ETEPHA, A.G., vs DIRECTOR OF PATENTS and WESTMONT PHARMACEUTICALS, INC., FACTS : On April 23, 1959, respondent Westmont Pharmaceuticals, Inc.

, a New Yorkcorporation, sought registration of trademark "Atussin" placed on its "medicinal preparationof expectorant antihistaminic, bronchodilator sedative, ascorbic acid (Vitamin C) used in the treatment of cough". The trademark is used exclusively in the Philippines since January 21,1959. Petitioner, Etepha, A. G., a Liechtenstin (principality) corporation, objected. Petitioner claimsthat it will be damaged because Atussin is so confusedly similar to its Pertussin (RegistrationNo. 6089, issued on September 25, 1957) used on a preparation for the treatment of coughs,that the buying public will be misled into believing that Westmont's product is that of petitioner's which allegedly enjoys goodwill.To the question: May trademark ATUSSIN be registered, given the fact that PERTUSSIN,another trademark, had been previously registered in the Patent Office? — the Director of Patents answered affirmatively. Hence this appeal. ISSUE : Whether or not ATUSSIN may be registered? HELD: We are to be guided by the rule that the validity of a cause for infringement is predicated upon colorable imitation. The phrase "colorable imitation" denotes such a "close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser, giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.A practical approach to the problem of similarity or dissimilarity is to go into the whole of thetwo trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of a prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trademark said to be infringed. Some such factors as "sound; appearance; form, style, shape, size or format; color; ideas connoted by marks; the meaning, spelling, and pronunciation, of words used; and the setting in which the words appear" may be considered. For, indeed, trademark infringement is a form of unfair competition. Confusion is likely between trademarks, however, only if their over-all presentations in any of the particulars of sound, appearance, or meaning are such as would lead the purchasing public into believing that the products to which the marks are applied emanated from the same source. In testing this issue, fixed legal rules exist — if not in harmony, certainly in abundance — but, in the final analysis, the application of these rules in any given situation necessarily reflects a matter of individual judgment largely predicated on opinion. There is, however, and can be no disagreement with the rule that the purchaser is confused, if at all, by the marks as a whole .As we take up Pertussin and Atussin once again, we cannot escape notice of the fact that the two words do not sound alike — when pronounced. There is not much phonetic similarity between the two. The Solicitor General well-observed that in Pertussin the pronunciation of the prefix "Per", whether correct or incorrect, includes a combination of three letters P,E and r; whereas, in Atussin the whole starts with the single letter A added to suffix "tussin".Appeals to the ear are disimilar. And this, because in a word combination, the part thatcomes first is the most pronounced. An expositor of the applicable rule here is the decision inthe Syrocol-

Cheracol controversy.There, the ruling is that trademark Syrocol (a coughmedicine preparation) is not confusedly similar to trademark Cheracol (also a coughmedicine preparation). Reason: the two words "do not look or sound enough alike to justify aholding of trademark infringement", and the "only similarity is in the last syllable, and that isnot uncommon in names given drug compounds".

Etepha A.G. vs. Director of Patents
16 SCRA 495 (1966) FACTS: On April 23, 1959, private respondent Westmont Pharmaceuticals, Inc. sought registration of trademark “Atussin” This was objected to by petitioner Etepha, A.G. alleging that it will be detrimental on their part as it is confusingly similar to its Pertussin. Both products deal with the treatment of cough. ISSUE: Whether or not Attusin may be registered as a trademark. HELD: Yes. x x x The validity of a cause for infringment is predicated upon colorable imitation. The phrase “colorable imitaion” denotes such a “close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.” While “tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly become the subject of a trademark “by combination with another word or phrase.” The two labels are entirely different in colors, contents, arrangement of words theeon, sizes, shapes and general appearance. The contrasts in pictorial effects and appeals to the eye is so pronounced that the label of one cannot be mistaken for that of the other, not even by persons unfamiliar with the two trademarks. We cannot escape notice of the fact that the two words do not sound alike – when pronounced.
Esso standard eastern vs CA FACTS: Petitioner, Esso Standard Eastern, Inc. is an international company engaged in the manufacturing of fossil fuels, oils, lubricants and its by-products. Respondent, United Cigarette Corp. on the other hand is a domestic corporation engaged in the manufacturing of cigarettes. It uses as its trademark the mark “ESSO”, which is the same as the corporate name of petitioner. Petitioner filed a trade infringement case against respondent. The CFI ruled in favor of petitioner. Respondent won at the CA on appeal. The case was then raised to the SC. PETITIONER’S ARGUMENT: Petitioner alleged that it had

Goods are related when they belong to the same class or have the same descriptive properties. though they are not in actual competition. pants. since both are toilet articles.been for many years engaged in the sale of petroleum products and its trademark ESSO had acquired a considerable goodwill to such an extent that the buying public had always taken the trademark ESSO as equivalent to high quality petroleum products. women and children is used as a name of a department store. (NO. are non-competing. in the latter case of non-related goods. Soap and pomade although noncompetitive. lipstick and nail polish are similarly related because they are common household items nowadays. 11 Thus. drawers and other articles of wear for men. being entirely unrelated. cigarettes. are so related to each other that it might reasonably be assumed that they originate from one manufacturer. In the former case of related goods. or is actually. HELD: It is undisputed that the goods on which petitioner uses the trademark ESSO. texture or quality. the goods are obviously . were held to be similar or to belong to the same class. the petition is dismissed and the decision of respondent Court of Appeals is hereby affirmed. Soap and perfume. confusion of business could arise out of the use of similar marks. For non-competing goods may be those which. deceived and misled that they came from the same maker or manufacturer. and the product of respondent. The vast majority of courts today follow the modern theory or concept of "related goods" which the Court has likewise adopted and uniformly recognized and applied. In the situation before us. composition. The trademark "Ang Tibay" for shoes and slippers was disallowed to be used for shirts and pants because they belong to the same general class of goods. it could not. could not reasonably be assumed to have a common source. biscuits were held related to milk because they are both food products. They may also be related because they serve the same purpose or are sold in grocery stores. Petitioner asserted that the continued use by private respondent of the same trademark ESSO on its cigarettes was being carried out for the purpose of deceiving the public as to its quality and origin to the detriment and disadvantage of its own products. when they possess the same physical attributes or essential characteristics with reference to their form.) RULING: ACCORDINGLY. Non-competing goods may also be those which. But no confusion or deception can possibly result or arise when the name "Wellington" which is the trademark for shirts. petroleum products. But as to whether trademark infringement exists depends for the most part upon whether or not the goods are so related that the public may be. ISSUE: WON there was an infringement of trademark.

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. fertilizers. The (petitioner's) products are distributed principally through gasoline service and lubrication stations.different from each other with "absolutely no iota of similitude" as stressed in respondent court's judgment. 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. Although petitioner's products are numerous. lubricating oil. the (respondent's) cigarettes are sold in sarisari stores. On the other hand. bunker fuel. they are of the same class or line of merchandise which are non-competing with respondent's product of cigarettes. cigarette lighter fluid and other various products such as plastics. in kind and nature the products of (respondent) and of (petitioner) are poles apart. the possibility of any confusion is unlikely. The public knows too well that petitioner deals solely with petroleum products that there is no possibility that cigarettes with ESSO brand will be associated with whatever good name petitioner's ESSO trademark may have generated. alcohol. grocery stores. insecticides and the ESSO Gasul" burner. there is a marked distinction between oil and tobacco. the use of the same trademark on the latter's product cannot be validly objected to. Evidently. chemicals." Respondent court correctly ruled that considering the general appearances of each mark as a whole. as well as between petroleum and cigarettes. kerosene. and other small distributor outlets. A comparison of the labels of the samples of the goods submitted by the parties shows a great many differences on the trademarks used. gas. thus: "The products of each party move along and are disposed through different channels of distribution. while respondent's business is solely for the manufacture and sale of the unrelated product of cigarettes. Another factor that shows that the goods involved are non-competitive and non-related is the appellate court's finding that they flow through different channels of trade. Finally. automotive and industrial fuel. grease. Petitioner uses the trademark ESSO and holds certificate of registration of the trademark for petroleum products. When a trademark is used by a party for a product in which the other party does not deal. As pointed out by respondent court in its appealed . which as pointed out in the appealed judgment is beyond petitioner's "zone of potential or natural and logical expansion". (Respondent's) cigarettes are even peddled in the streets while (petitioner's) 'gasul' burners are not. automotive shops and hardware stores. gasoline solvents. synthetics. including aviation gasoline.

counterfeit. ISSUE: Whether or no there is a trademark infringement? HELD: Note: Law defines infringement as the use without consent of the trademark owner of any “reproduction. TRIAL COURT: In favor of Esso. When Esso filed a trademark infringement in CFI Manila. There is trademark infringement CA: Reversed the decision. 4. it is indispensable that the mark must be used by one person in connection or competition with goods of the same kind as Esso's. Mr. the plaintiff's trademark comes all in either red. (granted by BIR) 3. Buhay. testified that generally. Tengco. United Cigarette Corporation (UCC) is a domestic corporation engaged in the manufacture and sale of cigarettes. The only color that the appellant uses in its trademark is green. white." FACTS: Esso is a foreign corporation engaged in the sale of petroleum products and it is identified with its trademark ESSO ." and "Another witness for the plaintiff. Two kinds of non. UCC's contention: (1) admitted that it used the trademark Esso which was not identical to those produced and sold by by Esso ergo. 6. public knows that Esso trademark is equivalent to high quality petroleum products. Buhay informed the court that the plaintiff never used its trademark on any product where the combination of colors is similar to the label of the Esso cigarettes. (2) contended also that in order that there is trademark infringement. 7. SC ruled that the goods on which the petitioner uses the trademarkEsso (petroleum products) and the product of respondents (cigarettes) are not competing. copy or colorable limitation of any registered mark or tradename in the connection with the sale. ESSO's contention: (1) enganged in selling petroleum products for so many years (2) It also acquired a considerable goodwill.competing goods (1) even if they are not in actual competition but they are so related to each other that it might reasonably be . "(A) witness for the plaintiff. Mr. it must be determined according tp the particular circumstances of each case. offering for sale or advertising of any goods business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive the purchasers or others as to the source or origin of such goods and services .. UCC barely used the trademark Esso. it did in any way infringe or imitate petitioner's trademark. It is important that the goods must be so related that there is a likelihood either of confusion if goods or business. It scquired the use of the trademark Esso on its cigarettes. It is to be pointed out that not even a shade of these colors appears on the trademark of the appellant's cigarette.decision. 5. or identity of such business x x x. 2. Mr. admitted that the color of the "ESSO" used by the plaintiff for the oval design where the blue word ESSO is contained is the distinct and unique kind of blue. There is no trademark infringement 1. blue or any combination of the three colors. yet it is a relative concept. (3) UCC intended to deceive the public that it also have the same quality as Esso's. In his answer to the trial court's question.

Fruit of the Loom vs. (3) The goods flow through different channels of trade. confusion of business could not arise. Under the first kind. much less cause damage to the petitioner. Makasiar (J) Facts: Fruit of the Loom is the registrant of the trademark “Fruit of the Loom”. 29 November 1984. (4) Colors that were used in the trademarks were different The goods are obviously different from each other with “ absolutely no iota of similarity”. composition. Nowadays. (2) Those goods that are entirely unrelated. grocery stores and small distributor outlets. were held to be similar or to belong to the same class.competitive. Soline products are disposed or distributed proncipally through gasoline service and lubrication stations while the respondent's products are sold in sari-sari stores. texture or quality. The trademarks “Fruit of the Loom” and “Fruit for Eve” do not resemble each other as to confuse or deceive an ordinary purchaser. CA GR L-32747. is the registrant of the trademark “Fruit for Eve. Second division. For one to be confusingly similar to another. The appellate court reversed the trial court’s decision. while General Garments corp. In 1976. the confusion of business could arise out of the use of similar marks. THERE IS NO TRADEMARK INFRINGEMENT SC ruled that the businesses of the parties (1) are non-competitive and their products so unrelated that the use of identical trademarks is not likely to give rise to confusion. the discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in the labels. (2) The products are foreign to each other that it is impossible that purchasers would think that the product of UCC is Esso's product. Held: No. Hence. In this case. the petition for review on certiorari. since both are toilet articles. To know if the products are related with each other it is important to consider the similarity of the products and not on the arbitrary classification or general description.” Both trademarks cover clothing. Soap and pomade although non.k Fruit of the Loom filed with the trial court a complaint for infringement and unfair competition against General Garments.Milk and biscuits are related for they are food products b. The trial court ruled in favor of Fruit of the Loom. Further. the court follow the modern concept of “related goods”. . (3) When they serve the same purpose or are sold in the grocery stores Examples: a. Although petitioner's product are numerous. General Garments appealed. the similarities of the competing trademarks are completely lost in the substantial difference in the design and general appearance of their respective hang tags.assumed that they originate from one manufacturer. Goods are related (1) when they belong to the same class or have the same descriptive properties. and could not be reasonably be assumed to have a common source. on the other hand. No confusion would arise in the pronunciation of the two marks. Issue: Whether there was an infringement of the trademark of Fruit of the Loom. they are of the same class or line of merchandise which are noncompeting with the respondent's product of cigarettes. (2) when they possess the same physical attributes or essential characteristics with reference to their form.

Both are involved in the merchandise of garments. Both are involved in the merchandise of garments. the plaintiff filed no opposition thereto. We have examined the two trademarks as they appear in the hang tags submitted by the parties and We are impressed more by the dissimilarities than by the similarities appearing therein. 8. 3. Both parties appealed to the former Court of Appeals: a. Phil. Petitioner is a corporation duly organized and existing under the laws of the State of Rhode Island. 7. both trademarks being used in women’s panties and other textile products. is the registrant of the trademark FRUIT FOR EVE in the Philippine Patent Office. Petitioner questioned the lower court’s failure to award damages in its favor. That at the time of its registration. . It is the registrant of the trademark FRUIT OF THE LOOM in the Philippine Patent Office and was issued two Certificates of Registration. 3. alleging that: a. The former Court of Appeals rendered a decision reversing the lower court’s decision and dismissing the petitioner’s complaint. Pat. at least a modicum of intelligence to be able to see the obvious differences between the two trademarks in question. a domestic corporation. one of which was in 1957 and the other in 1958. Private respondent sought the reversal of the lower court’s decision. The similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and general appearance of their respective hang tags. permanently enjoining private respondent from using the trademark Fruit for Eve. Private respondent alleged that there was no confusing similarity between the trademarks. USA. USA. The ordinary purchaser must be thought of as having. 9.” while that of Fruit of the Loom does not. b. is the registrant of the trademark FRUIT FOR EVE in the Philippine Patent Office. and credited with. 2. That the hang tags used by private respondent is a colorable imitation of those of the petitioner. That the registered trademark Fruit for Eve bears the notice “Reg. 2. We hold that the trademarks Fruit of the Loom and Fruit for Eve do not resemble each other as to confuse or deceive an ordinary purchaser. Private Respondent. Petitioner filed a complaint for infringement of trademark and unfair competition against private respondent. 5. FACTS: 1. 4. It is the registrant of the trademark FRUIT OF THE LOOM in the Philippine Patent Office and was issued two Certificates of Registration. Petitioner is a corporation duly organized and existing under the laws of the State of Rhode Island. a domestic corporation.----FACTS: 1. b. HELD: In cases involving infringement of trademark brought before this Court. Off. The latter’s trademark is confusingly similar to the former’s. b. the following admissions were made: a. The lower court rendered a decision in favor of the petitioner. The petitioner’s motion for reconsideration was denied. 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 where one is confusingly similar to the other. one of which was in 1957 and the other in 1958. it has been consistently held that there is infringement of trademark when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity. 6. At the pre-trial. Private Respondent.

That at the time of its registration. Off. is not capable of exclusive appropriation by petitioner and that the registrant of a trademark is not entitled to the exclusive use of every word of his mark . Petitioner questioned the lower court’s failure to award damages in its favor. it has been consistently held that there is infringement of trademark when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity. We have examined the two trademarks as they appear in the hang tags submitted by the parties and We are impressed more by the dissimilarities than by the similarities appearing therein.” whil e that of Fruit of does not. In order to do business here. identified by the logo Sunshine Fruit Catsup. That the registered trademark Fruit for Eve bears the notice “Reg. distribution and sale of various kinds of sauce. b.4. COURT OF APPEALS and SUNSHINE SAUCE MANUFACTURING INDUSTRIES. 6. We hold that the trademarks Fruit of the Loom and Fruit for Eve do not resemble each other as to confuse or deceive an ordinary purchaser. and credited with. enjoining it permanently from using trademark 8. being a generic word. the following admissions were made: a. packing. 5. vs. Both parties appealed to the former Court of Appeals: a.R. The former Court of Appeals rendered a decision reversing the lower court’s decision and dismissing the petitioner’s complaint. G. at least a modicum of intelligence to be able to see the obvious differences between the two trademarks in question. under the Del Monte trademark and logo. distribute and sell in the Philippines various agricultural products. The ordinary purchaser must be thought of as having. No. The latter’s trademark is confusingly similar to the former’s. That the hang tags used by private respondent is a colorable imitation of those of the petitioner. respondents. b. Private respondent sought the reversal of the lower court’s decision. was a registered entity in the Philippines engaged in the manufacture. FACTS: Del Monte Corporation is an entity doing business in the United States and not registered in the Philippines. Private respondent alleged that there was no confusing similarity between the trademarks. both trademarks being used in women’s panties and other textile products. Petitioner filed a complaint for infringement of trademark and unfair competition against private respondent. L-78325 January 25. alleging that: a. At the pre-trial. It further authorized PPC to register before the Patent Office its Del Monte catsup bottle configuration. Pat. the Loom 7. This logo was registered in the Supplemental Register on . The similarities of the competing trademarks in this case are completely lost in the substantial differences in the design and general appearance of their respective hang tags. ordering the cancellation of private respondent's registration of the trademark FRUIT FOR EVE. b. Phil. petitioners. The petitioner’s motion for reconsideration was denied. Respondent Sunshine Sause Manufacturing Industries (SSMI) on the other hand. the plaintiff filed no opposition thereto. 1990 DEL MONTE CORPORATION and PHILIPPINE PACKING CORPORATION. it authorized Philippine Packing Corporation (PPC) to manufacture. holding that the word FRUIT. including catsup. 9. 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 where one is confusingly similar to the other. HELD: In cases involving infringement of trademark brought before this Court. The lower court rendered a decision in favor of the petitioner.

the respondent court cited the following test laid down by this Court in a number of cases: In determining whether two trademarks are confusingly similar. was substantially different from the Del Monte logo and would not confuse the buying public to the detriment of the petitioners. The CA affirmed the decision of the Trial Court. Furthermore. ISSUE: (1) What are the differences between trademark infringement and unfair competition? (2) Whether or not SSMI infringed PPC’s trademark. the two marks in their entirety as they appear in the respective labels must be considered in relation to the goods to which they are attached. which was an essential element of infringement of trademark or unfair competition.September 20. in applying the same. Having received reports of such unauthorized usages of Del Monte catsup bottles for its own products. In the challenged decision. (3) In infringement of trademark the prior registration of the trademark is a prerequisite to the action. 1983. Based on the claim by PPC of its continued use. and hence. The Trial Court held that no infringement was committed. and its own trademark. HELD: (1) The differences are as follows: (1) Infringement of trademark is the unauthorized use of a trademark. the complainants had failed to establish the defendant's malice or bad faith. SSMI on the other hand claimed that it had long ceased from using the same. this present appeal. Trial Court held that there was no colorable imitation of the petitioners' trademark and logo by the private respondent. the discerning eye of the observer must focus not only on the predorninant words but also on the other features appearing on both labels. THERE IS A CASE OF INFRINGMENT It has been correctly held that side-by-side comparison is not the final test of similarity. (2) In infringement of trademark fraudulent intent is unnecessary whereas in unfair competition fraudulent intent is essential. defendant became the owner of the said bottles upon its purchase thereof from the junk yards. PPC warned SSMI to desist from using the same. Also. including the Del Monte bottle. And. Such comparison requires a careful scrutiny to determine in what points the labels of the . whereas unfair competition is the passing off of one's goods as those of another. it filed a case against SSMI for trademark infringement. The product itself was contained in various kinds of bottles. whereas in unfair competition registration is not necessary. because there were substantial differences between the logos or trademarks of the parties. which the private respondent bought from the junk shops for recycling.

. 13 The buyer having in mind the mark/label of the respondent must rely upon his memory of the petitioner's mark. 11 As observed in several cases. Where the housewife has to return home as soon as possible to her baby or the working woman has to make quick purchases during her off hours.products differ. The ordinary buyer does not usually make such scrutiny nor does he usually have the time to do so. 17 It has also been held that it is not the function of the court in cases of infringement and unfair competition to educate purchasers but rather to take their carelessness for granted. it is attributable to the marks as a totality. 14 Unlike the judge who has ample time to minutely examine the labels in question in the comfort of his sala. 18 The judge must also be aware of the fact that usually a defendant in cases of infringement does not normally copy but makes only colorable changes. she is apt to be confused by similar labels even if they do have minute differences. the ordinary shopper does not enjoy the same opportunity. 15 The court therefore should be guided by its first impression. It has been held that in making purchases. 16 for a buyer acts quickly and is governed by a casual glance. the value of which may be dissipated as soon as the court assumes to analyze carefully the respective features of the mark. buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods is the touchstone. If the buyer is deceived. not usually to any part of it. and to be ever conscious of the fact that marks need not be identical. The average shopper is usually in a hurry and does not inspect every product on the shelf as if he were browsing in a library. 20 THERE IS A COLORABLE IMITATION. the general impression of the ordinary purchaser. as was done by the trial judge. A confusing similarity will justify the intervention of equity. A number of courts have held that to determine whether a trademark has been infringed. The male shopper is worse as he usually does not bother about such distinctions. The question is not whether the two articles are distinguishable by their label when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard. the consumer must depend upon his recollection of the appearance of the product which he intends to purchase. we must consider the mark as a whole and not as dissected. 19 Well has it been said that the most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts. is such as to likely result in his confounding it with the original.

the figure nevertheless approximates that of a tomato. What is undeniable is the fact that when a manufacturer prepares to package his product. The predominant colors used in the Del Monte label are green and red-orange. to use the same colors and letters as those used by Del Monte though the field of its selection was so broad. the inevitable conclusion is that it was done deliberately to deceive. SSMI NOT GUILTY OF INFRINGEMENT AS TO ITS USE OF DEL MONTE’S CATSUP BOTTLE The reason is that the configuration of the said bottle was merely registered in the Supplemental Register. employing enough points of similarity to confuse the public with enough points of differences to confuse the courts. even if the labels were analyzed together it is not difficult to see that the Sunshine label is a colorable imitation of the Del Monte trademark. we find that Sunshine. the person who infringes a trade mark does not normally copy out but only makes colorable changes. phrases. As previously stated. he has before him a boundless choice of words. This clearly shows the private respondent's bad faith and its intention to capitalize on the latter's reputation and goodwill and pass off its own product as that of Del Monte. this did not vest the registrant with the exclusive right to use the label nor did it give rise to the presumption of the validity of the . RATIO FOR THE RULING: It has been aptly observed that the ultimate ratio in cases of grave doubt is the rule that as between a newcomer who by the confusion has nothing to lose and everything to gain and one who by honest dealing has already achieved favor with the public. despite the many choices available to it and notwithstanding that the caution "Del Monte Corporation. Not to be Refilled" was embossed on the bottle. It can be inferred from the foregoing that although Del Monte has actual use of the bottle's configuration. the petitioners cannot claim exclusive use thereof because it has not been registered in the Principal Register. Although the logo of Sunshine is not a tomato. The word "catsup" in both bottles is printed in white and the style of the print/letter is the same. it is reiterated that since registration was only in the Supplemental Register.At that. still opted to use the petitioners' bottle to market a product which Philpack also produces. When as in this case. without a reasonable explanation. However. Anent the assumption that the Bureau of Patent had considered other existing patents. the same with Sunshine. any doubt should be resolved against the newcomer inasmuch as the field from which he can select a desirable trademark to indicate the origin of his product is obviously a large one. Sunshine chose. colors and symbols sufficient to distinguish his product from the others.

The appellate court is correct in its finding that Asia Brewery does not infringe upon SMC’s trademark nor does it commit unfair competition. 4. the same constitutes unfair competition.Fitrite filed in BPTTT applications for registration of trademark SUNSHINE.registration. hence. The white label is the most economical to use and presents the strongest contrast to the bottle. 1982. 3. over turned the trial court’s ruling. 1983. SUNSHINE FRUIT CATSUP LOGO INFRINGED DEL MONTE CATSUP LOGO. Neither the sound. Fitrite and Voctoria Biscuit (plaintiff-appellants) are both domestic corporation. 1990. selling and distributing biscuits and cookies in the Philippines. It does not result to confusion inasmuch as beer is ordered by brand. AsiaBrewery appealed. however Fitrite had used this trademark since 1981. En Banc. CA FACTS: 1. spelling or appearance can Beer Pale Pilsen be said to be confusingly similar to San Miguel Pale Pilsen. selling. san Miguel Corporation filed a complaint against Asia Brewery Inc. arising from the allegedly “confusing similarity”in the general appearance of ABI’s Beer Pale Pilsen against SMC’s San Miguel Pale Pilsen. 5. Issue: Whether Asia Brewery is guilty of unfair competition. Beer Pale Pilsen is not being passed off as San Miguel Beer Pale Pilsen. enganged in the business of manufacturing. The trialcourt ruled in favor of Asia Brewery. As Sunshine's label is an infringement of the Del Monte's trademark. distributing biscuits and cookies. Conrad and Company (respondent-appellee) is also engaged in the business of importing. steinie bottle with white rectangular label. San Miguel cannot claim monopoly to such features as the protection provided by law is confined to non-functional features. both supplemental or principal registers and this trademark will be used on biscuits and cookies. The word “Beer” does not appear in SMC’s product. for infringement of trademark and unfair competition on account of the latter’s Beer Pale Pilsen or Beer na Beer product whichhas been competing with the former’s San Miguel Pale Pilsen for a share of the local beer market. Further. the respondent should be permanently enjoined from the use of such bottles. Neither does it have the exclusive right to use 320 ml. The dominant feature of SMC’s trademark is “San Miguel Pale Pilsen” while ABI’s is “Beer Pale Pilsen”. CONRAD VS. San Miguel does not have exclusive rights to the generic or descriptive words “pale” and “pilsen”. however. Held: No. The amber color is a functional feature of the beer bottle as the color prevents the transmission of light and provides the maximum protection to beer. nor the words “San Miguel” appear in ABI’s product. . The points of dissimilarity of the products outnumber their points of similarity. Asia Brewery vs. CA GR 103543. Grino-Aquino (J) Facts: In 1988. The appellate court.Supplemental Register was approved (term:20 years). Fitrite authorized its sister company Victoria to use this trademark on the biscuits and cookies.Proncipal Register was also approved for the same trademark (term: 20 years from the date of approval). law and equity call for the cancellation of the private respondent's registration and withdrawal of all its products bearing the questioned label from the market. Bear the trademark SUNSHINE. 5 July 1993. 2. With regard to the use of Del Monte's bottle. The bottle capacity is the standard prescribed by the Metric System Board of the Department of Trade. and is not taken freely from supermarket shelves.

HD Lee’s variation follows the format lee riders. in favor of Fitrite SC: THERE IS A TRADEMARK INFRINGEMENT. 10. It made its first importation. Inc in the Philippines. Stylistic Mr. the case should be dismissed CA: Reversed the decision. “Lee” is a surname. owns the trademarks “Lee”. Fitrite is the registrant of the Sunshine trademark in the Philippines. doctrine of primary jurisdiction and failure to state a cause of action. “ leesure”. Further. 8. Although on stylistic Mr. There is a ground for forum shopping ergo.that the Condrad's claim that its principal. REGISTRATION CAN SERVE AS THE BASIS FOR AN ACTION FOR INFRINGEMENT EMERAL GARMENT vs CA GR 100098. the Director of Patents ruled in favor of HD Lee. 7. the Court of Appeals affirmed the decision of the Director of Patents. 13. cookies and other food items bearing the said registered SUNSHINE trademark in the Philippines without the consent of Fitrite constitute infringement? SC ruled in favor of FITRITE AND VICTORY BISCUITS. as early as 1969 to 1973. selling and distributing biscuits. Fitrite addressed a letter to Conrad demanding to cease and desist from continuing such acts. Lee’s label. and “leeleens” and thus does not allow the conclusion that “Stylistic Mr. The registration in the Principal Register goves rise to a presumption of validity of the registration and of the registrant's ownership and right to the exclusive use of trademark. it filed for the cancellation for the registration of the trademark “stylistic Mr. Personal names nor surnames cannot be monopolized as trademarks or tradenames as against others of the same name or . First Division. Conrad had never before been engaged in the importation of hoods similar to the Fitrite. In 1981. court agrees that Conrad had been granted distributorship by Sunshine Biscuits USA over the teritorry. Kapunan (J): Facts: HD Lee Co. together with its interest and business goodwill to Victoria Biscuit Fitrite traced and discovered that Conrad had been selling. Real Issue: Whether or not Conrad's acts of importing. the word “lee” is prominent. 12. Sunshine Biscuits is the registrant of a Sunshine trademark in the US is a mere allegation that needs to be proven. “Lee Riders” and “Lee sures” in both the supplementary and principal registers. which was continuously repeated up to the present. Lee” is another variation under HD Lee’s mark. PETITION FOR REVIEW Previous Issue: Whether or not SUNSHINE trademark is registerable or cancelled?If it is an administrative cancellation BPTTT should have the jurisdiction and not the court (question for th issue as regards primary jurisdiction) ANSWER:An appliacation with BPTTT for an administrative cancellation of a registered trademark cannot per se have the effect of preventing the courts from the exercise of theeir lawfully conferred jurisdiction. Fotrite assigned the trademark SUNSHINE AND DEVICE LABEL. selling and distributing biscuits with that trademark without the consent from Fitrite. 11. Lee is not a variation of the Lee mark. Lee” is confusingly similar to HD Lee’s trademarks to warrant its cancellation in the supplemental Registry. applied/owned by Emerald Garment Manufacturing Corp. THERE IS A TRADEMARK INFRINGEMENT FITRITE are the holder of Certificate of Registration (Principal Register) of the Sunshine. Hence. Held: No. TRIAL COURT: In favor of Conrad. In 1990. Suddenly. Fitrite filed a case against infringement and against unfair competition Conrad wanted to dismissed the case on the ground of lis pendentia (pending case to cancel the registration). and distributing biscuits and cookies bearing the trademark in the Philippines. There is an implied admission that Conrad has been importing. 29 December 1995. 9. the trademark should be considered as a whole and not piecemeal. Issue: Whether the trademark “stylistic Mr. although. Lee”.6. the petition for review on certiorari. In 1988. Later on. Conrad became an exclusive importer and dealer of products of Sunshine Biscuits.

) of the following trademark and devices. 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.” o Section 4(d) of R. Court of Appeals: o “there is hardly any variance in the appearance of the marks 'GOLD TOP' and 'GOLD TOE' since both show a representation of a man's foot wearing a sock. Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. jeans. the Supreme Court allowed the use of stylistic Mr. business or services of the applicant. Furthermore. mistake and deception on the part of the purchasing public as to the origin of the goods. Lee by Emerald Garment. and is labeled 'Amigo Manufacturing Inc. . Although on stylistic Mr. Lee Co. using the test of dominancy. [petitioner's] Amigo Manufacturing Inc. No. Facts  MANUFACTURING. On 19 July 1988. b) DEVICE. Private respondent averred that petitioner's trademark "so closely resembled its own trademark.A. c) DEVICE. “Lee” is a surname. inasmuch as Emerald Garment has shown the use of stylistic Mr. Lee” is another variation under HD Lee’s mark.    Cluett Peabody Co. Furthermore. (a New York corporation) filed a case against Amigo Manufacturing Inc. 'LEE' as previously registered and used in the Philippines cause confusion. inasmuch as Emerald Garment has shown the use of stylistic Mr. to cause confusion or mistake or to deceive the purchasers. Inc. jogging suits. and the marks are printed in identical lettering. INC. trademark and device 'GOLD TOP. jackets. the trademark should be considered as a whole and not piecemeal. shorts. representation of a sock and magnifying glass on the toe of a sock. private respondent H. Emerald Garment Manufacturing v. Lee since 1975through sales invoice from stores and retailers. dresses. INC.. and “leeleens” and thus does not allow the conclusion that “Stylistic Mr. (a Philippine corporation) for cancellation of trademark. meaning. and that HD Lee was not able for transactions period to 1981. Inc. as to be likely. “ leesure”. AMIGO vs. Patent Office (Decision): the application of the rule of idem sonans and the existence of a confusing similarity in appearance between two trademarks. Linenized for Extra Wear' has the dominant color 'white' at the center and a 'blackish brown' background with a magnified design of the sock's garter. Inc. ISSUE: Whether or not a trademark causes confusion and is likely to deceive the public is a question of fact which is to be resolved by applying the "test of dominancy". the Director of Patents rendered a decision granting private respondent's petition for cancellation and opposition to registration. the word “lee” is prominent. Further. as used on men's socks: o a) GOLD TOE. 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. shirts and lingerie under Class 25. when applied to or used in connection with the goods. Lee by Emerald Garment. Personal names nor surnames cannot be monopolized as trademarks or tradenames as against others of the same name or surname. LEE" used on skirts. consisting of a 'plurality of gold colored lines arranged in parallel relation within a triangular area of toe of the stocking and spread from each other by lines of contrasting color of the major part of the stocking' . HELD: No.surname. HD Lee’s variation follows the format leeriders. SR 5054 for the trademark "STYLISTIC MR. issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation. Lee since 1975 through sales invoice from stores and retailers. Lee is not a variation of the Lee mark. filed with the Bureau of Patents. Stylistic Mr. CA. 166 declares to be unregistrable. The Director of Patents. CLUETT PEABODY CO. 251 SCRA 600 – Rules on Search and Seizure in Civil Action for Infringement of IP Rights FACTS: On 18 September 1981. Lee’s label. briefs. 'a mark which consists o[r] comprises a mark or trademark which so resembles a mark or tradename registered in the Philippines of tradename previously used in the Philippines by another and not abandoned. socks.. claiming exclusive ownership (as successor in interest of Great American Knitting Mills. It is undeniably the dominant feature of the mark.the Supreme Court allowed the use of stylistic Mr. and d) LINENIZED. and that HD Lee was not able for transactions period to 1981.D. blouses.

” or “imply reference to every member of a genus and the exclusion of individuating characters. the similarities. They provided as examples the fact that they’ve been using Robert Jaworski and Ric Puno Jr. o o ISSUE: Whether or not the Court of Appeals erred in affirming the findings of the Director of Patents that petitioner's trademark [was] confusingly similar to respondent's trademarks? RATIO:  The Bureau of Patents. As such. As such."  the overall impression created is that the two products are deceptively and confusingly similar to each other. and the representation of a man's foot wearing a sock. [Petitioner]'s mark is a combination of the different registered marks owned by [respondent]. . petitioner violated the applicable trademark provisions during that time.  their dominant features are gold checkered lines against a predominantly black background and a representation of a sock with a magnifying glass. the use by CFC of the term “MASTER” in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.” or “refer to the basic nature of the wares or services provided rather than to the more idiosyncratic characteristics of a particular product. CFC Corporation filed with the Bureau of Patents. HELD: No. In addition. and Technology Transfers an application for the registration of its trademark “Flavor Master” – an instant coffee. similarities or dissimilarities. may be legally protected. therefore. are of such degree that the overall impression given is that the two brands of socks are deceptively the same or similar to each other. the word Master has been used so frequently so much so that when one hears the word Master it connotes to a Nestle product. CFC Corporation on the other hand alleged that the word “Master” is a generic and a descriptive term.  Resort to either the Dominancy Test or the Holistic Test shows that colorable imitation exists between respondent's "Gold Toe" and petitioner's "Gold Top.  the names of the brands are similar -. Service Marks and Trade Names – Generic Term In 1984. the "Gold Toe" representation and "linenized. both products use the same type of lettering. namely. its conclusion is based on the totality of the similarities between the parties' trademarks and not on their sounds alone. Clearly." the representation of a sock with a magnifying glass. "Gold Toe. and that in those commercials Jaworski is a master of basketball and that Puno is a master of talk shows. said term can not be invalidated as a trademark and. hence not subject to trademark." o Petitioner’s mark shows that it definitely has a lot of similarities and in fact looks like a combination of the trademark and devices that respondent has already registered. [petitioner]'s mark is only registered with the Supplemental Registry which gives no right of exclusivity to the owner and cannot overturn the presumption of validity and exclusiv[ity] given to a registered mark. Obviously."Gold Top" and "Gold Toe. however. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features. The use of the word Master by Nestle in its products and commercials has made Nestle acquire a connotation that if it’s a Master product it is a Nestle product. the appearance of the labels. Nestl e alleged that in promoting their products. The proper test that should have been used is the Dominancy Test. the lettering. Hence this petition. Trademarks.” and are not legally protectable. In addition. considering that the product is an inexpensive and common household item. the word “MASTER” is neither a generic nor a de scriptive term. Generic terms are those which constitute “the common descriptive name of an article or substance. using the Holistic Test. NESTLE vs CA intellectual Property Law – Law on Trademarks.  Both also include a representation of a man's foot wearing a sock and the word "linenized" with arrows printed on the label. Nestle opposed the application as it alleged that “Flavor Master” is confusingly similar to Nestle coffee products like Master Blend and Master Roast. The Bureau considered the drawings and the labels. The Director of Patents ruled in favor of Nestle but the Court of Appeals.” or are “commonly used as the name or description of a kind of goods.” or comprise the “genus of which the particular product is a species. that the brand of coffee equitable or fit to them is Master Blend and Master Roast. reversed the said decision. ISSUE: Whether or not the Court of Appeals is correct. did not rely on the idem sonans test alone in arriving at its conclusion."  Though there are differences in the set of marks. however. as their commercial advertisers.

similar or related goods for the reason alone that they were purportedly forms of vice. deception and mistake on the part of the purchasing public who had always associated Gallo and Ernest and Julio & Gallo trademarks with Gallo Winery’s wines. in the phraseology of one court. GALLO cigarettes and GALLO wines were sold through different channels of trade. HELD: Wines and cigarettes are not identical. wrapper or container .J. the Makati RTC. held petitioners liable for. fishermen. 4. 1993.” Such terms. respondent’s prayer for the issuance of a writ of preliminary injunction.” or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination.” are eligible for protection in the absence of secondary meaning. “which subtly connote something about the product.” or ” imaginative effort on the part of the observer. including the nature of the package. On appeal. and not cigarettes. require “imagination. In resolving whether goods are related. the CA likewise dismissed respondent’s petition for review on certiorari. competing or related goods. In their answer. Rather. To wit: 1. 1995.” “figurativeness. 3. a term is descriptive and therefore invalid as a trademark if. the term “MASTER” is a suggestive term brought about by the advertising scheme of Nestle.” MIGHTY CORPORATION and LA CAMPANA FABRICA DE TABACO. as understood in its normal and natural sense. respondents sued petitioners in the RTC-Makati for trademark and trade name infringement and unfair competition. it “forthwith conveys the characteristics. Gallo Winery’s GALLO trademark registration certificates covered wines only. however. thus causing confusion. several factors come into play: · · · the business (and its location) to which the goods belong the class of product to which the good belong the product’s quality. qualities or characteristics of the goods. GALLO WINERY and THE ANDRESONS GROUP. similar. FACTS: On March 12. After the trial on the merits. INC. permanently enjoined from committing trademark infringement and unfair competition with respect to the GALLO trademark. On February 20. quantity. laborers and other low-income workers. They claimed that petitioners adopted the Gallo trademark to ride on Gallo Winery’s and Gallo and Ernest & Julio Gallo trademark’s established reputation and popularity. among other affirmative defenses that: petitioners Gallo cigarettes and Gallo Winery’s wine were totally unrelated products. the dominant feature of the Gallo cigarette was the rooster device with the manufacturer’s name clearly indicated as MIGHTY CORPORATION. with a prayer for damages and preliminary injunction. while in the case of Gallo Winery’s wines. petitioners alleged. the target market of Gallo Winery’s wines was the middle or high -income bracket while Gallo cigarette buyers were farmers. they nevertheless involve “an element of incongruity. 1993. functions. it was the full names of the founders -owners ERNEST & JULIO GALLO or just their surname GALLO. INC.On the other hand. the CA affirmed the Makati RTC’s decision and subsequently denied petitioner’s motion for reconsideration. 1993. vs.” or “if it forthwith conveys an immediate idea of the ingredients. While suggestive marks are capable of shedding “some light” upon certain characteristics of the goods or services in dispute. qualities or ingredients of a product to one who has never seen it and does not know what it is. On April 21. for lack of merit. or size. the Makati RTC denied. thought and perception to reach a conclusion as to the nature of the goods. on November 26. On August 19. 2. 1998. Sugges tive terms are those which. ISSUE: Whether GALLO cigarettes and GALLO wines were identical. respondent’s motion for reconsideration was denied. E.

art works and markings. The court mentioned two types of confusion in Trademark Infringement: Confusion of Goods – when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another. form. in order to be objectionable. The SC held that there was no infringement. and (d) the registrant’s express or implied consent and other fair and equitable considerations. concluded that there is no likelihood of confusion. that is. composition. how they are distributed. (b) the similarity of the goods to which the trademark is attached. 514 SCRA 95 (2007) – Rules on Search and Seizure in Civil Action for Infringement of IP Rights FACTS: . must be as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase. the IPC was not yet enacted so the relevant laws used were the Trademark Law and the Paris Convention. in which case defendant’s goods are then brought as the plaintiff’s and its poor quality reflects badly on the plaintiff’s reputation. composition and they have different intended markets or consumers. the petitioner is a manufacturer of cigarette and also uses “Gallo” in its products. ------Facts: Respondent manufacture wines and uses the trademark “Gallo” for its product. petition is granted. unfair competition or damages. the Court must consider: (a) the resemblance between the trademarks. In this case. (c) the likely effect on the purchaser. in fact. The simulation. In determining the likelihood of confusion. thus deceiving the public into believing that there is some connection between the plaintiff and defendant which. v. the SC employing the dominancy test. does not exist. On the other hand. The petitioners are not liable for trademark infringement. Macjoy Fastfood Corp. McDonald’s Corp. Confusion of Business – wherein the goods of the parties are different but the defendant’s product can reasonably (though mistakenly) be assumed to originate from the plaintiff. The use of the respondent of the mark “Gallo” for its wine products was exclusive in nature.· the nature and cost of the articles · the descriptive properties. Further.. marketed. WHEREFORE. The test of fraudulent simulation is to the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. day-to-day household items · the field of manufacture · the conditions under which the article is usually purchased and · the articles of the trade through which the goods flow. displayed and sold. Issue: Is there infringement? Held: at the time the cause of action accrued in this case. texture or quality · the purpose of the goods · whether the article is bought for immediate consumption. the two goods are not closely related because he products belong to different classifications. physical attributes or essential characteristics with reference to their form. They materially differ in color scheme.

•In recent cases with a similar factual milieu as here. •Applying the dominancy test to the instant case. the trademark applied for would confuse or deceive purchasers into believing that the goods originate from the same source or origin." McChicken. •Also. and absolutely without any picture of a chicken. •Petitioner McDonald’s Corporation. sales outlets and market segments. in determining confusing similarity. In determining similarity and likelihood of confusion. The façade of the respective stores of the parties are entirely different. W/N there is a confusing similarity between MACJOY and MCDONALD Strademarks as to justify the IPO’s rejection of Macjoy’s trademark application RATIO: 1." which visually and aurally catches the attentio n of the consuming public. Courts will consider more the aural and visual impressions created by the marks in the public mind. •It is the prefix "Mc. Indisputably. while the word "McDonald’s" comes w ith an arches "M" in gold colors. and its marks "McDonalds. and with the mascot of "RonaldMcDonald" being prominently displayed therein." an abbreviation of "Mac. The word "MacJoy" is written in round script while the word "McDonald’s" is written in single stroke gothic. thus. the Court finds that herein petitioner’s "MCDONALD’S" and respondent’s "MACJOY" marksare confusingly similar with each other such that an ordinary purchaser can conclude an association or relation between the marks 2. 2. giving little weight to factors like prices. palabok. The word "MacJoy" comes with the picture of a chicken head with cap and bowtie and wings sprouting on both sides. CA reversed the IPO decision. petitioner alleged that the respondent’s use and adoption in bad faith of the "MACJOY & DEVICE" mark would falsely tend to suggest a connection or affiliation with petitioner’s restaurant services and food products. constituting a fraud upon the general public and further cause the dilution of the distinctive ness of petitioner’s registered and internationally recognized MCDONALD’S marks to its prejudice and irreparable damage. i. 4. cups. Both marks use the corporate "M" design logo and the prefixes "Mc" and/or "Mac" as dominant features. a domestic corpora tion engaged in the sale of fast food products in Cebu City. halo-halo and steaks under classes 29 and 30 of the International Classification of Goods. In contrast. respondent MacJoy Fastfood Corporation. the dominancy test and the holistic test. chicken barbeque. Trademarks and Technology Transfer (BPTT). instead of the holistic test.e. quality. The word "MacJoy" is set in deep pink and white color scheme while"McDonald’s" is written in red. while Petitioner’s restaurant is in yellow and red colors. disregarding minor differences. 3. The first letter "M" in both marks puts emphasison the prefixes "Mc" and/or "Mac" by the similar way in which they aredepicted i. now the Intellectual Property Office (IPO). jurisprudence has developed two tests. containers. fries.. the Court has consistently used and applied the dominancy test in determining confusing similarity or likelihood of confusion between competing trademarks. an application for the registration of the trademark "MACJOY & DEVICE" for fried chicken. •Both trademarks are used in the sale of fast food products. including the labels and packaging. ruling that there was noconfusing similarity between the marks "MACJOY" and "MCDONALD’S. etc. sustained the petitio ner’s opposition and rejected the respondent’s application. capitalized and stylized manner. reasons: 1. Respondent’s restaurant is set also in the same bold. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception.e. burgers. filed a verified Notice of Opposition against the respondent’s application claiming that the trademark "MACJOY & DEVICE" so resembles its corporate logo. •Under the dominancy test. spaghetti. the respondent’s trademark application for the "MACJOY & DEVICE" trademark covers goods under Classes 29 and 30 of the International Classification of ." and the prefixes "Mac/Mc" in both the "MACJOY" and the "MCDONALDS" marks lead to the conclusion that there is confusing similarity between them especially since both are used on almost the same products falling under classes 29 and 30 of the International Classification of Goods. filed with the then Bureau of Patents. brilliant and notice able color scheme as that of its wrappers.•On 14 March 1991. YES.. food and ingredients of food. the holistictest requires the court to consider the entirety of the marks as applied to the products. in an arch-like. sandwiches." etc. •IPO ruled that the predominance of the letter "M. courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark. otherwise known as the Golden Arches or "M" design. (hereinafter MCDONALD’S mark s) such that when used on identical or related goods." ISSUE: 1. 2. (IPO used the dominancy test) •IPO denied MR." for the ff. yellow and black color combination. YES. tacos." "MacFries. W/N the dominancy test should be applied.

4) e) Have the infringing goods disposed of outside the channels of commerce (Sec. namely. in unfair competition. fried chicken.2). 57247. 2) Fraudulent intent is not necessary in infringement. the goods must be of similar class. "Mc/Mac" prefixes shown in both marks. in UC. burgers. •Predominant features such as the "M. the goods need not be of the same class. in UC. the cause of action is the unauthorized use of a registered trademark.R. b) Have the infringing goods impounded (Sec. or to deceive. copy or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale. distribution. v infringement is a form of unfair competition REMEDIES AVAILABLE IN CASE OF INFRINGEMENT OF A REGISTERED MARK a) Sue for damages (Sec. SP NO. h) Administrative Sanctions .Goods. 157. chicken barbeque. fries. are REVERSED and SETASIDE and the Decision of the Intellectual Property Office in Inter Partes Case No. etc. 156. counterfeit. (GR No 143993. Addendum: TEST OF TRADEMARK INFRINGEMENT 1) Dominancy Test – consists in seeking out the main. •When one applies for the registration of a trademark or label which is a lmost the same or very closely resembles one already used and registered by another. 156. essential or dominant features of a mark.1 of the IPC which stated that any person who shall. Such that the common awareness or perception of customers that the trademarks McDonalds mark and MACJOY & DEVICE are one and the same. without the consent of the owner of the registered mark use in commerce any reproduction." the only logical conclusion deducible there from is that the respondent would want to ride high on the established reputation and goodwill of the MCDONALD’s marks.3861 is REINSTATED. 2) Holistic Test – takes stock of the other features of a mark. Mc Donalds Corp vs LC Big Mak Burger Inc. it is a pre-requisite." and "Mac" appearing in both McDonald’s marks and the MACJOY & DEVICE" easily attract the attention of would-be customers.as applied to petitioner’s restaurant business and food products. it is the passing off of one’s goods as those of another merchant.1). DIFFERENTIATED FROM UNFAIR COMPETITION 1) Cause of action: in infringement. 3) Registration of trademarks: in infringement. Accordingly. the instant petition is GRANTED. taking into consideration the entirety of the marks. Aug 18. 2004) The SC held that the respondent is liable for infringement because it violated Sec 155. offering for sale. McDonald’s registered trademark covers goods similar if not identical to those covered by the respondent’s application. the application should be rejected and dismissed outright.1) g) File criminal action (Sec. 156. 170). c) Ask for double damages (Sec. 157. it is not required. advertising of any goods or services on or in connection with which such use is likely to cause confusion. or under the sponsorship of the other is not far-fetched. which. is undoubtedly beyond question. or an affiliate. 4) Class of goods involved: in infringement. WHEREFORE. but also to protect an already used and registered trademark and an established goodwill. it chose the word "MACJOY. Even non-regular customers of their fast food restaurants would readily notice the predominance of the "M" design.1) f) Have the infringing goods destroyed (Sec. the assailed Decision and Resolution of the Court of Appeals in CA-G. or to cause mistake. spaghetti.3) d) Ask for injunction (156. this not only to avoid confusion on the part of the public." "Mc. •By reason of the respondent’s implausible and insufficient explanation as to how and why out of the many choices of words it could have used for its trade-name and/or trademark. but necessary in UC. even without any opposition on the part of the owner and user of a previously registered label or trademark.

Opposer’s proof of its corporate personality cannot establish the use of the word “CONVERSE” in any sense. PRO-LINE (domestic corp) the exclusive dstributor of “Spalding” in the Phil. Meanwhile. Pacquing. SEHWANI impleaded as his capacity as President of UNIVERSAL. Mrs. The director of Patents dismissed converse Rubber’s opposition.PRO LINE SPORTS CENTER. If so. and is not doing business of its own in the Philippines. 117 SCRA 154 – Tradenames (Definition) FACTS: Universal Rubber Products filed an application with the Patents office for the registration of the trademark “Universal Converse and Device” used on rubber shoes and rubber slippers. 16 years ago. these were all seized by the NBI. CA affirmed.   Test of unfair competition: Whether certain goods have been intentionally clothed with an appearance which is likely to deceive the ordinary purchaser exercising ordinary care. Pacquing. Granted. the UNIVERSAL’s factory was lock and sealed. INC. MOJ with regard to the criminal complaint: overturned the dismissal and order the Provincial Fiscal to file the information against UNIVERSAL for unfair competition which was soon become a criminal case. Also through another motion of NBI. Invoices were submitted as evidence of such sales. Through a Search warrant. Besides. testified that she had been selling CONVERSE rubber shoes in the local market since 1956 and that sales of petitioner’s rubber shoes in her stores averaged twelve to twe nty pairs a month purchased mostly by basketball players of local private educational institutions like Ateneo. The sale would have pushed through were it not for the timely seizure.S. But such order was lifted through the motion of UNIVERSAL. ISSUE: Whether respondent is guilty of unfair competition? YES RATIO  Respondents acts are clear manifestation of unfair competition even though the element of sale has not been proven. FACTS             QUESTOR (US corp) owner of TM “Spalding” appearing in sporting goods.A. it will be futile for it to establish that “CONVERSE” as part of its corporate name Identifies its rubber shoes. PRO LINE & QUESTOR filed a criminal complaint for unfair competition against UNIVERSAL in Ministry of Justice. and QUESTOR CORPORATION
vs. Mrs. They file a petition for review seeking reversal of dismissal of the complaint: DISMISSED. Petitioner’s lone witness. Universal Rubber Products. and which would result in injury to its business reputation and goodwill. in manufacturing rubber shoes uses thereon the trademark “CHUCK TAYLOR” and “ALL STAR and DEVICE” and none other. Carmen B. “ Respondent. La Salle and San Beda. or . presented as its lone witness the secretary of said corporation who testified that respondent has been selling on wholesale basis “Universal Converse” sandals since 1962 and “Universal Converse” rubber shoes since 1963. GM of PRO LINE sent a letter to NBI alleging the manufacture of fa ke “Spalding” balls by UNIVERSAL. it was also stipulated that opposer [petitioner]. UNIVERSAL (domestic) engaged in sale & manufacture of sporting goods. it designates to the mind of the public that particular corporation. further stated that she knew petitioner’s rubber shoes came from the United States “because it says there in the trademark Converse Chuck Taylor with star red or blue and is a round figure and made in U. Converse Rubber Corp. Dismissed. on the other hand. a duly licensed private merchant with stores at the Sta. as it is already stipulated that it is not licensed to do business in the Philippines. Converse Rubber Corporation v. The opposer failed to present proof that the single word “CONVERSE’ in its corporate name has become so Identified with the corporation that whenever used. While pending CA affirmed the order of lifting the padlock from UNIVERSAL’S factory.. The witness also testified that she had no Idea why respondent chose “Universal Converse” as a trademark and that she was unaware of the name “Converse” prior to her corporation’s sale of “Universal Converse” rubber shoes and rubber sandals. Furthermore. Mesa Market and in Davao City. Sehwani filed a civil case for damafe as a result. inasmuch as the Opposer never presented any label herein. In this case the manufacture of the “Spalding” balls was obviously done to deceive buyers. Such order was challenged leading to the grant of TRO in favor of the Petitioners.
COURT OF APPEALS DOCTRINE: Sale is not indispensable requirement in unfair competition. filed its opposition on the ground that the trademark is confusingly similar to the word “converse” which was part of its corporate name.

Sehwani’s app eal to the Director General of the IPO was filed too late and accordingly dismissed on the technicality. ISSUE: Whether Universal Rubber can appropriate “Converse”. Benita’s Frites. it filed a petition for review with the Supreme Court. INOB discovered that a local company. whereon the label may be seen. The word“ converse” has been associated with its products. the Bureau of Legal Affairs (BLA) of the IPO rendered its decision on the administrative complaint.. 2007. Sehwani took the matter further up to the Supreme Court and argued strenuously that INOB did not have legal capacity to sue in the Philippines because it was not conducting business in the Philippines and its marks were neither registered nor used in the Philippines. No. The SC disagreed with petitioners and find that the evidence presented before the trial court does not prove unfair competition under Section 168 of the Intellectual Property Code. Petitioners also allege that private respondents “made it appear that they were duly authorized to sell or distribute Mitsubishi Photo Paper in the Philippines. (INOB). that IN-N-OUT is an internationally well-known mark and ordered that Sehwani’s prior registration of IN-N-OUT be cancelled. issued a search warrant against herein private respondent Sanly Corporation for violation of Sec. In-N-Out Burger. Indeed. Sehwani had appointed a licensee. SEHWANI vs IN-N-OUT BURGER ***I acquired this in the internet and it summarized the case better than I could.specimen of its shoes. particularly Mitsubishi photographic color paper. Converse Rubber has earned a business reputation and goodwill in the Phil ippines.A. which it purchased from a supplier in Hong Kong. Inc. During the application. confirmed that the owner of a well-known trademark has the legal capacity to sue for violation of IP rights in the Philippines even if the trademark was neither registered nor used in the Philippines. “converse chuck Taylor. are genuine products of Mitsubishi that he buys from Hong Kong while the complainant purchases the same kind of paper from Japan.” “Converse all Star. In 2003. INOB’s demands to Sehwani were basically ignored. 168 of R. had already registered IN-N-OUT in 1993 for restaurant services. similar to that of “Converse Chuck Taylor. without INOB’s permission. and the restaurant operator in Pasig City for unfair comp etition and for cancellation of the trademark registration. Sehwani’s petition to the Court of Appeal was also dismissed for lack of merit. INOB filed with the Philippines Intellectual Property Office (IPO) an administrative complaint against Sehwani.S. Sheriff. no determination can be made as to whether the word ‘CONVERSE’ appears thereon.” “Converse” has grown to be identified with Converse rubber products and has acquired a second meaning within the context of trademark and tradename laws. As a result. applied to register its trademark IN-N-OUT Burger & Arrow Design and service mark IN-N-OUT in the Philippines in June 1997. upon application of the Economic Intelligence and Investigation Bureau (EIIB). Not giving up.” Assuming that this act constitutes a crime.” “All Star Converse Chuck Taylor. the highest judiciary authority in the Philippines. With its motion for reconsideration denied. along with a claim for damages. 370 SCRA 491 (2001) – Unfair Competition FACTS: Judge Bruselas. notwithstanding its witness’ testimony touching upon her Identification of the rubber shoes sold in her stores. Inc. HELD: NO. on the basis of the evidence filed. There is confusing similarity between “Universal converse and Device” and “Converse chuck Taylor” and “All Star Device” which would confuse the public to the prejudice of Converse Rubber’ inasmuch as “Universal Converse and Device” is imprinted in a circular manner on the side of its rubber shoes. Benita’s Frites Inc. a U. there is no proof to establish such an allegation. 8293 for unfair competition. ISSUE: Whether or not there was probable cause that the crime of unfair competition under the IPC Code has been committed by the respondents? HELD: No. Inc. The private respondent corporation contends that there is no unfair competition being committed since the products that he sells.” Solid Triangle v. the Third Division of the Supreme Court.. . Quezon City.” or “Converse Shoes Chuck and Taylor. and is connected to a restaurant in Pasig City that was using INOB’s trademarks. In coming to its decision..-based hamburger fast food chain. The BLA held. Jr. On October 15. Presiding Judge of RTC. Sanly Corporation did not pass off the subject goods as that of another. Sehwani. the BLA also remarked that INOB has legal capacity to sue in the Philippines for IP violations. it admits that the goods are genuine Mitsubishi photographic paper.

They were prejudice by this act. boxes and other similar containers 18. as the acts penalized must always involved fraud and deceit. The act of pepsi did not violate Sec. PEPSI'S CONTENTION: (1) bottles came from different retailers and wholesalers (2) no one way to ascertain the return of the empty Cola bottles for they simply received what had been delivered (3) the presence of the bottles in the yard was not intentional nor deliberate (4) the plant security's information was only a hearsay and there was no personal knowledge as regards the crime (5)there is no mention in the IP code of the crime of possession of empty bottles. 19. MTC: In favor of Coca Cola. the Supreme Court held that competent authority for determining whether a trademark is “well known” in the country where protection is sought under Article 6bis is the “competent authority of the registration or use. Whether or not MTC was correct in issuing the search warrant for probable violation of the IP Code? 2. the Supreme Court noted that both the United States and the Philippines are signatories to the Paris Convention. In ruling for INOB. 15. 20. (3) it violated RA 623. It was agreed in the Joint Resolution between the World Intellectual Property Organization General Assembly and the Paris Union to support a non-binding recommendation that a well-known mark should be protected in a country even if the mark is neither registered nor used in that country. The act of hoarding these bottles was reported by the security guard of Coca Cola who had gained the acces into the Pepsi compound. The decision affirms the Philippines’ commitment to protect the rights of owners of internationally well-known marks. ISSUE: 1. The issuance of search warrant is legal.3 (c) of the IP Code. MAIN CONTENTION OF PEPSI: IP CODE does not criminalize bottle hoarding. Since there was no crime to speak of there is no need to fulfill such substantive requirement. Non. Coca. 168. Whether a trademark is “well known” is a factual question and involves an appreciation of the evidence adduced before the BLA. No probable cause. . In the face of the numerous trademark registrations of INOB around the world and the comprehensive advertisements presented at trial. RTC: Reversed the decision. COCA COLA'S CONTENTION: (1) opposed the motions as the bootles were part of the evidence (2) there is A PROPBABLE CAUSE FOR UNFAIR COMPETITION UNDER THE IP CODE.Cola applied for search warrant against Pepsi for hoarding Coke empty bottles in its yard. Coca Cola considered it as an act of unfair competition. MAIN CONTENTION OF COLA is that IP CODE was enacted into law so that to remedy various forms of unfair competitin and also to replace the provision of unfair competition under RPC and the inherent element of unfair competition is fraud and deceit and hoarding of large quantities of competitor's empty bottles is characterized by bad faith.commission of the crime of unfair competition. (7)NO PROBABLE CAUSE TO JUSTIFY THE ISSUANCE OF THE SEARCH WARRANT (8) filed a motion to return of their shells since many of Pepsi's bottles were also included and to quash the warrant 17. Whether or not the hoarding of the bottles constitute an offense under the IP code? HELD: Yes. The Supreme Court went on to explain that the fact that INOB’s trademarks were neither registered nor used in the Philippines is of no consequence because of the expansion of the scope of protection afforded by Article 6 bis by the1999 Joint Resolution Concerning Provisions on the Protection of Well-Known Marks. and it did not show that someone visited or enter the plant on that particular date.The Supreme Court was unmoved by Sehwani’s submissions. GOMEZ FACTS: 14. Denied the motions. the law regulating the use of stamped or marked bottles.500 bottles) 16. The hoarding does not makr them liable for unfair competition as there was no deception or fraud on the end-users. the Supreme Court held that the BLA correctly found that the trademarks of INOB are internationally well known. COCA COLA VS.” which in the Philippines is the IPO. (6) had checked the logbook. the issuance of the search warrant was incorrect for it was issued on an invalid substantive basis. INOB’s causes of action were anchored in Articles 6bis and 8 of the Paris Convention. In particular. No grave of abuse of discretion on the part of MTC's judge. 21. the ambiguity should be construed against the State. MTC: issued the search warrant (all in all 5.

docketed as Civil Case No. Kunnan Enterprises Ltd. and widely promoted the ³KENNEX´ and ³PRO KENNEX´ trademarks through worldwide advertisements in print media and sponsorships of known tennis players. ³PROKENNEX´ and ³PRO-KENNEX´ (disputed trademarks). the Superior is desirous of having been appointed [sic] as the sole distributor by KUNNAN in the territory of the Philippines. KUNNAN disputed SUPERIOR’s claim of ownership and maintained that SUPERIOR “as mere distributor from October 6.´ derived from its original corporate name. the trademark PRO-KENNEX´ bearing Registration Nos. 2010 – Unfair Competition FACTS: On February 23. Inc. the consolidated Petitions for Cancellation and the Notices of Opposition are hereby GRANTED. On October 1.Note: A search warrant may be issued only if there is probable cause in connection with a specific offense alleged in the application based on the personal knowledge of the applicant and the witnesses (substantive). Second. 2. SUPERIOR also alleged that it extensively sold and advertised sporting goods and products covered by its trademark registrations. whether the acts of the defendants are such as are calculated to deceive the ordinary buyer making his purchases under the ordinary conditions which prevail in the particular trade to which the controversy relates. DECEPTION AND FRAUD are still the key elements that must be present for unfair competition to exist Superior Commercial Enterprises v. under the name KENNEX Sports Corporation for the purpose of manufacturing and selling sportswear and sports equipment. 2. Whereas. 49998for the mark PRO-KENNEX issued in favor of Superior Commercial Enterprises. which states: Whereas. Finally. 41032. 4730. the hoarding of the Pepsi bottles does not constitute any violation under the IP code. trade name or service mark that the respondent have invanded or used without proper authority from the petitioner. Hoarding does not relate to any patent. The probable cause will be determined personally by the judge (procedural). 40326. KUNNAN alleged that it was incorporated in 1972. KUNNAN appointed SUPERIOR as its exclusive distributor in the Philippines under a Distributorship Agreement whose pertinent provisions state: Whereas. . IP does not cover every unfair act committed in the course of business. it commercially marketed its products in different countries. the [sic] Superior is desirous of having been appointed [sic] as the sole distributor by KUNNAN in the territory of the Philippines. NOTE: “TRUE TEST” OF UNFAIR COMPETITION 1. KUNNAN also alleged that it registered the ³PRO KENNEX´ trademark not only in the Philippines but also in 31 other countries. SUPERIOR first claimed to be the owner of the trademarks. presenting as evidence of ownership the Principal and Supplemental Registrations of these trademarks in its name. Consequently. including the Philippines since 1972. 39254. 1991” fraudulently registered the trademarks in its name. 1982 until December 31. SUPERIOR presented as evidence of its ownership of the disputed trademarks the preambular clause of the Distributorship Agreement dated October 1. ³KENNEX & DEVICE´. Q93014888. trading styles. 1982. Also. Third. it also asserted its prior use of these trademarks. trademark. KUNNAN intends to acquire the ownership of KENNEX trademark registered by the [sic] Superior in the Philippines. . 6663 are hereby CANCELLED. herein RespondentRegistrant under the Principal Register and SR No. Whereas.] In its defense. 1982(Distributorship Agreement) it executed with KUNNAN. GR No. April 20. it only covers acts characterized BY DECEPTION OR ANY OTHER MEANS CONTRARY TO GOOD FAITH in passing off of goods and services as those of another who has established goodwill in relation with these goods or services.´ [Emphasis supplied. KUNNAN intends to acquire ownership of KENNEX trademark registered by the Superior in the Philippines. In support of its complaint. 169974. The IPO and CA Rulings: there being sufficient evidence to prove that the Petitioner-Opposer (KUNNAN) is the prior user and owner of the trademark PRO-KENNEX´. as a distinctive trademark for its products in 1976. after the expiration of its initial distributorship agreement with another company.. No. SUPERIOR filed a complaint for trademark infringement and unfair competition with preliminary injunction against KUNNAN and SPORTS CONCEPT with the RTC. Hoarding is not even an act within the contemplation of the IP Code. 1993. company names and business names ³KENNEX´.. It created and first used PRO KENNEX.

sporting goods and equipment) as those of SUPERIOR. business. In addition. 2004) Facts: The petitioner allegedly sold or offers the sale of garment product using the trademark “Caterpillar” to the prejudice of its previous user. actions for unfair competition shall be brought before the proper courts with appropriate jurisdiction under existing laws. The CA stressed that SUPERIOR’s possession of the aforementioned Certificates of Principal Registration does not conclusively establish its ownership of the disputed trademarks as dominion over trademarks is not acquired by the fact of registration alone. COURT OF APPEALS. The CA found the Certificates of Principal and Supplemental Registrations and the ³whereas clause´ of the Distributorship Agreement insufficient to support SUPERIOR’s claim of ownership over the disputed trademarks. Samson vs Daway (GR No 160054-55. at best. The petitioner contended that the case should be filed with the MTC because violation of unfair competition is penalized with an imprisonment not exceeding 6 years under RA 7691. In other words. It dismissed SUPERIOR’s Complaint for Infringement of Trademark and Unfair Competition with Preliminary Injunction on the ground that SUPE RIOR failed to establish by preponderance of evidence its claim of ownership over the KENNEX and PRO-KENNEX trademarks. ISSUE: In this case.Corporate Trade Name . Since RA 7691 is a general law and IPC in relation to Trademark law is a special law. For this reason. Issue: Where do you file a suit for unfair competition? Held: The SC held that under Sec 163 of the IPC. trademark application Nos. the latter shall prevail. SUPERIOR failed to adduce any evidence to show that KUNNAN by the above-cited acts intended to deceive the public as to the identity of the goods sold or of the manufacturer of the goods sold. actual or probable must be shown before the right to recover can exist. The law contemplated in Sec 163 of IPC is the Trademark Law. Actions for unfair competition therefore should be filed with the RTC. One of the essential requisites in an action to restrain unfair competition is proof of fraud. L. Inc.e. SUPERIOR’s case no longer presents a valid cause of action. The essential elements of unfair competition are (1) confusing similarity in the general appearance of the goods. no issue of confusion arises because the same manufactured products are sold. Jurisprudence also formulated the following ³true test´ of unfair competition: whether the acts of the defendant have the intent of deceiving or are calculated to deceive the ordinary buyer making his purchases under the ordinary conditions of the particular trade to which the controversy relates. with the CA’s final ruling in the Registration Cancellation Case.C. the latter is left with no effective right to make a claim. The respondent filed the case to the RTC. we held that there can be trademark infringement without unfair competition such as when the infringer discloses on the labels containing the mark that he manufactures the goods. private respondent in this case. thus preventing the public from being deceived that the goods originate from the trademark owner. 84565 and 84566. Big Mak Burger. the intent to deceive. Finally. unfair competition has been defined as the passing off (or palming off)or attempting to pass off upon the public of the goods or business of one person as the goods or business of another with the end and probable effect of deceiving the public. and (2) intent to deceive the public and defraud a competitor. likewise for the registration of the mark PRO-KENNEX are hereby REJECTED. PHILIPS EXPORT VS. there is no evidence of bad faith or fraud imputable to KUNNAN in using the disputed trademarks. the unfair competition aspect of the SUPERIOR’s case likewise falls. Specifically. In the present case. Sec 27 of Trademark Law states that action for unfair competition shall be filed with the CFI (now RTC). In McDonald’s Corporation v. registration merely raises a presumption of ownership that can be rebutted by contrary evidence. it does not amount to a prima facie evidence of the validity of registration or of the registrant’s exclusive right to use the trademarks in connection with the goods. July 21. with the established ruling that KUNNAN is the rightful owner of the trademarks of the goods that SUPERIOR asserts are being unfairly sold by KUNNAN under trademarks registered in SUPERIOR’s name. The CA further emphasized that the Certificates of Supplemental Registration issued in SUPERIOR’s name do not even enjoy the presumption of ownership accorded to registration in the principal register. no evidence exists showing that KUNNAN ever attempted to pass off the goods it sold (i..Accordingly. or services specified in the certificate From jurisprudence. sportswear. only the ownership of the trademarks is at issue.

it has also shipped to its subsidiaries machines and parts which fall under the classification of “chains. Standard Philips only contains one word. Given these. there is nothing to prevent Standard Philips from dealing in the same line of business of electrical devices. no corporate name may be allowed if the proposed name is identical or deceptively confusingly similar to that of any existing corporation or to any other name already protected by law or is patently deceptive. belts. With regard to the 1st requisite. ISSUE: Whether or not Standard Philips can be enjoined from using Philips in its corporate name RULING: YES A corporation’s right to use its corporate and trade name is a property right. however this was denied ruling that it can only be done when the corporate names are identical and they have at least 2 words different. or cover the same line of products. The use of “Philips” by Standard Philips tends to show its intention to ride on the popularity and established goodwill of PEBV.V.
A corporation’s right to use its corporate and trade name is a property right. Certificate of registration for its trademark o Trademark: word ARMCO and a triangular device for “ferrous metals and ferrous meal castings and forgings. among Standard Philips’ primary purposes are to buy. the goods which Standard Philips also produce. 18 of the Corporation Code. An ARMCO STEEL CORPORATION. Standard Philips refused to amend its Articles of Incorporation so PEBV filed with the SEC a petition for the issuance of a Writ of Preliminary Injunction. which it may assert and protect against the whole world. confusing or contrary to existing law. rollers. Petitioner filed a comment: there is compliance in bad faith because the change of name is not in accordance with the order of SEC (to remove ARMCO word) Petitioners filed to order the officers and directors of ARMCO Structures IN CONTEMPT. However. As regards the 2nd. “Standard”. electrical supplies.           . different from that of PEBV. steel. electrical component. SEC grants the petition o Ordered to take out the word ARMCO and substitute another word. RESPONDENT ARMCO PHils amended its name to ARMCO STRUCTURES Inc which was filed and approved by SEC. the test for the existence of confusing similarity is whether the similarity is such as to mislead a person using ordinary care and discrimination. bearings and cutting saw”. obtained from Philippine Patent Office. Also. a right in rem. 2 requisites must be present: 
 (1) the complainant corporation must have acquired a prior right over the use of such corporate name and (2) the proposed name is either identical or deceptively or confusingly similar to that of any existing corporation or to any other name already protected by law or patently deceptive. a right in rem.” o obtained “affidavit of use. PEBV adopted the name “Philips” part of its name 26 years before Standard Philips. or other metals” ARMCO OHIO and ARMCO MARSTEEL through SEC compel ARMCO Phils to change its corporate name because IT IS VERY SIMILAR to them. MR by ARMCO Phils – denied because filed out of time etc. This was affirmed by the SEC en banc and the Court of Appeals thus the case at bar. CA – dismissed the case because beyond reglementary period. The 2 companies’ products are also the same. manufure of iron.” In the Phils ARMCO Marsteel Alloy Corporation (ARMCO-MARSTEEL) o 40% of its capital stock were owned by ARMCO OHIO BOTH are engaged in manufacturing STEEL PRODUCTS. sell trade x x x electrical wiring devices. confusing or contrary to existing law. According to Sec. Although PEBV primarily deals with electrical products. FACTS: Philips Export B. which it may assert and protect against the whole world. was incorporated in the Philippines (ARMCO PHILS) to contrac fabricate. (PEBV) filed with the SEC for the cancellation of the word “Philips” the corporate name of Standard Philips Corporation in view of its prior registration with the Bureau of Patents and the SEC. ARMCO STEEL CORPORATION vs SEC FACTS:  ARMCO STEEL CORPORATION (ARMCO OHIO) o Organized in OHIO USA. 
For the prohibition to apply.

The term "Armco" is now being used on the products being manufactured and sold in this country by Armco-Marsteel by virtue of its tie-up with ARMCO-STEEL-OHIO. SEC –respondent did not make proper disclosure of the circumstances when it amended its articles of incorporation and submitted the same for the approval of the SEC. ARMCO STEEL-PHILIPPINES. APPEAL – dismissed for lack of merit WON the order of SEC was complied with? NO WON there is confusing similarity between the petitioners names and that of ÄRMCO STRUCTURES? YES HELD: 1.  ISSUES: 1. . as shown above. having patented the term 'Armco' as part of its trademark on its steel products. they might actually be produced by the petitioners. has not only an Identical name but also a similar line of business. the goodwill that should grow and inure to the benefit of petitioners could be impaired and prejudiced by the continued use of the same term by the respondent. 2. Thus. when in fact. Clearly. o It was erroneously accepted and approved by the SEC for had petitioner revealed the order at the time of registration.OHIO. IT IS NOT ONLY SIMILAR BUT ALSO IDENTICAL It is indisputable that ARMCO-STEEL-OHIO. is entitled to protection in the use thereof in the Philippines. NOT IN SUBSTANTIAL COMPLAINCE WITH SEC ORDER that the word ARMCO must be removed from its corporate name. the two companies have the right to the exclusive use and enjoyment of said term. People who are buying and using products bearing the trademark "Armco" might be led to believe that such products are manufactured by the respondent. as that of ARMCO STEEL. SEC could not have been accepted it. o It s contravention therewith. 2.

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