patent Office and was issued a Certificate of Registration No.R. 10160. Manila and GOBINDRAM HEMANDAS. vs. used on clothings and other goods sold in many parts of the world and which has been marketed in the Philippines (notably by Rustans) since 1964. In 1980. effectively cancels the registration of contrary claimants to the enumerated marks. petitioner. It must be noted that one may be declared an unfair competitor even if his competing trademark is registered. Various goods and articles were seized upon the execution of the warrants. and the goods ordered to be returned. women’s and children’s underwear. is the registrant of a trademark.”In 1983. Presiding Judge of Branch XLIX. on January 10. 1965. Nos. Registration in the Supplemental Register cannot be given a posture as if the registration is in the Principal Register. La Chemise Lacoste filed with the NBI a letter complaint alleging acts of unfair competition committed by Hemandas and requesting the agency’s assistance. Hemandas filed motion to quash the warrants. respondents. La Chemise Lacoste is world renowned mark. On march 31. COURT OF APPEALS and GENERAL GARMENTS CORPORATION. was issued certificate of registration for the trademark “Chemise Lacoste and Q Crocodile Device” both in the supplemental and Principal Registry. which include “Lacoste. INC. 1984. Regional Trial Court. a complaint for infringement of trademark and unfair competition against the herein private respondent. HON. petitioner filed before the lower court. Facts: La chemise Lacoste is a French corporation and the actual owner of the trademarks “Lacoste. vs.] LA CHEMISE LACOSTE. G. In 1975 and 1977.. assignee of Hemandas Q. The classes of merchandise covered by the Registration are men’s. La Chemise Lacoste SA filed for the registration of the “Crocodile device” and “Lacoste”.Co. L-32747. FRUIT OF THE LOOM. G. Facts: Petitioner. petitioner. Hemandas Q. National Capital Judicial Region. which includes women’s panties and which fall under class 40 in the Philippine Patent Office’s classification of goods. Hemandas cannot be allowed to continue the trademark “Lacoste” for the reason that he was the first registrant in the Supplemental Register of a trademark used in international commerce. Held: No. 63796-97. The search warrants were recalled. and by virtue of the 20 November 1980 Memorandum of the Minister of Trade to the director of patents in compliance with the Paris Convention for the protection of industrial property.LIP – Case Digests*2010-2011 Page 58 47. November 29. A. Private respondent.] FRUIT OF THE LOOM. a domestic corporation. Inasmuch as the goodwill and reputation of La Chemise Lacoste products date back even before 1964. Games and Garments (Gobindram Hemandas. United States of America. Petitioner principally alleged in the complaint that private respondent’s trademark FRUIT FOR EVE is confusingly similar to its trademark FRUIT OF THE LOOM used also on women’s panties and other textile . La Chemise Lacoste filed a petition for certiorari.. No. Co.) opposed the registration of “Lacoste. Issue: WON the trademark “Chemise Lacoste and Q Crocodile Device” is registrable. OSCAR C. a corporation duly organized and existing under the laws of the State of Rhode Island.” 48. FERNANDEZ.

the word FRUIT is not at all made dominant over the other words. FRUIT OF THE LOOM is wholly different from FRUIT FOR EVE. The CA reversed the judgment of the lower court and dismissed the complaint. Held: In the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE. petitioner. the lone similar word is FRUIT. 1987. G. as to mistake one for the other. As to the design.LIP – Case Digests*2010-2011 Page 59 products. FERNAN. at least a modicum of intelligence to be able to see the obvious differences between the two trademarks in question. as amended. 49. DIRECTOR OF PATENTS. No. January 8. and TIBURCIO S.] CONVERSE RUBBER CORPORATION. filed an application with the Philippine Patent office for registration of the trademark “UNIVERSAL CONVERSE AND DEVICE” used on rubber shoes and rubber slippers. PETITIONER’s CONTENTION Converse Rubber Corporation filed its opposition to the application for registration on grounds that (a) the trademark sought to be registered is confusingly similar to the word “CONVERSE” which is part of petitioner’s corporate name “CONVERSE RUBBER CORPORATION” as to likely deceive purchasers of products on which it is to be used to an extent that said products may be mistaken by the unwary public to be manufactured by the petitioner. the similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and general appearance of their respective hang tags. it could hardly be said that it will provoke a confusion. vs. We agree with the respondent court that by mere pronouncing the two marks. After trial. and credited with. UNIVERSAL RUBBER PRODUCTS. INC. judgment was rendered by the lower court in favor of herein petitioner. RESPONDENT’s CONTENTION . RA 166. we believe that a person who buys petitioner’s products and starts to have a liking for it. We are impressed more by the dissimilarities than the similarities appearing therein. Furthermore. will not get confused and reach out for private respondent’s products when she goes to a garment store. We do not agree with petitioner that the dominant feature of both trademarks is the word FRUIT for even in the printing of the trademark in both hang tags. and. EVALLE. L-27906. J.: Universal Rubber Products.R. Furthermore. (b) the registration of respondent’s trademark will cause great and irreparable injury to the business reputation and goodwill of petitioner in the Philippines and would cause damage to said petitioner within the meaning of Section 8. We hold that the trademarks FRUIT OF THE LOOM and FRUIT FOR EVE do not resemble each other as to confuse or deceive an ordinary purchaser. and coloring scheme of the hang tags. Inc. Standing by itself. Issue: WON the products of the parties are confusingly similar. it was also alleged therein that the color get-up and general appearance of private respondent’s hang tag consisting of a big red apple is a colorable imitation to the hang tag of petitioner. The ordinary purchaser must be thought of as having.

This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied for registration of the trademark in question. therefore. The trademark of “UNIVERSAL CONVERSE and DEVICE” is imprin ted in a circular manner on the side of its rubber shoes. any ordinary. It would be sufficient.. . From a cursory appreciation of the corporate name of “CONVERSE RUBBER CORPORATION. or even perhaps even [sic] a not too perceptive and discriminating customer could be deceived. ISSUE: WHETHER OR NOT THE RESPONDENT'S PARTIAL APPROPRIATION OF PETITIONER'S CORPORATE NAME IS OF SUCH CHARACTER THAT IT IS CALCULATED TO DECEIVE OR CONFUSE THE PUBLIC TO THE INJURY OF THE PETITIONER TO WHICH THE NAME BELONGS. it is duly organized under the laws of Massachusetts.” Even if not all the details ju st mentioned were identical.’ it is evident that the word “CONVERSE” is the dominant word which identifies Converse Rubber from other corporations engaged in similar business.LIP – Case Digests*2010-2011 Page 60 1] The petitioner's corporate name is "CONVERSE RUBBER CORPORATION" and has been in existence since July 31. that the word “CONVERSE” belongs to and is being used by Converse Rubber. The determinative factor in ascertaining whether or not marks are confusingly similar to each other “is not whether the challenged mark would actually cause commission 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. 2] Petitioner is not licensed to do business in the Philippines and it is not doing business on its own in the Philippines. HELD: YES. Appropriation by another of the dominant part of a corporate name is an infringement. Massachusetts. County of Middle sex. There is confusing similarity between its trademark “UNIVERSAL CONVERSE AND DEVICE” and Converse Rubber’s corporate name and/or its trademarks “CHUCK TAYLOR” and “ALL STAR DEVICE” which could confuse the purchasing public to the prejudice of Converse Rubber. Malden. 3] Petitioner manufacturers rubber shoes and uses thereon the trademarks "CHUCK TAYLOR "and "ALL STAR AND DEVICE". Universal Rubber has no right to appropriate the same for use on its products which are similar to those being produced by Converse Rubber. Universal Rubber admitted Converse Rubber’s existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes. Knowing. with the general appearance alone of the two products. The Director of Patents Evalle dismissed the opposition of Converse Rubber and gave due course to Universal Rubber’s application. 1946. for purposes of the law. and is in fact the dominant word in Converse Rubber’s corporate name. In the same manner. MR denied. and. 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 new brand for it. USA and doing business at 392 Pearl St.” A corporation is entitled to the cancellation of a mark that is confusingly similar to its corporate name. the trademark of Converse Rubber which reads “CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the side of its rubber shoes.

respondents. vs. 75067. No. Consequently. January 30.. a foreign corporation organized and existing under the laws of the United States. Contrary to the petitioner’s assertion.G. as denied in the Paris Convention. on the one hand. a Filipino citizen. K. No. 51. was never appealed to us. vs. all of which involved the trademark HUSH PUPPIES and DEVICE. February 26. however. G. ISSUE: Is the present petition for cancellation barred by res judicata? HELD: Yes. Subsequently. the Director of Patents denied the petition for cancellation. Consequently. petitioner. On appeal. on the other hand.LIP – Case Digests*2010-2011 Page 61 50. That Sec. brought a petition before the Philippine Patent Office the cancellation of Certificate of Registration of the trademark HUSH PUPPIES and DOG DEVICE issued to the private respondent. the following requisites must concur: (1) it must be a final judgment. INC. in the cancellation cases filed in 1973. In support of its petition for cancellation. G.R. averring that in 1973. upon reconsideration the latter was revived. the same petitioner filed two petitions for cancellation. or more than ten years before this petition was filed.R. HONORABLE COURT OF APPEALS AND LOLITO P. subject matter. A judgment or order is final. 1989. belong to the same class such that the private respondent’s use of the same trademark in the Philippines (which is a member of said Paris Convention) in connection with the goods he sells constitutes an act of unfair competition. the petitioner. and cause of action. THE INTERMEDIATE APPELLATE COURT and MIL-ORO MANUFACTURING CORPORATION. as to parties. and (4) there must be Identity between the two cases. 1988. as to give it the authority of res judicata. if it can no longer be modified by the court issuing it or by any other court. that it is the registrant of the internationally known trademark HUSH PUPPIES and the DEVICE of a Dog in the United States and in other countries which are members of the Paris Convention for the Protection of Industrial Property. allows the cancellation of a registered trademark is not a valid premises for the petitioner’s proposition that a decision granting registration of a trademark cannot be imbued with the character of absolute finality as is required in res judicata. inter alia. also known as the Trademark Law. the Court of Appeals at first set aside the Director’s decision.] WOLVERINE WORLDWIDE. (2) the court which rendered it had jurisdiction over the subject matter and the parties. FACTS: On February 8. 1984. and by the petitioner. petitioner. the petitioner alleged. that the goods sold by the private respondent. the judgment in the previous cases involving respondent’s trademark registration had long since become final and executor. 17 of Republic Act 166. CRUZ. The Court has repeatedly held that for a judgment to be a bar to a subsequent case. In the case at bar. respondents. the decision of the Court of Appeals affirming that of the Director of Patents. The Director of Patents had ruled in all three inter parties cases in favor of the private respondent’s predecessor-in-interest.. (3) it must be a judgment on the merits. 78298. with no appeal having been perfected. before the Philippine Patent Office. when the period to appeal from the Court of Appeals to this Court lapsed.] YEN PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER. the private respondent moved to dismiss the petition on the ground of res judicata. the foregoing judgment denying cancellation of registration in the name of private . The CA affirmed these decisions.

] DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION. J.1965. under the Del Monte trademark and logo. final decision. distribution and sale of various kinds of sauce. for which it was granted Certificate of Trademark Registration No. the fundamental principle of res judicata applies to all cases and proceedings in whatever form they may be. 1983. reviewable by the Court of Appeals and by the SC. generally. No. We now expressly affirm that this principle applies. Del Monte Corporation is a foreign company organized under the laws of the United States and not engaged in business in the Philippines. granted Philpack the right to manufacture. Respondent Sunshine Sauce Manufacturing Industries was issued a Certificate of Registration by the Bureau of Domestic Trade on April 17. respondents. The Court of Appeals affirmed the decision. 1972.LIP – Case Digests*2010-2011 Page 62 respondent’s predecessor-in-interest but ordering cancellation of registration in the name of the petitioner’s predecessor-in-interest. CRUZ. . the complainants had failed to establish the defendant's malice or bad faith. packing. The product itself was contained in various kinds of bottles. petitioners. After trial. Philpack warned it to desist from doing so on pain of legal action. On November 20. Del Monte also obtained two registration certificates for its trademark "DEL MONTE" and its logo. Furthermore. claiming that the demand had been ignored. including catsup. identified by the logo Sunshine Fruit Catsup. Del Monte authorized Philpack to register with the Philippine Patent Office the Del Monte catsup bottle configuration. Undoubtedly. Sunshine alleged that it had long ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners. in the appropriate cases. vs. 1990. with a prayer for damages and the issuance of a writ of preliminary injunction. SR-913 by the Philippine Patent Office under the Supplemental Register. In its answer. It held that there were substantial differences between the logos or trademarks of the parties. This logo was registered in the Supplemental Register on September 20. January 25. 78325. became the settled law in the case.1980. orders and resolutions. Having received reports that the private respondent was using its exclusively designed bottles and a logo confusingly similar to Del Monte's. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES. 52. It must be stressed anew that. On April 11.R. FACTS: Petitioner Philippine Packing Corporation (Philpack) is a domestic corporation duly organized under the laws of the Philippines. distribute and sell in the Philippines various agricultural products. G. 1969. including the Del Monte bottle. which the private respondent bought from the junk shops for recycling. that the defendant had ceased using the petitioners' bottles. Thereafter. On October 27. Philpack and Del Monte filed a complaint against the private respondent for infringement of trademark and unfair competition. to proceedings for cancellation of trademarks before the Philippine Patent. the Regional Trial Court of Makati dismissed the complaint. to engage in the manufacture. in fact. of the Director of Patents are clothed with a judicial character as they are. and that in any case the defendant became the owner of the said bottles upon its purchase thereof from the junk yards. which was an essential element of infringement of trademark or unfair competition.

Not to be Refilled" was embossed on the bottle. What is undeniable is the fact that when a manufacturer prepares to package his product. At that. claiming that the demand had been ignored. the figure nevertheless approximates that of a tomato. Philpack and Del Monte filed a complaint against the private respondent for infringement of . law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. A number of courts have held that to determine whether a trademark has been infringed. While the Court does recognize the distinctions between the products of Del Monte and Sunshine. With regard to the use of Del Monte's bottle. the same constitutes unfair competition. hence. It seems to us that the lower courts have been so pre-occupied with the details that they have not seen the total picture. private respondent Sunshine. The judge must be aware of the fact that usually a defendant in cases of infringement does not normally copy but makes only colorable changes. the person who infringes a trade mark does not normally copy out but only makes colorable changes. If the buyer is deceived. When as in this case. it is attributable to the marks as a totality. As previously stated. As Sunshine's label is an infringement of the Del Monte's trademark. is such as to likely result in his confounding it with the original. Thereafter. The predominant colors used in the Del Monte label are green and red-orange. Sunshine chose. he has before him a boundless choice of words.LIP – Case Digests*2010-2011 Page 63 ISSUE: Whether or not there was trademark infringement and unfair competition HELD: YES. the respondent should be permanently enjoined from ISA PANG 52—dalawa ung nagdigest (hahaha) Petitioner’s Claim: Having received reports that the private respondent was using its exclusively designed bottles and a logo confusingly similar to Del Monte's. employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. As for the unfair competition. without a reasonable explanation. colors and symbols sufficient to distinguish his product from the others. phrases. the inevitable conclusion is that it was done deliberately to deceive . Philpack warned it to desist from doing so on pain of legal action. it does not agree with the conclusion that there was no infringement or unfair competition. 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. we must consider the mark as a whole and not as dissected. This clearly shows the private respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte. despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation. The word "catsup" in both bottles is printed in white and the style of the print/letter is the same. not usually to any part of it. to use the same colors and letters as those used by Del Monte though the field of its selection was so broad. 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. Although the logo of Sunshine is not a tomato. the same with Sunshine. still opted to use the petitioners' bottle to market a product which Philpack also produces.

Reg. INC. on the other handclaims that it used the word "Isetann" as part of its corporate name and on its products particularly on shirts in Joymart Department Store sometime in January 1979. 1983. Defendant's contention: • Private respondent. respectively. 52422 and 52423 respectively. 4701 and 4714. vs.. hence. 1991. the same constitutes unfair competition. and ISETANN DEPARTMENT STORE. • The suffix "Tann" means an altar. THE DIRECTOR OF PATENTS. As Sunshine's label is an infringement of the Del Monte's trademark. Tokyo in which the establishment was first located and "Tan" which was taken from "Tanji Kosuge the First". the same with Sunshine.LIP – Case Digests*2010-2011 Page 64 trademark and unfair competition. actions . The predominant colors used in the Del Monte label are green and red-orange. The trademark "Isetan" and "Young Leaves Design" were registered in Japan covering more than 34 classes of goods. the figure nevertheless approximates that of a tomato. the place of offering in Chinese and this was adopted to harmonize the corporate name and the corporate logo of two hands in cup that symbolizes the act of offering to the Supreme Being for business blessing. LTD. The word "catsup" in both bottles is printed in white and the style of the print/letter is the same. Petitioner's contention: Kabushi Kaisha Isetan is the owner of the trademark "Isetan" and the "Young Leaves Design". law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market.. with a prayer for damages and the issuance of a writ of preliminary injunction. 53.R. Isetann Department Store. November 15. No. 1936. On October 3. • respondent registered "Isetann Department Store.] KABUSHI KAISHA ISETAN. Respondent’s Claim: Sunshine alleged that it had long ceased to use the Del Monte bottle and that its logo was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners. the respondent should be permanently enjoined from the use of such bottles. With regard to the use of Del Monte's bottle. G. Nos. Issue: Whether infringement of trademark and unfair competition exist Held: YES. 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. petitioner. the petitioner applied for the registration of "Isetan" and "Young Leaves Design" with the Philippine Patent Office under Permanent Serial Nos. 32020. At that. It states that the trademark is a combination of "Ise" taken from "Iseya" the first name of the rice dealer in Kondo. respondents. also known and trading as ISETAN CO. Inc. THE INTERMEDIATE APPELLATE COURT." and Isetann and Flower Design in the Philippine Patent Office under SR. as well as with the Bureau of Domestic Trade under Certificate of Registration No. 75420. The petitioner alleges that it first used the trademark Isetan on November 5. Although the logo of Sunshine is not a tomato.

Under the law. One may make advertisements. hence. November 4. 1980. the Philippines is a signatory to this Treaty and. reputation. • The records show that among Filipinos. G. Inc. 54. J. or knowledge regarding the name Isetann is purely the work of the private respondent. • Isetann Department Store. Such right grows out of their actual use. it has no right to the remedy it seeks. Supplemental Registration Nos. give out price lists on certain goods. No. we must honor our obligation thereunder on matters concerning internationally known or well known marks. but these alone would not give exclusive right of use. • There is no product with the name "Isetann" popularized with that brand name in the Philippines.R. and ◦ the person claiming must be the owner of the mark. not a patent or copyright or anything else. It has never promoted its tradename or trademark in the Philippines. the name cannot claim to be internationally well-known. respondents. For trademark is a creation of use. • The mere origination or adoption of a particular tradename without actual use thereof in the market is insufficient to give any exclusive right to its use • Indeed. 1992. • Any goodwill. Patent Office two (2) petitions for the cancellation of Certificates of Jmvdg Trademark Cases 25. this Treaty provision clearly indicated the conditions which must exist before any trademark owner can claim and be afforded rights such as the Petitioner herein seeks and those conditions are that: ◦ the mark must be internationally known or well known. the petitioner filed with the Phil. Adoption is not use. INCORPORATED. the subject of the right must be a trademark. petitioner. • The records show that the petitioner has never conducted any business in the Philippines.LIP – Case Digests*2010-2011 Page 65 • On November 28. ◦ the mark must be for use in the same or similar kinds of goods. However.: . this was however denied by the SEC Director of Patents dismissed the suit for cancellation of registration filed by petitioner IAC likewise dismissed the case Issue: Who has better right to use the trademark “Isetan” Ruling: • A fundamental principle of Philippine Trademarks Law is that actual use in commerce in the Philippines is a prerequisite to the acquisition of ownership over a trademark or a tradename. issue circulars. SR4717 and SR-470. MELO. • Adoption alone of a trademark would not give exclusive right thereto. 71189. THE INTERMEDIATE APPELLATE COURT and CO BENG KAY. The petitioner also filed with the Securities and Exchange Commission (SEC) a petition to cancel the mark "ISETAN" as part of the registered corporate name of Isetann Department Store. vs. Inc. is the name of a store and not of products sold in various parts of the country. It has absolutely no business goodwill in the Philippines.] FABERGE.

Opposition raised by petitioner anchored on similarity with its own symbol and irreparable injury to the business reputation of the first user was to no avail. 4(d). talcum powder and toilet soap. Moreover. shaving cream. private respondent may be permitted to register the trademark "BRUTE" for briefs produced by it notwithstanding petitioner's vehement protestations of unfair dealings in marketing its own set of items which are limited to: after-shave lotion. to the effect that the identical trademark can be used by different manufacturers for products that are non-competing and unrelated. an item which is not listed in its certificate of registration. In as much as petitioner has not ventured in the production of briefs. On the other hand. respondent's Motion for Reconsideration merited the nod of approval of the appellate court brought about by private respondent's suggestion that the controlling ruling is that laid down in ESSO Standard Eastern. Justice Gopengco remarked that a look at the marks "BRUT. Petitioner asserts that the alleged application for registration of the trademark "BRUT 33 DEVICE" for briefs is an explicit proof that petitioner intended to expand its mark "BRUT" to other goods. Inc. the certificate of registration issued by the Director of Patents can confer upon petitioner the exclusive right to use its own symbol only to those goods .11 and 20). 520. as amended. petitioner cannot and should not be allowed to feign that private respondent had invaded petitioner's exclusive domain. Even then. 2. a mere application by petitioner in this aspect does not suffice and may not vest an exclusive right in its favor that can ordinarily be protected by the Trademark Law. To be sure. and 522) vis-a-vis Republic Act No. that it is reasonable to believe that this similarity is sufficient to cause confusion and even mistake and deception in the buying public as to the origin for source of the goods bearing such trademarks. Issue: whether private respondent may appropriate the trademark "BRUTE" for the briefs it manufactures and sells to the public albeit petitioner had previously registered the symbol "BRUT" and "BRUT 33" for its own line of times Held: Yes. cream shave. Later. private respondent echoes the glaring difference in physical appearance of its products with petitioner's own goods by stressing the observations of the Director of Patents in that the involved trademarks are grossly different in their overall appearance and that even at a distance a would-be purchaser could easily distinguish what is BRUTE brief and what is BRUT after shave lotion. 166 (Secs. paraphrasing Section 20 of the Trademark Law as applied to the documentary evidence adduced by petitioner." "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. 521. When the legal tussle was elevated to respondent court. and 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. respondent Co Beng Kay of Webengton Garments Manufacturing applied for registration of the disputed emblem "BRUTE" for briefs.LIP – Case Digests*2010-2011 Page 66 Facts: In the course of marketing petitioner's "BRUT" products and during the pendency of its application for registration of the trademark "BRUT 33 and DEVICE" for antiperspirant. deodorant. the special law patterned after the United States Trademark Act of 1946. vs. private respondent asserts that briefs and cosmetics do not belong to the same class nor do they have the same descriptive properties such that the use of a trademark on one's goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different nature. Court of Appeals. Having thus reviewed the laws applicable to the case. personal deodorant. In short.4. It is apropos to shift Our attention to the pertinent provisions of the new Civil Code (Arts. after shave/shower lotion. 2-A. it is significant that petitioner failed to annex in its Brief the so-called "eloquent proof that petitioner indeed intended to expand its mark "BRUT" to other goods". and hair shampoo. lotion and the like. hair spray.

. No. 166. July 5. G. although We must hasten to add that in the final denouement. it is equally true that as aforesaid. Our apprehensions in this regard are not entirely irreversible since Section 4(d) and 20 of the law in question may still be subjected to legislative modification in order to protect the original user of the symbol. Ana case and Section 20? It would seem that Section 4(d) does not require that the goods manufactured by the second user be related to the goods produced by the senior user while Section 20 limits the exclusive right of the senior user only to those goods specified in the certificate of registration. How do We now reconcile the apparent conflict between Section 4(d) which was relied upon by Justice JBL Reyes in the Sta. It ineluctably follows that Section 20 is controlling and. there still remains hanging in mid-air the unanswered puzzle as to why an aspiring commercial enterprise. THE HON. subject to any conditions and limitations stated therein. 1993. would select a trademark or trade name which somewhat resembles an existing emblem that had established goodwill. 1988. On September 15. One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by other for products which are of different description. steine type. Our opinion hereinbefore expressed could even open the floodgates to similar incursions in the future when we interpreted Section 20 of the Trademark Law as an implicit permission to a manufacturer to venture into the production of goods and allow that producer to appropriate the brand name of the senior registrant on goods other than those stated in the certificate of registration. the protective mantle of the Trademark Law extends only to the goods used by the first user as specified in the certificate of registration following the clear message conveyed by section 20. "a purchaser who is out in the market for the purpose of buying respondent's BRUTE brief would definitely be not mistaken or misled into buying BRUT after shave lotion or deodorant" as categorically opined in the decision of the Director of Patents relative to the inter-partes case. But these nagging and disturbing points cannot win the day for petitioner. San Miguel Corporation (smc) filed a complaint against (ABI) for infringentment of trademark and unfair competition on account of the latter’s BEER NA BEER product which has been competing with SMC’s SAN MIGUEL PALE PILSEN’S the local beer market. . Hehehe) It would appear that as a consequence of this discourse. 103543. vs. COURT OF APPEALS and SAN MIGUEL CORPORATION. But the rule has been laid down that the clause which comes later shall be given paramount significance over an anterior proviso upon the presumption that it expresses the latest and dominant purpose. therefore. respondents. “confusingly SAN MIGUEL PALE PILSEN because both are bottled in 320 ml. confused din sila. given the infinite choices available to it of names for the intend product. SMC claims that the “trade dress” of BEER PILSEN is.LIP – Case Digests*2010-2011 Page 67 specified in the certificate. The glaring discrepancies between the two products had been amply portrayed to such an extent that indeed. petitioner. 55. as amended.R. amber-colored bottles with regular labels. "does not require that the articles of manufacture of the previous user and 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. Disclaimer ng SC (apparently. private respondent can appropriate its symbol for the briefs it manufactures.] ASIA BREWERY. INC." Yet. Justice JBL Reyes opined that the Section 4(d) of Republic Act No.

or qualities. inclusive. Upon a motion for reconsideration filed by ABI. 1990. It has been consistently held that the question of infringement remark is to be determined by the test of dominancy. petitioners. S. SMC appealed to the Court of Appeal the lower court’s decision. Inc. disproves SMC’s charge that ABI dishonestly and fraudently intends to palm off its BEER PALE PILSEN as SMC’s product. If they are thus descriptive. form and color. on the back of the botlle. they cannot be appropriated from general use and become the exclusive property of anyone. they are reasonably indicative and descriptive of the thing intended. Benson and Hedges (Canada). while relevant. and Fabriques of Tabac Reunies. No.. of a type of beer (“pilsen”).. nor necessary that the infringing label should suggest an effort to imitate. 1993. INC. the Court believes it’s quite unlikely that a customer of average intelligence would mistake a bottle of BEER PALE PILSEN for SAN MIGUEL PALE PILSEN. If the competing trademark contains the main or essential or dominant features of another. THE COURT OF APPEALS AND FORTUNE TOBACCO CORPORATION. and thus limit other persons in the use of language appropriate to the description of their manufacturers. ingredients or characteristics. Duplication or imitation is not necessary. 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. but whether in themselves and as they are commonly used by those who understand their meaning. Issue: Does ABI’s BEER PALE PILSEN label or “design” infringe upon that of SAN MIGUEL PALE PILSEN? Ruling: No. S. respondents. 542543]. BENSON & HEDGES (CANADA). RTC dismissed the complaint. as well as on the bottle cap.A. which is a light boh emian beer with strong hops flavor that originate the City of Pilsen in Czechoslovakia and became famous in the Middle ages. characteristics. INC. July 16. they also have the right to describe them properly and ot use any appropriate language or words for that purpose. In view of the visible differences between the two products. has printed its name all over the bottle of its beer product: on the label. the decision was the time. vs.. trade names and service marks are protected against infringement authorized use by another or others. This rule excluding descriptive term has also been held to apply to trade-means. the right to the use of such language being common to all. for “pale pilsen” are generic words descriptive of color (“pale”). Asia Brewery Incorporated. 56. Similarity in size. “Pilsen” is a “primarily geologically descriptive word”. AND FABRIQUES OF TABAC REUNIES. [52 Am Jur. and not arbitrary. A word or a combination of words which is merely descriptive of an article of trade. Only registered trade marks. it is said that the true test is not whether they are exhaustively descriptive of the article designated. G... its qualities. Inc. As to whether words employed fall within this prohibition.A. properly descriptive of the article.R. Petitioner’s Claim: Petitioners Philip Morris..LIP – Case Digests*2010-2011 Page 68 On August 27. and no person can appropriate to himself exclusively any word or expressions. The circumstance that the manufacturer of BEER PALE PILSEN. are ascribing whimsical exercise of the faculty conferred upon magistrates .] PHILIP MORRIS. and command deception is likely to result. ABI appealed to this court by a petition for certiorari under Rule 45 Rules of Court. infringement takes place. 91332. cannot be appropriated and protected as a trademark to the exclusion its use by others inasmuch as all persons have an equal right to produce and vend similar articles. or its composition.

G. 91385. January 4. docketed as Civil Case No. for its part.] HEIRS OF CRISANTA Y. In the said complaint. stopped selling and distributing "WONDER" soap. from manufacturing and selling "MARK" cigarettes in the local market.LIP – Case Digests*2010-2011 Page 69 by Section 6. against Gabriel. Perez. petitioners twice solicited the ancillary writ in the course the main suit for infringement but the court of origin was unpersuaded. also for cigarettes.R. 1962. dated August 8. Rule 58 of the Revised Rules of Court when respondent Court of Appeals lifted the writ of preliminary injunction it earlier had issued against Fortune Tobacco Corporation. 280. . FACTS: Petitioner’s Claim: Perez filed a complaint for Unfair Competition with Injunction and Damages. must be protected against unauthorized appropriation. Private respondent alleged further that it has been authorized by the Bureau of Internal Revenue to manufacture and sell cigarettes bearing the trademark "MARK". In point of adjective law. 1961. Banking on the thesis that petitioners' respective symbols "MARK VII". COURT OF APPEALS and EMILIA M. Gabriel claims that the exclusive ownership of the trademark "WONDER" is vested in her by virtue of her agreement with Perez. filed a Petition to Cancel Certificate of Registration No. without just cause and in violation of the terms of the distributorship agreement. and that "MARK" is a common word which cannot be exclusively appropriated. No." Petitioners therefore. ALMORADIE of the Intestate Estate of the Late Crisanta Y. herein represented by the special administrator LORENZO B. Such a ploy would practically place the cart ahead of the horse. 2422. suggest the fact of infringement. petitioners. respondents. and instead on October 3. herein private respondent. GABRIEL-ALMORADIE. herein sued in her capacity as special administratrix of the Testate Estate of the late DR. 1960 Gabriel tried to register the trademark "WONDER" in her name. ALMORADIE. SR-389 covering the trademark "WONDER" for beauty soap in the name of Dr. Gabriel-Almoradie and LORENZO B. Respondent’s Claim: Fortune Tobacco Corporation admitted petitioners' certificates of registration with the Philippine Patent Office subject to the affirmative and special defense on misjoinder of party plaintiffs. Respondent’s Claim: On October 19. PEREZ. Perez alleged that Gabriel. Issue: Whether to grant the petition of Philip Morris questioning the lifting of the preliminary injunction by the Court of Appeals Held: NO. 1994. the petition has its roots on a remedial measure which is but ancillary to the main action for infringement still pending factual determination before the court of origin. vs. 57. It is virtually needless to stress the obvious reality that critical facts in an infringement case are not before us more so when even Justice Feliciano's opinion observes that "the evidence is scanty" and that petitioners "have yet to submit copies or photographs of their registered marks as used in cigarettes" while private respondent has not. may not be permitted to presume a given state of facts on their so called right to the trademarks which could be subjected to irreparable injury and in the process. "submitted the actual labels or packaging materials used in selling its "Mark" cigarettes. Gabriel. SUMERA. JOSE R. and "LARK". "MARK TEN". in Inter Partes Case No.

respectively. the Supreme Court is clothed with ample authority to review matters. Petitioner’s claim: CONRAD AND COMPANY. 1984 involving private respondent's trademark rendered the Civil Case No. INC. invoking the case of Developers Group of Companies vs. We laid down the rule that the remand of the case or of an issue to the lower court for further reception of evidence is not necessary where the Court is in position to resolve the dispute based on the records before it and particularly where the ends of justice would not be subserved by the remand thereof." Respondent’s claim: FITRITE. INC. and that the Cancellation No.LIP – Case Digests*2010-2011 Page 70 Petitioner now comes to us arguing that our decision in the case of Gabriel v. No useful purpose will be served if the case or the determination of an issue in a case is remanded to the trial court only to have its decision raised again to the Court of Appeals and from there to the Supreme Court. C-8147 moot and academic. it being the beneficiary/agent/assignee of said Sunshine Biscuits. 1995. 3397 and 3739) with BPTTT cast a cloud of doubt on private respondents' claim of ownership and exclusive right to the use of the trademark "Sunshine. litis pendentia. FITRITE INC. petitioner. invoked. 115115.R.. CONRAD AND COMPANY. dated November 16. both domestic corporations. INC.. vs. HON... Court of Appeals (219 SCRA 715). Moreover. . has become functus officio HELD: In the interest of the public and for the expeditious administration of justice the issue on infringement shall be resolved by the court considering that this case has dragged on for years and has gone from one forum to another.. [private respondents here].] CONRAD AND COMPANY. among other grounds. and VICTORIA BISCUITS CO. and VICTORIA BISCUIT CO. Inc. are engaged in the business of manufacturing. contends that the "Petitions for Cancellation" of Fitrite's Certificate of Registration No. G. even though those not raised on appeal if it finds that their consideration is necessary in arriving at a just disposition of the case 58. It further allege that internationally accepted trademarks enjoy protection under Philippine laws. Perez. respondents. 143. ISSUES: Whether decision in the case of Gabriel v. of the United States of America filed in 1989 and in 1990 (docketed Inter Partes Case No. selling and distributing biscuits and cookies bearing the trademark "SUNSHINE" in the Philippines. SR-6217 and No.. has become functus officio on account of the prior registration of the trademark "WONDER" by Go Hay and its subsequent assignment to petitioner's predecessors. INC having been granted distributorship by Sunshine Biscuits USA over Philippine territory it follows that the resolution of the issue with respect to the ownership of Sunshine Biscuits which is the basis of plaintiffs' claim is lodged under the exclusive jurisdiction of the BPTTT. the doctrine of primary jurisdiction and failure to state a cause of action. The action filed by defendant's principal in whose name the trademark "SUNSHINE BISCUITS" is alleged to be registered in the United States should be considered as including Conrad and Company.. It is a rule of procedure for the Supreme Court to strive to settle the entire controversy in a single proceeding leaving no root or branch to bear the seeds of future litigation. supra. July 18. INC. No. Perez.. Petitioner. INC. supra. which Sunshine Biscuits. COURT OF APPEALS. Inc. Inc. 47590 in the Supplemental Register and the Principal Register.

. TradeMark Law). Held: No. however. Sometime in April 1982. to be used on biscuits and cookies.] EMERALD GARMENT MANUFACTURING CORPORATION. for infringement or unfair competition.R. the lower court. Private respondents are the holder of Certificate of Registration No. FITRITE assigned its trademark "SUNSHINE AND DEVICE LABEL. plaintiffs succeeded in tracing and discovered that CONRAD had been importing. 154 SCRA 723. Although CONRAD had never before been engaged in the importation. as well as the remedy of injunction and relief for damages. did not escape the appellate court for it likewise decreed that for "good cause shown." for sale in the Philippine market. we have declared that registration in the Principal Register gives rise to a presumption of validity of the registration and of the registrant's ownership and right to the exclusive use of the mark. 47590 (Principal Register) for the questioned trademark. 1988 CONRAD was suddenly designated exclusive importer and dealer of the products of "Sunshine Biscuits. through the affidavit executed on May 30. TRADEMARKS AND TECHNOLOGY TRANSFER and H. may suspend the action pending outcome of the cancellation proceedings" before BPTTT. While an application for the administrative cancellation of a registered trademark on any of the grounds enumerated in Section 17 of Republic Act No. FITRITE filed in the Bureau of Patents. Trademarks and Technology Transfer ("BPTTT"). selling and distributing biscuits and cookies in the Philippines. 19. 166. 181 SCRA 410. Inc. in its sound discretion. selling and distributing biscuits and cookies. is explicitly and unquestionably within the competence and jurisdiction of ordinary courts. cited with approval in Del Monte Corporation vs. INC. 1995. . as amended. an action. FITRITE's application for this trademark in the Supplemental Register was approved by the BPTTT. vs. 1990 by CONRAD's own Import Manager and Executive Assistant by the name of Raul Olaya. an application with BPTTT for an administrative cancellation of a registered trade mark cannot per se have the effect of restraining or preventing the courts from the exercise of their lawfully conferred jurisdiction.LIP – Case Digests*2010-2011 Page 71 Defendant CONRAD AND COMPANY [petitioner here] is also engaged in the business of importing. An invasion of this right entitles the registrant to court protection and relief. and other food items bearing this trademark in the Philippines. BUREAU OF PATENTS. evidently. on April 18. G. Then sometime in June 1990.This rule. LEE COMPANY. Surely. HON. December 29. otherwise known as the Trade-Mark Law. Macagba. falls under the exclusive cognizance of BPTTT (Sec. 100098." together with its interest and business goodwill to said VICTORIA BISCUIT. COURT OF APPEALS. Trademarks and Technology Transfer (hereto referred as BPTTT) applications for registration of the trademark "SUNSHINE. sale and distribution of products similar to those of plaintiffs.D." both in the Supplemental and Principal Registers.. Issue: whether or not the Court of Appeals committed reversible error (1) in allowing the trial court to proceed with the case for "injunction with damages" filed by private respondents notwithstanding the pendency of an administrative case for the cancellation of the former's trademark filed by supposedly "petitioner's principal" with the Bureau of Patents. petitioner. 59. Court of Appeals. No. In Lorenzana vs. respondents. It is precisely such a registration that can serve as the basis for an action for infringement.

infringement takes place. words. In determining whether colorable imitation exists. issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation. No. Colorable imitation refers to such similarity in form. On the other side of the spectrum. it was only on 18 September 1981 that H.A. jackets. filed a petition for cancellation of Emerald’s certificate of registration for the said trademark. The trademarks in their entirety as they appear in their respective labels or hang tags must also . blouses. a comparison of the words is not the only determinant factor. 166 (Trademark Law) and Art. Nor does it require that all the details be literally copied. a foreign corporation organized under the laws of Delaware. dresses. content. 'LEE' as previously registered and used in the Philippines. shirts and lingerie under Class 25. and confusion and deception is likely to result. to cause confusion. meaning. LEE" used on skirts. Inc. averred that petitioner's trademark "so closely resembled its own trademark. special arrangement.  Emerald Garment contended that its trademark was entirely and unmistakably different from that of private respondent and that its certificate of registration was legally and validly granted. mistake and deception on the part of the purchasing public as to the origin of the goods.  Emerald Garment further alleges that it has been using its trademark "STYLISTIC MR. socks. filed with the Bureau of Patents. nor it is necessary that the infringing label should suggest an effort to imitate." Colorable imitation does not mean such similitude as amounts to identity. shorts. As its title implies.LIP – Case Digests*2010-2011 Page 72 Plaintiff’s Contention:  H. jeans.A. yet. the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement. LEE" since 1 May 1975. a domestic corporation organized and existing under Philippine laws. If the competing trademark contains the main or essential or dominant features of another." Defendant’s Contention:. when applied to or used in connection with petitioner's goods.  The company also invoked Sec. as to be likely. and to cause him to purchase the one supposing it to be the other. substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article.S. or general appearance of the trademark or tradename with that of the other mark or tradename in their over-all presentation or in their essential. Lee Co. 37 of R. U. Duplication or imitation is not necessary. and not abandoned. Lee Co. sound.D. This term has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers. or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives.. In determining whether the trademarks are confusingly similar. the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. RULING: The essential element of infringement is colorable imitation. briefs. jurisprudence has developed two kinds of tests — the Dominancy Test applied and the Holistic Test.. Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No.D. VIII of the Paris Convention for the Protection of Industrial Property. SR 5054 (Supplemental Register) for the trademark "STYLISTIC MR. jogging suits..

in line with the foregoing discussions. fraud. the average Filipino consumer generally buys his jeans by brand. then. He does not ask the sales clerk for generic jeans but for. "LEE" is primarily a surname. In addition to the foregoing. the trademark should be considered as a whole and not piecemeal. Confusion and deception. taking into account these unique factors. and its first user has no cause of action against the junior user of "Wellington" as it is incapable of exclusive appropriation. For in the absence of contract. Private respondent cannot. more credit should be given to the "ordinary purchaser. Accordingly. Finally. the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Petitioner's trademark is the whole "STYLISTIC MR. we conclude that the similarities in the trademarks in question are not sufficient as to likely cause deception and confusion tantamount to infringement. say. more or less knowledgeable and familiar with his preference and will not easily be distracted. the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. Another way of resolving the conflict is to consider the marks involved from the point of view of what marks are registrable. LEE. . Maong pants or jeans are not inexpensive. is less likely." Cast in this particular controversy. Guess. therefore. in the main. Wrangler or even an Armani. First. It has been held that a personal name or surname may not be monopolized as a trademark or tradename as against others of the same name or surname. As we have previously intimated the issue of confusing similarity between trademarks is resolved by considering the distinct characteristics of each case.LIP – Case Digests*2010-2011 Page 73 be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. therefore. or estoppel. acquire exclusive ownership over and singular use of said term." Although on its label the word "LEE" is prominent. "Wellington" is a surname. we considered the trademarks involved as a whole and rule that petitioner's "STYLISTIC MR. like his beer. He is. The dissimilarities between the two marks become conspicuous. soysauce or soap which are of minimal cost. has not acquired ownership over said mark. These are not your ordinary household items like catsup. Applying the foregoing tenets to the present controversy and taking into account the factual circumstances of this case. various kinds of jeans. Second. Thus. noticeable and substantial enough to matter especially in the light of the following variables that must be factored in. the products involved in the case at bar are. we are constrained to agree with petitioner's contention that private respondent failed to prove prior actual commercial use of its "LEE" trademark in the Philippines before filing its application for registration with the BPTTT and hence. any man may use his name or surname in all legitimate ways. In the present controversy. LEE" is not confusingly similar to private respondent's "LEE" trademark. a Levis.

SR-389 was issued in his name. in his petition for registration. law library 61. [G. mere distributor." Under Section 2 and 2-A of the Trademark Law. Perez is the rightful owner of the trademark “WONDER” HELD: YES. 1959. JOSE R.] CRISANTA Y. 166. * The agreement of exclusive distributorship executed by and between her and respondent vested in her the exclusive ownership of the trademark "WONDER". No. the connotation in itself is sufficient to clothe the product as an item or a commodity emanating from a particularly identified source who is none other than Dr. 1960. even if permitted to use said trademark. vs. 60. and associated with. No. the Respondent. L-24075.D. January 31. vs. Said trademark "WONDER" is used by said private respondent on bleaching beauty soap (Medicated and Special) which falls under Class 51. PELLICER. Jose R. Perez. claimed March 10. DR. respondents. and the product identified by the words can never be regarded as having emanated or originated from another individual. No. THE DIRECTOR OF PATENTS and LUIS P. December 29. respondents. that the trademark was not used and has not been actually used by registrant at the time he applied for its registration. Respondent’s claim: *A Certificate of Registration No. . 1974. The words serve as an indication of origin.] THE EAST PACIFIC MERCHANDISING CORPORATION.R. 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 agreement does not even grant her the right to register the mark. Republic Act No. the right to register trademark is based on ownership and a mere distributor of a product bearing a trademark. The agreement merely empowers the petitioner as exclusive distributor to own the package and to create a design at her pleasure. For lack of adequate proof of actual use of its trademark in the Philippines prior to Emerald Garment’s use of its own mark and for failure to establish confusing similarity between said trademarks. As such. Private respondent Dr. 1953 as the date of first use of said trademark in commerce in the Philippines law library Petitioner’s contention: *The registrant was not entitled to register the said trademark at the time of his application for registration. Respondent Director of Patents rendered his decision denying the petition to cancel the certificate of registration ISSUE: WON Dr. The Respondent is the originator and manufacturer of the so-called "Dr. and as such is the rightful and recognized owner thereof and therefore entitled to its registration. Perez Wonder Beauty Soap. G. typical of which is the Petitioner. 1953 as the date of first use of said trademark and August 1. petitioner. Perez.LIP – Case Digests*2010-2011 Page 74 Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of ownership over a trademark pursuant to the Philippine Trademark Law (R. GABRIEL. H.A. and that it was she who has been actually using the said trademark since March. that it was thru fraud and misrepresentation that the registration was procured by the registrant.R. 166). In fact. has right to and cannot register the said trademark." a phrase clearly coined by. PEREZ and HONORABLE TIBURCIO EVALLE as Director of Patents. Lee Co's action for infringement must necessarily fail. L-14377. petitioner. amended.

The result would not change even if the Director erred in ruling that the figure of a lady. respondents. vs. issued by the Director of Patents . The applicant further alleged that the trademark applied for has continuously been used by him in commerce since August 15. No. the application should be held as properly denied by the Director of Patents.. evokes the idea that the products are perfumed with the extract of verbena flowers. 1947. oppositor avers. is likewise is not registerable as a trademark. on October 14. was drawn on arbitrary on whimsical lines and styled in a peculiary distinctive manner. which trademark.: Petra Hawpia & Co. Later on. and other like products. Pua assigned his rights to the trademark herein petitioner. PETRA HAWPIA & CO. since the combination of the two marks would still be inadequate to guard against the misleading effects that flow from the use of the term by petitioner. Marcelo T. December 22. regardless of the other connotations of the word. Pellicer attached to the opposition certain labels bearing a trademark “Lupel Verbena”. L-19297. The court explained that the term “Vernbena” being descriptive of a whole genus of garden plants with fragrant flowers (Verbenaceae). The Director of Patents approved petitioner’s application for publication in the official Gazette. The figure. Issue: whether or not “verbena” is registrable for trademark Held: No. petitioner. 1958. CASTRO. PETITIONER’S CONTENTION Opposed the registration. 1958 filed a petition for the registration of the trademark "LIONPAS" used on medicated plaster. a partnership duly organized under the laws of the Philippines and doing business at 543 M. INC. brilliante. and. which is registered in its name under Certificate of Registration 5486. as previously described.. Luis P. asserting its continuous use in the Philippines since June 9. was registered in his favor under Certificate of Registration No. its use in connection with cosmetic products. In support thereof. it may be granted. wherein fragrance is of substantial import. alleging that the registration of such trademark would violate its right to and interest in the trademark "SALONPAS" used on another medicated plaster. who renewed the application under the new trademark law the Patents Office on Novemeber 8. or of some oil of similar aroma. the use of the term cannot be denied to other traders using such extracts oils in their own products. Manila (hereinafter referred to as the applicant).] MARVEX COMMERCIAL CO. with the Philippine Patent Office. G. 62. but the fact will not qualify the word “Verbena” for registration.. 1966. 1957. 5851. unless the petitioner makes a disclaimer of the word “verbena”. Conformably to the foregoing. but likewise common trade. and THE DIRECTOR OF PATENTS. Pua filed with the Office of the Director of Commerce an application for the registration under Act 666 of the trademark “Verbena” with a representation of a Spanish lady. The orders reinstating respondent Pellicer’s opposition are affirmed. 1947 on such merchandise as lotion.R. Supreme Court held that the questioned trademark is generically descriptive or misdescriptive of the products. hair pomade.LIP – Case Digests*2010-2011 Page 75 Facts: On June 14. Pellicer filed an opposition to the application on the ground that he would be damaged by the registration of the trademark applied for. and that the representation of a Spanish Lady is not only deceptively misdescriptive of the source or origin (the goods covered being produce in the Philippines and not in Spain). de Santos (Botica Divisoria). J. face powder.

when spoken. 2d. It is our considered view that the trademarks "SALONPAS" and "LIONPAS" are confusingly similar in sound. L-20635. 1970. 64. sound very much alike.] YEN JOSE P. G. E. and that both trademarks when used on medicated plaster would mislead the public as they are confusingly similar. petitioner. The oppositor then interposed the present appeal. ANA. Du Pont.supra) 63.R. which is used to denote a plaster that adheres to the body with curative powers. Two letters of "SALONPAS" are missing in "LIONPAS". RESPONDENT’S CONTENTION The Director of Patents dismissed the opposition and gave due course to the petition. G. 678-679). Inc.R. "PAS". vs. EVALLE. 95 Phil. pp.. FLORENTINO MALIWAT and TIBURCIO S. Be that as it may. respondents. Director of Patents. the sound effects are confusingly similar. in his capacity as Director of Patents. 1966) and may properly become the subject of a trademark by combination with another word or phrase. I. stating in part that "confusion.LIP – Case Digests*2010-2011 Page 76 on September 29. "The importance of this rule is emphasized by the increase of radio advertising in which we are deprived of help of our eyes and must depend entirely on the ear" (Operators. the first letter a and the letter s. being merely descriptive. 1956. mistake. "SALONPAS" and "LIONPAS". NB: Not being the owner of the trademark "LIONPAS" but being merely an importer and/or distributor of the said penetrative plaster. Inc. Both these words have the same suffix. 1968. similarity in sound is of especial significance (Co Tiong Sa vs. 148) The registration of "LIONPAS" cannot therefore be given due course. Director of Patents. vs. STA. 4th ed. 154 F. And where goods are advertised over the radio. The Law of Unfair Competition and Trademarks. ISSUE: IS THE TRADEMARK "LIONPAS" CONFUSINGLY SIMILAR TO THE TRADEMARK "SALONPAS"? HELD: YES. vs. the applicant is not entitled under the law to register it in its name (Operators. No. In the case at bar. No. furnishes no indication of the origin of the article and therefore is open for appropriation by anyone (Ethepa vs. Director of Patents. February 18. vol. MR denied. 146.] . 2. "Pas. L-23023. Director of Patents. Similarity of sound is sufficient ground for this Court to rule that the two marks are confusingly similar when applied to merchandise of the same descriptive properties (see Celanese Corporation of America vs. March 31. or deception among the purchasers will not likely and reasonably occur" when both trademarks are applied to medicated plaster. August 31. L-26557. supra). when the two words are pronounced. 1 citing Nims.

MAGDALO V. Conformably with the terms and conditions. Not only are the initial letters and the last half of the appellations identical. the Director of Patents rendered decision holding the applicant’s mark DYNAFLEX not to be similar to the previously registered trademark DURAFLREX. J. the application of Central Banahaw Industries for registration of DYNAFLEX was given due course and the opposition thereto by American Wire & Cable Company dismissed. Sr. Inc.R. machines and supplies. and VICTORIANO V. After due hearing. class w0. Central Banahaw Industries. 1960 of the "Bill of Assignment". for electric wires. SR. this is a long case. class 20. FRANCISCO.. discovered or invented a formula for the manufacture of a food seasoning (sauce) derived from banana fruits popularly known as MAFRAN sauce. petitioners. that the manufacture of this product was used in commercial scale in 1942. said plaintiff secured the financial assistance of Tirso T.LIP – Case Digests*2010-2011 Page 77 AMERICAN WIRE & CABLE COMPANY. which mark applicant allegedly had been using since March 29. FRANCISCO. Inc. was appointed Chief Chemist with a salary of P300. and plaintiff Victoriano V. shape and size. apparatus. vs.. ISSUE: Whether or not the mark DYNAFLEX and Device is registrable as label for electric wires class 20. respondents. May 13. in 1960. Sr. FACTS: As far back as 1938. 1958 of the registered trade mark DURAFLEX and Globe representation. formed with others defendant Universal Food Corporation eventually leading to the execution on May 11. and in the same year plaintiff registered his trademark in his name as owner and inventor with the Bureau of Patents. The Supreme Court held that the similarity between the competing trademarks. *Disclaimer: Groupmates. DIRECTOR OF PATENTS and CENTRAL BANAHAW INDUSTRIES. Francisco was appointed auditor and superintendent with a salary of P250. color. Consequently. no difficulty is experienced in reaching the conclusion that there is a deceptive similarity that would lead the purchaser to confuse one product with the other. G. another domestic corporation and authorized user since April10. Coupled with the fact that both marks cover insulated flexible wires under class 20. that the back of both boxes show similar circles of broken lines with arrows at the center pointing outward. CASTRO. vs. No. I just included the pertinent details concerning LIP. FACTS: On June 1962. opposed the application on the ground that applicant’s use of the trademark DYNAFLEX would cause confusion. Francisco. with the identical legend “Cut Out Ring” Draw From Inside Circle”. Since the start of the . DURAFLEX and DYNAFLEX. 1962. that both products are contained in boxes of the same material. The latter interposed the present appeal. respondents. Francisco. plaintiff Magdalo V.. Reyes who. 1970. applied with the Director of Patents for registration of the trademark DYNAFLEX and Device to be used in connection with electric wires. after a series of negotiations.00 a month. The American Wire and Cable Co. is apparent. plaintiff Magdalo V. that the dominant elements of the front designs are a red circle and a diagonal zigzag commonly related to a spark or flash of electricity. that due to lack of sufficient capital to finance the expansion of the business. THE COURT OF APPEALS.00 a month. HELD: Yes. but the difference exists only in two out of the eight literal elements of the designations.] UNIVERSAL FOOD CORPORATION. petitioner. L-29155. 65.

. President and General Manager Tirso T. when preparing the secret materials inside the laboratory.." However. one of the principal considerations of the Bill of Assignment is the payment of "royalty of TWO (2%) PER CENTUM of the net annual profit" which the petitioner corporation may realize by and/or out of its production of Mafran sauce and other food products. Firstly. It is further provided in paragraph 5-(d) that the same respondent shall have and shall exercise absolute control and supervision over the laboratory assistants and personnel and over the purchase and safekeeping of the chemicals and other mixtures used in the preparation of the said product. it is provided in paragraph 5-(a) of the Bill that the respondent patentee was to be appointed "chief chemist . Petitioner. demand or sue for the surrender of its rights and interest over said MAFRAN trademark and mafran formula.. in order to preserve the secrecy of the Mafran formula and to prevent its unauthorized proliferation. of defendant. Francisco. However. Reyes did not compel or force plaintiff to accede to said request. Itclearly show that the intention of the . transfer and convey all its property rights and interest over said Mafran trademark and formula for MAFRAN SAUCE unto the Party of the Second Part. ceded and transferred to the petitioner corporation the formula for Mafran sauce." then his "heirs or assigns who may have necessary qualifications shall be preferred to succeed" him as such chief chemist." when employed in connection with a license under a patent. HELD: NO. plaintiff Magdalo V. Francisco had been remiss in the compliance of his contractual obligation to cede and transfer to the defendant the formula for Mafran sauce. but said request was denied by plaintiff. not even his own son. transfer and conveyance is absolute and irrevocable (and) in no case shall the PARTY OF THE First Part ask. Sr. Magdalo V. On July 26." and that in case of his "death or other disabilities. never allowed anyone. Certain provisions of the Bill of Assignment would seem to support the petitioner's position that the respondent patentee. This was the precise intention of the parties. The word "royalty. 4 as we shall presently show. ISSUE: Whether by virtue of the terms of the Bill of Assignment the respondent Magdalo V. Tirso T. Thus. Sr. a perceptive analysis of the entire instrument and the language employed therein 3 would lead one to the conclusion that what was actually ceded and transferred was only the use of the Mafran sauce formula. Reyes wrote plaintiff requesting him to permit one or two members of his family to observe the preparation of the 'Mafran Sauce'. Reyes. 1960. claims that plaintiff Magdalo V. by virtue of the Bill of Assignment. In spite of such denial. to enter the laboratory in order to keep the formula secret to himself. etc." and the last paragraph states that such "assignment. but defendant never acquired a safe for that purpose. said plaintiff expressed a willingness to give the formula to defendant provided that the same should be placed or kept inside a safe to be opened only when he is already incapacitated to perform his duties as Chief Chemist. or the President and General Manager Tirso T. Secondly. means the compensation paid for the use of a patented invention.LIP – Case Digests*2010-2011 Page 78 operation of defendant corporation. Sr. the last part of the second paragraph recites that the respondent patentee "assign. Francisco. ceded and transferred to the petitioner corporation the formula for Mafran sauce. Francisco. permanent in character.

Finally. Francisco. Without basis. soy sauce. petitioner-applicant. there being already in existence one such registered in favor of the Philippine Refining Company for its product. should dissolution of the Petitioner corporation eventually take place. If one is in the market for the former. colored differently. Sr. Issue: Can it be said then that petitioner's application would be likely to cause confusion or mistake on the part of the buying public? Ruling: No.." 66.R. to preserve the monopoly and to effectively prohibit anyone from availing of the invention. respondent.. not with the formula for Mafran sauce. therefore. "the property rights and interests over said trademark and formula shall automatically revert to the respondent patentee. Properly speaking. it does "not require proof and cannot be contradicted. Fourthly. vs.] ACOJE MINING CO. THE DlRECTOR OF PATENTS." and is there a better example of least transmission of rights than allowing or permitting only the use. Facts: petitioner Acoje Mining Company register for the purpose of advertising its product. It does not defy common sense to assert that a purchaser would be cognizant of the product he is buying.. the Bill of Assignment vested in the petitioner corporation no title to the formula. 1971." Fifthly. This incontrovertible fact is admitted without equivocation in paragraph 3 of the petitioner's answer. he is not likely to purchase the latter just because of the trademark .. 12476 issued in favor of Philippine Refining CO. the trademark LOTUS. Thirdly. INC. The foregoing reasons support the conclusion of the Court of Appeals that what was actually ceded and transferred by the respondent patentee Magdalo V. is the observation of the lower court that the respondent patentee "had been remiss in the compliance of his contractual obligation to cede and transfer to the defendant the formula for Mafran sauce. The Director of Patents rejected the application by reason of confusing similarity with the trademark LOTUS registered in this Office under Certificate of Registration No.LIP – Case Digests*2010-2011 Page 79 respondent patentee at the time of its execution was to part. of the formula for Mafran sauce. No. in favor of the petitioner corporation was only the use of the formula. the facts of the case compellingly demonstrate continued possession of the Mafran sauce formula by the respondent patentee. without transfer of ownership. another domestic corporation. pursuant to the last paragraph of the Bill. it being further shown that the trademark applied for is in smaller type. Inc. our conclusion is fortified by the admonition of the Civil Code that a conveyance should be interpreted to effect "the least transmission of right. it is alleged in paragraph 3 of the respondents' complaint that what was ceded and transferred by virtue of the Bill of Assignment is the "use of the formula" (and not the formula itself). set on a background which is dissimilar as to yield a distinct appearance. edible oil. Hence. There is quite difference between soy sauce and edible oil. G. April 29. L-28744. but only its use.

there is no denying that the possibility of confusion is remote considering the difference in the type used. 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 petitioner's trademark being in yellow and red while that of the Philippine Refining Company being in green and yellow. the coloring. Even on the rare occasions that a mistake does occur. Petitioner has successfully made out a case for registration. it can easily be rectified. the conclusion is inescapable that respondent Director ought to have reached a different conclusion. . Moreover.LIP – Case Digests*2010-2011 Page 80 LOTUS.

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