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PRIORITY IN ADOPTION AND USE/ EXCLUSIVE USE
Atty. Eric Recalde From 1946 to 1955 Ng Kian Giab's family merely bought ready made polo shirts and undershirts to each of which they then sewed the label "Marca Piña" before resale to the public. • In 1955 the father transferred the business to Ng Kian Kee, who put up a factory — the Hongkong T-Shirt Manufacturer — and started producing undershirts bearing the trademark. When he decided to continue his studies in 1957, he, in turn, transferred the business to respondent. Decision of the Director of Patents • Director of Patents, however, declared that neither of them "satisfactorily adduced definite and conclusive proof of their asserted dates of first use of the trademark "Marca Piña"; and relying on the rule that "in inter plates cases, when neither of the parties have (has) satisfactorily proven the date of first use alleged in their applications, such date shall be confined to the filing date of the said application,” and granted the application of senior party applicant Ng Kian Giab. • Respondent Director disregarded all the evidence submitted by both parties and relied exclusively on the filing dates of the applications in reaching his conclusion as to the dates of first use by the senior party applicant and the junior party applicant, respectively. • Director of Patents gave due course to the application of Ng Kian Giab for registration of the trademark "Marca Piña" and representation thereof, and rejected Chung Te's own application for registration of the same trademark and a similar representation. Issue/ Answer: • Who between Chu Teng and Ng Kian Gab should be allowed to register the trademark "Marca Piña"? / Chung Te Ratio Decidendi: • Where an applicant for registration of a trademark states under oath the date of his earliest use, and later on he wishes to carry • 1
CHUNG TE vs. NG KIAN GIAB and THE HONORABLE DIRECTOR OF PATENTS G.R. No. L-23791. November 23, 1966 Facts: Chung Te's contention: • March 13, 1957 an application for the registration of the same trademark "MARCA PIÑA. and Representation" was filed by Chung Te (Application No. 5544), although it was subsequently considered abandoned by reason of his failure to answer the communication of the Principal Trademark Examiner dated September 25, 1957. • Chung Te claims that since January 8, 1951 he had been using the trademark on undershirts (de hilo), T-shirts, and baby dresses. • For a long time petitioner was the purchasing agent for his father-in-law, who owned the Liong Bee Shirt Factory. Afterwards he decided to go into the same business for himself. His father-in-law, who theretofore had been using the tr • the factory became a member of the Philippine Chinese Underwear Manufacturers Association. According to Juanito Vitug, secretary of the association, before a firm was admitted as member it was required to inform the association of the trademark it was using to identify its products; and he found that among the files of the association the sample labels "Marca Piña" submitted by petitioner when he applied for membership were included. • Petitioner also applied for business permit (LIONG SUN Shirt Factory) It appears from his application that he had commenced business on February 1, 1952. Ng Kian Giab's contention: • Ng Kian Giab stated in his application that he had been using the trademark on undershirts since December 6, 1955. • At the hearing he sought to prove that his family had been using it since 1946. Jmvdg
Intellectual Property Law AUF School of Law back his first date of use to an earlier date he then takes on the greater burden of presenting "clear and convincing evidence" of adoption and use as of that earlier date. testimonial evidence presented by Ng Kian Giab and their witnesses falls short of the kind of proof required of respondent. It is doubtful that respondent's father would pay Genoveva Santos as high as P0.02 per label (which did not even bear his name) on polo shirts which he had purchased readymade, and which he could very well have sold without any label. The documentary evidence show clearly that respondent's use began only in 1955. petitioner has established prior use and adoption of the questioned trademark, for which reason he and not respondent Ng Giab is the one entitled to registration thereof. the decision of the Director of Patents is reversed. Petitioner is adjudged prior user of the trademark MARCA PIÑA and representation thereof, and its registration in his name is ordered Where the testimonial evidence for both parties has been entirely disregarded, and reliance is placed solely on the filing dates of the applications as proof of the respective dates of first use, then the abandoned application filed by the junior party applicant becomes cogent evidence to show that he first used the trademark as of the date of its filing SY CHANG vs. GAW LIU G.R. No. L-29123. March 29, 1972 Facts: • a petition was filed by Sy Chang to cancel a certificate of registration No. 10637, of a trademark, LION and TIGER issued by the Philippines Patent Office on December 12, 1963 in favor of respondent Gaw Liu • grounds: he had previously used such a trademark since 1952 on aniline basic colors or goods similar to those manufactured or sold by respondent whom Jmvdg Atty. Eric Recalde he accused of fraudulently appropriating and registering the same with full knowledge that he was not the owner. • The application was filed on February 20 of that year, the use of such trademark on his product consisting of dyestuffs allegedly dating back to 1956. • His firm allegedly is engaged in the manufacture of dyestuff, crayone, stationery, and school supplies, and in the sale of dyestuff the trademark LION and TIGER label has been adopted since 1952. • The witness identified a LION-TIGER label being used by Petitioner. It was designed for Venus Commercial in 1952 by Mr. Gaudencio Eugenio, a free lance artist who confirmed this fact by testifying that around June, 1952, upon request of Sy Chang, he designed a label for dyestuff, the LION & TIGER label, for which he was duly compensated. • The design was in turn first printed by Majestic Press owned by the other witness, Antonio T. Cheng, who affirmed that he knew Venus Commercial because of a printing job in 1952 pertaining to the 10,000 pieces of LION-TIGER label. Gaw Liu's contention: • Gaw Liu himself testified that he was engaged in chemical manufacturing since the Japanese occupation, with offices at Magdalena St., Manila. • in 1947, he used and adopted the brand TIGER for his dyestuff and later, he allegedly adopted LION & TIGER, made some sales, as shown by an invoice dated December 10, 1951 issued to Pue Chong Beng of Zamboanga. • He confirmed having known Venus Commercial in 1951 or 1952 through the owner he knew only as 'Mr. Cao' who used to offer him discarded materials such as dyestuff and empty cans. He also admitted knowing witness Sy Chang who worked for Venus Commercial, but only after 1952, but he had never been inside the firm's establishment; neither had he received any 2
clear. the allegation of date of use in the application for registration of the applicant or of the registrant cannot be used as evidence in behalf of the party making the same. but he sold it cheaper to convince people to use it both parties admitted that there was an arranged meeting between them to reach an amicable settlement with regard the trademark Lion & Tiger. the party will be limited to the filing of the application as the date of his first use. or 1952. and free from doubt or inconsistencies. radio or handbills. These matters are necessary especially when Respondent alleges use on a date earlier than that alleged in his application. considerable sale since his adoption thereof combined with promotional work suitable to popularize the trademark.000 as value for the trademark which was then registered in his name Atty. except those made by him to Pua Chong Beng. the evidentiary burden of proving invalidity rests upon the petitioner. He never presented proof required by law to invest him with exclusive. Venus Commercial sold dyestuff in 1950. inter alia. which. He was not able to show extensive sales. in fact. Under the Rules of Practice in Trademark Cases (Rule 173). Asked how he advertised his trademark LION-TIGER. using another brand he described as a lady carrying on her back two children holding two rotating small drums. the Respondent said that it was a small business so he did not advertise it either by newspaper. or 1951. it has been admitted by respondent that he never advertised the trademark. in which case his evidence. the conclusion reached is that the presumption had been rebutted. 1956. Eric Recalde facts as presented though. He explained that it was because the Patent Office required two months use at the time the application was filed • Where the rebuttable character of the validity of registration of the trademark registered in the name of respondent is put in issue. distinctive of his goods. because the Respondent was not able to prove his date of first use in commerce of the trademark LION-TIGER he is deemed to have used it on the filing date of his application which is February 20. The burden of going forward is thus shifted to the respondent who must show that the subject matter of registration is. After it stopped selling dyestuff of the 'Lady' brand. he was not the exclusive user of the trademark LION-TIGER. In case no testimony is taken as to the date of use. According to him. may be considered as negligible and sporadic. Ratio Decidendi: • Gaw Liu was asked to explain why he claimed to have used the trademark in 1947 when. the record is wanting in proof sufficient to show that Respondent-Registrant has actually and substantially adopted and used the trademark so as to show that his firm was the source or origin of his dyestuff. but such meeting never pushed through as Gaw Liu is asking for 80. No further sales were made as the record eloquently shows. must be definite. in all inter partes proceedings. radio. they started using the LION brand in 1952 or 1953. From the Jmvdg • • • • Trademark Cases 3 . continuous adoption and use of the trademark which should consist in. either by newspaper. according to his application he first used it in commerce on June 10. or handbills.Intellectual Property Law AUF School of Law calendar from said firm. petitioner having shown "that at the time the respondent filed his application for registration and for years prior thereto. 1963 the superior right of petitioner in view of • • • • • Issue: • WON Gaw Liu had proven that he has prior use of the trademark Lion and Tiger as oppose to the claim of Sy Chang Answer: • negative. however. testimonial or documentary.
that Kaisha filed a petition for cancellation after a lapse of almost seven (7) years. being used on similar products under the same classification of goods. but also possessing different descriptive properties. It requires actual commercial use of the mark prior to its registration. L-54158." since the "over-all commercial impression of the marks are grossly different and used on goods not only falling under different classification. Jmvdg Trademark Cases . estoppel and acquiescence would not apply in this case for it has not been shown that Kaisha abandoned the use of the trademark • CA further held that Pagasa knew of the use of trademark "YKK" by respondent which are the initials of the company. However. 1968 with Certificate of Registration No. November 19. and notwithstanding this knowledge it later on sought trade registration of the same trademark in its favor. 1982 Facts: • Sometime on November 9. • Director of Patents cancelled Registration No. Trade Names and Service-Marks. 9331 in favor of respondent Kaisha covering the trademark "YKK" (Yoshida Kogyo Kabushiki) for slide fasteners and zippers in class 41. advertising in calendars. such as the making of the design. stressed in his order of cancellation that the trademarks in question are "confusingly similar". 10637 issued to Gaw Liu for the trademark LION & TIGER is "ordered cancelled. Atty. 1961. • The Trademark Law is very clear. such as the filing of this petition for cancellation. • The products are sold through different trade channels or cutlets and are noncompeting. 13756.Intellectual Property Law AUF School of Law what the decision called "the chain of circumstances" favorable to him namely his "use thereof in commerce. • Alleging that both trademark ("YKK") are confusingly similar. the printing of the design on labels. the Philippines Patent Office issued Certificate of Registration No. No. and other acts of dominion. as amended (An Act to Provide for the Registration and Protection of Trade-Marks. mistake or deception.) • on appeal to CA. Pagasa argued that there was laches on the part of Kaisha considering that notwithstanding the fact that the trademark was registered for the use of petitioner. Eric Recalde 1975. yet it failed to fully substantiate its claim that it used in trade or business in the 4 • PAGASA INDUSTRIAL CORPORATION vs. The Certificate of Registration No. Trademark Law) • WON it is the fact of registration that vests one's right to a trademark/ negative (there must be prior commercial use) Ratio Decidendi: • The Director of Patents. • 5 1/2 years after respondent's registration Pagasa filed an application for registration of exactly the same or identical trademark of "YKK" for zippers under class 41 which was allowed on April 4.R. it was not until January 23. the discussion made by the Senior Trademark Examiner of the Patents Office regarding the registrability of the mark revealed that "the concurrent registration of subject mark is not likely to cause purchasers confusion. Issue/Answer: • WON it is correct to say that the equitable principles of laches. 13756 in the name of Pagasa based on Section 4 (d) of RA 166. etc. the actual use on the goods. • CA held that the equitable principles of laches. There is no dispute that respondent corporation was the first registrant. 9. CA G. and a systematic preservation of the records to support his claim of continuous use. respondent Kaisha filed with the Director of Patents a petition for cancellation of petitioner's registration of exactly the same trademark "YKK". estoppel and acquiescence cannot be applied in the instant case/ negative (Sec.
General Milling Corp's contention: • alleged that it started using the trademark "All Montana" on August 31. GENERAL MILLING CORPORATION G. Eric Recalde xxx xxx xxx "(d) Consists of or comprises a mark or trade name which so resembles a mark or trade name registered in the Philippines or a mark trade name previously used in the Philippines by another and not abandoned as to be likely. • An unreasonable length of time had already passed before respondent asserted its right to the trademark. equitable principle of laches. business or services of the applicant. • It is most unfair if at anytime. February 28. 4. the registration of which was never opposed by the prior registrant. can ask for the cancellation of a similar or the same trademark. The owner of a trademark. may be considered applied. No. respondent General Milling Corporation filed an application for the registration of the trademark "All Montana" to be used in the sale of wheat flour. 9732). 1962. Registration of trade-marks. Such inaction on the part of respondent entitles petitioner to the equitable principle of laches. There is a presumption of neglect already amounting to "abandonment" of a right after a party had remained silent for quite a long time during which petitioner had been openly using the trademark in question. business or services from the goods. to cause confusion or mistake or to deceive purchasers. or x x x section 2. demand that petitioner should be allowed to continue the use of the subject mark and the mark which was supposedly registered under the name of respondent be deemed cancelled. it did not present proof to invest it with exclusive. 9589). tradenames and service marks which shall be known as the principal register. and Unno's registration (Registration No. — There is hereby established a register of trademarks. tradename or service mark used to distinguish his goods. estoppel and acquiescence where applicable." The evidence for respondent must be clear. as Junior/Party-Applicant. INC.R. It is precisely the intention of the law. of considerable sales since its first use.Intellectual Property Law AUF School of Law Philippines the subject mark. therefore. the Chief Trademark Examiner declared an interference proceeding between General Milling's application (Serial No. Provision in question: Section 4 (d) of RA 166 "Sec. tradenames. and service marks on the principal register. • Equity and justice. definite and free from inconsistencies. • respondent wanted goodwill and a wide market established at the expense of the petitioner but for its benefit. business or services of others shall have the right to register the same on the principal register unless it: Atty. when applied to or used in connection with the goods. including a provision on equitable principle to protect only the vigilant. continuous adoption of the trademark which should consist among others. L-28554. even after a lapse of more than five (5) years. Trademark Law see page 11 Section 9-A of the Trademark Law "Equitable principles to govern proceedings: In opposition proceedings and all other inter partes proceedings in the Patent Office under this Act. a previous registrant. 1955 and 5 Jmvdg Trademark Cases . 1983 Facts: • On December 11. not those guilty of laches. • The invoices submitted by respondent which were dated way back in 1957 show that the zippers sent to the Philippines were to be used as "samples" and "of no commercial value. • As the same trademark had been previously registered in favor of Unno. as Senior Party-Applicant to determine which party has previously adopted and used the trademark "All Montana." dissenting opinion: (Aquino) • He who comes to court must come with clean hands • Pagasa acted in bad faith in registering the YKK trademark as it knows of the existence of Yoshida Kogyo Kabushiki and the latter's engineers even helped Pagasa with respect to business UNNO COMMERCIAL ENTERPRISES. vs.
1962. Unno Commercial Enterprises. the Senior Party could not be regarded as having used and adopted it." showing that Centennial Mills was a corporation duly organized and existing under and by virtue of the laws of the State of Oregon. ownership of a trademark is not acquired by the mere fact of registration alone. or Jmvdg Atty.A. as indentor or broker for S. but because it is primarily geographically descriptive. A local importer.H. trade name or service mark may apply for its registration and an importer. whether he is only an importer. When the applicant is not the owner of the trademark being applied for.Intellectual Property Law AUF School of Law subsequently was licensed to use the same by Centennial Mills. documents. trade name or service mark if he is duly authorized by the actual owner of the name or other mark of ownership. broker. or indentor and distributor are presumed to be owned by the manufacturer or packer. 6 • • • • • • • Trademark Cases . use and own a particular mark of its own choice although he is not the manufacturer of the goods he deals with. broker. & Co. unless there is a written agreement clearly showing that ownership vests in the importer. business or service of others is entitled to register the same.. service mark. U. The Deed of Assignment itself constitutes sufficient proof of General Milling Corporation's ownership of the trademark "All Montana. • Under the Trademark Law only the owner of the trademark. broker. 1956. business or service from the goods. and the absolute and registered owner of several trademarks for wheat flour all of which were assigned by it to respondent General Milling Corporation. the application is remanded to the Chief Trademark Examiner for proper proceeding before issuance of the certificate of registration. Issue/Answer: • WON Unno. invoices and other correspondence of Centennial Mills. Director of Patents' decision • the Junior Party-Applicant is adjudged prior user of the trademark ALL MONTANA. Only the owner of a trademark. by virtue of a deed of assignment executed on September 20. a local firm. trade name. trade name or service mark used to distinguish his goods. a mere importer and distributor acquires no rights in the mark used on the imported goods by the foreign exporter in the absence of an assignment of any kind Trademarks used and adopted on goods manufactured or packed in a foreign country in behalf of a domestic importer. • The term owner does not include the importer of the goods bearing the trademark. unless such importer is actually the owner thereof in the country from which the goods are imported. shipping thousand of bags of wheat flour bearing the trademark "All Montana" were shown by petitioner and maintained that anyone. 1962 asserting that it started using the trademark on June 30. as a mere indentor can apply for the registration of the trademark of its principal / negative. and had no right to apply for its registration. Unno Commercial Enterprise's contention: • argued that the same trademark had been registered in its favor on March 8. • various shipments.S. Inc. however. Inc. Inc. Inasmuch as it was not the owner of the trademark. Eric Recalde other mark of ownership. broker or indentor can appropriate. indentor or distributor. merely acted as exclusive distributor of All Montana wheat flour in the Philippines. may make application for the registration of a foreign trademark. Huang Bros. Only owners of the trademark can apply for its registration. indentor or distributor acquires no rights to the trademark of the goods he is dealing with in the absence of a valid transfer or assignment of the trade mark. he has no right to apply for the registration of the same. Ratio Decidendi: • The right to register trademark is based on ownership..
• CA affirmed the BPTTT decision and held Jmvdg Trademark Cases . CA and NSR RUBBER CORPORATION G. 1985. • A Verified Notice of Opposition was filed by petitioner alleging that it will be damaged by the registration of the trademark CANON in the name of NSR Rubber Corp. private respondent can use the trademark CANON for its goods classified as class 25 (sandals). 2000 Facts: • On January 15. private respondent NSR Rubber Corporation filed an application for registration of the mark CANON for sandals in the BPTTT. dyestuff). 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. • On November 10. see page 11 herein Atty. July 20. • In Faberge. Intermediate Appellate Court. • The Court affirms respondent Director of Patent's decision declaring respondent General Milling Corporation as the prior user of the trademark "All Montana" on wheat flour in the Philippines and ordering the cancellation of the certificate of registration for the same trademark previously issued in favor of petitioner Unno Commercial Enterprises. Clearly. the use of the same trademark on the latter's product cannot be validly objected to. subject to the conditions and limitations stated therein. Registration does not perfect a trademark right. 1992. However. No. cannot and should not be allowed to feign that the junior user had invaded the senior user's exclusive domain. 14 the Director of Patents is expressly authorized to order the cancellation of a registered mark or trade name or name or other mark of ownership in an inter partes case. toner. an item which is not listed in its certificate of registration. the senior user. • petitioner failed to attach evidence that would convince the Court that petitioner has also embarked in the production of footwear products. Eric Recalde that “CANON” can be used by private respondent for its sandals because the products of these two parties are dissimilar. and dyestuff of petitioner and the sandals of private respondent. 120900.Intellectual Property Law AUF School of Law Registration merely creates a prima facie presumption of the validity of the registration. • The BPTTT declared NSR Rubber Corp in default for failure to file Answer within the prescribed period and allowed petitioner to present its evidence ex-parte. • the exclusive right of petitioner in this case to use the trademark CANON is limited to the products covered by its certificate of registration. provision in question: • Section 2-A of the Trademarks Law (Republic Act 166). chemical products. when a trademark is used by a party for a product in which the other party does not deal. • Under Rule 178 of the Rules of the Patent Office in Trademark Cases. Incorporated vs. Issue/ Answer: • WON the use of the tradename CANON by defendant would cause prejudice to petitioner / negative Ratio Decidendi: • the ownership of a trademark or tradename is a property right that the owner is entitled to protect as mandated by the Trademark Law.R. chemical products. The certificate of registration confers upon the trademark owner the exclusive right to use its own symbol only to those goods specified in the certificate. toner. 7 CANON KABUSHIKI KAISHA vs. the Court held: since the senior user has not ventured in the production of briefs. of the registrant's ownership of the trademark and of the exclusive right to the use thereof. such as the interference proceeding at bar. • since the certificate of registration of petitioner for the trademark CANON covers class 2 (paints. there is a world of difference between the paints.
A. either administratively if their legislation so permits. LEE COMPANY. liable to create confusion. trademarks. shorts. of which both the Philippines and Japan. CA. the Trademark Law." Memorandum dated 25 October 1983 to the Director of Patents by Hon. as including "any word. The countries of the Union may provide for a period within which the prohibition of use must be sought. sari-sari stores and department stores. b) the subject of the right must be a trademark. Switzerland. emblem.A. 100098.S. Eric Recalde (1) The countries of the Union undertake. INC G.D. IESDCH c) the mark must be for use in the same or similar kinds of goods. CORP vs. U. (2) A period of at least five years from the date of registration shall be allowed for seeking the cancellation of such a mark. Provision in question: • Article 8 of the Paris Convention. the country of petitioner. not a patent or copyright or anything else. and at the same time aims to repress unfair competition. symbol. this Office believes that there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity. sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them for those manufactured. imitation or translation. Director General of the World Intellectual Property Organization. blouses. 166 (Trademark Law) and Art.. SR 5054 (Supplemental Register) for the trademark "STYLISTIC MR. • The term "trademark" is defined by RA 166. jackets. shirts and lingerie under Class 25. No. trade names and indications of source or appellations of origin.) filed with the BPTTT a Petition for Cancellation of Registration No. 37 of R. (Delaware. name. dresses. and d) the person claiming must be the owner of the mark (The Parties Convention Commentary on the Paris Convention. VIII of the Paris Convention for the Protection of Industrial Property. Lee Co. Lee Co. service marks. the evident disparity of the products of the parties in the case at bar renders unfounded the apprehension of petitioner that confusion of business or origin might occur if private respondent is allowed to use the mark CANON. industrial designs. 1995 Facts: • On 18 September 1981 H. sold or dealt in by others. December 29. to wit: "A tradename shall be protected in all the countries of the Union without the obligation of filing or registration." • the Paris Convention. socks. Roberto V. are signatories.. BOP and H. Geneva. • Regarding the applicability of Article 8 of the Paris Convention. • Based on the memorandum by Ongpin. 29 is a multilateral treaty that seeks to protect industrial property consisting of patents. Petitioner failed to comply with the third requirement of the said memorandum that is the mark must be for use in the same or similar kinds of goods. Ongpin a) the mark must be internationally known. Article by Dr. invokes Sec.D. or at the request of an interested party. No. briefs. Bogsch. averred that petitioner's Jmvdg Trademark Cases 8 . (3) No time limit shall be fixed for seeking the cancellation or the prohibition of the use of marks or used in bad faith. whether or not it forms part of a trademark. to refuse or to cancel the registration and to prohibit the use of a trademark which constitutes a reproduction. issued on 27 October 1980 in the name of Emerald Garment (Philippines) • H.D. 1985)' EMERALD GARMENT MFTG. The products of petitioner are sold through special chemical stores or distributors while the products of private respondent are sold in grocery stores. of a mark considered by the competent authority of the country of registration or use to be wellknown in that country as being already the mark of a person entitled to the benefits of the present Convention and used for identical or similar goods." Article 6bis of the Paris Convention states: Atty. utility models. jeans. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.R. jogging suits. LEE" used on skirts. Thus. Inc.Intellectual Property Law AUF School of Law the two classes of products in this case flow through different trade channels.
and to cause him to purchase the one supposing it to be the other.D. yet. • It was only on the date of publication and issuance of the registration certificate that Jmvdg Atty. 20 the date the certificate of registration SR No." • CA affirmed the Director of Patents' decision • Emerald contends that H. it was only on 18 September 1981 that private respondent filed a petition for cancellation of petitioner's certificate of registration for the said trademark.A. Issue/ Answer: • WON H. meaning. It is well to reiterate that the determinative factor in ascertaining whether or not the marks are confusingly similar to each other is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the buying • • • Trademark Cases 9 . Eric Recalde private respondent may be considered "officially" put on notice that petitioner has appropriated or is using said mark. that duplication or imitation is not necessary. 1975. 5054 was published in the Official Gazette and issued to petitioner and not May 1. substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article.Intellectual Property Law AUF School of Law trademark "so closely resembled its own trademark. mistake and deception on the part of the purchasing public as to the origin of the goods. No. • using the test of dominancy. ◦ The likelihood of confusion is further made more probable by the fact that both parties are engaged in the same line of business. 2 tests: ◦ test of dominancy: 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. to cause confusion. It is undeniably the dominant feature of the mark. Trade-names and Unfair Competition • Emerald alleges that it has been using its trademark "STYLISTIC MR. which. 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. Director of Patents declared that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee' which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. 'LEE' as previously registered and used in the Philippines. This term has been defined as "such a close or ingenious imitation as to be calculated to deceive ordinary purchasers. when applied to or used in connection with petitioner's goods. is the function and purpose of registration in the supplemental register. Lee's prior registration is enough to confer upon it the exclusive ownership of the trademark Lee in opposition to Emerald's / negative Ratio Decidendi: • the reckoning point of ownership of Emerald is 27 October 1980. Lee's petition for cancellation and opposition to registration. a similarity in the dominant features of the trademark would be sufficient." Colorable imitation refers to such similarity in form. 166. or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives. LEE" since 1 May 1975.D. then infringement takes place. the essential element of infringement is colorable imitation. sound. after all. as to be likely. 9-A of R. D. otherwise known as the Law on Trade-marks." • the Director of Patents rendered a decision granting H. Lee is estopped from instituting an action for infringement before the BPTTT under the equitable principle of laches pursuant to Sec. content. and not abandoned. special arrangement. words.
may be considered and applied. No. — The Principal Register SEC. or colorable imitation to labels. counterfeit. of considerable sales since its first use. business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services. noticeable and substantial enough to matter ◦ the products involved in the case at bar are. copy or colorable imitation of any registered mark or trade-name in connection with the sale. "LEE" is primarily a surname. 22. continuous adoption of the trademark which should consist among others. No. Actual use in commerce in the Philippines is an essential prerequisite for the acquisition of ownership over a trademark • Atty. what constitutes. without the consent of the registrant. 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. — There is hereby established a register of trade-marks. in the main. wrappers. or reproduce. Petitioner's trademark is the whole "STYLISTIC MR. Eric Recalde The Trademark Law is very clear. therefore. the trademark should be considered as a whole and not piecemeal. packages. LEE. ◦ the average Filipino consumer generally buys his jeans by brand. Registration of trade-marks. copy. equitable principles of laches. 166. 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.A. Provisions in question: Sec. or identity of such business. receptacles or advertisements intended to be used upon or in connection with such goods. it did not present proof to invest it with exclusive. trade-names and service-marks which shall be known as the principal register. offering for sale. Trade-names and Unfair Competition SEC. yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject mark. Infringement. ◦ the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. 4. There is no dispute that respondent corporation was the first registrant. copy or colorably imitate any such mark or trade-name and apply such reproduction. acquire exclusive ownership over and singular use of said term. prints. business or services of others shall have • • • • • Jmvdg Trademark Cases 10 . Sec." Although on its label the word "LEE" is prominent. 166. various kinds of jeans. counterfeit.Intellectual Property Law AUF School of Law public. 9-A. or advertising of any goods. particularly paragraph 4(e): CHAPTER II-A. ◦ The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. business or services. where applicable. the trademarks involved as a whole and rule that petitioner's "STYLISTIC MR. trade-name or servicemark used to distinguish his goods.A. ◦ Holistic test: mandates that the entirety of the marks in question must be considered in determining confusing similarity. It requires actual commercial use of the mark prior to its registration. LEE" is not confusingly similar to private respondent's "LEE" trademark. counterfeit. The owner of a trade-mark. trade-names and service-marks on the principal register. Private respondent cannot. 9-A of R. — Any person who shall use. signs. 4 of R. estoppel. shall be liable to a civil action by the registrant for any or all of the remedies herein provided. otherwise known as the Law on Trade-marks. and acquiescence. • For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner's use of its own mark and for failure to establish confusing similarity between said trademarks. private respondent's action for infringement must necessarily fail. any reproduction. Equitable principles to govern proceedings. business or services from the goods. SEC. has not acquired ownership over said mark. The dissimilarities between the two marks become conspicuous. — In opposition proceedings and in all other inter partes proceedings in the patent office under this act.
subject to any conditions and limitations stated therein. unless it: xxx xxx xxx. Issue/Answer: • WON the trademark and tradename “Ang Tibay” is a descriptive word which will bar its registration. Registration of Marks and Trade-names. by actual use hereof in manufacture or trade. • "Ang Tibay" is not a descriptive term within the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. The ownership or possession of trade-mark. • Ana Ang registered the same trade-mark "Ang Tibay" for pants and shirts on April 11. — Trade-marks. how acquired. and indoor baseballs since 1910. ANG vs. and as a trade-name on January 3. tradenames. in business and in the service rendered. or associations domiciled in any foreign country may be registered in accordance with the provisions of this act: Provided. partnerships or associations domiciled in the Philippines and by persons. 48226. and such fact is officially certified. / negative Ratio Decidendi: • The phrase "Ang Tibay" is an exclamation denoting admiration of strength or durability. 1933. shall be recognized and protected in the same manner and to the same extent as are other property rights to the law. or when applied to or used in connection with the goods. service-mark. trade-names. SEC. corporations. as in this section provided. That the country of which the applicant for registration is a citizen grants by law substantially similar privileges to citizens of the Philippines. 2. business or services of the applicant is primarily geographically descriptive or deceptively misdescriptive of them. or who renders any lawful service in commerce. or a service-mark not so appropriated by another. further. corporations. business or services of the applicant is merely descriptive or deceptively misdescriptive of them. 1915. and of the registrant's exclusive right to use the same in connection with the goods. partnerships. shoes. That said trade-marks. December 14. or service marks are actually in use in commerce and services not less than two months in the Philippines before the time the applications for registration are filed: And Provided. • He formally registered it as a trade-mark on September 29. • The phrase "ang tibay" is never used adjectively to define or describe an object. 20.A. 166) which explicitly provides that: CHAPTER II. — Anyone who lawfully produces or deals in merchandise of any kind or who engages in lawful business.R. business or services from others. What are registrable. 20 of the Trademark Law SEC. (e) Consists of a mark or trade-name which. 1932. or is primarily merely a surname Sec.Intellectual Property Law AUF School of Law the right to register the same on the principal register. and established a factory for the manufacture of said articles in the year 1937. Atty. business or services specified in the certificate." both as a trade-mark and as a tradename. Ownership of trade-marks. in the manufacture and sale of slippers. Sec. SEC. TORIBIO TEODORO G. tradename. 2-A. by the government of the foreign country to the Government of the Republic of the Philippines. and that the use by petitioner of said trade-mark constitutes a violation of sections 3 and 7 of Act No. Eric Recalde REGISTRABILITY ANA L. that the goods or articles on which the two trademarks are used are similar or belong to the same class. a trade-name. may appropriate to his exclusive use a trade-mark. No. No. Certificate of registration prima facie evidence of validity. 11 Jmvdg Trademark Cases . the registrant's ownership of the mark or trade-name. when applied to or used in connection with the goods. 2 and 2-A of the Philippine Trademark Law (R. to distinguish his merchandise. heretofore or hereafter appropriated. and service marks owned by persons. — A certificate of registration of a mark or tradename shall be a prima facie evidence of the validity of the registration. • Teodoro filed a complaint against Ang • RTC rendered decision in faor of Ang on the grounds that the two trade-marks are dissimilar and are used on different and non-competing goods • CA reversed the RTC decision and ruled that by uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes. trade-names and service-marks. 194 Facts: • Toribio Teodoro has continuously used "Ang Tibay. respondent's trade-mark has acquired a secondary meaning. with a certified true copy of the foreign law translated into the English language. 666.
has not been used by any enterprise. and other articles of wear for men. 1946. • the same trade-mark. Eric Recalde approaching the mark of a business rival. they would. • They would be considered as not falling under the same class only if they are so dissimilar or so foreign to each other as to make it unlikely that the purchaser would think the first user made the second user's goods.negative • WON defendant is guilty of unfair competition . Issue/Answer: • WON Wellington. WELLINGTON DEPT STORE INC G. as 12 Jmvdg Trademark Cases ." • Benjamin Chua applied for the registration of the business name "Wellington Department Store" on May 7. and children. in that trade and to that branch of the purchasing public. • It is certainly not farfetched to surmise that the selection by petitioner of the same trade-mark for pants and shirts was motivated by a desire to get a free ride on the reputation and selling power it has acquired at the hands of the respondent. because geographically or otherwise descriptive. having obtained the registration for the said articles the trademark of "Wellington. ANG SI HENG and SALUSTIANA DEE vs. • Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties. His application therefor was approved by the Bureau of Commerce.Intellectual Property Law AUF School of Law Issue on who is the lawful registrant: Teodoro • Doctrine of secondary meaning: ◦ This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market. 1953 Facts: • Si Heng & Dee are engaged in the business of manufacturing shirts.R.negative Ratio Decidendi: • mere geographical names are ordinarily regarded as common property. could not cause confusion in trade and that. L-4531. or personal source. • Petitioners 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. 3 the field from which a person may select a trade-mark is practically unlimited. of the second user's goods. and it is a general rule that the same cannot be appropriated as the subject of an exclusive trademark or tradename. • As the term cannot be appropriated as a trademark or a tradename. They have been in that business since the year 1938. be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin. might nevertheless have been used so long and so exclusively by one producer with reference to his article that. nevertheless. no action for violation thereof can be maintained. there could be no objection to the use and registration of a well-known mark by a third party for a different class of goods. the word or phrase has come to mean that the article was his product. January 10. No. bing a geographical can be registered . thereby resulting in damage to them. and a certificate issued in his favor. • Defendants raises the defense of dissimilarity of the goods that they deal in • court a quo dismissed the complaint and held that Wellington Co. and hence there is no excuse for impinging upon or even closely Atty. women. drawers. used on unlike goods. As observed in another case. pants. therefore.
1961) dismissed Romero's petition for cancellation of the registration of the trademark "Adagio" for brassieres manufactured by respondent Maiden Form Brassiere Co. INC G. and in the Philippines on August 31. In its application. • Being a musical term. and was used as a trademark by the owners thereof (the Rosenthals of Maiden Form Co. • Neither can the public be said to be deceived into the belief that the goods being sold in defendant's store originate from the plaintiffs. 1946 • Director. in accordance with Section 7 of Republic Act No. • petitioner filed with respondent Director a petition for cancellation of said trademark.. • Director of Patents (of January 17. March 31." issue of unfair competition: • While there is similarity between the trademark or tradename "Wellington Company" and that of "Wellington Department Store. 1957. that said trademark is "a fanciful and arbitrary use of a foreign word adopted by applicant as a trademark for its product.Intellectual Property Law AUF School of Law none is granted by the statute in such cases. Inc. on August 13. MAIDEN FORM BRASSIERE CO.. therefore. ANDRES ROMERO vs. respondent company alleged that said trademark was first used by it in the United States on October 26.. and confusion will result by the use of the disputed name by the defendants' department store. nor any that comes within the purview of Section 4 of Republic Act No.R. inter alia. • no action may lie in favor of the plaintiffsappellants herein for damages or injunctive relief for the use by the defendantsappellees of the name "Wellington. without objection on the part of respondent company. L-18289. unregistrable. 166) of the trademark Atty. 166. No." while the former does not purport to be so. It is urged that said trademark had been used by local brassiere manufacturers since 1948. it is used in an 13 Jmvdg Trademark Cases . 166 (Trademark Law). that it is neither a surname nor a geographical term. 1964 Facts: • On February 12." no confusion or deception can possibly result or arise from such similarity because the latter is a "department store. on the grounds that it is a common descriptive name of an article or substance on which the patent has expired • Appellant claims that the trademark "Adagio" has become a common descriptive name of a particular style of brassiere and is. having found. respondent company. such that its articles and products have acquired a well-known reputation. 1937. New York) because they are musically inclined. because the evidence shows that defendant's store sells no shirts or wear bearing the trademark "Wellington." but other trademarks • doctrine in Ang vs Teodoro cannot be applied 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. Issue/Answer: • WON Adagio is a descriptive word incapable of registration / negative Ratio Decidendi: • The evidence shows that the trademark "Adagio" is a musical term. Eric Recalde 'Adagio" for the Brassieres manufactured by it. filed with respondent Director of Patents an application for registration (pursuant to Republic Act No.appellants have not been able to show the existence of a cause of action for unfair competition against the defendantsappellees. a foreign corporation. 1957. which means slowly or in an easy manner. • plaintiffs. approved for publication in the Official Gazette said trademark of respondent company.
.R. INC. Sterling Products International. • Sy Tuo claims that he owns the tademark and had been using it since 1951 as mark Jmvdg Trademark Cases 14 . and nail polish as opposed to Chua Che's use which was admittedly only in 1957. April 30. the disuse must be permanent and not ephemeral. • respondent Director of Patents did not err in dismissing the present petition for cancellation of the registered trademark of appellee company. • The likelihood of purchasers to associate these products to a common origin is not far-fetched.Intellectual Property Law AUF School of Law arbitrary (fanciful) sense as a trademark for brassieres manufactured by respondent company. Issue/ Answer: • WON allowing Chua Che to register the same mark for laundry soap would likely to cause confusion on the purchasers of X-7 products by SY Tou / affirmative. and "Concerto". There must be a thoroughgoing discontinuance of any trade-mark use of the mark in question" • "Non-use because of legal restrictions is not evidence of an intent to abandon. (SPI on medicine) and defendant Farbenfabriken CHUA CHE vs. likewise. 166 as amended by Section 1 of Republic Act 865 see page 11 herein Atty. Furthermore. even though the goods fall into different categories • The products of appellee are common household items now-a-days. G. Chua Che presented with the Philippines Patent Office a petition praying for the registration in his favor the trade name of "X-7" • Director of Patents denied the application for use on soap Class 51. On abandonment of trademark by private defendant: • "To work an abandonment. registration of a trademark should be refused in cases where there is a likelihood of confusion. it must be intentional and voluntary. vs. while specifically different. "Prelude". and not involuntary or even compulsory. No. Provisions in question: Section 2 of Republic Act No.R. being manufactured by said Chua Che. 1958. the different styles or types of its brassieres. namely. respondent company's long and continuous use of the trademark "Adagio" has not rendered it merely descriptive of the product. appellee's rights to the trademark "X-7". the use of X-7 for laundry soap is but a natural expansion of business of the opposer. and the decision appealed from is therefore hereby affirmed. "Chansonette". Eric Recalde for perfume. Both from the standpoint of priority of use and for the protection of the buying public and. • Director of Patents held: The products of the parties. No. of course. • On the other hand. 1965 Facts: • Under date of October 30. L-18337. FARBENFABRIKEN BAYER AKTIENGESELLSCHAFT and ALLIED MANUFACTURING AND TRADING CO. mistake. adopted other musical terms such as "Etude". it becomes manifest that the registration of said trademark in favor of applicant-appellant should be denied. 1969 Facts: • each of the principal suitors. upon the opposition of respondent Sy Tuo. • It also appears that respondent company has. Ratio Decidendi: • while it is no longer necessary to establish that the goods of the parties possess the same descriptive properties. "Over-ture". in the same manner as laundry soap.. or deception. lipstick. as previously required under the Trade Mark Act of 1905. January 30. STERLING PRODUCTS INT'L INC. with costs against the appellant. L-19906. PHILIPPINE PATENT OFFICE and SY TUO G. to identify. as a trademark. Inc. are products intended for use in the home and usually have common purchasers.
Farben. the subsidiary in New York was declared as an enemy controlled corp so its assets were sold to Sterling Corp. FFB is the original owner of the name and mark. and the defendants Bayer and Sterling. Eric Recalde with respect to sales following the effective date of this decree. On November 18. a German. patent applications. in or to or under any heretofore acquired and presently existing patents." AMATCO) started selling FBA's products especially "Folidol. No. The registration of these trademarks was only for "Medicines. and any and all amendments or supplements thereto are declared and adjudged to be unlawful under the Anti-Trust Laws of the United States. trade-names (such as the name 'Bayer' and the 'Bayer Cross' mark and registrations thereof).: the BAYER CROSS IN CIRCLE trademark on April 18. or any supplements. 1947.S. 1939 for which it was issued Certificate of Registration No. organized a drug company bearing his name — Friedr. — at Barmen. on August 1. patent licenses or trademarks" • ◦ • • • • • • • • • The trademarks BAYER and BAYER CROSS IN CIRCLE were then registered in the Philippines under the old Trademark Law (Act 666) by The Bayer Co. its subsidiaries. subsidiaries or assigns. When the war broke out. it directed defendants "to add a distinctive word or words in their mark to indicate that their products come from Germany. its successors. and by suits for damages. 1262-S for BAYER. trademarks. At about the year 1888 it started to manufacture pharmaceutical preparations also. amendments or modifications thereof. Bayer et comp. 1260-S for BAYER CROSS IN CIRCLE. 13081 These trademark rights were assigned to SPI on December 30. injunction or other remedy with respect to any such patents. FBA applied for the registration of the BAYER CROSS IN CIRCLE trademark with the Philippines Patent Office for animal and plant Jmvdg Trademark Cases 15 . or from paying to I. patent licenses. Affect or diminish any right. be and they are hereby enjoined and restrained from carrying out or enforcing any of the aforesaid contracts. in or to the name 'Bayer' and the 'Bayer Cross' mark or registrations thereof." a chemical insecticide which bears the BAYER CROSS IN CIRCLE trademark." The word BAYER was the surname of Friedrich Bayer. 1863. title or interest of said defendants. their successors. Inc. the Bayer contract of 1926. patent applications. disputes with regard the ownership of the name and mark were resolved by 2 agreements between Winthrop's and FFB U. District Court for Southern New York held that: The Bayer contract of 1923. processing.. pharmaceutical or other drug or chemical products. 1948 two new certificates of registration: No. Germany. processes or formulae relating to the manufacturing. 1959." But to avoid confusion. (FBA on insecticides) seeks to exclude the other from use in the Philippines of the trademarks BAYER and BAYER CROSS IN CIRCLE. their successors. FFB was based in Germany and had a subsidiary company in New York. or impair any rights or remedies of said defendants. or any of them. 1942 and the assignment was recorded in the Philippines Patent Office on March 5. aspirin compounds. The trial court declared itself "in favor of the solution that favors division of the market rather than monopoly.Provided. that nothing herein contained in this Sec.G. subsidiaries or assigns. successors or assigns. who. and their respective successors and subsidiaries. use or sale of aspirin. subsidiaries or assigns. SPI was issued by the Philippines Patent Office on June 18.Intellectual Property Law AUF School of Law Bayer Aktiengesellschaft. any royalties or share of profits pursuant to said contracts Atty. III shall: ◦ Affect in any way the rights or title of the defendants Bayer. however. The company was at first engaged in the manufacture and sale of chemicals. or. provided by statute or convention.
. • But defendants ask us to delist plaintiff's BAYER trademarks for medicine from the Principal Register. Such right "grows out of their actual use • The BAYER trademarks registered in the Philippines to which plaintiff SPI may lay claim are those which cover medicines only. it suffers from the defect of non-use. Inc. 1960.Intellectual Property Law AUF School of Law destroying agents. Nothing in those certificates recited would include chemicals or insecticides. The trademarks do not necessarily link plaintiff with the public. then a situation may arise whereby an applicant may be tempted to register a trademark on any and all goods which his mind may conceive even if he had never intended to use the trademark for the said goods. nevertheless. claiming right thereto for said use. • plaintiff may hold on to its BAYER trademarks for medicines. 2-A. it is not insulated from the charge that as it marketed its medicines it did so with an eye to the goodwill as to quality that defendants' predecessor had established. the certificates of registration for medicines issued by the Director of Patents upon which the protection is enjoyed are only for medicines. The Bayer Co. • Neither will the 1927 registration in the United States of the BAYER trademark for insecticides serve plaintiff any. FBA was issued a certificate of registration in the Supplemental Register. Issue/Answer: Ratio Decidendi: • actual use in commerce or business is a prerequisite to the acquisition of the right of ownership over a trademark. in fact. not medicines. Eric Recalde be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which. provision: Sec. and the public would then • Jmvdg Atty. Registration in the United States is not registration in the Philippines. Said trademarks had been registered since 1939 by plaintiff's predecessor. For. the defendant's product is such as might reasonably be assumed to originate with the plaintiff. of the second user's goods. Defendants' claim is stale. And defendants may continue using the same trademarks for insecticides and other chemicals. • two types of confusion ◦ confusion of goods "in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other. or personal source. RA 166 see page ii herein Trademark Cases 16 . SR-304. On February 25. This rule is spelled out in our Trademark Law • adoption alone of a trademark would not give exclusive right thereto. Therefore. ◦ confusion of business: "Here though the goods of the parties are different. it was on said goods that the BAYER trademarks were actually used by it in the Philippines. be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trademarks would be likely to cause confusion as to the origin. they would. does not exist. • Although two noncompeting articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties. • Plaintiff is not the first user thereof in the Philippines. • if the certificate of registration were to be deemed as including goods not specified therein. (relate “Ang Tibay” case) • It was not plaintiff's predecessor but defendant's namely Farbenfabriken or Bayer Germany that first introduced the medical products into the Philippine market and household with the Bayer mark half a century ago • Plaintiff cannot now say that the present worth of its BAYER trademarks it owes solely to its own efforts.
DR. GABRIEL vs. Gabriel • "Because the corporation was allegedly going bankrupt and the members were deserting. • the trademark "WONDER" has long been identified and associated with the product manufactured and produced by the Dr. 1962. It merely empowers the petitioner as exclusive distributor to own the package and to create a design at her pleasure. • On October 19. But a scrutiny of the provisions of said contract does not yield any right in favor of petitioner other than that expressly granted to her — to be the sole and exclusive distributor of respondent Dr. Perez Cosmetic Laboratory. Jose R. Jose R. January 31. Republic Act No. Eric Recalde own name/ negative Ratio Decidendi: • "Because the corporation was allegedly going bankrupt and the members were deserting. even if permitted to use said trademark. she further alleged the written contract between her and the registrant (respondent) wherein. JOSE R. respondent Dr. Perez' product. • the agreement never mentioned transfer of ownership of the trademark. 1974 Facts: • Dr. and thereafter he asked the Petitioner to become the distributor of his products • Director of Patents rendered his decision denying the petition of Gabriel to cancel the certificate of registration Issue/Answer: • WON Gabriel. he made an agreement (January. 1959. the Respondent terminated the agreement in July. • The exclusive distributor does not acquire any proprietary interest in the principal's trademark. the right to register trademark is based on ownership and a mere distributor of a product bearing a trademark. 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. and that the labels submitted by the registrant are the very containers bearing the trademark "WONDER" which are owned by her and which she has been exclusively and continuously using in commerce • after Dr. the Respondent terminated the agreement in July. Gabriel claiming that he had been using the subject mark since 1959 filed with the Patent Office a petition for cancellation of the trademark "WONDER from the supplemental register alleging that the registrant was not entitled to register the said trademark at the time of his application for registration • In support of her petition. according to her. Perz had perfected his research and obtained a certificate of label. the latter has recognized her right of use and ownership of said trademark. Perez and the same was only for a term. • Under Sections 2 and 2-A of the Trademark Law. has no right to and cannot register the said trademark • Petitioner urges that the agreement of exclusive distributorship executed by and between her and respondent vested in her the exclusive ownership of the trademark "WONDER". as amended. L-24075. No. Gabriel appears to be a mere distributor of the product by contract with the manufacturer. as a mere distributor have the right to register the subject mark in her Jmvdg Atty.R. Perez filed with the Patents Office on February 23. and thereafter he asked the Petitioner to become the distributor of his products • Crisanta Y. 1961 an application for registration of the trademark "WONDER" in the Supplemental Register. PEREZ G. 1959) with a certain company named 'Manserco' for the distribution of his soap. Yangga who happens to be the brother of the Petitioner Crisanta Y. • Petitioner's act in defraying substantial expenses in the promotion of the 17 Trademark Cases . It was then being managed by Mariano S. Jose R.Intellectual Property Law AUF School of Law CRISANTA Y. 1959. petitioner Crisanta Y. 166.
which likewise falls under Class 47. July 30. as it would redound to her own benefit as distributor. "It must be affirmative and definite. • Opposer's products are ordinary day-to-day household items whereas ham is not necessarily so.. those activities are normal in the field of sale and distribution. NG SAM G. a Chinese citizen residing in Iloilo City. Thus. L-26676. 1982 Facts: • Private respondent filed with the Philippine Patent Office an application for registration of the trademark "CAMIA" for his product. 1960. which is ham. • The term "CAMIA" is descriptive of a whole genus of garden plants with fragrant white flowers. polishing materials and soap of all kinds. • where no confusion is likely to arise. cooking oil. and those of petitioner consisting of lard. • Director of Patents rendered a decision allowing registration of the trademark "CAMIA" in favor of Ng Sam. ham. some of which are likewise classified under Class 47. • The trademark "CAMIA" was first used in the Philippines by petitioner on its products in 1922 and registered the same in 1949 • On November 25. • Emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. this alone cannot serve as the decisive factor in the resolution of whether or not they are related goods. PHILIPPINE REFINING CO. • 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. But it should be so distinctive and sufficiently original as to enable those who come into contact with it to recognize instantly the identity of the user. butter. ham. • A trademark is designed to identify the user. significant and distinctive. and he who first adopted it cannot be injured by any subsequent appropriation or imitation by others.vs. respondent Ng Sam. filed an application with the Philippine Patent Office for registration of the identical trademark "CAMIA" for his product. 1959. and the public will not be deceived.Intellectual Property Law AUF School of Law Respondent's goods and the printing of the packages are the necessary or essential consequences of Paragraph 6 of the agreement because.R. then it is apparent that it cannot identify a particular business. Eric Recalde or origin. anyway. the goods of the parties are not of a character which purchasers would be likely to attribute to a common origin. / negative Ratio Decidendi: • the right to a trademark is a limited one. abrasive detergents. Alleged date of first use of the trademark by respondent was on February 10." • the business of the parties are non18 Jmvdg Trademark Cases . INC. as in this case. and those acts are incumbent upon her to do." • While ham and some of the products of petitioner are classified under Class 47 (Foods and Ingredients of Food). Issue/Answer: • WON the product of respondent Ng Sam. capable to indicate origin. 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 Atty. butter. registration of a similar or even identical mark may be allowed. No. • if a mark is so commonplace that it cannot be readily distinguished from others. Petitioner opposed the application claiming that it first used said trademark on his products: lard. in the sense that others may use the same mark on unrelated goods.finding that `the goods of the parties are not of a character which purchasers would be likely to attribute to a common origin. which falls under Class 47 (Foods and Ingredients of Food).
Intellectual Property Law AUF School of Law competitive and their products so unrelated that the use of identical trademarks is not likely to give rise to confusion. the judgment was reversed and the complaint was dismissed. when applied to or used in connection with the goods." Implicit in this definition is the concept that the goods must be so related that there is a likelihood either of confusion of goods or business. 2 The products of each party move along and are disposed through different channels of distribution. non-competing goods may be those which. August 31. factory and patent rights of La Oriental Tobacco Corporation. L-29971. copy or colorably imitate any such mark or tradename and apply such reproduction. wrappers.CA and UNITED CIGARETTE CORPORATION G. or reproduce. the goods are obviously different from each other — with "absolutely no iota of similitude" 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. prints. INC vs. provision: Section 4(d) of Trademark law "a mark which consists of or comprises a mark or tradename which so resembles a mark or tradename registered in the Philippines or a mark or tradename previously used in the Philippines by another and not abandoned. petroleum products. private respondent admitted the use of the trademark ESSO on its own product of cigarettes but claimed that these were not identical to those produced and sold by the petitioner • The trial court found United Cigarette Corp guilty of infringement of trademark. counterfeit. • In its answer. much less cause damage to petitioner.R. business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services. it began to use the trademark ESSO on its cigarettes. copy or colorable imitation to labels. 19 ESSO STANDARD EASTERN. business or services. though they are not in actual competition. to the detriment of its own products. cigarettes. when they possess the same physical attributes or essential characteristics with reference to their form. counterfeit. • On appeal. No. as to be likely. or identity of such business. are so related to each other that it might reasonably be assumed that they originate from one manufacturer. texture or quality. 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. are non-competing. signs. 1 It is undisputed that the goods on which petitioner uses the trademark ESSO. copy or colorable imitation of any registered mark or tradename in connection with the sale. business services of the applicant. Jmvdg • • • • • • • Trademark Cases . counterfeit. Goods are related when they belong to the same class or have the same descriptive properties." Atty. 1963 the business. composition. or advertising of any goods. packages. and the product of respondent. receptacles or advertisements intended to be used upon or in connection with such goods. 1982 Facts: • Esso filed a case against United Cigarette Corp for trademark infringement alleging that after the latter had acquired in November. Issue/Answer: • WON United Cigarette Corp can be held liable for trademark infringement / negative Ratio Decidendi: • The law defines infringement as the use without consent of the trademark owner of any "reproduction. to cause confusion or mistake or to deceive purchasers. Eric Recalde offering for sale. the same trademark used by petitioner in its quality petroleum products which was likely to cause confusion or deception on the part of the purchasing public as to its origin or source.
1987 Facts: • Respondent Universal Rubber Products. vs. therefore. filed an application with the Philippine Patent office for registration of the trademark "UNIVERSAL CONVERSE AND DEVICE" used on rubber shoes and rubber slippers. The sales of 12 to 20 pairs a month of petitioner's rubber shoes cannot be considered insignificant.Intellectual Property Law AUF School of Law • 3 Atty./ affirmative Ratio Decidendi: • The ownership of a trademark or tradename is a property right which the owner is entitled to protect "since there is damage to him from confusion or reputation or goodwill in the mind of the public as well as from confusion of goods. considering that they appear to be of high expensive quality. EVALLE G. • CONVERSE RUBBER CORP. but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate and 20 • A comparison of the labels of the samples of the goods submitted by the parties shows a great many differences on the trademarks used. Eric Recalde for registration of the trademark in question. This admission necessarily betrays its knowledge of the reputation and business of petitioner even before it applied Jmvdg • • • • • • • Trademark Cases . admitted petitioner's existence since 1946 as a duly organized foreign corporation engaged in the manufacture of rubber shoes. • Petitioner Converse Rubber Corporation filed its opposition to the application for registration • Director of Patents dismissed the opposition of the petitioner and gave due course to respondent's application. Appropriation by another of the dominant part of a corporate name is an infringement The unexplained use by respondent of the dominant word of petitioner's corporate name lends itself open to the suspicion of fraudulent motive to trade upon petitioner's reputation. respondent has no right to appropriate the same for use on its products which are similar to those being produced by petitioner. No. • CONVERSE" is the dominant word which identifies petitioner from other corporations engaged in similar business. Issue/Answer: • WON 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. that the word "CONVERSE" belongs to and is being used by petitioner." the reference is to ordinary average purchasers a foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do business here. which not too many basketball players can afford to buy. • Respondent. January 8. and TIBURCIO S. UNIVERSAL RUBBER PRODUCTS. L-27906. INC.R. Knowing. and is in fact the dominant word in petitioner's corporate name. in the stipulation of facts. The determinative factor in ascertaining whether or not marks are confusingly similar to each other "is not whether the challenged mark would actually cause confusion or deception of the purchasers but whether the use of such mark would likely cause confusion or mistake on the part of the buying public When the law speaks of "purchaser. CA decision affirmed. Inc. Another factor why respondent's application should be denied is the confusing similarity between its trademark "UNIVERSAL CONVERSE AND DEVICE" and petitioner's corporate name and/or its trademarks "CHUCK TAYLOR" and "ALL STAR DEVICE" which could confuse the purchasing public to the prejudice of petitioner.
U." for which a license to transact business in the Philippines is required by Section 69 of the Corporation Law. 37. real or personal against trespass or conversion. • On March 9. . and it is apparent that the purpose of the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation. otherwise known as the Trademark Law: "Sec. for assorted men's wear. 638. 37 of RA No." Atty. which it may assert and protect in any of the courts of the world — even in jurisdictions where it does not transact business — just the same as it may protect its tangible property. . which is a party to an international convention or treaty relating to marks or tradenames on the repression of unfair competition to which the Philippines may be a party. a right in rem. DIRECTOR OF PATENTS and PURITAN SPORTSWEAR G. • "The right to the use of the corporate or trade name is a property right. for unfair competition. when it appears that they have personal knowledge of the existence of such a foreign corporation. but is widely and favorably known in the Islands through the use therein of its products bearing its corporate and trade name has a legal right to maintain an action in the Islands. 1962 by the Philippine Patent Office. No. Sec. • "The purpose of such a suit is to protect its reputation. 1964 the Puritan Sportswear Jmvdg Trademark Cases 21 . Eric Recalde Corporation. "Tradenames of persons described in the first paragraph of this section shall be protected without the obligation of filing or registration whether or not they form parts of marks. shirts jackets. . has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein bearing the same name as the foreign corporation. or have a bona fide or effective business or commercial establishment in any foreign country. or false designation of origin and false description. L-24295. Rights of Foreign Registrants-Persons who are nationals of. "whether or not it has been licensed to do business in the Philippines under Act Numbered Fourteen CAPACITY TO SUE OF FOREIGN ENTITIES central issue: WON the foreign company not doing business nor registered in the Philippines has the standing to sue a Philippine domiciled business entity for infringement before Philippine courts. 166.S." under Registration No. September 30. claim or demand. in the doing of which it does not seek to enforce any legal or contract rights arising from. business in the Philippine Islands and which is unlicensed and unregistered to do business here. corporate name and goodwill which has been established through the natural development of its trade for a long period of years. or growing out of any business which it has transacted in the Philippine Islands.. 10059 issued on November 15. domiciled in. Answer: affirmative GENERAL GARMENTS CORP vs.R. filed a petition with the Philippine Patent Office for the cancellation of the trademark "Puritan" registered in the name of General Garments Corporation. allows a foreign corporation or juristic person to bring an action in Philippine courts for infringement of a mark or trade-name. ." • Republic Act No. such as sweaters. Provision: Article 8 of Paris Convention provides that "a trade name [corporate name] shall be protected in all the countries of the Union without the obligation of filing or registration.A. inserting Section 21-A in the Trademark Law. Ratio Decidendi: • It should be postulated at this point that respondent is not suing in our courts "for the recovery of any debt. organized and existing in and under the laws of the state of Pennsylvania. shall be entitled to the benefits and subject to the provisions of this Act .Intellectual Property Law AUF School of Law tradename. whether or not it forms part of the trademark. 1971 Facts: • GGC is the owner of the trademark "Puritan. undershirts and briefs. • "A foreign corporation which has never done .
◦ while a suit under Section 21-A requires that the mark or tradename alleged to have been infringed has been "registered or assigned" to the suing foreign corporation.. sportswear and other garment products of the company. Eric Recalde LA CHEMISE LACOSTE. is cognizable by the Courts of First Instance (Sec. trade-names and service-marks which shall be known as the principal register. 27). as amended. . S. this Court was. in relation to Sec. vs. assigned to respondent Gobindram Hemandas all rights. . it may be stated. Provisions: "Section 17(c) and Section 4(d) of the Trade Law provide respectively as follows: "SEC. 1983. . May 21. • Since it is the trade and not the mark that is to be protected. • Hemandas & Co. The former was approved for publication while the latter was opposed by Games and Garments • On March 21. 18. the petitioner filed with the National Bureau of Investigation (NBI) a letter-complaint alleging therein the acts of unfair competition being committed by Hemandas and requesting their assistance in his apprehension and prosecution. SR-2225 (SR stands for Supplemental Register) for the trademark "CHEMISE LACOSTE & CROCODILE DEVICE" by the Philippine Patent Office for use on T-shirts. . apply to cancel said registration upon any of the following grounds: xxx xxx xxx (c) That the registration was obtained fraudulently or contrary to the provisions of section four. otherwise known as the Corporation Law. 43242) and "Lacoste" (Application Serial No. a trade-mark acknowledges no territorial boundaries of municipalities or 22 Jmvdg Trademark Cases . • Search warrants based on violation of Art. Two years later. 189 of RPC were issued against Hemandas • Hemandas filed a motion to quash the search warrants and the same was granted by the respondent court Ratio Decidendi: • As early as 1927. of the view that a foreign corporation not doing business in the Philippines needs no license to sue before Philippine courts for infringement of trademark and unfair competition. 1984 Facts: • In 1975. on one of the grounds enumerated in Section 4. FERNANDEZ and GOBINDRAM HEMANDAS G. a duly licensed domestic firm applied for and was issued Reg. to cause confusion or mistake or to deceive purchasers. Hemandas & Co. title. Chapter II thereof. and it still is. 17. 4. upon the payment of the prescribed fee. or . . but for cancellation under Section 17. — Any person. • On November 21. a suit for cancellation of the registration of a mark or tradename under Section 17 has no such requirement. 43241). unless it: xxx xxx xxx (d) Consists of or comprises a mark or trade-name which so resembles a mark or trade-name registered in the Philippines or a mark or trade-name previously used in the Philippines by another and not abandoned. at the time it brings complaint. business or services from the goods. business or services of others shall have the right to register the same on the principal register. No. the second partakes of an administrative proceeding before the Patent Office (Sec. may. Grounds for cancellation. and interest in the trademark "CHEMISE LACOSTE & DEVICE"." • In any event.R. Nos. it applied for the registration of the same trademark under the Principal Register. 1980. who believes that he is or will be damaged by the registration of a mark or trade-name. the petitioner filed its application for registration of the trademark "Crocodile Device" (Application Serial No. as to be likely. trade-name or servicemark used to distinguish his goods.Intellectual Property Law AUF School of Law hundred and fifty-nine. 63796-97. respondent in the present case is not suing for infringement or unfair competition under Section 21-A. A." "SEC. when applied to or used in connection with goods. 8)." Atty. business or services of the applicant. The owner of a trade-mark. ◦ The first kind of action. Registration of trade-marks.
Intellectual Property Law AUF School of Law states or nations. The case filed by petitioner is a criminal case. there was no compelling justification for the about face. or committed specific omissions. Supplemental Registration • A certificate of registration in the Supplemental Register is not prima facie evidence of the validity of registration. It creates a legally binding obligation on the parties founded on the generally accepted principle of international law of pacta sunt servanda which has been adopted as part of the law of our land. violating a given provision of our criminal laws • True. Eric Recalde in international commerce and not belonging to him is to render nugatory the very essence of the law on trademarks and tradenames. Pat. in Trademark Cases) • Section 19-A of Republic Act 166 as amended not only provides for the keeping of the supplemental register in addition to the principal register but specifically directs that: ◦ "The certificates of registration for marks and trade names registered on the supplemental register shall be conspicuously different from certificates issued for marks and trade names 23 • • • • • Jmvdg Trademark Cases . We cannot allow a possible violator of our criminal statutes to escape prosecution upon a far-fetched contention that the aggrieved party or victim of a crime has no standing to sue. is recognizing our duties and the rights of foreign states under the Paris Convention for the Protection of Industrial Property to which the Philippines and France are parties. upholding the right of the petitioner to maintain the present suit before our courts for unfair competition or infringement of trademarks of a foreign corporation. petitioner is the owner of the trademarks "LACOSTE". Off. the lower court should be given the opportunity to correct its errors. Any pretensions of the private respondent that he is the owner are absolutely without basis The records show that the goodwill and reputation of the petitioner's products bearing the trademark LACOSTE date back even before 1964 when LACOSTE clothing apparels were first marketed in the Philippines. a treaty or convention is not a mere moral obligation to be enforced or not at the whims of an incumbent head of a Ministry. In this case. To allow Hemandas to continue using the trademark Lacoste for the simple reason that he was the first registrant in the Supplemental Register of a trademark used Atty. therefore. business. and the composite mark of LACOSTE and the representation of the crocodile or alligator. or services specified in the certificate. Revised Rules of Practice Before the Phil. Issue of probable cause: • Probable cause has traditionally meant such facts and circumstances antecedent to the issuance of the warrant that are in themselves sufficient to induce a cautious man to rely upon them and act in pursuance thereof • probable cause "presupposes the introduction of competent proof that the party against whom it is sought has performed particular acts. with effect. with the Bureau of Customs in order to exclude from the Philippines. of not much significance. the crocodile or alligator device. of the registrant's exclusive right to use the same in connection with the goods. foreign goods bearing infringement marks or trade names (Rule 124. petitioner's capacity to sue would become. "CHEMISE LACOSTE". but extends to every market where the trader's goods have become known and identified by the use of the mark. if there be any. Such a certificate of registration cannot be filed. but the rectification must be based on sound and valid grounds. Since the violation is against the State.
◦ the validity of registration.. fraudulent registration of trade-mark. it transacts business in its name and for its account. trade-name or service mark. Any foreign corporation or juristic person to which a mark or tradename has been registered or assigned under this Act may bring an action hereunder for infringement. trade-mark or service mark or of himself as the owner of such trade-name. apply. ◦ the registrant's ownership of the mark ◦ and the registrant's exclusive right to use the mark. Any person who by means of false or fraudulent representation or declarations orally or in writing or by other fraudulent means shall procure from the patent office or from any other office which may hereafter be established by law for the purposes the registration of a trade-name. Provisions RPC: Art. in unfair competition and for the purposes of deceiving or defrauding another of his legitimate trade or the public in general. commercial brokers or commission merchants. convention or law. annex or use in connection with any goods or services or any container or containers for goods a false designation of origin or any false description or representation and shall sell such goods or services. That the country of which the said foreign corporation or juristic person is a citizen. Provided. Sec 1 (g) Omnibus Investment Code(1) “A foreign firm which does business through middlemen acting on their own names. as 'the competent authority of the country of registration. "(2) Appointing a representative or distributor who is domiciled in the Philippines. The pending case before the Patent Office is an administrative proceeding and not a civil case. — The penalty provided in the next proceeding article shall be imposed upon: Atty. 3.. Any person who. and false description. otherwise known as the Corporation Law.e. although it may be cancelled after its issuance. • A supplemental register is provided for the registration of marks which are not registrable on the principal register because of some defects prejudicial question • The proceedings pending before the Patent Office involving IPC Co. Any person who shall affix. as amended. Section 21-A of Republic Act No. where a foreign firm is represented by a person or local company which does not act in its name but in the name of the foreign firm. as in the case of the principal register. i. such as indentors. 2." Jmvdg Trademark Cases 24 . For this reason. the latter is doing business in the Philippines. trade-mark or service mark. • The case which suspends the criminal prosecution must be a civil case which is determinative of the innocence or. pursuant to the treaty obligation of the Philippines. at the time it brings the complaint. the guilt of the accused.. Neither may it be the subject of interference proceedings. for unfair competition. and not in the name or for the account of a principal. shall not be deemed doing business in the Philippines. • Registration on the supplemental register is not constructive notice of registrant's claim of ownership. or false designation of origin and false description.Intellectual Property Law AUF School of Law registered on the principal register. • It is not subject to opposition." • The registration of a mark upon the supplemental register is not. either as to the goods themselves. Thus. unless said representative or distributor has an independent status. subject to the availability of other defenses. by treaty." Rule I.' has found that among other well-known trademarks 'Lacoste' is the subject of conflicting claims. grants a similar privilege to corporate or juristic persons of the Philippines. 189. But such indentors. Unfair competition. or in the wrapping of the packages in which they are contained or the device or words thereon or in any other features of their appearance which would be likely to induce the public to believe that the goods offered are those of a manufacturer or dealer other than the actual manufacturer or dealer or shall give other persons a chance or opportunity to do the same with a like purpose. shall sell his goods giving them the general appearance of goods of another manufacturer or dealer. or in which it is domiciled. prima facie evidence of. 21-A. the Minister of Trade. commercial brokers or commission merchants shall be the ones deemed to be doing business in the Philippines. 166 "Sec. applications for its registration must be rejected or refused. fraudulent designation of origin. 1658 do not partake of the nature of a prejudicial question which must first be definitely resolved. Eric Recalde 1. whether or not it has been licensed to do business in the Philippines under Act numbered Fourteen Hundred and Fifty-Nine. • In the case at bar. trade-mark or service mark or an entry respecting a trade-name.
Isetann Department Store. the other case pending between the same parties and having the same cause must be a court action. INC." and Isetann and Flower Design in the Philippine Patent Office under SR. 4701 and 4714. • respondent registered "Isetann Department Store. 75420. on the other handclaims that it used the word "Isetann" as part of its corporated name and on its products particularly on shirts in Joymart Department Store sometime in January 1979. K. Reg. November 15." Atty. as in cases of La Chemise Lacoste and Converse Rubber Corp. the trial court issued a temporary restraining order. 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. 21A of RA 166 Ratio Decidendi: • supra. counterfeit copy or colorable imitation thereof. • The suffix "Tann" means an altar. may only be presented by any party before or during the trial of the criminal action. • the Court of Appeals likewise erred in holding that the requisites of lis pendens were present so as to justify the dismissal of the case Jmvdg Trademark Cases . the petitioner filed with the Phil. 75067 February 26. vs. Patent Office two (2) petitions for the cancellation of Certificates of 25 PUMA SPORTSCHUHFABRIKEN RUDOLF DASSLER. No. • The petitioner alleges that it first used the trademark Isetan on November 5. • the Court of Appeals reversed the order of the trial court and ordered the respondent judge to dismiss the civil case filed by the petitioner and further held that petitioner has no legal capacity to sue under Sec. Nos. G. and to withdraw from the market all products bearing the same trademark. actions • On November 28.Intellectual Property Law AUF School of Law Section 5 of Rule 111 of the Rules of Court "A petition for the suspension of the criminal action based upon the pendency of a pre-judicial question in a civil case. 1988 Facts: • Puma filed a complaint for infringement of patent or trademark with a prayer for the issuance of a writ of preliminary injunction against Mil-Oro • On July 31. • The trademark "Isetan" and "Young Leaves Design" were registered in Japan covering more than 34 classes of goods.R. IAC and ISETANN DEPARTMENT STORE.R. It states that the trademark is a combination of "Ise" taken from "Iseya" the first name of the rice dealer in Kondo. or the prevention or redress of a wrong. 32020. Inc. 1980. 52422 and 52423 respectively. • Action means an ordinary suit in a court of justice by which one party prosecutes another for the enforcement or protection of alright. 1991 Facts: Petitioner's contention: • Kabushi Kaisha Isetan is the owner of the trademark "Isetan" and the "Young Leaves Design". restraining the private respondent and the Director of Patents from using the trademark "PUMA' or any reproduction. IAC and MIL-ORO MANUFACTURING CORPORATION G. the petitioner applied for the registration of "Isetan" and "Young Leaves Design" with the Philippine Patent Office under Permanent Serial Nos. No. Tokyo in which the establishment was first located and "Tan" which was taken from "Tanji Kosuge the First". as well as with the Bureau of Domestic Trade under Certificate of Registration No. issue of lis pendens • for lis pendens to be a valid ground for the dismissal of a case. respectively. Eric Recalde KABUSHI KAISHA ISETAN vs.G. 1983.. Defendant's contention: • Private respondent. Every other remedy is a special proceeding. On October 3. 1936. 1985.
award. Al vs. For trademark is a creation of use. issue circulars. • The records show that the petitioner has never conducted any business in the Philippines. • There is no product with the name "Isetann" popularized with that brand name in the Philippines. 91332. not a patent or copyright or anything else. • Adoption alone of a trademark would not give exclusive right thereto. decision or judgment shall become final and may be executed as provided by existing law. ◦ the mark must be for use in the same or similar kinds of goods. the ruling. • Isetann Department Store. • The mere origination or adoption of a particular tradename without actual use thereof in the market is insufficient to give Jmvdg Atty. It has never promoted its tradename or trademark in the Philippines. reputation. it has no right to the remedy it seeks. then within ten (10) days from notice or publication. Eric Recalde any exclusive right to its use Indeed. SR-4717 and SR-4701 • 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. July 16. the name cannot claim to be internationally well-known. Adoption is not use. — Appeals to the Court of Appeals shall be filed within fifteen (15) days from notice of the ruling. is the name of a store and not of products sold in various parts of the country. we must honor our obligation thereunder on matters concerning internationally known or well known marks. 2 RA 5343 SECTION 2. or in case a motion for reconsideration is filed within that period of fifteen (15) days. ◦ the subject of the right must be a trademark. but these alone would not give exclusive right of use. "MARK TEN". Under the law. give out price lists on certain goods. decision or judgment or from the date of its last publication. No. award. hence. • The records show that among Filipinos. • Any goodwill. However. and ◦ the person claiming must be the owner of the mark. or knowledge regarding the name Isetann is purely the work of the private respondent. 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 Ratio Decidendi: • 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. Inc. if publication is required by law for its effectivity. order. It has absolutely no business goodwill in the Philippines. 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.R. Inc. when required by law. If no appeal is filed within the periods here fixed. the Philippines is a signatory to this Treaty and. order. RA 166 SECTION 2. CA and FORTUNE TOBACCO CORP G. & Section 2-A see page 11 herein PHILIP MORRIS. One may make advertisements. provisions: • Sec. The last 2 are suing on isolated transactions • As registered owners of "MARK VII". No more than one motion for reconsideration shall be allowed any party.Intellectual Property Law AUF School of Law Supplemental Registration Nos. and "LARK" per certificates of registration issued by the Philippine Patent 26 Trademark Cases . Appeals to Court of Appeals. Such right grows out of their actual use. et. 1993 Facts: petitioner's contention: • Philip Morris and the 2 other companies as subsidiaries of Philip Morris. of the resolution denying the motion for reconsideration.
the fact that international law has been made part of the law of the land does not by any means imply the primacy of international law over national law in the municipal sphere. it may be observed that petitioners were not remiss in averring their personality to lodge a complaint for infringement especially so when they asserted that the main action for infringement is anchored on an isolated transaction Given these confluence of existing laws amidst the cases involving trademarks. therefore. there can be no disagreement to the guiding principle in commercial law that foreign corporations not engaged in business in the Philippines may maintain a cause of action for infringement primarily because of Section 21-A of the Trademark Law when the legal standing to sue is alleged. not superior. be precluded during the pendency of the case from performing the acts complained of via a preliminary injunction defendant's contention: • 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 • it claims that the word “mark” is a common word which cannot be exclusively appropriated Ratio Decidendi: • there is no proof whatsoever that any of plaintiffs' products which they seek to protect from any adverse effect of the trademark applied for by defendant. Under the doctrine of incorporation as applied in most countries. Relative to this condition precedent. Secondly. is in actual use and available for commercial purposes anywhere in the Philippines. which petitioners have done in the case at hand. He said there is no specific provision in the rules prohibiting such refiling • The petitioner will not be prejudiced nor stand to suffer irreparably as a consequence of the lifting of the preliminary injunction considering that they are not actually engaged in the manufacture of the cigarettes with the trademark in question and the filing of the counterbond will amply answer for such damages. to national legislative enactments A fundamental principle of Philippine Trademark Law is that actual use in commerce in the Philippines is a prerequisite to the acquisition of ownership over a trademark or a tradename. Eric Recalde circumstances necessary for the assertion of such right should first be affirmatively pleaded it is not sufficient for a foreign corporation suing under Section 21-A to simply allege its alien origin. and March 25. Enrique Madarang. Rather. it must additionally allege its personality to sue. • a foreign corporation not doing business in the Philippines may have the right to sue before Philippine Courts. rules of international law are given a standing equal. In other words. for the same can always be refiled. 1973. petitioners may have the capacity to sue for infringement irrespective of lack of business activity in the Philippines on account of Section 21-A of the Trademark Law but the question of whether they have an exclusive right over their symbol as to justify issuance of the controversial writ will depend on actual use of their trademarks in the Philippines in line • • • • • Jmvdg Trademark Cases 27 . 1964. plaintiffs-petitioners asserted that defendant Fortune Tobacco Corporation has no right to manufacture and sell cigarettes bearing the allegedly identical or confusingly similar trademark "MARK" in contravention of Section 22 of the Trademark Law.Intellectual Property Law AUF School of Law Office on April 26. but existing adjective axioms require that qualifying Atty. May 28. 1964. and should. the abandonment of an application is of no moment. Atty. as shown by plaintiffs' own evidence furnished by no less than the chief of Trademarks Division of the Philippine Patent Office.
120 SCRA 804 ) and proceedings therein pass on the issue of ownership. the registrant's ownership of the mark or trade name. selling and distributing cigarettes under the trademark "MARK"? • are private respondent's acts complained of by petitioners causing irreparable injury to petitioners' rights in the premises? Ratio: -I• the legal effects of registration of a trademark in the Principal Register in the Office of the Director of Patents. 20. • Petition dismissed separate opinion: Justice FELICIANO: dissenting issues: • is there a clear legal right to the relief asked by petitioners in the form of a preliminary injunction to restrain private respondent from manufacturing. No. • In view of the explicit representation of petitioners in the complaint that they are not engaged in business in the Philippines.II foreign corporations and corporations domiciled in a foreign country are not disabled from bringing suit in Philippine 28 • • • • • • • • Trademark Cases . whether preliminary or definitive. Proof of registration in the Principal Register may be filed with the Bureau of Customs to exclude foreign goods bearing infringing marks while it does not hold true for registrations in the Supplemental Register. sets out the principal legal effects of such registration: ◦ "Sec. which may be contested through opposition or interference proceedings. while registration in the Supplemental Register is merely proof of actual use of the trademark and notice that the registrant has used or appropriated it. in a petition for cancellation. Eric Recalde same in connection with the goods. and his right to the exclusive use thereof . business or services specified in the certificate. Registration in the Principal Register is limited to the actual owner of the trademark (Unno Commercial Enterprises v. Gen. subject to any conditions and limitations stated therein. . It is thus incongruous for petitioners to claim that when a foreign corporation not licensed to do business in the Philippines files a complaint for infringement. Section 20 of R. or after registration. the entity need not be actually using its trademark in commerce in the Philippines. publication of the application is necessary.. This is not so in applications for registration in the Supplemental Register. as amended. while registration in the Supplemental Register is not. There is no such presumption in registrations in the Supplemental Register. 166. Such a foreign corporation may have the personality to file a suit for infringement but it may not necessarily be entitled to protection due to absence of actual use of the emblem in the local market. In application for registration in the Principal Register. Milling Corp." a mere application for registration cannot be a sufficient reason for denying injunctive relief.Intellectual Property Law AUF School of Law with Sections 2 and 2-A of the same law. the registrant's ownership of the mark. registration in the Principal Register is a basis for an action for infringement.A. Registration in the Principal Register is constructive notice of the registrant's claims of ownership. Certificate of registration prima facie evidence of validity. and of the registrant's exclusive right to use the • Jmvdg Atty. Certificates of registration under both Registers are also different from each other. — A certificate of registration of a mark or trade name shall be prima facie evidence of the validity of the registration. it inevitably follows that no conceivable damage can be suffered by them not to mention the foremost consideration heretofore discussed on the absence of their "right" to be protected." Registration in the Principal Register gives rise to a presumption of the validity of the registration.
◦ second. as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field (see 148 ALR 56 et seq." one of the basic rules of the Convention. 166 relating to affidavits of continued use.A. The damage which petitioners claim they are sustaining by reason of the acts of private respondents. damage through trademark infringement on the part of a local enterprise. they advertise the articles they symbolize. 52 Am. does not by any means mean either that petitioners have not complied with the requirements of Section 12 of R. "Modern law recognizes that the protection to which the owner of a trade-mark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties. without necessity for obtaining registration or a license to do business in the Philippines. .III That petitioners are not doing business and are not licensed to do business in the Philippines. Petitioners urge that private respondent's Atty. Eric Recalde use of its confusingly similar trademark "MARK" is invasive and destructive of petitioners' property right in their registered trademarks Modern authorities on trademark law view trademarks as symbols which perform three (3) distinct functions: ◦ first. and do not in fact sustain. Article 2 paragraph 2 of the Paris Convention restrains the Philippines from imposing a requirement of local incorporation or establishment of a local domicile as a pre-requisite for granting to foreign nationals the protection which nationals of the Philippines are entitled to under Philippine law in respect of their industrial property rights. they indicate origin or ownership of the articles to which they are attached. or that petitioners' trademarks are not in fact used in trade and commerce in the Philippines. and without necessity of actually doing business in the Philippines. they guarantee that those articles come up to a certain standard of quality. Jur. 576) or is in any way connected with the activities of the infringer. ◦ third. or for unfair competition. or when it forestalls the normal potential expansion of his business Damages are irreparable within the meaning of the rule relative to the issuance of injunction where there is no standard by which their amount can be measured with reasonable accuracy • • • • • • • • • Jmvdg Trademark Cases 29 . Article 2. a corporate national of a member country of the Paris Union is entitled to bring in Philippine courts an action for infringement of trademarks. No. does not necessarily mean that petitioners are not in a position to sustain.Intellectual Property Law AUF School of Law courts to protect their rights as holders of trademarks registered in the Philippines. paragraph 1 of the Paris Convention embodies the principle of "national treatment" or "assimilation with nationals. That petitioners are not doing business and are not licensed to do business in the Philippines. but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusing of source. are not limited to impact upon the volume of actual imports into the Philippines of petitioners' cigarettes.
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